Ex Parte Brown

Patent Trial and Appeal Board

Aug 21, 2018

11699162 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/699, 162 01/29/2007
142065 7590
Belay IP Oy
Hietalahdenkatu 2 C 31 b
Helsinki, 00180
FINLAND
08/23/2018
FIRST NAMED INVENTOR
David Paul Brown
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
STREAM 1 US 6597
EXAMINER
DEHGHAN, QUEENIE S
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
08/23/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
josh.wert@belayip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID PAUL BROWN
Appeal2017-009414
Application 11/699,162
Technology Center 1700
Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1, 2, 4, 8-16, 21-23, and 26-
28.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant and inventor David Paul Brown is the real party in interest.
Appeal Brief filed February 14, 2017 ("App. Br."), 3.
2 Final Office Action entered August 15, 2016 ("Final Act.").
Appeal2017-009414
Application 11/699,162
STATEMENT OF THE CASE
Appellant claims a method for the production of optical fiber. Claim
1, the sole pending independent claim, illustrates the subject matter on
appeal and is reproduced below with contested language italicized:
1. A method for the production of optical fiber comprising
the steps of:
a) inserting a preform substrate into a preform reactor;
b) Forming an aerosol having at least one carrier gas and
multicomponent deposition particles, said multicomponent
deposition particles having a mean particle size between 1 and
1000 micrometers in diameter which contain a matrix material
and doping agents altering at least one property of the matrix
material, wherein the multicomponent deposition particles have
a sub-particle structure in which the sub-particle structure
dimensions are smaller than the multicomponent deposition
particle diameter and smaller than a wavelength of light to be
transmitted by the produced preform and/or fiber,
c) introducing the aerosol having at least one carrier gas
and said deposition particles to the preform reactor,
d) enhancing deposition of the deposition particles by
applying a force to the deposition particles essentially in the
direction of the preform substrate in a deposition enhancer;
e) forming one or more multicomponent deposition
particle layers on the preform substrate in the preform reactor
by depositing at least some of the deposition particles on an
external swface of the preform substrate, and
t) forming the preform substrate having formed
multicomponent deposition particle layers thereon into an
optical fiber.
App. Br. 16 (Claims Appendix) (emphasis added).
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Application 11/699,162
The Examiner sets forth the following rejections in the Final Office
Action, and maintains the rejections in the Examiner's Answer entered May
9, 2017 ("Ans."):
I. Claims 1, 2, 4, 8, 9, 11-14, 16, 21-23, and 26-28 3 under
35 U.S.C. § I03(a) as unpatentable over Home (US 6, 723,435 Bl,
issued April 20, 2004) in view ofKodas (US 6,360,562 Bl, issued
March 26, 2002);
II. Claim 10 under§ I03(a) as unpatentable over Home in view of
Kodas, Bird (US 2002/0078714 Al, published June 27, 2002), and Dom
(US 4,867,774, issued September 19, 1989); and
III. Claim 15 under 35 U.S.C. § I03(a) as unpatentable over Home
in view of Kodas and Panitz (US 5,925,228, issued July 20, 1999).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's timely contentions, 4 we affirm the Examiner's rejections
3 Although the Examiner omitted claims 4, 11, and 26-28 from the heading
of this rejection on page 2 of the Final Office Action, the Examiner
addresses these claims in the body of the rejection at pages 4---6 of the Final
Action, and explains in the Answer that the omission of claims 4, 11, and
26-28 from the heading on page 2 of the Final Action was a typographical
error. Ans. 7-8. Accordingly, contrary to Appellant's assertion that "it is
not clear on the record if claims 4 and 11 are duly rejected" (Reply Br. 2;
App. Br. 13), the Examiner makes clear that claims 4, 11, and 26-28 are
rejected under 35 U.S.C. § I03(a) as unpatentable over Home in view of
Kodas. Ans. 8.
4 We do not consider any new argument Appellant raises in the Reply Brief
that Appellant could have raised in the Appeal Brief. 37 C.F.R.
§ 4I.37(c)(l)(iv); 37 C.F.R. § 41.4I(b)(2) (arguments raised for the first
time in the Reply Brief that could have been raised in the Appeal Brief will
not be considered by the Board unless good cause is shown).
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Application 11/699,162
of claims 1, 2, 4, 8-16, 21-23, and 26-28 under 35 U.S.C. § 103(a) for the
reasons set forth in the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellant provides for each issue Appellant
identifies. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner had
failed to make a prima facie case, "it has long been the Board's practice to
require an applicant to identify the alleged error in the examiner's
rejections").
Appellant argues all of the pending claims as a group on the basis of
claim 1, to which we accordingly limit our discussion. App. Br. 10-14;
37 C.F.R. § 4I.37(c)(l)(iv).
Home discloses optical fiber preforms, and describes methods of
forming optical fiber preforms utilizing light reactive deposition. Col. 1, 1.
48---col. 2, 1. 10; col. 5, 11. 18-23; col. 18, 11. 44--57.
