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 .
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 to 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-16 and 21 of copending Application No. 18/781,924 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the sole difference between the instant claims and the copending claims is the crystallinity of the cladding. However, it would have been obvious to one of ordinary skill in the art before the filing date of the instant invention to have the cladding in various crystalline states in order to increase the use of the cladding on the fibers and increase flexibility.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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: preparation component, melt assembly and cladding assembly in claims 17-20.
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.
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.
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) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yin et al (2018/00458883).
The Yin et al reference teaches a method and apparatus of growing a single crystal cladding on an optical fiber, note, entire reference. The apparatus and method comprises melting a material to form a melt, submerging an optical fiber in the melt; forming a cladding around a periphery of the optical fiber based on the melt and the optical fiber, note claim and paras 0089, 0102. The cladding can be amorphous para 0103 and obtaining the single-crystal cladding by performing a crystallization process on the amorphous cladding paras 0118 and 0120. Once a material is in molten form it is no longer amorphous as amorphous refers to a solid state. The sole difference between the instant claim and the prior art is the state of the starting material. However, in the absence of unexpected results, it would have been obvious to one of ordinary skill in the art before the filing date of the instant invention to determine though routine experimentation the optimum ,operable starting material solid state, amorphous in the Yin et al reference in order to have a more uniform melting of the composition in the powder form.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yin et al (2018/00458883) in view of Redjdal et al (2014/0217630).
The Yin et al reference is relied on for the same reasons as stated, supra, and differs from the instant claim in the dispersing and cooling of the melt. However, the Redjdal et al reference teaches melting of the raw material, dispersing and cooling to form the amorphous material figure 1 and para 0031 and 0038. It would have been obvious to one of ordinary skill in the art before the filing date of the instant invention to modify the Yin et al process by the teachings of the Redjdal et al reference to disperse and cool the melt in order to prepare a purer amorphous material for cladding.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yin et al (2018/00458883) in view of Redjdal et al (2014/0217630).
The Yin et al and Redjdal et al references are relied on for the same reasons as stated, supra, and differs from the instant claims in the collecting and oscillating. However, in the absence of unexpected results, it would have been obvious to one of ordinary skill in the art before the filing date of the instant invention to determine though routine experimentation the optimum ,operable to collect and oscillate the powder starting material in the combined references in order to not lose starting material and prevent clumping.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yin et al (2018/00458883) in view of Redjdal et al (2014/0217630).
The Yin et al and Redjdal et al references are relied on for the same reasons as stated, supra, and differs from the instant claims in the heating means. However, in the absence of unexpected results, it would have been obvious to one of ordinary skill in the art before the filing date of the instant invention to determine though routine experimentation the optimum ,operable heating means to crystalize the amorphous material in the combined references in order to heat the cladding layer without damage to the fiber.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT M KUNEMUND whose telephone number is (571)272-1464. The examiner can normally be reached M-F 8:00 am to 4:30 pm.
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, Kaj Olsen can be reached at 571-272-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RMK
/ROBERT M KUNEMUND/Primary Examiner, Art Unit 1714
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