Ex Parte Easton et al

Patent Trial and Appeal Board

Nov 6, 2012

11437313 (P.T.A.B. Nov. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARTYN N. EASTON, JAMES G. RENFRO, JR.,
and MICHAEL SAUER
____________________

Appeal 2010-005924
Application 11/437,313
Technology Center 2800
____________________

Before DEBRA K. STEPHENS, MICHAEL J. STRAUSS,
JUSTIN BUSCH, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/437,313

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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 10, 12, 13, 15, 16, 21, 22, and 25-32. We have
jurisdiction under 35 U.S.C. § 6(b). Claims 1-9, 11, 14, 17-20, 23, and 24
have been cancelled.
We AFFIRM-IN-PART.
Introduction
According to Appellants, the invention relates to fiber optic cable and
a fiber optic cable assembly that provide wireless access to a high speed data
network without requiring horizontal wiring (either electrical or optical) and
expensive converters for each end user. (Spec. 1, [0001]).

STATEMENT OF THE CASE

Exemplary Claims
Claims 10 and 21 are exemplary claims and are reproduced below:
10. A fiber optic cable assembly for connecting to one or
more external opto-electrical components, comprising:
a single fiber optic cable having a length and a plurality
of optical fibers disposed within and extending along at least a
portion of the fiber optic cable;
at least two electrical conductors disposed within and
extending along at least a portion of the fiber optic cable;
at least one mid-span connection point formed in the
single fiber optic cable and traversed by at least one of the
optical fibers;
at least one external optical fiber portion comprised of at
least one portion of the at least one of the optical fibers made
external to the fiber optic cable; and
external electrical conductor portions comprised of
respective portions of the at least two electrical conductors
made external to the fiber optic cable;
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wherein said at least one external optical fiber portion
and said external electrical conductor portions are configured to
optically and electrically connect at least one of the one or more
opto-electrical components to the fiber optic cable; and
wherein the one or more opto-electrical components are
attached to the fiber optic cable by a tether.

21. A fiber optic cable assembly comprising:
a fiber optic cable having a length and comprising a
plurality of optical fibers and at least two electrical conductors;
one or more mid-span connection points formed in and
located along the length of the fiber optic cable and not at an
end thereof, wherein each mid-span connection point is
traversed by at least one of the optical fibers;
at least one opto-electrical transceiver disposed external
to the fiber optic cable and that is in electrical communication
with the at least two. electrical conductors and in optical
communication with at least one of the plurality of optical
fibers at corresponding one or more of the mid-span connection
points, wherein at least one mid-span connection point, a
portion of the at least two electrical conductors and a portion of
the at least one optical fiber are external to the fiber optic cable
so as to operably connect the fiber optic cable to one of said at
least one opto-electrical transceiver; and
at least one RF antenna electrically connected to and in
electrical communication with the at least one opto-electrical
transceiver to transmit and receive RF signals.

References
Fitz US 6,236,789 B1 May 22, 2001
Bevan US 6,519,395 B1 Feb. 11, 2003
Rumpf US 2004/0047313 A1 Mar. 11, 2004

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Application 11/437,313

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Rejections
(1) Claims 10, 12, 13, and 27-32 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Fitz.
(2) Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fitz.
(3) Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fitz and Bevan.
(4) Claims 21, 22, 25, and 26 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Fitz and Rumpf.

ISSUE 1
35 U.S.C. § 102(b): claims 30-32
Appellants argue their invention is not anticipated by Fitz because Fitz
does not disclose “the one or more opto-electrical components are provided
in an independent module that is separable from the fiber optic cable
assembly.” (App. Br. 13).
Issue 1: Has the Examiner erred in finding Fitz discloses the “opto-
electrical components are provided in an independent module that is
separable from the fiber optic cable assembly,” as recited in claim 30?

ANALYSIS
We determine the Examiner is interpreting the term “separable” too
broadly (Ans. 13-14). Although we agree with the Examiner one could cut
the optical fibers and electrically conducting lines very close to the ONU
(id.), thus, removing the ONU, we do not think this means the opto-electrical
component is provided in an independent module that is separable from the
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given optic cable assembly in light of Appellants’ Specification (see e.g.,
Spec. 8, [0030]).
Accordingly, the Examiner erred in finding Fitz discloses the
invention as recited in claim 30 and dependent claims 31 and 32. Therefore,
the Examiner erred in rejecting claims 30-32 under 35 U.S.C. § 102(b) for
anticipation by Fitz.

