Ex Parte Swindell et al

Board of Patent Appeals and Interferences

Apr 4, 2011

10607646 (B.P.A.I. Apr. 4, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GUYTON P. SWINDELL, DOUGLAS M. DUKE
and MARK A. BOXER
____________________

Appeal 2009-009987
Application 10/607,646
Technology Center 3700
____________________

Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Guyton P. Swindell et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 6-12. We have jurisdiction
under 35 U.S.C. § 6(b). Appellants’ counsel presented oral argument on
March 8, 2011.
We REVERSE.
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THE INVENTION
Appellants’ claimed invention is directed to an apparatus for splicing
all-dielectric, self-supporting (ADSS) fiber optic cable (Spec. 1: para.
[0001]).
Claim 6, reproduced below, is representative of the subject matter on
appeal.
6. A method of splicing a fiber optic cable
comprising:
applying a clamp to a first portion of a self-supporting
first fiber optic cable;
using a bail to connect the clamp to a support structure;
connecting a splice closure to the bail;
connecting an aerial splicing platform to the bail; and
splicing a second portion of the self-supporting first fiber
optic cable to a second fiber optic cable in the splice closure;
wherein said self-supporting first fiber optic cable does
not pass through said bail.

THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 6-10 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith (US 5,696,864, issued Dec. 9, 1997) in view
of Forrester (US 5,867,624, issued Feb. 2, 1999).
2. Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Smith in view of Forrester, and further in view of Appellants’
Admitted Prior Art (Spec. 1: para. [0003], hereafter “AAPA”).

ISSUE
The issue before us is whether the Examiner erred in concluding that
the combined teachings of Smith and Forrester would have led a person
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having ordinary skill in the art to the step of “using a bail to connect the
clamp to a support structure,” as called for in independent claims 6 and 12.1

ANALYSIS
Rejection of claims 6-10 and 12 over Smith and Forrester
Independent claims 6 and 12 call for, inter alia, the step of “using a
bail to connect the clamp to a support structure.”
The Examiner found that Smith’s strand 12 is a bail to connect a
clamp to a support structure 14 (Ans. 3).
Since independent claims 6 and 12 include the step of “using a bail to
connect the clamp to a support structure,” the Examiner’s conclusion of
obviousness is based on the Examiner’s finding that Smith’s strand 12 is a
bail.
Appellants’ Specification does not assign or suggest a particular
definition to the term “bail” or otherwise indicate that this term is used in a
manner other than its ordinary and customary meaning. Therefore, in
determining the ordinary and customary meaning of the claim term “bail” as
viewed by a person of ordinary skill in the art, it is appropriate to consult a
general dictionary definition of the word “bail” for guidance. Comaper
Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010).
The ordinary meaning of the word “bail” includes “a supporting half
hoop.”2
Smith is silent as to whether strand 12 includes “a supporting half
hoop.” The Examiner, in proffering the finding that Smith’s strand 12 is a

1 All references to the Appeal Brief (App. Br.) in this decision are to the
Appeal Brief filed February 29, 2008.
2 MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 1996)
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bail, has not directed us to a particular portion in Smith with reference to the
relevant column or page number(s) and line(s) which would support the
Examiner’s finding.3
We conclude that a rationale based upon an unsupported fact finding
does not provide a sound basis for a conclusion of obviousness. KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”) In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) (“The legal conclusion of obviousness must be
supported by facts. Where the legal conclusion is not supported by facts it
cannot stand.”)
Thus, we are constrained to reverse the rejection of independent
claims 6 and 12 and dependent claims 7-10.

Rejection of claim 11 over Smith, Forrester and AAPA
The Examiner has not relied on AAPA for any teaching that would
remedy the deficiency in the combined teachings of Smith and Forrester as
to claim 6, from which claim 11 depends (Ans. 7).
Thus, for the same reasons set forth supra regarding independent
claim 6, we reverse the rejection of claim 11.

CONCLUSION
The Examiner has erred in concluding that the combined teachings of
Smith and Forrester would have led a person having ordinary skill in the art

3 MPEP § 706.02(j) (8th ed., Rev. 8, Jul. 2010)
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to the step of “using a bail to connect the clamp to a support structure,” as
called for in independent claims 6 and 12.

DECISION
The decision of the Examiner to reject claims 6-12 is reversed.

REVERSED

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