Ex Parte Huang et al

Board of Patent Appeals and Interferences

Jul 12, 2010

10275687 (B.P.A.I. Jul. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WEI-PING HUANG, TOMAS ADEBACK, and
DAVID WALLEN
____________

Appeal 2009-008680
Application 10/275,687
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 21-43 (Final Office Action (“Final”),
mailed Jan. 4, 2008, 1), the only claims pending in the Application. (Appeal
Brief (“App. Br.”), filed Aug. 13, 2008, 1.) We have jurisdiction under 35
U.S.C. § 6(b).
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We REVERSE.
BACKGROUND
The claimed invention is directed to an improvement to a
conventional method of splicing two optical fibers to each other. (See
Specification (“Spec.”) 1:3-6.) According to the Specification (see Spec.
1:8-29), in the conventional method for splicing together optical fibers, a
high voltage is applied to a pair of electrodes in order to generate an electric
arc enclosing end regions of the fibers. The ends of the fibers are pressed
together, causing the material of the optical fibers inside the arc to melt,
resulting in a fusion-splice. In order to melt the material, the temperature in
the fusion region must be above 1800° C. A problem which occurs when
the fibers are heated to such high temperatures is that, some material from
the fibers is evaporated and deposited on surfaces of the electrodes, in
particular on the points or tips of the electrodes. The silica particles are non-
uniformly deposited causing a phenomenon called “arc-walk” in which the
center position of the electric arc varies from one splice to the next. In other
words, instead of being ignited at the tips of the electrodes, the arc is often
started at varying distances from the tips causing a significant variation of
the temperature distribution inside the fusion region which can, in turn,
result in bad splices having high optical losses.
The inventors have discovered a method of compensating for the arc-
walk phenomenon which is said to result in more equal splices and a more
stable method. (See Spec. 2:7-11, 16-17.) “The method is based on
recalibrating the position of the ends of the fiber to be spliced for each
individual splice performed by determining spatial movements of the
intensity distribution of the arc so that a desired fusion temperature in the
end portions of the optical fibers is maintained.” (Spec. 2:13-16.)
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Independent claim 21 is illustrative of the invention and is reproduced below
from the Claims Appendix to the Appeal Brief:
21. A method of splicing two optical fibers, a left fiber and a
right fiber, to each other, the method comprising:
placing the two optical fibers having their end regions aligned
with each other and their end surfaces at or in close contact with each other,
initiating supply of electric voltage to electrodes to produce an
electric arc between points of the electrodes, the electric arc heating regions
of the two optical fibers at the end surfaces thereof,
capturing at least one image of the heated regions of the two
optical fibers and of a region surrounding the heated regions,
evaluating said at least one captured image to determine a
position of highest light intensity in said at least one captured image and
taking the determined position to represent the position of the center of the
electric arc,
moving the two optical fibers in relation to the electrodes in
accordance with the determined position so that, if said at least one captured
image would have been captured after moving the two optical fibers, the
determined position would be centered in areas depicting the end surfaces in
said at least one captured image, hence the center of the electric arc being
placed substantially centered in the end surfaces after moving the two optical
fibers,
continuing to supply electric voltage to the electrodes to fusion
material of the two optical fibers at the end surfaces together to give a splice,
and
stopping supplying electric voltage to the electrodes and
allowing the heated regions to cool.

The Examiner rejected claims 21-43 under 35 U.S.C. § 103 as
unpatentable over Zheng (US 5,570,446, issued Oct. 29, 1996), optionally in
view of Reslinger (US 5,648,007, issued Jul. 15, 1997) and Daily (US
5,559,695, issued Sep. 24, 1996). (Final 4-7; Examiner’s Answer (“Ans.”),
mailed Oct. 23, 2008, 3-6.)1 The Examiner found that Zheng discloses the

