Ex parte OH

Board of Patent Appeals and Interferences

Oct 25, 2001

08292977 (B.P.A.I. Oct. 25, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 46
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SEUNG-HUN OH
____________
Appeal No. 1998-2552
Application No. 08/292,977
____________
ON BRIEF
____________
Before OWENS, WALTZ, and TIMM, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s refusal to allow claims 18 through 20, 31, 33, 35
and 36 as amended subsequent to the final rejection (see the
amendment dated Nov. 6, 1997, Paper No. 36, entered as per the
Advisory Action dated Nov. 26, 1997, Paper No. 37).
According to appellant, the invention is directed to a
method of producing an optical fiber secondary preform by
collapsing an over-cladding tube on an optical fiber primary
Appeal No. 1998-2552
Application No. 08/292,977
We rely upon an English translation of this document,1
previously made of record in this application.
The examiner mistakenly includes cancelled claim 32 in2
this rejection (Answer, page 6).
2
preform by use of various support structures, rings, and sealing
parts to align and seal the over-cladding tube (Brief, pages 2-
4). A copy of illustrative claim 33 is attached as an Appendix
to this decision.
The examiner has relied upon the following references as
support for the rejections on appeal:
Baumgart et al. (Baumgart) 4,820,322 Apr. 11, 1989
Takahashi et al. (Takahashi) 54-13351 Jan. 31, 1979
(published Japanese Kokai Patent Application)1
Claims 18-20, 31, 33, 35 and 36 stand rejected under 35
U.S.C. § 112, ¶2, as indefinite (Answer, page 6). Claim 332
stands rejected under 35 U.S.C. § 102(b) as anticipated by or,
in the alternative, under 35 U.S.C. § 103(a) as unpatentable
over Takahashi (Answer, page 4). Claim 31 stands rejected under
35 U.S.C. § 103(a) as unpatentable over Takahashi in view of
Baumgart (Answer, page 5). We reverse all of the examiner’s
rejections essentially for the reasons stated in appellant’s
Brief, Reply Brief, and as set forth below.
Appeal No. 1998-2552
Application No. 08/292,977
16 F.3d 1189, 1193, 29 USPQ2d 1845, 1850 (Fed. Cir.3
1994)(in banc).
3
OPINION
A. The Rejection under 35 U.S.C. § 112, ¶2
The examiner states that the means-plus-function terms as
recited in the claims are indefinite as to their meanings
because the specification fails to point out what the means
encompass, i.e., “it is unclear if the means are limited to the
disclosed embodiment or any possible means that meet the
functionality.” Answer, page 6.
Appellant cites various parts of the specification which
clearly sets forth the structure designated for each means-plus-
function term (Brief, pages 6-7). Accordingly, appellant urges
the rejection is in error. We agree.
As cited by the examiner (Answer, page 6), In re Donaldson3
holds that one must look to the specification to interpret
claimed means plus function language in light of the
corresponding structure, material, or acts described therein,
and equivalents thereof. The strictures of 35 U.S.C. § 112, ¶6,
apply when the word “means” appears in a claim element in
combination with a function where there is not a sufficient
Appeal No. 1998-2552
Application No. 08/292,977
4
recitation of structural limitations to perform this function.
See Al-Site Corp. v. VSI International Inc., 174 F.3d 1308,
1318, 50 USPQ2d 1161, 1166 (Fed. Cir. 1999). It is clear that
appellant’s claims recite means-plus-function language with no
corresponding structural limitations. Therefore we look to the
specification to interpret the corresponding structure needed to
accomplish the claimed function. As pointed out by appellant
(Brief, pages 6-7), each means-plus-function term in the claims
has specific corresponding structure as disclosed in the
specification. Accordingly, the claimed language is definite
and does not include “any possible means that meet the
functionality” (Answer, page 6) but only includes the disclosed
structures “and equivalents thereof.” See Al-Site Corp., supra,
and 35 U.S.C. § 112, ¶6 (1975).
The examiner further rejects claim 35 as indefinite since
this claim recites that the ring is slid over the second end of
the preform but the examiner alleges that the specification
teaches that the preform is inserted into the ring (Answer,
paragraph bridging pages 6-7).
Appeal No. 1998-2552
Application No. 08/292,977
We note that the examiner has not made any rejection4
based on the written description requirement of the first
paragraph of 35 U.S.C. § 112.
5
Appellant submits that the specification does not state
that the preform is inserted into the ring, nor that the ring is
slid over the preform (Brief, page 9). Appellant argues that
either method would have been clear to one of ordinary skill in
the art (id.).
It is well settled that the legal standard for definiteness
is whether one of ordinary skill in the art would have been
