Ex Parte Blew

Patent Trial and Appeal Board

Jun 26, 2017

13551142 (P.T.A.B. Jun. 26, 2017)

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.
13/551,142 07/17/2012 Douglas Blew 02316.6948US01 1070
142510 7590
M&G CommScope
P.O. Box 2903
Minneapolis, MN 55402
06/28/2017 EXAMINER
LE, UYEN CHAU N
ART UNIT PAPER NUMBER
2874
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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):
uspto!42510@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS BLEW
Appeal 2016-003804
Application 13/551,142
Technology Center 2800
Before KAREN M. HASTINGS, GEORGE C. BEST, and
BRIAN D. RANGE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134 of the
Examiner’s Final Rejection of claims 1—20 under 35 U.S.C. § 103 as
unpatentable over Quinn (US 6,621,964 B2 (Sept. 16, 2003)), and claim 21
under 35 U.S.C. § 102(b) as being anticipated by Quinn. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART, but because we have relied on reasons that
were not included in the statement of the § 103 rejection, and we also
include claim 21 therein, we designate our affirmance as including new
1 CommScope, Inc. is stated to be the real party in interest (Br. 1).
Appeal 2016-003804
Application 13/551,142
grounds of rejection to safeguard Appellant’s procedural entitlements. Cf. In
re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the
same statutory basis and the same prior art references, alone, is insufficient
to avoid making a new ground of rejection when the Board relies on new
facts and rationales not previously raised to the applicant by the examiner.”).
Claims 1 and 21 are illustrative of the appealed subject matter
(emphases added to identify disputed limitations):
1. A fiber optic cable, comprising:
a plurality of optical fibers, the fibers divided into a
plurality of fiber optic subunits, the fiber optic subunits
comprising one of buffer tubes enclosing optical fibers therein
or tightly buffered optical fibers, each of the subunits defining
generally a circle having a first diameter;
at least one elongate filler element, the filler element
comprising a cellulosic material, wherein in end view the filler
element defines generally a circle having a second diameter
that is substantially the same as the first diameter, and
a round outer jacket surrounding the optical fiber
subunits and the filler element;
wherein the total number of fiber optic subunits and filler
elements is at least four.
21. A fiber optic cable, comprising:
a plurality of optical fibers, the fibers divided into a
plurality of fiber optic subunits, each of the subunits defining
generally a circle having a first diameter;
at least one elongate filler element, the filler element
comprising a cellulosic material and a water-blocking agent
and/or an anti-wicking agent, wherein in end view the filler
element defines generally a circle having a second diameter
that is substantially the same as the first diameter, and
a round outer jacket surrounding the fiber optic subunits
and the filler element.
Br. 9, 11 (Claims Appendix).
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Independent claim 11 is similar to claim 1 and additionally recites that
“the cellulosic material comprises a fire-retarding agent” (Br. 10, Claims
Appendix).
ANALYSIS
The §102 Rejection of Claim 21 based on Quinn
Appellant argues that the Examiner has not shown how Quinn
discloses identically discloses “a round outer jacket” as required by the
disputed claims. A preponderance of the evidence supports Appellant’s
position that the broadest reasonable interpretation of “a round outer jacket”
requires a circular outer jacket, as opposed to the oblong/oval one depicted
in Figure 2 of Quinn for reasons adequately set forth in the brief (see Br. 3—
6). We add the following for emphasis.
The Examiner relies solely of the embodiment of Quinn’s Figure 2 for
the anticipation rejection of claim 21, and further relies upon a dictionary
definition for “round” that states “having curves rather than angles” (Final
Action 2, 3). Appellant states that in light of the Specification, one of
ordinary skill in the art would have understood that a round jacket as recited
in claim 21 has a circular shape (Spec. 3, 4, 22; Br. 4—6). We agree.
“[Djuring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). See also Phillips v. AWHCorp., 415
F.3d 1303, 1315 (Fed. Cir. 2005) (“[T]he specification ‘is always highly
relevant to the claim construction analysis. Usually, it is dispositive; it is the
single best guide to the meaning of a disputed term.’” (citation omitted)).
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Application 13/551,142
While the Examiner states the Specification does not define “round”
to mean “circular” (Ans. 2—3), Appellant’s Specification depicts only
circular cables in its figures and describes same as “round” (e.g., Fig. 1,
122; see also Fig. 3). We agree with Appellant that the Examiner has taken
an unreasonably broad interpretation of the aforementioned claim limitation
“a round jacket” when considered in light of the Specification for the
reasons explained in the brief and, in doing so, erred in finding that Quinn
describes the claimed subject matter within the meaning of 35 U.S.C. § 102.2
NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(unless a reference discloses all of the limitations arranged or combined in
the same way as recited in the claim, it cannot anticipate under 35 U.S.C.
§ 102).
As such, we cannot sustain the anticipation rejection of independent
claim 21. Accordingly, the Examiner’s 35 U.S.C. § 102 rejection of claim
21 is reversed.
The §103 Rejection of Claims 1—20 based on Quinn
The Examiner does not explicitly rely upon any rationale that Quinn
teaches or suggests the use of a round jacket as claimed. However, Quinn
exemplifies the alternative shape of a round jacketed cable (e.g., Fig. 4).
Indeed, as discussed in the Background section of Appellant’s Specification
2 Appellant also argues that Quinn does not show that optical fiber
component 11 and water blocking component 19 have diameters that are
“substantially the same” as recited in claim 21 (Br. 6, 7). Our reversal of
claim 21 does not need to reach this issue.
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Application 13/551,142
a round cable is generally desirable (e.g., Spec. 13).3 The use of a round
