BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE ANNE HOLT, ABDALLAH M. MEKKAOUI AND NANCY C. EICKMAN Appeal No. 90-1311

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)



Appeal No. 90-1311

January 31, 1991

HEARD: December 11, 1990



 Application for Patent filed November 20, 1987, Serial No. 123,283, which is a Continuation of Serial Number 06/631,966 filed July 18, 1984. Components For Joining Or Terminating Optical Fibers.



Benton S. Duffett, Jr. et al. for appellants



Primary Examiner - Lorraine T. Kendell



Before Serota [FN1]






Goolkasian and Emery












 This is an appeal from the final rejection of claims 1 to 7 and 9 to 12; remaining claim 8 stands withdrawn from consideration pursuant to 37 CFR 1.142(b).



 The appealed subject matter relates to a component for joining and/or terminating optical fibers, which component is molded of known thermotropic liquid crystalline polymers (note lines 5 to 7 on page 3 and pages 13 to 18 of appellants' specification). Claim 1 is illustrative of the appealed subject matter and reads as follows:

   1. A component for joining or terminating optical fibers molded of a thermotropic liquid crystalline polymer, said component comprising a body having a channel therein for positioning at least one optical fiber, and said liquid crystalline polymer of said body having a linear coefficient of thermal expansion of from about -5 to 10 micrometer/meter-C at a temperature range of from -50C to +85 C. [FN2]



 The references relied on by the examiner as evidence of obviousness are:




Harwood et al. (Harwood)        4,186,999  Feb. 5, 1980  

Holt et al. (Holt)              4,505,222  Mar. 19, 1985

Wissbrun et al. (Wissbrun)      4,540,737  Sep. 10, 1985

           Reference relied on by Board:                

Ide et al.                      0,091,253  Oct. 12, 1983

 (published European Patent Application)                


 The appealed claims stand rejected as unpatentable as follows:

   1. Claims 1 to 7 and 9 to 12 under 35 USC 112, first paragraph.

   2. Claims 9 and 10 under 35 USC 112, second paragraph. [FN3]

   3. Claims 1 to 7 and 9 to 12 under 35 USC 103 over Harwood taken with Holt or Wissbrun.



 We reverse the rejections under § 112, but affirm the rejections under  § 103.





 With respect to the rejection under the first paragraph of § 112, the examiner urges (page 2 of "Examiner's Answer") that the specification as filed fails to provide adequate support for

    *2 "the limitations regarding a channel recited in claim 1, lines 3-5 and claim 11."

Appellants' Figures 1 and 2, which are described on page 9 of appellants' specification, show coupling members wherein the body 3 and the ferrule member 10, respectively, are made according to the present invention of molded liquid crystalline polymers. Figures 1 and 2 clearly illustrate a "channel" for the optical fibers 1 and 2 and for the coated optical fiber 16, respectively, in accordance with the common and accepted meaning of the term. There is clearly adequate support in the specification and drawings as filed to support the recitation of a channel in the body of the joining or terminating component. It is well established that the invention claimed need not be described ipsis verbis in order to satisfy the disclosure requirement of § 112. Cf. In re Lukach, 442 F.2d 967, 169 USPQ 795, 796 (CCPA 1971). The rejection of the appealed claims under the first paragraph of § 112 is reversed.





 The examiner further urges that claims 9 and 10 are improper under the second paragraph of § 112. Claim 9 reads:

   9. The component of claim 1 wherein the thermotropic liquid crystalline polymer is a melt processable wholly aromatic polyester capable of forming an anisotropic melt phase at a temperature below approximately 400C. consisting essentially of the recurring moieties I, II, and III which may include substitution of at least some of the hydrogen atoms present upon an aromatic ring wherein:




 I is

 II is a dioxy aryl moiety of the formula -O-Ar-O- where Ar is a divalent radical comprising at least one aromatic ring, and

 III is a dicarboxy aryl moiety of the formula




 where Ar' is a divalent radical comprising at least one aromatic ring,

 with said optical substitution if present being selected from the group consisting of an alkyl group of 1 to 4 carbon atoms, an alkoxy group of 1 to 4 carbon atoms, halogen, a phenyl group and mixtures of the foregoing, and wherein said polyester comprises approximately 10 to 90 mole percent of moiety I, approximately 5 to 45 mole percent of moiety II, and approximately 5 to 45 mole percent of moiety III.



 In the Examiner's opinion, the

   "language 'which may include---' and 'said optional substitution if present' recited in claim 9, lines 5-6 and line 16 respectively and in claim 10, lines 5-6 and line 10 respectively render the claims vague and indefinite."

The claims, however, clearly cover two embodiments, one wherein hydrogen atoms are present on the carbon atoms in an aromatic ring and another wherein carbon atoms are substituted with optional groups other than hydrogen. The last portion of claim 9, for example, defines what those optional substituents are "if present". The metes and bounds of claims 9 and 10 are not rendered unclear merely because of the presence of the alternative language. See Ex parte Wu, 10 USPQ2d 2031, 2032 (B.P.A.I. 1989); Ex parte Cordova, 10 USPQ2d 1949, 1950 (B.P.A.I. 1989), both of which decisions we consider binding and controlling on the § 112, second paragraph, issue raised by the Examiner. The rejection of claims 9 and 10 under the second paragraph of § 112 is reversed.



