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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-3, 5-12, 14, and 16-21, in the reply filed on 07-23-2025 is acknowledged. The traversal is on the ground(s) that (a) national stage applications have unity of invention if they are drawn to a product and a process specially adapted for the manufacture of said product, and (b) claims 15 and 22 are dependent claims. This is not found persuasive because, regarding argument (a), while the cited combinations of categories allows for possible unity of invention, determination of unity of invention is still also subject to evaluation of common special technical features. In this case, the claims fall under an eligible combination of categories, but the groups lack a special technical feature a posteriori as described in the restriction requirement. This is also not found persuasive because, regarding argument (b), claims 15 and 22 are not dependent claims. They are product-by-process claims that are referencing steps of a method claim. However, as also described in the original restriction requirement, the patentability of a product does not depend on its method of production, but is based on the product itself. See MPEP 2113. Thus the limitations of claims 15 and 22 are limited to structure that may be implied by the method steps of claims 1 and 12, respectively, and do not actually include the method steps themselves.
The requirement is still deemed proper and is therefore made FINAL.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3, 5-10, and 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites “the elongated intermediate PCF is less than 10 m.” First, it is unclear what dimension of the elongated intermediate PCF is being measured. Examiner infers that it intends to measure longitudinal length. Second, it is unclear which part of the structure, at which point in the process, is considered to be the “elongated intermediate PCF”. The elongating step is recited to include repetitions of drawing and cutting, such that the intermediate PCF would have different varying lengths during each drawing step and after each cutting step.
Claims 5 and 14 each recite a “length of each individually drawn PCF” “prior to the cutting”. This is unclear because a length of an individual PCF would not be defined until it is cut, thereby creating the individual PCF. Prior to cutting, it is still a continuous part of the intermediate PCF. It is not clear how to determine where the claimed length would be measured.
Claim 6 recites “its outer fiber diameter”, with reference to the intermediate PCF. It is unclear if this is referring the “initial outer fiber diameter” as recited in claim 1, line 3, or to some other diameter created in the elongating.
Claim 8 recites the limitation "the intermediate HC-PCF" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the claim will be interpreted to read --the intermediate PCF--.
Claim 10 recites “the outer fiber diameter”. It is unclear if this is referring the “initial outer fiber diameter” as recited in claim 1, line 3, or to some other previously unrecited diameter created in the elongating. If it is a newly recited diameter, Examiner recommends --an outer fiber diameter--.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3, 5-9, 11-12, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakazawa ‘023 (JP 2005-250023 A – English language translation provided herewith and referenced herein) in view of Sandoghchi ‘708 (US 2023/0011708 A1).
Regarding claim 1, Nakazawa ‘023 teaches a method of producing PCFs (¶ [0001]) comprising:
obtaining an intermediate PCF (“preform”, ¶ [0015]; “PCF base material 13” ¶ [0024]-[0025])
elongating the intermediate PCF so as to controllably reduce at least one dimension of the intermediate PCF (¶ [0024]-[0038])
the elongating comprises drawing a length of the intermediate PCF to reduce at least one dimension of the length, and cutting the length from the intermediate PCF when drawn (¶ [0024]-[0038]).
Nakazawa ‘023 does not explicitly describe repetitions of drawing a length and cutting the length. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Nakazawa ‘023 by repeating the drawing a length and cutting a length for the benefit of making more than on PCF.
Nakazawa ‘023 is silent regarding an initial outer fiber diameter of the intermediate PCF. In analogous art of drawing glass fibers, Sandoghchi ‘708 suggests obtaining an intermediate fiber that is then elongated and drawn into a final fiber (“canes”, ¶ [0031]). Sandoghchi ‘708 suggests that such a process can be used with a variety of internal fiber microstructures, including PCFs (¶ [0038]-[0039], [0090]; Fig. 3), and with initial outer fiber diameters of the intermediate fiber in a range from 100 µm to 20 mm (¶ [0091]). It has been held that where the claimed range overlaps or lies inside ranged disclosed by the prior art, a prima facie case of obviousness exists. Additionally, it has been held that 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. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Nakazawa ‘023 by selecting an initial outer fiber diameter in the range suggested by Sandoghchi ‘708 as known diameters for intermediate fibers for drawing into final fibers, wherein the range suggested by Sandoghchi ‘708 overlaps the claimed range.
Regarding claim 2, Nakazawa ‘023 is silent regarding the obtaining the intermediate PCF comprising producing the intermediate PCF from a cane using a fiber drawing process. Sandoghchi ‘708 suggests and intermediate fiber as described above, and further obtaining the intermediate fiber comprising producing the intermediate fiber from a cane using a drawing process (¶ [0031]-[0035]) for the benefit of producing clean end surfaces of the intermediate fiber (¶ [0030]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Nakazawa ‘023 by producing the intermediate PCF from a can using a fiber drawing process for the benefit of producing clean end surfaces of the intermediate PCF, as suggested by Sandoghchi ‘708.
