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 .
Response to Amendment
This is a response to the amendment filed 7/23/2026. Claim 2 has been canceled. Claims 1 and 3-5 have been amended. Claims 9-11 are added. Claim 11 is withdrawn as being part of a non-elected group since Applicant elected the device and not the method.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues the rotation center has an unintended of more uniform coating. However, it is well settled that counsel's arguments are no substitute for objective evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Also, conclusory statements without supporting evidence are entitled to little probative value. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Wood, 582 F.2d 638, 642 (CCPA 1978); In re Greenfield, 571 F.2d 1185, 1188 (CCPA 1978); In re Lindner, 457 F.2d 506, 508 (CCPA 1972). Therefore, without any supporting evidence, applicant's argument is not persuasive. Further, Tomlinson et al. specifically teaches this exact benefit of a stable and concentric coating (See col. 4, lines 1-5).
Applicant argues Tomlinson et al. (US 4,631,078) cannot accommodate a second die between the chamber [10] and the bottom surface of the first frame [12] offer insufficient space for such a die. However, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
The prior rejection doesn’t propose physically inserting the die in Enomoto (WO 2021/153765, citations to US 2023/0150870) into the space in Tomlinson et al., but relies on the teachings of Enomoto as evidence to modify Tomlinson et al. Those skilled in the art, having been taught the desirability of a certain modification (i.e. a second die), would recognize that other modifications were needed to accommodate the modification, and that one skilled in the art would be expected to have sufficient basic knowledge to construct such means, the structure of which appears to be simple. In re Bode et al., 193 USPQ 12 (CCPA 1977); see also In re Sneed, 710 F.2d 1544 (Fed. Cir. 1983) (finding "it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."), and MPEP2145(III). It is further noted nothing in the text of Tomlinson et al. implies any dimensional constraint, and Applicant’s spatial argument rests entirely on measurement taken from drawings in Tomlinson et al. and patent drawings cannot be relied upon to show particular sizes or proportions where the specification is silent on the issue. See MPEP 2125. In fact, Figure 4 in Tomlinson et al. clearly shows amble space beneath the chamber [10].
Applicant argues Tomlinson et al. cannot position or shift the rotation center due to its arrangement. However, Tomlinson et al. places the rotation center “at or close to the lower exit orifice” of the die (See col. 3, lines 8-13). In the combination with Enomoto, the second die is added downstream of the die Tomlinson, as motivated specifically by the teachings therein, e.g. such as to add color or subsequent coating.
Applicant argues Enomoto’s die [410] is not downstream. Although that may be true in that exact embodiment providing more detail for the further coating devices, Enomoto clearly teaches “a plurality of stages of resin coating devices may be arranged in a longitudinal direction of the coated fiber 120 to be wound around a drum.” See page 6, paragraph [0052]. Thus, even if Enomoto also discloses separate devices for separate coatings, it clearly discloses multiple coatings may be applied by multiple dies in line, and thus implementing dies as such for this purpose cannot be considered inventive. Since Enomoto explicitly teaching a plurality of coating devices in a single line to provide multiple coatings as desired, the rotation center of the first dies exit is thus necessarily upstream of the outlet of the second die. There is no reason why the system in Tomlinson et al. could not have been reorganized to have a second downstream coating die so as to perform their initial coating process as taught therein, and then subsequent downstream coating, such as to add color, such as is well-known in optical fiber manufacture as evidenced by Enomoto.
Applicant argue the part of the structure where the pressure is highest “is primarily determined by the structure.” However, Applicant own specification state this point is an “example” (See Instant PgPub 2024/0174562, page 5, paragraph [0108]), thus suggesting the portion where resin pressure is highest is not fixed. Further, the instant specification claims the resin builds down the taper and is only released to higher pressure once the taper stop and the hole expands again (See instant PgPub, page 5, paragraph [0106]-[0107] and Figs. 5-6). As stated in the previous rejection, Examiner submits that, since the chamber in Tomlinson et al. tapers towards the bottom (See Fig. 4), a low viscosity resin, fed at a low flow rate, and with a high fiber conveyance rate will cause the high-pressure region to occur somewhere close to or at the bottom outlet since there is no expanded diameter in Tomlinson, and thus pressure will predictably build until it is released upon exiting. As previously asserted, Examiner submits that it at least would have been obvious to a person having ordinary skill in the art at the time of invention to enable Z-alignment over a larger region around the outlet to ensure alignment flexibility in different processes. Applicant’s argument that the alignment can only be below the hole and note above, does not make sense and is not supported by the reference or common sense. The drawing does not equate to a teaching of adjustment only below the outlet. See MPEP 2125. Adjustment around the hole would be required since the axis could possibly be off in either direction and it is highly likely the highest resin pressure area could have been just above the exit point in Tomlinson. Further, the exit point itself is considered a location of the highest pressure since there can be no pressure release before this point and thus pressure will continue to build down the orifice in Tomlinson.
For the above reasons, the rejections are not overcome.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7 and 10 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 7 and 10 recite the exact same device as Claims 1 and 3 with a different intended use. When a preamble merely recites the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the structural limitations are able to stand alone, the preamble is not accorded any patentable weight. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Since the device of Claims 1 and 3 necessarily can coat glass fibers, it can necessarily make optical fibers if an optical fiber and coating, which are not part of the devices of any of claims 1, 3, 7 and 10, is utilized in any of the devices to make such an optical fiber. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 (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.
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 and 3-7, 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tomlinson et al. (US 4,631,078) and in view of Enomoto et al. (WO 2021/153765, wherein all citations are to US2023/0150870, which serves as an English translation).
