DETAILED ACTION
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 .
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 (i.e., changing from AIA to pre-AIA ) 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.
Response to Amendment
The Amendment filed 17 October, 2025 has been fully considered and entered. In response to the claim amendments, the objections to claims 3 and 6 are withdrawn.
Response to Arguments
Applicant's arguments filed 17 October, 2025 have been fully considered but they are not persuasive.
Applicant argues that since Sakamoto (US 2013/0016742; hereinafter Sakamoto) states that the secondary coating layer 30 preferably has a thickness of 51.5 microns to 61.5 microns, and that if the thickness is less than 51.5 microns, the secondary coating layer 30 fails to provide sufficient strength to the covered fiber 40 (see Sakamoto paragraph 0147), Sakamoto teaches away from a thickness of the secondary resin layer being 5 microns or more and 50 microns or less.
Applicant further points out that Shimada et al. (WO 2020/096055; hereinafter Shimada) discloses a thickness of a secondary resin layer being about 25 microns (see Shimada paragraph 0020), but states that, based the Sakamoto teaching that a secondary resin layer with a thickness less than 51.5 microns fails to provide sufficient strength to the covered fiber, Sakamoto teaches away from modifying the optical fiber according to the Shimada teaching of a secondary resin layer with a smaller thickness.
Examiner considers this argument to be unconvincing. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Sakamoto describes 51.5 microns to 61.5 microns as a preferable range, not a critical range outside of which the device ceases to function. One of ordinary skill in the art would be capable of adjusting the parameters of the secondary resin layer based on their intended purposes and standards, predicting how the changing thickness affects the quality of the fiber, and setting their preferred thickness accordingly. There is not sufficient evidence that a thickness of 50 microns, for example, would change the principle of operation of the prior art invention being modified. On the contrary, the claimed range of 5 microns to 50 microns is very close to the disclosed preferred range of Sakamoto of 51.5 microns to 61.5 microns. One of ordinary skill in the art would have expected the claimed range and the prior art range to have similar properties, with the properties of the fiber, such as strength and ease of handling, predictably shifting with a reduction in the secondary resin layer thickness.
Furthermore, Sakamoto teaches that the secondary coating layer is preferably made of an epoxy-based or urethane acrylate-based UV curing resin (see paragraph 0146). Under the umbrella of urethane acrylate-based UV curing resins, specific compositions have a range of material properties. One of ordinary skill in the art would recognize that the specific thickness of the secondary resin made according to the Sakamoto teachings should be optimized for the fiber’s specific composition. The teaching of Shimada that the secondary resin layer, also a urethane acrylate-based UV curing resin, has a thickness of 25 microns (see Shimada paragraph 0020), further suggests that the claimed range falls within a reasonable range for optimizing the thickness of a secondary resin layer made of a urethane acrylate-based UV curing resin. However, Examiner considers that the claimed range is obvious over Sakamoto in view of Walker et al. (US 2003/0199603), based on routine optimization of a result effective variable involving a mere change in size of a component, as detailed in the prior art rejections below. Therefore, the rejection is maintained.
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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto (US 2013/0016742; cited in IDS filed on 12 September, 2023; hereinafter Sakamoto) in view of Walker et al. (US 2003/0199603; cited in IDS filed on 12 September, 2023; hereinafter Walker).
Regarding claim 1: Sakamoto disclosesAn optical fiber comprising: a glass fiber (Figs. 1 and 5, optical fiber 10a) including a core (Fig. 1, core 1) and a cladding (Fig. 1, cladding 2); anda coating resin layer (see Fig. 5, coating resin layer comprising primary coating layer 20 and secondary coating layer 30) for coating the glass fiber, wherein the coating resin layer has a primary resin layer (Fig. 5, primary coating layer 20) in contact with the glass fiber for coating the glass fiber, and a secondary resin layer (Fig. 5, secondary coating layer 30) for coating the primary resin layer;the primary resin layer contains a silicone resin (see paragraph 0144);the secondary resin layer contains a urethane (meth)acrylate resin (see paragraph 0146).
