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 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.
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.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Murakoshi et al. (CN114008500) in view of Yusa et al. (WO02094532A1).
Regarding claims 1-4, Murakoshi teaches that it is known to form a plurality of partially coupled and parallel aligned single core optical fibers (see Fig. 6B) into a tape by coating the fibers with an uncured resin (about 6 paragraphs before Problem of Transmission Loss section) wherein a portion of the uncured resin is removed from the combined fibers using a rotary blade (about 5 paragraphs before Problem of Transmission Loss section) and wherein the resin is cured thereafter (about 4 paragraphs before Problem of Transmission Loss section). Murakoshi fails to teach wherein any of the processing takes place in a bubble inhibition atmosphere. However, Yusa teaches that when processing curable resins, it is known to process them under a carbon dioxide atmosphere in order to prevent bubble formation in the resin (8 paragraph before the Claims section). Therefore, it would have been obvious for one of the ordinary skill in the art before the effective filing date of the claimed invention to use the carbon dioxide atmosphere of Yusa in resin coating method of Murakoshi in order to prevent bubble formation in the processing of Murakoshi. Further it is noted that reasonably the prior art teaches providing a carbon dioxide atmosphere wherein at least some part is necessary as a source of gas container as a “supply part” (such as a tank or a gas line) and the mold of Yusa would read on a “gas filling part”. It is noted that the teaching of Yusa would lend one of ordinary skill to apply the gas in locations wherein the uncured resin is exposed to air, thereby preventing bubble formation. As such, one employing these principles in Murakoshi may perform the provision with a confined space such as a closed chamber or at least an area wherein a carbon dioxide atmosphere could actually be provided, wherein whatever type of container that is employed to contain the gas in a limited area could be referred to as a “gas filling part”. Nonetheless, one of ordinary skill in the art applying the teachings of Yusa would not merely apply the carbon dioxide of Yusa in an unconfined manner because Yusa teaches confinement of the gas to the proximity of uncured resin so as to allow it to perform its intended function.
Response to Arguments
The applicant argues that Murakoshi does not teach the benefits of preventing bubble formation for the purpose of preventing surface roughness. However, this is not a requirement of the prior art. It is not necessary that the prior art perform the same steps as the current claims for the same reasons. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
Further the applicant argues that the prior art fails to teach the “particular structures” of claim 1 as amended. However, the only new parts provided in claim 1 is the recitation of a “gas filling part” and a “gas supply part” wherein the gas filling supply part provides gas to the filling part. As explained above it is the position of the examiner that both of these parts are implicitly present in Yusa and would be immediately envisaged by one of ordinary skill in the art.
Further the applicant makes arguments drawn to the use of supercritical carbon dioxide in the invention of Yusa. However, it is noted that Yusa teaches two uses of carbon dioxide, the first being the covering gas described by the examiner and the second being the supercritical carbon dioxide. The teachings related to the supercritical carbon dioxide are largely irrelevant because this carbon dioxide and provision was not cited by the examiner as pertinent to the problems solved by Yusa.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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 ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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