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 .
Priority
The Examiner recognizes Foreign Priority to EP20212771.8, with a filing date of 12/09/2020.
Information Disclosure Statement (IDS)
The information disclosure statement (IDS) submitted on 09/15/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner. Please refer to applicant’s copy of the 1449 herewith.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/23/2025 has been entered.
.
Response to Applicants Amendments and Arguments
The Amendment/Request for Reconsideration after Final Rejection filed 12/23/2025 has been entered. Claims 1-16 remain pending in the application, with Claim 3 amended.
Applicant' s Arguments and Amendments, filed 12/23/2025, are persuasive with respect to the objections to the Specification and Claims. Applicant's arguments with respect to Claim(s) 1-3, 4-13 and 16 rejected over the final office action under 35 U.S.C. 103 have been considered. Due to the Request for Continued Examination and the amendments filed 12/23/2025, there are new grounds of rejection necessitated. The Examiner will address applicable arguments.
Regarding Claim 1 the Applicant argues that,
As Claim 1 clarifies the positioning template and the cladding tube comprise essentially the
same chemical substance and a total mass of the different chemical elements in the positioning
template and the cladding tube is less than 1% by weight, the prior art of Mukasa does not recognize the
“different chemical elements less than 1% by weight” as a result-effective variable, negating “routine
optimization” and obviousness, citing MPEP 2144.05 (III) (C).
Mukasa lacks any teaching that the precise total mass of different chemicals as between the
base pipe and positioning jig is relevant to any property or functional result and without such there is no
motivation to optimize, citing Genentech, Inc. v. Hospira, Inc., 946 F.3d 1333, 1341 (Fed. Cir. 2020).
Further, the references of Nakanishi and Meuller fail to compensate for Mukasa.
In response to the Applicant’s argument the Examiner replies that,
a), b) The impurity level in fiber optic preforms is a common result effective variable in the industry that
is controlled and as such, is subject to optimization based upon prior art teaching of result effective
variables (In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977)).
Further, the precise total mass of different chemicals is not required if in the prior art, the general
conditions of a claim are disclosed. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235. The Examiner
wishes to remind the Applicant that that obviousness may be established by combining or modifying
the teachings of the prior art to produce the claimed invention where there is some teaching,
suggestion, or motivation to do so found either in the references themselves or in the knowledge
generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed.
Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co.
v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Regarding Claim 3, the Applicant argues that,
Wheeler does not teach the use of a positioning template at all.
Wheeler does not teach relative material compositions of a positioning template and a cladding tube.
Wheeler is directed to a method of fabricating an optical fiber preform through laser welding a primary capillary tube to the inside of an outer tube and as such does not teach the amended claim, and the combination of Mukasa, Nakanishi, and Mueller fails to compensate.
Claim 3 has been amended to recite that the anti-resonance element preforms are thermally fixed in a flame-free manner to the cladding tube wall by passing the assembly through an electric furnace. An object of the amended claim is to avoid the deposition of soot or burn-off, which can lead to a reduction in quality of the finally produced preform. A laser has a fairly small heating zone, so that burn-off may occur. The use of an electric furnace to accomplish the processing step avoids the disadvantages of soot or burn-off formation.
In response to the Applicant’s argument the Examiner replies that,
a), b) Wheeler is not relied upon for using a positioning template, nor that the cladding and the positioning template are the same substance where the total mass of different chemical elements is less than 1% by weight.
c), d) due to the Amendment of Claim 3, the Examiner is in agreement. New grounds of rejection necessitated by the amendment are present. While there may be a benefit of reduced soot burn-off by using an electric furnace, the Examiner wishes to remind the Applicant that the features upon which applicant relies (reduced soot burn off ) are not recited in the rejected claim. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Regarding Claims 14-15, Applicant argues that,
Yoo is directed to a fiber preform that arranges two cladding regions, where one of the cladding regions defines a plurality of splits and that Yoo does not teach the use of a positioning template at all, and therefore does not teach or suggest the claimed details of identity between a positioning template and a cladding tube. Further, that Yoo and Mukasa combined still fail to teach or suggest at least the above-identified feature.
