ADAM, Sean Patrick. et al.

Patent Trials and Appeals Board

Dec 27, 2019

15036563 - (D) (P.T.A.B. Dec. 27, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
15/036,563 05/13/2016 Sean Patrick ADAM AFLT&I-120-PCT-US 6050
22827 7590 12/27/2019
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
SATTI, HUMAM M
ART UNIT PAPER NUMBER
2422
NOTIFICATION DATE DELIVERY MODE
12/27/2019 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):
USDOCKETING@DORITY-MANNING.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SEAN PATRICK ADAM and JOSEPH FITZGERALD
____________________

Appeal 2019-001444
Application 15/036,563
Technology Center 2400
____________________

Before JUSTIN BUSCH, JASON J. CHUNG, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. §134(a) from a Final Rejection of
claims 1–15. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We reverse.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2016). Appellant identifies AFL
Telecommunications LLC as the real party in interest. Br. 1.
Appeal 2019-001444
Application 15/036,563

2
STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
“wireless fiber inspection.” Spec. ¶ 2. According to the Specification, fiber
inspection probes often require specialized test equipment or handheld
displays to display streaming video captured by the inspection probe. Spec.
¶ 4. Moreover, Appellant asserts in the Specification that inspection probes
are wired-devices and, as such, require display units that must support the
wired interface. Spec. ¶ 5. To address this restrictive requirement,
Appellant’s disclosed and claimed invention obtains a video stream from an
inspection probe and transmits the video stream over a Wi-Fi network to a
display on a technician’s smart phone, tablet, or laptop. Spec. ¶¶ 7, 11.
Further, in a disclosed embodiment, the inspection probe may store the video
stream in memory before transmitting the video stream over a Wi-Fi
network. See Spec. ¶¶ 47, 50.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A method, performed by an apparatus including at least
one processor, of conducting wireless fiber inspection, the
method comprising:
obtaining a video stream of the fiber from a fiber
inspection probe;
storing the video stream in a memory of the apparatus;
and
after storing the video stream, transmitting the video
stream from the memory over a Wi-Fi network.

Appeal 2019-001444
Application 15/036,563

3
The Examiner’s Rejections
1. Claims 1–3, 6, 8–10, and 12–14 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Huang et al. (US 2014/0327756 A1;
Nov. 6, 2014) (“Huang”) and Levin et al. (US 2011/0085159 A1; Apr. 14,
2011) (“Levin”). Final Act. 3–4.
2. Claims 4, 5, 7, 11, and 15 stand rejected under 35 U.S.C. § 103
as being unpatentable over Huang, Levin, and Jannard et al. (US
2014/0196079 A1; July 10, 2014) (“Jannard”). Final Act. 4–6.

ANALYSIS2
In rejecting claim 1, the Examiner relies on the combined teachings of
Huang and Levin. See Final Act. 3–4. We begin our analysis with a brief
discussion of each reference.
Huang generally relates to a wireless fiber optic endface inspector for
“inspecting fiber optic endfaces using video microscopes.” Huang ¶¶ 2, 10.
Huang describes the wireless fiber optic endface inspector as comprising a
video microscope (further comprising a camera module for receiving images
from an adapting tip and converting the received images into a video
streaming signal) and a display device. Huang ¶ 10. Huang further
describes “[t]he wireless endface inspector is capable of wirelessly
transmitting the video streaming signal of the endface image in real-time to

2 Throughout this Decision, we have considered the Appeal Brief, filed
July 11, 2018 (“Br.”); the Examiner’s Subsequent Answer, mailed
October 4, 2018 (“Ans.”); and the Final Office Action, mailed January 18,
2018 (“Final Act.”), from which this Appeal is taken. Appellant did not file
a Reply Brief. To the extent Appellant has not advanced separate,
substantive arguments for particular claims or issues, such arguments are
considered waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2019-001444
Application 15/036,563

