Ex Parte ProbsterDownload PDFBoard of Patent Appeals and InterferencesJan 11, 200509742269 (B.P.A.I. Jan. 11, 2005) Copy Citation 1 The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board Paper No. 27 UNITED STATES PATENT AND TRADEMARK OFFICE ______________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES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 2 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 4 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). Appeal No. 2004-2230 Application No. 09/742,269 5 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. 6 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 7 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 8 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 9 Lerner and Greenberg, PA P.O. Box 2480 Hollywood, Fl 33022-2480 Copy with citationCopy as parenthetical citation