Ex Parte Milicevic et al

Patent Trials and Appeals Board

Jun 14, 2019

12689394 - (D) (P.T.A.B. Jun. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/689,394 01/19/2010
23460 7590 06/18/2019
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Igor Milicevic
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.
268638 5767
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
06/18/2019 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IGOR MILICEVIC,
MATTHEUS JACOBUS NICOLAAS VAN STRALEN,
JOHANNES ANTOON HARTSUIKER, and
ROLAND HEUVELMANS
Appeal2017-010094
Application 12/689,394
Technology Center 1700
Before MARK NAGUMO, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-5, 7-11, and 13-19. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
WeAFFIRM. 3
1 Heard June 3, 2019. The Official Transcript will be made of record in due
course.
2 Appellants identify Draka Comteq, B.V., as the real party in interest
(Appeal Br. 1 ).
3 Our Decision refers to the Specification ("Spec.") filed January 19, 2010,
Appellants' Appeal Brief ("Appeal Br.") filed February 16, 2017, the
Appeal2017-010094
Application 12/689,394
STATEMENT OF THE CASE
The invention relates to a method to manufacture an optical fiber
preform, by collapsing or contracting a deposited glass tube to a glass rod or
preform utilizing a heat source, wherein the concentration of at least one
fluid component of a fluid that is exhausted from the tube during the
collapsing is monitored to detect structural integrity and breakage of the
tube. Spec. 1 :3-26.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. A method for manufacturing an optical fiber preform glass rod
from a coated glass tube having a space that is collapsed to
form the optical fiber preform glass rod, the method
compnsmg:
flowing a fluid through the space of the coated glass tube
to provide a fluid exhaust flow discharged from the coated glass
tube;
monitoring the fluid exhaust flow discharged from the
space of the coated glass tube; and
collapsing, during the monitoring, the coated glass tube
to form the optical fiber preform glass rod,
wherein the monitoring comprises:
sensing a concentration of a specific single fluid
component of the fluid exhaust flow during the
collapsing, and
conditionally generating an alarm signal in
response to a detecting a deviation by the concentration
from an expected concentration, the deviation indicating
a structural degradation of the coated glass tube during
the collapsing.
Examiner's Answer ("Ans.") dated May 22, 2017, and Appellants' Reply
Brief ("Reply Br.") filed July 24, 201 7.
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Remaining independent claim 9 recites a similar method for
manufacturing an optical fiber preform glass rod from a coated glass tube.
REJECTIONS
The Examiner maintains, and Appellants request our review of the
following grounds of rejection:
1. Claims 1-5, 7-11, and 13-19 under 35 U.S.C. §112, second
paragraph, as indefinite; and
2. Claims 1-5, 7-11, and 13-19 under 35 U.S.C. § I03(a) as
unpatentable over Han4 in view of Chludzinski 5 and Thonnelier. 6
ANALYSIS
Rejection 1: Indefiniteness under 35 U.S. C. §112, second paragraph
"[W]e apply the approach for assessing indefiniteness approved by the
Federal Circuit in Packard, i.e., '[a] claim is indefinite when it contains
words or phrases whose meaning is unclear."' Ex parte McAward, No.
2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017)
(precedential) (quoting In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir.
2014)). The language in 35 U.S.C. § 112, second paragraph, "of
'particular[ity]' and 'distinct[ness]' indicates[] claims are required to be cast
