DETAILED ACTION
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.
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 .
Claim Objections
Claim 1 is objected to because of the following informalities: typographical error in line 5, “outer cladding hollow tubes” should be “outer cladding hollow tube”, since “an outer cladding hollow tube” is recited in line 4 of the claim. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
Claims 1 and 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Russell (US 2018/0267235) in view of Dawes (US 2003/0230118).
Regarding claim 1, Russell (US 2018/0267235) discloses ([0001]) a method for manufacturing a hollow core microstructured optical fiber (i.e. “anti-resonant element” hollow-core photonic crystal fiber [ARE HC-PCF] or hollow-core antiresonant reflecting fiber [ARE-HC-AF]). Russell ([0095] and (Fig. 6A-6C) discloses the method comprising: providing a preform comprising jacket preform 32 (corresponding to an outer cladding hollow tube and comprising an outer cladding region), and ARE preforms 23 (corresponding to a plurality of hollow tubes) fixed to an inner surface of the jacket preform 32. Russell ([0049]) discloses drawing the preform to obtain the HC-AF (100 Fig. 6C) (i.e. hollow core microstructured fiber).
Russell discloses the preform comprising the jacket preform (32) and the plurality of hollow tubes is disclosed at [0096] to have a hollow tubular form and is therefore reasonably construed to comprise a first and second end, a length, and center axis even though this is not expressly stated).
In the drawing of the preform, Russell ([0097]-[0098]) discloses the ARE (i.e. plurality of hollow tubes) and core transverse dimensions can be influenced by applying a vacuum or an increased pressure to the jacket preform and/or the ARE preforms (i.e. plurality of hollow tubes). Russell discloses the ARE preforms (i.e. plurality of hollow tubes) connected to at least one second external reservoir 42(Fig. 5) or groups of AREs are connected to two different external reservoirs for creating different inner transverse dimensions as shown in Fig. 1E. Based on the disclosures by Russell above, it would be obvious to a person having ordinary skill in the art, the drawing comprising controlling pressure during drawing provides for subjecting the sub-set of said plurality of hollow tubes (i.e. a group of AREs) to a specific controlled pressure during drawing.
Regarding the inserting step, Dawes discloses a method of producing a microstructured optical fiber by controlling the pressure of internal voids within the preform which one of ordinary skill in the art would consider to be of particular relevance to the matter at hand in Russell. The Dawes the method comprises:
providing a preform having a center axis, a length, a first end, and a second end and comprises at least one longitudinal hole extending lengthwise (“a preform having a proximal end and a distal end, a first set of holes and a second set of holes, both holes being formed longitudinally through the preform between the proximal end and the distal end” – [0008]; see figure 9 – left side),
inserting a first end of a pressure tube into said hole of said preform at the first end of the preform (“In another embodiment of the invention, the step of coupling the first set of holes to a first pressure system includes the steps of providing a hollow tube having a proximal end and a distal end for each hole of the first set of holes; inserting the proximal end of one hollow tube into each hole of the first set of holes at the proximal end of the preform; affixing the proximal end of each hollow tube to the preform using a holding material, thereby coupling the hollow tube to the hole; and coupling the distal end of each hollow tube to the first pressure system” – [0010]; see figure 9 – right side), and
subjecting said hole of said preform to a controlled pressure via said pressure tube during the drawing (“During the drawing of the fiber, the first pressure control system maintains a positive pressure on the holes of the first set of holes to keep them open, while the holes of the second set of holes remain at the furnace pressure, and close due to surface tension” – [0033]; “In another aspect of the present invention, the first set of holes is coupled to a first pressure system, and the second set of holes is coupled to a second pressure system.” – [0034]; see also [0039] regarding exemplary pressure control methods employed).
