Ex Parte Nash

Patent Trial and Appeal Board

Jan 13, 2014

12067288 (P.T.A.B. Jan. 13, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/067,288 03/18/2008 Philip John Nash 08-364 9533
20306 7590 01/13/2014
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
TAVLYKAEV, ROBERT FUATOVICH
ART UNIT PAPER NUMBER
2883
MAIL DATE DELIVERY MODE
01/13/2014 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 PHILIP JOHN NASH
____________

Appeal 2011-009413
Application 12/067,288
Technology Center 2800
____________

Before CHUNG K. PAK, LINDA M. GAUDETTE, and KAREN M.
HASTINGS, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
The named inventor (hereinafter “Appellant”)1 appeals under 35
U.S.C. § 134 from the Examiner’s refusal to allow claims 1, 3, 4, 6 through
10, 12 through 15, 17, and 19 through 21, all of the claims pending in the
above-identified application. We have jurisdiction pursuant to 35 U.S.C.
§ 6(b).
We affirm.

1 Appellant identifies the real party in interest as Qinetiq Limited. (See
Appeal Brief filed November 2, 2010 (“App. Br.”) at 1.)
Appeal 2011-009413
Application 12/067,288
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STATEMENT OF THE CASE
The subject matter on appeal is directed to “fibre-optic packages and
to methods of making fibre-optic packages.” (Spec. 1, ll. 3-4.) The
packages and methods of making the same involve “fused-fibre coupling” of
the first and second fibres of a first fibre-optic device or component and a
second fibre-optic device or component, respectively. (Spec. 2, ll. 5-10.)
According to page 2, lines 10-17, of the Specification:
“[F]used-fibre coupling” of two fibres refers to the coupling of
the two fibres by joining respective lengths of each fibres
together such that, after coupling, a portion of radiation carried
in one fibre may pass into the other fibre by evanescent
coupling of radiation. Fused-fib[er] coupling may be achieved
in a number of ways, for example by winding the two lengths of
fibres around each other and then pulling them in a flame (i.e.[,]
fused-taper coupling), or by polishing the lengths of fibre and
then gluing them next to each other.

The fused-fibre coupling is said to be a significant improvement over
conventional time-consuming fused splicing that was used to join the
respective lengths of the fibres. (Spec. 1-2.)
Figure 7, which is illustrative of one of such packages and methods, is
reproduced below:

In Figure 7, a fibre 116 extends through an array of two or more
accelerometers 102, 104, and 106 and has connecting portions which are
Appeal 2011-009413
Application 12/067,288
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coupled to fibres of reflectors 118, 120, 122, and 124 by means of fused-
fibre coupling. (Spec. 6.)
Figure 10, which is also illustrative of another package and method of
Appellant’s invention, is reproduced below:

In Figure 10, input and output fibres of adjacent accelerometers are coupled
via fused-fibre coupling at 201 and 203. (Spec. 7, ll. 11-12.)
Details of the appealed subject mattered are recited in representative
claims 1, 3, and 172 reproduced from the Claims Appendix to the Appeal
Brief as shown below:
1. A package comprising two or more fibre optic
accelerometers, said accelerometers connected in an array with
one or more fibre optic connecting portions extending between
said two or more accelerometers, wherein said connecting
portions form part of a single continuous fibre extending
through the array, one or more reflectors being coupled to a
connecting portion of said continuous fibre by fused fibre
coupling.

3. A package comprising two or more fibre optic
accelerometers, said accelerometers connected in an array with
one or more fibre optic connecting portions extending between

2 Appellant only argues the limitations of claims 1, 3, and 17 on appeal.
(App. Br. 5-11.) Accordingly, for purposes of this appeal, we limit our
discussion to those limitations in claims 1, 3, and 17 consistent with 37
C.F.R. § 41.37(c)(1)(vii) (2007). See also In re Baxter Travenol Labs., 952
F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of this court to
examine the claims in greater detail than argued by an appellant, looking for
nonobvious distinctions over the prior art.").
Appeal 2011-009413
Application 12/067,288
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accelerometers, wherein each accelerometer comprises an optic
fibre having at least one exposed end, and wherein at least one
of said connecting portions is formed by fused fibre coupling
the exposed ends of two connected accelerometers.

17. A method of forming a fibre-optic package
comprising arranging two or more fibre-optic accelerometers in
an array configuration to form connected accelerometers, and
performing a fused fibre coupling on a fibre optic connecting
portion extending between said connected accelerometers.

