DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/6/26 has been entered.
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 Per amendment filed on 7/6/27, claims 1-9, 12-14 are currently pending in the application, with claims 1-6, 8 being withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 § 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, 9, 13, 14 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) (references of record).
Regarding claim 7, 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. Wells is open to selecting an antistatic agent from commercially available products, and teaches that the antistatic composition as a whole should be sufficient to provide an effective antistatic action, and that the minimum level of acceptable activity may depend on the external coating material and the antistatic agent (Ab., col. 4, lines 41-53, col. 5, lines 33-49, col. 6, lines 10-16, col. 7, lines 8-18, col. 7-8, bridging paragraph).
Furthermore, Wells teaches an external coating as typically comprising (i) a polyethylenically unsaturated oligomer, e.g., urethane acrylate resin (ii) an ethylenically unsaturated monomer which is a liquid solvent for the oligomer and is copolymerizable therewith, and (iii) a photoinitiator composition at, for e.g., 2-6 wt.% (col. 6, lines 10-60).
Wells 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).
Well teaches radiation-curable coating compositions as typically comprising:
(i) a polyethylenically unsaturated oligomer (a photopolymerization compound);
ii) an ethylenically unsaturated monomer which is a liquid solvent for the oligomer and is copolymerizable therewith, (a photopolymerization compound); and
(iii) a photoinitiator composition.
Additionally, with a photoinitiator content therein in an amount of up to 10 wt.%, the radiation curable compositions may include a photopolymerization compound in an amount of 90 wt.% of more of the composition (col. 6, lines 10-62).
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 in the claimed invention.
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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. 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 of single-walled carbon fibers at low loading doses taught in Glatkowski, the teaching in Wells on an external antistatic cured coating composition and monomers/oligomers therefor for coating an optical fiber, 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 external coated optical fiber within the scope of Wells and including Glatkowski’s single-walled carbon nanotubes for providing electrostatic dissipation and transparency. As such, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Glatkowski teaches electrostatic dissipative transparent coatings comprising a plurality of carbon nanotubes (e.g., SWNTs), at low loading doses, e.g., 0.001 to about 1% by wt. of the film, with an outer diameter of less than 3.5 nm. Thus, a skilled artisan would reasonably coatings of overlapping scope to have a surface resistivity within the scope claim 7, and a Young’s modulus within the scope of claim 9, on the basis that materials and their properties are inseparable, absent evidence to the contrary.
Claim 7, 9, 12-14 is 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 Bhatt et al. (US 20100078194 A1).
The discussion on Wells from paragraph 5 above is incorporated herein by reference.
Wells is silent on a secondary resin layer comprising single-walled carbon nanotubes as in 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.
The secondary reference to Bhatt teaches polymer compositions comprising single-walled carbon nanotubes with relatively low percolation thresholds of conductive filler and having a relatively high static decay rate at relatively low loadings of conductive filler, while preserving a relatively high degree of the host polymer physical properties, having many advantages and being useable in a variety of applications [0019]-[0031.
Disclosed carbon nanotubes include single-walled type and may have an outer diameter of 0.1 to 100 nm and a length of 700 to 500 microns [0045]-[0046]. Additionally, the amount of carbon nanotubes in the composition can range from about 0.1% by weight to about 60% or more by weight of the overall composition [0055]. Disclosed polymers include thermosets, e.g., polyurethane [0072], [0079].
Given the teaching in Bhatt on carbon nanotubes having high static decay rate at relatively low loadings of conductive filler and useable in polymeric compositions, the teaching the Wells on an external antistatic cured coating composition and monomers/oligomers therefor for coating an optical fiber, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the filing date of the claimed invention, to prepare external antistatic cured coating composition of Wells wherein single walled carbon nanotubes having any diameter in any amount within the scope of Bhatt, including those of the claimed invention, absent evidence to the contrary. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Additionally, skilled artisan would reasonably coatings of overlapping scope to have a surface resistivity within the scope of claim 7, and a Young’s modulus within the scope of claim 9, on the basis that materials and their properties are inseparable, absent evidence to the contrary.
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 Glatkowski (US 2003/0122111 A1) and Chien et al. (US 2007/0122094 A1) (references of record); or (2) Wells et al. (US 6,022,620, as evidenced by JP H09-142891 A -equivalent of Wells US patent), of record), in view Bhatt et al. US 20100078194 A1) and Chien et al. (US 2007/0122094 A1).
The discussions on Wells-Glatkowski and Wells-Bhatt combinations as applied to claim 7, are incorporated herein by reference.
The cited 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 ([0078], Table 3). Chein further teaches suitable urethane-acrylate oligomers for forming the secondary coatings [0029]-[0043].
In view of the teachings in Chein on the prescribed tensile modulus as being advantageous for secondary coatings in optical fibers and suitable urethane-acrylate oligomers therefor, 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 in optical fibers having a modulus as prescribed by Chien, 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 7/6/26, the rejections based on Wells-Meyer combination of record are withdrawn. Applicant's arguments on rejections based on Wells-Glatkowski combination have been fully considered.
Applicant argues that Wells' external coating would contain other components such as a photopolymerization initiator, meaning the actual content of antistatic material per 100 parts by mass of photopolymerizable compound would be even higher than 0.761 parts by mass, and that Wells and Glatkowski, whether taken individually or in combination, fail to disclose or render obvious at least "a content of the anti-static material with respect to 100 parts by mass of the photopolymerizable compound is 0.001 parts by mass or more and 0.5 parts by mass or less," as recited in claim 7.
In response, Wells is open to selecting an antistatic agent from commercially available products, i.e., does not limit the antistatic agent to only those disclosed therein, and teaches that the antistatic composition as a whole should be sufficient to provide an effective antistatic action, and that the minimum level of acceptable activity may depend on the external coating material and the antistatic agent. In addition, Wells prescribes suitable ranges that would be applicable to the antistatic agents that are disclosed therein.
Furthermore, as discussed in the rejections above, Wells recognizes that a radiation curable composition may include a photopolymerizable compound in an amount of 90 wt.% of more of the composition (col. 6, lines 10-62). The secondary reference to Glatkowski teaches coatings, e.g., electrostatic dissipative transparent coatings, comprising a plurality of nanotubes, such as single-walled nanotubes, having 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. Thus, noting that the requirement in Wells is an antistatic composition sufficient to provide an effective antistatic action, and the teaching therein that the minimum level of acceptable activity may depend on the external coating material and the antistatic agent, and given the capability of Glatkowski’s carbon nanotubes to impart conductivity and transparency at low loading doses, a skilled artisan would have it obvious to choose appropriate amounts of single walled carbon nanotubes sufficient to provide an effective antistatic action and/or the desired level of antistatic action, including in amounts within the scope of the claimed invention, absent evidence of criticality for the claimed range.
Conclusion
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
Prosecution Insights