Ex Parte Fogliani et al

Board of Patent Appeals and Interferences

Jan 24, 2012

10475750 (B.P.A.I. Jan. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/475,750 06/10/2004 Sabeina Fogliani 05788.0273 4744
22852 7590 01/24/2012
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
01/24/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SABEINA FOGLIANI and CARLO TREGAME
____________________

Appeal 2010-005287
Application 10/475,750
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
RAE LYNN P. GUEST, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005287
Application 10/475,750

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, and 4-21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
The claims are directed to method for producing an optical fiber
preform. Claim 1 is illustrative:
1. A method for producing an optical fiber preform,
comprising:
forming glass soot particles by jetting and combusting a
glass-forming material and a fuel gas from a burner in the
presence of oxygen;
depositing, in a plurality of deposition passes, a plurality
of deposition layers comprised of said glass soot particles on a
deposition rod having a longitudinal axis, each of said plurality
of deposition layers being deposited by rotating said deposition
rod about said longitudinal axis at a rotational velocity while
translating said burner relative to said deposition rod in parallel
to said longitudinal axis at a translation velocity; and
providing said preform with a density distribution that is
substantially uniform in a radial direction such that each of said
plurality of deposition layers has a density between about 0.4
g/cm3 and about 1.0 g/cm3, by varying at least one of said
translation velocity and said rotational velocity, said varying at
least one of said translation velocity and said rotational velocity
occurring only between deposition passes.
The Examiner maintains the following rejections:1

1 The Examiner has withdrawn a rejection of claims 1, 4, 7-9, and 11-14
under 35 U.S.C. § 112, ¶ 2 (Ans. 2).
Appeal 2010-005287
Application 10/475,750

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A. Claims 1 and 4-21 rejected under 35 U.S.C. § 112, ¶ 1 as lacking
written descriptive support;
B. Claims 1, 4, 7-9, and 11-142 rejected under 35 U.S.C. § 103(a) as
obvious over Schaper3 in view of Appellant's "Alleged Prior Art
Admission" (APAA);
C. Claim 10 rejected under 35 U.S.C. § 103(a) as obvious over
Schaper in view of APAA, and further in view of Cain4; and
D. Claims 5, 6, and 15-21 rejected under 35 U.S.C. § 103(a) as
obvious over Schaper in view of APAA, and Gilliland5.

OPINION
A. WRITTEN DESCRIPTIVE SUPPORT
According to the Examiner, there is no written descriptive support for
the limitation “said varying at least one of said translation velocity and said
rotational velocity occurring only between deposition passes” as recited in
claim 1 or for similar language recited in claims 15 and 18 (Ans. 3-4).
According to the Examiner, there isn’t even any suggestion that there is any
“between” between two passes for something to occur much less disclosure
that the variation only occurs between passes (Ans. 4).
Appellants point to the Specification at page 5, lines 5-6 for support.
Appellants contend that this portion of the Specification indicates that each

2 While not listed in the statement of rejection, it appears that claims 13 and
14 are, in fact, rejected over Schaper in view of APAA (see Br. 9; Ans. 2
and 7-8).
3 Schaper et al., U.S. Patent No. 6,047,564, patented Apr. 11, 2000.
4 Cain et al., U.S. Patent No. 5,599,371, patented Feb. 4, 1997.
5 Gilliland, U.S. Patent No. 4,810,276, patented Mar. 7, 1989.
Appeal 2010-005287
Application 10/475,750

4
layer is deposited at constant velocities, therefore any change in velocity
must occur not only after a layer is completed, but also before the next layer
is started (Br. 10).
The issue is: Does the Specification reasonably convey to one of
ordinary skill in the art that Appellants had possession of a method in which
the velocity, either the translational or rotational velocity, is varied “only
between deposition passes” as required by the claims?
The test for determining compliance with the written description
requirement of 35 U.S.C. § 112, ¶ 1, is whether the disclosure of the
application as originally filed would have reasonably conveyed to one of
ordinary skill in the art that the inventor had possession at that time of the
later claimed subject matter. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563 (Fed. Cir. 1991). The subject matter of the claims need not be
described identically or literally to satisfy the written description
requirement of 35 U.S.C. § 112, ¶ 1. In re Kaslow, 707 F.2d 1366, 1375
(Fed. Cir. 1983). Moreover, “[t]he ‘written description’ requirement must
be applied in the context of the particular invention and the state of the
knowledge. . . . As each field evolves, the balance also evolves between
what is known and what is added by each inventive contribution.” Capon v.
Eshhar, 418 F.3d 1349, 1358 (Fed. Cir. 2005).
The method is an outside vapor deposition (OVD) process. Figure 1
is reproduced below and shows a device for performing the process:
App
App

