Ex Parte Hartsuiker et al

Patent Trial and Appeal Board

Jan 9, 2015

12147998 (P.T.A.B. Jan. 9, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/147,998 06/27/2008 Johannes Antoon Hartsuiker 3841/4US 7889
19148 7590 01/09/2015
Shumaker, Loop & Kendrick, LLP
First Citizens Bank Plaza
128 South Tryon Street
Suite 1800
Charlotte, NC 28202-5013
EXAMINER
KRINKER, YANA B
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
01/09/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHANNES ANTOON HARTSUIKER,
IGOR MILICEVIC,
MATTHEUS JACOBUS NICOLAAS VAN STRALEN,
ROB HUBERTUS MATHEUS DECKERS, and
MARCO KORSTEN
____________

Appeal 2013-003844
Application 12/147,9981
Technology Center 1700
____________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
SHEILA F. McSHANE, Administrative Patent Judges.

McSHANE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of a decision of
the Examiner to reject claims 1–10, 14, and 16–18. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.

1 According to Appellants, the real party in interest is Draka Comteq B.V.
(Appeal Brief filed July 11, 2012, hereafter “App. Br.”).
Appeal 2013-003844
Application 12/147,998

BACKGROUND
The claims of the invention are related to a method for manufacturing
a preform for optical fibres by means of a vapour deposition process
(Specification, hereafter “Spec.,” ¶ 2). Objectives of the invention are stated
to include providing a method for manufacturing a preform for optical fibres
in which the formation of gas bubbles between the various phases on the
interior of the substrate tube is prevented as much as possible, where
deposition is carried out between the depositions of phases with gradual
changing of the process parameters of one phase into the process parameters
of the other phase (id., ¶¶ 10 and 12).
Claims 1 and 16 are the only independent claims. Representative
claim 1 is reproduced from page 14 of the Appeal Brief (Claims App’x) as
follows, with emphasis added to the relevant claim limitations:
1. A method for manufacturing a preform for optical fibres by means
of a vapour deposition process, wherein the method comprises the
steps of:

i) providing a hollow glass substrate tube having a supply side
and a discharge side;

ii) supplying doped or undoped glass-forming gases to the
interior of the hollow substrate tube via the supply side thereof;

iii) creating temperature and plasma conditions in the interior of
the hollow substrate tube for effecting the deposition of glass layers
on the inner surface of the hollow substrate tube under process
parameters, which deposition is to be regarded as comprising a
number of separate phases, each phase having an initial refractive
index value and a final refractive index value and comprising the
deposition of a number of glass layers on the inner surface of the
hollow substrate tube, the plasma being moved back and forth along
the longitudinal axis of the hollow substrate tube between a reversal
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point near the supply side and a reversal point near the discharge side
of the hollow substrate tube; and

iv) carrying out a transition deposition between the deposition
of one phase and the deposition of the other phase in step iii), wherein
the transition deposition occurs over the whole length of the substrate
tube and comprises a linear changing of the process parameters of
one phase into the process parameters of the other phase, and the
transition deposition comprises a linear changing of the final
refractive index value of one phase into the initial refractive index
value of the other phase; and wherein the thickness of a transition
deposition layer ranges from 0.15-3.5 µm and the furnace
temperature surrounding the substrate tube is around 1000 degrees C.

REJECTIONS
The Examiner rejected all the claims on appeal under 35 U.S.C. §
112, first paragraph, as failing to comply with the written description
requirement, and also under 35 U.S.C. § 103(a) as unpatentable on multiple
grounds over various combinations of prior art references including
Milicevic,2 Gliemeroth,3 House,4 and MacChesney5 (Final Office Action
entered January 13, 2012, hereafter “Final Act.,” at 2–13); (Examiner’s
Answer of November 19, 2012, hereinafter “Ans.” 2).

2 US Patent Application Publication 2006/0193581 A1, published August
31, 2006. The Milicevic reference was utilized as the English language
equivalent of Dutch Patent NL 1023438 published on May 12, 2003. (Final
Act. 4.) Appellants did not object to the use of the Milicevic reference as an
equivalent, and this was the sole reference used in the Appeal Brief and will
be the one referred to here (App. Br. 8).
3 US Patent 4,199,335, issued on April 22, 1980.
4 US Patent Application Publication 2003/0115909, published June 26,
2003.
5 US Patent 4,302,230, issued on November 24, 1981.
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Appellants seek our review of all of the rejected claims, claims 1–10,
14, and 16-18. Appellants present the following issues for appeal:
1. Claims 1–10, 14, and 16–18 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description
requirement, and
2. Claims 1–9, 14, and 16–18 under 35 U.S.C. § 103(a) as
unpatentable over Milicevic, Gliemeroth, and House.
(App. Br. 8.)
Appellants did not present any arguments directed to the § 103
rejection of dependent claim 10 (Final Act. 9; App. Br. 8).
The rejections of the independent claims, claims 1 and 16, were
contested on the same issues by Appellants, and no additional arguments
were made specific to the dependent claims (App. Br. 9–13). Therefore, we
confine our discussion to the issues argued for claims 1 and 16.

