Ex Parte Skinner

Board of Patent Appeals and Interferences

Oct 18, 2005

09932639 (B.P.A.I. Oct. 18, 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was not written for publication and is not binding precedent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.
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte NEAL G. SKINNER
__________
Appeal No. 2005-2418
Application 09/932,639
__________
ON BRIEF
__________
Before THOMAS, LEVY, and SAADAT, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board since the examiner
has twice rejected the pending claims 11 through 13, 19, 20, 25,
27, 28, 30, 39, 40 and 44 through 61 within 35 U.S.C. § 134. The
examiner’s last Office action rejecting the claims on appeal was
a non-final Office action mailed on November 17, 2003. The
claims on appeal are claims 19, 20, 25, 30, 39, 40, 44, 45, 47
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Application 09/932,639
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through 49 and 52 through 58, since the examiner has allowed
claims 11 through 13, 27 and 28 and has objected to claims 46,
50, 51 and 59 through 61. We consider on the merits the
arguments presented in the Supplemental Brief filed on
February 17, 2004.
Representative claim 25 is reproduced below:
25. An electrical power distribution system,
comprising:
a fiber optic line;
multiple power consuming devices; and
multiple control modules interconnected between the
fiber optic line and the power consuming devices, each of the
control modules being interconnected between the fiber optic line
and one of the power consuming devices, and each of the control
modules being operative to select the respective power consuming
device for supplying electrical power thereto in response to one
of multiple optical wavelength bands transmitted through the
fiber optic line, each of the optical wavelength bands causing
one of the control modules to select the respective power
consuming device for supplying electrical power thereto,
the multiple optical wavelength bands being transmitted
singly through the fiber optic line.
The following references are relied on by the examiner:
Endo et al. (Endo) 4,495,421 Jan. 22, 1985
Pitt et al. (Pitt) 4,928,319 May 22, 1990
Davis 4,941,201 July 10, 1990
Tymes 5,193,201 Mar. 9, 1993
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Application 09/932,639
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Claims 25 and 30 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Endo. This reference is used
alone to reject claims 39, 40, 44, 45, 47 through 49, and 52
through 58 under 35 U.S.C. § 103. Claims 19 and 20 stand
rejected under 35 U.S.C. § 103 as well. As to claim 19, the
examiner relies upon Pitt in view of Davis, substituting Tymes
for Davis in the rejection of independent claim 20.
Rather than repeat the positions of the appellant and
the examiner, reference is made to the Brief (no Reply Brief has
been filed) for appellant’s positions, and to the Answer for the
examiner’s positions.
OPINION
We turn first to the rejections utilizing Endo. As to
the examiner’s anticipatory rejection of claims 25 and 30 based
on this reference, we sustain the rejection of independent
claim 25 but reverse the rejection of independent claim 30.
In affirming the rejection of independent claim 25, we
agree with the examiner’s statement of the rejection of this
claim at pages 3 and 4 of the Answer in addition to the
responsive arguments at pages 9 through 13. Correspondingly,
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Application 09/932,639
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we do not agree with appellant’s arguments at pages 7 through 9
of the Brief as to claim 25.
Even if we were to agree with appellant’s views that
the recitation at the end of claim 25 that the optical wavelength
bands are transmitted through a fiber optic line singly to mean
without the company of others or individually, we find our-
selves in agreement with the examiner’s observations at the top
of page 11 of the Answer that the optical switches 20 figures 2
and 4 of Endo may be manually operated one at a time or two at
a time or three at a time as illustrated among these figures.
The disclosure of Endo’s embodiments in figures 2 and 4 at
columns 3 through 5 of this patent indicates the individual
actuability of the manual switches 3 by the user and, contrary to
the arguments presented at page 8 of the Brief, does not require
the actuation of these switches simultaneously even though the
capability exists for this to happen. The “multiple control
modules” clause states that “one of multiple optical wavelength
bands transmitted through the fiber optic line”, yet this
language does not require that these multiple optical wavelength
bands be transmitted at the same time or individually. It is
thus seen from a study of the embodiments in figures 2 and 4 of
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Endo that the capability exists for multiple optical wavelength
bands having different specific wavelengths to be transmitted,
but done so singly or in an individual manner to the extent
argued.
