DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 2/18/26, claim 1-9, 11-13 are currently pending in the application, with claims 1-6 and 8 being withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12 and 13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 12 and 13 recite the limitation “5nm or less”, i.e., a range extending from 0 to 5nm. However, given that amended claim 7 recites an average diameter of “3nm or more”, claims 12 and 13 are not seen as further limiting the scope of claim 7.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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, 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.
Claims 7, 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Wells et al. (US 6,022,620, as evidenced by JP H09-142891 A (equivalent of Wells US patent), of record), in view of Glatkowski (US 2003/0122111 A1).
Wells US patent teaches an optical fiber comprising an external coating formed from a radiation-curable composition comprising a urethane-acrylate resin, an antistatic composition comprising an antistatic material, and a photoinitiator, wherein said fiber may be precoated with one or more intermediate coatings (Ab., col. 4, lines 41-53, col. 6, lines 10-16, col. 7, lines 8-18, col. 7-8, bridging paragraph).
Wells US patent discloses the following in the background section (col. 2, lines 53-58):
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Although the exponent or power is missing in the above cited portion for the disclosed upper limit of surface resistivity, per JP equivalent, the upper limit of surface resistivity is equal to or less than 1013 Ohm [0010].
Wells further teaches that an optical fiber assembly, may include a single buffered fiber col. 5, lines 64-67), comprising a soft (inner) buffer coating (i.e., a primary coating), and an external hard (high modulus) secondary coating, which may also be an antistatic coating (col. 7, lines 23-30), and that all coatings may be radiation-cured polymer coatings, i.e., providing for claimed primary and secondary resin layers (col., 7, lines 43-48).
Disclosed optical fibers may be conventional silica glass fibers or polymer clad silica fibers (col. 7, lines 19-22). Disclosed cast films of inventive Examples 5 and 7 are formed from radiation-cured urethane-acrylate oligomer comprising T5M and AMD/C, respectively (comprising fatty amine polyglycol ether and quaternary ammonium compound as antistatic agents) and have a surface resistivity of less than 1015.
Wells is silent on a secondary resin layer covering the primary resin layer, comprising single-walled carbon nanotubes as claimed.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05.
The secondary reference to Glatkowski teaches coatings comprising carbon nanotubes, such as electrostatic dissipative transparent coatings comprising a plurality of nanotubes with an outer diameter of less than 3.5 nm, wherein said carbon nanotubes impart conductivity and transparency at low loading doses, ranging from 0.001 to about 1% by wt. of the film. Disclosed carbon nanotubes include single-walled carbon nanotubes (SWNTs), and coating films comprising the same having low surface resistance (Ab., [0113]-[0014], [0033]-[0043], ref. claims).
In view of the advantages taught in Glatkowski, and given the teaching in Wells on an external antistatic cured coating compositions and surface resistivity of cured coatings thereof, and the teaching that an optical fiber may include glass fiber or a polymer clad silica fiber, having thereon a radiation cured buffer coating and an antistatic external coating, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to provide for an optical fiber within the scope of Wells, as modified by Glatkowski, including those of the claimed invention.
Claims 7, 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Wells et al. (US 6,022,620, as evidenced by JP H09-142891 A (equivalent of Wells US patent)), in view of Meyer et al. (US 2012/0010316 A1) (references of record).
The discussion on Wells from paragraph 6 above is incorporated herein by reference.
Wells is silent on an optical fiber comprising a secondary resin layer covering the primary resin layer, comprising single-walled carbon nanotubes having claimed diameter.
As stated in paragraph 8 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05.
The secondary reference to Meyer teaches a method of making UV-curable, wear resistant and antistatic coating consisting of carbon nanotubes, an acrylate-based monomer, a urethane-acrylate oligomer and a photoinitiator, said coating being suitable for protecting a substrate from scratch and electrostatic accumulation, and suitable for coating glass, plastics, metals and ceramics (Ab., [0019], [0075], ref. claim20). Disclosed carbon nanotubes include single-walled carbon nanotubes (SWCNTs) having a diameter of about 0.7 nm to about 2.5 nm, and a length of up to 1 mm or even above ([0020], [0033]).