Sakamoto fails to disclose that an amount of platinum contained in the primary resin layer is 25 ppm or more and 280 ppm or less in a mass ratio. However, Walker teaches a curable coating composition for an optical fiber, which is a silicone resin having a vinylsilyl group (see paragraph 0018 and 0022) and a hydrosilyl group (see paragraph 0018 and 0022) with a platinum photocatalyst concentration between 50 ppm and 200 ppm (see paragraph 0048), teaching that these concentrations cure coatings applied to optical fibers remarkably quickly and retains transparency. In order to achieve faster curing of the silicone resin primary coating layer, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the silicone resin of Walker for the primary coating layer, including an amount of platinum in the primary resin layer between 50 ppm and 200 ppm, falling within the claimed range since this range was previously disclosed by Walker.
Sakamoto also fails to teach that a thickness of the secondary resin layer is 5 microns or more and 50 microns or less, instead teaching that the secondary resin layer is preferably in the range of 51.5 microns to 61.5 microns (see paragraph 0147). However, Sakamoto does teach that the thickness of the secondary resin layer is a result effective variable, with an increased thickness providing greater protection to the optical fiber while also becoming more difficult to handle (see paragraph 0147). Before the effective filing date of the present invention, a person of ordinary skill in the art would have found it obvious to form a secondary resin layer in the range of 5 microns or more and 50 microns or less, 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), since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)), and since such a modification would have involved a mere change in the size of a component and it has been held that a change in size is generally recognized as being within the level of ordinary skill in the art (In re Rose, 105 USPQ 237 (CCPA 1955)) and that, wherein the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device (In re Gardner v. TEC Systems, Inc., 725 F.2d 1337, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)).
Regarding claim 2: Modified Sakamoto teachesThe optical fiber according to claim 1 (as applied above), wherein the primary resin layer is a cured product of a first resin composition containing a silicone compound having a vinylsilyl group (see Walker, paragraph 0018), a silicone compound having a hydrosilyl group (see Walker, paragraph 0018), and a platinum catalyst (see Walker, paragraph 0048).
Claims 3-4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto (US 2013/0016742; hereinafter Sakamoto) in view of Walker et al. (US 2003/0199603; hereinafter Walker) and further in view of Shimida (WO 2020096055; copy provided by Applicant in IDS filed on 12 September, 2023).
Regarding claims 3 and 6: Modified Sakamoto teaches the optical fiber according to claim 1 and 2, respectively, as applied above. Modified Sakamoto fails to teach that the secondary resin layer is a cured product of a second resin composition containing a urethane (meth)acrylate and a photopolymerization initiator. However, Shimida, also related to optical fibers surrounded by two layers of cladding (see Abstract), teaches a secondary resin layer containing a cured product of a second resin composition containing a urethane (meth)acrylate and a photopolymerization initiator which provides a favorable glass transition temperature, which improves the residual stress of the optical fiber and relates to reduced loss (see paragraphs 0025, 0041, and 0057). In order to obtain a dual coated optical fiber with low residual stress between the primary and secondary resin layers due to a favorable glass transition temperature, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the secondary resin taught by Shimida, containing a cured product of a second resin composition containing a urethane (meth)acrylate and a photopolymerization initiator, in the modified Sakamoto optical fiber. Additionally, It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claims 4 and 7: Modified Sakamoto teachesThe optical fiber according to claim 3 (as applied above), wherein the second resin composition further contains an epoxy (meth)acrylate having an aromatic ring (see Shimida paragraph 0057).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto (US 2013/0016742; hereinafter Sakamoto) in view of Walker et al. (US 2003/0199603; hereinafter Walker) and further in view of Moriya et al. (US 2019/0022962; hereinafter Moriya).
Modified Sakamoto teaches the optical fiber according to claim 1. Sakamoto fails to teach an optical fiber ribbon containing a plurality of such optical fibers arranged in parallel and a connecting resin layer for coating and connecting a plurality of the optical fibers. However, it is well known in the art to arrange a plurality of optical fibers in this way, as evidenced by Moriya (see paragraph 0002). Further, Moriya teaches connecting a plurality of optical fibers arranged in parallel using a connecting resin coating (see abstract and Fig. 1a). In order to obtain an arrangement of parallel optical fibers, it would have been obvious to one of ordinary skill in the art to further modify the Sakamoto device by including a plurality of fibers arranged in parallel and a connecting resin layer to form an optical fiber ribbon.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/KIRSTEN D. ENDRESEN/Examiner, Art Unit 2874
/THOMAS A HOLLWEG/Supervisory Patent Examiner, Art Unit 2874