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 November 6, 2025 has been fully considered and entered.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 6 and 8-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 7 and 14-19 of copending Application No. 17/897314.
Claims 1, 6 and 8-10 of the current application are all taught or suggested by claims 1, 4, 7 and 14-19 of copending Application No. 17/897314.
This is a provisional nonstatutory double patenting rejection.
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 1-4 and 8 are rejected under 35 U.S.C. 103(a) as being unpatentable over Bickham et al. (US 2021/0223469 A1) in view of Kawaguchi et al. (CN 111032588 A).
Regarding claims 1 and 2, Bickham discloses an optical fiber (Fig. 2) comprising: a glass fiber (see abstract) including a core (10) and a cladding (50), the cladding (Fig. 5C) includes: an inner cladding (52) surrounding an outer periphery of the core; a trench (54) surrounding an outer periphery of the inner cladding; and an outer cladding (56) surrounding an outer periphery of the trench, the inner cladding has a refractive index lower than a refractive index of the core, the trench has a refractive index lower than the refractive index of the inner cladding, the outer cladding has a refractive index higher than the refractive index of the trench and lower than the refractive index of the core (Fig. 5C), the core being doped with germanium (paragraph 0080), the inner cladding doped with chlorine (paragraph 0134);
wherein when a relative refractive index difference of the core with respect to the refractive index of the outer cladding is designated as Δ1, a relative refractive index difference of the inner cladding with respect to the refractive index of the outer cladding is designated as Δ2, a relative refractive index difference of the trench with respect to the refractive index of the outer cladding is designated as Δ3, a radius of the outer periphery of the core is designated as r1, a radius of the outer periphery of the inner cladding is designated as r2, and a radius of the outer periphery of the trench is designated as r3, r2/r1 is 2.2 or more and 3.6 or less, r3 - r2 is 3 µm or more and 10 µm or less, Δ1 – Δ2 is 0.15% or more and 0.40% or less, |Δ2| is 0.10% or less, Δ3 is -0.70% or more and -0.10% or less (see paragraphs 0133-0135); and
a coating resin layer surrounding an outer periphery of the glass fiber, the coating resin layer having a primary resin layer (72) and a secondary resin layer (74; paragraph 0114), wherein in the coating resin layer, the primary resin layer in contact with and surrounds the outer periphery of the glass fiber, the secondary resin layer coating an outer periphery of the primary resin layer, wherein the primary resin layer has a thickness of 7.5 pm or more and 17.5 pm or less, the primary resin layer has a Young's modulus of 0.10 MPa or greater and 0.50 MPa or less, the secondary resin layer has a thickness of 5.0 pm or more and 17.5 pm or less, the secondary resin layer has an outer diameter of 165 pm or more and 175 pm or less, and the secondary resin layer has a Young's modulus of 1200 MPa or greater and 2800 MPa or less (see abstract, paragraph 0105); and
wherein the optical fiber has a mode field diameter of 8.8 pm or more and 9.6 pm or less for light having a wavelength of 1310 nm (Table 1), the optical fiber has a zero-dispersion wavelength of 1300 nm or more and 1324 nm or less (paragraph 0085), and the optical fiber has a cable cutoff wavelength of 1260 nm or less (Table 1).
Still regarding claims 1 and 2, Bickham teaches the claimed invention except for specifically stating the modulus at a temperature of 23oC. However, Bickham discloses modulus measurements performed at room temperature of 21oC in paragraph 0275. As such, it would have been obvious to one having ordinary skill in the art at the time of the invention to arrive at the claimed modulus at a temperature of 23oC for the purpose of forming robust and stable fibers at approximate room temperatures, 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 claims 1 and 2, Bickham further discloses the optical fiber having a bending loss when the optical fiber is wrapped around a cylindrical mandrel in paragraph 0140 and the ranges of chlorine concentration based on a wt% in paragraph 0134. Bickham teaches the claimed invention except for specifically stating the claimed bending loss and chlorine concentration. However, it would have been obvious to one having ordinary skill in the art at the time of the invention to arrive at the claimed bending loss in order to minimize losses which degrade the optical signal, and the claimed chlorine concentration in order to arrive at the desired relative refractive index, 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 claims 1 and 2, Bickham teaches the claimed invention except for specifically stating the claimed variation of the outer diameter. Kawaguchi discloses an optical fiber wherein 3 times the standard deviation of the outer diameter in the axial direction of the optical fiber is 0.1 µm or more and 0.5 µm or less (see Table 1 and the accompanying description). Since both inventions relate to optical fibers, one having ordinary skill in the art at the time of the invention would have found it obvious to form an outer diameter variation as disclosed by Kawaguchi in the optical fiber of Bickham for the purpose of reducing transmission loss.
Regarding claim 3, Bickham discloses a wavelength dispersion of the optical fiber for light at a wavelength of 1550 nm is 18.6 ps/(nm-km) or less, and wherein a zero-dispersion slope of the optical fiber is 0.092 ps/(nm2-km) or less in Table 1.
Regarding claim 4, the proposed combination of Bickham and Kawaguchi teaches the claimed invention except for specifically stating the transmission loss. However, Bickham discloses the optical fiber having low transmission loss in paragraph 0004. As such, it would have been obvious to one having ordinary skill in the art at the time of the invention to arrive at the claimed transmission loss in order to minimize attenuation to improve signal quality, 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 8, Bickham discloses a coating resin layer surrounding an outer periphery of the glass fiber, the coating resin layer having a primary resin layer (72) and a secondary resin layer (74) and a first colored layer (76; paragraph 0114), coating an outer periphery of the secondary resin layer, wherein the secondary resin layer has a thickness of 5.0 pm or more and 17.5 pm or less (see abstract, paragraph 0105).
