Ex Parte Duis et al

Patent Trial and Appeal Board

Sep 25, 2018

12962097 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/962,097 12/07/2010 Jeroen Antonius Maria Duis
87838 7590 09/25/2018
The Whitaker LLC
4550 Linden Hill Road
Suite 140
Wilmington, DE 19808-2952
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
TY-00075 (357180.00263) 1304
EXAMINER
ANDERSON, GUY G
ART UNIT PAPER NUMBER
2883
MAIL DATE DELIVERY MODE
09/25/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROEN ANTONIUS MARIA DUIS,
JAN WILLEM RIETVELD, and TERRY PATRICK BOWEN
Appeal2018-001541
Application 12/962,097
Technology Center 2800
Before JAMES C. HOUSEL, WESLEY B. DERRICK, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision rejecting claims 1 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Fujikura2 in view of Ohmura3 and Asahi Glass. 4 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
WeAFFIRM. 5
1 Tyco Electronics Corporation is identified in the Appeal Brief as the real
party in interest (Appeal Br. 2).
2 Hayashi et al., JP 03-175406, published July 30, 1991 ("Fujikura").
3 Ohmura et al., US 2010/0014815 Al, published January 21, 2010
("Ohmura").
4 Tsukamoto et al., WO 2005/022226, published March 10, 2005 ("Asahi
Glass").
5 Our decision refers to the Specification ("Spec.") filed December 7, 2010,
the Examiner's Non-Final Office Action ("Non-Final Act.") dated October
Appeal2018-001541
Application 12/962,097
STATEMENT OF THE CASE
The invention relates to optical transports such as polymer optical
waveguides that have relatively soft end faces (Spec. ,r 1 ). Optical transports
often are terminated with an optical connector allowing an end face of the
transport to mate with the optical interface of another optical component (id.
,r 2). The connectors are designed to cause the end face of the optical
transport to press against the mating surface (id. ,r 3). It is, therefore,
desirable for the end face to be as smooth and flat as possible so that it
contacts the mating surface over its entire extent with as few gaps to
maximize optical coupling between the optical transport and the other
optical component (id. ,r 4). However, scratches and poorly polished
surfaces can significantly reduce optical coupling (id.). Therefore,
Appellants disclose protecting the end faces of polymer optical waveguides
with a film that may be harder than the waveguides, but still sufficiently
compliant to fill in scratches, gouges, and other non-planarities in the
waveguide end faces (id. ,r 8).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitations at issue
are italicized.
1. An optical connector comprising:
a ferrule having an end face having at least one
longitudinal bore for receiving a polymer waveguide
therethrough;
at least one polymer waveguide in the at least one bore,
the polymer waveguide having an optical end face presented for
optical coupling at the end face of the ferrule; and
22, 2015, Appellants' Appeal Brief("Appeal Br.") filed June 22, 2016, the
Examiner's Answer ("Ans.") dated September 25, 2017, and Appellants'
Reply Brief ("Reply Br.") filed November 27, 2017.
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Application 12/962,097
a compliant film disposed over the end face of the at least
one polymer waveguide, the film being harder than the polymer
waveguide, wherein the compliant film has a Shore hardness of
between 65 and 90.
Remaining independent claim 12 recites a method of making an
optical connector including applying a compliant film similar to that recited
in claim 1 over the optical end face of the polymer waveguide.
ANALYSIS
Appellants argue claims 1 and 12 together. See Appeal Br. 4--9. We
select claim 1 to address Appellants' arguments. Claim 12 stands or falls
with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv) (2015).
After review of the opposing positions articulated by Appellants and
the Examiner, the applied prior art, and Appellants' claim and Specification
disclosures, we determine that the Appellants' arguments are insufficient to
identify reversible error in the Examiner's obviousness rejections. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the
stated obviousness rejection for substantially the fact findings and the
reasons set forth by the Examiner in the Examiner's Answer and the Non-
Final Office Action. We offer the following for emphasis only.
