Ex Parte Caiata et al

Patent Trial and Appeal BoardApr 29, 2013

10169125 (P.T.A.B. Apr. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/169,125 11/12/2002 Marco Antonio Caiata 09877.0224 6716 22852 7590 04/29/2013 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER HOFFMANN, JOHN M ART UNIT PAPER NUMBER 1741 MAIL DATE DELIVERY MODE 04/29/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte MARCO ANTONIO CAIATA, FRANCO COCCHINI, GIUSEPPE FERRI, ANDREA MAZZOTTI, ALESSANDRO ROSSI and ANTONIO SCHIAFFO ______________ Appeal 2011-003960 Application 10/169,125 Technology Center 1700 _______________ Before CHARLES F. WARREN, LINDA M. GAUDETTE, and MARK NAGUMO, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Applicants appeal to the Board from the decision of the Primary Examiner rejecting, for at least the second time, claims 21-23, 25 and 26. Office Action mailed February 18, 2010. Appellants request review of the ground of rejection of claims 21-23, 25 and 26 under 35 U.S.C. § 103(a) over Hoshino (EP 0 630 865 A1) and Grafolsky (UK 1 315 447). App. Br. 9; Ans. 5. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2010). We reverse the decision of the Primary Examiner. Appeal 2011-003960 Application 10/169,125 2 OPINION We agree with Appellants that the claim term “unclad” simply means no cladding. Claim 21 (App. Br. Claim App’x). App. Br. 11; Reply Br. 2-3; Ans. 7-8. However, we agree with the Examiner that Hoshino would have disclosed to one of ordinary skill in the art in Example 4 that the “transparent preform . . . would be a core and a part of cladding,” and that no cladding was formed on the transparent preform until the transparent preform had been rotated and pulled, and “[t]hereafter, fine particles of glass were deposited at the circumference of the [transparent] preform, sintered and vitrified to form the optical fiber preform.” Hoshino 10:15-22 (emphasis supplied). We find that Hoshino would have disclosed that “[a]n optical fiber preform . . . comprises a core made of a transparent material in a central region, and a cladding made of a transparent material in a peripheral region.” Hoshino 3:48-49. Ans. 5, 7; App. Br. 11-13; Reply Br. 2-4. However, we do not sustain the ground of rejection because we agree with Appellants that Grafolsky would have disclosed or suggested to one of ordinary skill in the art that rollers, that is, pulleys, 22 are attached to spring- biased levers 18, 19 such that rollers 22 grip bar 4 and would be in contact with each other in the absence of bar 4. Thus, rollers 22 are not “moveable between a rest position . . . and an activation position” as these terms are clearly defined by the plain language of claim 21. Grafolsky 2:56-63, Fig. 3. App. Br. 16-19; Reply Br. 4-5; Ans. 9-11. The Primary Examiner’s decision is reversed. REVERSED bar