ISSUES
The Examiner rejected claims 1–10, 14, and 16–18 under 35 U.S.C.
§ 112, first paragraph as failing to comply with the written description
requirement as to the term “‘the transition deposition comprises a linear
changing of the final refractive index value of one phase into the initial
refractive index value of the other phase’” that was added by amendment
(Final Act. 2). The Examiner’s bases of rejection included the findings that
the initial refractive index value and the final refractive index value were
values, not parameters that could be changed per the claim and, further, that
as claimed these values can be equal (id.). Additionally, the Examiner found
that the refractive index values depended on the process parameters and it
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was only possible to vary the process parameters (id. at 2–3). The Examiner
further stated that there was no support for the claim limitation of the
furnace temperature of “around 1000 degrees C,” where the only
Specification disclosure was a furnace temperature of 1000 degrees C (id. at
3).
Appellants argued that the Specification supported the change in the
refractive index value as claimed because “a change in the process
parameters results in a change in the refractive index values according to the
same pattern.” (App. Br. 9.) Appellants further asserted that the final and
initial refractive index values could not be the same because claims 1 and 16
require a change to the process parameters during the transition phase, thus
the refractive index values had to change (id.). For support of the furnace
temperature of “around 1000 degrees C,” Appellants referred to a Table that
includes furnace temperatures shown from 997 to 1077 degrees C (id. at 10).
Appellants also appealed the rejection of claims 1–9, 14, and 16–18
under 35 U.S.C. § 103(a) as unpatentable over Milicevic, Gliemeroth, and
House. Appellants admitted that Milicevic taught steps (i), (ii), and (iii) of
claims 1 and 16, but disputed that Gliemeroth taught the intermediate
deposition step of step (iv) as recited in claims 1 and 16 (App. Br. 10).6
Specifically, Appellants contended that Gliemeroth did not teach step (iv) as
claimed because the “transition deposition” was distinguishable because it
did not include any deposition of glass layers, nor did it show any transition
between the conditions applied in the cladding and optical insulating layer
and those applied in the cladding and the core (id. at 11).

6 Appellants do not separately present any arguments related to the teachings
of House, so none will be addressed here.
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The Examiner responded to the Gliemeroth arguments, contending
that given the broadness of the claims at issue:
[T]he transition deposition has to only meet three requirements:
(1) the transition deposition has to occur over the whole length
the substrate tube, (2) the transition deposition comprises a
linear changing of the process parameters of one phase into the
process parameters of the other phase, wherein phase is defined
as having a (sic) initial refractive index value and a final
refractive index value and comprising the deposition of a
number of glass layers on the inner surface of the hollow
substrate tube, (3) the thickness of a transition deposition layer
ranges from 0.15-3.5 microns.

(Ans. 6.)
Given the finding that the initial and final refractive index values
could be equal, the Examiner contended that a phase could be interpreted to
just have a number of glass layers on the inner surface of a hollow substrate
tube (id. at 7). Further, the Examiner contended that Gliemeroth taught a
transition deposition occurring over the whole length of the substrate tube,
where there is gradual linear changing of process parameters (id. at 7, citing
Gliemeroth at col. 5, ll. 38–42; col. 12, ll. 44–50). Specifically, the
Examiner viewed the two layers of the reference as the “transition
deposition” where the 17 layers is deposited during a “phase” (id.). The
Examiner noted that while Gliemeroth did not explicitly disclose that the
temperature is lowered linearly, it did disclose changing the oxygen flowrate
during a transition deposition linearly, so it would have been obvious for one
of ordinary skill in the art at the time of the invention to also have changed
the temperature, another process parameter, in a linear fashion in order to
achieve a desired refractive index profile (id., citing Gliemeroth at col. 13, ll.
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46–50, 50–57). The Examiner further noted that Gliemeroth taught the
thickness of a layer of 3 to 10 microns, which overlapped the claimed range
for the thickness of a transition deposition layer of 0.15 to 3.5 microns, with
no evidence presented of unexpected results from the values outside of the
overlapped range (id., citing Gliemeroth at col. 6, ll. 28–30).

