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 .
Examiner’s Note
The Examiner acknowledges the amendments of claim 1. Claim 11 has been withdrawn from consideration. Claims 1 – 10 are examined herein.
Claim Objections
Claim 4 is objected to because of the following informalities:
With regard to claim 4, the recited “carbon particle” should be in the plural form: “carbon particles.”
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Okamura et al. *(JP 06-299072 A), in view of Okamura et al. *(JP 07-191232 A).
*Submitted by Applicant with IDS filed 12/13/ 2023
With regard to claim 1, Okamura et al. (‘072) teach a ferrule formed with an optical fiber insertion hole into which an optical fiber is inserted (paragraph [0001] – [0005]). The ferrule comprises a resin composition containing polyphenylene sulfide (i.e., “a thermoplastic resin and inorganic filler (paragraphs [0007] – [0008]). An inorganic filler, such as silica (i.e., “coarse particles”), has a particle size of the mean 1 – 30 µm (paragraph [0009]), which is within Applicant’s claimed range of 50 µm or less.
Okamura et al. (‘072) do not teach the presence of inorganic filler in the form of aggregates. However, claim 1 recites the presence of inorganic filler in the form of aggregates as an option, not as a requirement. Therefore, the teachings of Okamura et al. (‘072) meet Applicant’s claim limitation of optional aggregates of 50 µm or less.
Okamura et al. (‘072) teach the presence of carbon black particles (paragraph [0010]). However, Okamura et al. (‘072) do not teach the size of the carbon black particles.
Okamura et al. (‘232) teach a ferrule comprising carbon fine particles having a particle diameter of 0.1 – 150 µm (paragraph [0012]), more particularly 1 – 50 µm, and hardly any aggregates present (paragraph [0015]). Carbon fine particle with a diameter of 1 – 50 µm have excellent fluidity and dispersibility in a polyphenylene sulfide resin and can be blended in a large amount (paragraphs [0014] – [0015]).
Therefore, based on the teachings of Okamura et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to use carbon black particles with a diameter of 1 – 50 µm in the ferrule taught by Okamura et al. (‘072) for excellent fluidity and dispersibility in the polyphenylene sulfide resin composition.
With regard to claim 2, as discussed above for claim 1, Okamura et al. (‘072) teach silica has a particle size of the mean 1 – 30 µm (paragraph [0009]), which overlaps with Applicant’s claimed range of 25 µm or less.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 3, as discussed above for claim 1, Okamura et al. (‘072) teach has a particle size of the mean 1 – 30 µm (paragraph [0009]), which is within Applicant’s claimed maximum particle size (D100) range of 50 µm or less.
With regard to claim 4, Okamura et al. (‘072) fail to teach a maximum particle size D100 of the carbon particles is 50 µm or less. As discussed above in claim 1, Okamura et al. (‘232) teach a ferrule comprising carbon fine particles having a particle diameter of 0.1 – 150 µm (paragraph [0012]), more particularly 1 – 50 µm (paragraph [0015]).
With regard to claim 5, as discussed above for claim 1, Okamura et al. (‘072) teach has a particle size of the mean 1 – 30 µm (paragraph [0009]). Therefore, 10% or more of the particles have a size of 1 µm or more (i.e., “a cumulative 10% particle size D10 of the silica particles”).
With regard to claim 6, Okamura et al. (‘072) fail to teach a cumulative 10% particle size D10 of the carbon particles is 1 µm or more. As discussed above for claim 1, Okamura et al. (‘232) teach a ferrule comprising carbon fine particles having a particle diameter of 0.1 – 150 µm (paragraph [0012]), more particularly 1 – 50 µm (paragraph [0015]). As such, the cumulative 10% particle size D10 of the carbon particles is 1 µm or more.
With regard to claim 7, Okamura et al. (‘072) teach the silica powder is present in the amount of 120 – 240 parts by mass based on 100 parts by weight of the polyphenylene sulfide resin (paragraph [0010]), which overlaps with Applicant’s claimed range of 150 – 400 parts by mass silica particles per 100 parts by weight of thermoplastic.
Furthermore, Okamura et al. (‘072) teach carbon black is present in the amount of 2 parts by weight or less per 100 parts by weight of polyphenylene sulfide resin (paragraph [0010]), which overlaps with Applicant’s claimed range of 0.5 – 4 parts by mass of carbon particles per 100 parts by weight of thermoplastic.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 8, Okamura et al. (‘072) teach the silica powder is present in the amount of 120 – 240 parts by mass based on 100 parts by weight of the polyphenylene sulfide resin (paragraph [0010]), which overlaps with Applicant’s claimed range of 150 – 300 parts by mass silica particles per 100 parts by weight of thermoplastic.
Furthermore, Okamura et al. (‘072) teach carbon black is present in the amount of 2 parts by weight or less per 100 parts by weight of polyphenylene sulfide resin (paragraph [0010]), which overlaps with Applicant’s claimed range of 0.5 – 1.5 parts by mass of carbon particles per 100 parts by weight of thermoplastic.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 9, Okamura et al. (‘072) teach the presence of carbon black particles (paragraph [0010]).
