Ex Parte Burns et al

Patent Trial and Appeal Board

Feb 29, 2016

13020174 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/020,174 02/03/2011 Rodney M. Burns
21495 7590 03/02/2016
CORNING INCORPORATED
INTELLECTUAL PROPERTY DEPARTMENT, SP-TI-3-1
CORNING, NY 14831
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HI08-048 1866
EXAMINER
MILLER, MICHAEL G
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODNEY M. BURNS, ANDREY V. FILLIPPOV,
RILEY S. FREELAND, DANIEL W. HAWTOF,
WARREN W. MCALPINE, and CATHARINA L. TEDDER 1
Appeal2014-003333
Application 13/020, 17 4
Technology Center 1700
Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 18, 20-22, and 25-32 in the above-identified application.
We have jurisdiction pursuant to 35 U.S.C. § 6(b)(l).
We REVERSE.
1 According to Appellants, the real party in interest is Coming Cable
Systems LLC. Appeal Br. 1.
Appeal2014-003333
Application 13/020, 17 4
BACKGROUND
The application on appeal relates to the manufacture of optical fiber
assemblies with a relatively low amount of mechanically attached water-
swellable powder. Spec. i-f 3.
Independent claims 18, 22, and 25 are representative:
18. A method of making a fiber optic assembly,
compnsmg:
providing at least one optical fiber;
extruding a polymeric tube about the at least
one optical fiber; and
applying at least a portion of a plurality of
water-swellable powder particles to an interior of the
tube as the tube is extruded about the at least one optical
fiber and the tube is at a temperature of at least 200°C,
wherein the water-swellable powder particles comprise
superabsorbent polymers and have an average particle
size of about 150 microns or less, and wherein the
powder particles are conveyed to the interior of the tube
in a motive gas at a velocity of at least 5 mis.
22. A method of making a fiber optic assembly,
compnsmg:
providing at least one optical fiber;
extruding a polymeric tube about the at least
one optical fiber;
applying at least a portion of a plurality of
water-swellable powder particles to an interior of the
tube as the tube is extruded about the at least one optical
fiber and the tube is at a temperature of at least 200°C,
wherein the water-swellable powder particles comprise
superabsorbent polymers and have an average particle
size of about 150 microns or less; and conveying the
powder particles through a passageway in strand phase
flow before applying the powder to the interior of the
tube.
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Application 13/020, 17 4
25. A method of making a fiber optic assembly,
compnsmg:
providing at least one optical fiber;
extruding a tube comprising a polymer about
the at least one optical fiber;
continuously conveying particulate matter and
motive gas through a passageway, wherein the particulate
matter includes water-swellable powder comprising
super-absorbent polymers, and wherein the powder
particles have an average particle size of about 150
microns or less; and
accelerating the particulate matter through a
nozzle so that at least a portion of the particulate matter is
mechanically attached to an interior of the tube, wherein
the particulate matter and motive gas are accelerated to
dilute phase velocities as the particulate matter and
motive gas are discharged from the nozzle.
Appeal Br. 16-17 (emphasis added).
The Examiner maintains the following rejections:
1. Claims 18,2 20-22, and 25 under 35 U.S.C. § 103(b) as being
unpatentable in view of Patent No. DE 42 19 607 C2 (hereinafter
Wenski) (published Dec. 23, 1993), and further in view of Patent
No. US 5,684,904 (hereinafter Bringuier) (issued Nov. 4, 1997)
and Patent No. US 4,987,001 (hereinafter Knobbe) (issued Jan. 22,
1991). Answer 2; Final Act. 3-9.
2 The Examiner had originally rejected claim 18 on different grounds. See
Final Act. 3-5. However, the Examiner later accepted an amendment to
claim 18 that incorporated the limitations of now canceled claim 19. See
Answer 2. Therefore, the Examiner's rejection of claim 18 is now on the
same grounds as prior claim 19. See id. Our decision refers to the Final
Action as if the Examiner's findings for claim 19 originally applied to claim
18.