In response to the Applicant’s argument the Examiner replies that,
Yoo teaches hollow core resonant fiber, used as a reference (Figs 1A-1C, [0018]). Further, Yoo teaches that a fiber preform refers to which an optical fiber may be derived, which could be a primary preform or a cane (secondary preform) which is smaller or thinner version of drawn (elongated) from the primary preform ([0070]). Yoo is not relied upon for using a positioning template, nor that the cladding and the positioning template are the same substance where the total mass of different chemical elements is less than 1% by weight. Hence, Applicants argument is moot.
Regarding Claim 1 in reference to Double Patenting, the Applicant makes the same argument regarding the Claim 1 references applied, and the Examiner response is the same as above for Claim 1.
Regarding Claims 14-15 in reference to Double Patenting, the Applicant makes the same argument regarding the Claim 1 references applied, and the Examiner response is the same as above for Claim 1. Note: the Examiner has used the now issued U.S. Patent 12,428,332 in place of U.S. Application 18/256,117 as noted by the Applicant .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 1 recites “total mass of different chemical elements in the positioning template and the cladding tube is less than 1% by weight”. It is unclear what “total mass of different chemical elements” means, as the “total mass of different chemical elements” of any material is 100%, rendering the claim indefinite. For the purposes of prosecution and prior art, the Examiner understands the phrase “total mass of different chemical elements” to mean “total mass of different chemical elements” other than silica, or any of phases or names of silica, such as but not limited to, quartz, high purity fused silica, glass or synthetic silica.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-2, 4-13, 16 are rejected under 35 U.S.C. 103 as being unpatentable in view of JP
2018150184Aby Mukasa et. al (herein “Mukasa”) and in further view of ( PGPUB) 20190300420 by
Nakanishi et. al. (herein “Nakanishi”) and in further view U.S. Patent 6,568,218 by Meuller et. al (herein
“Meuller”) and in further view of “Hollow Core Optical Fibers with comparable attenuation to silica fibers between 600 and 1100nm”, Nature Communications, by Sakr et. al. (herein “Sakr”).
Regarding Claim 1, Mukasa teaches:
A method for producing a preform
a) providing a cladding tube which has a cladding tube inner bore and a cladding tube
longitudinal axis, along which a cladding tube wall extends, which is limited by an inner side
and an outer side See Fig. 6, element 11, [0026] lines 3-4. Note, “base material tube”,
“base material pipe” in [0026] each conveys element 11 in Fig. 6.
b) preparing a number of anti-resonance element preforms each comprising an ARE outer
tube and an ARE inner tube inserted therein. See Fig. 18a, [0078] lines 2-3. The Examiner
has interpreted equivalence for the referenced “capillary” or “capillaries” as ARE tube(s) in
the context of the reference ([0027] lines 2-3.
c) preparing a positioning template, having a number of passage openings passing through
the positioning template adapted for a longitudinal guidance of an anti-resonance element
preform each; See Fig. 5a/b, Fig.6a element 20a, [0022] lines 1-4.
wherein the positioning template and the cladding tube are made of identical material;
See [0026], lines 3-4; [0022], line 2.
the positioning template and the cladding tube comprise essentially the same chemical
substance; Fig 7a., [0025], [0027], “As a method of manufacturing the first positioning jig 20
a and the second positioning jig 20 b, for example, by mechanically drilling a single quartz
bar…”, “In step S3 of FIG. 4, as shown in FIG. 7 (a), a plurality of capillaries 12a to 12g for
forming a plurality of inner cladding pipes 2a to 2g shown in FIG. 1 are prepared. The
plurality of capillaries 12 a to 12 g are thin tubes made of quartz glass…”
d) attaching the positioning template to a first end of the cladding tube (base material tube
11); See Fig. 6b, element 11, [0026] lines 8-10.
e) inserting at least parts of the anti-resonance element preforms through the passage
openings for arranging the anti-resonance element preforms in the cladding tube inner
bore; See Fig. 14, Fig. 18a, Fig. 18b, Fig. 19, [0075], lines 1-7.
f) processing an assembly comprising
the cladding tube; See Fig. 18b element 11.
the anti-resonance element preforms; See Fig. 18b elements 12a-12j, 14a-14j.
and the positioning template; See Fig. 18, element 50a.
by means of a hot-forming process, selected from at least one of elongating and
collapsing. See Fig. 4/S5, [0035], lines 1-2; “A drawing step is performed in step S5
of Fig. 4 to heat and elongate…”. [0035] describes the general embodiment of
drawing in step S5 which is applied to all other embodiments in the reference.
the positioning template has at least one centering surface; Fig. 16a element 50a;
which cooperates with the first end of the cladding tube; See Fig. 18a/b, elements
50a/11; element 50a end face that is facing upwards towards the bottom end face
of the cladding tube.
the anti-resonance element preforms are arranged at target positions in step e)
"inserting"; See Fig. 18b, elements 12a-12j, 14a-14j.