1This is the sole remaining ground of rejection. (See Ans. 2 (indicating that
the rejections of claims 21-43 under 35 U.S.C. § 112, first paragraph, written
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invention as claimed in the independent claims with the exception of the
evaluating and moving steps (Ans. 3-4.), i.e., the claim limitations associated
with determining the center of the arc generated by the electrodes and
adjusting the position of the optical fibers based on this determination2.
The Examiner concluded that these steps would have been obvious because
“[h]aving the arc dead-on center is a simple matter of common sense,” as is
“look[ing] at things to make sure they are aligned and stay aligned.” (Ans.
4.)
ISSUE
Appellants disagree with the Examiner’s contention that modification
of Zheng to achieve the claimed invention would have been a matter of
common sense. (See generally, App. Br. 15-20.) More specifically,
Appellants’ arguments raise the following issue for our consideration: does
a preponderance of the evidence support the Examiner’s conclusion that it
would have been obvious to have modified Zheng’s method to include the
claim limitations associated with determining the center of the arc generated
by the electrodes and adjusting the position of the optical fibers based on this
determination? (See App. Br. 18.)
FINDINGS OF FACT
In conventional optical splicing methods, optimal results are achieved
when the ends of the fibers are positioned in the center of the arc. (See
supra p. 2 (citations to Spec.) and p. 3 (quoting Ans. 4).) Appellants
contend that Zheng’s method is based on an assumption that the center of the
description requirement, and under 35 U.S.C. § 112, second paragraph, have
been withdrawn).)
2 Independent claim 32 recites analogous steps of evaluating, taking and
modifying. (See App. Br. 16-17.)
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arc is positioned half way between the two electrodes. (App. Br. 18.)
Appellants’ contention is supported by Zheng’s disclosure at column 5, lines
13-20 (cited in the Reply Brief (“Rep. Br.”), filed Dec. 23, 2008, 4) which
reads:
The fiber ends are . . . moved forwards . . . in a direction
essentially parallel to the longitudinal axes of the fibers, which
are also essentially perpendicular to the straight connection line
3 between the points of the electrodes 5, and the movement is
continued to a position of the end surfaces at this line in the
middle of the electric arc so that the fiber ends will thus be
located having their end surfaces placed in the position for
splicing or welding.

Appellants further contend, and the Examiner does not dispute, that
Zheng fails to indicate that any change, or shift in position of the arc center
occurs over time. (App. Br. 18; Ans. 7 (asserting this argument is not
relevant).) The secondary references (i.e., Reslinger and Daily) are cited as
evidence that it is known to use image analysis when aligning fibers. (Ans.
4.) The Examiner does not rely on these references for a teaching of using
image analysis to identify the position of the center of the arc. (Id.)
According to Appellants’ Specification, at the time of the invention,
known methods of adjusting for arc-walk involved adjustment of the electric
current flowing between the electrodes in order to maintain a desired
temperature inside the arc. (See Spec. 1:30-40.)
PRINCIPLES OF LAW
“Where a skilled artisan merely pursues ‘known options’ from a
‘finite number of identified, predictable solutions,’ obviousness under § 103
arises.” In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (quoting KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007)).
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An obviousness determination requires that a skilled artisan would
have perceived a reasonable expectation of success in making the invention
in light of the prior art. Amgen Inc. v. F. Hoffman-LA Roche Ltd, 580 F.3d
1340, 1362 (Fed. Cir. 2009) (citing In re Kubin, 561 F.3d at 1360).
Evidence of obviousness must come from the prior art, not the
applicant’s own disclosure. In re Dance, 160 F.3d 1339, 1343 (Fed. Cir.
1998).
ANALYSIS
Appellants have persuasively argued that the Examiner’s obviousness
determination is based on improper hindsight reasoning. In the only prior art
method of record of compensating for arc-walk, the optical fiber ends
remain fixed and the arc is adjusted. The Examiner did not identify any
evidence which establishes that the evaluating and moving steps of the
claimed process, which occur after the fibers have been heated by the arc,
would have been obvious at the time the invention was made. Obviousness
of an alternative cannot be established by mere speculation.
CONCLUSION
The Examiner’s factual findings supporting the obviousness
determination are not supported by a preponderance of the evidence.
Therefore, we do not sustain the rejection of claims 21-43 under 35 U.S.C. §
103 as unpatentable over Zheng, optionally in view of Reslinger and Daily.
REVERSED

tc

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