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 .
Specification
The changes to the specification filed 08/06/2026 have been entered.
Claim Interpretation
Claims 1-12 are directed to a device. MPEP 2114 and 2173.05(g) indicate
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Claim 1 requires a device capable of producing a silica blanks comprising;
A hollow substrate tube;
A substrate tube holder comprising;
A clamping device and;
A clamping mechanism comprising;
A first pressure unit and second pressure unit capable of clamping the substrate tube between said first and said second pressure unit.
Said first and second pressure units are capable of generating axial contact pressure in a direction of the longitudinal axis of the substrate tube.
The clamping mechanism configured to withstand radiant heat generated during flame hydrolysis deposition of synthetic silicon dioxide particles on the outer lateral surface of the substrate tube.
[0118]-[0119] of the specification of the presently filed application indicates the substrate tube is an item being worked upon by the claimed device and is part of the soot body subjected to further treatment outside of the claimed device [0145].
For the purpose of this examination claim 1 claims the structures as indicated above and must be capable of holding a substrate tube relative to said structures as indicated in the claim, but the substrate tube itself is not considered part of the claimed device.
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: “The clamping mechanism configured to withstand radiant heat generated during flame hydrolysis deposition of synthetic silicon dioxide particles on the outer lateral surface of the substrate tube” in claim 1.
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. The present specification states nothing of the material of the clamping mechanism and/or the temperature of the flame hydrolysis. For the purpose of this examination any clamping mechanism taught in a flame hydrolysis deposition of synthetic silicon dioxide particles is considered configured to meet the structure of the claim.
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 § 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) 1-3, 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamaguchi et al. (CN 103482864) as cited in the machine translation provided herein and Kotulla (DE 19952474) as cited in the machine translation provided herein.
Regarding claims 1 and 11, Hamaguchi discloses a device for producing a tubular SiO2 blank in an external deposition process (abstract)/ [0002], comprising:
a substrate tube (18P) which has a substrate tube longitudinal axis, a substrate tube length, a first substrate tube end face, a second substrate tube end face, a substrate tube outer lateral surface, a substrate tube inner lateral surface, a substrate tube outer diameter, a substrate tube inner diameter, a substrate tube wall thickness (see shape and axis of 18P in Fig 12),
The substrate tube has a continuous through-opening running coaxially with the substrate tube longitudinal axis as defined by glass core blank (see shape and axis of 18P in Fig 12),
The device comprises a substrate tube holder for tube (60), which comprises a clamping device and which is designed to support the substrate tube see how tube (18P) is held in Fig 12
The holder of the substrate tube (18P) about an axis of rotation running coaxially with or parallel to the longitudinal axis of the substrate tube, capable of rotation [0150]-[0152]
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
The substrate tube is not considered part of the device but an article being worked on by the device.
Regardless, Hamaguchi makes obvious to a skilled artisan the substrate tube holder comprises
a clamping mechanism which comprises clamps (62a/b) having spindles attached to:
a first pressure unit (63a) capable of abutting the first substrate tube end face and a second pressure unit (63b) capable of abutting the second substrate tube end face [0150] Fig. 4,
Hamaguchi does not specify at least one force element designed to generate an axial contact pressure with a force component acting in the direction of the longitudinal axis of the substrate tube which force component causes the substrate tube to be clamped between the first pressure unit and the second pressure unit.
In an analogous art of flame hydrolysis Kotulla discloses a rotating lathe for holding a workpiece (Fig 2) where at least one clamping mechanism has a tensioning element such as a compression spring (Page 4 ¶5). It would be obvious to one of ordinary skill in the art to modify the clamping mechanisms of Hamaguchi with the addition of a tensioning element within the spindle as motivated to ensure the mandrel/tube is to sufficiently be secured and ensure the movement depicted by arrows of 62b in Fig 12 of Hamaguchi.
Regarding claims 2-3, the structure of Hamaguchi is intended to rotate [0008], [0016]-[0017], [0024], [0094] thus the portions of (63a/b) touching the ends of the tube (18P)have spindles attached to 62a/b that rotate.
Regarding claim 10, Hamaguchi does not disclose the substrate tube wall thickness and the outer diameter of the substrate tube however it would be obvious to one of ordinary skill in the art to optimize the dimensions of the substrate tube as motivated by the desired preform.
Regarding claim 12, the support element (62a/b) is arranged in what is considered the region of the distal end of the first spindle and/or the second spindle.
Claim(s) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamaguchi and Kotulla as applied above and further in view of Curtis et al. (US 5158589).
Regarding claims 7 and 9, Hamaguchi does not disclose the material of the substrate tube. In an analogous art Curtis recites graphite is a composition suitable for high temperature applications with silica (Col 11; line 19). It would be obvious to a skilled artisan to use graphite for the composition of the substrate tube as motivated by it being taught as a suitable material for a device in a high temperature manufacture of silica. The combined teachings of Hamaguchi and Kotulla disclose the spring, or pressure transmission element, within at least one spindle.
the pressure transmission element is considered mounted on or linked to the first spindle in a rotationally fixed but considered a pivotable manner because it is an annular shape, and wherein the first buffer element is arranged between the pressure transmission element and the substrate tube and abuts the first substrate tube end face [0033], Fig 2-4.
Further regarding claims 7-8, there is nothing in the claims that prohibits the pressure units from comprising a pressure plate and buffer unit where the first buffer element projects beyond the pressure transmission element and the substrate tube in the radial direction as depicted by the extending portions of past the tube. The claims have not distinguished the two items by material or dimensions thus it is similar to saying a sidewalk where there is a sidewalk square of concrete adjacent the road and a concrete sidewalk square further from the road, yet they both make up a single sidewalk.
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Allowable Subject Matter
Claims 4-6 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
It is known to provide tubes on a lathe and spindles with clamping mechanism to rotate tubes on a lathe capable of the heat for silica deposition. It is known to provide clamping portions that tough ends of the tube to be deposited on as well as tensioning devices for springs as indicated in some of the prior art provided here. None of the prior art discloses motivation for all of the claimed elements in claim 4 in combination with all of the structure of claim 2. Claims 5-6 are allowable at least for depending from claim 4.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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
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