ISSUE 2
35 U.S.C. § 102(b): claims 10, 12, 13, and 27-29
Appellants argue their invention as recited in claim 10 is not
anticipated by Fitz because Fitz does not disclose a tether (App. Br. 11).
With respect to claim 29, Appellants argue Fitz does not disclose a “jack”
(App. Br. 14).

Issue 2:
(a) Has the Examiner erred in finding Fitz discloses “wherein the
one or more opto-electrical components are attached to the fiber
optic cable by a tether,” as recited in claim 10?
(b) Has the Examiner erred in finding Fitz discloses “wherein the
independent module further includes a jack configured to
connect the one or more opto-electrical components to the at
least one portion of the at least one of the optical fibers and the
respective portions of the at least two external electrical
conductors,” as recited in claim 29?

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ANALYSIS
Appellants argue the Examiner’s finding that the cable lines are
electrical cable lines and are not part of the conductors of Fitz (App. Br. 12;
Reply 5). However, we agree with the Examiner that the disclosed electrical
cable lines along with the conductors of Fitz are “at least two electrical
conductors disposed within and extending along at least a portion of the
fiber optic cable” (Ans. 11-13).
Next, we broadly, but reasonably, determine the term “tether” to mean
a restraint. We agree with Appellants’ arguments that Fitz does not disclose
a separate tether (App. Br. 11-12). The Examiner is relying on the optical
fiber and power cable lines as describing the tether. However, a “tether” is
separately recited and further, is separately described in the Specification
(see e.g., [0034] and [0035] and Figs. 8 and 9).
Therefore, Fitz does not anticipate a tether as recited in claim 10.
With respect to dependent claim 29, we disagree with Appellants’
arguments. Instead, we agree with the Examiner that Fitz discloses the
disputed “jack” recited in claim 29 (Ans. 15). However, claim 29 depends
from claim 10 and thus, stands with claim 10.
Accordingly, the Examiner erred in finding Fitz discloses the
invention as recited in claim 10. Thus, dependent claims 12, 13, and 27-29
stand with claim 10. Therefore, the Examiner erred in rejecting claims 10,
12, 13, and 27-29 under 35 U.S.C. § 102(b) for anticipation by Fitz.

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ISSUE 3
35 U.S.C. § 103(a): claim 15
Appellants argue their invention as recited in claim 10 is not
anticipated by Fitz because Fitz does not disclose a tether (App. Br. 11).
Appellants do not present separate arguments for the invention as recited in
dependent claim 15.

Issue 3: Has the Examiner erred in concluding the invention as
recited in claim 15 would have been obvious over Fitz?

ANALYSIS
Claim 15 is rejected as being obvious over Fitz. Claim 15 is
dependent on claim 10, and further recites the tether is at least 6 inches long.
Although we agree Fitz does not anticipate a tether as recited in claim 10 as
set forth above in Issue 2, we find that encasing optical fiber and electric
power lines to form a tether would have been within the skills and
knowledge of an ordinary artisan at the time of the invention. Further, we
find that the length of that tether would have been a design choice. 1
Accordingly, the Examiner did not err in finding that Fitz teaches or
suggests the invention as recited in claim 15, not separately argued.

1 We are now faced with a logical inconsistency. Because dependent claim
15 has been found to be obvious over Fitz, it necessarily follows that its
independent claim 10, inherently broader, must also be obvious over the
same art. Additionally, the validity of the other dependent claims 12, 13,
and 27-29 must be sustained based upon the language of the dependent
claims themselves. (See Ormco Corp. v Align Technology, Inc. 498 F.3d
1307, 1319 (Fed. Cir. 2007).
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Therefore, the Examiner did not err in rejecting claim 15 under
35 U.S.C. § 103(a) for obviousness over Fitz.

ISSUE 4
35 U.S.C. § 103(a): claim 16
Claim 16, not separately argued, depends from claim 10 via claim 13.
For the reasons set forth above in Issue 3, we find encasing optical fiber and
electric power lines to form a tether (consistent with Appellants’
Specification) as recited in claim 10, would have been within the skills and
knowledge of an ordinary artisan at the time of the invention. Appellants
did not present any arguments or evidence that Fitz does not anticipate the
additional limitation recited in claim 13. Further, Appellants presented no
additional arguments that the invention as recited in claim 16 was not
obvious over the combination of Fitz and Bevan except that Bevan does not
remedy the deficiencies in Fitz (App. Br. 14).
Accordingly, the Examiner did not err in finding the combination of
Fitz and Bevan teaches or suggests the invention as recited in claim 16.
Therefore, the Examiner did not err in rejecting claim 16 under
35 U.S.C. § 103(a) for obviousness over Fitz and Bevan.