Mukasa does not teach a self-centering manner of the positioning template. In the same field of
endeavor, Nakanishi teaches a pipe and positioning plate “both being slightly tapered and mechanically
fitted to each other” (See [0021], lines 1-5) which could provide further benefit to Mukasa from
Nakanishi for centering. A person of ordinary skill has good reason to pursue the known option within
his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation
but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385
(2007). Yet Nakanishi does not explicitly state, one centering surface cooperating in a self-
centering manner
In an analogous method in the same field of endeavor, Meuller teaches a “self-centering and
self-nesting joint for starter and exhaust tubes…to create a combined preform” (See Fig. 2/2A/2B
Page 14, Col 5, lines 31-34, 16-21) where the starter tube (Fig. 2, element 10) has a surface for
centering in the joint (Fig. 2A, element 13) and “the exhaust and starter tubes have a self-centering
profile, or “nesting” feature (Page 12, Col 2, lines 51-55). It would have been obvious to one having
ordinary skill in the art at the time of the effective filing date of the claimed invention to deploy the
teaching of Meuller to the positioning template of Musaka to ensure proper alignment, and in the case
of Musaka alignment between the positioning template (jig) and the cladding tube (base pipe material),
as noted by Meuller (Page 12, Col 2, lines 3-7). In addition, a person of ordinary skill has good reason to
pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is
likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc.,
127 S.Ct. 1727,82 USPQ2d 1385 (2007).
While Mukasa teaches the positioning template and the cladding are made of identical material for an
ARE preform used for drawing optical fiber, Mukasa fails to teach,
a total mass of the different chemical elements in the positioning template and the cladding
tube is less than 1% by weight.
In a similar endeavor of anti-resonant optical fiber fabrication, Sakr teaches that the industry since the
1970’s have searched for ways to reduce propagation loss in glass-based light waveguiding technology.
Further, that those efforts have managed to suppress absorptions from metallic impurities and hydroxyl
overtones (i.e. beta-OH, which is known constituent that affects optical fiber performance) by reducing
impurities in the glass to part per billion levels where the remaining intrinsic loss is Rayleigh scattering.
Continuing, the industry has continued to investigate drawable glass compositions offering the lowest
Rayleigh scattering (Para. 2, Para. 3). Metallic impurities and OH levels in optical fiber are known cause
effective variables in the industry and are controlled to the part per billion level, much lower than 1%
wt. Further, as the positioning template and cladding of Mukasa would inherently be part of the drawn
fiber, where their chemical elements would need to be of a similar value as the optical fiber, i.e. in the
part per billion range. As metallic impurities and OH are result effective variables that achieve a
recognized result, it would have been obvious to one having ordinary skill in the art at the time of the
effective filing date of the claimed invention to optimize the level of different chemical elements, since it
has been held that discovering an optimum value of a result effective variable involves only routine skill
in the art. One would have been motivated to optimize the level of different chemical elements for the
purpose of reducing propagation loss in the glass optical fiber drawing from the preform of Mukasa..
In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Regarding Claim 2, Mukasa, Nakanishi, Meuller, and Sakr as combined in the rejection of claim 1 above teach all of the limitations of claim 1. Meuller further teaches a method of a lip formed in the end of the exhaust tube (the cladding partially cut out in the region of the first end to form a counter centering surface) (See Fig. 2A/B element 19, Page 12, Col 2, lines 56-58) that engages the starter tube (which cooperates with the centering surface in a positive manner) (See Fig. 2A element 13, Fig. 2B - the end face of element 10 opposite element 19).
Regarding Claim 4, Mukasa, Nakanishi, Meuller, and Sakr as combined in the rejection of claim 1 above teach all of the limitations of claim 1. Mukasa further teaches where the cladding tube has a second end; See Fig. 6, element 11; illustrates the base material pipe (cladding tube) has a first end and a second end opposite the first end.
