Ex parte MYSLINSKI et al.

Board of Patent Appeals and Interferences

Jul 27, 1998

08061669 (B.P.A.I. Jul. 27, 1998)

Application for patent filed May 14, 1993.1
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(2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PIOTR MYSLINSKI
and
JACEK CHROSTOWSKI
_____________
Appeal No. 95-2399
Application 08/061,6691
______________
ON BRIEF
_______________
Before FLEMING, LEE and TORCZON, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
Appeal No. 95-2399
Application 08/061,669
2
DECISION ON APPEAL
This is a decision on appeal from the final rejec-
tion of claims 1 through 3 and 5 through 10. Claim 4 has been
canceled.
The invention relates to optical fiber connecting
devices. In particular, Appellants disclose on page 5 of the
specification that Figures 1 and 2 show a connector arrangement
of the invention. In particular, Figures 1 and 2 show an optical
element 70 which is affixed to the end face 39 of the plug 40.
The independent claim 1 is reproduced as follows:
1. A method of incorporating an optical element having
two opposed optical end faces into an optical system having a
first connector plug which terminates an optical fiber, a second
connector plug which terminates another optical fiber, and an
alignment adapter having a first port for receiving the first
connector plug and a second port for receiving the second con-
nector plug, the first and second plug end faces being engageable
with another in an aligned, locked position within the alignment
adapter, the method comprising the steps of:
applying an adhesive to at least one of an end face of
the optical element and an end face of one of the connector plugs
the optical element is to be joined with; and, joining the end
face of the optical element with the end face of the connector
plug so that the optical element completely covers an optical
fiber that terminates at the connector plug end face, the
adhesive joining the end face of the connector plug to the end
face of the optical element so that the optical element is
carried by the connector plug.
Appeal No. 95-2399
Application 08/061,669
We note that Appellants filed a brief on September 16,2
1994. The Examiner mailed on December 1, 1997 a notification of
non-compliance stating that the brief does not contain a correct
copy of the appealed claims. On December 30, 1997, Appellants
filed a brief. The brief is the same brief as filed on September
16, 1994 with the exception of the appendix which contains a copy
of the appealed claims. We note that the Examiner has entered
this brief into the record.
3
The Examiner relies on the following references:
Palmer 4,431,260 Feb. 14, 1984
Bowen et al. (Bowen) 4,991,929 Feb. 12, 1991
Cammons et al. (Cammons) 5,082,345 Jan. 21, 1992
Claims 1 through 3 and 5 through 10 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Cammons in view
of Palmer or Bowen.
Rather than reiterate the arguments of Appellants and
the Examiner, reference is made to the brief and answer for the2
respective details thereof.
OPINION
We will not sustain the rejection of claims 1 through 3
and 5 through 10 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie
case. It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
Appeal No. 95-2399
Application 08/061,669
4
claimed invention by the express teachings or suggestions found
in the prior art, or by implications contained in such teachings
or suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining obviousness,
the claimed invention should be considered as a whole; there is
no legally recognizable 'heart' of the invention." Para-Ordnance
Mfg. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d
1237, 1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996)
citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
The Examiner states on page 4 of the answer that
Cammons fails to teach applying an adhesive to a face of the
optical element and a face of one of the connector plugs as
recited by Appellants' claims. On page 5 of the answer, the
Examiner states that Palmer or Bowen teaches this limitation. The
Examiner states that "[i]t would have been obvious to provide the
device of Cammons et al. with the index of material of Palmer or
Bowen et al. in order to provide a direct join to an end face of
an optical connector and affixing an end face of an optical
Appeal No. 95-2399
Application 08/061,669
5
element to that end face." We note that the Examiner did not
provide any reason for making this modification or any evidence
in prior art to support the Examiner's conclusion.
Appellants argue on pages 6 through 9 of the brief that
neither Palmer nor Bowen teaches or suggests using an adhesive
between an end face of an optical element and an end face of a
connector plug to provide an optical in-line element in a fiber
optical system. Appellants further emphasize that Bowen does not
teach the use of an adhesive at all.
Upon a detailed review of Bowen, we find that Bowen
does not teach an adhesive but rather an index matching film
material positioned within the connector receptacle. In
column 4, lines 16-20, Bowen teaches that Figure 3 shows
positioned within the alignment means 31 an index matching film
33. The end faces 16, 16' of the ferrules 15,15' form each of
the plugs 10,10' and press against the film 33 which remains in
receptacle housing 33 even after the plugs 10,10' are removed.
Thus, Bowen does not teach an adhesive or an optical element
having one face being affixed with an adhesive to an end face of
one of the connector plugs as claimed by Appellants in claims 1
through 3 and 5 through 9. In addition, Bowen does not teach
depositing a non-removable coating in the form of a thin film
Appeal No. 95-2399
Application 08/061,669
6
optical element onto an end face of one of the connector plugs
as recited in Appellants' claim 10.
Turning to Palmer, we find that Palmer does not teach
using an adhesive to affix an optical element to an end face of
one of the connectors or depositing a non-removable coating in
the form of a thin film optical element onto an end face of one
of the connector plugs as well. Palmer teaches in column 2,
lines 33-37, that when an optical fiber is bent in the form of an
arc, there is an increased tendency for light to escape from the
bent region. Palmer teaches in column 2, lines 55-58, that his
invention employs this phenomenon to provide an improved optical
coupler for optical fibers. In column 4, lines 4-16, Palmer
teaches affixing an optical fiber in a curve form 10 with epoxy
resin 14 as shown in Figure 1. In column 4, lines 16-21, Palmer
teaches that a small amount of the side of the fiber is removed
by lapping a flat surface 18 into the epoxy 14, as shown in
Figure 2. In column 5, lines 15-18, Palmer discloses that
Figure 6 shows the side of a fiber 12 lapped to provide a planar
surface 18'. Palmer teaches in column 4, lines 39-47, that two
such assemblies as shown in Figure 2 are joined together using
optically transparent epoxy to form the coupler 20 as shown in
Figure 3.
Appeal No. 95-2399
Application 08/061,669
7
We agree that Palmer teaches the use of optically
transparent epoxy. However, Palmer is using adhesive to join the
sides of two optical fibers directly together. Palmer does not
teach an optical element or the use of adhesive to affix an
optical element to an end face of one of the connectors.
Appellants further argue on pages 4 through 6 that
neither Cammons, Bowen nor Palmer suggests the desirability of
making the combination. In particular, Appellants point out that
Cammons teaches away from using an adhesive to affix the optical
element to a connector plug end face.
The Federal Circuit states that "[t]he mere fact that
the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior
art suggested the desirability of the modification." In re
Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14
(Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing
W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551,
Appeal No. 95-2399
Application 08/061,669
8
1553, 220 USPQ at 311, 312-13, cert. denied, 469 U.S. 851 (1984).

