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
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 11, 2026 has been entered.
Response to Amendment
Applicant’s Amendment filed May 11, 2026 has been fully considered and entered.
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 1-3, 5 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Nagayama et al. (US 2002/0044753 A1) in view of Bickham et al. (US 8,315,495 B2).
Regarding claim 1, Nagayama discloses an optical fiber (Fig. 7), comprising: a core region (600) defined by a core relative refractive index; and a cladding region surrounding the core region (700), wherein the cladding region is down-doped with only a down-dopant for the entire radial cladding thickness (paragraph 0134); wherein the cladding region comprises an inner cladding region (701) and an outer cladding region (702), the inner cladding region is defined by an inner cladding relative refractive index, the outer cladding region is defined by an outer cladding relative refractive index, wherein the inner cladding relative refractive index is less than the outer cladding relative refractive index (Fig. 7; paragraphs 0130, 0134); and wherein the optical fiber is an ultra-low loss optical fiber (see abstract); wherein the inner cladding region (701) has a thickness T1 and the outer cladding region (702) has a thickness T2, and wherein the thickness T1 is less than the thickness T2 in Fig. 7.
Still regarding claim 1, Nagayama teaches the claimed invention except for specifically stating the core relative refractive index is in a range of -0.06% to +0.06%, the inner cladding relative refractive index is in a range of -0.29% to -0.32% and the outer cladding relative refractive index is in a range of -0.25% to -0.28%. However, Nagayama discloses the core average relative refractive index difference is in a range of 0.01% to 0.12% (paragraph 0137) and the outer cladding average relative refractive index difference is ≥ -0.26% (paragraph 0136). As such, it would have been obvious to one having ordinary skill in the art at the time of the invention to arrive at the claimed relative refractive index ranges 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.
Still regarding claim 1, Nagayama teaches the claimed invention except for specifically stating the core radius and mode field diameter. Bickham discloses an optical fiber comprising a core region (Figs. 1A, 1B, 3 and 15) with a radius between 6.1 µm and 6.5 µm (Table 1, Example 2), and wherein the optical fiber has a mode field diameter (MFD) of 12.5±0.5 nm wavelength (Table 2A, Example 2). 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 the core radius and mode field diameter as disclosed by Bickham in the fiber of Nagayama for the purpose of increasing the effective area of the optical fiber. Further, Bickham discloses a cable cutoff wavelength of 1537 nm in Table 2A, but states that the effective fiber cutoff is lower than the theoretical cutoff and the cable cutoff wavelength is typically lower than the measured fiber cutoff due to higher levels of bending and mechanical pressure in the cable environment (column 4, lines 25-53). As such, one of ordinary skill would find it obvious to arrive at the claimed cable cutoff wavelength of 1530 nm in order to control the propagation of desired modes, and 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.
Still regarding claim 1, the proposed combination of Nagayama and Bickham teaches the claimed invention except for specifically stating the macro-bend loss. 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 macro-bend loss in order to minimize transmission losses, and 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 claims 2 and 3, Nagayama discloses the inner cladding region (701) has a first fluorinated (paragraph 0134) region T1 defined by a thickness r2 – r1, which is a difference between an inner cladding radius and a core radius, the outer cladding region (702) has a second fluorinated region T2 defined by a thickness r3 - r2, which is a difference between an outer cladding radius and the inner cladding radius in Fig. 7.
Regarding claims 5 and 7, the proposed combination of Nagayama and Bickham teaches the claimed invention except for specifically stating the inner and outer cladding radii. 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 inner cladding radius and outer cladding radius, 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 claims 8 and 9, the proposed combination of Nagayama and Bickham teaches the claimed invention except for specifically stating the attenuation. 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 attenuation in order to minimize transmission losses, and 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 10, the proposed combination of Nagayama and Bickham teaches the claimed invention except for specifically stating the macro-bend loss. 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 macro-bend loss in order to minimize transmission losses, and 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 11, the proposed combination of Nagayama and Bickham teaches the claimed invention except for specifically stating the dispersion slope. 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 dispersion slope in order to arrive at a higher capacity waveguide with a larger effective area, and 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.id crystal moleculesand specifically stating the exposure voltage greater than a
Response to Arguments
Applicant's arguments, filed May 11, 2026, with respect to claims have been considered but are not persuasive.