The Examiner finds Fujikura discloses the waveguide connector of
claim 1 including a compliant film disposed over the end face of a
waveguide received in a longitudinal bore of a ferrule (Non-Final Act. 4;
Ans. 2). The Examiner further finds Fujikura teaches the purpose of the
compliant film is to index match the waveguide to prevent Fresnel reflection
at the coupling face and to improve durability due to frequent attaching and
detaching of the ferrule (Ans. 2). In addition, the Examiner finds Fujikura
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teaches the compliant film has a Shore hardness of 100 or less, but that it
preferably is not too hard so as to obtain good adhesion (id.). Thus, the
Examiner determines that the ordinary artisan would understand that
Fujikura teaches increased hardness improves the film's durability, but it
should not be too hard for good adhesion (id.).
The Examiner acknowledges Fujikura fails to explicitly teach that the
waveguide being a polymer waveguide and that the film is harder than the
polymer waveguide (Non-Final Act. 5; Ans. 3). However, the Examiner
finds Ohmura teaches a waveguide connector utilizing a polymer waveguide
as a means of suppressing connector loss (Non-Final Act. 5; Ans. 3). In
addition, the Examiner finds Asahi Glass teaches a plastic optical fiber, i.e.,
polymer waveguide, having a polymer film covering the fiber's end face,
wherein the film has a Shore hardness of 90 or less as a means of
minimizing connection loss (Non-Final Act. 6; Ans. 3). In this regard, the
Examiner finds Asahi Glass teaches that plastic optical fibers have soft end
faces that suffer damage from repeated attachment/detachment thereby
causing connection loss, and that the film provides durability and prevents
damage (Ans. 3). The Examiner also finds that Appellants disclose that
polymer waveguides typically have Shore D hardnesses between about 25
and 60 (Non-Final Act. 6). The Examiner concludes that it would have been
obvious to modify Fujikura to use a polymer waveguide and a compliant
film having a hardness greater than that of the waveguide to provide
durability and prevent damage to the waveguide to minimize connection loss
(Non-Final Act. 5---6; Ans. 3--4).
Appellants argue that the Examiner relies on Appellants' selection of
a suitable commercial film as a showing that the film is harder than the
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polymer waveguide (Appeal Br. 5). However, although the Examiner
discusses Appellants' selected Fitwell film to suggest that this film is harder
than the polymer waveguide, the rejection itself does not rely on this
discussion or Appellants' selected film. The Examiner also discusses
Appellants' disclosure that polymer waveguides typically have a Shore D
hardness between about 25 and 60 (Non-Final Act. 6; Appeal Br. 5). We
note Appellants do not contend that this later disclosure of the typical
hardness of polymer waveguides was improperly relied on, i.e., was not
known in the art prior to Appellants' invention.
Appellants next argue that the applied references fail to teach or
suggest that the compliant film is harder than the polymer waveguide
(Appeal Br. 7; Reply Br. 3). According to Appellants, Asahi Glass merely
teaches that polymer film formed on the polymer waveguide has a Shore
hardness less than 90, but teaches no minimum hardness and does not
disclose forming a polymer film that is harder than the polymer waveguide
(Appeal Br. 7-8). As such, Appellants contend that the issue is not whether
a suitable film having a hardness greater than that of the waveguide exists,
but rather whether the prior art teaches or suggests using such a film for
covering the waveguide end face (id. at 8). In this regard, Appellants urge
that "the prior art fails to recognize the benefit of a compliant film that
synergistically facilitates a low loss coupling by minimizing gaps between
the waveguides and the film, while being sufficiently hard to protect the
waveguides" (id.).