ISSUE 5
35 U.S.C. § 103(a): claims 21, 22, 25, and 26
Appellants assert their invention is not obvious over Fitz and Rumpf
because Rumpf teaches the optical fiber is powered by light, not from
electrical conductors (App. Br. 15). Appellants contend the Examiner’s
statement that “the RF antenna of Rumpf would be electrically connected to
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and in electrical communication with the at least one opto-electrical
transceiver in Fitz to transmit and receive RF statements” is a conclusory
statement without any support (id.). According to Appellants, if Rumpf’s
RF antenna is added to the system of Fitz, nothing teaches or suggests the
RF antenna would be “electrically connected to and in electrical
communication with the RF antenna” (App. Br. 16). Moreover, Appellants
argue the Examiner improperly combined Rumpf with Fitz since the
combination would change the principle of operation, teach away from the
proposed combination, and render Fitz inoperable for its intended use (App.
Br. 16-17).

Issue 5:
a) Has the Examiner erred in finding the combination of Fitz and
Rumpf teaches or suggests “at least one RF antenna electrically
connected to and in electrical communication with the at least
one opto-electrical transceiver to transmit and receive RF
signals” as recited in claim 21?
b) Has the Examiner improperly combined Rumpf and Fitz?

ANALYSIS
We agree with the Examiner’s findings (Ans. 7-9; 15-21). We are not
persuaded by Appellants’ arguments. Thus, we find the combination of
Rumpf and Fitz teaches or at least suggests the invention as recited in claim
21. We further emphasize the Examiner has articulated reasoning with a
rational underpinning as to why one of ordinary skill in the art would have
been motivated to combine the antenna system taught by Rumpf into the
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system of Fitz (Ans. 16-17). Appellants have not presented sufficient
evidence or argument to persuade us the Examiner has erred.
Additionally, we are not persuaded by Appellants’ arguments that
incorporating Rumpf’s teaching of an RF antenna into the system of Fitz
would change the principle of operation, teach away from the proposed
combination, or render Fitz inoperable for its intended use. We emphasize:
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one reference can
be physically inserted into the device shown in the other. The test for
obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference; nor
is it that the claimed invention must be expressly suggested in any one
or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary
skill in the art.

In re Keller, 642 F.2d 413, 425 (CCPA 1981)(citations omitted).

Additionally, we find no persuasive evidence in the record before us
that Fitz’s composite cable would no longer operate if modified to include
Rumpf’s RF antenna electrically connected to and in electrical
communication with an opto-electrical transceiver to transmit and receive
RF signals. Nor do we find persuasive evidence that Rumpf’s RF antenna
teaches away from the proposed combination.
Therefore, we find that the Examiner’s proposed modification would
not change Fitz’s principle of operation or otherwise render Fitz inoperable
for its intended purpose. We also find no persuasive evidence the
combination of Rumpf and Fitz, taken alone or in combination as set forth
by the Examiner, teach away from the proposed combination.
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Accordingly, the Examiner did not err in finding the combination of
Fitz and Rumpf teaches or suggests the invention as recited in claim 21 and
claims 22, 25, and 26, not separately argued. Nor did the Examiner
improperly combine Rumpf and Fitz. Therefore, the Examiner did not err in
rejecting claims 21, 22, 25, and 26 under 35 U.S.C. § 103(a) for obviousness
over Fitz and Rumpf.

DECISION
The Examiner’s rejection of claims 10, 12, 13, and 27-32 under 35
U.S.C. § 102(b) as being anticipated by Fitz is reversed.
The Examiner’s rejection of claim 15 under 35 U.S.C. § 103(a) as
being unpatentable over Fitz is affirmed.
The Examiner’s rejection of claim 16 under 35 U.S.C. § 103(a) as
being unpatentable over Fitz and Bevan is affirmed.
The Examiner’s rejection of claims 21, 22, 25, and 26 under 35 U.S.C.
§ 103(a) as being unpatentable over Fitz and Rumpf is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED-IN-PART

ELD