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
Response to Amendment
Applicant’s Amendment filed on July 7, 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 1-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Bookbinder et al. (US 2019/0293885 A1 from Applicant’s Information Disclosure Statement filed December 11, 2023).
Regarding claim 1, Bookbinder discloses an optical fiber cable (10 in Fig. 1), comprising: a cable jacket (12) comprising an inner surface and an outer surface, the inner surface defining a central cable bore and the outer surface defining an outermost surface of the optical fiber cable and a cable cross-sectional area; at least one buffer tube (22) disposed within the central cable bore, each buffer tube of the at least one buffer tube comprising an interior surface defining a buffer tube cross-sectional area; a plurality of optical fibers (20) disposed within the at least one buffer tube wherein a number of the optical fibers within each of the at least one buffer tube is greater than 12 (paragraph 0037); and wherein the plurality of optical fibers comprise a total fiber area AF (See Figs. 1, 2A-2C).
Still regarding claim 1, Bookbinder further discloses each optical fiber of the plurality of optical fibers comprises a fiber diameter of less than 210 microns (paragraph 0042). Bookbinder teaches the claimed invention except for specifically stating a fiber diameter of 190 microns to 200 microns. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed diameter in order to accommodate a wider range of optical fibers, 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.
Still regarding claim 1, Bookbinder teaches the claimed invention except for specifically stating the free space and fiber density. However, Bookbinder discloses in paragraph 0026 that bend losses are greater when optical fibers are densely packed and buffer tubes should include a significant amount of free space to assume low stress positions. As such, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed free space and fiber density in order to transmit a plurality of optical signals with low losses, 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 2, Bookbinder discloses the at least one buffer tube comprises six or more buffer tubes in Fig. 1.
Regarding claim 3, Bookbinder discloses the plurality of optical fibers comprises up to thirty-six optical fibers in paragraph 0037.
Regarding claim 4, Bookbinder teaches the claimed invention except for specifically stating a fiber density from 3.5 fibers/mm2 to 6 fibers/mm2. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed fiber density, 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 5, Bookbinder discloses the buffer tubes are disposed around a central strength member (24) in Fig. 1.
Regarding claim 6, Bookbinder discloses each optical fiber of the plurality of optical fibers comprises a germania-doped silica core (paragraph 0099) and a fluorine-doped silica trench (paragraph 0078).
Regarding claim 7, Bookbinder discloses the fluorine-doped silica trench is rectangular in Fig. 10.
Regarding claim 8, Bookbinder teaches the claimed invention except for the trench being triangular. However, different shaped trenches are well-known and commonly used in the art of optical fibers and as such, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to use a triangular-shaped trench as a matter of obvious design choice without inventive skill.
Regarding claim 9, Bookbinder discloses a trench volume of from 25% Δ microns2 to 70% Δ microns2 in paragraphs 0083-0084.
Regarding claim 11, Bookbinder discloses the optical fiber comprising a bend loss of less than 0.5 dB/turn at 1550 nm for one bend around a mandrel of diameter of 15 mm, a bend loss of less than 0.1 dB/turn at 1550 nm for one bend around a mandrel of diameter of 20 mm, and a bend loss of less than 0.003 dB/turn at 1550 nm for one bend around a mandrel of diameter of 30 mm (see paragraph 0086 and Table 2, Example 4). Further, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to minimize bend losses, 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 233.11.
Response to Arguments
Applicant's arguments, see pages 7-9, 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 7-8, Applicant states that Applicant’s specification explains the tradeoff between free space and fiber density and identifies a specific design window that balances fiber count, fiber diameter, free space, and cable density. However, identifying a “specific design window” is merely optimization within prior art conditions which can be achieved through routine experimentation. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Bookbinder recognizes the same tradeoffs of free space and fiber density in paragraphs 0026-0027. Bookbinder describes how “[b]end losses in such cables are caused, at least in part, by positional constraint resulting from the dense packing which limits the ability of optical fibers to shift to assume low strain positions during bending, compression, etc.” Bookbinder then states the need for a significant amount of free space within a cable, because the “free-space allows the optical fibers to move or shift to assume low stress positions during bending.” Thus, Bookbinder establishes the general conditions of claim 1. One having ordinary skill based on the teachings of Bookbinder would find it obvious to arrive at a particular design window depending on the constraints of the application.
Further, Applicant’s specification does not show that the particular range is critical, as there is showing that the claimed range achieves unexpected results relative to the prior art range. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). “It is well established that, while a change in the proportions of a combination shown to be old, such as is here involved, may be inventive, such changes must be critical as compared with the proportions used in the prior processes, producing a difference in kind rather than degree.”; In re Wells, 56 F.2d 674, 675, 12 USPQ 430 (CCPA 1932).
Since Bookbinder establishes the general conditions of the claim, as well as all of the structural elements as detailed above, claim 1 remains prima facie rejected.
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 extension fee 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 date of this final action.
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 September 9, 2026
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