Ex Parte Hudson et al

Patent Trial and Appeal BoardApr 7, 2016

13524188 (P.T.A.B. Apr. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/524, 188 06/15/2012 Edward H. Hudson 21495 7590 04/11/2016 CORNING INCORPORATED INTELLECTUAL PROPERTY DEPARTMENT, SP-TI-3-1 CORNING, NY 14831 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 ATTORNEY DOCKET NO. CONFIRMATION NO. Hlll-043 8121 EXAMINER HOLLWEG, THOMAS A ART UNIT PAPER NUMBER 2883 NOTIFICATION DATE DELIVERY MODE 04/11/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): usdocket@corning.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDWARD H. HUDSON, WILLIAM C. HURLEY, WARREN W. MCALPINE, and DAVID A. SEDDON Appeal2014-008073 Application 13/524, 188 Technology Center 2800 Before ROBERT E. NAPPI, NATHAN A. ENGELS, and SCOTT B. HOWARD, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from a Final Rejection of claims 5, 6, 1 7, and 21, which constitute all of the claims pending in this application. Claims 1--4, 7-16, and 18-20 have been cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 Appellants identify Coming Optical Communications LLC as the real party in interest. App. Br. 1. Appeal2014-008073 Application 13/524,188 THE INVENTION The claimed invention is directed to an optical fiber cable bundle with an inner layer and a helically stranded outer layer with a specific lay length that does not have external binders. Spec. i-fi-1 7, 8, 15-18, 23. Claim 21, reproduced below, is illustrative of the claimed subject matter: 21. A fiber optic cable bundle, comprising: an inner layer of at least one subunit fiber optic cable; and an outer layer of a plurality of subunit fiber optic cables helically stranded about the inner layer, the inner layer comprises one central subunit and the outer layer comprises eight subunits, the subunit in the inner layer having an outside diameter that is greater than an outside diameter of the eight subunits in the outer layer, and wherein each subunit fiber optic cable comprises: at least one optical fiber; a layer of loose tensile strength members surrounding the at least one optical fiber; and a polymeric subunit jacket surrounding the layer of loose tensile strength members; wherein a helical lay length of the outer layer is between 50-70 mm and a diameter of the subunit in the inner layer is in the range of 2.8-3.0 mm; wherein a diameter of the subunits in the outer layer is in the range of 1.6-1. 7 mm; wherein the tensile strength members comprise aramid yam; wherein the bundle is free of a glass-reinforced plastic ( GRP) strength member; and wherein the outer layer of subunits comprises the exterior perimeter of the bundle and the bundle is free of external binders and a jacket. 2 Appeal2014-008073 Application 13/524,188 REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Ferer us 4,317 ,000 Feb.23, 1982 Kamei et al. us 6,011,887 Jan.4,2000 Dallas et al. US 2005/0286843 Al Dec. 29, 2005 Barrett et al. WO 2010/042816 Al Apr. 15, 2010 Jakob Bohr & Kasper Olsen, The Ancient Art of Laying Rope, Dept. of Physics 1, 1---6 (2010) (hereinafter "Bohr") REJECTIONS Claims 5 and 6 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Barrett in view of Dallas. Claim 17 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Barrett in view of Dallas and Olsen. Claim 21 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Barrett in view of Dallas and Kamei. ANALYSIS We have reviewed the Examiner's rejection in light of Appellants' arguments that the Examiner erred. In reaching this decision, we consider all evidence presented and all arguments made by Appellants. The Examiner notes Barrett is silent on the specific lay length of the outer layer and does not "explicitly disclose [that the] lay length of the outer layer is between 50-70 mm" as recited in claim 21. Final Act. 14. The Examiner finds it would have been obvious to a person of ordinary skill in the art, through routine experimentation and optimization, to make the lay length of the outer layer between 50 and 70 mm. Final Act. 15. The 3 Appeal2014-008073 Application 13/524,188 Examiner further finds a person of ordinary skill would have optimized the lay length because it was well known that bending of optical fibers can cause a loss of optical signals and one would have wanted to optimize optical loss. Ans. 8. Appellants argue the doctrine of routine optimization requires the specific parameter that is being varied to have been recognized as a result- effective variable. App Br. 11 (citing MPEP 2144.05(II)(B)); Reply Br. 5---6. Appellants further argue, citing a non-precedential BP AI decision, that the cited art cannot identify just any purpose for the optimization; instead, the prior art must identify "evidence that the parameter at issue was recognized to be a result-effective variable for the claimed purpose." Reply Br. 6 (citing In re Collison, No. 2010-002734 (BPAI Feb. 29, 2012) (non-precidential)). Appellants identify several purposes for the optimization. If the lay length is to short, it "can have a detrimental effect on fiber reliability, macro bend induced attenuation or both, depending on the fiber type of the cable." App. Br. 11 (quoting Spec. i-f 18). However, the lay length must be short enough "so that the bundles maintain integrity while being bent, routed, and installed." App. Br. 12 (quoting Spec. i-f 20). Discovery of an optimum value of a result effective variable is ordinarily within the skill of the art. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955). However, an exception has been found where the parameter optimized was not recognized to be a result-effective variable. In re Antonie, 559 F.2d 618, 620 (CCP A 1977). In this case, the Examiner has not established that a helically stranded outer layer having a lay length of between 50 to 70 mm was recognized to be a result-effective variable as to attenuation and bundle 4 Appeal2014-008073 Application 13/524,188 integrity. Although Barret teaches that optical attenuation is a consideration (Ans. 8-9 (citing Barrett i-f 8) ), the Examiner does not point to any testing in Barrett of different lay lengths and its impact on attenuation. Also, although the Examiner points to other issues that could be impacted by the lay length-including "signal transmission time throughout the cable, torsion balancing of the bundle, stretch and bending characteristics of the bundle, and the amount of materials used for a given length of cable bundle" (Ans. 9}-there is no discussion on how different lay lengths effect those conditions or how one of ordinary skill in the art would decide what is optimal. More importantly, there is no evidence to indicate whether a fiber optic cable bundle having the claimed lay length would result from combining and optimizing teachings and variables of the references. Accordingly, based on the record before us, we agree with Appellants that the Examiner erred in finding a helical lay length of 50-70 mm to have been an obvious result of routine experimentation. Because we agree with at least one of the dispositive arguments advanced by Appellants, we need not reach the merits of Appellants' other arguments. Accordingly, we are constrained on this record to reverse the Examiner's rejection of claim 21, along with the rejections of claims 52 and 17, which are argued on the same ground, and dependent claim 6. 2 Claim 5 recites a lay length of 40-60 mm. Although the range of the lay length is different, our analysis and findings are otherwise identical for claims 21 and 5. 5 Appeal2014-008073 Application 13/524,188 DECISION For the above reasons, we reverse the Examiner's rejection of claims 5, 6, 17, and 21. REVERSED 6