in clear-as opposed to ambiguous, vague, indefinite-terms." Packard,
751 F.3d at 1313 (first and second alterations in original).
The Examiner determines that claim 1 is indefinite in the preamble
because it is unclear how one could tell if a space is collapsed or not, given
4 Han et al., US 2005/0092029 Al, published May 5, 2005.
5 Chludzinski, US 5,890,376, issued April 6, 1999.
6 Thonnelier et al., US 2004/0050094, published March 18, 2004.
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that there is no mention of any space or anything which would aid those
skilled in the art in determining whether a particular space is or is not
collapsed. Ans. 2. The Examiner also determines that claim 1 is indefinite
because it is unclear if "the space" refers to the space before or after the
collapse. Id. According to the Examiner, these determinations are
undisputed. Id.; see also id. at 12-13. However, Appellants contend that the
phrase "is collapsed" refers to the known manufacturing activity of forming
an optical fiber preform glass rod by collapsing a space within a coated glass
tube. Appeal Br. 6; Reply Br. 3. Appellants further contend that the
Examiner's concern appears to result from extracting the phrase, "is
collapsed," from the larger phrase, "manufacturing an optical fiber preform
glass rod from a coated glass tube having a space that is collapsed to form
the optical fiber preform glass rod," such that the extracted phrase is read out
of context. Id.
In the context of claim 1, we do not find the preamble to be
indefinite. As described in the Specification, "a deposited glass tube is
contracted in a contraction machine to a glass rod." Spec. 1 :7-8. This step
is known as a collapse phase and the contraction machine is generally
known as a collapser. Id. at 1 :6-9. A skilled artisan would readily
understand that this collapsing of the glass tube to a glass rod would collapse
the internal space within the tube so as to form this glass rod, i.e., the tube's
internal space is collapsed and no longer exists in the glass rod. We find the
language of claim 1 is consistent with this interpretation of the Specification
in that the preamble recites that the glass tube has a space that is collapsed to
form the glass rod and that a fluid exhaust flow is discharged from the space
of the glass tube due to the collapsing step. Therefore, we do not sustain the
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Examiner's indefiniteness rejection as to the phrase, "is collapsed," and the
"space."
The Examiner next determines that claim 1 is indefinite because it is
not clear what is meant by the phrase, "conditionally generating." Ans. 3.
The Examiner notes that "[e]ssentially everything has multiple conditions"
and the Specification fails to mention, describe, or suggest any specific
"condition" under which "generating" would be performed. Id. The
Examiner concludes that, if everything has an associated condition, then the
term "conditionally" adds no distinguishing feature to the claim. Id. As
such, the Examiner determines that it is unclear if this term serves to limit
claim 1. Id.
Again, although the Examiner states that the above determination
regarding "conditionally generating" is undisputed, Appellants argue that the
"conditionally generating" operation occurs during every manufacture of the
optical fiber preform glass rod from a coated glass tube, not just when the
tube breaks. Appeal Br. 7. According to Appellants, this operation is
performed by control logic executed by the "tube integrity monitor." Id. As
such, Appellants contend that "conditionally generating" is distinguished
from merely "generating" which refers to the actual generating of an alarm
when a breakage is detected. Id.
Claim 1 recites "conditionally generating an alarm signal in response
to a detecting a deviation by the concentration from an expected
concentration." The term, "conditionally," is defined to mean "[i]n a way
that is subject to one or more conditions or requirements being met."7 Thus,
7 https://en.oxforddictionaries.com/definition/conditionally, last visited June
10, 2019.
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claim 1 recites that the generating step is subject to one or more conditions
or requirements, i.e., subject to the detection of a deviation by the sensed
concentration from an expected concentration. This conditional step would
neither have been unclear nor redundant or superfluous to one of ordinary
skill in the art. The ordinary artisan would have understood, as the
Examiner explains in Rejection 2 (Ans. 7), that this conditional step leads to
two possible outcomes----one in which an alarm signal is generated because
the condition is met and one in which an alarm signal is not generated
because the condition is not met. Therefore, we do not sustain the
Examiner's indefiniteness rejection as to the phrase, "conditionally
generating."
The Examiner determines that claim 9 is indefinite for the same
reasons as given for claim 1. Ans. 3. Because we do not sustain the
Examiner's indefiniteness rejection of claim 1, we likewise do not sustain
the Examiner's indefiniteness rejection of claim 9.