Regarding claim 3, Nakazawa ‘023 and Sandoghchi ‘708 are silent regarding a length of the elongated intermediate PCF. However, the elongated intermediate PCF would necessarily have some size, including length. It has been held that a mere change in size of a component is generally considered as being within the ordinary skill in the art. See MPEP 2144.04. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Nakazawa ‘023 and Sandoghchi ‘708 by selecting a size, including length of the elongated intermediate PCF, to make the intermediate PCF of a workable size for drawing and to achieve a desired size of PCF.
Regarding claim 5, Nakazawa ‘023 teaches drawing a length as described above, but is silent regarding a length of each individually drawn PCF prior to the cutting. However, each PCF would necessarily have some length, and it has been held that a mere change in size of a component is generally considered as being within the ordinary skill in the art. See MPEP 2144.04. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Nakazawa ‘023 by selecting a length of each individually drawn PCF prior to the cutting for the benefit of obtaining a desired final length of PCF.
Regarding claim 6, Nakazawa ‘023 further teaches applying at least one pressure to one or more internal structures of the intermediate PCF so as to controllably change one or more internal dimensions of the intermediate PCF with respect to an outer fiber diameter while preforming the elongating (¶ [0020], [0024], [0027]-[0028], [0033]-[0038]).
Regarding claim 7, Nakazawa ‘023 further teaches the intermediate PCF comprises an intermediate hollow-core PCF which comprises a body having a hollow core surrounded by a plurality of capillaries, wherein each capillary encloses a capillary cavity formed by a wall portion of each of the plurality of capillaries and first and second ends of the intermediate HC-PCF (¶ [0002], [0015], [0025]; Fig. 1).
Regarding claim 8, Nakazawa ‘023 further teaches the applying comprises applying at least one pressure to a hollow core of the intermediate PCF (¶ [0015], [0020], [0024]-[0025]; Fig. 1).
Regarding claim 9, Nakazawa ‘023 further teaches the applying comprises applying at least one pressure to each of the plurality of capillaries of the intermediate HC-PCF (¶ [0002], [0015], [0020], [0024]-[0028]; Fig. 1).
Regarding claim 11, Nakazawa ‘023 teaches a method of producing PCFs (¶ [0001]) comprising:
obtaining an intermediate PCF (“preform”, ¶ [0015]; “PCF base material 13” ¶ [0024]-[0025])
producing a PCF from the intermediate PCF by drawing a length of the intermediate PCF to reduce at least one dimension of the length, and cutting the length from the intermediate PCF when drawn (¶ [0024]-[0038]).
Nakazawa ‘023 does not explicitly describe repetitions of drawing a length and cutting the length. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Nakazawa ‘023 by repeating the drawing a length and cutting a length for the benefit of making more than on PCF.
Nakazawa ‘023 is silent regarding an outer fiber diameter of the intermediate PCF. In analogous art of drawing glass fibers, Sandoghchi ‘708 suggests obtaining an intermediate fiber that is then elongated and drawn into a final fiber (“canes”, ¶ [0031]). Sandoghchi ‘708 suggests that such a process can be used with a variety of internal fiber microstructures, including PCFs (¶ [0038]-[0039], [0090]; Fig. 3), and with outer fiber diameters of the intermediate fiber in a range from 100 µm to 20 mm (¶ [0091]). It has been held that where the claimed range overlaps or lies inside ranged disclosed by the prior art, a prima facie case of obviousness exists. Additionally, it has been held that 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. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Nakazawa ‘023 by selecting an outer fiber diameter in the range suggested by Sandoghchi ‘708 as known diameters for intermediate fibers for drawing into final fibers, wherein the range suggested by Sandoghchi ‘708 overlaps the claimed range.
Regarding claim 12, Nakazawa ‘023 is silent regarding the obtaining the intermediate PCF comprising producing the intermediate PCF from a cane using a fiber drawing process. Sandoghchi ‘708 suggests and intermediate fiber as described above, and further obtaining the intermediate fiber comprising producing the intermediate fiber from a cane using a drawing process (¶ [0031]-[0035]) for the benefit of producing clean end surfaces of the intermediate fiber (¶ [0030]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Nakazawa ‘023 by producing the intermediate PCF from a can using a fiber drawing process for the benefit of producing clean end surfaces of the intermediate PCF, as suggested by Sandoghchi ‘708.
