COMMISSIONER'S DECISION
OBVIOUSNESS - Optical Fiber Group
The invention is a particular movable mounting of fine optical fibres on a
base tape. The movable arrangement permits easy alignment of the fibres so
they may be joined together. The art relied upon by the examiner was not
involved with the problem, and the solution utilized was not obviousness.
Final Action: Affirmed in part - amended claims were accepted.
******************
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated September 28, 1976, on
application 161,365 (Class 88-97). The application was filed on Jan-
uary 16, 1973, in the name of Enrique A.J. Marcatili, and is entitled
"Optical Fiber Group." The Patent Appeal Board conducted a Hearing on
May 10, 1978, at which Mr. E. Gale represented the applicant. Also
in attendance was the United States Patent Agent, Mr. M. DePicciotto.
The application is directed to a particular moveable arrangement of
optical fibres mounted on a base tape. The moveable arrangement of
the fibres is for proper alignment to facilitate the bonding or splicing
of the fibres. Optical fibres may be termed as a solid or liquid core
dialectric structure used as waveguides at optical frequencies. Figure
1A illustrates that arrangement:
(See Figure 1)
Claim 1 of the application reads:
An optical fiber group comprising: a first tape having a
plurality of optical fibers mounted thereon and extending
longitudinally therealong; said fibers being mounted on
said first tape in a manner which permits transverse dis-
placement of the fiber axes.
In the Final Action the examiner refused the claims (claims 1 to 9)
for "lack of invention" over the following United States patents:
1,859,988 May 24, 1932 Schemmel
2,361,374 Oct. 31, 1944 Abbott
3,272,063 Sept. 13, 1966 Singer, Jr.
The Singer patent, which is the primary reference, is directed to composite
supported fibre optic strips. In the preferred embodiment a pair of fibre
optic support elements are used. The support elements each have a flat
plane surface disposed parallel to each other and separated by a space into
which optical fibres are inserted. Suitable fusion is brought about between the
materials of support and the optical fibres. That invention is illustrated
below:
(See formula 1)
The Schemmel patent relates to an electric wire conduit consisting of a
pair of electrical wires arranged in spaced parallel relationship and
attached to a tape. The edges of the tape are folded over the wires and
are secured to the exposed portion of the tape between the wires. Figure
3 below of the patent illustrates that invention:
(See formula 2)
The Abbott patent relates to an insulated electrical conductor construction.
The electrical conductors are passed in spaced parallel paths in a common
plane through a coating machine, whereby the conductors are sandwiched between
two layers of thermoplastic coating material.
In the Final Action the examiner had, inter alia, this to say:
...
Claims 1, 2, 3, 4, 5, 6 and 7 are again rejected as being un-
patentable over the fiber optic light transmitting strip
disclosed in the Singer, Jr. patent in view of the obviousness
of substituting the independent disposition arrangement of
energy transmitting elements as illustrated in the Schemmel
patent, for the Singer Jr. More compact arrangement of energy
transmitting elements, to obtain an optical fiber group as
defined in these claims.
Applicant's head claim 1 consists of statements concerned
only with the disposition of elongated energy transmitting
thread like conductors on a strip of support material.
No reference is made in claim 1 to properties or qualifying
characteristics which distinguish new and inventive matter
actually being claimed, from what is obvious in view of the
prior art cited.
While applicant's response argues patentability of claim 1,
relying solely on matter recited in his disclosure, such
matter does not appear in the claim and cannot be said to
define the scope of the alleged invention claimed.
Applicant's remarks at the bottom of page 1 regarding the
Singer, Jr. patent are noted. Although these remarks are
relevant within the context of the Singer, Jr. disclosure,
they are held to be irrelevant to the definition and scope
of applicant's claim 1. In this respect, whether or not
Singer, Jr. was concerned with malformation of his fiber group
is not relevant to the broad unrestricted terminology recited
in applicant's claim 1.
It is evident that Singer, Jr. was aware of the "fusionless"
option available to him both from his disclosure relating to
excessively small and larger diameter fiber threads and also
evident from the Singer, Jr. claim 2 which is entirely silent
regarding fusion and malformation of fiber groups.
In consequence of the above comments, a strip of material having
plural optical fibers disposed thereon in a manner permitting transverse
displacement of the fibers, contains no inventive matter or patent-
able advance in the art.
...
In response to the Final Action the applicant stated (in part):
...
Applicant's specification discloses optical fiber groups as
best shown in Figures 1A and 1B of the drawings. The groups
generally consist of a number of optical fibers arranged in
spaced parallel relationship in a common plane. The fibers
are supported by a tape and are secured to the tape or by
means of a covering tape (as shown in Figure 1B).
The problem solved by the invention concerns the bonding or
splicing of optical fiber groups, which is essential if the
fiber groups are to be used as wave guides at optical frequenc-
ies in much the same way as wires and metallic wave guides are
used at lower frequencies. However, it is well known that
there is considerable difficulty in splicing optical fibers
because of the need for accurate alignment of the fibers before
bonding can take place if an unacceptable amount of light
loss is to be avoided at the junction. As stated in the
introduction of the applicant's disclosure, when one considers
that optical fibers have core diameters ranging from a few
microns to a few mils, and that an alignment error of as
little as half a diameter will result in a coupling loss of
about 3 db, the magnitude of the problem becomes apparent.
The optical fiber groups disclosed in the specification are
capable of overcoming this alignment problem in conjunction
with the apparatus as shown in Figures 3, 5, 7 and 8 of the
drawings. The apparatus forces the fibers of adjacent groups
into the proper alignment by the use of an accurately grooved
cover plate. However, fibers in the fiber groups must be
capable of transverse displacement of the fiber axes, in order
to allow the cover plate to align the fiber ends correctly.