As to the argument that Endo does not teach
collectively supplying power or transmitting data to multiple
devices, we disagree with this argument in addition to agreeing
with the examiner’s remarks beginning at the bottom of page 11 of
the Answer. According to the first embodiment of figure 2 of
Endo, which is the basis for the structure of the second embodi-
ment in figure 4, at least the photoelectric transducer 31 may
comprise the claimed device to be powered by the specific
wavelengths of light transmitted on the optical fiber 40. In
fact, as the examiner has noted, the electrical power is supplied
to the entire switching unit 30 in figures 2 and 4.
As to independent claim 30, also rejected under 35
U.S.C. § 102 as being anticipated by Endo, we must reverse this
rejection. Initially, we observe that independent claim 30
appears to be modeled after independent claim 25 with two major
distinctions. There is no dispute by appellant that optical
wavelength bands in Endo may be transmitted simultaneously since
that was the substance of the major argument presented for
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reversal of claim 25. Indeed, Endo does have the capability to
do that.
Secondly, the optical coupler set forth at the end of
claim 30 on appeal is stated to receive separate optical wave-
length bands from multiple lasers with at least one of these
multiple lasers being a tunable laser. We agree with appellant’s
views expressed at pages 9 and 10 of the Brief that Endo does not
teach tunable lasers. A generic type of light emitting element
22 is taught to be within the optical signal generator switch 20
in detail in figure 2 of Endo. Even if we accept that the
artisan would have considered this type of device to have been a
light emitting diode (bottom of Brief, page 16), and even if the
artisan would have considered that such a generic light emitting
element 22 may have been in the form of a solid state laser, we
would be exercising speculation if we were to agree with the
examiner’s view that such could include a tunable laser. Because
in the figure 4 embodiment separate optical signal generator
switches 20 are utilized for each of the respective manual
switches 3 to operate separate devices, the artisan would have
had no need to have utilized a tunable laser for such light
emitting elements, only a fixed frequency laser at most.
Therefore, we reverse the rejection of independent claim 30.
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Turning next to the rejections under 35 U.S.C. § 103
utilizing Endo alone, we reverse the rejection of independent
claims 39 and 40 essentially for the reasons set forth by the
appellant in the Brief. At the outset, additionally, we
recognize that the examiner already admits that Endo does not
teach that the electronic devices may be data storage devices of
claim 39 or devices with programmed functions in claim 40 at
page 7 of the Answer. The examiner’s reasoning there that Endo
may have or “can have” such devices is mere speculation. From
our study of Endo, there is no teaching or inference the artisan
may fairly derive from Endo that these devices are contemplated
or otherwise taught or suggested in this reference.
On the other hand, we do sustain the rejection of
independent claim 44 in accordance with the reasoning advanced by
the examiner at pages 7 and 8 of the Answer along with the addi-
tional remarks in the responsive arguments portion of the Answer
as to the rejection of claim 44 at pages 13 and 14.
A different intended use of the same structure as in
the prior art does not prohibit a statutory anticipation
rejection, for example. Indeed, it has been stated by our
reviewing court that “the absence of a disclosure relating to
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function does not defeat the Board’s finding of anticipation. It
is well settled that the recitation of a new intended use for an
old product does not make a claim to that old product patentable
(case citations omitted).” In re Schrieber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997). The court concludes at
128 F.2d 1477, 44 USPQ2d 1431-32, that “Schrieber’s contention
that his structure will be used to dispense popcorn does not have
patentable weight if the structure is already known, regardless
of whether it has ever been used in any way in connection with
popcorn (emphasis added).” Such reasoning obviously applies to
rejections under 35 U.S.C. § 103. Schrieber confirms the
guidance provided in Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat.
App. & Int. 1987), that a recitation with respect to the manner
in which a claimed apparatus is intended to be employed does not
differentiate the claimed apparatus for a prior art apparatus
satisfying the claimed structural limitations. Note also Ex
parte Wikdahl, 10 USPQ2d 1546, 1548 (Bd. Pat. App. & Int. 1989)
and In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA
1967).
Even though we recognize that Endo does not
specifically teach an application to wells or well tools, it is
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well settled that the manner in which a claimed apparatus such as
in claim 44 is intended to be employed does not differentiate the
claimed apparatus from prior art apparatuses satisfying the
claimed structural limitations. Appellant’s remarks at pages 12
and 13 of the Brief do not address this reasoning and no reply
brief has been filed.
