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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 19, 2026 has been entered.
Response to Amendment
Applicant’s Amendment filed April 9, 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 21-40 and 42-44 are rejected under 35 U.S.C. 103(a) as being unpatentable over Bennett et al. (WO 2019/212796 A1 from Applicant’s Information Disclosure Statement).
Regarding claim 21, Bennett discloses an optical fiber (60 in Fig. 2), comprising: a core region (70); a cladding region (80) surrounding the core region, the cladding region comprising: an inner cladding (81) directly adjacent to the core region, and an outer cladding (85) surrounding the inner cladding; and a polymer coating comprising a high-modulus coating layer (100) surrounding the cladding region and a low-modulus coating layer (90) disposed between the cladding region and the high-modulus coating layer, wherein the modulus of the low-modulus inner coating layer is less than or equal to about 0.35 MPa, a thickness of the high-modulus coating layer is in a range of 4 microns to 20 microns, the modulus of the high-modulus inner coating layer is greater than or equal to about 1.6 GPa (paragraphs 0072-0073; Table 1A, Example #2), and wherein a puncture resistance of the optical fiber is greater than 20 g (paragraph 0074), a total coating thickness is less than or equal to 20 microns, the total coating thickness comprising the thickness of the low-modulus inner coating layer and the thickness of the high-modulus outer coating (paragraph 0072-0073), and wherein an outer diameter of the coated optical fiber is less than or equal to 175 microns (paragraph 0073).
Still regarding claim 21, Bennett teaches the claimed invention except for specifically stating the thickness of the low-modulus coating being less than 8 microns. However, paragraph 0072 of Bennett discloses a low-modulus primary coating having a minimum thickness of 8 microns. It has been held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. “The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.”). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of “less than 6 pounds per cubic feet” and the prior art range of “between 6 lbs./ft3 and 25 lbs./ft3” were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.). In this instance, the claimed range of less than 8 microns and Bennett’s teaching of a minimum of 8 microns is so close that any difference between the claimed ranges is virtually negligible. As such, the prima facie rejection has been made by Bennett.
Still regarding claim 21, Bennett further discloses the optical fiber having good puncture resistance and low microbending and microbending losses in paragraph 0060. Bennett teaches the claimed invention except for specifically stating the calculation of the puncture resistance and microbend attenuation penalty. 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 puncture resistance and microbend attenuation penalty in order to provide enhanced protection to the optical fiber while maintaining high signal transmission, 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 22, Bennett further discloses the core comprises silica with a dopant in paragraphs 0022 and 0063. Bennett teaches the claimed invention except for specifically stating doping with GeO2. However, GeO2 is well-known and commonly used as a dopant in optical fiber cores. As such, one having ordinary skill in the art would find it obvious to use GeO2 as a dopant in the core as a matter of obvious design choice in order to arrive at the desired core refractive index.
Regarding claim 23, Bennett discloses the core region has a relative refractive index in the range from 0.25% to 0.40% in Fig. 4 and paragraph 0063.
Regarding claim 24, Bennett discloses the core region has a radius in the range from 4.0 microns to 6.0 microns in Fig. 4 and paragraph 0063.
Regarding claim 25, Bennett discloses the inner cladding region has a relative refractive index in the range from -0.05% to 0.05% in Fig. 4.
Regarding claim 26, Bennett discloses the inner cladding region has a radius in the range from 9.0 microns to 15.0 microns in Fig. 4.
Regarding claim 27, Bennett discloses the cladding region further comprises a depressed-index cladding region (83) between the inner cladding region and the outer cladding region, the depressed-index cladding region having a relative refractive index less than the relative refractive index of the inner cladding region and the relative refractive index of the outer cladding region in Fig. 4.
Regarding claim 28, Bennett discloses the depressed-index cladding region has a relative refractive index in the range from -0.30% to -0.80% in Fig. 4.
Regarding claim 29, Bennett discloses the depressed-index cladding region has a radius in the range from 14.0 microns to 18.0 microns in Fig. 4.
Regarding claims 30-32 and 44, Bennett teaches the claimed invention except for specifically stating the outer cladding region radius. 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 outer cladding radius in order to provide enhanced protection to the optical fiber core, 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 33, Bennett discloses the thickness of the high-modulus coating is in the range from 9 microns to 18 microns in paragraph 0073.
Regarding claim 34, Bennett discloses the total thickness of the low-modulus coating and the high-modulus coating is 25 microns or less in paragraph 0073.
Regarding claims 35 and 36, Bennett discloses the outer diameter of the coated optical fiber is between 160 microns and 170 microns in paragraph 0073.
Regarding claims 37-39, Bennett teaches the claimed invention except for specifically stating the microbend attenuation penalty. 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 microbend attenuation penalty in order to ensure high signal transmission, 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 40, Bennett teaches the claimed invention except for specifically stating the puncture resistance. 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 puncture resistance in order to provide enhanced protection to the optical fiber, 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 42, Bennett 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 ensure high signal transmission, 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 43, Bennett further discloses a mode field diameter of the optical fiber at nm is > 8.6 microns in paragraph 0010.
Response to Arguments
Applicant's arguments, filed April 9, 2026, with respect to claims have been considered but are moot in view of the new grounds of rejection. However, in order to expedite the prosecution of the application, the relevant portions of Applicant’s remarks will be addressed.
On pages 7-9, Applicant argues that Bennett does not disclose the thickness of the low-modulus coating being less than 8 microns because paragraph 0072 of Bennett discloses a low-modulus primary coating having a minimum thickness of 8 microns.
However, it has been held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. “The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.”). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of “less than 6 pounds per cubic feet” and the prior art range of “between 6 lbs./ft3 and 25 lbs./ft3” were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
In this instance, the claimed range of less than 8 microns and Bennett’s teaching of a minimum of 8 microns is so close that any difference between the claimed ranges is virtually negligible. As such, the prima facie rejection has been made by Bennett. Applicant is requested to provide evidence or showing of unexpected results or criticality.
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 May 26, 2026
Prosecution Insights