Thus, the capability of transverse axial displacement is an
essential feature of the fiber groups of the present invention.
The invention is applicable either to optical fibers having
solid cores or those having liquid cores, and a special pro-
cedure is set forth in connection with the liquid core fibers
(Figures 8 to 10).
...
This argument has been discussed in detail above. Although it
may be proper to rely on art from analogous fields, it should be
carefully considered whether, in fact, the fields are analogous
in relation to the problems solved by applicant's invention. In
this case, this is not so for the reasons given above, namely that
the method of joining electrical conductors is unrelated to
the method of splicing optical fibers. Although no judicial
support can be found for the following proposition, it is reason-
able to assume that fields of art are analogous when a person
skilled in the art of one of the fields would immediately see
that similar problems could be encountered in the other field.
In this case, it is believed that a person skilled in the fiber
optics art would not think of studying the electrical conductor
art for a solution to the splicing problem because it is well
known that the high degree of alignment necessary in splicing
optical fibers is unnecessary in joining electrical conductors.
Thus, the arts are non-analogous.
...
The consideration before the Board is whether or not the claims define a
patentable advance in the art. In the Final Action the examiner refused the
claims only and was concerned with the scope of monopoly of the invention
defined in the claims.
At the Hearing Mr. Gale argued strongly that the claims were clearly directed
to patentable subject matter. He also discussed and submitted a new proposed
claim 1 and stated that he was willing to consider other appropriate amendments
if necessary. This claim will be considered later.
We have carefully reviewed all the cited art and we find the applicant has
developed solutions to problems which were not taught by the cited patents. The
problem "solved by the invention concerns the bonding or splicing of optical
fiber groups, which is essential if the fiber groups are to be used as wave guides
at optical frequencies." It is well known that there is considerable difficulty
in splicing optical fibres because of the need for accurate alignment of the
fibres before bonding can take place, if an unacceptable amount of light loss
is to be avoided at the junction. It must be kept in mind that optical fibres
have core diameters ranging from a few microns to a few mils. It follows that a
small alignment error will result in a considerable coupling loss.
The patent to Singer is the only reference which is concerned with optical
fibres, but is not in any way concerned with splicing of the fibres Singer
clearly does not teach the invention of the present application; the description
of his invention, as discussed above, is totally different from that of the
present application. This art in fact leads away from the applicant's teaching
since it teaches firmly affixing the fibers in position. In contract the
applicant's invention, interia alia, requires that the fibers be movably
secured to a base tape. The patents to Schemmel and Abbot relate to a different
technology, i.e. "metallic conductors" and they are of general interest only.
There is no problem of precision alignment in the metallic fibre art, where
connections can be made by twisting the wire ends together without abutment
of the ends of the wires.
The examiner, as mentioned, was concerned with the scope of monopoly of the
invention defined in the claims. He did not refuse the application. We
find, without any hesitation, that present claim 1, supra, the only independent
claim, does not define the scope of monopoly in distinct terms commensurate
with what, in our view, is the invention described in the disclosure and
illustrated in the drawings. For example, it refers to a "first" tape without
in any way indicating what other tapes are present, also the term "mounted on"
does not, in our view, properly define the scope of monopoly of the invention
described in the specification. The reason for considering this claim is
because Mr. Gale argued at the Hearing that it defines patentable subject
matter. This claim, in our view, should be refused, and in that respect
the examiner's rejection is supported.
We will now consider proposed claim 1 which was discussed at the Hearing.
It reads:
An optical fiber group comprising a first tape having a
plurality of optical fibers mounted thereon and extending
longitudinally therealong, wherein the fibers are mounted
on the first tape in a manner which permits transverse
displacement of the fiber axes, such that said fibers are
easily alignable with corresponding fibers of another
identical fiber group.
Minor amendments to this claim were suggested to Mr. Gale by phone, because
this claim, in our view, was still indefinite, e.g. it refers to a first
tape and the term mounted, in our view, requires that it be specific to,
"... by means of limited bonding...." We also recommend that, under the
circumstances, the functional result should be included in the claim, i.e.
"to facilitate bonding or splicing of the fibres." This, in our view, more
clearly defines the advance in the art.
On may 25, 1978, Mr. Gale, in accordance with our discussion, submitted a
new claim 1, which reads:
An optical fiber group comprising a plurality of optical
fibers supported upon a base tape and arranged in parallel
relationship in a common plane, the fibers being movably
secured to the tape by means of limited bonding to allow
for ease of alignment with another identical fiber group to
facilitate bonding or splicing of the fibers.
Other minor amendments were suggested by the applicant to the disclosure and
dependent claims, which reflect the amendments made to claim 1. We recommend
that these amendments also be accepted.
In the circumstances, no further discussion need be made because, in our view,
the proposed claims now define the extent of the scope of monopoly to which
protection may be granted, and avoids the objection of obviousness made by the
examiner against the original claims.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have reviewed the prosecution of this application and I agree with the
recommendation of the Patent Appeal Board. Accordingly, I will accept the
amendments to the application, dated May 25, 1978, when submitted in
appropriate form. The application is returned to the examiner.
J.H.A. Gariepy
Commissioner of Patents
Agent for Applicant
Kirby, Shapiro, Curphey & Eades
77 Metcalfe St. Ottawa, Ont.
Dated at Hull, Quebec
this 12th day of June, 1978