Regarding claim 14, Nakazawa ‘023 teaches drawing a length as described above, but is silent regarding a length of each individually drawn PCF prior to the cutting. However, each PCF would necessarily have some length, and it has been held that a mere change in size of a component is generally considered as being within the ordinary skill in the art. See MPEP 2144.04. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Nakazawa ‘023 by selecting a length of each individually drawn PCF prior to the cutting for the benefit of obtaining a desired final length of PCF.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakazawa ‘023 (JP 2005-250023 A – English language translation provided herewith and referenced herein) and Sandoghchi ‘708 (US 2023/0011708 A1) in view of Ananev ‘479 (WO 2008/152479 A1).
Regarding claim 10, Nakazawa ‘023 teaches elongating as described above, but is silent regarding elongating until an outer fiber diameter of the elongated intermediate PCF is 200 µm or less. In analogous art of producing PCFs, Ananev ‘479 suggests an outer fiber diameter of a drawn PCF is 200 µm or less (Abstract; Example 1, p. 12). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Nakazawa ‘023 by performing the elongating until an outer fiber diameter of the elongated intermediate PCF is 200 µm or less for the benefit of achieving a fiber diameter of a final PCF, as suggested by Ananev ‘479.
Claim(s) 1 and 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sandoghchi ‘708 (US 2023/0011708 A1).
Regarding claim 1, Sandoghchi ‘708 teaches:
obtaining an intermediate PCF (filament 10; ¶ [0039])
elongating the intermediate PCF so as to controllably reduce at least one dimension of the intermediate PCF, wherein the elongating comprises repetitions of drawing a length of the intermediate PCF to reduce at least one dimension of the length and cutting the length (cane portion 12) from the intermediate PCF when drawn (¶ [0031]-[0039], [0055]-[0059]; Figs. 3, 7-9).
Regarding an initial outer fiber diameter of the intermediate fiber, Sandoghchi ‘708 suggests that the disclosed process can be used with outer fiber diameters of the intermediate fiber in a range from 100 µm to 20 mm (¶ [0091]). It has been held that where the claimed range overlaps or lies inside ranged disclosed by the prior art, a prima facie case of obviousness exists. Additionally, it has been held that 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. See MPEP 2144.05.
Regarding claim 16, Sandoghchi ‘708 further teaches the drawing comprises heating the intermediate PCF (¶ [0042]-[0043], [0054]-[0055]). Sandoghchi ‘708 is silent regarding a specific size of a heating zone in the heating. However, Sandoghchi ‘708 suggests that size of the heating zone may be selected in order to deliver sufficient energy to the intermediate PCF to achieve desired softening and/or melting for cutting the length from the intermediate PCF (¶ [0042]-[0043], [0050], [0054]-[0055], [0091]). It has been held that 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. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Sandoghchi ‘708 by selecting a size of the heating zone for the benefit of delivering sufficient energy to the intermediate PCF to achieve desired softening and/or melting for cutting the length from the intermediate PCF, as suggested by Sandoghchi ‘708.
Regarding claim 17, Sandoghchi ‘708 further teaches the drawing a length comprises mounting the intermediate PCF on a first stage at or near a first end of the intermediate PF and on a second stage at or near a second end of the intermediate PCF (first clamp arrangement 24, Second clamp arrangements 26, Fig. 4; ¶ [0041]).
Regarding claim 18, Sandoghchi ‘708 further teaches the drawing a length further comprises heating at least one intermediate section of the intermediate PCF (¶ [0042]-[0043], [0054]-[0055]), the at least one intermediate section of the intermediate PCF being comprised between the position on the intermediate PCF at which the first stage is mounted and the position on the intermediate PCF at which the second stage is mounted (Figs. 4, 7-9; ¶ [0042], [0055]).
Regarding claim 19, Sandoghchi ‘708 further teaches the drawing a length further comprises moving the first stage and/or the second stage such that the first stage and the second stage are at respective different speeds (¶ [0057]-[0059], [0062]).
Regarding claim 20, Sandoghchi ‘708 further teaches the moving step comprises moving both the first stage and the second stage along the longitudinal direction in order to increase spacing between the first stage and the second stage (¶ [0057]-[0059], [0062]). This can only be achieved either by moving both stages in the same direction at different relative speeds, or by moving the stages in opposite directions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try moving the first stage and the second stage of Sandoghchi ‘708 in opposite directions as one of two finite options to achieve an increase in spacing between the stages via movement of the stages along the longitudinal direction, with a predictable result of separating the intermediate PCF.
Regarding claim 21, Sandoghchi ‘708 further teaches the moving step further comprises heating back and forth over the at least one intermediate section of the intermediate PCF (¶ [0050], [0054]),
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin Snelting whose telephone number is (571)272-7169. The examiner can normally be reached Monday to Friday, 8:00 to 5:00.
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/ERIN SNELTING/Primary Examiner, Art Unit 1741