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 .
Claim Rejections - 35 USC § 112
The previous rejections under 35 U.S.C. 112(b) are withdrawn in view of the present amendments.
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.
Claim(s) 22-30 are rejected under 35 U.S.C. 103 as being unpatentable over (KR 10-0651146) referred to as ‘146 herein after and cited in the machine translation provided herein.
Regarding claim 22, ‘146 discloses a deposition system for depositing silica particles onto a workpiece (Fig 2), the deposition system comprising:
a first set of chemical deposition burners (62, 64 Fig 2)
a second set of chemical deposition burners (68, 70 Fig 2)
capable of depositing silica particles onto a first portion of the workpiece, the first set of chemical deposition burners having a first chemical deposition burner and a second chemical deposition burner;
for depositing silica particles onto a second portion of the workpiece,
“Burners 62, 64, 66, 68, and 70 hydrolyze the gas material to generate glass particles. Glass particles are discharged from the burners 62, 64, 66, 68, 70 to the base rod 38 and the glass particles are deposited on the base rod 38 which rotates at a constant speed”
‘146 discloses a lathe (58) capable of holding the workpiece (4) and for rotating (see arrow in Fig 2) the workpiece relative to the first set of chemical deposition burners and the second set of chemical deposition burners (Fig 2),
Claim 22 requires:
the first and second portions of the workpiece overlap each other at an overlap segment onto which one chemical deposition burner from each of the first set of chemical deposition burners and the second set of chemical deposition burners deposit silica particles, wherein, when traversing the workpiece between a left-end portion and a right end portion to deposit silica particles: each of the chemical deposition burners remain at fixed distances from the other of the chemical deposition burners,
and at any point of the workpiece,
two burners deposit silica soot on the workpiece,
except at the left-end portion and the right end portion of the workpiece, where at the left end-portion, only the leftmost burner deposits silica soot,
and at the right end-portion, only the rightmost burner deposits silica soot, and wherein the longest distance between chemical deposition burners within any set is less than the shortest distance between the chemical deposition burners in different sets.
MPEP 2115 states:
[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 193)for the purpose of this examination the workpiece is not part of the deposition system.
Regarding the above limitation; the deposition system of ‘146 has a stage (14) with burners thereon that moves back and forth.
KR ‘146 states:
“While the glass particles are discharged, the first motor 18 moves the first stage base 30 so that the burners 62, 64, 66, 68, 70 move the first stage 14 provided thereon. The burners 62, 64, 66, 68, 70 move back and forth in the longitudinal direction of the base rod 38.”
“First, the apparatus of this example was tested. The spacing D1 between the burners 62, 64, 66, 68, 70 was set to 150 mm. A base rod 38 with a diameter of 40 mm was used. The length of the base rod 38 was 200 mm. The first stage moving range and the second stage moving range were set to 150 mm which is equal to the interval D1 between the burners 62, 64, 66, 68 and 70, respectively”
Therefore the deposition system disclosed by KR ‘146 with the first set of burners 62 and 64 and the second set of burners 68 and 70, each having a spacing between burners in a set of 150mm at fixed distances, is capable of being set such that the burners deposit soot except for the furthest right and furthest left burners on their respectable edge of the workpiece because KR ‘146 discloses setting the moving range of the stage, thus it can be “set” and thus the system is capable given the broadest reasonable interpretation.
Regarding claim 23, KR ‘146 the deposition system of claim 22 comprises a total number of chemical deposition burners of four (62, 64, 68, 70) given the broadest reasonable interpretation (Fig 2).
Regarding claim 24, length of the workpiece does not limit the deposition apparatus, although
It would be obvious to one of ordinary skill in the art to scale up the size as motivated to manufacture a larger preform. MPEP 2144.04
In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.).
KR ‘146 discloses first chemical deposition burner and the second chemical deposition burner is 150 mm, and the third chemical deposition burner and the fourth deposition burner 150 mm.
Alternatively, it would be obvious to one of ordinary skill in the art to modify the dimensions of the deposition device
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Regarding claim 25, the first, second, third, and fourth burners are capable of receiving chemicals from a common source of (84 and 82) and are capable to stream soot at the workpiece the approximately the same rate.
Regarding claims 26 and 29, KR ‘146 does not specifically discuss a third set of having a fifth chemical deposition burner and a sixth chemical deposition burner.
In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.
It would be obvious to provide an additional set of burners as a mere duplication of parts, alternatively it would be obvious to modify the deposition system of KR ‘146 as motivated provide an additional set of burners for manufacturing a larger length workpiece, where KR ‘146 discloses a distance between burners of 150 mm.
Regarding claim 27, KR ‘146 discloses lathe (base rod 38) configured for holding the workpiece (4) and for rotating the workpiece relative to the first, second and third sets of chemical deposition burners (See Fig 2).
Regarding claim 28, the second and third portions of the workpiece are parts of the material worked upon.
MPEP 2115 states:
[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 193)for the purpose of this examination the workpiece is not part of the deposition system.
Where KR ‘146 indicates setting the speed and the moving range of the stage with the burners relative to the material being worked upon thus it would be obvious to a skilled artisan to set the burner to be moved relative to the workpiece as motivated to deposit the silica as desired.
Regarding claim 30, burners of KR ‘146 receive chemical from a common source of from a common source of (84 and 82) and are capable to stream soot at the workpiece the approximately the same rate.
Response to Arguments
Applicant's arguments filed 01/13/2026 have been fully considered but they are not persuasive.
Applicant argues that the office alleges that the limitations of all of the wherein clauses in claim 22 “are intended use limitations” and points to the office action pages 2-3.
Applicant argues that “these wherein clauses include the workpiece merely as a reference to recite features of the claimed system itself” (Page 1 of the remarks filed 01/13/2026).
In response to this statement, Applicant can put on record that the workpiece is a required part of the system however the claims as written recite the workpiece as an item the system is capable of working on. There are no exact dimensions or programmed controller to distinguish the structure as claimed over the structure of prior art ‘146. It is not written as a means plus function functional language.
Examiner maintains ‘146 discloses all structural features as claimed and is capable of traversing the workpiece between a right end portion and left end portion relative to the fixed sets of burners.
Applicant argues the office has not shown the sets of burners of KR ‘146 have any overlapping deposition portion. Examiner maintains this is intended use of the apparatus and without conceding to Applicant’s argument and claim interpretation it should be noted that Fig 3A depicts the apparatus of KR ‘146 is capable of burner sets overlapping in deposition at least at a point of 450 mm.
Applicant further remarks that the term “lathe” should not be interpreted under mean-plus -function thus it no longer is.
Applicant has not indicated how KR ‘146 differentiates in structure from the structure of the claimed invention and is not capable of carrying out the function as indicated in claim 22.
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 JODI COHEN FRANKLIN whose telephone number is (571)270-3966. The examiner can normally be reached Monday-Friday 8 am-4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison Hindelang can be reached at (571) 270-7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JODI COHEN FRANKLIN
Primary Examiner
Art Unit 1741
/JODI C FRANKLIN/ Primary Examiner, Art Unit 1741