appraised of the scope of the claims. See In re Warmerdam, 33
F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994). The
examiner has not shown, by convincing reasoning or evidence,
that one of ordinary skill in the art would not have been
appraised of the scope of the claim language in question. 4
Accordingly, since the examiner has not met the initial burden
of establishing indefiniteness of the claimed language, we
cannot sustain the rejection of claim 35 under 35 U.S.C. § 112,
second paragraph.
For the foregoing reasons and those stated in the
Brief and Reply Brief, we reverse the examiner’s rejection of
Appeal No. 1998-2552
Application No. 08/292,977
The examiner applies Baumgart as evidence that use of a5
vacuum pump to evacuate the space between the tube and the
preform is conventional in the art to prevent bubbles from
forming in the preform. Accordingly, Baumgart does not remedy
the deficiencies discussed above with respect to the
examiner’s findings from Takahashi.
6
the claims on appeal under the second paragraph of section 112
as indefinite.
B. The Rejections under 35 U.S.C. § 102(b) and § 103(a)
It is well settled that the examiner bears the initial
burden of establishing a prima facie case of unpatentability,
whether on prior art grounds or any other basis. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). In view of our claim construction above, the claimed
means-plus-function language is limited to the structures
disclosed in the specification “and equivalents thereof.” See
Al-Site Corp., supra. The examiner has failed to point to any
structure in Takahashi that is identical to that recited in
claim 33 that would support the rejection under
35 U.S.C. § 102(b). Furthermore, the examiner has failed to
establish that Takahashi discloses, suggests or teaches the
structures recited in claims 33 and 31. In other words, the5
Appeal No. 1998-2552
Application No. 08/292,977
7
examiner has failed to show the corresponding structures in the
applied prior art for the first, second and third means recited
in claims 31 and 33, namely the hand bar 18, the annular over-
cladding tube sealing-up part 20, and the supporting handle tube
14, respectively (see the specification, page 6, last line; page
7, lines 9 and 17; and Figure 3). The examiner has also failed
to allege that any of the structures of Takahashi are the
“equivalents thereof” within the meaning of the sixth paragraph
of 35 U.S.C.
§ 112. Accordingly, we determine that the examiner has failed
to present any factual basis to support the rejections on
appeal.
For the foregoing reasons and those set forth in the Brief
and Reply Brief, the rejection of claim 33 under 35 U.S.C. §
102(b) or, in the alternative, under 35 U.S.C. § 103(a) over
Takahashi is reversed. Similarly, the rejection of claim 31
under 35 U.S.C.
§ 103(a) over Takahashi in view of Baumgart is reversed.
C. Summary
The rejection of the claims on appeal under the second
paragraph of 35 U.S.C. § 112 is reversed. The rejection of
Appeal No. 1998-2552
Application No. 08/292,977
8
claim 33 under 35 U.S.C. § 102(b) or 35 U.S.C. § 103(a) over
Takahashi is reversed. The rejection of claim 31 under 35
U.S.C. § 103(a) over Takahashi in view of Baumgart is reversed.
The decision of the examiner is reversed.
REVERSED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
TAW/jrg
ROBERT E. BUSHNELL
SUITE 300
1511 K STREET N.W.
WASHINGTON, DC 20005-1202
Appeal No. 1998-2552
Application No. 08/292,977
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Appeal No. 1998-2552
Application No. 08/292,977
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APPENDIX
33. A method of producing an optical fiber secondary
preform by collapsing an over-cladding tube on an optical fiber
primary preform, said optical fiber primary preform having a
first means being adhered to one end of said optical fiber
primary preform which supports said optical fiber primary s
preform during rotation, said first means having a second means
for sealing a first end of said over cladding tube, said over-
cladding tube having a third means adhered to a second end of
said over
cladding tube to support said second end of said over-cladding
tube, said method comprising the steps of:
inserting a ring into an inner diameter of said third
means, said ring being concentric with said second end of said
over-cladding tube;
inserting a second end of said optical fiber primary
preform
through the inner diameter of said ring;
sealing said first end of said over-cladding tube by
heating
said first end of said over-cladding tube and the second means
of said first means;
rotating said over-cladding tube; and
collapsing said over-cladding tube on said optical fiber
primary preform by applying heat to said over-cladding tube when
said over-cladding tube is rotated under a predetermined
collapse
condition to produce said optical fiber secondary preform.