Ex parte Odanaka

Board of Patent Appeals and Interferences

Feb 7, 2000

08043743 (B.P.A.I. Feb. 7, 2000)

Application for patent filed April 7, 1993.1
See Paper No. 16.2
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KUNIO ODANAKA
_____________
Appeal No. 1996-3152
Application No. 08/043,7431
______________
HEARD: January 12, 2000
_______________
Before, McCANDLISH Senior Administrative Patent Judge and
ABRAMS and GONZALES, Administrative Patent Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s refusal to allow
claim 1, as amended subsequent to the final rejection. Claim2
Appeal No. 1996-3152
Application No. 08/043,743
See Paper No. 10.3
2
6 was canceled subsequent to the final rejection. Claims 23
through 5 and 7 through 10, the only other claims in the
application, stand withdrawn from consideration under 37 CFR §
1.142(b).
We REVERSE.
The subject matter on appeal is directed to a method of
uniting a number of optical fibers. The appealed claim reads
as follows:
1. A method of uniting a number of optical fibers
comprising the steps of:
(a) preparing a tubular member of a shape memory alloy
with a reception space, wherein the tubular member has a bent
axis in its memorized shape;
(b) processing the tubular member in such a manner that
the cross-sectional area of said reception space is larger
than the cross-sectional area in the memorized shape of said
tubular member and that said axis of the tubular member
contains a gentler bend compared with the bend of the bent
axis in the memorized shape;
(c) applying an adhesive to portions of a number of
optical fibers over a predetermined length;
(d) inserting said portions of said optical fibers into
said processed tubular member after steps (b) and (c);
(e) subsequently heating said tubular member to return
the tubular member to the bend of the axis in memorized shape
and to reduce the cross-sectional area of said reception
space, thereby uniting said optical fibers received in said
tubular member, a cross-sectional shape of said united optical
fibers being determined by said memorized shape of said
tubular member; and
Appeal No. 1996-3152
Application No. 08/043,743
In determining the teachings of Hirano, we will rely on the4
translation provided by the PTO. A copy of the translation is attached for
the appellant's convenience. Any reference in this decision to Hirano by page
is to this translation.
3
(f) curing said adhesive by said heating.
The prior art references of record relied upon by the
examiner in rejecting the appealed claim are:
Siegmund 3,580,775 May
25, 1971 McCartney 3,914,015
Oct. 21, 1975
Hirano et at. (Hirano) 59-121006 Jul. 12,
19844
(Japanese published application)
Additionally, the examiner relies on the admitted prior
art (APA) described in the second full paragraph on page 1 of
the appellant’s specification.
The following rejections are before us for review:
(I) Claim 1 stands rejected under 35 U.S.C. § 103 as
being unpatentable over McCartney;
(II) Claim 1 stands rejected under 35 U.S.C. § 103 as
being unpatentable over McCartney in view of Hirano and either
Siegmund or the APA; and
(III) Claim 1 stands rejected under 35 U.S.C. § 103 as
being unpatentable over the APA in view of McCartney and
Appeal No. 1996-3152
Application No. 08/043,743
Rejections (II) and (III) are designated in the answer, pages 4-7, as5
new grounds of rejection.
4
Hirano.5
The full text of the examiner's rejections and the
responses to the arguments presented by appellant appear in
the answer (Paper No. 14), supplemental answer (Paper No. 18)
and the second supplemental answer (Paper No. 20) while the
complete statement
of appellant’s arguments can be found in the main, the reply
and the supplemental reply briefs (Paper Nos. 13, 15 and 19
respectively).
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant’s specification and the
claim, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we conclude that
none of the § 103 rejections can be sustained.
Rejection (I)
Appellant argues that the examiner has failed to
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Application No. 08/043,743
5
establish a prima facie case of obviousness because McCartney
fails to teach or suggest the step of preparing a tubular
member of a shape memory alloy with a reception space, wherein
the tubular member has a bent axis in its memorized shape as
called for in Claim 1.
The examiner acknowledges (answer, page 3) that McCartney
does not teach preparing the termination pins or tubular
members 13 and 14 with bent axes, but argues that the shape of
the axis
of the termination pin 13 or 14 before and after heating is a
matter of design choice because “such shape per se solves no
stated problem” (id. at 4).
We do not agree. We are informed by appellant’s
specification (page 2) that known methods of uniting optical
fibers in a bent condition are cumbersome and result in low
optical fiber filling density. Appellant’s specification also
informs us that the claimed invention provides an easier
method of uniting optical fibers with a high filling density
without damaging the optical fibers (see, for example, page 2,
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6
lines 24-26 and paragraph bridging pages 14 and 15). Thus,
according to appellant’s specification, the claimed method
does solve a number of known problems in the art. Compare In
re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975) wherein
the court indicated that the rationale of "obvious matter of
design choice" applies when a modification is made which
"solves no stated problem.” Therefore, we do not agree that
