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 .
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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The prior art document(s) submitted by applicant in the Information Disclosure Statements filed on 8/8/2024 and 8/5/2025 have all been considered and made of record (Note the attached copy of forms PTO-892).
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “dashed circular line” 12c which should be present in at least Fig. 5. 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. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 1c (see Fig. 5-8). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “first glass region” (see claim 1) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The disclosure is objected to because of the following informalities:
Para. 115: “intermediate product 17” should instead state “SiO2 soot layer 17”.
Appropriate correction is required.
Claim Objections
Claims 11 and 14 are objected to because of the following informalities:
Claim 11: “in at least in physical and/or chemical property, the property being selected from” should instead state “in at least in physical and/or chemical property, the physical and/or chemical property being selected from”.
Claim 14: “said layer” should instead state “said cladding material layer”.
Appropriate correction is required.
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 1-15 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.
Regarding claim 1, the preamble recites “a method for producing a multi-core fiber with a marker zone or a pre-form for such a multi-core fiber”. It is unclear if the “preform for such a multi-core fiber” is a different multi-core fiber that is not required to have a marker zone. If said preform is not required to have a marker zone, does this mean that a marker region and/or a marker element do not exist if the preform does not have the marker zone? No relationship has been established between the marker zone, the marker region, and the marker element, so additional clarity is requested.
Regarding claim 1, the preamble recites “a method for producing a multi-core fiber with a marker zone or a pre-form for such a multi-core fiber” and the body recites “the multi-core fiber or the pre-form being obtained by elongation of the semi-finished product”. If the preamble is selected as “a pre-form for such a multi-core fiber”, then the limitation “the multi-core fiber being obtained by elongation of the semi-finished product” does not appear to apply since a pre-form cannot be produced from a multi-core fiber.
Regarding claim 1, the “semi-finished product” is unclear. Is it meant to refer to either of the options in the preamble? Does it reference any point in time during the production of said preform or multi-core fiber?
Regarding claim 1, the body recites “the multi-core fiber or the pre-form being obtained by elongation of the semi-finished product”. A preform is well-known to be elongated in a drawing step in order to turn a preform into a fiber. However, it is unclear how a preform is obtained from an elongation step. It appears that the Applicant is attempting to claim two methods in one claim wherein one method is the production of a preform and the other method is the production of a multi-core fiber wherein the fiber may be made using the preform of the first method. By claiming both methods in one process, the language presents a multitude of options that are not all logical, such as forming a preform from a fiber.
Regarding claim 1, the body recites “the formation of a semi-finished product which comprises(:) a glass cladding region…, and at least one marker element” and “the production of the glass cladding region comprising
a method step in which a cladding material layer is deposited on an outer surface of a target rod having a target rod longitudinal axis using an outside deposition method”. It is unclear if the target rod is a part of the glass cladding region or if only the deposited cladding material layer forms the glass cladding region. If the target rod forms the glass cladding region, then is there a marker element required as part of the semi-finished product, a marker element required as part of the target rod, or is a separate marker rod required for the semi-finished product than the marker element provided in the target rod provided in the glass cladding region provided in the semi-finished product? More succinctly, is the claim requiring a minimum of one or two marker elements? And where does it exist?
Regarding claim 1, the body recites “a hollow channel… is designed to receive the marker element”. The method does not require the design to be implemented in a formation step. Does this mean that any hollow channel reads on the claim even if the hollow channel does not receive a marker element? Or is the language equivalent to a “a hollow channel capable of receiving a marker element”?
Regarding claim 3, the claim recites “the marker element forms at least one cylindrical component or a layer or mass connected to the target rod”. Claim 1 upon which claim 3 depends recites:
“a marker region extending along the target rod longitudinal axis and adjacent to the first glass region,
which marker region
contains the marker element or
provides a hollow channel which either
forms the marker element or
is designed to receive the marker element”.
If the marker element is formed by a hollow channel per claim 1, then how is the marker element also forming a “cylindrical component or a layer or mass connected to the target rod” per claim 3? Is the hollow channel cylindrical and thus considered as a cylindrical component? How can a hollow channel be a layer? How can a hollow channel be a mass connected to the target rod?
Regarding claim 3, the claim recites “the marker element forms at least one cylindrical component or a layer or mass connected to the target rod”. The marker element is a part of the target rod according to claim 1 upon which claim 3 depends so it is unclear how the marker element of the target rod is connected to the target rod.
Regarding claim 6, the claim recites “the marker element is attached to the target rod”. Claim 1 upon which claim 6 depends recites:
“a marker region extending along the target rod longitudinal axis and adjacent to the first glass region,
which marker region
contains the marker element or
provides a hollow channel which either
forms the marker element or
is designed to receive the marker element”.
If the marker element is formed by a hollow channel per claim 1, then how is the marker element attached to the target rod? If the marker element is not a hollow channel, then how is it attached to the target rod if the target rod already comprises the marker element? Is the claim perhaps introducing a second marker element that is capable of attachment to the target rod already containing the first marker element?
Regarding claim 11, the claim recites “wherein the marker element is designed as a hollow channel”. The method does not require the design to be implemented in a formation step. Does this mean that any marker element reads on the claim even if the marker element is not formed as a hollow channel? Or is the language somehow equivalent to a “a marker element comprising a hollow channel”?
Regarding claim 11, the claim recites “wherein the marker element is designed as a hollow channel”. Claim 1, upon which claim 11 depends, recites:
“a marker region extending along the target rod longitudinal axis and adjacent to the first glass region,
which marker region
contains the marker element or
provides a hollow channel which either
forms the marker element or
is designed to receive the marker element”.