(See App. Br. 12, 13, and 14 (Claims App’x).) (Emphasis added.)
Appellant seeks review of the Examiner’s rejection of claims 1, 3, 4, 6
through 10, 12 through 15, 17, and 19 through 21under 35 U.S.C. § 103(a)
as unpatentable over the combined disclosures of Kim ‘632,3 Berg,4 and Kim
‘961.5 (See App. Br. 4 and the Examiner’s Answer mailed January 31, 2011
(“Ans.”) at 4-8.)

FACT FINDINGS, PRINCIPLES OF LAW, ANALYSES, and
CONCLUSIONS
I. Claims 1, 12-15, 17, and 19-216

3 European Patent Application Publication 0 251 632 A2 published in the
name of Kim et al. on January 7, 1988 (“Kim ‘632”).
4 U.S. Patent Application Publication 2002/0180978 A1 published in the
name of Berg et al. on December 5, 2002 (“Berg”).
5 U.S. Patent 6,614,961 B2 issued to Kim et al. on September 2, 2003 (Kim
‘961”).
6 Appellant has grouped claims 17 and 19 through 21 with claims 3, 4, and 6
through 10 for the purposes of this appeal. (App. Br. 9.) However, we
group claims 17 and 19 through 21 with claims 1 and 12 through 15 as well
because claim 17 has a broad limitation that includes the feature of either
claim 1 or 3 in question.
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Application 12/067,288
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As evidence of obviousness, the Examiner relies upon Kim ‘632 to
show two or more fibre-optic sensors (224) of a fibre coil type that are
connected in an array with a single continuous fibre optic (102) having
connecting portions (the areas within couplers (108a), (108b,) and (108c))
which are coupled to fibre optics (220a), (220 b), and (220c) of reflectors
(222). (Ans. 4-5; see also Kim ‘632, Fig. 5 and p. 11, l. 15 to p. 12, l. 12.)
The fibre-optic sensors (224) of a fibre coil type disclosed in Kim ‘632,
according to the Examiner, are accelerometers or can be part of a package
comprising accelerometers as shown by Berg. (Ans. 5.) Although the
Examiner acknowledges that Kim ‘632 does not mention the employment of
fused-fibre coupling to couple the fibres of the reflectors (222) to the
connecting portions of the single continuous fibre optic (102), the Examiner
finds that Kim ‘961 teaches that such “fused[-]fiber coupling is the most
common technique of fabricating fiber-optic couplers” and has “several
advantages” over other known coupling techniques. (Ans. 5-6 and Kim
‘961, col. 1, ll. 21-25 and Figs. 1B and 1C.) The Examiner then concludes
that one of ordinary skill in the art would have been led to employ the
fused-fibre coupling technique taught by Kim ‘961 to couple the fibres of
the reflectors (222) to the connecting portions of the single continuous fibre
optic (102) located between fibre-optic accelerometers disclosed or
suggested by Kim ‘632 and Berg as required by claims 1 and 17. (Ans. 5-8.)
Appellant does not dispute the Examiner’s finding that the fibre-optic
sensors (224) of a fibre coil type disclosed in Kim ‘632 are accelerometers
or can be part of a package comprising accelerometers. (App. Br. 5-9.) Nor
does Appellant dispute the Examiner’s determination that one of ordinary
skill in the art would have been led to couple the fibres of the reflectors
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Application 12/067,288
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(222) to the connecting portions of the single continuous fibre optic (102)
located between two or more fibre-optic accelerometers disclosed or
suggested by Kim ‘632 and Berg. (Id.) Appellant contends that Kim ‘632
does not disclose “connecting portions form[ing] part of a single continuous
fibre extending through the array” as recited in claim 1. (Id. at 8-9.) We are
not persuaded by Appellants’ contention. 7
As indicated supra, Kim ‘632 teaches coupling the fibres of the
reflectors (222) to the connecting portions of the single continuous fibre
optic (102) located between two or more fibre-optic accelerometers
disclosed or suggested by Kim ‘632 and Berg. The connecting portions are
part of a single continuous fibre optic (102) and are located within couplers
(108a), (108b), and (108c) as is apparent from Figures 2 and 5 of Kim ‘632.
Such connection portions of the single continuous fibre optic are coupled to
the fibres of reflectors via fused-optic coupling per suggestion of Kim ‘961.
(Compare Kim ‘632, Fig. 5 and Kim ‘961, Figs. 1B and 1C, with
Appellant’s Figure 7 embraced by claims 1 and 17.)8

7 All arguments not specifically and timely raised in the principal Appeal
Brief are considered waived absent a showing of good cause. 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.”).