Regarding Claim 5 which depends on Claim 4, Mukasa, Nakanishi, Meuller, and Sakr as combined in the rejection of claim 1 above teach all of the limitations of claim 1. Mukasa further teaches:
(i) creating a second positioning template having a number of second passage openings
passing through the second positioning template; adapted for a longitudinal guidance of an
anti-resonance element preform each; wherein the second positioning template and the
cladding tube are made of the same material; (ii) combining the second positioning template
with the second end of the cladding tube See Fig. 8a, Fig. 8b element 20b/11, [0022] line 2,
[0024] lines 1-3, [0025] lines 1-5, [0026], lines 1-7, [0038] lines 6-8.
Regarding Claim 6 which depends on Claims 5/4, , Mukasa, Nakanishi, Meuller, and Sakr as combined in the rejection of claim 1 above teach all of the limitations of claim 1. Musaka further teaches:
(iii) inserting at least parts of the anti-resonance element preforms through the second
passage openings of the second positioning template; (iv) wherein the second positioning
template has at least one second centering surface; which cooperates with the second end
of the cladding tube; See Fig. 8b element 20b/11 Fig. 8b, [0030]
lines 1-7, [0031] lines 1-6, [0038] lines 6-8.
in such a way that the anti-resonance element preforms are arranged at target positions in
step (iii) "inserting". See Fig. 18b; elements 12a-12j/14a-14j.
Mukasa does not teach a self -centering of the second positioning template with the second end of the
cladding tube. Meuller teaches self-centering of the second position template for alignment, and in the
case of Mukasa, alignment between the second positioning template (jig) and the
cladding tube (base pipe material) as noted by Meuller (Page 12, Col 2, lines 3-7). In addition, a person
of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and
common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Regarding Claim 7 which depends on claim 6/5/4 Mukasa, Nakanishi, Meuller, and Sakr as combined in the rejection of claim 6, teaches claim 6 and all of the claims from which it depends.
Of particular interest is Meuller’s self -centering structure. While it does not teach “using a partial cut
out to center a second end of the cladding tube” it would have been obvious to further apply Meuller’s
self-centering method/structure relied upon above to any additional positioning templates/points
where centering would be useful. In addition, a person of ordinary skill has good reason to pursue the
known option within his or her technical grasp. If this leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct.
1727,82 USPQ2d 1385 (2007).
Regarding Claim 8, Mukasa, Nakanishi, Meuller, and Sakr as combined in the rejection of claim 1 above teach all of the limitations of claim 1. Mukasa further teaches:
A/ preparing a third positioning template having a number of third passage openings passing
through the third positioning template adapted for a longitudinal guidance of an anti-
resonance element preform each wherein the third positioning template has at least one
third centering surface. (See Fig 15b, element 50b, Fig. 18a element 50b, [0068] lines 1-4;
[0071] lines 5-7, [0076] lines 5-7). Note, the Examiner interprets [0076] line 6 of the
translation to properly read “...inserted into the third positioning
Regarding Claims 9 /10, which depend on claim 8/9, Mukasa, Nakanishi, Meuller, and Sakr as combined in the rejection of claim 1 above teach all of the limitations of claim 1. Musaka further teaches:
B/ producing a tubular closing element, wherein the closing element has an active surface
in the region of a first end region in order to cooperate with the third centering surface in
particular to cooperate in a positive manner; C/ linking the third positioning template to the
first end region (See Fig. 23a/b, element 15a/11; [0015], lines 1-5); [0110] lines 3-6).
E/ pushing at least parts of the anti-resonance element preforms through the third passage
openings in order to arrange the anti-resonance element preforms in the cladding tube
inner bore in such a way that the anti-resonance element preforms are arranged at target
positions (See Fig. 14, Fig. 23b, and by arrangement ([0015], lines 1-5; Fig. 18a, Fig. 18b,
elements 12a-12j, 14a-14j).
Furthermore, Mukasa teaches structural elements of a first positioning jig, a second positioning
jig, a third positioning jig, a fourth positioning jig, a dummy tube (tubular closing element) and a base
material pipe (cladding tube) but does not teach specifically the claimed order. Musaka teaches
order is changeable ([0015], lines 1-5). It would have been obvious to arrange the dummy tube (tubular
closing element), the base material (cladding tube) and the third positioning jog (template) in any
relative order.