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Appeal2014-003333
Application 13/020, 17 4
2. Claim 29 under 35 U.S.C. § 103(b) as being unpatentable in view
ofWenski, and further in view ofBringuier, Knobbe, US Patent
No. 4,291,640 (hereinafter Payne) (issued Sept. 29, 1981) and US
Patent No. 5,971,207 (hereinafter McDonough) (issued Oct. 26,
1999). Answer 3; Final Act. 11.
3. Claims 30-32 under 35 U.S.C. § 103(b) as being unpatentable in
view ofWenski, and further in view ofBringuier, Knobbe, and
McDonough. Answer 3; Final Act. 20-24. 3
DISCUSSION
Claims 18, 20, and 21.
The Examiner finds that W enski, in combination with Bringuier,
teaches all the limitations of independent claim 18, except that they do not
teach conveying a powder at a "velocity of at least 5 mis." See Final Act. 3-
5. However, the Examiner finds that Knobbe "teaches a method for
applying a powder coating to the inside of a cylindrical object" by charging
the particles before deposition, id. 5---6 (citing Knobbe 3:47--4:13) and
"teaches that the speed of the particles through the system determines the
amount of charge applied to the particles," id. at 6 (citing Knobbe 7:20-26).
The Examiner finds that "the particle speed is a result-effective variable with
regards to the charge applied to the particles to be deposited." Id. 6.
Therefore, the Examiner determines that determining an optimal particle
speed requires only routine skill in the art, and it would have been obvious to
combine the teachings of Knobbe with Wenski and Bringuier. Id.
3 The Examiner withdrew several other rejections after Appellants cancelled
claims 1, 3-17, 19, and 23-24. See Answer 3.
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Appeal2014-003333
Application 13/020, 17 4
Appellants argue that the Examiner has not cited any examples of
conveying a motive gas at a velocity of at least 5 mis, and has not
established a reason why this result would be sought by one of skill in the
art. Appeal Br. 14.
When the general conditions of the claimed invention are disclosed in
the prior art, "[ d]iscovery of an optimum value of a result effective
variable ... is ordinarily within the skill of the art." In re Applied Materials,
Inc., 692 F.3d 1289 (Fed. Cir. 2012) (quoting In re Boesch, 617 F.2d 272
(CCPA 1980)). Knobbe describes the use of an air amplifier (Figs. 4--6,
item 117) for "increasing the speed" of an "air-entrained powder" after it
leaves the pump, and before it enters a charging unit. Knobbe 7:20-26.
However, the Examiner does not point to any evidence that would indicate
what the initial speed of the powder was, prior to the air amplifier, or
whether the range of speeds the accelerated powder would likely have after
exiting the air amplifier would overlap with the range of 5 mis or higher as
required by claim 18. The Examiner also does not direct our attention to any
prior art teaching that a powder may be conveyed from one point to another
at a velocity of at least 5 mis as required by claim 18.
Because the Examiner, on this appeal record, does not establish that
the prior art teaches the general conditions of the claimed invention, the
Examiner has not made a prima facie case that claim 18 is obvious in view
of Wenski, Bringuier, and Knobbe. Therefore, we reverse the rejection of
claim 18, as well as claims 20 and 21 that depend therefrom.
Claims 22 and 30-32.
Independent claims 22 and 30 require a step of "conveying the
powder particles through a passageway in strand phase flow." Appeal Br.
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Appeal2014-003333
Application 13/020, 17 4
16 and 18. The Specification refers to the term strand phase conveyance as
meaning one of three flow regimes for mixtures of particles and gases, the
other flow regimes being called dense phase conveyance and dilute phase
conveyance. Spec. i-fi-150-52. According to the Specification, strand phase
conveyance velocities fall "generally within the range of 5-20 mis, between
the ranges for dense phase [and] dilute phase conveyance." Id. i152. The
Specification states that conveying particles in strand phase flow results in
more uniformity than dense phase flow, but lower back pressures at the
venturi block where powder is mixed with the motive gas. See id.
