Ex Parte Probster

Board of Patent Appeals and Interferences

Jan 11, 2005

09742269 (B.P.A.I. Jan. 11, 2005)

1
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and is not binding precedent of the Board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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
______________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
______________________
Ex parte WALTER PROBSTER
______________________
Appeal No. 2004-2230
Application No. 09/742,269
______________________
ON BRIEF
______________________
Before BARRETT, BLANKENSHIP, and MACDONALD, Administrative Patent Judges.
MACDONALD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1-7.
Appeal No. 2004-2230
Application No. 09/742,269
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Invention
Appellant’s invention relates to a system for transmitting high-power pumping light to
remotely feed a fiber amplifier having an amplifier fiber. The system comprising a plurality of
pumping light sources having different wavelengths, at least one coupling device, and a plurality
of optical fibers connecting the plurality of pumping light sources to the at least one coupling
device, for parallel transmission of the pumping signals into the fiber amplifier of the amplifier
fiber. Appellant’s specification at page 2, line 25, through page 3, line 9.
Claim 1 is representative of the claimed invention and is reproduced as follows:

A configuration for transmitting high-power pumping light for remotely
feeding a fiber amplifier having an amplifier fiber, the configuration
comprising:
a plurality of pumping-light source having different wavelengths;
at least one remote coupling device adjacent the fiber amplifier; and
a plurality of optical fibers connecting said plurality of pumping-light
sources to said least one remote coupling device, for parallel transmission
of the pumping signals into the amplifier fiber of the fiber amplifier.
References
The references relied on by the Examiner are as follows:
Grubb et al. (Grubb) 5,920,423 July 6, 1999
Rejections At Issue
Claims 1-4 and 6-7 stand rejected under 35 U.S.C. § 102 as being anticipated by Grubb.
Claim 5 stands rejected under 35 U.S.C. § 103 as being obvious over the Grubb patent.
Appeal No. 2004-2230
Application No. 09/742,269
1 Appellant filed an appeal brief on June 23, 2003. Appellant filed a reply brief on December 23,
2003. The Examiner mailed an Examiner’s Answer on October 21, 2003.
3
Throughout our opinion, we make references to the Appellant’s briefs, and to the
Examiner’s Answer for the respective details thereof.1
OPINION
With full consideration being given to the subject matter on appeal, the Examiner’s
rejections and the arguments of the Appellant and the Examiner, for the reasons stated infra, we
affirm the Examiner’s rejection of claims 1-4 and 6-7 under 35 U.S.C. § 102, and we affirm the
Examiner’s rejection of claim 5 under 35 U.S.C. § 103.
Only those arguments actually made by Appellant have been considered in this
decision. Arguments that Appellant could have made but chose not to make in the brief have not
been considered and we deem them to be waived by Appellant [see 37 CFR § 41.37(c)(1)(vii)
effective September 13, 2004 replacing 37 CFR § 1.192(a)].
Appellant has indicated that for purposes of this appeal the claims stand or fall together in a
single group. See page 7 of the brief. Appellant has fully met the requirements of
37 CFR § 1.192 (c)(7) (July 1, 2002) as amended at 62 Fed. Reg. 53169 (October 10, 1997).
We will, thereby, consider Appellant’s claims as standing or falling together in a single group,
and we will treat claim 1 as the representative claim of that group.
Appeal No. 2004-2230
Application No. 09/742,269
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I. Whether the Rejections of Claims 1-4 and 6-7 Under 35 U.S.C. § 102 and
Claim 5 under 35 U.S.C. § 103 are proper?
It is our view, after consideration of the record before us, that the disclosure of Grubb
does fully meet the invention as recited in claims 1-4 and 6-7; and that the evidence relied upon
and the level of skill in the particular art would have suggested to one of ordinary skill in the art
the invention as set forth in claim 5. Accordingly, we affirm.
It is axiomatic that anticipation of a claim under § 102 can be found only if the prior art
reference discloses every element of the claim. See In re King, 801 F.2d 1324, 1326, 231
USPQ 136, 138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v. American Hoist
& Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
With respect to independent claim 1, Appellant argues at pages 8-9 of the brief, “Grubb
et al. do not mention anywhere the remote feeding of an optical amplifier” and “[t]he coupling
device according to the invention of the instant application is remote from the pumping-light
sources.” We do not find these arguments persuasive.
The preamble of Appellant’s claim 1 recites a “configuration for transmitting high-power
pumping light for remotely feeding a fiber amplifier.” We find that the limitation of “for
remotely feeding” is an intended use limitation and does not recite any structural limitation
beyond those found in the body of the claim. If the body of a claim fully and intrinsically sets
forth all of the limitations of the claimed invention, and the preamble merely states, for example,
the purpose or intended use of the invention, rather than any distinct definition of any of the
claimed invention’s limitations, then the preamble is not considered a limitation and is of no
significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999).
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Application No. 09/742,269
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Further, our review of claim 1 finds that claim 1 recites, “at least one remote coupling
device.” However, the claim does not recite what item the coupling device is remote from. We