The combination of Mukasa applied to claim 9/10 above does not teach a third centering
surface that is self-centering. Of particular interest is Meuller’s self -centering structure. While it
does not teach “the third centering surface cooperates with the active surface in a self -centering
manner” it would have been obvious to further apply Meuller’s self-centering method/structure relied
upon above to any additional positioning templates/points where centering would be useful. In
addition, a person of ordinary skill has good reason to pursue the known option within his or her
technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of
ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Regarding Claim 11, which depends on claim 5/4, Mukasa, Nakanishi, Meuller, and Sakr as combined in the rejection of claim 1 above teach all of the limitations of claim 1.
Musaka further teaches where in at least one of the following steps comprises a flame free thermal connecting or flame-based thermal connecting:
step b) – not addressed.
step d) “attaching”. In claim 1, the step of attaching is defined as attaching a positioning template to the first end of the cladding tube; Fig. 4, Fig. 6, [0026], “…the connecting portion between the end portion of the preform pipe 11 and the end portion of the first positioning jig 20 a is heated by flame…”
and
step ii “combining”. In claim 5, the step of combining is defined as combining the second positioning template with the second end of the cladding tube; Fig 8., [0032] “the connecting portion between the base material pipe 11 and the second positioning jig 20 b is heated by flame…”
Regarding Claim 12, which depends on claim 1, , Mukasa, Nakanishi, Meuller, and Sakr as combined in the rejection of claim 1 above teach all of the limitations of claim 1.
Mukasa teaches wherein prior to step f) “processing”, the anti-resonant preforms are only held by means of (or otherwise without a substance-to-substance bond in the cladding tube inner bore):
the positioning template, or the positioning template and the second positioning template or the positioning template and the third positioning template (See Fig. 10a, elements 31/32; [0009], lines 1-5; [0010], lines 1-5). Musaka teaches using at least one of a first positioning jig and a second positioning jig, where each jig comprises a tubular member (base material pipe) with another tubular member disposed inside, where the tubular member disposed inside has a gear-like member with teeth. The capillary tubes (anti-resonant elements) are “sandwiched” between the inner tube gear-like member, the base material pipe, and the gear-like member and “fixes the capillary”.
Furthermore, Mukasa teaches structural elements of a first positioning jig, a second
positioning jig, a third positioning jig, a fourth positioning jig, a dummy tube (tubular
closing element), and a base material pipe (cladding tube) but does not teach specifically the
claimed order. Musaka further teaches order is changeable [0015], lines 1-5). It would have
been obvious to arrange the positioning jig (template), the second positioning jig (template) and
the third positioning jig (template) in any relative order.
.
Regarding Claim 13, which depends on claim 1, Mukasa, Nakanishi, Meuller, and Sakr as combined in the rejection of claim 1 above teach all of the limitations of claim 1.
Mukasa further teaches wherein,
the positioning template and/or the second positioning template and/or the third
positioning template has at least one gas flow element;
which connects the cladding tube inner bore to the surrounding area of the preform in a
fluid-conducting manner. See Fig. 5a/b element 23, Fig. 6a/b, element 11/21/23; [0023],
lines 1-7, Fig. 9a/b, elements 20a/20b/11; [0035], lines 3-7).
Fig. 6a illustrates an embodiment where a positioning jig (template) is attached to the base pipe
material (cladding tube) where the “axis of the base material pipe 11 (cladding tube) and the first
positioning jig are aligned with each other” ([0026], lines 3-8), showing alignment of the element 23
(through-hole) and the inner bore of the cladding tube (element 11) which creates a clear passage from
the through hole to the inner bore of the cladding tube to the surrounding area.
Regarding Claim 16, which depends on claims 10/9/8, Mukasa, Nakanishi, Meuller, and Sakr as combined in the rejection of claim 1 above teach all of the limitations of claim 1.
Musaka further teaches where in at least one of the following steps comprises a flame free thermal connecting or flame-based thermal connecting:
step b) “preparing”. In claim 1, step of preparing is defined as preparing a number of anti-resonant element (ARE) preforms, each comprising and ARE outer tube and ARE inner tube; Fig. 14, Fig. 18a, Fig. 18b, [0074], “As shown in FIG. 18 (a), a plurality of capillaries (second capillaries) 14 a to 14 j for forming a plurality of auxiliary clad portions 4 a to 4 j shown in FIG. 14 are prepared.”