The Examiner next determines that claims 18 and 19, which depend
ultimately from claim 1, are confusing in the phrase, "conditionally
interrupting," because it is unclear how one can determine if interrupting
occurs and the Specification provides no indication as to what the step of
interrupting might be. Ans. 3. The Examiner states that "it is conventional
for the ends of the tube to not be collapsed, in such a case it is inherent that
collapsing is interrupted prior to complete collapse." Id. The Examiner also
states that changing the conditions of the collapsing, for example from 0.1
atm to 0.2 atm, could also be considered "interrupting." Id. In other words,
the Examiner's position is that "interrupting" could be broadly defined to
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cover nearly any change in the operation of the collapsing step. Once again,
the Examiner states that this determination is undisputed. Id.
However, Appellants argue that, similar to the "conditionally
generating" phrase as discussed above, "conditionally interrupting" is a part
of the manufacturing operation as described in the Specification. Appeal Br.
8; see also Reply Br. 5. We note, however, that the Examiner's position is
not with regard to the use of the term "conditionally" in the interruption step,
but is instead directed to "interrupting" as a term of broad scope.
Nonetheless, we also note that "breadth is not to be equated with
indefiniteness." In re Miller, 441 F.2d 689,693 (CCPA 1971).
Moreover, we disagree with the Examiner's view that "interrupting" is
an indefinite term as used in the claim, especially in light of the
Specification. As the Examiner finds, the plain meaning of "interrupt" is "to
stop." Ans. 3. Each of claims 18 and 19 recites that the collapsing is
interrupted, conditionally in response to the detection of a deviation
indicating structural degradation of the glass tube, i.e., breakage. In this
context, the plain meaning of these claims is that the collapsing of the glass
tube is stopped when the condition of structural degradation of the glass tube
is detected. This interpretation is consistent with Appellants' description of
the process in the Specification. See Spec. 5: 18-19 ("a tube collapsing
process can be interrupted automatically by the processing unit C in case
such degradation is detected"). It is clear that claims 18 and 19 require that
the collapsing process is stopped in response to detecting structural
degradation of the glass tube, and not merely due to coming to the end of the
glass tube or changing the conditions of the collapsing process. Therefore,
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we do not sustain the Examiner's indefiniteness rejection as to claims 18 and
19.
The Examiner next determines that claims 7 and 8, which depend
from claim 1, are indefinite due to lack of antecedent basis for "the change
[in the concentration]," which the Examiner states is uncontested. Ans. 4.
Indeed, Appellants state that they do not challenge this determination,
instead stating their intention to amend these claims to recite "deviation by
the concentration from the expected concentration." Appeal Br. 8; Reply Br.
7. Therefore, we summarily affirm the Examiner's indefiniteness rejection
as to claims 7 and 8.
Rejection 2: Obviousness under 35 U.S.C. § 103(a)
After review of Appellants' and the Examiner's opposing positions,
the applied prior art, and Appellants' claims and Specification disclosures,
we determine that Appellants' arguments are insufficient to identify
reversible error in the Examiner's obviousness rejection. In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we sustain the stated
obviousness rejection for substantially the fact findings and the reasons set
forth by the Examiner in the Examiner's Answer. We offer the following
for emphasis only.
Appellants argue claims 1 and 9 together and do not otherwise
separately argue the remaining claims on appeal. We select claim 1 to
address Appellants' arguments. Claims 2-5, 7-11, and 13-19 stand or fall
with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv) (2016).
The Examiner finds that Han discloses a method of manufacturing an
optical fiber preform glass rod from a coated glass tube having a space that
is at least partially collapsed to form the glass rod. Ans. 4--5. The Examiner
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further finds that Han discloses flowing a fluid, e.g., helium, alcohol, and
moisture, through the space of the glass tube to provide an exhaust flow
discharged from the glass tube during the collapsing step. Id. at 5---6. The
Examiner acknowledges that Han fails to teach monitoring of this exhaust
flow. Id. at 5.