4
the display device.” Huang ¶ 10. In order to transmit the video stream
wirelessly, Huang teaches the video microscope further comprises a Wi-Fi
access point to enable Wi-Fi communications, and the display device is Wi-
Fi enabled to receive the video streaming signal from the video microscope
for display on a display screen. Huang ¶¶ 10–12. Huang further teaches the
display device may contain a central processing unit (CPU) to perform
“some basic image documentation jobs, such as image capturing, image
saving/retrieving, file arrangement, etc.” Huang ¶ 39. Further, Huang
explains that if the CPU in the display device is not capable of performing a
desired operation/calculation, an operator of the endface inspector probe and
display “can immediately capture an image and send it out to a designated
service center” for further evaluation. Huang ¶ 40. Huang teaches the
means by which the captured image may be sent to the designated service
center is via Wi-Fi. Huang ¶ 40.
Levin generally relates to a fiber optic endface inspection probe and
system. Levin ¶ 9, Abstract. In discussing the background of the invention,
Levin explains it is known to have an inspection probe send video captured
by the inspection probe to a display. Levin ¶ 4. This may be done using a
physical (i.e., wired) connection, or the video may be transmitted wirelessly.
Levin ¶¶ 4, 7. According to Levin, such systems have significant
disadvantages such as requiring the operator to adjust the focus the probe
(which may require additional skill) or being unsafe/awkward (by requiring
the operator to hold onto both the probe and a display device). Levin ¶ 5.
Levin further states a disadvantage of wireless transmission is “video
streaming via wireless transmission is limited” by the refresh rates of
screens, which can result in a blurry image. Levin ¶ 7. Accordingly, Levin
Appeal 2019-001444
Application 15/036,563

5
discloses a fiber optic endface inspection probe comprising an autofocus
camera system. Levin ¶¶ 9–10. The probe may capture a “sharp still image
to memory and may transmit the image wirelessly” to a remote viewing
device. Levin ¶¶ 11–12.
Additionally, in the Description of the Related Art section of Huang,
Huang expressly references the Levin reference and explains the wireless
function in the Levin probe “is just sending saved images (photos) to a
remote image viewing device,” and that the autofocus system with its
required microprocessor, electronics module, and motor and controller (in
addition to a wireless transceiver, battery, and memory card) results in a
probe that is “fairly bulky, heavy and impractical.” Huang ¶ 8.
The Examiner relies on Huang for teaching a fiber optic inspection
system wherein a video stream of the fiber is obtained from a fiber
inspection probe and is transmitted over a Wi-Fi network. Final Act. 3. The
Examiner finds Levin teaches storing a video stream in memory and
transmitting a video stream that had been stored in memory. Final Act. 3–4.
The Examiner determines “it would have been obvious to one of ordinary
skill in the art at the time the invention was filed to modify Huang by
incorporating the teachings of Levin for the common purpose of using the
autofocus technique and automatically analyzing captured image data as
disclosed by Levin.” Final Act. 4.
Appellant argues the Examiner’s proposed combination is based on
impermissible hindsight and is counter to the express teachings and purpose
of Huang. Br. 5–6. Appellant argues Huang is directed to the real-time
transmission of a video streaming signal without any storage of the video
stream prior to transmission. Br. 6 (citing Huang ¶¶ 10, 28, 34). In addition,
Appeal 2019-001444
Application 15/036,563

6
Appellant notes Huang criticizes the probe described by Levin as
impractical. Br. 7 (citing Huang ¶ 8); see also Br. 6 (Appellant arguing
“Huang explicitly teaches that the Levin invention is undesirable.”)
(emphasis omitted). Moreover, Appellant asserts that Levin does not teach
the storage or transmission after storage of video streams. Br. 7. Rather,
Appellant argues “Levin is explicitly limited to the storage and transmission
of still images.” Br. 7 (citing Levin ¶¶ 11, 49).
In response, the Examiner finds Huang also teaches the automatic
capture/analysis of images. Ans. 7 (citing Huang ¶¶ 2, 7, 13–15). More
specifically, the Examiner finds Huang discloses that a user “may watch and
save captured images and transmit[] stored images wirelessly, i.e.[,] after
storing the video stream, transmitting the video stream from the memory
over a Wi-Fi network.” Ans. 7 (citing Huang ¶¶ 5, 40). Regarding
Appellant’s arguments challenging the proposed combination of Huang and
Levin, the Examiner notes that Huang’s probe also uses some undesirable
features found in Levin (i.e., a wireless transceiver, a battery, and a memory)
and the references “are combinable because they are of a similar field of
endeavor.” Ans. 8 (citing Huang ¶¶ 43, 50).
As an initial matter, just because references may be from a similar
field of endeavor does not mean that their combination is sufficient to
support a determination of obviousness. To support the legal conclusion of
obviousness, “there must be some articulated reasoning with some rational
underpinning” for combining elements in the manner claimed. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
Appeal 2019-001444
Application 15/036,563

