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 .
Information Disclosure Statement
The prior art document(s) submitted by applicant in the Information Disclosure Statements filed on 8/13/2024 have all been considered and made of record (Note the attached copy of form PTO-892).
Inventorship
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.
Drawings
The drawings are objected to because Figure 7B uses A.U. as a label but the specification never defines A.U. ‘Arbitrary Units’ is likely the intended definition as is common in the art. Further, the other label is likely meant to be ‘2Θ’ instead of ‘20’ as is also common in the art. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-20 are objected to because of the following informalities:
Claims 2-6, 8-13 begin “A fiber according to claim…” and should instead state “The optical fiber according to claim…”.
Claims 15-20 begin “A method according to claim…” and should instead state “The method according to claim…”.
Claim 1 should instead state:
“a crystalline core;
a ceramic cladding circumscribing the crystalline core;
an insulative film intermediate and separating the crystalline core and the ceramic cladding and substantially preventing the grain boundary of the crystalline core from growing onto the ceramic cladding during a cladding process.”
Claims 2-5 and 18: “the film” should instead state “the insulative film”.
Claim 6: missing a period (.) at the end of the claim.
Claim 7 should instead state:
“a positively doped crystalline core;
a ceramic cladding circumscribing the positively doped crystalline core;
an insulative film intermediate and separating the positively doped crystalline core and ceramic cladding and substantially preventing the grain boundary of the positively doped crystalline core from growing onto the ceramic cladding during a cladding process.”
Claims 8-9: “the core” should instead state “the positively doped crystalline core”.
Claim 10 should instead state: wherein the insulative film comprises amorphous YAG.
Claims 11-12 should instead state: “the cladding” should instead state “the ceramic cladding”.
Claim 13 should instead state: wherein the positively doped crystalline core, insulative film and ceramic cladding comprise a mutually identical material.
Claim 14 should instead state:
“coextruding the crystalline core and insulative film with a cladding material to form a tri-layer cladded fiber; and
sintering the tri-layer cladded fiber to reduce porosity in the cladding material.”
Claim 15 should instead state: “furthering comprising a step of hot isostatically pressing the tri-layer fiber to further reduce porosity of the cladding material.”
Claim 16 should instead state: “wherein the step of sputter coating the insulative film comprises a step of sputter coating an amorphous insulative film.”
Claim 17 should instead state: “wherein the step of sputter coating the crystal particles to form the insulative film on the crystalline core comprises cathode sputter coating.”
Claim 19: “the core” should instead state “the crystalline core”
Claim 20 should instead state: “wherein the crystalline core, crystal particles and cladding material comprise a mutually identical YAG material.”
Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1-5, 7-10, and 12-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1-5, 7-10, and 12-20 respectively of copending Application No. 19/335,272 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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.
Claims 1-13 and 20 are 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.
Claims 1 and 7 recites the limitation "the grain boundary" in line 5 of both claims. There is insufficient antecedent basis for this limitation in the claims. Claims 2-6 and 8-13 are rejected due to their dependency on a rejected claim.
Claims 13 and 20 recite “mutually identical.” Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “mutually identical” is used by the claim to mean “of the same elemental composition,” while the accepted meaning is “an exact match in all features/with no distinguishing features.” The term is indefinite because the specification does not clearly redefine the term. Further, it is unclear how the positively doped crystalline core, the film, and the ceramic cladding can possibly function as an optical fiber if the materials are the same in all regards, i.e., mutually identical. The examiner is assuming that the Applicant means that the positively doped crystalline core of claim 13 and the crystalline core of claim 20 is accomplished via doping based on intrinsic native defects that alter the holes present in particular layers to create refractive index differences to allow the device to still operate as an optical fiber. However, this means that p-doping would be present and thus could not be mutually identical. The examiner points to a carbon-based example where coal and diamonds are both made of carbon but are not mutually identical. Furthermore, it is unclear and therefore indefinite as to how a crystalline core and a ceramic cladding are the exact same material. Therefore, claims 13 and 20 will not be further examined.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 7-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dubinskii et al., “Fiber Lasers with ‘Crystalline-core/Crystalline-clad’ (C4) Architecture Fibers for Highly Power Scalable, High Efficiency, Diode-Cladding-Pumped Operation”, OSA Laser Congress, 2017, pages 1-3 (hereinafter "Dubinskii").
Regarding claim 1, Dubinskii discloses an optical fiber comprising:
a crystalline core (crystalline core; YB:YAG core; see Title and page 1; see Fig. 1);
a ceramic cladding circumscribing the crystalline core (Al2O3 is a ceramic, “alumina outer cladding” see Fig. 1);
an insulative film (“u-YAG inner cladding” is interpreted as the insulative film since YAG is an insulator) intermediate and separating the crystalline core and the ceramic cladding (see page 1 and see Fig. 1), and substantially preventing the grain boundary of the crystalline core from growing onto the ceramic cladding during a cladding process (because the structure of the claimed system, as identified above and in the original action, is the same as that claimed, it must inherently perform the same function. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[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). MPEP §2114.").