In view of the advantages taught in Meyer et al., and given the teaching in Wells on an external antistatic cured coating compositions and surface resistivity of cured coatings thereof, and the teaching that an optical fiber may include glass fiber or a polymer clad silica fiber, having a radiation cured buffer coating and an antistatic external coating, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to provide for an optical fiber within the scope of Wells, as modified by Meyer.
Additionally, the upper limit of Meyer’s SWCNTs’ diameter is tempered by the term “about”. The examiner is interpreting the term "about" as meaning "approximately" or "reasonably close to". See, e.g., Conopco, Inc. V. May Dep't Stores Co., 46 F.3d 1556, 1561 (Fed.Cir.1994) and Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1581 (Fed.Cir.1995). Treatment of the term "about" is illustrated in, for example, Schreiber Foods, Inc. V. Saputo Cheese USA Inc., 83 F. Supp. 2d 942 (N.D. III.), dismissed, 243 F.3d 560 (Fed. Cir. 2000). In Schreiber, the court held that a claimed time range of "about 2 minutes to about 4 minutes" encompassed a range of 30 seconds to 10 minutes, while a temperature range of "about 190°F to about 205°F" was interpreted as encompassing a range of 150°F to 300°F. The term "about" was therefore interpreted as extending the upper limit of these prior art ranges by 150% and 46.3%, respectively.
Given the flexibility used by the courts in interpreting the term "about", it would have been obvious to one of ordinary skill in the art to include SWCNTs having a diameter within the scope of the claimed invention to modify Wells’ antistatic external coating to provide for the disclosed advantages, absent evidence to the contrary.
Regarding claim 11, Wells teaches an antistatic composition comprising 50 to 99.5% of an antistatic agent (a), and 0.5 to 50% of an organic liquid (b), and an external coating comprising 1.5 to 20% w/w of an antistatic composition (col. 3, lines 45-52, col. 5, lines 24-53). Thus, the prescribed level of antistatic agent in the external coating overlaps with the claimed range.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over (1) Wells et al. (US 6,022,620), as evidenced by JP H09-142891 A (equivalent of Wells US patent), in view of Meyer et al. (US 2012/0010316 A1) and either Chien et al. (US 2007/0122094 A1, of record) or Botelho et al. (US 6,775,451 B1, of record), or alternatively, over (2) Wells et al. (US 6,022,620, as evidenced by JP H09-142891 A (equivalent of Wells US patent), of record), in view of Glatkowski (US 2003/0122111 A1) and either Chien et al. (US 2007/0122094 A1, of record) or Botelho et al. (US 6,775,451 B1, of record).
The discussions on the Wells-Meyer and Wells Glatkowski combinations above, as applied to claim 7, are incorporated herein by reference.
Wells-Meyer and Wells Glatkowski combinations are silent on an external cured coating having a tensile modulus as claimed.
In a related field on endeavor, Chien teaches an optical fiber ribbon comprising coated optical fibers (Ab.), comprising a secondary coating desirably having sufficient stiffness to protect the optical fiber [0023], that the tensile modulus of the coating is preferably at least about 1200 MPa, more preferably at least about 1500 MPa, most preferably at least about 1900 MPa ([0078], Table 3). Chein further teaches urethane-acrylate oligomers as being suitable for forming the secondary coatings [0029]-[0043].
In the alternative, Botello reference is in a related field and teaches low-cost secondary optical fiber coating compositions that can reduce the sensitivity of the fiber to bending/micro-bending by providing for cured products having a Young’s modulus of at least about 650 MPa, or at least about 900 MPa (col. 1, lines 48-58, col. 2, line 6-col. 3, line 48, col. 6, lie 56-col. 7, line 47).
In view of the teachings in Chein and Botelho on the prescribed tensile modulus as being advantageous for secondary coatings in optical fibers, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to provide for external antistatic coatings of Wells, as modified by Glatkowski or Meyer, and having a modulus as prescribed by Chien or Bortello, including those within the scope of the claimed invention. As stated in paragraph 7 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Response to Arguments
In view of the amendment dated 2/18/26, all rejections set forth in the office action dated 11/26/25 are withdrawn. Additionally, Applicant’s arguments with respect to claim rejections and applied art have been duly considered but are moot because the new grounds of rejections do not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762