Claims 3 is rejected under 35 U.S.C. 103 as being unpatentable in view of U.S. Patent 3,950,073 by
Horiguchi et. al. (herein “Horiguchi”)
Regarding Claim 3, which depends on claim 1, , Mukasa, Nakanishi, Meuller, and Sakr as combined in the rejection of claim 1 above teach all of the limitations of claim 1. Musaka further teaches
anti-resonant preforms are thermally fixed in a flame free manner to the cladding tube wall in step f “processing” by passing the assembly through an electric furnace;
“even if the plurality of first capillaries 12 a to 12 j and the plurality of second capillaries 14 a to 14 j are
fixed to the base pipe 11 by fusion or adhesion or the like to prevent falling off from the base pipe 11…” (See [0078], lines 4-6,)
Mukasa does not specifically teach,
anti-resonant preforms are thermally fixed in a flame free manner to the cladding tube wall in step f “processing” by passing the assembly through an electric furnace.
In the same field of endeavor, Horiguchi teaches a method to fuse glass core rods to an outer
cylindrical glass jacket where glass rods make tangential contact to the inner wall of the glass jacket
(Abstract, Fig.1, Fig. 2, Fig. 4) to make a preform for an eccentric core optical waveguide (Col 3 lines 57-
65). In the fabrication process, the glass core 1 and the glass jacket 2 or 5 are fused together at the
contact area and the eccentric core optical waveguides having construction shown in FIGS. 1 and 2 may
be manufactured. The preform is at first heated by a high frequency heater and then fabricated by a
glass fiber drawing apparatus (Col 4 lines 7-13). In industry, a high frequency heater is an inductive
heater that uses AC electric current, which reads. Horiguchi teaches the claimed invention except for
use on anti-resonance elements. It would have been obvious to one of ordinary skill in
the art prior at the time of the effective filing date of the claimed invention use the heater of Horiguchi
in the method of Mukasa, as one would be motivated to do so for the purpose of to reduce the
deformation of the fused anti resonant elements, as noted by Horiguchi (Col 4 lines 22-23). Further,
electric furnaces are common in the optical fiber industry. A person of ordinary skill has good reason to
pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is
likely the product not of innovation but of ordinary skill and common sense. KSR int'l Co. v. Teleflex Inc.,
127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Claims 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable in view of WO2018169487 by
Yoo et. al (herein “Yoo”) and in further view of JP 2018150184A by Mukasa et. al (herein “Mukasa”).
Regarding Claim 14, Yoo teaches a secondary preform, from a preform, may be drawn
(elongating) to cane (e.g., a secondary fiber preform) (Figs 1A-1C, [0018] lines 1-2, [0070] lines
3-5. While Yoo does not specify the structure of the secondary preform, Mukasa teaches the structure
of the secondary preform in claim 1:
a) preparing a cladding tube which has a cladding tube inner bore and a cladding tube
longitudinal axis, along which a cladding tube wall extends, which is limited by an inner side
and an outer side See Fig. 6, element 11, [0026] lines 3-4. Note, “base material tube”,
“base material pipe” in [0026] each conveys element 11 in Fig. 6.
b) preparing a number of anti-resonance element preforms each comprising an ARE outer
tube and an ARE inner tube inserted therein. See Fig. 18a, [0078] lines 2-3. The Examiner
has interpreted equivalence for the referenced “capillary” or “capillaries” as ARE tube(s) in
the context of the reference ([0027] lines 2-3.
c) preparing a positioning template, having a number of passage openings passing through
the positioning template adapted for a longitudinal guidance of an anti-resonance element
preform each; See Fig. 5a/b, Fig.6a element 20a, [0022] lines 1-4.
wherein the positioning template and the cladding tube are made of identical material;
See [0026], lines 3-4; [0022], line 2.
d) attaching the positioning template to a first end of the cladding tube (base material tube
11); See Fig. 6b, element 11, [0026] lines 8-10.
e) inserting at least parts of the anti-resonance element preforms through the passage
openings for arranging the anti-resonance element preforms in the cladding tube inner
bore; See Fig. 14, Fig. 18a, Fig. 18b, Fig. 19, [0075], lines 1-7.
f) processing an assembly comprising
the cladding tube; See Fig. 18b element 11.
the anti-resonance element preforms; See Fig. 18b elements 12a-12j, 14a-14j.