Specifically, Home discloses a first type of optical fiber preform that
comprises a glass preform structure having an inner cavity coated with a
powder. Col. 1, 11. 48-52. Home discloses forming this first type of optical
fiber preform by positioning the preform structure within a product particle
stream generated by an intense radiation source in a flowing reactor so that
the particles flow into the cavity of the glass preform structure and coat the
internal surface of the cavity. Col. 1, 11. 58---65; col. 3, 11. 57---65; col. 35,
11. 63-67. Home discloses an alternative approach for forming the first type
of optical fiber preform that involves collecting powder from the flowing
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Application 11/699,162
reactor and placing the powder within the inner cavity of the preform
structure. Col. 1, 11. 53-57; col. 3, 1. 65---col 4, 1. 6.
Home discloses a second type of optical fiber preform that comprises
a glass preform structure having an inner cavity containing a glass insert
coated with powder. Col. 4, 11. 7-10. Home discloses forming this second
type of optical fiber preform by placing the glass insert in a product stream
of a flowing reactor so that product particles (or powder) coat the insert, and
placing the coated glass insert into the cavity of the glass preform structure.
Col. 1, 1. 66---col. 2, 1. 10; col. 4, 11. 7-10; col. 9, 11. 3-8. The Examiner finds
that the glass insert disclosed in Home corresponds to the preform substrate
recited in claim 1. Ans. 8-9.
Home discloses forming an optical fiber from both types of optical
fiber preforms by drawing or pulling the preforms into a fiber. Col. 7,
11. 32--44; col. 50, 11. 29-32. Based on these disclosures in Home, the
Examiner determines that the glass insert (preform substrate) coated with
particles, in combination with the glass preform structure into which the
coated glass insert is placed, constitutes an "optical fiber preform" that is
drawn to form an "optical fiber." Ans. 8-9.
With respect to the recitation in claim 1 of "enhancing deposition of
the deposition particles by applying a force to the deposition particles
essentially in the direction of the preform substrate," the Examiner relies on
Home's disclosure of directing a product particle flow from a reaction
chamber to substrate 594 mounted on rotating stage 592 using nozzle 590.
Final Act. 3 (citing Home col. 35, 11. 47--48; Fig. 16); see also Home col. 35,
11. 3-21, 45-54.
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Application 11/699,162
Appellant argues that Home describes an insert, a preform structure,
and an optical fiber preform, which Appellant contends are materially
different and discrete elements used during an optical fiber manufacturing
process, while claim 1 recites a preform substrate formed into an optical
fiber. App. Br. 12; Reply Br. 6. Appellant asserts that the Examiner's
equating of the insert and/or the optical fiber preform disclosed in Home
with the preform substrate recited in claim 1 is an unreasonably broad
interpretation of the term "preform," which is contrary to the well-accepted
definition of this term known to those of ordinary skill within in the art of
optical fibers. App. Br. 11-12; Reply Br. 6-7. Appellant asserts that one of
ordinary skill in the art would not associate Home's teachings related to an
insert to the manufacture of a preform. App. Br. 12.
However, as the Examiner correctly explains in the Answer (Ans. 10),
claim 1 does not recite the term "preform," but recites a "preform substrate."
As discussed above, the Examiner finds that the glass insert disclosed in
Home corresponds to the preform substrate recited in claim 1, and
determines that the glass insert (preform substrate) coated with particles as
described in Home, in combination with the glass preform structure into
which the coated glass insert is placed, constitutes an optical fiber preform.
Ans. 8-9. The Examiner further correctly finds that Hom discloses drawing
this optical fiber preform to form an optical fiber. Ans. 10. Appellant does
not direct us to any limiting disclosure or description in Appellant's
Specification of a "preform substrate" that would exclude the glass insert
disclosed in Home. App. Br. 10-14.
Nor does Appellant direct us to any limiting disclosure or description
in the Specification of an "optical fiber" that would exclude the optical fiber
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disclosed in Home formed by drawing an optical fiber preform comprised of
a glass preform structure containing a glass insert (preform substrate) coated
with particles. Id. As the Examiner correctly determines (Ans. 9--10),
because claim 1 includes a "comprising" transitional phrase between the
claim's preamble and body, claim 1 does not exclude additional, unrecited
steps, including a step of placing a glass insert (preform substrate) coated
with particles into a glass preform structure, as disclosed in Home, to form
an optical fiber preform. Ans. 9; Dow Chem. Co. v. Sumitomo Chem. Co.,
257 F.3d 1364, 1380 (Fed. Cir. 2001) ("It is fundamental that the use ofth[e]
phrase [comprising] as a transitional phrase 'does not exclude additional
unrecited elements, or steps (in the case of a method claim)."' ( citation
omitted)); see also In re Affinity Labs of Tex., LLC, 856 F.3d 902, 907 (Fed.
Cir. 2017) (noting that use of the term "comprising" "signals that the breadth
of [the method claim] allows for additional steps interleaved between the
recited steps," and the Board did not err in concluding that the claim does
not prohibit additional, intervening steps between those recited).