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In view of the foregoing, Dawes is understood to teach a method for drawing a preform comprising a step of inserting a first end of a respective pressure tube(s) into an inner cladding hollow tube of an optical fiber preform at the first end of the preform and subsequently subjecting the inner cladding hollow tube(s) of said preform to a controlled pressure via said pressure tube during the drawing. Dawes ([0038]) further discloses the skilled artisan can control the pressures inside the holes in order to expand, maintain, or reduce the relative diameters during the draw, and in the drawing of the preform (Fig. 6) Dawes discloses the distal end of the preform including drawing with a conventional heat source to provide for an optical fiber, and Dawes ([0040]) discloses the preform is heated to near the softening point of the material during the drawing and a gas pressure is applied to the holes and gas pressure is controlled to expand the holes of the preform at the proximal end.
It may therefore be said that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. A person having ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each step/element merely performs the same function as it does separately. That is, Russell teaches coupling a sub-set (i.e. group) of hollow tubes 23 of the optical fiber preform to a controlled pressure source during drawing the preform but does not delineate how this coupling is performed, and Dawes teaches an effective method for providing pressure sealed coupling between inner tubes of an optical fiber preform prior to subjecting the inner cladding hollow tube(s) of the preform to a controlled pressuring via said pressure tube during drawing, which is similar to drawing steps of Russell. A person having ordinary skill in the art would have recognized in the method of Russell to utilize the pressure source coupling technique of Dawes (i.e. inserting a first end of a respective pressure tube into a hollow tube of the optical fiber preform at the first end of the preform), and therefore, would have resulted in an operable method for the drawing step of Russell under a controlled pressure including inserting a first end of a pressure tube into each of a sub-set (i.e. group) of the plurality of hollow tubes of the preform at the first end of the preform.
Regarding the plurality of hollow tubes are arranged inside and fused to the outer cladding hollow tubes, Russell teaches that the hollow tubes (23) are fixed to the outer cladding tube by heating (“with the fixing step of FIG. 6B, the ARE preforms 23 are fixed to the corners of the inner hexagonal shape of the jacket preform 32. This is obtained by applying heat resulting in a physical connection between the ARE preforms and jacket preform” – [0097]). Where Russell teaches fixing of the inner tubes to the outer cladding tube by heating to create a physical connection, the prior art is either construed to teach that the hollow tubes are arranged inside and fused to the outer cladding region, or in the alternative, it would be obvious to a person having ordinary skill in the art at the time of the invention, such a fusion step is rendered obvious in view of the Russell disclosure.
Regarding claim 3, in addition to the rejection of claim 1 above, Russell ([0035]) further discloses the preform may comprise, for example 4 or 6 or 5 or 7, hollow tubes (i.e. “AREs”) and provides a plurality of examples wherein the number of hollow tubes or “AREs” is 6 (figure 1). Therefore, based on the additional disclosure by Russell, it would be obvious to a person having ordinary skill in the art, in the method of Russell in view of Dawes, the plurality of hollow tubes comprises 4 or 5 or 6 or 7 hollow tubes, which is includes examples within Applicant’s claimed range of 5, 6, 7, or 8 hollow tubes.
Regarding claim 4, as discussed in the rejection of claim 1 above, Russell discloses the ARE preforms (i.e. plurality of hollow tubes) connected to at least one second external reservoir 42 (Fig. 5) or groups of AREs are connected to two different external reservoirs for creating different inner transverse dimensions as shown in Fig. 1E. Also discussed in the rejection of claim 1 above, Russell in view of Dawes provides for inserting a first end of a pressure tube into each sub-set of the plurality of hollow tubes of the preform at the first end of the preform. Additionally, Dawes (Fig. 9) illustrates the tube comprising the inserted pressure tube is open to receive the pressure tube. Accordingly, it would be obvious to person having ordinary skill in the art, in the method of Russell in view of Dawes, the plurality of hollow tubes are open at the first end of the preform for facilitating insertion of the first ends of the pressure tubes into the plurality of hollow tubes, as claimed.