This argument is not persuasive of reversible error. The Examiner
finds, without dispute, that Asahi Glass teaches a problem with
plastic/polymer waveguides is that they are soft and prone to damage which
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leads to connection loss (Ans. 4). The Examiner also finds, without dispute,
that Asahi Glass teaches a solution to this problem is to provide a film on the
end faces of the polymer waveguides having a Shore hardness of 90 or less
which has high durability and minimizes connection loss even with repeated
attachment/detachment (id.). In particular, the Examiner finds, again
without dispute, that Asahi Glass teaches hardness values that are well
within the recited range of 65-90 (id. at 5). Moreover, the Examiner finds,
without dispute, that Asahi Glass recognizes that hardness should be high for
protection, but not too high to allow deformation or self-healing when
foreign matter is present (id. at 4--5). Therefore, the Examiner determines
that a key teaching of Asahi Glass is that the film protects the waveguide
because it is harder than the waveguide it protects (id. at 5).
We further note that Asahi Glass expressly discloses two specific
examples of polymer films having Shore hardness values of 85 (Asahi Glass
,r 33, polymer composition (1 ), (2)), and 65 (id. ,r 34, polymer composition
(3). Both of these examples have Shore hardness values within the range
recited in claim 1, and would necessarily be greater than the Shore hardness
of 25---60 for typical polymer waveguides (Spec. ,r 23). Therefore, the
Examiner has established a reasonable basis to believe that the Shore
hardness range taught by Fujikura of 100 or less, taken with Asahi Glass'
teachings discussed above, provides a waveguide connector having a
compliant film on the end face of the polymer waveguide having a Shore
hardness within the recited range that is greater than that of the waveguide.
In such a case, the burden properly shifts to Appellants to show that the prior
art does not disclose embodiments broadly recited in claim 1. See In re
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Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254--
56 (CCP A 1977).
Appellants further argue that the Examiner must consider Appellants'
discovery of problems associated with soft polymer waveguides (Appeal Br.
8). In particular, Appellants contend that they discovered that the softness of
polymer waveguides not only makes them vulnerable to scratching, but also
complicates the polishing process (id. at 9). Appellants urge that the
"invention as a whole includes identifying the problems associated with soft
polymer waveguides, and a solution of using a relatively hard film on the
ferrule end face to protect the waveguide" (id.).
This argument is also not persuasive of reversible error because the
Examiner establishes that the both Fujikura and Asahi Glass recognized the
problem of connection loss due to damage to waveguide end faces, in
particular polymer waveguides, and both solve this problem by protecting
the waveguide end face with a compliant film having a Shore hardness of
100 or less (Fujikura) or 90 or less (Asahi Glass), but that is not too hard to
permit deformation or self-healing (Ans. 6). As such, the Examiner
establishes that the prior art not only recognized the same problem
Appellants address, but provide the same solution to that problem.
In the Reply Brief, Appellants argue that Asahi Glass actually
discloses film hardness substantially less than the claimed range (Reply Br.
2). In this regard, Appellants refer to paragraph 24 of Asahi Glass and
contend that Asahi Glass' film has a Shore D hardness preferably less than
30 and a hardness less than 90 is less preferred (id.). Appellants also
contend Asahi Glass prefers a Shore A hardness greater than 30 when
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discussing durability, which corresponds to a Shore D hardness about zero
(id.).
This argument fails to persuade us of reversible error at the outset
because the claims fail to recite whether the hardness is Shore A or Shore D.
See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (rejecting
appellants' nonobviousness argument as based on limitation not recited in
claim); In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("Many of appellant's
arguments fail from the outset because, as the solicitor has pointed out, they
are not based on limitations appearing in the claims."). Further, even if
Asahi Glass expresses a preference for a Shore D hardness value of 30 as
Appellants argue, Asahi Glass nonetheless teaches a Shore D hardness range
of 90 or less which encompasses Appellants' claimed range and also teaches
specific films with Shore D hardness values within Appellants' claimed
range. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) (all disclosures in a reference must be considered, including
unpreferred embodiments); In re Burckel, 592 F .2d 117 5, 1179 (CCP A
1979); In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). In addition, mere
disclosure of alternatives does not alone amount to a teaching away. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
DECISION
Upon consideration of the record, and for the reasons given above and
in the Non-Final Office Action and the Examiner's Answer, the decision of
the Examiner rejecting claims 1 and 12 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Fujikura, Ohmura, and Asahi
Glass is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l).
AFFIRMED
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