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 .
Drawings
The drawings submitted 21 April 2026 have been reviewed and determined to facilitate understanding of the invention.
The objection to the drawings set forth in the previous Office Action, mailed 23 January 2026 is withdrawn.
Response to Arguments
Applicant's arguments (“Remarks/Arguments”), filed 21 April 2026, have been fully considered.
Applicant’s arguments regarding the rejection of Claims 1-6 under 35 U.S.C. § 112(b) are not persuasive.
Applicant argues that under a “broadest reasonable interpretation” construction, the term “low surface roughness” may be “evidenced by a variety of sources, including the words of the claimed themselves, the specification, drawings and prior art.” (see Remarks/Arguments at pages 6-7, quoting MPEP § 2111.01). Applicant additionally cites Patent Application Publication US 2009/0208175 A1 to Hongo et al. (“US1”) as defining “low surface roughness” as “a surface roughness of the surface 16a of the Au thin film 16 is in the same level as the surface roughness of the inner wall surface of the glass capillary 11” (see Remarks/Arguments at page 7, citing US1 at [0123]).
MPEP § 2173.05(b) discusses the use of relative terminology in claim language, stating, “Acceptability of the claim language depends on whether one of ordinary skill in the art would understand what is claimed, in light of the specification.”
“Low surface roughness” is defined nowhere in Applicant’s specification. Applicant provides no means or test for determining what degree of surface roughness is “low.”
Even considering Applicant’s citation to US1, the paragraph [0123] does not describe the surface roughness of the thin film as “low;” it only states that the surface roughness of thin film is the same that of the inner wall of the glass capillary. The inner wall of the glass capillary of US1 is described as, “sufficiently smooth with respect to the wavelength of the light propagated through the hollow region.” (see US1 at [0111]). Even assuming that “smooth” is the same as “low surface roughness,” US1 does not provide any means for determining what level roughness may be considered “low.”
One of skill in the art would not understand how low the roughness of a waveguide must be in order to be considered to have “low surface roughness” as claimed.
Therefore, the claim language of Clams 1-6 is indefinite.
Applicant’s arguments regarding the rejection of Claim 2 under 35 U.S.C. § 112(b) are not persuasive.
Applicant argues that under a “broadest reasonable interpretation” construction, the term “semi-flexible” may be “evidenced by a variety of sources, including the words of the claimed themselves, the specification, drawings and prior art.” (see Remarks/Arguments at page 7, quoting MPEP § 2111.01). Applicant additionally cites several online dictionaries providing definitions of “semiflexible” as “moderately or somewhat flexible”, “somewhat flexible”, and “partially flexible (and partially rigid).” The examiner stipulates that “semiflexible” or “semi-flexible” may be defined and “somewhat flexible” or “partially flexible.”
This definition, however, does not provide a standard, or test for one of ordinary skill in the art to determine what is claimed, in light of the specification, as required by MPEP § 2173.05(b). One of skill in the art would not understand how flexible a glass capillary must be in order to be considered “semi-flexible” as claimed.
Therefore, the claim language of Clam 2 is indefinite.
Applicant’s arguments regarding the rejection of Claims 1-4 and 6 under 35 U.S.C. § 102 and/or 35 U.S.C. § 103 are not persuasive.
Applicant argues that US1 does not describe “a glass capillary tube having an outer surface and an inner surface defining a hollow core having a diameter of about 300mm” and that it would not have been obvious to modify the capillary of US1 such that the hollow core had a diameter of about 300 mm (see Remarks at pages 8-10).
Applicant is correct that US1 does not describe the claimed capillary tube having a diameter of about 300mm.
Applicant argues that the claimed diameter of 300mm is critical for the transmission of visible wavelengths, as opposed to the larger diameter of US1 used for the transmission of infrared wavelengths (see Remarks at page 9).
However, it is not necessary that the prior art suggest the same advantage or result discovered by applicant in order to support a rejection under 35 U.S.C. §103 (see MPEP § 2144.IV). Further, legal precedent may provide a rational supporting obviousness where the facts of the case are sufficiently similar to those in the application (see MPEP § 2144.III).
