DETAILED ACTION
This office action is in response to the election filed on June 12, 2026. Claims 1-17 remain pending (claims 11-17 are “Withdrawn” from consideration as being related to non-elected Groups).
Claims 1-10 are examined herein in a 1st office action on the merits, with claim 1 as the sole independent.
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10, in the reply filed on June 12, 2026, is hereby acknowledged. Claims 11-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Groups, there being no allowable generic or linking claim.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The prior art documents submitted by Applicant in the Information Disclosure Statements filed on May 14, 2025 and January 3, 2025, have been considered and made of record (note attached copy of forms PTO-1449).
Drawings
The original drawings (seven (7) pages) were received on January 3, 2025. These drawings are acknowledged.
Claim Objections
Claim 2 is objected to because of the following informalities: the following phrase is awkward (in English) and should be re-drafted: “wherein the additional ultraviolet irradiation is performed under one of conditions: …”. Appropriate correction is required. Applicant’s cooperation is also respectfully requested to carefully review all pending claims 1-10 as they appear to be translations from Japanese [Wingdings font/0xE0] English.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Atsushi et al. JP 2003 095706 A (cited in the IDS dated January 3, 2025)
Regarding sole pending independent claim 1, Atsushi et al. JP 2003 095706 A teaches (ABS; Examples; Comparative Examples 3-5; Tables 1, 2, 3, and 4; corresponding text, paragraphs [0058] – [0088], notably paragraph [0070]; Claims) a structurally designed optical fiber that is colored and coated, which the optical fiber comprises: a bare optical fiber 1 (base fiber material; glass core); a primary layer (at P 1-6, “first coating layer”, para [0003]), the primary layer formed of a first UV curable resin covering the underlying bare optical fiber; and a secondary layer (at S 1-1; “second coating layer”, para [0003]), the secondary layer is formed by a second UV curable glass resin which covers the underlying primary layer. Therefore, the overall design of the optical fiber that is colored and coating (with UV curable resin materials) is formed as claimed. See also the PCT JP ‘382 Written Opinion (from the IDS dated January 3, 2025) and the Japanese Office Action for JP ‘352 (IDS May 14, 2025).
Regarding base independent claim 1, there is no express and exact language in Atsushi JP ‘706 in which the primary layer includes “carbon-sulfur bond” and contains 0.03 wt% or more and 0.65 wt% or less of “sulfur atoms” (the 1st “wherein” clause). However, the prior art of Atsushi includes mercapto compounds and curable UV resin materials in the primary layer, in which such mercapto is by weight of 0.2 to 4% by weight. Additionally, there is no express and exact language in Atsushi JP ‘706 itself in which an “additional ultraviolet irradiation” is applied to the primary layer in order to increase the Young’s Modulus, but such increase is less than 0.09 MPa (the 2nd “wherein” clause). Notably, if the increase in Young’s Modulus is less than 0.09 MPa, it is not immediately clear if this is a positive limitation into claim 1, one which requires different structure. In other words, if there is ZERO increase in Young’s Modulus, does this meet an increase of “less than 0.09 MPa” ?
Therefore, the Examiner acknowledges that the very close prior art of Atsushi JP ‘706 cannot meet the strict literal requirements for anticipation (under 35 U.S.C. 102), notably in relation to each and every specific feature in the two “wherein” clauses. However, Atsushi JP ‘706 itself makes obvious to overall combination of features in claim 1 (under 35 U.S.C. 103) for the following reasons.
Atsushi JP ‘706 teaches the general physical properties of the design, even as the “wherein” clauses are considered. The designed “primary layer” and “secondary layer” are structurally similar to the overall operation of Applicant’s claimed structure, in that Tables 1, 2, and 3 show example embodiments in which sulfur (in the form of mercapto compounds, note para [0070]) is found, at about 0.4 wt%. The amount of 0.4 wt% is in the range of 0.03 wt% to 0.65 wt% as claimed. Additionally, the feature of the Young’s Modulus being increased by a very small amount (noting “less than” 0.09 MPa”) does not result in a substantially different product or operation of the colored coating optical fiber, as a whole, because such infinitesimally small changes to the Young’s Modulus of the primary coating layer in Atsushi JP ‘706 do not change the operation thereof. Therefore, and based on careful consideration of claim 1’s two “wherein” clauses, there is no patentable distinction over Atsushi JP ‘706 in an obviousness determination (35 U.S.C. 103). Sole examined independent claim 1 is found obvious over Atsushi JP ‘706 based on the tenets of KSR v. Teleflex, 127 S.Ct. 1727 (2007).
For the following dependent claims, the term “POSITA” is referenced to mean a “person having ordinary skill in the art” at the time of the effective filing date of the current application.
Regarding dependent claim 2, the small amounts of irradiation of the primary layer by UV light would have been an obvious implementation of the change in Young’s Modulus, to POSITA. KSR.
Regarding claim 3, the change in glass transition temperature would be minor and non-critical to the overall operation of a colored coating fiber, and the prior art of Atsushi would still function in the same manner based on their design. KSR.
Regarding claims 4 and 5, mercapto is found in Atsushi’s primary layer (para [0070]), in levels higher than 0.2 wt% (at least 0.4 wt% disclosed).
Regarding claims 6, 7, and 9, the overall design parameters for Young’s Modulus and glass transition temperature would be similar is scope to Atsushi’s colored coated optical fiber, based on at least the example embodiments found in Tables 1-3. Although not express and exact, having those Young’s Modulus MPa’s and the glass transition temperatures (between “room temperature” and -55 C) would have been obvious design choices, if those values were not exactly found. POSITA would have recognized that these amounts were within obvious ranges of design for the UV curable resin features of coatings on an optical fiber, such as in Atsushi. It would have required no undue burden or unnecessary experimentation to arrive at such tolerances and to be within margins of error. KSR. For these reasons, claims 6, 7, and 9 are found obvious over Atsushi, standing alone.
Regarding claim 8, see Table 1 and paras [0059] – [0072], which give example which meet the features of not having a repeating unit carbon-sulfur bond in a main chain skeleton of the primary layer. Therefore, claim 8 is obvious to POSITA. KSR.
Regarding claim 10, Atsushi teaches at least a four-core ribbon fiber design.
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: PTO-892 form references A, N, and U, which pertain to the state of the art of optical fibers with coatings thereon, and UV-irradiated resins.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Petkovsek whose telephone number is (571) 272-4174. The examiner can normally be reached M-F 7:30 - 6 PM.
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.
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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 September 3, 2026
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