With regard to claim 10, Okamura et al. (‘072) teach the silica particles may be obtained by melting (i.e., “amorphous”) (paragraph [0009]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 19/036,098 (reference application), in view of Okamura et al. (‘072).
Although the claims at issue are not identical, they are not patentably distinct from each other for the following reason:
With regard to claim 1, 19/036,098 recites “an optical connector ferrule inside which an optical fiber is fixed…the ferrule comprising:
“A hole into which the optical fiber is to be inserted; …wherein the ferrule is formed from a resin composition, which is a thermoplastic resin added with a filler material including at least inorganic particles (claim 1)…wherein a particle size distribution D100 of the inorganic particles is 60 µm or less” (claim 5).
‘098 do not recite the presence of inorganic filler in the form of aggregates. However, claim 1 recites the presence of inorganic filler in the form of aggregates as an option, not as a requirement.
‘098 do not recite in claim 1 or claim 5 the filler containing at least silica particles and carbon particles.
Okamura et al. (‘072) teach a ferrule comprising inorganic filler particles, wherein the inorganic filler particles are composed of silica and carbon black particles for the benefit of providing dimensional stability, small linear expansion coefficient, and good adhesion to the thermoplastic resin (paragraphs [0009] - [0010]).
Therefore, based on the teachings of Okamura et al. (‘072), it would have been obvious to one of ordinary skill in the art prior to the effective filing date to use silica and carbon black as the inorganic filler particles recited in App. No. 19/036,098 for the desired properties of dimensional stability, small linear expansion coefficient, and good adhesion to the thermoplastic resin.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant argues, “…amended claim 1 now requires that a size of coarse particles originated from the filler is 50 µm or less, and a size of aggregates originated from the filler is 50 µm or less. Further, claim 1 now explicitly defines the aggregates as being the aggregates silica particles, carbon particles or both. These amendments are supported, for example, by paragraphs [0021] – [0025], [0035] and [0038]” (Remarks, Pg. 5).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, contrary to Applicant’s assertion, claim 1 does not recite a ferrule comprising both coarse particles and aggregates. A composition for a ferrule without aggregates has an aggregate size of zero microns, which is less than 50 microns. Claim 1 is interpreted as a ferrule comprising filler present contains silica particles and carbon particles, whether in the form of coarse particles or in the form aggregates, wherein ferrule comprises filler particles that have a size of 50 µm or less, and in instance of aggregates present, the aggregates contain silica particles, carbon particles or both. Therefore, Applicant’s claim 1 does not require the presence of aggregates.
Second, paragraphs [0021] – [0025] & [0035] do not teach or discuss aggregates. Paragraph [0025] discusses preferred embodiments for preventing the assembly of aggregates from fine particles (although the term “fine particles” is not clearly defined). Paragraph [0038] uses the same language as original claim 1, wherein “the size of course particles originated from the filler is 50 µm or less or the size of the aggregates originated from the filler is 50 µm or less.” There is no clear teaching in Applicant’s specification of a single embodiment of a ferrule comprising both coarse particles and aggregates. See paragraphs [0016], [0038], & [0042]. Furthermore, Tables 1 – 2 do not teach or suggest the presence of aggregates and the corresponding discussion in paragraphs [0043] – [0051] of the examples suggest coarse particles and aggregates as the same entity, not as the separate and distinct entities recited in Applicant’s claim 1.
Applicant argues, “Okamura ‘232 does not disclose a ferrule resin composition in which the filler contains both silica particles and carbon particles, as now required by amended claim 1” (Remarks, Pg. 5).
EXAMINER’S RESPONSE: In light of Applicant’s amendments of claim 1, the rejection over Okamura et al. (‘232) under 35 U.S.C. 102 has been withdrawn.
Applicant argues, “…Maeno et al. focuses on silica including spherical silica and irregular shaped silica, and barium titanate. However, this reference does not disclose the use of carbon particles (such as carbon black) as part of the filler system for optical ferrules. Accordingly, Maeno et al. also fails to disclose a ferrule resin composition in which filler contains both silica particles and carbon particles, as required by amended claim 1” (Remarks, Pgs. 5 – 6).
EXAMINER’S RESPONSE: In light of Applicant’s amendments of claim 1, the rejection over Maeno et al. under 35 U.S.C. 102 has been withdrawn.
Applicant argues, “Even assuming Okamura ‘072 discloses a composition including both silica and carbon black as the Office Action asserted, Okamura ‘072 does not disclose the additional limitations of amended claim 1 requiring that the size of the coarse particles originated from the filler is 50 ums or less, and the size of aggregates originated from the filler is 50 µm or less” (Remarks, Pg. 6).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As discussed above, Applicant’s claim 1 does not require a ferrule comprising both coarse particles and aggregates.