For this feature, the Examiner finds that Chludzinski discloses
recovery and reuse of helium from optical fiber manufacturing processes
because helium is expensive, by testing the purity level of helium from a
consolidation process. Ans. 5. The Examiner also finds that Chludzinski
and Thonnelier teach that helium can be recovered from any process step
that utilizes helium in the making of optical fibers, including consolidation.
Id. at 6. The Examiner concludes that it would have been obvious to
test/monitor helium from Han's collapsing process for its
purity/concentration to determine if it is sufficiently pure for reuse as
Chludzinski teaches. Id. at 5---6.
The Examiner acknowledges that Han, as modified in view of
Chludzinski and Thonnelier, fails to teach the generation of an alarm signal
in response to the helium testing/monitoring. Ans. 7. However, the
Examiner notes that this alarm signal generation is recited as a conditional
step and interprets this conditional step as leading to two possible
outcomes----one in which an alarm signal is generated because the condition
is met and one in which an alarm signal is not generated because the
condition is not met. Id. In the latter outcome in which an alarm signal is
not generated, the Examiner finds that the modified Han process meets claim
1, where there is no tube breakage. Id.
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Appellants argue that Chludzinski fails to teach "detecting a deviation
of fluid concentration ( of helium) from an expected concentration to indicate
structural degradation of the coated glass tube during the collapsing."
Appeal Br. 11. Appellants urge that Chludzinski instead "is directed to
detecting for the presence of contaminants in the exhaust helium mixture to
determine whether to re-use the exhaust helium or discard/vent it." Id.
Thus, Appellants contend that "Chludzinski does not describe any type of
monitoring/alarming tied to detecting a 'deviation by the concentration ...
indicating a structural degradation of the coated glass tube during the
collapsing."' Id. at 11-12.
In response to the Examiner's interpretation of "conditionally
generating," Appellants assert that this phrase is not synonymous with
"optionally generating" because "conditionally generating" occurs for every
manufactured optical fiber preform glass rod. Appeal Br. 12. According to
Appellants, the "conditionally generating" step is always performed even if
an actual "deviation by the concentration from an expected concentration"
does not occur. Id. Appellants contend that the "conditionally generating"
step distinguishes from the prior art because "an alarm signal is generated
when the triggering condition is detected AND is not generated when the
triggering condition is not present." Id.
Appellants' arguments are not persuasive of reversible error.
Although Appellants contend that the "conditionally generating" step is
always performed in the recited process, the law favors the Examiner's
interpretation of this step. "If the condition for performing a contingent step
is not satisfied, the performance recited by the step need not be carried out in
order for the claimed method to be performed." Cybersettle, Inc. v. Nat'!
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Arbitration Forum, Inc., 243 F.App'x 603, 607 (Fed. Cir. 2007)
(unpublished); see also Applera Corp. v. Illumina, Inc., 375 F.App'x 12, 21
(Fed. Cir. 2010) (unpublished); Ex parte Schulhauser, Appeal No. 2013-
007847, 2016 WL 6277792, at *3-5 (PTAB Apr. 28, 2016) (precedential)
(In method claims, a step reciting a condition precedent does not need to be
performed if the condition precedent is not met.); Ex parte Fleming, Appeal
No. 2014-002849, 2014 WL 7146104, at *1-3 (PTAB Dec. 12, 2014)
( expanded panel decision on rehearing) (method was satisfied when the
recited condition precedent was not met and, therefore, the conditional
limitation was not performed); Ex parte Urbanet, Appeal No. 2011-002606,
2012 WL 4460637, at *2 (BPAI Sept. 19, 2012) (held that conditional
wherein clause created two methods, one of which requiring the conditional
step be performed and the other not, and the latter can be met by prior art
method not performing the conditional step); Ex parte Katz, Appeal No.
2010-006083, 2011 WL 514314, at *4--5 (BPAI Jan. 27, 2011) (a
conditional "if' clause is not a limitation against which prior art must be
found).