As with claim 18, The Examiner finds that Knobbe teaches
accelerating a powder in order to more effectively charge the powder, and
therefore the velocity of the motive gas, according to the Examiner, is a
result effective variable. See Final Act. 8-9, 22-23. Responding to the
point raised by Appellants that claims 22 and 3 0 refer to the flow phase
rather than a specific velocity, the Examiner also finds that the Specification
"clearly delineate[ s] correlations between phase flow regimes and the
powder velocities that generally correspond to them." Answer 3--4, 7.
Based on these findings, the Examiner concludes that it would have been
obvious to one of ordinary skill in the art to optimize velocity so as to
achieve the claim limitations. See Final Act. 6, 23.
As discussed above, the Examiner does not direct our attention to
evidence or provide technical reasoning to show that Knobbe teaches
conditions under which a powder would be accelerated to velocity greater
than 5 mis, which is the lower limit according to the Specification for strand
phase flow under the general conditions of the claims. See Spec. i1 52. In
addition, the conditions for strand phase flow have an upper and lower
bound, and the Examiner does not point to any evidence or provide any
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Appeal2014-003333
Application 13/020, 17 4
technical reasoning that Knobbe teaches conditions under which strand
phase flow would likely occur, either before or after the air amplifier. The
Examiner also does not direct our attention to any prior art teaching that a
powder may be conveyed from one point to another in strand phase flow, as
required by claims 22 and 30.
Thus, on this appeal record, the Examiner has not made a prima facie
case that independent claim 22 is obvious in view of W enski, Bringuier, and
Knobbe, or that claim 30 is obvious in view of Wenski, Bringuier, Knobbe,
and McDonough. The Examiner's additional findings regarding dependent
claims 31 and 32 do not address the deficiency addressed above. Therefore,
we reverse the Examiner's rejection of claims 22 and 30-32.
Claims 25-29.
Independent claim 25 requires that "the particulate matter and motive
gas are accelerated to dilute phase velocities as the particulate matter and
motive gas are discharged from the nozzle." Appeal Br. 17. According to
the Specification, dilute phase conveyance refers to "[ f]low velocities above
20 mis," where "powder particles generally occupy less than about 5% of the
volume of the powder/ gas mixture." Spec. i-f 51.
As with claim 18, The Examiner finds that Knobbe teaches
accelerating a powder in order to more effectively charge the powder, and
therefore the velocity of the motive gas, according to the Examiner, is a
result effective variable. See Final Act. 8-9, 22-23. Thus, the Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to optimize velocity so as to achieve the claim limitations. Final Act. 8-9.
As discussed above, the Examiner does not point to evidence or
provide technical reasoning to show that Knobbe teaches conditions under
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Appeal2014-003333
Application 13/020, 17 4
which a powder would be accelerated to velocity greater than some
particular value. In addition, the Examiner does not point to any evidence or
provide technical reasoning that Knobbe teaches conditions under which
dilute phase flow would likely occur, either before or after the air amplifier.
Furthermore, the Examiner does not address the requirement in claim
25 that the acceleration to dilute phase flow occurs "as the particulate matter
and motive gas are discharged from the nozzle." Appeal Br. 17. In Knobbe,
the acceleration occurs in an air amplifier, prior to charging the particles.
See Knobbe 7:20-26, Figs. 4---6, item 117. However, the Examiner does not
explain why the teaching of Knobbe about acceleration of a powder in order
to increase charging effectiveness would apply to acceleration of the powder
as it passes through a nozzle as required by claim 25.
Thus, on this appeal record, the Examiner has not made a prima facie
case that independent claim 25 is obvious in view of Wenski, Bringuier, and
Knobbe. The Examiner's additional findings regarding dependent claims 29
and 30-32 do not address the deficiency addressed above. Therefore, we
reverse the Examiner's rejection of claims 25-29.
DECISION
The Examiner's decision is reversed.
REVERSED
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