We agree that Cammons teaches an optical element 70
shown in Figure 2, but the Examiner has failed to show that the
prior art suggested the desirability of the Examiner's proposed
modification of using adhesive to affix the optical element 70
to a connector plug end face. Furthermore, we find that Cammons
teaches in column 8, lines 17-44, that it is important that the
optical element 70 is not affixed but allowed to move in the
slot 61 so that there is freedom of longitudinal movement of the
optical element 70 which is needed in the connection and
disconnection of the plugs. Thus, Cammons suggests to those
skilled in the art not to fix the optical element 70 to the
connector plug end face.
We further note that the Examiner has not pointed to
any evidence that those skilled in the art would have reason to
make the modification. We are not inclined to dispense with
proof by evidence when the proposition at issue is not supported
by a teaching in a prior art reference or shown to be common
Appeal No. 95-2399
Application 08/061,669
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knowledge of unquestionable demonstration. Our reviewing court
requires this evidence in order to establish a prima facie case.
In re Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA
1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA
1966). Therefore, we find that the Examiner has failed to
establish why one having ordinary skill in the art would have
been led to the claimed invention by teachings or suggestions
found in the prior art.
We have not sustained the rejection of claims 1 through
3 and 5 through 10 under 35 U.S.C. § 103. Accordingly, the
Examiner's decision is reversed.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMESON LEE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
Appeal No. 95-2399
Application 08/061,669
10
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 95-2399
Application 08/061,669
11
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