As set forth in the previous Office Action, a change in size is generally recognized as being within the level of ordinary skill in the art (see paragraph 24, citing In re Rose, 105 USPQ 237 (CCPA 1955)). In that case, the court the court found that similar structures having different sizes were not patentably distinct where they function in a similar manner. In this case, the structures of US1 and the claimed waveguide are substantially similar. The only difference relates to the size of the core. The waveguide of US1 functions to guide light in a similar manner to Applicant’s waveguide (see US1 at [0067], [0088], [0104] and Applicant’s Specification at [0025]). That the size of the cores of the different inventions allows for the guidance of different wavelengths does not change that they both function with similar structures and principles.
In fact, a desire to guide light of different wavelengths provides would provide a motivation to one of ordinary skill in the art for altering the diameter of the waveguide of US1 because the diameter size is the determining factor in determining the wavelength guided by the described structure.
Therefore, Claims 1-4 and 6 are obvious in view of US1.
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 1-4, 6, and 22 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.
The term “low surface roughness” in Claim 1 is a relative term which renders the claim indefinite. The term “low surface roughness” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, it is not possible to determine whether a waveguide has a surface which anticipates the claim limitation. For examination purposes, any waveguide having the claimed structure of Claim 1 shall be considered to have a “low surface roughness.”
Claims 2-4 and 6 depend from Claim 1 and do not remedy the indefiniteness of Claim 1. Therefore, Claims 2-6 are indefinite for the same reasoning.
The term “semi-flexible” in Claims 2 and 22 is a relative term which renders the claim indefinite. The term “semi-flexibility” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, it is not possible to determine whether a given glass capillary tube anticipates the claim limitation. For examination purposes, a glass capillary tube having any flexible properties shall be considered to be “semi-flexible.”
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.
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.
Claims 1-4, 6, and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over US1.
Regarding Claim 1, US1 describes a waveguide (1B, see Fig 6) having low surface roughness, adapted to minimize loss and noise while producing a circular beam that can be used in the visible or short-wave spectral regime, the waveguide comprising:
a glass capillary tube (11, see [0068]) having an outer surface and an inner surface defining a hollow core (14, see [0110]);
a metal layer (12, see [0104]) deposited on at least the inner surface; and
a polymer layer (15, see [0104]-[0105]) overcoat deposited on at least the metal layer and in fluid communication with the hollow core.
US1 does not describe the hollow core having a diameter of about 300µm. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to form the hollow core and capillary tube of US1 having the claimed dimensions, since such a modification would have involved a mere change in the size of a component. 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). Further, one of ordinary skill in the art would be motivated to alter the diameter of the waveguide as currently claimed in order to guide different wavelengths of light.
Regarding Claim 2, US1 describes the glass capillary tube is comprised of a semi-flexible glass capillary (see [0068]).
Regarding Claim 3, US1 describes the metal layer is a silver metal plate plated on the inner surface of the glass capillary tube (see [0069], [0104]).
Regarding Claim 4, US1 describes the polymer layer is comprised of a cyclic olefin copolymer (see [0104]).
Regarding Claim 6, US1 does not describe the glass capillary tube as about 1 meter in length. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to form the hollow core and capillary tube of US1 having the claimed dimensions, since such a modification would have involved a mere change in the size of a component. 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). Further, one of ordinary skill in the art would be motivated to alter the length of the waveguide as currently claimed in order to allow for connection of optical components at a given distance from each other.
The limitations of Claims 21-24 are discussed herein in relation to Claims 6, 2, 3, and 4, respectively, incorporating independent Claim 1, which Claims 6, 2, 3, and 4 depend. Therefore, Claims 21-24 are obvious in view of US1 for the reasoning set forth above herein.
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 JERRY RAHLL whose telephone number is (571)272-2356. The examiner can normally be reached M-F 9:00am-5:00pm.
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, Uyen-Chau Le can be reached at 571-272-2397. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JERRY RAHLL/Primary Examiner, Art Unit 2874
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