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 without traverse of Claims 1-10 in the reply filed on 9 April 2026 is acknowledged.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9 April 2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 1
“coating system configured to receive the glass fiber . . .” (generic placeholder: “system,” functional language: “coating . . . configured to receive . . .”), associated with a die [0033].
“lighting device configured to receive the glass fiber from the first coating system and to apply first light . . .” (generic placeholder: “device,” functional language: “lighting . . . configured to receive . . .”), associated with an ultraviolet light [0039].
“marking device configured to apply a tracer marking fluid . . .” (generic placeholder: “device,” functional language: “marking . . . configured to apply a tracer marking fluid . . .”), associated with an inkjet printer, including drop-on-demand [0026-0027].
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 5 is 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 5 recites the limitation “plurality of nozzles arranged in a parallel configuration.” The limitation is indefinite as ambiguous, because it is not clear what the recited “parallel configuration” of a plurality of nozzles is in relation to, whether, for example, the nozzles protrude from a head in a parallel direction, whether the nozzles are arranged in parallel rows, or whether the plurality of nozzles are arranged parallel to some other linear structure. Additionally, it is not clear whether the limitation is meant to imply some minimum number of nozzles (e.g. two parallel rows of two nozzles each). Examiner interprets the limitation to include any of the proposed meanings and not to exclude other reasonable meanings of the limitation.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3 and 6-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schiaffo et al. (US 2010/0296780) in view of Negishi et al. (JP 2004347787).
Regarding Claim 1, Schiaffo et al. (US’780) teach a system for forming an optical fiber, comprising: a draw furnace 110 configured to produce a glass fiber from a glass preform [0092]; a first coating system (die, spelled “dye,” 135) capable of receiving the glass fiber and delivering a first curable coating composition to the glass fiber, the first curable coating composition surrounding the glass fiber [0093]; a first lighting device (UV light 140) capable of receiving the glass fiber from the first coating system and to apply first light to the first curable coating composition, the first light capable of curing the first curable coating composition to form a first coating on the glass fiber (Fig. 1; [0094]). US’780 further teaches a color layer surrounding a coating layer on the optical fiber [0025]. US’780 fails to teach a marking device (i.e. ink jet printer). Negishi et al. (JP’787) teach an inkjet printer capable of applying a tracer marking fluid, comprising a coloring agent and a carrier liquid, to the first coating to create a display portion to show, for example, a model number or type of the optical fiber or core (Figs. 1-4; [0011,0014,0016]). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’780 with an inkjet printer (i.e. marking device), operably coupled to the first coating system, because JP’787 suggests an inkjet printer for marking a coating of an optical fiber, for example with a number or type, after the optical fiber has been coated.
Regarding Claim 2, US’780 teaches the recited structures of the claimed “system” (i.e. apparatus). Claim 2 merely recites an intended use of the claimed apparatus, and the intended use is not given patentable weight for the claimed apparatus, capable of performing the intended use. See, also, Fig. 2 and paragraph [0108].
Regarding Claim 3, the combination of US’780 in view of JP’787 suggests the claimed apparatus with recited structures, and the claimed apparatus is capable of performing the recited intended use, not given patentable weight for the claimed apparatus.
Regarding Claim 6, US’780 additionally teaches a second coating system 150 capable of receiving the glass fiber and delivering a second curable coating composition to the glass, a second curable coating composition capable of surrounding and directly contacting the glass fiber (Fig. 1; [0097]).
Regarding Claim 7, US’780 teaches a second lighting device 180 capable of receiving the glass fiber from the second coating system and applying a second light to the second curable coating composition, the second light curing the second curable coating composition to form a second coating on the glass fiber (Fig. 1; [0106]).
Regarding Claim 8, the inkjet printer (i.e. marking device) suggested by JP’787 is capable of intermittently applying a tracer marking fluid to a first curable coating composition or the first coating, since discrete symbols, including numbers and/ or characters can be formed (Figures).
Regarding Claim 9, the inkjet printer (i.e. marking device) suggested by JP’787 is capable of applying a tracer marking fluid as a plurality of droplets (i.e. mode of operation of an inkjet printer) to the first curable coating composition or the first coating.
Regarding Claim 10, the plurality of droplets is arranged as a contiguous series on the first curable coating composition or the first coating. See, for example, contiguous series forming the display unit 13 “FIBER” (Fig. 1).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schiaffo et al. (US 2010/0296780) in view of Negishi et al. (JP 2004347787) as applied to Claim 1 above, and further in view of Speakman (US 2002/0105080).
Regarding Claim 4, JP’787 teaches ink jet printing onto a coating of an optical fiber. JP’787 fails to teach specifically drop-on-demand printing (a kind of ink jet printing). Speakman (US’080) is analogous art in the field of production of optical fibers, including the use of inkjet printing techniques to produce optical fibers, and teaches drop-on-demand printing to deposit droplets of deposition material onto a surface an optic fiber, for example [0016,0266]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of US’780 in view of JP’787 with drop-on-demand, because US’080 suggests that US’080 was a known inkjet technology at the time of invention and additionally was used to deposit droplets to form optical fibers.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schiaffo et al. (US 2010/0296780) in view of Negishi et al. (JP 2004347787) as applied to Claim 1 above, and further in view of Nakajima (US 2003/0222961).
Regarding Claim 5, the combination of US’780 in view of JP’787 fails to teach a plurality of nozzles arranged in a parallel configuration. A parallel configuration of a plurality of nozzles was conventional at the time of invention. For example, Nakajima (US’961), published in 2003, is analogous art in the field of inkjet printing and pertinent to inventor’s problem of depositing droplets to form a mark with curable ink [0002-0005] and suggests a plurality of nozzles arranged to be substantially parallel to an “S” direction when contained in a carriage to form curable ink dots on medium P. [0064,0061] to make it possible to scan ink dots with radiation within an extremely small time difference and thereby cure ink dots substantially equally while controlling dot diameter and shape [0021]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of US’780 in view of JP’787 with a parallel configuration of a plurality of nozzles, because a parallel configuration of a plurality of nozzles was conventional at the time of invention and because US’961 suggests a parallel configuration to make it possible to scan ink dots with radiation within an extremely small time difference and thereby cure ink dots substantially equally while controlling dot diameter and shape.
Conclusion
No claim is allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Brown et al. (WO 01/57494) (drop-on-demand capable of depositing materials onto optical fibers, p. 18, lines 20-28)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
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