Appeal No. 2006-0297
Application 09/861,716
with the examiner’s position that one of ordinary skill in this art would have reasonably inferred
that the materials fusion spliced according to the disclosure of Hmelar would have different glass
transition temperatures, which is all that is required to satisfy claim 1. Furthermore, while we
agree with appellants that Conde ‘090 uses a glass layer between the two materials to be fusion
spliced (brief, pages 8-10; reply brief, pages 3-5), the reference nonetheless would have
reasonably taught one of ordinary skill in this art that heat can be applied to the material with the
higher heat capacitance or glass transition temperature (see above note 4), and thus, this
reference is combinable with Hmelar. See Keller, 642 F.2d at 425, 208 USPQ at 881.
Turning now to claim 15, we agree with appellants (reply brief, pages 1-3) that the
problem of joining glass fibers differing in glass transition temperature by at least 400°C was
known in the art as they acknowledge in the specification (pages 1-4). Thus, one of ordinary
skill in this art would have been motivated to solve the problem despite the asserted degree of
difficulty. See In re Nomiya, 509 F.2d 566, 574, 184 USPQ 607, 613 (CCPA 1975) (“The
significance of evidence that a problem was known in the prior art is, of course, that knowledge
of a problem provides a reason or motivation for workers in the art to apply their skill to its
solution.”). As appellants further point out, the difficulty in joining two materials of
“significantly different” melting points and thus, glass transition temperatures, was also
recognized by Hmelar (col. 5, ll. 20-27) (brief, e.g., pages 6-8; reply brief, pages 1-3). We find
no teaching in Hmelar which would lead one of ordinary skill in this art away from using the
fusion splicing method of the reference for glass fibers of significantly different glass transition
temperatures. Indeed, the reference teaches only that where “melting temperatures of . . . [the]
materials are significantly different from each other, it may be difficult to melt the
cores/claddings and achieve a good fusion between these fibers with optimally high optical
transmission properties” (col. 5, ll. 23-37; emphasis supplied), and not that such a fusion or any
manner of fusion cannot be achieved. See In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141,
1145-46 (Fed. Cir. 2004); see also In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed.
Cir. 1994) (“We share Gurley’s view that a person seeking to improve the art of flexible circuit
boards, on learning from Yamaguchi that epoxy was inferior to polyester-imide resins, might
well be led to search beyond epoxy for improved products. However, Yamaguchi also teaches
that epoxy is usable and has been used for Gurley’s purpose.”).
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