  *3 We take this occasion to explain what precedents are considered binding in proceedings in the Patent and Trademark Office (PTO). Where the Court of Appeals for the Federal Circuit has addressed a point of law in a published opinion, the Federal Circuit's decision is controlling. Similarly controlling are decisions considered to be binding precedent by the Federal Circuit, i.e., decisions of the former Court of Claims and the former Court of Customs and Patent Appeals, as well as the former Customs Court. See South Corp. v. United States, 690 F.2d 1368, 215 USPQ 657 (Fed. Cir. 1982) (in banc); Bar Zell Expediters, Inc. v. United States, 698 F.2d 1210, 1211 n. 4 (Fed. Cir. 1983). In those relatively rare cases where the Federal Circuit has not addressed an issue, but there is "authorized published" Board precedent, that published Board precedent is binding on panels of the Board and Examiners in the Patent Examining Corps.



 Generally the Board authorizes publication of its opinions only in those instances in which the opinion is (a) consistent with other decisions which have been rendered by the Board and (b) consistent with binding precedent by the Federal Circuit. In most instances, a "published" Board opinion will be one which (1) significantly adds to the body of law by addressing a substantive legal point not specifically previously addressed by the Federal Circuit, see, e.g., Ex parte Allen, 2 USPQ2d 1425 (B.P.A.I. 1987), aff'd. mem., 846 F.2d 77 (Fed. Cir. 1988); Ex parte Hibberd, 227 USPQ 443 (B.P.A.I. 1985), or (2) discusses proper procedure within, or interpretation of a rule of the PTO, or (3) informs the patent bar and examining corps how the Board is interpreting prior court or Board decisions as they relate to particular factual situations before the Board. A published Board opinion may be overruled only by the Board sitting en banc, or by an expanded panel of the Board (i.e., one with more than three members). See, e.g., Ex parte Remark, 15 USPQ2d 1498 (B.P.A.I. 1990); Ex parte Kristensen, 10 USPQ2d 1701, 1703 (B.P.A.I. 1989).



 Unpublished Board opinions, except as they may be the "law of the case", may not be binding precedent, since the opinions are often fact driven by the specific facts present in the appeal before the Board. Unless the facts in a succeeding case are "on all fours" with or substantially the same as the facts in the preceding appeal, generally, the opinion in the preceding unpublished appeal decision may not be controlling in a succeeding appeal. Of course, previously decided points of law must be followed unless overruled, and the application of the law to particular facts must be consistent from case to case.





  *4 Turning to the rejection under 35 USC 103, we note that inasmuch as appellants have chosen not to separately argue the appealed claims vis-a-vis the rejection under § 103, they stand or fall together. In re Burckel, 592 F.2d 1175, 201 USPQ 67, 70 (CCPA 1979).



 Harwood teaches fiber optic connectors wherein at least a portion of the ferrule member is made from optical plastic materials having an index of refraction approximating that of the cladding used on the fiber (paragraph bridging columns 2 and 3). Harwood suggests the ferrule may be made of a material which is like that used to clad the fiber.



 The appealed claims differ from Harwood in specifying that the component for forming or terminating optical fibers is molded of a thermotropic liquid crystalline polymer. Appellants urge that thermoplastic liquid crystalline polymers have not previously been used for connectors or interface devices (lines 5 to 7 on page 3 of specification).



 Holt teaches (lines 45 to 58 of column 2) extrusion coating an optical glass fiber with a thermotropic liquid crystalline polymer, which polymer was admitted by appellants' attorney at the oral hearing to be the same as recited in the appealed claims. Holt, at lines 52 to 57 of column 2, refers to and incorporates by reference

   "copending application Ser. No. 06/364,823 filed by Ide et al. on Apr. 2, 1982 for a disclosure of an optical glass fiber coated with a thermoplastic liquid crystalline polymer."

The European Patent Application 0,091,253 is an apparent equivalent of the abandoned Ide et al. application, and was made of record in a "CITATION OF REFERENCES" filed February 18, 1988 in parent application Serial No. 631,966 (a copy of that published Application is attached to this decision). The European Patent Application brings to light certain known facts regarding the properties of thermotropic liquid crystalline polymers. The paragraph bridging pages 6 and 7 of the European Patent Application states:

   The thermotropic liquid crystalline polymer contains unique characteristics in the area of tensile modulus, coefficient of linear thermal expansion, and ease of manufacture which render it ideally suited to the manufacture of fiber-optic cable and enable a single component to perform multiple functions whereby the size, weight, and bulk of the cable can be greatly enhanced. In cases where the liquid crystalline polymer has a coefficient of linear expansion of from -10 x 10-6/F to -4 x 10-6/F, the temperature range in which the fiber-optic cable may be effectively utilized, is significantly increased.