Regarding claim 5, as discussed in the rejection of claim 1 above, the hollow jacket preform tube 32 corresponds to an outer cladding hollow tube comprising an outer cladding region. Russell ([0035]) discloses the AREs are attached to an inner surface of the outer cladding region. Accordingly, modified method of Russell provides for the outer cladding hollow tube comprises an outer cladding region.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Russell (US 2018/0267235) in view of Dawes (US 2003/0230118) as applied to claim 1 above, and further in view of Beat et al. (US 2011/0195515 – hereinafter Beat).
Regarding claim 2, as discussed in the rejection of claim 1 above, a person having ordinary skill in the art would have recognized in the method of Russell to utilize the pressure source coupling technique of Dawes (i.e. inserting a first end of a respective pressure tube into a hollow tube of the optical fiber preform at the first end of the preform), and therefore, would have resulted in an operable method for the drawing step of Russell under a controlled pressure including inserting a first end of a pressure tube into each of a sub-set (i.e. group) of the plurality of hollow tubes of the preform at the first end of the preform. In addition to the rejection of claim 1 above, Dawes ([0040]) teaches the holes coupled to pressure systems by fitting small glass tubes, and Dawes (Fig. 9 – right side) illustrates a first end of a pressure tube inserted into a hole, a second end connected to a first pressure control system and outside of the respective hole. Accordingly, it would be obvious to a person having ordinary skill in the art, in the method of Russell in view of Dawes that each of the pressure tubes have a supply section (i.e. second end) which is outside the respective hollow tube of the sub-set of the plurality of hollow tubes and wherein the pressure tubes are made of glass (i.e. silica).
Dawes ([0040]) teaches an epoxy material used to fit the glass tubes into the holes of the preform. However, Russell and Dawes fail to disclose at least the supply section of the pressure tubes has an outer polymer coating. However, Beat ([0021]) teaches it is known in the prior art to externally coat a glass tube with a protective polymer coating. Therefore, based on the additional teachings by Beat, it would be obvious to a person having ordinary kill in the art, the method of Russell in view of Dawes could be improved by providing a protective polymer coating on each pressure tube length section to protect the glass tube. Accordingly, provision of such a polymeric coating on the supply side of each pressure tube would not patentably distinguish the claimed invention over the prior art of record absent some showing of criticality for the recited feature. That is, since Beat discloses a polymeric coating is commonly used to protect glass articles, and in this case, the proximal end of the Dawes pressure tubes are coupled to a pressure control device, it would be obvious to a person having ordinary skill in the art, the provision of outer polymer coating on the Dawes glass pressure tube, to protect the pressure tube from damage due to coupling with the pressure control device, and thus, would not patentably distinguish the claimed invention over the prior art for one of ordinary skill in the glass working arts.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,110,248 (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4/3/2/1 of the reference patent, specifically in claim 1, claims the claimed steps of providing a preform, inserting a first end of a pressure tube into each of a sub-set of the plurality of hollow tubes, drawing the preform, and the claimed pressure tube length section, and in claim 4, claims the plurality of hollow tubes arranged inside and fused to the outer cladding region of the outer cladding hollow tube (see claim 3).
Claims 3 and 5 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,110,248 (reference patent) in view of Russell (US 2018/0267235).
Regarding claim 3, Claim 4 fails to claim the plurality of hollow tubes comprises 5, 6, 7, or 8 hollow tubes. However, Russell (US 2018/0267235) discloses ([0001]) a method for manufacturing a hollow core microstructured optical fiber (i.e. “anti-resonant element” hollow-core photonic crystal fiber [ARE HC-PCF] or hollow-core antiresonant reflecting fiber [ARE-HC-AF]). Russell ([0095] and (Fig. 6A-6C) discloses the method comprising: providing a preform comprising jacket preform 32 (corresponding to an outer cladding hollow tube and comprising an outer cladding region, as claimed in claim 5, and ARE preforms 23 (corresponding to a plurality of hollow tubes) fixed to an inner surface of the jacket preform 32. Russell ([0049]) discloses drawing the preform to obtain the HC-AF (100 Fig. 6C) (i.e. hollow core microstructured fiber). Russell ([0035]) further discloses the preform may comprise, for example 4 or 6 or 5 or 7, hollow tubes (i.e. “AREs”) and provides a plurality of examples wherein the number of hollow tubes or “AREs” is 6 (figure 1). Therefore, based on the additional disclosure by Russell, it would be obvious to a person having ordinary skill in the art, in the method claim 4, the plurality of hollow tubes comprises 4 or 5 or 6 or 7 hollow tubes, which includes examples within Applicant’s claimed range of 5, 6, 7, or 8 hollow tubes.
