Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of claims 1-8 in the reply filed on July 7, 2025 is acknowledged. The traversal is on the ground(s) that the apparatus and method claims are not patentably distinct because “the method cannot be used to make a materially different product, nor can the product be made by a materially different process”. This is not found persuasive the process can be used to make a different product such as a fiber optic ferrule without a solder glass preform having a ring structure. The product can be made by a different process without inserting the fiber optic cable with the glass preform at the same time into the outer opening. Further, because the two inventions are classified in different areas, a search for one would not necessarily and in fact most likely not turn up all the relevant references for the other.
The requirement is still deemed proper and is therefore made FINAL.
Response to Amendment
Applicant’s Amendment filed on April 25, 2025 has been fully considered and entered.
Claim Objections
The claims are objected to for the following reasons(s):
Regarding claims 7, 10 and 17, the limitation “comprising epoxy in the outer opening section, the funnel section, and the inner opening section” does not appear to be supported by the drawings. Fig. 1F does not show the epoxy in the funnel section or the inner opening section. For the purposes of examination, the claim will be examined as “comprising epoxy in the outer opening section”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Garvey et al. (GB 2016729 A) in view of Moidu et al. (US 2003/0190135 A1).
Regarding claims 1 and 4, Garvey discloses a fiber optic ferrule (14 in Fig. 1) to secure a fiber optic cable (10) having a coated section (thicker top portion of cable 10) and an uncoated section (16) with an uncoated cable diameter, the ferrule comprising: a solder preform (12; see abstract) with a ring structure threaded by the uncoated section as an assembly (column 1, lines 48-54 disclose preform 12 containing a hole, implying the preform is a ring, and to allow insertion of fiber 16 “during assembly”); a shoulder section (region in which solder preform 12 is disposed) having a shoulder diameter; a funnel section (tapered region) having a funnel diameter smaller than the shoulder diameter; and an inner opening section (region receiving fiber 16) having an inner diameter larger than the uncoated cable diameter (inner diameter must be larger in order for the uncoated portion of the fiber optic cable to be inserted therethrough) and adapted to receive the uncoated cable, wherein the opening section receives a solder preform (12) that is subsequently melted to seal the uncoated section inside the ferrule (see abstract).
Still regarding claims 1 and 4, Garvey teaches the claimed invention except for an outer opening section having an opening diameter larger than a shoulder section. However, ferrules having outer opening sections are ubiquitous in the art and as such, one having ordinary skill in the art at the time of the invention would have found it obvious to use an outer opening section for the purpose of providing enhanced protection to the optical fiber as well as ease of handling. Since Garvey discloses the solder preform disposed within the shoulder portion, it would also be contained within opening diameter of the ferrule.
Still regarding claims 1 and 4, Garvey teaches the claimed invention except for the solder preform being glass. Moidu discloses a solder glass preform (110 in Fig. 5; paragraph 0050) that is melted (paragraph 0063) to seal an optical fiber (150) inside a ferrule (120). Since both inventions relate to optical fibers, one having ordinary skill in the art at the time of the invention would have found it obvious to use glass as disclosed by Moidu in the solder preform of Garvey for the purpose of forming a strong and reliable seal from a relatively loose tolerance, inexpensive material which avoids abrasion damage to the optical fiber.
Regarding claim 2, Garvey discloses the solder glass preform comprises a cylindrical solder glass with one or multiple through holes having diameters greater than the diameter of the uncoated cable diameter in Fig. 1.
Regarding claim 3, Garvey discloses the fiber optic cable comprises a partially stripped optical fiber (see Fig. 1) optically having a first end aligned with an optical source (there must be some type of optical source in order to direct an optical signal to the fiber optic cable) and a second end coupled to either of the inner opening section or the outer opening section.
Regarding claim 5, Garvey further discloses the solder glass preform sits on a stepped hole (the funnel portion leading into the inner opening forms a stepped hole) in Fig. 1. The proposed combination of Garvey and Moidu teaches the claimed invention except for specifically stating angle of the chamfer. However, it would have been obvious to one having ordinary skill in the art at the time of the invention to arrive at the claimed 25-75 degrees chamfered, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 6, Garvey discloses the glass solder is melted and flows into small hole section where the fiber is hermetically sealed and retained, since the end portion or tip of the tapered region can constitute the small hole section, and Fig. 3 shows the melted solder at least filling the entire tapered region.