Appellant argues that Home discloses either depositing a coating on
an external surface of an insert, or depositing particles on an internal surface
of a preform structure. Reply Br. 6. Appellant contends that these two
disclosures are "distinct and separate," and because of that, the Examiner
impermissibly relies on hindsight when asserting that both of these
approaches teach "depositing ... particles on an external surface of the
preform substrate" as recited in claim 1. App. Br. 10-12; Reply Br. 6.
As discussed above, however, Home discloses optical fiber preforms
having two alternative structures, and describes processes for forming both
types of preforms. Although in the Final Office Action the Examiner cites
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Application 11/699,162
disclosures in Home that describe forming both types of optical fiber
preforms (Final Act. 2-3 ( citing Home col. 4, 11. 7-8; col. 8, 11. 56-64;
col. 9, 11. 3---6; col. 38, 11. 26-39; Figs. 14--17, 26)), the Examiner clarifies in
the Answer (as discussed above) that the rejection is based on Home's
disclosure of a process of forming the second type of optical fiber preform
that comprises a glass preform structure having an inner cavity containing a
glass insert coated with powder. Ans. 8-10. As discussed above, the
Examiner explicitly finds in the Answer that the glass insert of the second
type of optical fiber preform disclosed in Home corresponds to the preform
substrate recited in claim 1. Id. The Examiner further explicitly determines
in the Answer that the glass insert (preform substrate) coated with powder,
in combination with the glass preform structure disclosed in Home into
which the coated glass insert is placed, constitutes an optical fiber preform,
and the Examiner relies on Home's disclosure of drawing the optical fiber
preform to form an optical fiber, as recited in claim 1. Id.
Therefore, because the Examiner makes abundantly clear in the
Answer which disclosures in Home cited in the Final Action the Examiner
relies upon to support the rejection of claim 1, any citation to additional
disclosures in Home in the Final Action is harmless. Gardner v. TEC Sys.,
Inc., 725 F.2d 1338, 1345 (Fed. Cir. 1984) (any error concerning
nonessential facts is harmless and not a basis for reversal).
Appellant argues that Home does not does not explicitly or inherently
disclose enhancing deposition of particles by applying a force essentially in
the direction of a preform substrate. App. Br. 12; Reply Br. 7-8. Appellant
contends that the nozzle disclosed in Home does not inherently apply a
force, and Appellant argues that a "nozzle is capable of applying a force but
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Application 11/699,162
only under sufficient operating conditions." App. Br. 12; Reply Br. 7.
Appellant further asserts that Home teaches directing particles into a laser,
and does not explicitly or inherently teach applying a force to deposition
particles in the direction of a preform substrate. App. Br. 12-13; Reply Br.
7-8.
However, claim 1 recites "enhancing deposition of the deposition
particles by applying a force to the deposition particles essentially in the
direction of the preform substrate." The plain language of claim 1 does not
require application of a force of any particular magnitude, and does not
require application of any specific type of force. Accordingly, claim 1
encompasses application of any type of force of any magnitude-however
great or small-to deposition particles essentially in the direction of a
preform substrate.
Home discloses a light-reactive deposition process for coating
substrates with product particles that involves using a nozzle to direct a
product particle flow from a reaction chamber to a rotating stage upon which
substrates are mounted. Col. 34, 1. 56-col. 35, 1. 6; col. 35, 11. 45--48; Fig.
16. Because the nozzle directs the particles from the reaction chamber onto
the substrates (mounted on the stage), rather than allowing the particles to
freely flow out of the reaction chamber in any direction, one of ordinary skill
in the art would understand that the nozzle must apply a force of at least
some magnitude in order to direct the particles onto the substrates.
Appellant's arguments do not provide any persuasive reasoning or
evidence to support the assertion that the nozzle disclosed in Home does not
inherently apply a force. Although Appellant asserts that a "nozzle is
capable of applying a force but only under sufficient operating conditions,"
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Application 11/699,162
Appellant's argument is directed to nozzles generally and does not address
the nozzle explicitly described in Home as directing particles toward a stage
on which substrates are mounted in order to coat the substrates with the
particles. Because Home's nozzle directs the particles toward the substrates,
and in so doing, causes deposition of the particles on the substrates, the
nozzle must apply a force of some magnitude to the particles in the direction
of the substrates. Accordingly, Home implicitly discloses operating
conditions in which a nozzle applies a force to particles essentially in the
direction of a substrate as recited in claim 1.
Although Appellant asserts that Home teaches directing particles into
a laser, rather than applying a force to deposition particles in the direction of
a preform substrate, Home discloses directing a laser beam at a reactant
stream to form product particles, and discloses that the product particles are
then directed onto a substrate using a nozzle (as discussed above). Col. 5,
11. 7-23; col. 35, 11. 22-55.
Appellant's arguments are therefore unpersuasive of reversible error,
and we accordingly sustain the Examiner's rejections of claims 1, 2, 4, 8-16,
21-23, and 26-28 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejections of claims 1, 2, 4, 8-16, 21-23,
and 26-28 under 35 U.S.C. § 103(a).
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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