ANALYSIS
The § 112 First Paragraph Rejection of Claims 1–10, 14, and 16–18
The Examiner has the burden of establishing a prima facie case that
the appealed claims do not comply with 35 U.S.C. § 112, first paragraph,
written description requirement, by setting forth evidence or reasons why, as
a matter of fact, the written description in Appellants’ disclosure would not
reasonably convey to persons skilled in the art that Appellants were in
possession of the invention defined by the claims, including all of the
limitations thereof, at the time the application was filed. See, e.g., In re
Alton, 76 F.3d 1168, 1172, 1175–76, (Fed. Cir. 1996), citing In re Wertheim,
541 F.2d 257, 262–64 (CCPA 1976).
Upon consideration of the relied-upon evidence on this appeal record
and Appellants contentions, we find that the preponderance of evidence on
this record supports the Examiner’s determination that the disclosure of the
Specification does not sufficiently convey with any clarity to one of ordinary
skill in the art possession of the invention as claimed. We find that the final
refractive index value and the initial refractive index values of claims 1 and
16 are described in the Specification to be target values that the process
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parameters are changed to meet during the transition deposition step (Ans. 3;
Spec. ¶¶ 11, 16, 29, 30 and 31).7
Interpreting the “transition deposition” to comprise both changing
process parameters, as well as changing the refractive index values, as
Appellants advocate, is inconsistent with the express language of the
Specification that states that the transition deposition “comprises the gradual
changing of the process parameters of one phase into the process parameters
of the other phase.” (Spec. ¶ 16.)
As noted by the Examiner, the process parameters identified for the
transition phase are numerous, i.e., the amount of glass-forming gases, the
amount of dopants, the composition of the glass-forming gases, the
composition of the dopants, the velocity at which the plasma is moved along
the longitudinal axis of the hollow substrate tube between the reversal point
near the supply side and the reversal point near the discharge side, the
plasma power that is used, the pressure inside the hollow substrate tube and
the temperature profile across the hollow substrate tube. (Ans. at 3; Spec.
¶ 30.) So, while there is support in the Specification that the process
parameters are changed in a linear manner (Spec. ¶ 31), even assuming
arguendo that the term “refractive index value” has support as used in the
claims, there is no support in the Specification that the refractive index
values also linearly change. In fact, we note that the Specification suggests
otherwise, stating that at least for the deposition process that when the
process parameters are varied:

7 All references to the Specification are to the published version, US Patent
Application US 2009/0003738 A1, published January 1, 2009, which is the
same as the Specification filed on June 27, 2008, except for reformatting and
renumbering of paragraphs.
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The refractive index values need not differ from each other in
all situations, however. The fact is that it has also appeared to
be possible to deposit a number of different glass types on the
interior of the substrate tube, using different mixtures of
germanium and fluor, which different glass layers may
nevertheless have exactly the same refractive index values.

Spec. ¶ 11 (emphasis added.)
Thus, the Examiner’s claim interpretation that the initial refractive
index value and final refractive index value can be the same value is
reasonable and supported by the Specification. During examination of a
patent application, pending claims are given their broadest reasonable
construction consistent with the specification. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The initial refractive index
value and final refractive index value are not claimed as different values, and
in light of the broadness of the claims and the disclosures of the
Specification teaching that a variety of process parameters may be changed,
we find that the initial and final refractive indexes may be the same or
different values (See Spec. ¶¶ 11, 29, and 30).8
We find, however, that the Examiner erred by considering the furnace
temperature to be that disclosed in the Specification text only, when the
furnace temperatures contained in a Table should have also been considered.
See 37 C.F.R. 1.58(a) (tables are considered part of the Specification). The

8 We note Appellants identification of the Specification section stating that,
“the refractive index value of one phase being different from the refractive
index value of the other phase” (Reply Brief filed on January 18, 2013,
hereafter “Reply. Br.” 3, citing Spec. at ¶ 35). While this supports that the
respective refractive indexes may be different values in the different phases,
the preponderance of evidence supports the view that the values may also be
the same.
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Specification cross-references to the Table (Spec. ¶ 40), that was included in
the original filing of the application. (Spec., filed June 27, 2008 as “Table”).
The Table discloses example temperature values of 997 degrees C and 1077
degrees C during transition phases, thus providing sufficient support for the
claim term, “around 1000 degrees C.” However, in light of the previous
finding of lack of written description support on alternative grounds under
35 U.S.C. § 112, the Examiner’s rejection of the claims still stands.