appreciate Appellant position that coupling device is remote from the pumping-light sources.
However we find that the claim language does not preclude reading on a coupling device that is
nearby to the pumping-light sources. Rather, claim 1 only requires that the coupling device be
remote from something. We find that the “remote” limitation on the “coupling device” is taught
by Grubb et al. by the placement of the coupling device as part of the amplifier system 100 in the
communication channel. Thus the coupling device is remote from the signal source that
provides the input at 116.
Appellant also argues at page 9 of the brief that the “coupling device according to the
invention of the instant application is [] adjacent to the fiber amplifier” and “Grubb et al. do not
show ‘at least one remote coupling device adjacent to the fiber amplifier.’” We do not find
Appellant’s argument persuasive.
We have already addressed above the issue of the “remote” limitation of the coupling
device. We now turn to the “adjacent” limitation of the coupling device to the fiber amplifier.
To determine whether claim 1 is anticipated by the reference, we must first determine the scope
of the claim. Appellant argues that “adjacent” should be narrowly defined and we should find
that Grubb’s coupling device 110 is not adjacent to his fiber amplifier 114.
Our reviewing court states in In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989) that “claims must be interpreted as broadly as their terms reasonably allow.”
Our reviewing court further states, “[t]he terms used in the claims bear a ‘heavy presumption’
that they mean what they say and have the ordinary meaning that would be attributed to those
Appeal No. 2004-2230
Application No. 09/742,269
2 The American Heritage Dictionary, Second College Edition, 1982, page 79. Copy provided to
Appellant.
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words by persons skilled in the relevant art.” Texas Digital Sys. Inc v. Telegenix Inc., 308 F.3d
1193, 1202, 64 USPQ2d 1812, 1817 (Fed. Cir. 2002), cert. denied, 538 U.S. 1058 (2003).
Upon our review of Appellant’s specification, we fail to find any definition of the term
“adjacent” that is different from the ordinary meaning. We find the ordinary meaning of the
term “adjacent” is best found in the dictionary. We note that there are two definitions for
“adjacent” which are suitable to the claim. The first is “close to” and the second is “next to”.2
We appreciate Appellant position that “adjacent” is only next to. However we find that
the claim language does not preclude a broader reading of an adjacent coupling device that is
“near to”. As an example, Appellant’s coupling device “K1” clearly fit the definition of an
“adjacent” coupling device as it is near to the fiber amplifier. Grubb’s figure 2 shows that
coupler device 110 is near to the fiber amplifier 114.
Finally, Appellant argues at page 9 of the brief, “Grubb et al. do not show [] a plurality of
optical fibers connecting said plurality of pumping-light sources to said at least one remote
coupling device, for parallel transmission of the pumping signals.” Additionally, Appellant
argues at page 3 of the reply brief, that Grubb teaches an “immediate combination of the pump
signal” and “a subsequent transmission over only one additional fiber.” We do not find
Appellant’s arguments persuasive.
We have fully reviewed the Grubb patent and find no indication that there is an
“immediate” combination of the pump signal. Rather, figures 2 and 7 of Grubb show that a
plurality of parallel fibers (items 205 in figure 7 and unlabeled fibers with gratings 103A-D in
figure 2) connecting said plurality of pumping-light sources to said at least one remote coupling.
We find it of no consequence that Grubb teaches that the parallel transmissions are then
Appeal No. 2004-2230
Application No. 09/742,269
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converted into a transmission over only one additional fiber. We reach this conclusion because
Appellant’s claim 1 does not require that the transmission be parallel over its entire length.
Indeed, Appellant’s own figure 1 shows a parallel transmission followed by only one fiber from
coupling device K1 to coupling device K2. We find that the claim merely recites, “connecting”
and is silent as to whether this is “in-part” or “over its entire length.” As we have already
pointed out, claims must be interpreted as broadly as their terms reasonably allow. We find that
Grubb teaches the “parallel transmission” required by claim 1.
As to dependent claim 5, which depends from claim 1 and which is rejected under
35 U.S.C. § 103, Appellant presents no separate arguments. Therefore, claim 5 stands or fall
based on the arguments directed to claims 1, which have been addressed above.
Therefore, we will sustain the Examiner’s rejections under 35 U.S.C. § 102 and
35 U.S.C. § 103.
Other Issues
Should there be further prosecution of the present application or a continuation thereof,
Appellant’s and the Examiner’s attention is draw to Huber (U.S. Patent 5,321,707) and Tan (U.S.
Patent 5,914,799). Both of these references teach Appellant’s disclosed but unclaimed feature of
a pump source that is located remote from a coupling device.
Conclusion
In view of the foregoing discussion, we have sustained the rejection under
35 U.S.C. § 102 of claims 1-4 and 6-7 and we have sustained the rejection under 35 U.S.C. § 103
of claim 5.
Appeal No. 2004-2230
Application No. 09/742,269
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No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a)(1)(iv).
AFFIRMED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
HOWARD B. BLANKENSHIP ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )
ARM/dpv
Appeal No. 2004-2230
Application No. 09/742,269
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