Regarding claims 7 and 8, the proposed combination of Garvey and Moidu teaches the claimed invention except for a glass tubing and epoxy within the ferrule. However, Applicant’s specification at paragraph 0007 discusses multiple patents and/or applications using a sealing method in which “a glass tubing is added surrounding the interface between the stripped and unstripped fiber sections in which epoxy is filled” and constitutes admitted prior art. MPEP 2129 states that where the specification identifies work done by another as “prior art,” the subject matter so identified is treated as admitted prior art. In re Nomiya, 509 F.2d 566, 571, 184 USPQ 607, 611 (CCPA 1975). As such, one having ordinary skill would find it obvious to dispose a glass tubing and epoxy within the ferrule taught by the proposed combination of Garvey and Moidu for the purpose of providing further protection to the optical fiber cable.
Response to Arguments
Applicant's arguments, filed April 25, 2025, with respect to claims have been considered but are not persuasive.
On page 5, Applicant states that Garvey does not disclose the claimed solder preform with a ring structure. However, Garvey at column 1, lines 48-54 describes that the preform 12 “contains a hole through its center of sufficient diameter to allow insertion of optical fiber 16”. The preform having a hole in the center will naturally result in a ring structure. Garvey further describes inserting the optical fiber “during assembly of ferrule 14 to fiber optic cable 10.” The insertion of the fiber results in the ring structure of the solder preform “threaded by the uncoated section as an assembly” as required by claims 1 and 4.
On page 6, regarding the combination with Moidu, Applicant states that combining Garvey’s low temperature metal solder with Moidu’s high-temperature glass solder would “necessitate re-engineering Garvey’s entire thermal process, as the materials have incompatible melting points”. However, the combination of references merely requires substituting the metal solder of Garvey with the glass solder of Moidu. There is no incompatibility as they are not used together. Substituting one material for another, even if it requires a different melting temperature, would be well within the means and knowledge of a skilled artisan.
Applicant also states that Garvey lacks Moidu’s critical compressive seal architecture. However, in the combination one of ordinary skill would simply be substituting the metal solder of Garvey with the glass solder of Moidu – not the entire sealing architecture. Using glass as the solder would provide the benefits of forming a strong and reliable seal from a relatively loose tolerance, inexpensive material which avoids abrasion damage to the optical fiber.
On pages 6-7 regarding claim 2, Applicant states Garvey’s cylindrical solder preform with holes “does not anticipate Moidu’s glass solder extrusion process”. However, Moidu’s extrusion process does not have to be “anticipated”, since such a process is not required in claim 2.
On page 7 regarding claim 5, Applicant states that the chamfer angle is not routine optimization. However, one of ordinary skill would recognize the angle of the chamfer is the angle of the funnel and as such, changing the chamfer angle simply adjusts the funnel angle. Optimizing the chamfer angle is routine depending on the desired shape of the funnel. The court has long held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
On page 7, regarding claims 9-10, Applicant states that communication systems using transceivers are not ubiquitous in the context of Garvey and Moidu. However, the “context” of Garvey and Moidu is simply a ferrule for use in optical communications. Using the ferrule in a transceiver adds no synergistic effect to the sealing. In other words, using the ferrule as part of a transceiver is akin to intended use and there is no effect on the mounting and sealing of the ferrule. Further, Applicant has provided no reason that the optical fiber ferrules of Garvey and Moidu could not be used with a transceiver.
On page 7, regarding claims 7-8 and 17, Applicant states that Garvey uses metal solder while Moidu uses glass solder. As already discussed above, in the combination one of ordinary skill would simply be substituting the metal solder of Garvey with the glass solder of Moidu. Applicant’s admitted prior (paragraph 0007 of the specification) specifically discloses using epoxy with solder glass. This in fact provides the motivation to use epoxy in the combination with a reasonable expectation of success. Further, it has long been held by the court that obviousness does not require absolute predictability, only a reasonable expectation of success. See, e.g.,In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRIS H CHU whose telephone number is (571)272-8655. The examiner can normally be reached on Mon-Fri 9AM-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uyen-Chau Le can be reached on 571-272-239797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Any inquiry of a general or clerical nature should be directed to the Technology Center 2800 receptionist at telephone number (571) 272-1562.
Chris H. Chu
/CHRIS H CHU/Primary Examiner, Art Unit 2874 September 29, 2025