Ex Parte Henschel et al

Patent Trial and Appeal BoardDec 31, 2012

11821515 (P.T.A.B. Dec. 31, 2012)

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. 11/821,515 06/21/2007 James J. Henschel 2316.2400USRE 6826 23552 7590 12/31/2012 MERCHANT & GOULD PC P.O. BOX 2903 MINNEAPOLIS, MN 55402-0903 EXAMINER PRASAD, CHANDRIKA ART UNIT PAPER NUMBER 2833 MAIL DATE DELIVERY MODE 12/31/2012 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 JAMES J. HENSCHEL, RONALD COOPER, and MICHAEL NOONAN ________________ Appeal 2013-002150 Application 11/821,515 Technology Center 2800 ________________ Before MARC S. HOFF, ANDREW CALDWELL, and STANLEY M. WEINBERG, Administrative Patent Judges. WEINBERG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-002150 Application 11/821,515 2 Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 32 and 33 in this reissue application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Claims 32 and 33 stand rejected under 35 U.S.C. § 102(b) as anticipated by Yuhara (US 5,671,316; Sep. 23, 1997). Claims 32 and 33 also stand rejected under 35 U.S.C. § 103(a) as obvious over Yuhara in view of Yurtin (US 5,071,219; Dec. 10, 1991).1 Claims 1-31 are allowed. STATEMENT OF THE CASE Appellants’ invention, described in their originally issued U.S. Patent No. 6,909,833 B2, relates generally to fiber enclosure systems providing more efficient optical fiber management and maintenance. Col. 1, ll. 64-66. The ends of optical cables 1024 and 1026 are joined together in a coupler connector barrel 1044 of a connector and splitter 1022. An inner protective tubing 1050 and an outer boot 1052 or shroud protect the cables. The connector and splitter portion has a ferrule 1046 that encircles the end of the coupler connector barrel 1044. A combined light cable 1062 extends from a connector 1038 and contains optical data signals of at least two wavelengths received from the optical cables 1024 and 1026. See generally col. 12, l. 50–col. 13, l. 13; Figs. 48-50. 1 Throughout this opinion, we refer to (1) the Appeal Brief filed July 23, 2012; (2) the Examiner’s Answer mailed August 16, 2012; and (3) the Reply Brief filed October 16, 2012. Appeal 2013-002150 Application 11/821,515 3 Independent claim 32 is illustrative with key disputed limitations emphasized: 32. A fiber optic connector assembly comprising: a connector body having a first end positioned opposite from a second end; a ferrule positioned at the first end of the connector body; an optical fiber extending through the ferrule; a boot positioned at the second end of the connector body; and an optical splitter positioned at least partially within at least one of the connector body and the boot and configured to split an optical signal received at the optical fiber onto a plurality of fibers; wherein the plurality of fibers extend from the optical splitter and through the boot. THE OBVIOUSNESS REJECTION As indicated above, the Examiner has rejected the claims under both §§ 102 and 103 using Yuhara as the sole reference for the § 102 rejection and as the primary reference for the § 103 rejection. We do not reach the § 102 rejection because we dispose of this appeal based on the § 103 rejection. The Examiner finds that Yuhara teaches all of the limitations of representative claim 32 except that its boot 11, 16 is not integral or one piece. The Examiner further finds that Yurtin teaches a single boot 88 for two optical fibers and concludes that it would therefore have been obvious to make Yuhara’s boot 11, 16 as integral. Ans. 3-4. Appellants contend that Yurtin does not overcome the deficiencies in Yuhara because Yurtin does not include an optical splitter. App. Br. 15:4, 10-13. Appeal 2013-002150 Application 11/821,515 4 ISSUE Under § 103, has the Examiner erred by concluding that it would have been obvious to provide an integral or single boot in Yuhara? ANALYSIS The Examiner finds that Figure 4 of Yuhara teaches a fiber optic connector assembly having a connector body 12, a ferrule 3, an optical fiber 1 extending through the ferrule, a boot 11, 16, an optical splitter 13 positioned within the connector body and configured to split an optical signal onto a plurality of fibers that extend from the optical splitter and through the boot. Ans. 3:11-17. The Examiner also finds that an integral or one piece boot is well known and widely used in the art of optical connectors. Ans. 3:19-20. As evidence, the Examiner identifies Yurtin as teaching a single boot 88 for two optical fibers 14 and 16. Ans. 3:20-21. Appellants agree that Yurtin teaches two separate fibers 14, 16 extending through a common boot as illustrated in Yurtin’s Figure 1. App. Br. 15:1-3. In arguing against the rejection, however, Appellants first argue the references separately, rather than the combination that the Examiner found to be obvious. App. Br. 14:17–15:8. More specifically, the Examiner found that Yurtin would have made it obvious to use a one piece boot in Yuhara instead of Yuhara’s two pieces. Compare Ans. 3:20–4:3; 5:12-14 with App. Br. 15:4-8, 10-15. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appeal 2013-002150 Application 11/821,515 5 Appellants’ other arguments in their Appeal Brief are not persuasive because they merely recite the claim language. App. Br. 14:13-17; 15:8-9; 15:16–16:1. An argument that merely points out what a claim recites is unpersuasive. 37 C.F.R. § 41.37(c)(1)(vii). Accord In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). The Reply Brief’s arguments against the § 103 rejection are not persuasive because they argue the references separately and merely recite the claim language. Reply Br. 2:2-4; 3:15-17.2 We are therefore not persuaded that the Examiner erred in rejecting (1) representative claim 32; and (2) claim 33 not separately argued with particularity. Accordingly, we will sustain the Examiner’s rejection of claims 32 and 33. CONCLUSION Under § 103, the Examiner did not err in rejecting claims 32 and 33. DECISION The Examiner’s decision rejecting claims 32 and 33 is affirmed. 2 The Reply Brief’s assertion that a 35 U.S.C. § 112 rejection is pending (Reply Br. 1) is not supported by Appellants’ statement of the Grounds of Rejection to be Reviewed on Appeal (App. Br. 10) or the Examiner’s similar statement. Ans. 3. Appeal 2013-002150 Application 11/821,515 6 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED babc