Applying the above case law here, we determine, as did the Examiner,
that Han, as modified in view of Chludzinski and Thonnelier, meets claim 1
when the condition precedent, i.e., the triggering condition, is not met and
the alarm signal is not generated. Claim 1 does not recite any step other than
the "conditionally generating" step that would not be performed by the
modified Han process. We note that Han's modified process would include
monitoring the fluid exhaust flow discharged from the space of the coated
glass tube, wherein a level of purity or concentration of helium, i.e., a
specific single fluid component, is sensed as Chludzinski teaches.
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At oral hearing, for the first time, Appellants attempted to distinguish
between a collapsing process as recited in claim 1 and Han and a
consolidation process as recited in Chludzinski and Thonnelier. Under
regulations governing oral hearings at the Board, Appellants may only
present argument that has been relied upon in the Appeal and Reply Briefs
and may present new argument only based upon a recent relevant decision of
either the Board or a Federal Court upon a showing of good cause. See 37
C.F.R. §§ 4I.47(e)(l) and (2); see also 37 C.F.R. §§ 41.37 and 41.41; In re
Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not
first raised in the brief to the Board is waived on appeal); Ex parte
Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (explaining that
arguments and evidence not timely presented in the principal Brief will not
be considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument could not have been presented in the Principal
Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative)
("Properly interpreted, the Rules do not require the Board to take up a
belated argument that has not been addressed by the Examiner, absent a
showing of good cause.").
This new argument was not presented in the Briefs and is not based
upon a recent relevant decision of either the Board or a Federal Court. Nor
have Appellants provided this record with any such showing of good cause.
Accordingly, we will not consider this new argument, which was presented
for the first time at oral argument. Further, even if considered, Appellants
fail to address the Examiner's finding that Chludzinski and Thonnelier both
disclose recovery of helium from any process step that utilizes helium in the
making of optical fibers.
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Appellants next argue that Thonnelier effectively teaches away from
monitoring the concentration of the recycled/contaminated helium since the
mere presence of a contaminant in the exhaust gas, regardless of the
concentration, is indicative of a need to purify the helium before reuse.
Appeal Br. 12-13. This argument is not persuasive of reversible error. "A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). Further, references in a combination may be said to teach away
where their combined teachings would produce a "seemingly inoperative
device." See In re Sponnoble, 405 F.2d 578, 587 (CCPA 1969). "A
reference does not teach away, however, if it merely expresses a general
preference for an alternative invention but does not 'criticize, discredit, or
otherwise discourage' investigation into the invention claimed." DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
Also, teaching an alternative or equivalent method, does not teach away
from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438
(CCP A 1965).
Here, Appellants do not direct us to any specific disclosure in
Thonnelier in support of their argument. Thonnelier does disclose that it is
common practice to purify helium for the purpose of recycling it, and further
discloses a number of patent documents that recommend purification of
impure helium. Thonnelier ,r,r 13, 19. Neither of these disclosures teaches
away from, i.e., criticizes, discredits, or otherwise discourages, monitoring
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of the helium concentration in the exhaust flow during the
consolidation/collapsing step in optical fiber manufacture as taught in
Chludzinski. If anything, Thonnelier teaches an alternative approach to
Chludzinski that results in greater helium recovery and reuse, albeit at
greater cost, since all helium outflows are purified. Therefore, Thonnelier
does not teach away from monitoring the helium fluid exhaust flow in Han
as Chludzinski suggests.
DECISION
For the reasons given above and in the Appeal and Reply Briefs, the
decision of the Examiner rejecting claims 1-5, 9-11, and 13-19 under 3 5
U.S.C. § 112, second paragraph, as indefinite is reversed.
However, upon consideration of the record, and for the reasons given
above and in the Examiner's Answer, the decision of the Examiner rejecting
claims 7 and 8 under 35 U.S.C. § 112, second paragraph, as indefinite and
rejecting claims 1-5, 7-11, and 13-19 under 35 U.S.C. § 103(a) as
unpatentable over Han in view of Chludzinski and Thonnelier 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)(l).
AFFIRMED
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