Ex Parte Ginocchio et al

Patent Trial and Appeal Board

Jun 30, 2015

12947544 (P.T.A.B. Jun. 30, 2015)

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.
12/947,544 11/16/2010 Alessandro GINOCCHIO 09877.0387-01 2128
22852 7590 06/30/2015
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
GUPTA, YOGENDRA N
ART UNIT PAPER NUMBER
1744
MAIL DATE DELIVERY MODE
06/30/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALESSANDRO GINOCCHIO, ENRICO CONSONNI, PAOLO
ARTURO PRESA, MASSIMO PIZZORNO, and MAURO MARITANO
____________

Appeal 2013-006490
Application 12/947,544
Technology Center 1700
____________

Before PETER F. KRATZ, MICHAEL P. COLAIANNI, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 21, 22, 26–28, 30, and 31. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 Appellants identify Prysmian Cavi E Sistemi Energia S.r.l. as the real party
in interest. App. Br. 4.
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The Invention
Appellants’ invention relates to a process for manufacturing an optical
cable with at least one retaining element, at least two transmission elements,
and a swellable yarn. Spec. ¶ 72. Claim 21, the sole independent claim, is
representative of the claims on appeal, and is reproduced below from the
Claims Appendix to the Appeal Brief:
21. A process for manufacturing an optical cable comprising
a retaining element housing at least two individual optical fibers
and a water swellable yarn, said process comprising the steps
of:
applying a powdery anti-friction agent over the individual
optical fibers by advancing the individual optical fibers and the
water swellable yarn through a powdery anti-friction agent
applicator while shielding the water swellable yarn from the
powdery anti-friction agent applicator;
bundling together the individual optical fibers and the water
swellable yarn to form a bundle, wherein said step of bundling
together is carried out after said step of applying; and
extruding the retaining element around said bundle.
The References
Landsness US 4,256,051 Mar. 17, 1981
Chiddick US 5,173,204 Dec. 22, 1992
Mathis US 6,205,277 B1 Mar. 20, 2001
Rutterman US 6,295,401 B1 Sept. 25, 2001
Spooner US 6,738,547 B2 May 18, 2004
Hurley US 6,901,191 B2 May 31, 2005
The Rejections
1. Claims 21, 22, 27, and 31 are rejected under 35 U.S.C. § 102(b) as
anticipated by Mathis;
2. Claims 21, 22, 27, and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mathis alone, or in view of Hurley;
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3. Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Mathis alone, or in view of Hurley, in view of Spooner or Rutterman;
4. Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Mathis alone, or in view of Hurley, in view of Chiddick; and
5. Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Mathis alone, or in view of Hurley, in further view of Landsness.
OPINION
We reverse the Examiner’s rejection of claims 21, 22, 27, and 31
under 35 U.S.C. § 102(b), and reverse the Examiner’s rejections of claims
21, 22, 26–28, 30, and 31 under 35 U.S.C. § 103(a).
Rejection of claims 21, 22, 27, and 31 under 35 U.S.C. § 102(b)
Because we reverse the rejection, we need only address independent
claim 21. Claim 21 recites a process for manufacturing an optical cable
comprising, inter alia, applying a powdery anti-friction agent over . . .
individual optical fibers.” App. Br. 27 (Claims App’x). The Examiner finds
that Mathis discloses applying talc (i.e., a powdery anti-friction agent) over
sub-units 12 (which the Examiner finds correspond to Appellants’ claimed
individual optical fibers). Final Action 3 (mailed July 3, 2012) (citing
Mathis 7:51–67).
Anticipation requires that every limitation of the claim in issue be
disclosed, either explicitly or inherently, in a single prior art reference. In re
NTP, Inc., 654 F.3d 1279, 1302 (Fed. Cir. 2011). It is the Examiner’s
burden to establish a prima facie case of anticipation. In re King, 801 F.2d
1324, 1326–27 (Fed. Cir. 1986).
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Appellants argue that the Examiner’s interpretation of the phrase
“individual optical fibers” is unreasonable and that, applying the proper
interpretation, Mathis fails to disclose, either expressly or inherently,
“applying a powdery agent over . . . individual optical fibers.” App. Br. 9–
12; Reply Br. 3–4.
Our analysis begins, as it must, with the language of the claims.
Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003)
(explaining that a section 103(a) analysis requires comparing the properly
construed claims to the prior art). It is well established that “the PTO must
give claims their broadest reasonable construction consistent with the
specification. . . . Therefore, we look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id.
The Examiner determines that the claimed “individual optical fibers”
encompasses the optic unit or micromodule described in Appellants’
Specification. Ans. 2–3. Appellants’ Specification, however, describes an
“optic unit” or “micromodule” as including both an optical fiber and
retaining element assembly, not merely an individual optical fiber. See, e.g.,
Spec. ¶¶ 6, 8, and 13. Appellants’ Specification also describes the process
of applying the powdery anti-friction agent, bundling the individual optical
fibers and yarn, and extruding the retaining element as providing a
micromodule. Id. ¶¶ 106–07. The language of claim 21 provides further
guidance, as it recites separately a retaining element and the step of
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extruding the retaining element around the bundle of individual optical
fibers and yarn, indicating that an individual optical fiber does not
encompass a retaining element. App. Br. 27 (Claims App’x, claim 21) (“A
process for manufacturing an optical cable comprising a retaining element
housing at least two individual optical fibers . . . and extruding the retaining
element around said bundle [of individual optical fibers and water swellable
yarn].”). The Examiner’s interpretation of “individual optical fiber[]” as
encompassing an optical fiber and retaining element, therefore, is
unreasonably broad. Thus, Mathis’s sub-units 12, which each include a
plurality of optical fibers, a yarn layer, and a sub-unit jacket, e.g., Mathis
1:63–64, are not individual optical fibers, as required by claim 21, when
interpreted properly in light of the claim language and Specification.
Accordingly, we reverse the rejection of claims 21, 22, 27, and 31 under 35
U.S.C. § 102(b).
Rejections of claims 21, 22, 26–28, 30, and 31 under 35 U.S.C. § 103(a)
The Examiner rejected claims 21, 22, 26–28, 30, and 31 as obvious
over several prior art combinations, all of which include Mathis. For all of
the rejections, the Examiner relies on the interpretation of “individual optical
fibers” that encompasses Mathis’s sub-units. See id. Because we have
determined that the Examiner’s interpretation is unreasonably broad, we also
reverse the Examiner’s rejections of claims 21, 22, 26–28, 30, and 31 under
35 U.S.C. § 103(a).
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DECISION/ORDER
The Examiner’s rejection of claims 21, 22, 27, and 31 under 35 U.S.C.
§ 102(b) is reversed.
The Examiner’s rejections of claims 21, 22, 26–28, 30, and 31 under
35 U.S.C. § 103(a) are reversed.
It is ordered that the Examiner’s decision is reversed.

REVERSED

KRH