the examiner has a valid basis for asserting that it would
have been an obvious matter of mechanical "design choice" to
prepare a tubular member of a shape memory alloy with a
reception space, wherein the tubular member has a bent axis in
its memorized shape.
From our perspective, the examiner has impermissibly
relied upon the appellant’s own teachings in arriving at a
conclusion of obviousness. This being the case, we will not
sustain the rejection of claim 1 under 35 U.S.C. § 103 based
on McCartney alone.
Rejections (II) and (III)
In both Rejections (II) and (III), the examiner relies on
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Hirano for a teaching of a shape memory alloy used to control
the shape of an optical fiber. Hirano discloses at page 6 and
in Fig. 2 an assembly structure for an optical conductor
including a shape memory alloy 3 surrounding an auxiliary
metal material 2 and an optical fiber 1. Hirano teaches that
the cable illustrated in Fig. 2 is made by fixing the cross-
sectional shape of the shape memory alloy as shown in Fig. 3A
(the memorized shape). The shape memory alloy is then
deformed or processed to the shape shown in Fig. 3C. The
optical fiber 1 and auxiliary metal 2 are next placed in the
shape memory alloy 3 (Fig. 3D) and fixed therein by heating
the alloy to the prescribed temperature such that the shape
memory alloy 3 returns to its memorized shape (Fig. 3E). In
addition, Hirano teaches (page 7) that the
assembled optical cable 10' can be processed to memorize a
desired shape, such as, the curved shape shown in Fig. 4 or 5.
Appellant argues (supplemental reply brief, page 2) that
the tubular member recited in claim 1 is heated only once to
Appeal No. 1996-3152
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return the tubular member to the memorized bent shape and to
reduce the cross-sectional area of the reception space whereas
the shape memory alloy 3 in Hirano is subjected to a first
memorization treatment to obtain the cross-sectional shape
shown in Fig. 3E and then a second memorization treatment to
obtain the bent shape shown in Fig. 4.
The examiner’s response (second supplemental answer, page
2) is that claim 1 is so broad as to read on the double-
heating process disclosed by Hirano. We disagree. Step (b)
of claim 1 calls for:
processing the tubular member in such a manner that the
cross-sectional area of said reception space is larger
than the cross-sectional area in the memorized shape of
said tubular member and that said axis of the tubular
member contains a gentler bend compared with the bend of
the bent axis in the memorized shape;
Step (c) calls for applying an adhesive to portions of a
number of optical fibers. Steps (d) and (e) call for
inserting
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the portions of the optical fibers with the adhesive into the
processed tubular member after steps (b) and (c) and then
heating the tubular member. In other words, the claim
specifically requires that the tubular member be processed for
both cross-sectional area and axis shape before the heating
step recited in paragraph (e). Therefore, we cannot support
the examiner’s interpretation of claim 1.
It is also the examiner’s position that even if the claim
does require the tubular member to return to the memorized
bent shape and cross-sectional area by means of a single
heating step, it would have been obvious to so modify Hirano
“because the tubular member is of a single homogenous
material, any of its physical dimensions and orientations can
be affected by a single memorization treatment and a single
heat treatment” (second supplemental answer, page 3).
As to the examiner's contention that it would have been
obvious to return Hirano’s tubular member to the memorized
bent shape and cross-sectional area by means of a single
heating step, we must point out that obviousness under § 103
is a legal
Appeal No. 1996-3152
Application No. 08/043,743
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conclusion based on factual evidence (In re Fine, 837 F.2d
1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988)) and the mere fact
that such a result could occur does not serve as a proper
basis for concluding that such a modification would have been
obvious. Instead, it is well settled that in order to
establish a prima facie case of obviousness the prior art
teachings must be sufficient to one of ordinary skill in the
art to suggest making the modification needed to arrive at the
claimed invention. See, e.g., In re Lalu, 747 F.2d 703, 705,
223 USPQ 1257, 1258 (Fed. Cir. 1984). The examiner, however,
has provided no factual basis whatsoever for concluding that
the modification proposed would have been obvious. See, e.g.,
In re GPAC Inc., 57 F.3d 1573, 1582, 35 USPQ2d 1116, 1123
(Fed. Cir. 1995) and In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968)).
We have also carefully reviewed the APA and the Siegmund
patent additionally relied upon by the examiner in support of
Rejections (II) and (III), but find nothing therein that makes
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up for the deficiencies of McCartney and Hirano noted above.
It follows that Rejections (II) and (III) cannot be sustained.
In summary, all of the examiner's rejections of claims 1
under 35 U.S.C. § 103 are reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
vsh
Appeal No. 1996-3152
Application No. 08/043,743
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Barry E. Bretschneider
Fish & Richardson
601 13th Street, N.W.
Washington, DC 20005