See also page 20, lines 10 to 46, and page 23, lines 9 to 26, especially lines 14 to 18, which indicate it is possible to approximate the thermal coefficient of expansion of the glass fibers, the very same objective set forth in appellants' specification, page 6.



 Wissbrun teaches forming composite articles from thermotropic liquid crystalline polymers, such as those polymers encompassed within the appealed claims, and reinforcing fibers by pultrusion (lines 29 to 45 of column 11). Wissbrun adds little to the admitted knowledge in the prior art.



  *5 To have made the optical fiber connectors of Harwood of thermotropic liquid crystalline polymer would have been suggested and prima facie obvious from the combined teachings of Harwood and Holt, especially viewed in light of the knowledge in the prior art as evidenced by the European Patent Application.



 Appellants argue (page 8 of "Brief") that

   "[i]t was not obviously apparent that thermotropic liquid crystalline polymers could be used in components for joining or termination of optical fibers to produce the advantageous benefits described in Appellants' Specification."

What those "advantageous benefits" are, and whether they would truly have been unexpected to a person in the art, has not been set forth or argued in appellants' "Brief" or ". . . Reply Brief". In re Juillard, 476 F.2d 1380, 177 USPQ 571 (CCPA 1973). For example, appellants' specification states (first paragraph on page 1) that

   "this invention relates to components for joining or terminating optical fibers such as optical fiber connectors, optical fiber splices, optical fiber couplers, etc. made from a specific thermotropic liquid crystalline polymer which exhibits a low linear coefficient of thermal expansion and preferably a linear coefficient of thermal expansion substantially equal to the optical fiber contained therein."

However, as discussed earlier in this decision, Harwood teaches (paragraph bridging columns 2 and 3), and appellants admit it was known in the prior art (for example, third paragraph on page 1 of appellants' specification), that it is advantageous to match the refractive index of the connector material with that of optical fiber cladding material. Holt teaches optical fibers may advantageously be coated with thermotropic liquid crystalline polymers, including pressure coating and sleeve-coating (paragraph bridging columns 3 and 4 and lines 19 to 35 of column 4). The European Patent Application illustrates it was known in the art that such polymers exhibit unique characteristics in the area of tensile modulus, coefficient of linear thermal expansion and ease of manufacture which render them ideally suited to the manufacture of fiber-optic cables and components used therewith (paragraph bridging pages 6 and 7). The European Patent Application teaches (lines 23 to 32 on page 18) use of thermotropic liquid crystalline polymer material provides advantages in mass-splicing techniques; and a channel-defining element formed of such material (paragraph bridging pages 18 and 19). We agree with the examiner that there would have been ample incentive in the prior art and knowledge therein, as illustrated by the European Patent Application, to have employed thermotropic liquid crystalline polymer materials for making Harwood's fiber optic connectors.



 We have relied on knowledge in the prior art not relied upon by the Examiner, as illustrated by the European Patent Application, in affirming the rejection of the appealed claims. Accordingly, we consider our affirmance of the rejection as being a new ground of rejection pursuant to the provisions of 37 CFR 1.196(b).



  *6 Any request for reconsideration or modification of this decision by the Board of Patent Appeals and Interferences based upon the same record must be filed within ONE MONTH from the date hereof (37 CFR 1.197).



 With respect to the new rejection under 37 CFR 1.196(b), should appellants elect the alternate option under that rule to prosecute further before the Primary Examiner by way of amendment or showing of facts, or both, not previously of record, a shortened statutory period for making such response is hereby set to expire TWO MONTHS from the date of this decision.



 No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 Fed. Reg. 29548 (July 13, 1989), reprinted 1105 O.G. 5 (August 1, 1989).



AFFIRMED. 37 CFR 1.196(b).






Saul I. Serota






John T. Goolkasian






Stephen J. Emery






FN1. Chairman Serota has been substituted for Examiner-in-Chief W. Smith who recused himself from the panel. In re Bose, 772 F.2d 866, 868-869, 227 USPQ 1, 2-4 (Fed. Cir. 1985).



FN2. There appears to be an error in claim 1 as to the range of "linear coefficient of thermal expansion" of "said liquid crystalline polymer". The recited range of -5 to 10 is not reconcilable with that recited in the Ide et al. application Serial No. 06/364,823 filed April 2, 1982, which states the linear thermal expansion coefficient of thermotropic liquid crystalline polymers used in conjunction with optical fibers is negative and can range from approximately -10 x 10-6/F to -4 x 10-6/F" (paragraph bridging pages 22 and 23 of Ide et al. application). Note also paragraph bridging pages 6 and 7 and lines 7 to 14 on page 18 of published European Patent Application 0,091,253, which paragraph is quoted later in this decision.



FN3. A rejection of claims 1 to 7, 11 and 12 under 35 USC 112, second paragraph, has been withdrawn (page 3 of "Examiner's Answer").


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