7
Additionally, we note that a “reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.”
Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir.
2008) (citations omitted); see also In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994).
Here, we find the Examiner’s reasoning to combine Levin’s teaching
of storing (a still image) prior to transmission of the image with the system
of Huang “for the common purpose of using the autofocus technique . . . as
disclosed by Levin” unsupported by the references (i.e., lacks rational
underpinning). Further, the disclosures in both Huang and Levin tend to
counsel against their combination. In particular, Huang expressly identifies
the autofocus technique of Levin as disadvantageous (i.e., it results in a
bulky and impractical probe). See Huang ¶ 8. Further, Levin also
discourages the transmission of a video stream, instead teaching the storage
and transmission of still images. See Levin ¶ 7.
Moreover, regarding the Examiner’s findings of Huang, we disagree
that Huang teaches the inspection probe comprises memory. See Huang
¶¶ 43, 50; contra Ans. 8. Rather, the memory in Huang is part of the display
device. See, e.g., Huang ¶¶ 13–15, 39–40, 50. Thus, the video stream from
the inspection probe must be transmitted over a Wi-Fi network to the display
device before it could be stored. Although Huang does teach that the display
device may transmit over a Wi-Fi network to a designated service center for
increased analysis (see Huang ¶ 40), Huang teaches the display device
would transmit “an image” (i.e., not the obtained video stream) to the service
Appeal 2019-001444
Application 15/036,563

8
center. Huang ¶ 40. In addition, the Examiner’s statement that “both video
and/or still images can be compressed and that there wouldn’t be unexpected
results given the instant claims whether video or compressed images are
used/stored” (see Adv. Act., mailed May 14, 2018) lacks sufficient evidence
and technical reasoning.
Because we find it dispositive that the Examiner has not shown by a
preponderance of evidence that one of ordinary skill in the art would have
combined the teachings of Huang and Levin together to achieve a wireless
fiber inspection system that transmits a video stream of an inspected fiber,
obtained from a fiber inspection probe, over a Wi-Fi network after the
obtained video stream has been stored in a memory device, we do not
address other issues raised by Appellant’s arguments related to the pending
claims. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (finding an administrative agency is at liberty to reach a decision
based on “a single dispositive issue”).
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 103 of independent claim 1.3 For similar reasons, we do not sustain the
Examiner’s rejection under 35 U.S.C. § 103 of independent claims 5, 6, 8,
and 12, which recite commensurate limitations. In addition, we do not

3 In the event of further prosecution, we invite the Examiner to consider
whether the claims comport with the requirements of 35 U.S.C. § 101,
consistent with Patent Office Guidance on Patent Subject Matter Eligibility
(84 Fed. Reg. 50). Although the Board is authorized to reject claims under
37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects
not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02
(9th ed. Rev. 08.2017, Jan. 2018).
Appeal 2019-001444
Application 15/036,563

9
sustain the Examiner’s rejection under 35 U.S.C. § 103 of claims 2–4, 7, 9–
11, and 13–15, which depend directly or indirectly therefrom.

CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–15 under
35 U.S.C. § 103.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6, 8–
10, 12–14
103 Huang, Levin 1–3, 6, 8–
10, 12–14
4, 5, 7, 11,
15
103 Huang, Levin,
Jannard
4, 5, 7,
11, 15
Overall
Outcome
1–15

REVERSED