On page 4, Applicant states that Nagayama fails to disclose the inner cladding region has a thickness T1 and the outer cladding region has a thickness T2, wherein the thickness T1 is less than the thickness T2. However, Nagayama in Fig. 7 clearly shows the inner cladding region (701) has a thickness T1 and the outer cladding region (702) has a thickness T2, and wherein the thickness T1 is less than the thickness T2.
On pages 5-8, Applicant states that the values of Nagayama correspond to the relative refractive index difference and not relative refractive index as claimed. Applicant then provides an equation for calculating relative refractive index on page 8. However, that formula is used for calculating the relative refractive index from the absolute refractive index. Since all of Nagayama’s values are given as relative refractive index values, an equation based on absolute refractive index values does not apply. If Applicant still believes the equation should apply, the Examiner requests that the work be shown step-by-step in order to validate Applicant’s assertion.
What Nagayama does state is that the values are defined according to the relative refractive index difference. As explained in paragraph 0115, “the relative refractive index difference indicating the value of refractive index in each part is defined as the relative refractive index difference, expressed in terms of %, from the refractive index of pure SiO2 (pure silica) taken as a reference (relative refractive index difference = 0). In other words, the relative refractive index difference is simply the difference in relative refractive indexes, with the relative refractive index of pure silica being 0 (which is not the absolute refractive index of pure silica). This simplifies the comparison of refractive indexes, by providing relative values, without relying on absolute refractive index values. Thus, Nagayama’s disclosure of the average relative refractive index difference of the core within the range 0.01% ≤ Δn0 ≤ 0.12% (paragraph 0137) corresponds to the claimed relative refractive index of -0.06 to +0.06 since it’s in comparison to the reference of the relative refractive index of pure silica, which is 0. Similarly, Nagayama’s disclosure of the average relative refractive index difference of the outer cladding layer Δn2 ≥ -0.26% (paragraph 0136) corresponds to the claimed relative refractive index in a range of -0.25% to -0.28% as claimed.
Furthermore, even assuming, arguendo, that Nagayama uses a different equation to determine the relative refractive indexes, the claimed invention is still obvious in view of Nagayama as detailed above. Nagayama has disclosed all of the general conditions, (including all of the same structural features of a core, inner cladding region and outer cladding region, wherein the inner cladding relative refractive index is less than the outer cladding relative refractive index, and wherein the cladding region is down-doped with only a down-dopant for the entire radial cladding thickness). Nagayama’s fiber is also directed to the same problem of reducing transmission loss (see abstract, paragraphs 0009-0010). As such, it would have been obvious to one of ordinary skill in the art to discover the optimum or workable ranges as it involves only routine skill in the art. In re Aller, 105 USPQ 233.
On page 9, it is asserted that Applicant has found a “sweet spot” of specific values. In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See also Minerals Separation, Ltd. v. Hyde, 242 U.S. 261, 271 (1916) (a patent based on a change in the proportions of a prior product or process (changing from 4-10% oil to 1% oil) must be confined to the proportions that were shown to be critical (1%)); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205 (CCPA 1946) ("Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.").
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). In In re Waymouth, 499 F.2d 1273, 1276, 182 USPQ 290, 293 (CCPA 1974), the court held that unexpected results for a claimed range as compared with the range disclosed in the prior art had been shown by a demonstration of "a marked improvement, over the results achieved under other ratios, as to be classified as a difference in kind, rather than one of degree." See also UCB, Inc. v. Actavis Labs, UT, Inc., 65 F.4th 679, 693, 2023 USPQ2d 448 (Fed. Cir. 2023) ("A difference of degree is not as persuasive as a difference in kind – i.e., if the range produces ‘"a new property dissimilar to the known property,’" rather than producing a predictable result but to an unexpected extent.").
Applicant is requested to show criticality of the claimed ranges, particularly by showing unexpected results relative to the prior art ranges. This can be accomplished by a comparison of a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.
Conclusion
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 June 3, 2026
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