Regarding claim 5, Claim 4 fails to claim the details of the outer cladding hollow tube, such as the claimed outer cladding region. However, Russell (US 2018/0267235) discloses ([0001]) a method for manufacturing a hollow core microstructured optical fiber (i.e. “anti-resonant element” hollow-core photonic crystal fiber [ARE HC-PCF] or hollow-core antiresonant reflecting fiber [ARE-HC-AF]). Russell ([0095] and (Fig. 6A-6C) discloses the method comprising: providing a preform comprising jacket preform 32 (corresponding to an outer cladding hollow tube and comprising an outer cladding region, as claimed in claim 5, and ARE preforms 23 (corresponding to a plurality of hollow tubes) fixed to an inner surface of the jacket preform 32. Russell ([0049]) discloses drawing the preform to obtain the HC-AF (100 Fig. 6C) (i.e. hollow core microstructured fiber). Therefore, based on the additional disclosure by Russell that it is known in the prior art that an outer cladding hollow tube for a hollow core microstructured fiber comprises an outer cladding region, it would be obvious to a person having ordinary skill in the art, in the method of claim 4 the outer cladding tube comprises an outer cladding region.
Claim 4 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,110,248 (reference patent) in view of Dawes (US 2003/0230118).
Claim 4 fails to claim details of the plurality of hollow tubes for facilitating insertion of the first ends of the pressure tubes. However, Dawes discloses a method of producing a microstructured optical fiber by controlling the pressure of internal voids within the preform which one of ordinary skill in the art would consider to be of particular relevance to the claimed subject matter. The Dawes the method comprises:
providing a preform having a center axis, a length, a first end, and a second end and comprises at least one longitudinal hole extending lengthwise (“a preform having a proximal end and a distal end, a first set of holes and a second set of holes, both holes being formed longitudinally through the preform between the proximal end and the distal end” – [0008]; see figure 9 – left side),
inserting a first end of a pressure tube into said hole of said preform at the first end of the preform (“In another embodiment of the invention, the step of coupling the first set of holes to a first pressure system includes the steps of providing a hollow tube having a proximal end and a distal end for each hole of the first set of holes; inserting the proximal end of one hollow tube into each hole of the first set of holes at the proximal end of the preform; affixing the proximal end of each hollow tube to the preform using a holding material, thereby coupling the hollow tube to the hole; and coupling the distal end of each hollow tube to the first pressure system” – [0010]; see figure 9 – right side), and
subjecting said hole of said preform to a controlled pressure via said pressure tube during the drawing (“During the drawing of the fiber, the first pressure control system maintains a positive pressure on the holes of the first set of holes to keep them open, while the holes of the second set of holes remain at the furnace pressure, and close due to surface tension” – [0033]; “In another aspect of the present invention, the first set of holes is coupled to a first pressure system, and the second set of holes is coupled to a second pressure system.” – [0034]; see also [0039] regarding exemplary pressure control methods employed).
Dawes (Fig. 9) illustrates the tube comprising the inserted pressure tube is open to receive the pressure tube. Accordingly, it would be obvious to person having ordinary skill in the art, in the method of claim 4, the plurality of hollow tubes are open at the first end of the preform for facilitating insertion of the first ends of the pressure tubes into the plurality of hollow tubes, as claimed.
Conclusion
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/LISA L HERRING/Primary Examiner, Art Unit 1741