and the positioning template; See Fig. 18, element 50a.
by means of a hot-forming process, selected from at least one of elongating and
collapsing. See Fig. 4/S5, [0035], lines 1-2; “A drawing step is performed in step S5
of Fig. 4 to heat and elongate…”. [0035] describes the general embodiment of
drawing in step S5 which is applied to all other embodiments in the reference.
the positioning template has at least one centering surface; Fig. 16a element 50a;
which cooperates with the first end of the cladding tube; See Fig. 18a/b, elements
50a/11; element 50a end face that is facing upwards towards the bottom end face
of the cladding tube.
the anti-resonance element preforms
are arranged at target positions in step e) "inserting"; See Fig. 18b, elements 12a-
12j, 14a-14j.
As fabricating cane is well-known in the art, it would have been obvious to one of ordinary skill in the art prior at the time of the effective filing date of the claimed invention to use the structure of Mukasa to make the secondary preform (cane) of Yoo. A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Regarding Claim 15, Yoo teaches optical fiber may be obtained by drawing (elongating) the
preform (Fig.2B, [0071] lines 1-4). While Yoo does not specify the structure of the preform,
Mukasa teaches the structure of the preform in claim 1:
a) preparing a cladding tube which has a cladding tube inner bore and a cladding tube
longitudinal axis, along which a cladding tube wall extends, which is limited by an inner side
and an outer side See Fig. 6, element 11, [0026] lines 3-4. Note, “base material tube”,
“base material pipe” in [0026] each conveys element 11 in Fig. 6.
b) preparing a number of anti-resonance element preforms each comprising an ARE outer
tube and an ARE inner tube inserted therein. See Fig. 18a, [0078] lines 2-3. The Examiner
has interpreted equivalence for the referenced “capillary” or “capillaries” as ARE tube(s) in
the context of the reference ([0027] lines 2-3.
c) preparing a positioning template, having a number of passage openings passing through
the positioning template adapted for a longitudinal guidance of an anti-resonance element
preform each; See Fig. 5a/b, Fig.6a element 20a, [0022] lines 1-4.
wherein the positioning template and the cladding tube are made of identical material;
See [0026], lines 3-4; [0022], line 2.
d) attaching the positioning template to a first end of the cladding tube (base material tube
11); See Fig. 6b, element 11, [0026] lines 8-10.
e) inserting at least parts of the anti-resonance element preforms through the passage
openings for arranging the anti-resonance element preforms in the cladding tube inner
bore; See Fig. 14, Fig. 18a, Fig. 18b, Fig. 19, [0075], lines 1-7.
f) processing an assembly comprising
the cladding tube; See Fig. 18b element 11.
the anti-resonance element preforms; See Fig. 18b elements 12a-12j, 14a-14j.
and the positioning template; See Fig. 18, element 50a.
by means of a hot-forming process, selected from at least one of elongating and
collapsing. See Fig. 4/S5, [0035], lines 1-2; “A drawing step is performed in step S5
of Fig. 4 to heat and elongate…”. [0035] describes the general embodiment of
drawing in step S5 which is applied to all other embodiments in the reference.
the positioning template has at least one centering surface; Fig. 16a element 50a;
which cooperates with the first end of the cladding tube; See Fig. 18a/b, elements
50a/11; element 50a end face that is facing upwards towards the bottom end face
of the cladding tube.
the anti-resonance element preforms
are arranged at target positions in step e) "inserting"; See Fig. 18b, elements 12a-
12j, 14a-14j.
As drawing preforms into fiber is known in the art, it would have been obvious to one of ordinary skill in the art prior at the time of the effective filing date of the claimed invention to use the structure of Mukasa to draw (elongate) the preform of Yoo. A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claim 1 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,240,778 (reference patent) in view of JP 2018150184A by Mukasa et. al (herein “Mukasa”) and in further view of U.S. Patent 6,568,218 by Meuller et. al (herein “Meuller”).
Regarding claim 1, claim 14 of the reference patent claims producing a preform for anti-resonant hollow-core fiber comprising a cladding tube with a longitudinal axis with an inner bore with an inner side and outer side which contains anti-resonant element preforms with nested structural elements and arranged at setpoint conditions. Claim 14 further claims a hot forming process for the preform of one or more of elongation and collapse. Claim 14 fails to claim c) a positioning template, having a number of passages, made of identical material as the cladding that is d) attached to a first end of the cladding tube, where e) anti-resonance element preforms are inserted into the passages. Claim 14 further fails to claim the anti- resonant element preforms are arranged at target positions, f) a positioning template as part of the preform assembly for processing in a hot-forming process, and a positioning template centering surface that cooperates with the end of the cladding tube.