Applicant argues, “In particular, the Office Action relies on Okamura ‘072’s disclosure in paragraph [0009] of a silica particle size described in terms of a mean size range as meeting the coarse-particle size limitation. However, a disclosure of a mean particle size does not, by itself, describe the presence of absence of larger ‘coarse particles’ exceeding a threshold size. Similarly, mean particle size does not establish that course particles originated from the filler in the molded ferrule are limited to 50 µm or less” (Remarks, Pg. 6).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Okamura et al. (‘072) explicitly states “the silica used in the present invention may be crystalline or obtained by melting, but the particle size is within the range of the mean 0.5 – 100 µm, particularly preferably from 1 to 30 µm,” wherein the maximum mean value of the particle size of 30 µm taught by the prior art is substantially lower than Applicant’s claimed upper endpoint of 50 µm for the particle size of filler particles. Furthermore, a mean particle size of 1 µm is substantially lower than Applicant’s claimed upper endpoint of 50 µm for the particle size of filler particles. As such, the reference teaches particles originated from the filler in the range of 50 µm or less.
Second, Applicant’s claim 1 uses the terms “comprising” and “containing” without any negative claim limitations. Therefore, contrary to Applicant’s assertion, claim 1 does not require the “absence of larger ‘course particles’ exceeding a threshold size” of greater than 50 µm. The claim requires course particles or aggregates of 50 µm or less be present in the ferrule and does not preclude the presence of particles greater than 50 µm.
Third, Okamura et al. (‘032) teach fine carbon particles with particle diameter (not a mean) distributed in the range of 1 – 50 µm and aggregates of said (carbon) particles hardly occurs (paragraph [0015]).
Applicant argues, “Moreover, Okamura ‘072 does not disclose the size of aggregates originated from the filler in the molded ferrule, much less that such aggregates are limited to 50 µm or less. Paragraphs [0017] – [0018] of Applicant’s specification describes aggregates and coarse particles as features observed in the ferrule material. Further, paragraphs [0022] – [0025] and [0038] of the specification explain that controlling filler particle size distribution is used to prevent incorporation of coarse particles and formation of aggregates. Okamura ‘072 does not disclose the aggregate-size limitation now required by amended claim 1” (Remarks, Pgs. 6 – 7).
Applicant argues, “Amended claim 1 further clarifies that aggregates include at least one of aggregates of silica particles, aggregates of carbon particles, and aggregates of silica particles and carbon particles. Okamura ‘072 does not discuss formation or size control of such aggregates in the molded ferrule material” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As discussed above, Applicant’s claim 1 does not require the presence of both coarse particles and aggregates in the ferrule.
Second, paragraphs [0017] – [0018] of the specification discusses the details of the coarse particles and the aggregates as discussed in paragraph [0016], wherein paragraph [0016] explicitly discloses “the ferrule 10 is such that the size of coarse particles originated from the filler is 50 µm or less or the size of aggregates originated from the filler is 50 µm or less…” In other words, paragraphs [0017] – [0018] of the specification does not support Applicant’s assertion of support for the presence of both coarse particles and aggregate in a single embodiment of the ferrule material.
Third, as discussed above, Okamura et al. (‘232) teach a ferrule comprising carbon fine particles having a particle diameter of 0.1 – 150 µm (paragraph [0012]), more particularly 1 – 50 µm, and hardly any aggregates (of carbon) present (paragraph [0015]).
Fourth, Applicant’s claim 1 does not require both the silica particles and the carbon particles also be the same particles of the filler that have a particle size of 50 µm or less.
Applicant argues, “Still further, paragraph [0009] of Okamura ‘072 describes the silica as being surface treated with silane coupling agent (e.g., glycydylsilane/glycidoxysilane or aminosilane). Okamura ‘072 does not describe any corresponding treatment of the carbon black. This absence of such disclosure in Okamura ‘072 further supports the Okamura ‘072 does not teach or suggest the formation and size control of aggregates involving both silica particles and carbon particles in the molded ferrule material” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, as discussed above, Applicant’s claim does not require the presence of aggregates.
Second, Okamura et al. (‘232) teaches fine carbon particles within Applicant’s claimed range and hardly any aggregates of said carbon particles.
Third, as taught in Applicant’s specification, a silane coupling agent treatment applied to particles (specification, paragraph [0033]) do not appear to have any effect on aggregation of said particles.
Applicant argues, “With respect to the provisional nonstatutory double patenting rejection over claim 5 of copending Application No. 19/036,098, Applicants respectfully submit that amended claim 1 recites additional limitations directed to a different configuration than that of the copending claim. For example, aended claim 1 requires a filler containing at least silica particles and carbon particles, and further requires that the ferrule material satisfies both a coarse-particle size limitation and an aggregate-size limitation (each 50 µm or less). Claim 5 cited in the Office Action does not recite these limitations” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. The obviousness-type double patenting rejection over copending App. No. 19/036,098 has been modified to take into account Applicant’s amended subject matter of claim 1. As discussed above, Applicant’s claim 1 does not require the presence of aggregate.
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 NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
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