As to the rejection of dependent claim 45, it recites
that the control modules include a WDM drop connected between the
fiber optic line and the respective well tool.
As to this rejection, we do not agree with the
examiner’s correlation that the directional couplers 11 in
figure 4 of Endo relate to the features recited of a WDM drop as
noted at page 8 of the Answer. On the other hand, at page 14 of
the Answer, the examiner takes the position that such a drop is
the light divider 12 in figure 4, merely alleging that it can
function as such a drop. Inasmuch as there is no specific
teaching of such a drop in the reference, we are persuaded by
appellant’s arguments at pages 13 and 14 of the Brief that such
drops were well understood by those in the art and specifically
discussed as to its functionality at Specification, page 6,
lines 22 through 28. The optical filter arrangement 12 in
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figure 4 of Endo does not permit the passing through of all other
wavelengths even though it effectively “drops” a specific wave-
length. We understand that an optical filter does not correspond
to the claimed WDM drop in claim 45. Therefore, we reverse the
rejection of this claim.
As to claim 47, we agree with the examiner’s brief
observations at page 8 of the Answer correlating the subject
matter of this claim to Endo’s teachings in figure 4 which
appears to read directly on the subject matter of the claim.
According to our earlier analysis, at least a selected one of a
plurality of wave bands is capable of being passed by the optical
filter as claimed. As to appellant’s arguments at page 15 of
the Brief, we do not agree with the view expressed that Endo
describes only the use of a single divider 12 connected at the
end point of the optical fiber 40 since a plurality of optical
filters 12-1 through 12-3 are illustrated.
We also sustain the rejection of dependent claim 48
since it essentially mirrors the argued subject matter of
independent claim 25 discussed earlier in this opinion. We also
sustain the rejection of dependent claims 49, 54 and 55 since
appellant’s grouping at page 5 of the Brief indicates that these
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claims are grouped with claim 44 and no arguments are presented
in the substance of the Brief anyway.
When we turn to the subject matter of dependent
claim 52, we sustain the rejection of this claim because of our
earlier analysis with respect to claim 30 where we indicated that
the artisan would well appreciate that multiple lasers may be
usable for each of the respective optical switches 20-1 through
20-3 in figure 4 to embody the generalized teachings of the light
emitting element 22 in figure 2. Correspondingly, however, we
must reverse the rejection of dependent claim 53 because there is
no teaching or suggestion in Endo that the multiple lasers of
claim 52 or any one of them may be tunable. Our reason for
reversing claim 53 therefore is basically the same reasoning as
we advanced earlier with respect to our reversal of claim 30.
We now turn to the features of dependent claim 56. We
find ourselves in agreement with the examiner’s reasoning at
page 9 of the Answer that the corresponding teachings relied upon
by the examiner at columns 3 and 5 of Endo teach broadly the
feature of data being transmitted in a selected one of digital
and analog formats. Appellant’s arguments at page 18 of the
Brief appear to admit that Endo describes the system of merely
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turning devices in an automobile on or off, which does not
contest the examiner’s reasoning of unpatentability. It appears
to us that the artisan would clearly interpret Endo’s circuit to
operate either on analog or digital data or both.
Lastly, we also reverse the rejection of dependent
claims 57 and 58 for the same reasons we reverse the rejection of
independent claims 39 and 40 earlier.
Next, we turn to the stated rejection under 35 U.S.C.
§ 103 of claim 19 as being obvious over Pitt in view of Davis.
Since we sustain the rejection of claim 19 in light of the
examiner’s initial statement of the rejection at pages 4 and 5 of
the Answer, in addition to the remarks at pages 14 and 15 of the
Answer responding to appellant’s arguments in the Brief, we add
the following for emphasis. Claim 18 recites the feature at the
end of the claim of a power consuming device being a data storage
device where data is transmitted through the fiber optic device
where it is stored in the data storage device.