8 Although Appellant appears to argue that fused-optic coupling is used to
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Application 12/067,288
7
Appellant also contends that Kim ‘632 is directed to using a
mechanical coupler for uniting optical fibres, rather than fusing two optical
fibres. (App. Br. 10.) However, Appellant does not dispute the Examiner’s
finding that Kim’ 961 teaches the advantage of employing fused-fibre
coupling for the purpose of uniting two optical fibres. (Compare Ans. 5-6
with App. Br. 5-11 and Reply Br. 1-7.)9 Thus, there is ample reason or
suggestion to employ the fused-fibre coupling technique taught by Kim
‘961, in lieu of the mechanical couplers taught by Kim ‘632, to couple the
fibres of the reflectors (222) to the connecting portions of the single
continuous fibre optic (102) located between two or more fibre-optic
accelerometers disclosed or suggested by Kim ‘632 and Berg. KSR Int'l Co.
v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is

form a single continuous fibre optic, claims 1 and 17 do not recite such a
limitation. Claims 1 and 17, as written, embrace Appellant’s Figure 7,
which shows connecting portions of a single continuous fibre optic being
coupled to the fibres of reflectors like that shown in Figure 5 of Kim ‘632.
Appellant does not refer to any disclosure in the Specification to show that
the term “connecting portions” is defined in a manner contrary to the
Examiner’s interpretation. (App. Br. 5-11.) Moreover, as indicated in the
Answer, Kim ‘961 illustrates portions of fibres subjected to fused-fibre
coupling form single continuous portions which can be said to be part of at
least one continuous fibre optic that passes through an array of fibre-optic
sensors of a fibre coil type which according to the Examiner and Appellant,
are accelerometers or part of a package comprising accelerometers as
explained by Berg.
9 Kim ‘961 also teaches that its fused-fibre coupling is an improvement over
a coupler shown in Fig. 2E which appears to be similar to that shown in Kim
‘632. (See also Kim ‘961, Figs. 1B, 1C, 2E, and 3A and col. 1, l. 28 to col.
2, l. 21.)
Appeal 2011-009413
Application 12/067,288
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obvious unless its actual application is beyond his or her skill.”).
Accordingly, we find no reversible error in the Examiner’s decision
rejecting claims 1, 12-15, 17, and 19-21 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Kim ‘632, Berg, and Kim
‘961. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[E]ven assuming
that the examiner had failed to make a prima facie case, the Board would not
have erred in framing the issue as one of ‘reversible error.’”).

II. Claims 3, 4, 6-10, 17, and 19-21
Appellant does not dispute the Examiner’s finding that:
…Berg shows (Fig. 14) that each accelerometer may
comprise an optic fibre having at least one exposed end and
teaches (par. [0065]) the exposed ends of two adjacent
accelerometers can be connected in series, i.e., connected to
each other. [(Compare Ans. 6 with App. Br. 9-11 and Reply
Br. 1-7.)]
Nor does Appellant dispute the Examiner’s determination that one of
ordinary skill in the art would have been led to couple the exposed ends of
the two adjacent accelerometers via fused-fibre coupling per suggestion of
Kim ‘961. (Compare Ans. 6 with App. Br. 9-11 and Reply Br. 1-7; see also
Appellant’s Fig. 10 encompassed by claim 3.) Rather, Appellant appears to
rely on the same arguments advanced in connection with claim 1. (App. Br.
10-11.)
Accordingly, based on the same reasons set forth above and in the
Answer, we are not persuaded of any reversible error in the Examiner’s
decision rejecting claims 3, 4-10, 17, and 19-21 under 35 U.S.C. § 103(a) as
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Application 12/067,288
9
unpatentable over the combined disclosures of Kim ‘632, Berg, and Kim
‘961.10 Jung, 637 F.3d at 1365.
ORDER
Upon consideration of the record, and for the reasons given above and
in the Answer, it is
ORDERED that the Examiner’s decision rejecting claims 1, 3, 4, 6
through 10, 12 through 15, 17, and 19 through 21 under 35 U.S.C. § 103(a)
as unpatentable over the combined disclosures of Kim ‘632, Berg, and Kim
‘961 is AFFIRMED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).

AFFIRMED

kmm

10 When a person having ordinary skill in the art would have been led to
couple the exposed ends of the two adjacent accelerometers via fused-fibre
coupling per suggestion of Kim ‘632, Berg, and Kim ‘961 as determined by
the Examiner and not contested by Appellant, such person would have
reasonably expected the formation of connected portions resulting from
connecting the exposed ends between the two adjacent accelerometers as
required by claims 3 and 17.