Appeal No. 2001-1692
Application No. 09/116,338
to form an optical fiber ribbon. The Examiner acknowledges that Bonicel does not teach
simultaneously coating a plurality of ribbons. However, the Examiner concludes that it would
have been obvious to have provided a plurality of pay-out units, a plurality of groups of
ribbons, and a nozzle for each group of ribbons. The Examiner cites In re Harza, 274 F2d
669, 671, 124 USPQ 378, 380 (CCPA 1960), for the premise that duplication of parts has no
patentable significance. We consider this position by the Examiner to be deficient for several
reasons.
First, the Examiner appears to be applying a per se rule that the duplication of parts has
no patentable significance. As stated by the court in In re Ochiai, 71 F.3d 1565, 1572, 37
USPQ2d 1127, 1133 (Fed. Cir. 1995):
The use of per se rules, while undoubtedly less laborious than a
searching comparison of the claimed invention - including all its limitations -
with the teachings of the prior art, flouts section 103 and the fundamental case
law applying it. Per se rules that eliminate the need for fact-specific analysis of
claims and prior art may be administratively convenient for PTO examiners and
the Board. Indeed, they have been sanctioned by the Board as well. But reliance
on per se rules of obviousness is legally incorrect and must cease.
The Examiner has not carried out the required fact specific analysis. That is, the Examiner has
not explained why Bonicel shows that one of ordinary skill in the art would have been led to
duplicate portions of Bonicel to make fiber optic ribbons by the method recited in the
Appellants’ claimed invention, and would have had a reasonable expectation of success in
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