Ex Parte Benda et alDownload PDFBoard of Patent Appeals and InterferencesDec 9, 201011133593 (B.P.A.I. Dec. 9, 2010) Copy Citation 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. 3 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 4 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 ssl CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 5 Copy with citationCopy as parenthetical citation