Ex Parte Benda et al

Board of Patent Appeals and Interferences

Dec 9, 2010

11133593 (B.P.A.I. Dec. 9, 2010)

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.
11/133,593 05/20/2005 John A. Benda 67,007-016; R-4269B 9143
26096 7590 12/10/2010
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
12/10/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN A. BENDA and ARISTOTLE PARASCO
____________

Appeal 2009-012647
Application 11/133,593
Technology Center 1700
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
LINDA M. GAUDETTE, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal from the final rejection of claims 22-29. We have
jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012647
Application 11/133,593

Claims 22 and 27 are illustrative:

22. A system for optical fiber manufacture, comprising:

a laser source;

an optical fiber, having a circumference and an axis;

a first turning mirror having a first reflective face for receiving a first
laser beam from said laser source and for reflecting said first laser beam on
said optical fiber;

a second turning mirror having a second reflective face for receiving a
second laser beam from said laser source and for reflecting said second laser
beam on said optical fiber, wherein said optical fiber is disposed between
said first turning mirror and said second turning mirror;

a scanning mirror for directing said first laser beam onto said first
turning mirror and for directing said second laser beam onto said second
turning mirror; and

a computer linked to said scanning mirror and to said laser source,
said computer configured to control said scanning mirror and said laser
source.

27. The system of Claim 22 wherein said computer is configured to
control said scanning mirror to direct said first laser beam on a first locality
of said optical fiber and to direct said second laser beam on a second locality
of said optical fiber, said first locality circumferentially and axially
displaced from said second locality.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 3):
Kohnke 5,718,738 Feb. 17, 1998
Hammon 6,548,225 B1 Apr. 15, 2003

2
Appeal 2009-012647
Application 11/133,593

Appellants’ claimed invention is directed to a system for making
optical fiber wherein a computer is configured to control a scanning mirror
and a laser source.
Appealed claims 23-29 stand rejected under 35 U.S.C. 103 (a) as
being unpatentable over Hammon in view of Kohnke.2
We consider first the Examiner’s § 103 rejection of claims 22-26 and
29. Appellants do not dispute the Examiner’s factual determination that
Hammon, like Appellants, discloses a system for manufacturing optical fiber
comprising a laser source, first and second turning mirrors, and a scanning
mirror for directing laser beams on the first and second turning mirrors. As
recognized by the Examiner, Hammon does not disclose the use of a
computer to control the scanning mirror and the laser source. However, the
Examiner cites the generally accepted principle that it is a matter of
obviousness for one of ordinary skill in the art to substitute automatic
control, e.g. computer control, for manual control. In addition, the Examiner
cites Kohnke for teaching the use of a computer to control the provision of a
grating pattern on an optical fiber, albeit the computer controls the amount
of mirror bend rather than the laser source.
Appellants, on the other hand, make the argument that neither
Hammon nor Kohnke discloses the use of a computer to control a laser
source. However, this point of fact does not address the rationale underlying
the Examiner’s conclusion of obviousness. The use of a computer to control
a myriad of processes was notoriously well-known at the time of filing the
present application, and Appellants present no reason for why it would have
been non-obvious to use a computer to control all aspects of the Hammon

2 The Examiner has withdrawn the rejections under 35 U.S.C. § 112.
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Appeal 2009-012647
Application 11/133,593

system, including the activation of the laser. Appellants’ argument that
neither of the applied references discloses using a computer to control the
laser is not sufficient to rebut the Examiner’s position. Appellants’ separate
arguments for claims 26 and 29 fail for the same reason, i.e., the argument
that the references do not teach the use of a computer to control a laser
source does not rebut the Examiner’s position with respect to the
obviousness of claims 26 and 29.
We will not sustain the Examiner’s rejection of claims 27 and 28
which require that the recited computer is configured to control the scanning
mirror to direct first and second laser beams on first and second localities of
the fiber, respectively, that are circumferentially displaced from one another.
The Examiner makes the finding that “by rotating the fiber in Hammon, the
laser would impinge on circumferentially spaced (as well as axially
displaced) locations” (Ans. 8, first para.). However, Appellants make the
argument that neither of the applied references discloses circumferentially
spaced locations on the fiber, and the Examiner has not made the requisite
finding that the system of Hammon is capable of rotating the fiber to allow
for circumferential spacing of laser-exposed areas. While we agree with the
Examiner that it would have been obvious for one of ordinary skill in the art
to employ a computer to control the laser source of Hammon, the Examiner
has not carried the burden of establishing the obviousness of controlling the
laser of Hammon in such a way that it provides circumferential spacing of
the exposed areas.
In conclusion, based on the foregoing, the Examiner’s rejection of
claims 22-26 and 29 is sustained and the rejection of claims 27 and 28 is
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Appeal 2009-012647
Application 11/133,593

reversed. Accordingly, the Examiner’s decision rejecting the appealed
claims is affirmed-in-part.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED-IN-PART

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CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
5