Mukasa teaches a positioning template, having a number of passages, made of identical material as the cladding that is attached to a first end of the cladding tube (Fig. 5a, Fig. 6, [0022], [0026]), wherein the where anti-resonance element preforms are inserted into the passages (Fig. 14/18a, [0075]. Mukasa further teaches anti-resonant element preforms arranged at target positions and a positioning template as part of the preform assembly for processing in a hot-forming process (Fig. 18b, elements 12a-12j/14a-14j/50a) and teaches a position template centering surface that cooperates with the end of the cladding tube (Fig. 16a, element 50a; Fig 18a, element 50a/11). Further, Mukasa teaches the positioning template and the cladding as having essentially the same material/chemical elements and that the different chemical elements in the positioning template and the cladding tube is less than 1% by weight.
It would have been obvious to one having ordinary skill in the art to deploy the teachings of Mukasa to claim 14 of the reference patent to improve alignment of the anti-resonant preforms in the preform and use the same materials for the cladding tubes and the positioning jig before further hot forming processes.
The combination of Claim 14 and Mukasa further fails to claim a positioning template that
cooperates with first end of the cladding in a self-centering manner. Meuller teaches a self-centering
and self-nesting joint for starter and exhaust tubes to create a combined preform (Fig. 2) where the
starter tube (Fig. 2, element 10) has a surface for centering in the joint (Fig. 2A, element 13) and the
exhaust and starter tubes have a self-centering profile, or nesting feature. It would have been obvious to
one having ordinary skill in the art to deploy the teaching of Meuller to claim 14 of the reference patent
to further improve centering of the positioning template of Musaka.
Claims 14/15 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14/13 of U.S. Patent 12,428,332 in view of JP 2018150184A (English language translation of the Description and Figure 4 provided herewith and referenced herein) by Mukasa et. al (herein “Mukasa”).
Regarding Claims 14/15, claims 14/13 of the reference application are substantially identical, but both the instant claims and reference claims refer to their respective claim 1. However, features of instant claim 1 would result in a structural difference. Regarding structural differences due to instant claim 1, Mukasa teaches a positioning template having a number of passages (Fig. 5a, [0022]) that is made of identical material as the cladding ([0026], [0022]) that is attached to a first end of the cladding tube (Fig. 6, [0026], where anti-resonance element preforms are inserted into the passages (Fig. 14/18a, [0075]. Furthermore, Mukasa teaches a positioning template as part of the preform assembly for processing in a hot-forming process (Fig. 18b elements 11/12a-12j/14a-14j/50a) citing a drawing step is performed in Step 5 of Fig. 4 to heat and elongate. Further, Mukasa teaches a centering surface that cooperates with the end of the cladding tube (Fig. 16a, element 50a; Fig 18a, element 50a/11) such that the anti-resonant element preforms are arranged at target positions (Fig. 18b, elements 12a-12j/14a-14j).
Further, Mukasa teaches the positioning template and the cladding as having essentially the same material/chemical elements in the and that the different chemical elements in the positioning template and the cladding tube is less than 1% by weight.
It would have been obvious to one having ordinary skill in the art to deploy the teachings of Mukasa to claim 1 of the reference application, regarding the noted structural differences, to improve alignment of the anti-resonant preforms in the preform and use the same materials for the cladding tubes and the positioning jig before further hot forming processes before further hot forming processes.
The combination of Claim 15 and Mukasa further fails to claim a positioning template that
cooperates with first end of the cladding in a self-centering manner. Meuller teaches a self-centering
and self-nesting joint for starter and exhaust tubes to create a combined preform (Fig. 2) where the
starter tube (Fig. 2, element 10) has a surface for centering in the joint (Fig. 2A, element 13) and the
exhaust and starter tubes have a self-centering profile, or nesting feature. It would have been obvious to
one having ordinary skill in the art to deploy the teaching of Meuller to claim 15 of the reference patent
to further improve centering of the positioning template of Mukasa.
Conclusion
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/CHRISTOPHER PAUL DAIGLER/ Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741