Regarding claim 7, Dubinskii discloses an optical fiber comprising:
a positively doped crystalline core (crystalline core; YB:YAG core is a positively doped core; see Title and page 1; see Fig. 1);
a ceramic cladding circumscribing the positively doped crystalline core (Al2O3 is a ceramic, “alumina outer cladding” see Fig. 1);
an insulative film (“u-YAG inner cladding” is interpreted as the insulative film since YAG is an insulator) intermediate and separating the positively doped crystalline core and ceramic cladding, and substantially preventing the grain boundary of the positively doped crystalline core from growing onto the ceramic cladding during a cladding process. Because the structure of the claimed system, as identified above and in the original action, is the same as that claimed, it must inherently perform the same function. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[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). MPEP §2114."
Regarding claim 8, Dubinskii discloses the optical fiber according to claim 7 as discussed above, wherein the positively doped crystalline core comprises YAG crystalline material (crystalline YB:YAG; see page 1).
Regarding claim 9, Dubinskii discloses the optical fiber according to claim 8 as discussed above, wherein the positively doped crystalline core comprises a single YAG crystal (bottom of page 1).
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) 2-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dubinskii et al., “Fiber Lasers with ‘Crystalline-core/Crystalline-clad’ (C4) Architecture Fibers for Highly Power Scalable, High Efficiency, Diode-Cladding-Pumped Operation”, OSA Laser Congress, 2017, pages 1-3 (hereinafter "Dubinskii") and in view of Zhang et al., Journal of Materials Research and Technology, Vol. 15, 2021, pages 4714-4724 (hereinafter "Zhang").
Regarding claim 2, Dubinskii discloses the optical fiber according to claim 1 as discussed above, and further teaches ALD as the deposition process for the u-YAG (page 1), but fails to teach wherein the insulative film is a sputter coated film.
Zhang teaches that sputtering is an alternative to ALD and that sputtering is 10x faster than ALD (see Abstract).
Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the sputtering process instead of ALD as taught by Zhang in the device of Dubinskii for the purpose of creating the insulative film faster.
Regarding claim 3, Dubinskii discloses the optical fiber according to claim 2 as discussed above, wherein the insulative film is a ceramic film (crystalline undoped YAG is interpreted as a ceramic film; see page 1).
Regarding claim 4, Dubinskii discloses the optical fiber according to claim 3 as discussed above, wherein the insulative film is a YAG film (undoped YAG; see page 1).
Regarding claim 5, Dubinskii discloses the optical fiber according to claim 4 as discussed above, and further teaches 50-60 μm on page 1 and that cores below 100 μm were not attempted, but fails to teach wherein the insulative film has a thickness of 10 nm to 5000 nm.
If a person having ordinary skill in the art created a smaller core, it would stand to reason that they would reduce the insulative film (u-YAG) of Dubinskii to a smaller value. A person having ordinary skill in the art would have found it obvious to try a variety of thicknesses and determine one that performed best at a desired wavelength. As such, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have an insulative film having a thickness of 10 nm to 5000 nm, and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)
Regarding claim 6, Dubinskii discloses the optical fiber according to claim 4 as discussed above, having a diameter of 20 microns to 5 mm (the diameter of the core is 100 μm; the diameter of the pure YAG cladding is 200 μm; the diameter of the alumina outer cladding is 200.2 μm; each of these diameters belong to the fiber and fall within the claimed range; see Fig. 1).
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dubinskii et al., “Fiber Lasers with ‘Crystalline-core/Crystalline-clad’ (C4) Architecture Fibers for Highly Power Scalable, High Efficiency, Diode-Cladding-Pumped Operation”, OSA Laser Congress, 2017, pages 1-3 (hereinafter "Dubinskii").
Regarding claim 10, Dubinskii discloses the optical fiber according to claim 9 as discussed above, but fails to teach wherein the insulative film comprises amorphous YAG.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the insulative film comprises amorphous YAG, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 11, Dubinskii discloses the optical fiber according to claim 10 as discussed above, wherein the ceramic cladding comprises YAG (see page 1 and see Fig. 1).
Regarding claim 12, Dubinskii discloses the optical fiber according to claim 11 as discussed above, wherein the ceramic cladding comprises polycrystalline YAG.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the ceramic cladding comprises polycrystalline YAG, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Allowable Subject Matter
Claims 14-19 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record, which is the most relevant prior art known, does not disclose or render obvious:
A method as defined by claim 14 for making a tri-layer optical fiber comprising:
sputter coating crystal particles onto a crystalline core to encase the crystalline core with an insulative film; in combination with all of the other limitations of claim 14.
The Dubinskii reference does not teach sputter coating crystal particles onto a crystalline core to encase the crystalline core with an insulative film and no other reference was found teaching sputter coating crystal particles onto a crystalline core to encase the crystalline core with an insulative film. Nothing on the record suggests that such differences would be obvious to one having ordinary skill in the art before the effective filing date of the claimed invention. Lastly, one having ordinary skill in the art does not possess any general knowledge or known motivations to find such differences obvious in view of the prior art of record. As such, claim 14 is patentably distinct and is allowed. Claims 15-19 are allowed at least by virtue of their ultimate dependency upon an allowed independent claim.
Claim 20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARBY M THOMASON whose telephone number is (703)756-5817. The examiner can normally be reached Mon.-Fri. 8am-5pm.
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, Uyen-Chau Le can be reached at (571) 272-2397. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DARBY M. THOMASON/Examiner, Art Unit 2874
/UYEN CHAU N LE/Supervisory Patent Examiner, Art Unit 2874
Prosecution Insights