Ex Parte Ochiai et al

Board of Patent Appeals and Interferences

Mar 22, 2006

09861716 (B.P.A.I. Mar. 22, 2006)

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today was not written for publication and is not binding
precedent of the Board.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 KATSUHIRO OCHIAI,
YUTAKA KUROIWA, NAOKI SUGIMOTO
and TAKESHI HIROSE
______________

Appeal No. 2006-0297
Application 09/861,716
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HEARD: February 23, 2006
_______________

Before CAROFF, WARREN and OWENS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally
rejecting claims 1 through 6 and 9 through 16, all of the claims in the application.
Claims 1 and 15 illustrate appellants’ invention of a method for connecting glass fibers,
and are representative of the claims on appeal:
1. A method for connecting glass fibers, the method comprising:
abutting in a line an end surface of a first glass fiber and an end surface of a second glass
fiber so that a core of the first glass fiber is in direct contact with a core of the second glass fiber,
the first glass fiber having a glass transition point T1 higher than a glass transition point T2 of the
second glass fiber; and
heating the glass fiber to achieve a maximum temperature on the first glass fiber at least 1
µm from the end surface of the first glass fiber to fusion splice the glass fibers together.
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Application 09/861,716
15. The method according to claim 1, wherein a difference between the glass transition
point T1 of the first glass fiber and the glass transition point T2 of the second fiber is at least
400°C.
The references relied on by the examiner are:
Hmelar et al. (Hmelar) 5,729,643 Mar. 17, 1998
Conde et al. (Conde ‘090) 6,453,090 Sep. 17, 2002
(filed Jun. 28, 1999)

Conde et al. (Conde ‘265) WO 98/39265 Sep. 11, 1998
(published World Intellectual Property Organization Application)
The examiner further relies on “official notice” that “glass transition temperatures and
melting temperatures very similar features, and thus, one would expect that if two glasses have
significantly different melting temperatures, then they would have significantly different glass
transition temperatures,” which, as the examiner points out, has not been disputed by appellants
(answer, pages 3-4; see also Office action mailed November 18, 2004). This we consider the
examiner’s finding as fact. See In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 421 (CCPA
1970) ("Where the appellant has failed to challenge a fact judicially noticed and it is clear that he
has been amply apprised of such finding so as to have the opportunity to make such challenge,
the board's finding will be considered conclusive by this court.").
The examiner has rejected appealed claims 1 through 6 and 9 through 16 under 35 U.S.C.
§ 103(a) as being unpatentable over Hmelar and official notice (answer, pages 4-7), and as being
unpatentable over Hmelar and official notice in view of Conde ‘090 (answer, pages 7-8).1, ,2 3
Appellants specifically argue claims 1 and 15 with respect to each ground of rejection,
and accordingly, we decide this appeal based on these claims. 37 CFR § 41.37(c)(1)(vii)
(September 2004).

1 The grounds of rejection as set forth in the answer are directed to “[c]laims 1-7 and 9-13”
which, as appellants point out in the reply brief, is harmless typographical error, discernible, we
find, from the claims discussed in the statement of the first ground of rejection.
2 The second ground of rejection is stated as relying on Conde ‘265 with Conde ‘090 being a
translation thereof as both are in the same patent family. See answer, page 7; brief, page 4; final
action mailed November 18, 2004, page 5. We determine that Conde ‘090 is in fact prior art to
the claimed invention under 35 U.S.C. § 102(e) (1975) as of Jun. 28, 1999, and thus, is the
applied reference and is so discussed by the examiner and appellants (brief, e.g., pages 4 and 8).
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Application 09/861,716
We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the answer and to the brief and reply brief for a complete exposition thereof.
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner that, prima facie, the claimed
method for connecting glass fibers encompassed by appealed claims 1 and 15 would have been
obvious over the teachings of Hmelar alone and as combined with Conde ‘090 to one of ordinary
skill in this art at the time the claimed invention was made. Accordingly, since a prima facie
case of obviousness has been established by the examiner, we have again evaluated all of the
evidence of obviousness and nonobviousness based on the record as a whole, giving due
consideration to the weight of appellants’ arguments in the brief. See generally, In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
Upon further review, we find substantial evidence in the record supporting the
examiner’s positions for the reasons stated by the examiner, to which we add the following for
emphasis.
The plain language of claim 1, given its broadest reasonable interpretation in context in
light of the specification, see, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364,
70 USPQ2d 1827, 1830 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989), specifies a method wherein the core of any manner of first glass fiber having a glass
transition temperature higher than that of any manner of second glass fiber, is directly contacted
with the core of the second glass fiber, and heat is applied to the first glass fiber at a point in the
range of at least 1 µm from the end surface thereof sufficient to fusion splice the two glass fibers.
Thus, claim 1 requires only that the glass transition temperatures of the two glass fibers differ to
any extent, however small. Claim 15 limits the method of claim 1 by requiring that the
difference in glass transition temperatures is in the range of at least 400°C.