jacket shape for Quinn’s Figure 2 is considered a known alternative
desirable shape, which would have been prima facie obvious to one of
ordinary skill in the art. Furthermore, a preponderance of the evidence
supports the Examiner’s position that Quinn’s circular optical fiber units 11
and blocking components 19 are encompassed by the claim term
“substantially the same” diameter (as recited in each independent claim 1,
11, and 21), especially given the lack of any specific dimensions or ratios in
Appellant’s Specification (e.g., Ans. 3).4
However, even assuming arguendo that Appellant’s position was
adopted (that is, that Quinn’s optical fiber units 11 and elements 19 are not
substantially the same diameter), changing the size of these elements (the
optical units and/or the fiber blocking elements) to be substantially the same
would have been prima facie obvious, considering their similar sizes as
depicted in Quinn. It has been generally held that ordinarily changes in sizes
of shapes of known elements are within the level of skill in that art,
especially in the absence of unexpected results or criticality. Cf. Gardner v.
TEC Sys., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984) (holding that, where
3 An applicant cannot defeat an obviousness rejection by asserting that the
cited references fail to teach or suggest elements which the applicant has
acknowledged are taught by the prior art. Constant v. Advanced Micro-
Device, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988); In reNomiya, 509 F.2d
566, 571 n.5 (CCPA 1975) (a statement by an applicant that certain matter is
prior art is an admission that the matter is prior art for all purposes).
4 Appellant did not dispute the Examiner’s implicit finding that Quinn’s
figures were drawn to scale (generally Br.). In any event, the description of
the article pictured can be relied on, in combination with the drawings, for
what they would reasonably teach one of ordinary skill in the art. In re
Wright, 569 F.2d 1124 (CCPA 1977).
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the only difference between the prior art and the claims was a recitation of
relative dimensions of the claimed device and a device having the claimed
relative dimensions would not perform differently than the prior art device,
the claimed device was not patentably distinct from the prior art device); see
also In re Dailey, 357 F.2d 669, 676 (CCPA 1966) (change in shape
ordinarily prima facie obvious).
It is well established that obviousness does not require absolute
predictability of success; rather, all that is required is a reasonable
expectation of success. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009).
The predictable use of prior art elements according to their established
function is ordinarily obvious; further, the “inferences and creative steps that
a person of ordinary skill in the art would employ” can be taken into
account. KSRInt’lv. Teleflex Inc., 550 U.S. 398, 417-418 (2007). “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421. Adjusting the sizes of the known elements within a
circular cable jacket is considered within the ambit of inferences and
creativity of an ordinarily skilled artisan.
As discussed previously, the use of a circular jacket is well known to
be desirable for a cable. One of ordinary skill would have readily inferred
from Quinn that there is a design need to fill up the interior space of the
cable for stability with all the elements located therein, and adjusting the
sizes of these elements, as well as the support elements 12, within a
circular/round jacket as exemplified in Quinn to be a known alternative
shape would appear to have been within the level of skill in the art.
Appellant argued that Quinn teaches away from reducing the size of
its blocking elements 19 and/or that increasing the size of the optical fibers
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Application 13/551,142
11 would destroy the purpose of the Quinn configuration (Br. 6,7). These
arguments are not persuasive of error. Whether a reference teaches away
from a claimed invention is a question of fact. In re Harris, 409 F.3d 1339,
1341 (Fed. Cir. 2005). For a reference to “teach away,” it must criticize,
discredit, or otherwise discourage the claimed solution. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). Considering Quinn in its entirety,
one of ordinary skill would have appreciated that there is no teaching away
from adjusting the size of the optical fiber subunits and at least one of the
fiber blocking elements to be substantially the same diameter. Cf. In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A known or obvious [device]
does not become patentable simply because it has been described as
somewhat inferior to some other [device] for the same use.”); Winner Int 7
Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact
that the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.”).
Appellant’s argument that increasing the size of the optical fibers 11
to be substantially the same diameter of a fiber blocking element would
destroy the purpose of Quinn (Br. 7) is not supported by any credible
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (an attorney’s
arguments in a brief cannot take the place of evidence). In any event, there
is no need to change the size of optical fiber elements 11, as changing the
size of only “at least one” of the fiber blocking elements 19 to be
substantially the same diameter as the optical fiber subunits would satisfy
the claim requirements.
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Application 13/551,142
For the foregoing reasons, we determine that the preponderance of
evidence weighs in favor of obviousness, giving due weight to Appellant’s
arguments. Accordingly, the Examiner’s rejection of claims 1—20 under
35 U.S.C. § 103 is affirmed, modified to include claim 21.
Because we recognize our decision is based on further reasons that
differ from the reasons advanced by the Examiner, we denominate the
affirmed rejection, as well as the new § 103 rejection of claim 21 based on
Quinn, as a NEW GROUND OF REJECTION pursuant to 37 C.F.R.
§ 41.50(b).
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
NEW GROUND OF REJECTION (37 C.F.R. $ 41.50(b))
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