If the marker element is not formed by a hollow channel per claim 1, then how is the marker element also designed as a hollow channel per claim 11? The information is conflicting and unclear. If the claim is meant to limit to the choice in claim 1 where the marker element is a hollow channel, then the examiner suggests using “when” to make claim 11 clearer.
Regarding claim 11, the term “it” renders the claim indefinite because it is unclear if “it” is meant to refer to the marker element or the hollow channel. Is it that the hollow channel contains a marker material, as in the hollow channel holds/surrounds/is filled with the marker material? Or is it that the channel itself contains the marker material, as in the channel is formed of marker material instead of filled with marker material?
Regarding claim 13, the claim recites “wherein the marker region is designed as a hollow channel”. Claim 1, upon which claim 13 depends, recites:
“a marker region extending along the target rod longitudinal axis and adjacent to the first glass region,
which marker region
contains the marker element or
provides a hollow channel which either
forms the marker element or
is designed to receive the marker element”.
If the marker region does not contain the marker element formed by a hollow channel per claim 1, then how is the marker region designed as a hollow channel per claim 13? The information is conflicting and unclear. If the claim is meant to limit to the choice in claim 1 where the marker element is a hollow channel, then the examiner suggests using “when” to make claim 13 clearer.
Regarding claim 14, the claim recites the limitation "said layer". There is insufficient antecedent basis for this limitation in the claim. Is the claim referencing the cladding material layer or attempting to introduce a new layer?
Regarding claim 15, the terms “preferably” and “very preferably” are relative terms which renders the claim indefinite. The terms “preferably” and “very preferably” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. “Preferably” is indicative of someone’s preference, but does not identify that the claim must be limited to the preferred, or very preferred, limitation.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 15 recites the broad recitation “the marker element being preferably arranged between the first glass region and the cladding material layer”, and the claim also recites “and very preferably at least partially filling a recess in an outer surface of the target rod” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 15 recites “wherein the target rod comprises a first glass region, which is adjoined by the marker element” which renders the claim indefinite because it is unclear what the marker element is adjoined to. Is the marker element adjoined to any part of the target rod? Or is the marker element adjoined to the first glass region of the target rod?
Claims 2-13 are rejected due to their dependency upon a rejected claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 12, the claim recites:
“(a) providing the target rod comprising the marker region,
(b) providing a plurality of core rods containing a core glass,
(c) depositing the cladding material layer on the outer surface of the target rod using the outside deposition method,”
How do these limitations further limit claim 1? How could the target rod comprising the marker region been provided after limitations in claim 1 already involve the target rod and marker element? Is claim 12 introducing a second target rod comprising a second marker region? How could a plurality of core rods containing a core glass be provided after limitations in claim 1 already involve a plurality of core rods containing a core glass? Is claim 12 introducing a second plurality of core rods containing a second core glass? Should this claim instead say “the plurality of core rods containing the core glass” if the same structure is meant to be referenced?
Claim 12 also recites “(d) generating core rod bores at least in the cladding material layer and optionally in the first glass region of the target rod”. It is unclear how something that is optional further limits the structure of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
The scope of claims 1, 3, 6, and 11-15 are unclear as discussed above. As a result, a meaningful formulation of art rejections cannot be done at this time. See MPEP 2173.06 II, 2nd paragraph:
… where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. … a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Therefore, claims 1-13 have not been further considered with respect to prior art. This is not an indication of allowable subject matter.
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) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gonda et al. US 20160075590 A1 – Embodiment 4 (hereinafter "Gonda 4") in view of Gonda et al. US 20160075590 A1 – Embodiment 1 (hereinafter "Gonda 1").
Regarding claim 14, Gonda 4 discloses an intermediate product for producing a multi-core fiber or a pre-form for same (see Fig. 19), comprising
a target rod made of glass (the top drawing of Fig. 19 with 20, 24, and 25 is interpreted as the target rod made of glass), and
a cladding material layer containing SiO2 soot (third cladding portion 26 is interpreted as the cladding material layer containing SiO2 soot; see Para. 125 where 26 is produced using outside deposition method which forms a silica soot layer; the chemical formula for silica is SiO2),
said cladding material layer surrounding the target rod (26 surrounds the interpreted as target rod in Fig. 19) and being connected to the target rod in a form-fitting manner (see Fig. 19 where 26 follows the peripheral form of the interpreted target rod).
Gonda 4 fails to teach:
a marker element formed on or in the target rod, and
said cladding material layer surrounding the marker element.
Gonda 1 teaches:
a marker element formed in the target rod (see Fig. 10 where marker M is interpreted as the marker element and is formed in the preform 38 which is interpreted as the target rod), and, when combined with Embodiment 4, results in a modification wherein:
said cladding material layer surrounding the marker element (26 surrounds 25 in which marker M would be within and thus also surrounded; see Annotated Fig. 19).
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 marker M of Embodiment 1 in the preform of Embodiment 4 of Gonda for the purpose of providing a marker element in the resultant preform and/or fiber thereby achieving a marker useful for alignment purposes.
Regarding claim 15, Gonda 4/Gonda 1 discloses the intermediate product according to claim 14 as discussed above,
wherein the target rod comprises a first glass region (second cladding portion 25 is interpreted as the first glass region),
which is adjoined by the marker element (25 is adjoined by M in Fig. 10),
the marker element being preferably arranged between the first glass region and the cladding material layer and very preferably at least partially filling a recess in an outer surface of the target rod (M is between a portion of 25 and a portion of 26 in Annotated Fig. 19; the space where M exists is interpreted as a recess in an outer surface of the interpreted target rod since M exists in a space in the outermost layer 25 of the interpreted target rod).
For clarity, the following annotation is provided to show Fig. 19 with the marker of Fig. 10:
PNG
media_image1.png
657
318
media_image1.png
Greyscale
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
/TINA WONG/Primary Examiner, Art Unit 2874
Prosecution Insights