Appeal No. 2006-0297
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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