Ex Parte Eis et al

Board of Patent Appeals and Interferences

Dec 8, 2008

10770617 (B.P.A.I. Dec. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WOLFGANG EIS and LOTHAR WILLMES
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Appeal 2008-2521
Application 10/770,617
Technology Center 1700
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Decided: December 8, 2008
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Before CHUNG K. PAK, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of our Decision of July 31, 2008
(hereinafter "Decision"), wherein we sustained the Examiner's rejection of
appealed claims 1, 3 through 27 and 29 under 35 U.S.C. § 103(a).
Appellants contend that we overlooked limitations required by claim 1.
(Request 2-5). In this regard, Appellants state:
Below is a sketch illustrating the Board's position with respect
to the Gouronnec reference.
Appeal 2008-2521
Application 10/770,617

As seen from the above-provided sketch, the honorable Board's
position does not account for the limitation of "each of said first
matrix axes intersecting each of said second matrix axes within a
boundary of said matrix configuration" [recited in claim 1].
(Request 2-3)(emphasis in original)
Thus, Appellants argue that we overlooked limitations required by
claim 1 because two crossing points of the first and second matrix axes, one
at the far left and one at the far right, are not within a boundary of the matrix
configuration. We do not agree.
We begin by noting that claim 1 requires, at a minimum, four heating
bushes, one for each crossing point of two mutually parallel first matrix axes
and two mutually parallel angular second matrix axes. As stated in page 8 of
our decision, “the claimed axes can be defined by any series of locations of
the heating bores as is apparent from Fig. 2 of the subject application.”
These series of axes can be any axes connecting two heating bores
horizontally and transversely. Also, the claim language "boundary" is not
defined in the Specification as being relative to all of the heating bushes
included in the rows and columns of heating bushes, including the 4x4
matrix, taught or suggested by Gouronnec. (See Claim 1, Figure 2, item 22
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Appeal 2008-2521
Application 10/770,617

and Spec. in its entirety). The term “boundary” is used arbitrarily to define
an area where at least four heating bushes are disposed in a parallelogram
matrix configuration. (See Claim 1, Figure 2, item 22 and Spec. in its
entirety). Further, the term "comprising" in claim 1 permits additional
elements, including any number of unclaimed heating bores 58 (orifices)
disposed outside of the crossing points of the first and second matrix axes,
but within a boundary of a matrix configuration. In re Baxter, 656 F.2d 679,
686-87 (CCPA 1981) (“As long as one of the [claimed] monomers in the
reaction is propylene, any other monomer may be present, because the term
‘comprise’ permits the inclusion of other [unrecited] steps, elements, or
materials.”).
As indicated in page of 8 of our decision, Gouronnec's square matrix
configuration having at least two rows and at least three columns of heating
bores 58 (orifices) (including "4x4 matrix") include at least four or six
heating bores 58 (orifices) arranged in a parallelogram matrix configuration
which defines the claimed first and second matrix axes. At least four of the
heating bores 58 (orifices) are disposed at the four crossing points of the first
and second matrix axes which define a parallelogram matrix configuration.
These heating bores 58 (orifices), which meet the four heating bush
minimum required by claim 1, are within an arbitrary boundary of the matrix
configuration as required by claim 1
To the extent that the Gouronnec alone would not have suggested
arranging such heating bores 58 positioned in the claimed manner, the
outcome of this case would not be altered.
As stated in our decision:
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Appeal 2008-2521
Application 10/770,617

Jensen, like Gouronnec and Appellants, teaches an apparatus
for producing optical glass fibers comprising heating orifices or tips,
which are located in plate 13 (known as a "bushing") for heating
multiple preforms as they are passed through, for example, the heating
orifices (heating diffusers) to draw optical fibers. (Compare Spec. Fig.
2 and Gouronnec col. 4, l. 64 to col. 5, l. 5 with Jensen, Fig. 4, item
17, Fig. 7, item 2, and col. 1, ll. 10-53 and Spec. Figs. 2 and 3 and p.
33). Jensen's electric heating causes plate 13 and the walls defining
the orifices (diffusers) in the plate to function as a heating means for
preforms passing through the orifices. (Jensen, col. 4, ll. 43-55). These
heating walls defining the orifices are embraced by the claimed
heating element. (Compare Jensen, col. 4, ll. 43-55 with Spec. 11).
Like Appellants, Jensen teaches that these heating orifices are
positioned "in adjacent rows [and] are staggered with respect to one
another. . . [to] minimiz[e] the pitch (18) between adjacent rows as
well as the pitch (19) between adjacent tips [orifices] in the same
row." (Compare Spec. 7 with Jensen col. 1, ll. 45-53 and col. 5, ll. 25-
30). Jensen's arrangement of heating orifices (bushings) in the claimed
configuration is said to allow increased glass fiber production.
(Jensen, col. 1, ll. 45-52).

(Decision 8-9).
Appellants have provided no persuasive arguments or evidence
disputing this determination.
Accordingly, Appellants’ Request for Rehearing has been granted to
the extent that we have reconsidered our Decision, but denied with respect to
making any modification therein.
DENIED

cam
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Appeal 2008-2521
Application 10/770,617

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