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 .
Election/Restrictions
Upon further consideration, the examiner has required three groups rather than two groups as set forth in the restriction requirement mailed 06/04/2026. The groups are set forth below.
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-6, drawn to a preform, classified in C03B 2203/16.
II. Claims 7-9, drawn to a method for producing a preform, classified in C03B 37/0124.
III. Claims 10-15, drawn to a method for producing a hollow core fiber, classified in C03B 37/0256.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process. Specifically, the product as claimed can be made by a process comprising thermally drawing a cylindrical preliminary product having a length greater than 3000 mm or may be made by collapsing a cylindrical preliminary product.
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case he product as claimed can be used in a materially different process of using that product. Specifically, the preform can be used as a decorative article, to build another preform or can be drawn into an intermediate preform. Alternatively, the process for using the product as claimed can be practiced with another materially different product. Specifically, the process can use a preform having an outer diameter length OD less than 25 mm and a ratio of length to OD of less than 71.5.
Inventions II and III are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have materially different design and mode of operation. Specifically, group II requires a method for producing a preform for an anti-resonate hollow core fiber according to claim 1, comprising thermally drawing a cylindrical preliminary product having a length of less than 3000 mm, which is not required by group III. While group III requires a method for producing a hollow core fiber by thermally drawing a preform that comprises a hollow core region and a jacket region which is traversed by hollow channels that extend between a first preform end and a second preform end, wherein the preform, starting with the first end, is fed to a heating device at a feed rate, is softened therein in part, and the hollow core fiber is continuously drawn off from the softened part while a remaining preform length is shortened, wherein the core region and/or the hollow channels are subjected to pressure, wherein at least one means for applying pressure is arranged at the second preform end, and in that the thermal drawing is terminated as soon as the means for applying pressure and/or the second preform end has reached a predetermined limit temperature and/or the remaining preform length has fallen below a predetermined minimum length, which is not required by group II. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification
the inventions have acquired a separate status in the art due to their recognized divergent subject matter
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Stephen E Murray (Reg. No. 63,206) on 09/03/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-6. Affirmation of this election must be made by applicant in replying to this Office action. Claims 7-15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 signs mentioned in the description: (1) [0075] references M2 in Fig. 1, however, Fig. 1 does not include M2 and (2) [0083] references 21’, however, none of the figures include 21’.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character not mentioned in the description: Fig. 6 includes reference character 51’ but the description does not mention 51’. 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.
Specification
The disclosure is objected to because of the following informalities, it is suggested to amend “g1” to “γ1” in [0075] and each of “g2” to “γ2” and “g1” to “γ1” in [0079]. Appropriate correction is required.
Claim Objections
Claims 1-3 and 5 are objected to because of the following informalities:
In reference to claim 1, it is suggested to amend (1) in line 3, after “wherein” and before “OD” insert “the” and (2) in line 4, amend “the ratio” to “a ratio”, in order to ensure proper antecedent basis in the claim language. Appropriate correction is required.
In reference to claim 2, in line 1 amend “the range” to “a range”, in order to ensure proper antecedent basis in the claim language. Appropriate correction is required.
In reference to claim 3, in line 1 amend “the range” to “a range”, in order to ensure proper antecedent basis in the claim language. Appropriate correction is required.
In reference to claim 5, it is suggested to (1) in line 2, amend “volume V (in mm3)” to “volume V, in mm3,”; (2) in line 2, amend “area A (in mm2)” to “area A, in mm2,” and (3) in line 2, amend “the ratio V/A is less than 12 (in mm)” to “a ratio V/A is less than 12 mm”, in order to ensure clarity and proper antecedent basis in the claim language. 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 2-4 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.
In reference to claim 2, 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 2 recites the broad recitation of the ratio L/OD of between 80 and 200, and the claim also recites “preferably in the range between 90 and 150” which is the narrower statement of the range/limitation. The claim is 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. For the purpose of compact prosecution, the ratio L/OD will be interpreted to be in a range between 80 and 200.
In reference claim 3, 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 3 recites the broad recitation of the OD in the range of 25 to 50 mm, and the claim also recites “preferably in not greater than 45 mm, and is particularly preferably smaller than 30 mm” which is the narrower statement of the range/limitation. The claim is 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. For the purpose of compact prosecution, the OD will be interpreted to be in a range of 25 to 50 mm.