The § 103 Rejection for Claims 1–10, 14, and 16–18
We briefly review the Specification to assist with the discussion of the
disputed issues. The Specification describes the invention as a method for
manufacturing a preform for optical fibres by means of a vapour deposition
process (Spec. ¶ 2). “Phases” are formed by creating temperature and
plasma conditions in the interior of the hollow substrate tube for effecting
the deposition of glass layers in layers (Spec. ¶ 6). A stated object of the
invention is to minimize the formation of gas bubbles between the various
phases—which adversely affect the quality of the preform—on the interior
of the substrate tube as much as possible (Spec. ¶¶ 12, 14.) The
improvement is provided by the use of the transition deposition step where
the process parameters of one phase are gradually changed into the process
parameters of the other phase, but adjustment of the process parameters
takes place in a relatively short time period in comparison with the phases in
which glass layers having a specific refractive index values are deposited
(Spec. ¶ 29).
Appellants acknowledge that Milicevic teaches steps (i), (ii), and (iii)
of claims 1 and 16, only disputing a finding of obviousness based upon
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Gliemeroth for its teaching of step (iv) of the claims. As to step (iv),
Appellants have not disputed that Gliemeroth teaches deposition on a tube,
where “a burner travel[][s] along the longitudinal axis of the tube . . . to form
metallic oxide glass layers.” (Gliemeroth, col. 5, ll. 40–44), nor have they
disputed the issue of the thickness of a transition deposition layer. However,
Appellants argue that Gliemeroth does not disclose a gradual linear
temperature “transition” as required in step (iv), nor does it include any
teaching of the deposition of glass layers as required (App. Br. 10–11).
Appellants point to Example 9, as well as other examples of Gliemeroth,
alleging that the temperature changes between the cladding, intermediate
and core layers is not gradual, nor shows linear change (id. at 13).
Appellants also allege that, for example, when Example 9 (showing two
layers of pyrolysis oxygen) and Example 11 (application of intermediate
layering without SiCl4), are considered there is no teaching of glass layering
in Gliemeroth (id. at 11–13).
For the transition temperature change issue, contrary to Appellants’
contention, we find that the Examiner’s rejection was not directed to the
cladding, intermediate and core layer formations teaching of Gliemeroth
cited by Appellants, where temperatures were varied from 1850 to 2050 and
then returned to 1975 degrees, respectively. Rather, the Examiner relied
upon a portion of Gliemeroth that teaches one layer at 1950º C as the
“transition phase,” and where the “phase” portion deposition was viewed as
the 17 layers of deposition at 1900º C. (Ans. at 7, citing Gliemeroth, col. 12,
ll. 44–50.) The Examiner further noted Gliemeroth’s teaching that
uncontrolled differences between “one layer to the next, are kept to a
minimum, and more uniform refractive index profiles are obtained” (Final
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Act. 6, citing Gliemeroth at col. 2, ll. 60–64). In light of these disclosures, a
preponderance of the evidence supports the Examiner’s position that
Gliemeroth discloses a gradual change of the process parameters.9
While we have affirmed the Examiner’s rejection that the claim
limitation “the transition deposition comprises a linear changing of the final
refractive index value of one phase into the initial refractive index value of
the other phase” does not meet the written description requirement of 35
U.S.C. § 112, we nonetheless must consider the portion of the transition
deposition step (iv) that involves it. As we interpret the claim, the
“transition deposition” of step (iv) merely further defines the deposition of
the glass layers of step (iii).
While the Examiner has provided a reasonable basis in support of the
obviousness of the process of the applied prior art “compris[ing] a linear
changing of the process parameters” as required in step (iv), the Examiner
has not adequately explained how the prior art teaches or suggests a linear
changing of refractive index values during the transition deposition as
required by the claim. While the Specification does describe that the initial
and final refractive index values could be the same, the Examiner has not
explained how the prior art teaches or suggests the claim limitation which
requires a “linear change” in the refractive index (e.g., Ans. 7, Final Act.
12). Therefore, while we affirm the rejection of all the claims for lack of

9 The Examiner acknowledged that Gliemeroth does not explicitly disclose
that the temperature change is linear. But Appellants do not argue the issue
of the Examiner’s view that a person of ordinary skill in the art would look
to another part of the reference that discloses a linear change of another
process parameter (oxygen) and, in light of that, similarly employ a linear
change for the temperature parameter (Ans. at 7).
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written description support under 35 U.S.C. § 112, we are constrained to
reverse the rejections under 35 U.S.C. § 103.
SUMMARY
The rejections of claims 1–10, 14, and 16–18 under § 112 are
affirmed.
The rejections of claims 1–10, 14, and 16–18 under § 103 are
reversed.
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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