Claim 6 is rejected under 35 U.S.C. 103(a) as being unpatentable over Bickham et al. (US 2021/0223469 A1) in view of Kawaguchi et al. (CN 111032588 A), further in view of Nakanishi et al. (US 2015/0274577).
Regarding claim 6, Bickham further discloses an average chlorine mass concentration of the outer cladding is substantially zero (paragraph 0136 discloses the outer cladding undoped). The proposed combination of Bickham and Kawaguchi teaches the claimed invention except for specifically stating the average OH mass concentration. Nakanishi discloses an average OH mass concentration of an outer cladding is 5 ppm or more and 500 ppm or less in paragraph 0035. Since all of the inventions relate to optical fibers, it would have been obvious to one having ordinary skill in the art at the time of the invention to have the average OH mass concentration as disclosed by Nakanishi in the optical fiber of the proposed combination of Bickham and Kawaguchi for the purpose of reducing transmission loss.
Claim 9 is rejected under 35 U.S.C. 103(a) as being unpatentable over Bickham et al. (US 2021/0223469 A1) in view of Kawaguchi et al. (CN 111032588 A), further in view of Yamaguchi et al. (WO 2020/045372 A1).
Regarding claim 9, the proposed combination of Bickham and Kawaguchi teaches the claimed invention except for a second colored layer. Yamaguchi discloses an optical fiber (10 in Fig. 2) comprising an optical transmission body (13) that includes a core and a cladding, a primary resin layer (14), a second resin layer (15), and a coating layer (16), wherein the coating layer has a first colored layer (top or outer layer of 16), and a second colored layer (11) which is formed between the secondary resin layer and the first colored layer, the second colored layer has a color different from that of the first colored layer, and includes a plurality of patterns formed to be arranged mutually at an interval in an axial direction of the glass fiber. Since all of the inventions relate to optical fibers, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to use a second colored layer as disclosed by Yamaguchi in the optical fiber of the proposed combination of Bickham and Kawaguchi for the purpose of providing identification marks which are protected by an outer layer and thus resistant to damage. Further, one having ordinary skill in the art would find it obvious to form ring patterns disposed around the entire circumference of the optical fiber in order to allow for identification from any direction which would enhance identification.
Claim 10 is rejected under 35 U.S.C. 103(a) as being unpatentable over Bickham et al. (US 2021/0223469 A1) in view of Kawaguchi et al. (CN 111032588 A), further in view of Matsushita (JP 2014-066558 A).
Regarding claim 10, the proposed combination of Bickham and Kawaguchi teaches the claimed invention except for specifically stating the claimed eccentric amount. Matsushita discloses measuring, at a plurality of measuring points set at predetermined intervals in an axial direction of the glass fiber, an eccentric amount of the glass fiber from a central axis based on the outer periphery of a resin layer (Fig. 1 shows measuring an eccentric amount of the fiber ‘F’ using photodetectors 21 at measuring points set at predetermined intervals in an axial direction of the fiber). Matsushita further discloses Fourier transforming a waveform representing the eccentric amount at a plurality of measurement points in paragraphs 0025-0027. Since all of the inventions relate to optical fibers, it would have been obvious to one having ordinary skill in the art at the time of the invention to take measurement points at predetermined intervals along an axial direction as disclosed by Matsushita to arrive at the claimed the eccentric value in the optical fiber of the proposed combination of Bickham and Kawaguchi in order to minimize the eccentricity along the outer periphery and thus suppress damage to the optical fiber, 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.
Response to Arguments
Applicant's arguments, filed November 6, 2025, with respect to the double patenting rejection have been considered but are not persuasive. On page 6, Applicant states that amended claim 1 contains the feature from cancelled claim 7 and which is not recited in any of claims 1, 4, 7, 14-19 of copending Application 17/897314. However, claims 1 and 4 of the copending Application recite that feature exactly – specifically, a primary resin layer having the claimed thickness and Young’s modulus, and a secondary layer having the claimed outer diameter and Young’s modulus. As such, the double patenting rejection is maintained.
Applicant's arguments, filed November 6, 2025, with respect to claims have been considered but are not persuasive. On pages 7-8, Applicant points to page 9, lines 3-4 of the English translation of Kawaguchi to allegedly support that the outer diameter variation of the manufactured optical fiber includes both the glass fiber and the resin layer. However, it is unclear where exactly Kawaguchi states that the measured outer diameter of the fiber includes the resin layer. The description in the cited section does not appear to mention the words “resin” or “coated” at all. The cited section simply states optical fibers “manufactured under every kind of conditions of the outer diameter variation.”
Further, Kawaguchi discloses the outer diameter measuring device 40 placed before the resin coating device 50 (see Fig. 1 and accompanying description). Therefore, the diameter of the fiber is measured before the resin layers are coated onto the glass fiber. Fig. 1 does not show any additional measuring devices after the resin is coated on the fiber. This would seem to suggest the measured outer diameter variation is only the glass fiber and does not include the resin layer.
Finally, Kawaguchi states the purpose of controlling the outer diameter variation is to reduce transmission loss of the optical fiber (see “Effects of the Invention” section). Since both inventions relate to optical fibers, one having ordinary skill in the art at the time of the invention would have found it obvious to form an outer diameter variation as disclosed by Kawaguchi in the optical fiber of Bickham for the purpose of reducing transmission loss. Then, it would have been obvious to one having ordinary skill in the art at the time of the invention to arrive at the claimed outer diameter variation, 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.
Conclusion
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 February 13, 2026