In reference to claim 4, 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 4 recites the broad recitation of the preform length L of at least 3000 mm, and the claim also recites “preferably at least 4000 mm” which is the narrower statement of the range/limitation. The claim is 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. For the purpose of compact prosecution, the L will be interpreted to be at least 3000 mm.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Rosenberger et al. (WO 2022/157179) (Rosenberger).
It is noted that when utilizing WO 2022/157179, the disclosures of the reference are based on US 2025/0076570 which is an English language equivalent of the reference. Therefore, the paragraphs cited with respect to WO 2022/157179 are found in US 2025/0076570.
In reference to claims 1-4, Rosenberger teaches an anti-resonance element preform for producing an anti-resonant hollow-core fiber ([0001]) (corresponding to a preform for an anti-resonant hollow core fiber). The preform comprises a hollow cladding tube having a cladding tube longitudinal axis and anti-resonance element (ARE) preforms positioned in the cladding tube ([0017]-[0023]; [0112]-[0115]; [0380]; [0385]; [0770]) (corresponding to a hollow core extending along a fiber longitudinal axis and a jacket surrounding the hollow core and traversed by hollow channels). The preform has a length of more than 1 m and an outer diameter of more than 40 mm ([0011]) (corresponding to the preform has an outer diameter OD and a length, wherein the OD is at least 25 mm; the outer diameter OD is in the range of 25 to 50 mm). The length of the ARE preforms is 1 to 5 m ([0607]). Given the ARE preforms are in the cladding tube, it is clear the cladding tube and therefore the preform will have a length of at least the length of the ARE preform (i.e., 1 to 5 m) (corresponding to the preform length L is at least 3000 mm).
Rosenberger teaches a range of the outer diameter and length of the preform which overlaps the presently claimed range. Within the overlapping portions a ratio L/OD can be calculated to be greater than 71.5 (i.e., 4000mm/40mm = 100) (corresponding to the ratio L/OD is greater than 71.5; the ratio L/OD is in the range between 80 and 200).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claim 5, Rosenberger teaches the limitations of claim 1, as discussed above. Rosenberger teaches an outer diameter of the preform is more than 40 mm and the length is 1 to 5 m ([0011]; [0607]). An outer surface area can be calculated and is at least 128,176.98 mm2 (i.e., A = 2πrL+2πr2 = 2π*(40/2)*1000+2π(40/2)2).
Rosenberger further teaches the ARE preform has an outer radius larger than 2 and smaller than 5 mm and an inner radius larger than 2 and smaller than 3 mm ([0057]-[0061]). The cladding tube has a wall thickness of 0.2 to 2 mm ([0411]). The preform includes three, four, five, six, seven or eight ARE elements ([0141]). A volume of the preform can be calculated and is at least 146,522 mm3 (i.e., V = Vcladding+VARE, total = [π(r2cladding,out-r2cladding,in)*L]+(number of ARE preforms)*[ π(r2out-r2in)*L] = π(202-192)*1000 + 3*(32-12)*1000 = 146,522.113 mm3). Therefore, a ratio of volume to area is less than 12 (i.e., 146,522/128,177 = 1.14) (corresponding to the preform has a volume V and an outer surface area A and a ratio V/A is less than 12 mm).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claim 6, Rosenberger teaches the limitations of claim 1, as discussed above. Rosenberger further teaches the cladding tube and ARE preforms are quartz glass ([0412]; [0616]). Given that the preform of Rosenberger is substantially identical to the present claimed preform in composition and structure, it is clear that the preform of Rosenberger would inherently have a mass at least 3 kg.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
“Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. Id. (MPEP 2112.01).
Conclusion
The prior art made of record and not relied upon, namely Rosenberger et al. (WO 2022/128271 English equivalent US 2024/0101464), Rosenberger et al. (US 2022/0244453) and Rosenberger et al. (EP 4 011 841 English equivalent US 2024/0034665), is considered pertinent to applicant's disclosure. However, the rejections using these references would be cumulative to the rejections of record set forth above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARY I OMORI/Primary Examiner, Art Unit 1784
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