Ex Parte Hudson et al

Patent Trial and Appeal Board

Apr 7, 2016

13524188 (P.T.A.B. Apr. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/524, 188 06/15/2012 Edward H. Hudson
21495 7590 04/11/2016
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.
Hlll-043 8121
EXAMINER
HOLLWEG, THOMAS A
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
04/11/2016 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 EDWARD H. HUDSON, WILLIAM C. HURLEY,
WARREN W. MCALPINE, and DAVID A. SEDDON
Appeal2014-008073
Application 13/524, 188
Technology Center 2800
Before ROBERT E. NAPPI, NATHAN A. ENGELS, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 5, 6, 1 7, and 21, which constitute all of the claims pending in this
application. Claims 1--4, 7-16, and 18-20 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify Coming Optical Communications LLC as the real party
in interest. App. Br. 1.
Appeal2014-008073
Application 13/524,188
THE INVENTION
The claimed invention is directed to an optical fiber cable bundle with
an inner layer and a helically stranded outer layer with a specific lay length
that does not have external binders. Spec. i-fi-1 7, 8, 15-18, 23.
Claim 21, reproduced below, is illustrative of the claimed subject
matter:
21. A fiber optic cable bundle, comprising:
an inner layer of at least one subunit fiber optic cable;
and
an outer layer of a plurality of subunit fiber optic cables
helically stranded about the inner layer, the inner layer
comprises one central subunit and the outer layer comprises
eight subunits, the subunit in the inner layer having an outside
diameter that is greater than an outside diameter of the eight
subunits in the outer layer, and wherein each subunit fiber optic
cable comprises:
at least one optical fiber;
a layer of loose tensile strength members
surrounding the at least one optical fiber; and
a polymeric subunit jacket surrounding the layer of
loose tensile strength members;
wherein a helical lay length of the outer layer is between
50-70 mm and a diameter of the subunit in the inner layer is in
the range of 2.8-3.0 mm;
wherein a diameter of the subunits in the outer layer is in
the range of 1.6-1. 7 mm;
wherein the tensile strength members comprise aramid
yam;
wherein the bundle is free of a glass-reinforced plastic
( GRP) strength member; and
wherein the outer layer of subunits comprises the exterior
perimeter of the bundle and the bundle is free of external
binders and a jacket.
2
Appeal2014-008073
Application 13/524,188
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Ferer us 4,317 ,000 Feb.23, 1982
Kamei et al. us 6,011,887 Jan.4,2000
Dallas et al. US 2005/0286843 Al Dec. 29, 2005
Barrett et al. WO 2010/042816 Al Apr. 15, 2010
Jakob Bohr & Kasper Olsen, The Ancient Art of Laying Rope, Dept. of
Physics 1, 1---6 (2010) (hereinafter "Bohr")
REJECTIONS
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barrett in view of Dallas.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barrett in view of Dallas and Olsen.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barrett in view of Dallas and Kamei.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellants.
The Examiner notes Barrett is silent on the specific lay length of the
outer layer and does not "explicitly disclose [that the] lay length of the outer
layer is between 50-70 mm" as recited in claim 21. Final Act. 14. The
Examiner finds it would have been obvious to a person of ordinary skill in
the art, through routine experimentation and optimization, to make the lay
length of the outer layer between 50 and 70 mm. Final Act. 15. The
3
Appeal2014-008073
Application 13/524,188
Examiner further finds a person of ordinary skill would have optimized the
lay length because it was well known that bending of optical fibers can cause
a loss of optical signals and one would have wanted to optimize optical loss.
Ans. 8.
Appellants argue the doctrine of routine optimization requires the
specific parameter that is being varied to have been recognized as a result-
effective variable. App Br. 11 (citing MPEP 2144.05(II)(B)); Reply Br. 5---6.
Appellants further argue, citing a non-precedential BP AI decision, that the
cited art cannot identify just any purpose for the optimization; instead, the
prior art must identify "evidence that the parameter at issue was recognized
to be a result-effective variable for the claimed purpose." Reply Br. 6 (citing
In re Collison, No. 2010-002734 (BPAI Feb. 29, 2012) (non-precidential)).
Appellants identify several purposes for the optimization. If the lay
length is to short, it "can have a detrimental effect on fiber reliability, macro
bend induced attenuation or both, depending on the fiber type of the cable."
App. Br. 11 (quoting Spec. i-f 18). However, the lay length must be short
enough "so that the bundles maintain integrity while being bent, routed, and
installed." App. Br. 12 (quoting Spec. i-f 20).
Discovery of an optimum value of a result effective variable is
ordinarily within the skill of the art. See In re Boesch, 617 F.2d 272, 276
(CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955). However, an
exception has been found where the parameter optimized was not recognized
to be a result-effective variable. In re Antonie, 559 F.2d 618, 620 (CCP A
1977). In this case, the Examiner has not established that a helically
stranded outer layer having a lay length of between 50 to 70 mm was
recognized to be a result-effective variable as to attenuation and bundle
4
Appeal2014-008073
Application 13/524,188
integrity. Although Barret teaches that optical attenuation is a consideration
(Ans. 8-9 (citing Barrett i-f 8) ), the Examiner does not point to any testing in
Barrett of different lay lengths and its impact on attenuation. Also, although
the Examiner points to other issues that could be impacted by the lay
length-including "signal transmission time throughout the cable, torsion
balancing of the bundle, stretch and bending characteristics of the bundle,
and the amount of materials used for a given length of cable bundle" (Ans.
9}-there is no discussion on how different lay lengths effect those
conditions or how one of ordinary skill in the art would decide what is
optimal. More importantly, there is no evidence to indicate whether a fiber
optic cable bundle having the claimed lay length would result from
combining and optimizing teachings and variables of the references.
Accordingly, based on the record before us, we agree with Appellants that
the Examiner erred in finding a helical lay length of 50-70 mm to have been
an obvious result of routine experimentation.
Because we agree with at least one of the dispositive arguments
advanced by Appellants, we need not reach the merits of Appellants' other
arguments.
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claim 21, along with the rejections of claims 52 and
17, which are argued on the same ground, and dependent claim 6.
2 Claim 5 recites a lay length of 40-60 mm. Although the range of the lay
length is different, our analysis and findings are otherwise identical for
claims 21 and 5.
5
Appeal2014-008073
Application 13/524,188
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
5, 6, 17, and 21.
REVERSED
6