PTAB Reverses § 103 Rejection Because Motivation to Combine was “Mere Speculation”

In a recent appeal from a § 103 rejection, the Patent Trial and Appeal Board (the “Board”) re-emphasized the principle that there must be “an apparent reason to modify the prior art as proposed by the Examiner,” and that such reason must have a factual basis.¹ Finding the reasoning from the Examiner to be inadequate, the Board reversed the rejection.

The rejection involved a patent application for correcting defects in a primary coating on a glass optical fiber. ² According to the Background section of the application, “a frequent problem with low modulus primary coatings is that they are prone to defects introduced by fiber processing and/or use in the field.” ³ “These defects appear as rips in the coatings or delaminations from the glass, resulting in compr[omised] fiber performance, e.g., significant undesirable attenuation.” ⁴ To address the problem of defects in the primary coating of an optical fiber, the application provides the claimed step of: “heating [a] coated fiber to a temperature above the melting point of the thermoplastic product [of the primary coating] to cause the primary coating to flow and correct defects.” ⁵ This limitation became the focus of appeal.

The Examiner in the case rejected the above-recited limitation based on primary reference, Fewkes, which disclosed an optical fiber with a thermoplastic primary coating, and on a secondary reference, Moriyama, that disclosed heating a thermoplastic resin in order to correct defects for an injection molding process. ⁶ The Examiner asserted that it would have been obvious to combine the two references“ in order to correct defects because Fewkes teaches that the primary coating layer is capable of this behavior [i.e., of having defects], and Moriyama teaches that this behavior can be utilized to fix defects in thermoplastic.” ⁷

On appeal, the applicant argued that although Moriyama disclosed the heating of a thermoplastic resin to correct defects in injection-molded articles, there would have been no motivation to bring such a heating step to the context of optical fiber coatings, because there was no teaching or suggestion that the optical fiber coating in Fewkes had any defects which needed to be corrected. ⁸ In response, the Examiner did not rely on the application’s own Background section, which discussed defects in optical fiber coatings. ⁹ Instead, he merely asserted that “[i]t is the position of the Examiner that one of ordinary skill in the art would not have needed an explicit statement in either of the references to appreciate that defects necessarily exist (i.e., in the sense that no process is perfect) in the coating layer of Fewkes and been motivated to correct those defects.” ¹⁰

In deciding this issue, the Board reiterated that a “rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight.” ¹¹ This principle necessitated the Examiner to actually “establish that optical fiber primary coating surface defects was a known problem in the art.” Id. According to the Board, the Examiner’s mere assertion that defects “necessarily exist (i.e., in the sense that no process is perfect)” did not provide any factual basis, but was instead “mere speculation.” Id. Additionally, the Board noted that the application’s Background section did discuss the existence of defects in optical fiber coatings, but further pointed out that “[t]he Examiner does not rely upon that acknowledgement and establish that the problem was known in the art rather than being known only to the Appellants.” ¹²

Ex Parte Baker provides an example of not only a successful challenge of an Examiner’s rationale for combining two references, but also is an example in which an applicant framed its invention as the discovery of a problem, namely that the primary coating of optical fibers can suffer from defects that are significant enough to compromise fiber performance. Thus, even though the Examiner identified a reference that taught the solution to such a problem (i.e., heating a thermoplastic material past its melting point), the applicant was able to successfully argue that the Examiner failed to identify the teaching of the problem itself in the art. Further, although the application’s Background section did discuss this problem, Ex Parte Baker provides a reminder that statements made in the Background section does not automatically constitute admitted prior art. Rather, the Examiner must first set forth the underlying facts and reasoning leading to a conclusion that a disclosure or statement in the Background section constitutes a prior-art admission. ¹³