Regarding Claims 1, 3, 7, and 10, Tomlinson et al. teach a resin coating device (See col. 1, lines 5-6, indicating the device is for coating fibers, i.e. a resin coating device), comprising:
a resin application portion [6] having an insertion hole (See Figs. 1 and 4) through which a glass fiber [36’] is inserted in an axial direction, and for applying a resin [10E] onto an outer circumference of the glass fiber in the insertion hole (See Fig. 4 and col. 3, lines 36-43);
a Θx rotation mechanism rotating the resin application portion with a Θx axis orthogonal to a central axis of the insertion hole as a central axis of rotation; and a Θγ rotation mechanism rotating the resin application portion with a Θγ axis orthogonal to both of the central axis of the insertion hole and the Θx axis as a central axis of rotation, wherein the Θx rotation mechanism and the Θγ rotation mechanism are configured such that a rotation center, which is an intersection of the Θx axis and the Θγ axis, is located at the outlet (See col. 2, lines 23-27 and col. 2, line 46 to col. 3, line 13, wherein the an x and y rotation orthogonal to the central axis is implemented by electric actuators [14],[15], wherein these electric actuators and associated framework implementing rotation are the rotation mechanisms as claimed, and intersection of the axes is aligned to be “level with x and y tilt axes” and at the outlet; Examiner notes such a location is necessarily upstream of any downstream die outlet).
Tomlinson et al. teaches coating optical fibers (See col. 1, lines 5-6), but fails to teach a downstream second die to apply a second coating over the first coating. However, subsequently coating using a separate die, i.e. a second die downstream from the first die, is well-known in optical coatings including when there is x-y tilting the die, such as to add color, including in in-line alignments where the optical fiber passes through multiple dies to receive the coatings (See, for example, Enomoto et al., page 6, paragraphs [0052]-[0053] and page 7, paragraph [0065], teaching “a plurality of stages of resin coating devices may be arranged in a longitudinal direction of the coated fiber 120 to be wound around a drum;” and indicating dies that provide further coatings after a first coating may be each tiltable, and each applying coatings to optical fiber [120]). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize a second die downstream the die in Enomoto et al. Doing so is common in optical fibers such as Enomoto et al. would have predictably applied a second coating with a different function, such as a colored layer. The rotation center of the upstream die, such as a die in Tomlinson, must be upstream of the outlet of any downstream die.
Regarding Claims 3 and 10, Tomlinson et al. further teaches the vertical alignment of the center points of the x and y axes relative to the exit orifice is adjustable vertically relative to the orifice by adjusting the height of the orifice with a linear actuator (See col. 3, lines 8-13). This adjustment capability implies or at least renders obvious the device is capable of setting this alignment around the outlet where alignment is desired, including setting the x-y center point upstream or downstream of the outlet by moving the chamber [10], even if only 1 mm.
Examiner notes Claim 3 necessarily serves as a structural limitation of the device, but the location of the highest resin pressure is not limited by structure and is not a fixed point. Instead, it is dependent on resin characteristics such as viscosity, resin temperature, resin flow rate, and fiber line speed. Since the resin, flow rate, and fiber line speed are not claimed, the location in a device such as is described is at least somewhat variable based on any range of these factors that could theoretically be implemented, and thus the Examiner submits, absent further structure, the possibility that the device aligns the axes at any location where high pressure could occur will read on the structure as claimed.
Examiner submits that, since the chamber in Tomlinson et al. tapers towards the bottom (See Fig. 4), a low viscosity resin, fed at a low flow rate, and with a high fiber conveyance rate will cause the high-pressure region to build until it is released at the bottom outlet. The instant specification supports this and teaches the resin builds down the taper and is only released to higher pressure once the taper stops and the hole expands again (See instant PgPub, page 5, paragraph [0106]-[0107] and Figs. 5-6). The pressure release portion in Tomlinson would thus appear at the exit outlet, or at the very least, it could have been at this location because there is no orifice expansion allowing pressure release prior to this exit.
Further, Examiner submits that it at least would have been obvious to a person having ordinary skill in the art at the time of invention to enable Z-alignment over a region around the outlet to ensure alignment flexibility in different processes. As described above, this capability of the chamber aligning to a put where high pressure occurs, even if not the intended operating condition, nonetheless recites a structure that read of the device structure claimed. Note Claim 3 does not imply the axis alignment of the rotation axes at is fixed and not adjustable to the location. The z-alignment actuator and bottom oriented taper in the hole (See Fig. 4) surely render this obvious for the reasons above, and further, it seems the outlet itself is certainly the location of the highest pressure point of the resin based on Applicant’s own teaching pressure increases down the orifice until the diameter expands again, which never occurs in Tomlinson.
Regarding Claims 6 and 9, as described above, electric actuator and associated framework implementing rotation are the rotation mechanisms as claimed. Tomlinson et al. discloses a first rotation mechanism including a pivot (X) and actuator [15] configured to rotate the chamber about an x-axis, and a second rotation mechanism including a pivot and actuator [14] configured to rotate the chamber about a y-axis orthogonal to the x-axis (See col. 2, line 51 to col. 3, line 2). These pivot and actuator arrangements constitute rotation mechanisms that rotate the applicator about respective axes, as claimed. Rotation about a fixed axis inherently causes the rotated body to move along a circular arc at a distance (radius) from the axis of rotation. Accordingly, the rotation about the θx axis corresponds to the claimed rotation stage rotatable within a plane normal to the θx axis, and the rotation about the θy axis inherently provides movement of the applicator along an arc surface at a distance from the θy axis, corresponding to the claimed swivel stage. Therefore, Tomlinson et al. disclose the rotation and swivel stage as claimed. Nothing in the claim requires them to have a distinct rotation mechanism (except for the direction) as long as the rotation occurs as claimed, which it does in Tomlinson et al.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT W DODDS/Primary Examiner, Art Unit 1746
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