3 The examiner withdrew the ground of rejection of the appealed claims under 35 U.S.C.
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Application 09/861,716
We find that the claimed methods encompassed by claim 1 include the method that would
have been disclosed to one of ordinary skill in this art by Hmelar alone wherein two glass fibers
of different heat capacitance, from slightly higher to significantly different melting points, are
fusion spliced by a fusion splicer that is aligned slightly to the side of the glass fiber of higher
heat capacitance (col. 5, ll. 9-27). We agree with the examiner (answer, pages 5 and 8-9) that
one of ordinary skill in this art would have reasonably inferred from the disclosure of the
materials that the same have different melting points and thus, the glass transition temperatures
of the two glass fibers would be different; and that the alignment of the fusion splicer “slightly”
to the side of the glass fiber with the higher heat capacitance, that is, glass transition temperature,
would reasonably include a distance of at least 1 µm from the end surface thereof.4 We further
find that Conde ‘090 would have taught one of ordinary skill in this art the same concept of
fusion splicing two materials with dissimilar heat capacitance by offsetting the fusion splicer the
length of at least “a few” micrometers, falling within the range of at least 1 µm, from the end
surface of the material with the higher heat capacitance (e.g., col. 4, l. 65, to col. 5, l. 3, col. 5,
ll. 48-63, and col. 9, ll. 3-35). Accordingly, this person would have reasonably combined the
teachings of Hmelar and Condo ‘090 in these respects, thus arriving at the claimed method
encompassed by appealed claim 1, without recourse to appellants’ disclosure. In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)(“The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly suggested in any one or
all of the references. Rather, the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.”).
We are not convinced otherwise with respect to claim 1 by appellants’ arguments. We
recognize that, as appellants point out, Hmelar does not use the term “glass transition
temperature” or “glass transition point” (brief, e.g., page 6). However, on this record, we agree

§ 102(b) over Conde ‘265 (answer, page 2).
4 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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Application 09/861,716
with the examiner’s position that one of ordinary skill in this art would have reasonably inferred
that the materials fusion spliced according to the disclosure of Hmelar would have different glass
transition temperatures, which is all that is required to satisfy claim 1. Furthermore, while we
agree with appellants that Conde ‘090 uses a glass layer between the two materials to be fusion
spliced (brief, pages 8-10; reply brief, pages 3-5), the reference nonetheless would have
reasonably taught one of ordinary skill in this art that heat can be applied to the material with the
higher heat capacitance or glass transition temperature (see above note 4), and thus, this
reference is combinable with Hmelar. See Keller, 642 F.2d at 425, 208 USPQ at 881.
Turning now to claim 15, we agree with appellants (reply brief, pages 1-3) that the
problem of joining glass fibers differing in glass transition temperature by at least 400°C was
known in the art as they acknowledge in the specification (pages 1-4). Thus, one of ordinary
skill in this art would have been motivated to solve the problem despite the asserted degree of
difficulty. See In re Nomiya, 509 F.2d 566, 574, 184 USPQ 607, 613 (CCPA 1975) (“The
significance of evidence that a problem was known in the prior art is, of course, that knowledge
of a problem provides a reason or motivation for workers in the art to apply their skill to its
solution.”). As appellants further point out, the difficulty in joining two materials of
“significantly different” melting points and thus, glass transition temperatures, was also
recognized by Hmelar (col. 5, ll. 20-27) (brief, e.g., pages 6-8; reply brief, pages 1-3). We find
no teaching in Hmelar which would lead one of ordinary skill in this art away from using the
fusion splicing method of the reference for glass fibers of significantly different glass transition
temperatures. Indeed, the reference teaches only that where “melting temperatures of . . . [the]
materials are significantly different from each other, it may be difficult to melt the
cores/claddings and achieve a good fusion between these fibers with optimally high optical
transmission properties” (col. 5, ll. 23-37; emphasis supplied), and not that such a fusion or any
manner of fusion cannot be achieved. See In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141,
1145-46 (Fed. Cir. 2004); see also In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed.
Cir. 1994) (“We share Gurley’s view that a person seeking to improve the art of flexible circuit
boards, on learning from Yamaguchi that epoxy was inferior to polyester-imide resins, might
well be led to search beyond epoxy for improved products. However, Yamaguchi also teaches
that epoxy is usable and has been used for Gurley’s purpose.”).
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Application 09/861,716
The related argument of no reasonable expectation of success based on this disclosure of
Hmelar (brief, e.g., page 8; reply brief, e.g., page 3) also fails because the mere possibility of
failure does not undermine the examiner’s position. Indeed, only a reasonable expectation of
success is required, not that the precise level of efficacy be absolutely predictable, and thus, it is
sufficient here that the references clearly suggest doing what appellants have done. See In re
O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988) (“Obviousness does
not require absolute predictability of success. . . . There is always at least a possibility of
unexpected results, that would then provide an objective basis for showing that the invention,
although apparently obvious, was in law nonobvious. [Citations omitted.] For obviousness under
§ 103, all that is required is a reasonable expectation of success. [Citations omitted.]”); In re
Longi, 759 F.2d 887, 897, 225 USPQ 645, 651-52 (Fed. Cir. 1985); In re Kronig, 539 F.2d 1300,
1304, 190 USPQ 425, 428, (CCPA 1976) (“[I]t is sufficient here that [the reference] clearly
suggests doing what appellants have done.”); In re Moreton, 288 F.2d 940, 943-44, 129 USPQ
288, 291 (CCPA 1961); cf. Gurley, 27 F.3d at 553, 31 USPQ2d at 1132.
The arguments advanced by appellants with respect to the combined teachings of Hmelar
and Conde ‘090 are essentially those based on Hmelar alone (brief, pages 11-12).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in Hmelar alone and combined with Conde ‘090
with appellants’ countervailing evidence of and argument for nonobviousness and conclude that
the claimed invention encompassed by appealed claims 1 through 6 and 9 through 16 would have
been obvious as a matter of law under 35 U.S.C. § 103(a).
The examiner’s decision is affirmed.

No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a)(1)(iv) (2005).
AFFIRMED
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Appeal No. 2006-0297
Application 09/861,716

MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )

Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
1940 Duke Street
Alexandria, VA 22314
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