10547482 (B.P.A.I. Dec. 17, 2010)

Ex Parte Mayhew et al

Board of Patent Appeals and InterferencesDec 17, 2010

10547482 (B.P.A.I. Dec. 17, 2010)

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. 10/547,482 08/30/2005 Andrew J. Mayhew 36-1931 3013 23117 7590 12/20/2010 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER PEACE, RHONDA S ART UNIT PAPER NUMBER 2874 MAIL DATE DELIVERY MODE 12/20/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ANDREW J. MAYHEW, NICHOLAS J. MEDLEN, NEIL H. RABONE, and SIMON C. ROBERTS ____________ Appeal 2009-015070 Application 10/547,482 Technology Center 2800 ____________ Before KENNETH W. HAIRSTON, MAHSHID D. SAADAT, and ROBERT E. NAPPI, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL1 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 2009-015070 Application 10/547,482 2 Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1-7, 9-30, 32, 33, 35-40, 42, 44, 45, 47, 48, 51-59, 61, and 62. Claims 8, 31, 34, 41, 43, 46, 49, 50, 60, 63, and 64 have been objected to but indicated as containing allowable subject matter. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Introduction Appellants’ invention is directed to an optical cable. Claim 1 is illustrative of the invention and reads as follows: 1. An optical cable having: an optical fiber with a glass strand for channeling light along the cable, and a jacket disposed around the glass strand, the jacket having a textured outer surface for facilitating, under the influence of a fluid drag, the advancement of the optical cable along a conduit, wherein the glass strand has a width less than 100 microns. The Examiner relies on the following prior art in rejecting the claims: Kundis US 5,049,415 Sep. 17, 1991 Barker US 5,555,335 Sep. 10, 1996 Rennie US 5,851,450 Dec. 22, 1998 Watson US 2002/0136509 A1 Sep. 26, 2002 Hirano US 6,661,958 B2 Dec. 9, 2003 Claims 1-7, 9-13, 15-18, 21-30, 32, 33, 35-38, 47, 48, 51-56, 61, and 62 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rennie and Hirano. Appeal 2009-015070 Application 10/547,482 3 Claims 19, 20, and 57-59 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rennie, Hirano, and Watson. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Rennie, Hirano, and Barker. Claims 39, 40, 42, 44, and 45 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rennie, Hirano, and Kundis. Appellants’ Contentions Appellants’ arguments are focused on the rejection of claim 1. Appellants contend that the Examiner erred in rejecting independent claim 1 as being obvious over Rennie and Hirano because the references, alone or in combination, do not teach all the claimed features (Br. 11-16). Appellants specifically argue that there is not a proper motivation to combine the references because one of ordinary skill in the art would not have modified the fiber of Rennie based on the teachings found in Hirano related to the fiber width of less than 100 microns (Br. 13-14). ISSUE Has the Examiner erred in rejecting claim 1 as being obvious over Rennie and Hirano by showing that the ordinary skilled artisan would have combined the references and the combination teaches or suggests all the claim limitations? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own the findings and reasons set forth by the Appeal 2009-015070 Application 10/547,482 4 Examiner in the action from which this appeal is taken and the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We further note that the Examiner properly relied on Hirano for disclosing the width of the glass portion of an optical fiber being less than 100 microns for increasing the bending strength of the fiber. The Examiner specifically cites to the portion of Hirano in column 19, line 63, through column 20, line 33, for disclosing the claimed glass strand width and the reasons such dimensions are advantageous in preventing the glass from breaking due to bending stress (Ans. 4, 21-23). As such, we remain unpersuaded by Appellants’ argument (Br. 12-13) that the benefits of smaller diameter glass fiber of Hirano cannot be applied to Rennie and that Hirano uses thicker glass fiber when the fiber is not used as an optical amplifier. While the optical fiber of Hirano is coiled to form an optical amplifier (Fig. 18; col. 22, ll. 51-58), as pointed out by the Examiner (Ans. 22), the teachings of Hirano providing strength and resistance to breakage is applicable to any type of optical fiber that may be subject to bending stress. CONCLUSIONS (1) The Examiner has not erred in rejecting claim 1 as being obvious over Rennie and Hirano by showing that the ordinary skilled artisan would have combined the references and the combination teaches or suggests all the claim limitations. (2) The 35 U.S.C. § 103(a) rejection of claim 1, as well as claims 2-7, 9-30, 32, 33, 35-40, 42, 44, 45, 47, 48, 51-59, 61, and 62, not argued separately, is sustained. Appeal 2009-015070 Application 10/547,482 5 ORDER The Examiner’s decision rejecting claims 1-7, 9-30, 32, 33, 35-40, 42, 44, 45, 47, 48, 51-59, 61, and 62 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v). AFFIRMED babc NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203