The background of the invention of Pitt’s patent at
column 1 indicates that it was known in the art that a control-
lable device included bimetallic strips or memory metal strips
which are otherwise disclosed as a part of the ability to detect
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the signals at column 4 and which would clearly include the
memory elements or storage devices claimed. Even though such
elements would not necessarily be changeable such that data
transmitted through a fiber optic length may be stored in them,
since the artisan would appreciate that such memory metals would
already have data fixedly stored in them per se, we find it would
have been obvious to the artisan to have employed data storage
devices of the nature taught in Davis as argued by the examiner
to add the additional feature that data may be individually
storable or selectively storable in the devices as well. Even
though the showings in the three embodiments in figures 6
through 8 of Pitt indicate that at least individually,
utilization-type devices may be individually controllable with
respect to each remote power consuming station, the selectability
is well known in the art according to the discussion in the
background of the invention at column 1 of Pitt. The examiner is
correct in making reference to the additional teachings at
column 1, lines 52 through 55, as a plurality of type of remote
devices.
According to the examiner’s reasoning, it appears to us
that the generic type of utilization devices in figures 6
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through 8 of Pitt obviously would have been specialized as memory
devices according to the teachings in Davis. Coupled with the
earlier-noted teachings of memory metal devices noted earlier in
this opinion, it appears to us that the artisan would have found
a requisite motivation to have combined the teachings of the
references contrary to the arguments at page 21 of the Brief.
Because Pitt already teaches memory type devices that are not
apparently changeable by data being transmitted thereo, the
obvious enhancement of the type of traditional data storage
devices in Davis leads us to conclude that there is no valid
hindsight argument that can be made as set forth at the bottom of
page 21 of the Brief. A teaching at column 5, lines 55 through
61, of Davis does contemplate that other types of communication
channels or paths may exist between the portable length 20 and
the data storage devices 22 shown in figure 1, such as to broadly
encompass the fiber optic approaches or optical approaches taught
by Pitt. Therefore, we sustain the rejection of independent
claim 19 under 35 U.S.C. § 103.
Finally, we also sustain the rejection of independent
claim 20 for the reasons set forth by the examiner in the Answer.
The argued feature here is the last clause of claim 20 where it
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recites power consuming devices may have programmed functions
that are performed in response to receiving the power from the
fiber optic cable.
According to the teachings at column 1, lines 52
through 55, relied upon by the examiner, Pitt contemplates that
his system may be utilized for supplying power remotely to
surveillance, communications and control systems or devices.
It appears to us that the artisan would well appreciate the
corresponding teachings of Tymes emphasizing the optical
transmission of modulated information from a light source 110 to
individualized display devices 102 through 108 as in figure 1 of
this reference. Tymes is an exemplary form of the broadly
defined communications and control devices noted at the bottom of
column 1 of Pitt. Thus, we agree with the examiner’s basic
rationale that it would have been obvious to have combined the
teachings of Tymes into the overall system of Pitt contrary to
appellant’s generalized contrary urging at the bottom of page 22
of the Brief.
The showing in figure 4 of Tymes and the discussion of
this figure at the bottom of column 3 of this reference indicates
specifically that individualized device identification commands
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are transmitted in any data packet 180 that may be sent from the
light source 110 to the separate display devices 102 through 108.
Thus, it is clear to us that the individual display devices may
be selected according to the specific commands issued. We
therefore do not agree with appellant’s urging to the contrary at
page 22 of the Brief.
As an additional passing comment, from our study of the
combination of teachings of Pitt and Tymes, the embodiments in
figures 1, 5 and 6 of Tymes also would have indicated the
obviousness of the subject matter of independent claim 19, which
we recognize has not been rejected on this combination of
references. Each of the microprocessors 132 in these figures has
within it an addressable RAM 192 which is clearly a data storage
device to which data has been optically transferred for storage
as discussed in the paragraph at column 4, lines 47 through 59,
of Tymes.
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In summary, among the rejections of the claims on
appeal under 35 U.S.C. § 102 and 35 U.S.C. § 103, we have
sustained the respective rejections of claims 19, 20, 25, 44, 47
through 49, 52 and 54 through 56. On the other hand, we have
reversed the respective rejections of claims 30, 39, 40, 45, 53,
57 and 58. Therefore, the decision of the examiner rejecting
various claims on appeal under 35 U.S.C. § 102 and 35 U.S.C.
§ 103 is affirmed-in-part.
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
STUART S. LEVY ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
Appeal No. 2005-2418
Application 09/932,639
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Appeal No. 2005-2418
Application 09/932,639
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