Ex Parte Mills et al

Patent Trial and Appeal BoardMar 18, 2015

12421866 (P.T.A.B. Mar. 18, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES P. MILLS, ANTHONY VINSON DAMOMMIO, MICHAEL P. SCHAUB, EERO H ALA, NICHOLAS D. TRAIL, GREGORY P. HANAUSKA, and CLIFTON J. CHARLOW ____________ Appeal 2013-004581 Application 12/421,866 Technology Center 2800 ____________ Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and N. WHITNEY WILSON, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s rejections under 35 U.S.C. § 103(a) of claims 1–7 and 16 as unpatentable over DeMeritt (US 4,834,494, issued May 30, 1989) in view of Tateishi (JP 59-42504 published March 9, 1984) and of claims 9–15 and 17–19 as Appeal 2013-004581 Application 12/421,866 2 unpatentable over these references in combination with Fluck (US 7,128,473 issued October 31, 2006). We have jurisdiction under 35 U.S.C. § 6. We affirm. Appellants claim an optical coupler comprising a coupler housing 102, a first cell 112, and a second cell 116 having a housing 160 with an optically-transparent window 120 mounted therein (sole independent claim 1, Fig. 4). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. 1. An optical coupler, comprising: (a) a coupler housing having a first side, a second side, and a bore that provides a passage for light between the first side and the second side, where the bore is adapted to receive both the first cell having a light-guiding assembly and the second cell connectable to a light- transmitting conduit; and (b) at least one retainer for holding at least one of the first cell the second cell in the bore coupler housing, which allows the first and second cells to be removed and replaced; wherein the second cell includes a housing and an optically- transparent window mounted in the housing of the second cell. In the Appeal Brief, the only arguments presented by Appellants relate to the optically-transparent window limitation of independent claim 1 Appeal 2013-004581 Application 12/421,866 3 (App. Br. 6–12). Therefore, the dependent claims will stand or fall with their parent claim 1. Concerning the rejection based on DeMeritt and Tateishi, Appellants contest the Examiner’s conclusion that it would have been obvious to provide the second cell housing of DeMeritt’s optical coupler with an optically-transparent window in view of Tateishi (Final Action 5–6). Specifically, Appellants argue that providing such a window would prevent the end of the optical fiber from being received in conical depression 30/30a as taught by DeMeritt (App. Br. 8). As for the rejection based on DeMeritt, Tateishi, and Fluck, Appellants analogously contend that, “[j]ust as the ordinary skilled person would not modify DeMeritt in view of Tateishi’s sealed optical fiber, no rational basis exists for modifying DeMeritt to include Fluck’s sealed optical fiber” (id. at 11). 1 In the Answer, the Examiner explains that the rejection of claim 1 proposes two distinct modifications of DeMeritt, namely, a first proposed embodiment wherein a window is disposed between the lens and the fiber and a second proposed embodiment wherein a window is disposed outside the lens (i.e., to the right of the lens 32 as shown in Figure 3 of DeMeritt) (Ans. 5–6, 10–11). The Examiner further explains that the argument 1 We emphasize that the Examiner does not rely on Fluck for such a modification (cf. Final Action 7–9). Appeal 2013-004581 Application 12/421,866 4 presented by Appellants in the Appeal Brief does not address the second embodiment (id. at 10–11). In their Reply Brief, Appellants acknowledge that the Examiner’s obviousness position involves these two distinct embodiments (Reply Br. 2). Appellants then argue that DeMeritt’s coupler would prevent dust accumulation on the end of the optical fiber (id. at 2–3) and accordingly that no need exists for providing a window to reduce or eliminate dust “whether the lenses of DeMeritt are inside or outside that window” (id. at 3). The deficiency of this argument is that it does not address the benefit described by the Examiner wherein the second embodiment prevents dust accumulation on lens surface 32 (Ans. 5–6). For this reason, Appellants fail to show error in the Examiner’s rejection of claim 1 as premised on the second embodiment. The Reply Brief presents a new argument against the rejection based on DeMeritt, Tateishi, and Fluck wherein Appellants contend that “there is no rational basis for the Examiner’s proposed, convoluted combination of conical depressions in the lenses disclosed in DeMeritt with the adjustment features disclosed in Fluck” (Reply Br. 5). We will not consider this new argument because it is not accompanied by a showing of good cause explaining why the argument could not have been presented in the Appeal Appeal 2013-004581 Application 12/421,866 5 Brief. See Ex parte Borden, 93 USPQ2d 1473, 1476–77 (BPAI 2010) (informative). For the reasons given in the Final Action, the Answer, and above, we sustain the § 103 rejection of claim 1 to the extent it is premised on the second embodiment of the Examiner’s proposed modifications of DeMeritt, and we correspondingly sustain the § 103 rejections of remaining claims 2–7 and 9–19. The decision of the Examiner 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). AFFIRMED Sl