Ex Parte Bumgarner et al

Board of Patent Appeals and Interferences

Jun 30, 2010

10800551 (B.P.A.I. Jun. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KIRK P. BUMGARNER, KENNETH W. ROBERTS,
and DAVID A. TUCKER
____________

Appeal 2009-003422
Application 10/800,551
Technology Center 3600
____________

Before JENNIFER D. BAHR, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

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 No. 2009-003422
Application No. 10/800,551

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Kirk P. Bumgarner et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision finally rejecting claims 38-49 under 35 U.S.C.
§ 103(a) as obvious over Bacon (US 6,027,062, issued Feb. 22, 2000) in
view of Isoard (US 4,206,883, issued Jun. 10, 1980). We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE.
The claims on appeal relate to a process for automatically threading
an optical fiber through a component in an optical fiber draw, optical fiber
winding, or optical fiber testing process.
Claim 38, reproduced below, is illustrative of the subject matter on
appeal.
38. A method of threading a moving length of optical fiber
through a component in an optical fiber draw, optical fiber
winding or optical fiber testing process, comprising:
activating an aspirator to obtain said optical fiber at a
first location and moving said aspirator in at least two
dimensions to move said optical fiber to a second
location to thread said optical fiber through a component
in said optical fiber draw process.

The Rejection
The Examiner finds that “Isoard teaches activating an aspirator 13
mounted on a carriage 17, to obtain the fiber at a first location 3, 4 (position
I) and moving the fiber to a second location (position II) to thread the fiber
through component 7, 8 in the fiber draw process (Fig. 3, col. 4 line 58 to
col. 5 line 28).” Ans. 3. Based on this finding, the Examiner concludes that
“[i]t would have been obvious to one of ordinary skill in the art at the time
the invention was made to modify the positioning device of Bacon to include
an aspirator to hold the fiber as suggested by Isoard, to hold the fiber while
transferring and the fiber without causing damage to the fiber.” Ans. 4.
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Application No. 10/800,551

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Contentions
Appellants contend, inter alia, “Isoard clearly does not move aspirator
13 from a first location 3, 4 to a second location to thread the fiber (yarn)
through either of components 7 or 8.” Br. 5. Appellants explain that based
on the Examiner’s findings Isoard’s aspirator 13 is essentially equivalent to
Bacon’s aspirator 80 and as such the Examiner’s proposed modification does
not position a fiber through a component; instead, both aspirators 13 and 80
draw fibers. Appellants urge that even if Bacon and Isoard were combined
as proposed by the Examiner, the combination would not result in
Appellants claimed invention. Appellants’ submit that there is no teaching,
in any of the references, which would provide support for the Examiner’s
reasoning that the aspirator would cause less damage to optical fiber than
Bacon’s disclosed positioning device.

OPINION
Issue
The determinative issue in this appeal is:
Did the Examiner err in articulating the scope and content of Isoard or
in explaining how Isoard’s teachings, when properly understood, would be
utilized to render obvious the claimed process set forth in claim 38 when
Isoard’s teachings were combine with Bacon’s optical fiber winder?
Analysis
After our review of Isoard, we agree with Appellants that Isoard does
not move the aspirator 13 from a first location to a second location in order
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Application No. 10/800,551

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to thread fibers through components 7 or 8 as the Examiner appears to have
found. The Examiner has either erred in articulating the scope and content
of Isoard or in explaining how Isoard’s teachings would be utilized with
Bacon’s optical fiber winder to render obvious the claimed process set forth
in claim 38.
The Examiner relies on column 4, line 58 through column 5, line 28
of Isoard to support the Examiner’s findings within the Answer on page 3.
This section of Isoard teaches the construction of the second spinning
installation embodiment. In this embodiment, aspirator 13 (nozzle, Isoard’s
nomenclature) is mounted on the slide rail 11 by way of carriage 17.
Aspirator 13 is removably attached to carriage 17 such that it can be used as
a handling gun for positioning the yarns around drawing units 3 and 4.
Then, aspirator 13 is fixed to the carriage 17 for the transfer operation. The
transfer of yarns is caused by descending the aspirator 13 from position I to
position II, whilst the yarns continue to be drawn off and removed by
aspirator 13. Isoard then teaches that the positioning of each yarn on its
wind-up spindle 7 or 8 is effected by means of the catching nozzle 16
(aspirator, Appellants’ nomenclature), as in the preceding case. The
preceding case is how the catching nozzle 16, in conjunction with an
operator, anchors the yarns to their respective spindles within the first
embodiment. In the first embodiment, catching nozzle 16, which is handled
by an operator, seizes each yarn individually in order to anchor the yarn to
their respective spindle. Isoard, col. 4, ll. 29-35.
As such, the Examiner’s finding that the Isoard’s aspirator 13 obtains
fiber at a first location 3, 4 and moves the fiber to a second location in order
to thread the fiber through a component 7 or 8 is based on an erroneous or
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Application No. 10/800,551

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incomplete understanding of Isoard’s teachings of the second embodiment.
Moreover, the Examiner has failed to cogently explain how a proper
understanding of Isoard’s teachings, i.e., the catching nozzle 16 that is
utilized by the operator to seize each yarn and anchor each yarn to its
respective spindle can be applied to Bacon’s optical fiber winder to render
obvious the claimed process set forth in claim 38.
Moreover, the Examiner’s reasoning for combining the teachings of
Isoard’s second embodiment to Bacon’s optical fiber winder lacks evidence
in the record to lay a foundation that some rational underpinning exists other
than hindsight gleaned from Appellants’ Specification. The Examiner
appears to have reasoned that a person of ordinary skill in the art would
apply the teachings of Isoard to Bacon in order to hold the fiber while
transferring and without causing damage to the fiber. See Ans. 4. As such,
it appears the Examiner has given two reasons for making the combination:
(1) to hold the fiber and (2) without causing damage. Without more
evidence or analysis on the Examiner’s part as to why a person of ordinary
skill in the art would want to replace the Bacon’s mechanical positioning
device with an aspirator mechanism as taught is Isoard, the rejection is
essentially utilizing the claimed invention as a template to reconstruct it
from the prior art. The Examiner’s other reasoning that a person would
replace the mechanical position device with an aspirator because the
aspirator causes less damage to the optical fiber has no basis in fact within
the record. Moreover, that reasoning has been challenged by Appellants in
the form of a declaration that declares neither the Bacon nor the claimed
invention result in any damage occurring to the fiber. Bumgarner
Declaration, ¶ 5. As such, evaluating all the evidence in the record it
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Application No. 10/800,551

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appears that the Examiner is creating a problem of damage in order to solve
the problem instead of the prior art reference having a problem and another
prior art reference teaching how to solve the problem.
Therefore, we are constrained to reverse the rejection of claim 38.
Likewise, we are constrained to reverse the rejection of claims 39-49, which
depend from claim 38.

CONCLUSION
The Examiner erred in not properly articulating the scope and content
of Isoard and in not explaining how Isoard’s teachings, when properly
understood, would be utilized to render obvious the claimed process set forth
in claim 38 when Isoard’s teachings were combine with Bacon’s optical
fiber winder.

DECISION
In view of the foregoing, the Examiner’s decision to reject claims 38-
49 as obvious over Bacon in view of Isoard is reversed.

REVERSED

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