Notice of Pre-AIA or AIA Status
The present application, filed after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 is indefinite because line 17 recites "the mandrel wrap test" but does not specify which mandrel wrap test is meant. It is noted that no mandrel wrap test is mentioned earlier in the claim.
Claims 2-20 are indefinite by dependence from claim 1.
Claims 1-5 and 8-15 are further indefinite because each claim uses the term "about" at least once, but there is no guidance in the disclosure as to how much variation is permitted by "about". As one example, it is not clear whether claim 1 would cover an optical fiber having a core with an outer radius as low as 3.9 microns or even 3.5 microns or lower, or as high as 4.7 or even 5.0 microns or higher. The indefiniteness is compounded by the fact that claim 1 alone uses "about" to characterize the ranges of eight different variables.
Response to Arguments
The specification and claim objections of the 1/16/2026 action are withdrawn in view of the 3/30/2026 amendments. The indefiniteness rejection is maintained.
A) "the mandrel wrap test"
The remarks cite [0039] of the specification, which refers to an IEC 60793-1-47 standard. However claim 1 makes no mention of IEC 60793-1-47, and [0039] merely states "can be gauged" by test conditions specified by that standard. The specification also does not identify which version of that standard is relied upon (i.e. which edition or year). Furthermore the standard itself appears to include multiple options for carrying out various measurements, for example, using either a "power-monitoring technique" or a "cut-back technique" to measure the optical power. Therefore even assuming that claim 1 invokes IEC 60793-1-47 when it recites "the mandrel wrap test" (emphasis added), it is not clear from IEC 60793-1-47 that there is exactly one such test.
This portion of the indefiniteness rejection could be overcome by replacing "the mandrel wrap test" with "a mandrel wrap test" in claim 1.
B) "about"
The remarks state that "one of ordinary skill in the art would have understood the term "about" to encompass +/- 5%". However there appears to be no support in the record for this assertion. An argument cannot take the place of evidence (MPEP 2145(I)).
The recent Federal Circuit decision in Enviro Tech Chemical Services, Inc. v. Safe Foods Corp.1 (May 4, 2026) is believed to be pertinent. In that case the term "about" as used in the limitation "pH of about 7.6 to about 10" was held to be indefinite because there was nothing in the claims, the specification, or the prosecution history which provided guidance as to how much below 7.6 or above 10 a pH could be to meet the limitation. In the instant application the claims and specification are similarly silent as to the amount of variation permitted by "about". The prosecution history does include an attempt to explain what "about" means (in the 3/30/2026 remarks mentioned above), but it is not supported by evidence.
This portion of the indefiniteness rejection could be overcome by deleting every instance of "about" from each of claims 1-5 and 8-15.
Allowable Subject Matter
Claims 1-20 would be allowable if the indefiniteness rejections are overcome. Note the 1/16/2026 action at p. 3.
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.
The attached 892 form cites the Federal Circuit decision mentioned above. It also cites an Indian equivalent to the IEC 60793-1-47 standard, and a separate ITU-T G.650.1 standard which sets forth its own macrobending loss test conditions in section 6.6.
Contact Information
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/Michael Stahl/Primary Examiner, Art Unit 2874
1 https://www.cafc.uscourts.gov/opinions-orders/24-2160.OPINION.5-4-2026_2687268.pdf
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