The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
DETAILED ACTION
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, 2, 3, 4, and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 6, 5, 7, and 4 respectively of copending Application No. 18,724,327 (reference application) in view of Lee et al (US 12,204,156 B2). Although the claims at issue are not identical, they are not patentably distinct from each other, because claim 4 of the reference application defines bundled optical fiber units with a stacked state of optical fiber ribbons that is collapsed to form a bent ribbon surface, wherein outermost units have a value (and the sine) of an angle (defined the same way as that used in the instant application) larger than that of innermost units. While claim 4 does not define a particular neutral line of bending, Lee discloses (Figs. 2 and 3) a fiber optical cable 100 comprising bundled optical fiber units 10 with a stacked state of optical fiber ribbons 15 that is collapsed to form a bent ribbon surface, wherein the fiber optical cable 100 further comprises at least one pair of oppositely disposed reinforming members 70 (application member) that define a neutral line of bending (passes through the pair of oppositely disposed reinforming members 70) and apply, to the optical cable, a bending anisotropy that makes the optical cable easier to bend in a direction centered on the neutral line. It would be obvious to a person of ordinary skill in the art that the fiber optic cable defined by claim 4 of the reference application can additionally comprise at least one pair of oppositely disposed reinforming members, as taught by Lee, in order to reinforce tensile strength of the optical cable 100 (9:64 – 67 of Lee).
Claims 4 – 7 of the reference application recite additional limitations corresponding to those in claims 2 – 5 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
The subject matter pertaining to claim 1 would be allowable, if Applicant overcomes the double-patenting rejections.
The reason for indicating allowable subject matter is that none of the prior art of record, taken alone or in combination, teaches expressly, renders obvious and/or provides a motivation for a person of ordinary skill in the art to angularly orient bundled optical fiber units with a stacked state of optical fiber ribbons that is collapsed to form a bent ribbon surface so that the average sine value of a second fiber unit (located farthest from the neutral line) is larger than the average sine value of at least one of first fiber units (located on a neutral line of bending of the optical fiber assembly), in a transverse cross section of the optical fiber assembly (as shown in Fig. 5). The instant application discloses a comprehensive study of such arrangement versus a comparative arrangement (Fig. 6) with a different angular orientation of bundled optical fiber units and determines that the claimed arrangement ensures lower bending loss about the neutral line of bending (compare Table 8 for Fig. 5 versus Table 9 for Fig. 6).
On the contrary, Lee does not recognize the above-noted benefit of the angular alignment in Fog. 5 of the instant application. An attempt to optimize bending loss (in a multi-dimensional space of parameters) would lead to undue experimentation because of a large number of parameters defining an optical fiber cable and its bending loss.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2016/0161692 A1
US 2011/0110635 A1
US 11,520,114 B2
US 9,939,599 B2
US 5,848,212
US 10,782,496 B1
US 5,857,051
US 2016/0377824 A1
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT TAVLYKAEV whose telephone number is (571)270-5634. The examiner can normally be reached 10:00 am - 6:00 pm, Monday - Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Kraig can be reached on (571)272-8660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT TAVLYKAEV/Primary Examiner, Art Unit 2896
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