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9:11
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11).
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4:29
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In this p
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sited on th
action for
g a helical
One pass
(Spec. 2:3
Soot den
emperatur
Appellant
ecisely co
city of the
oot deposi
to 5:1 (em
05287
/475,750
1 is a sche
rocess, gla
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11 slides a
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preform 12
elix forma
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bstrate on
nd that “th
opportun
the rotati
ss (i.e., as
ed).)
5
e depositi
precursor
o form soo
long slide
the core ro
(Spec. 9:
tion veloc
he length
epeated to
parameter
which the
e radial d
ely varyin
on velocit
the prefor
on stage in
s are deliv
t particles
5, the soot
d is rotate
27). The s
ity Ve (Sp
of the rod
form succ
in the pro
soot is dep
ensity of th
g at least o
y of the de
m diamete
an OVD
ered to a b
(Spec. 1:4
particles
d (Spec. 9
oot is dep
ec. 9:29-3
forms one
essive lay
cess and is
osited (Sp
e deposite
ne of the
position ro
r increase
process
urner 11
-14; 2:3-8
are
:25-27).
osited
0; 10:10-
layer of
ers (id.).
related to
ec. 2:18-
d soot can
translation
d during
s).” (Spec

;

.
Appeal 2010-005287
Application 10/475,750

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It is with the above disclosures in mind we turn to the portion of the
Specification discussed by the Examiner and Appellants, namely, page 5
lines 1-6. The paragraph continues as follows:
Preferably, both said velocities are varied, while the other
process parameters, such as the fuel gas flow and the soot
precursors flow, are advantageously kept constant. Every
variation of the translation velocity and of the rotation velocity
takes place after completion of the generic deposition layer,
while each layer is deposited at constant velocities to guarantee
a constant axial soot density. Advantageously, the translation
velocity of the burner and the rotation velocity of the deposition
rod are decreased during the preform growth, eventually apart
an initial part of the process where, if the deposition support is
not pre-heated, said velocities are increased to stabilize the soot
temperature.
(Spec. 5:1-8 (emphasis added).)
The Specification at page 5 specifically states that the velocities
remain constant during layer deposition. Figures 3a and 3b also indicate that
the velocity variations occur as a function of the diameter of the growing
preform (Spec. 6:26-29). Preform diameter changes in a stepwise fashion
layer by layer (see, e.g., Fig. 1 and Spec. 2:3-6).
We, therefore, find that one of ordinary skill in the art would have
understood the Specification to convey that applicants had possession of a
process in which the velocity variation only occurs between the passes of the
burner that form the layers.
Pages 10 to 12 of the Specification further support the finding. This
portion of the Specification discloses that by controlling the translation
velocity v and the rotation velocity w, it is possible to control two deposition
parameters that influence the deposition density: the helix formation velocity
Appeal 2010-005287
Application 10/475,750

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Ve and the helix strip superposition Gs (Spec. 10:5-9). The Specification
indicates that the helix formation velocity is related to the current diameter
D of the forming preform (Spec. 10:11-14). When w and v are held
constant, the increase of the preform diameter D increases the helix
formation velocity Ve (see formula (1)). It is therefore, necessary “at the
completion of a predetermined number of layers” to decrease v and w and
thereby decrease the helix formation velocity Ve (Spec. 12:4-12). Again,
diameter increases stepwise, therefore, the Specification conveys the concept
of decreasing of v and w stepwise.
We therefore agree with Appellants that there is support in the
Specification for the claim language.

B. OBVIOUSNESS OF CLAIMS 1, 4, 7-9, and 11-14
OVER SCHAPER AND APAA
With regard to the rejection of claims 1, 4, 7-9, and 11-14, Appellants
argue claims 4 and 12 apart, but otherwise argue the claims as a group. We,
therefore, select claim 1 as representative for deciding the issue arising for
claims 1, 7-9, 11, 13, and 14.
1. CLAIM 1
With regard to claim 1, the issue is: Does the evidence support the
Examiner’s finding that Schaper would have disclosed to one of ordinary
skill in the art varying at least one of the translation velocity and rotational
velocity only between deposition passes as claimed?
According to the Examiner, column 7, lines 41-43 of Schaper
discloses holding the peripheral velocity constant during the motion cycle
Appeal 2010-005287
Application 10/475,750

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and the entire process, and further, at column 3, lines 22-27, Schaper
discloses that when the peripheral velocity is kept constant, the rotational
velocity must be decreased, because the diameter increases during the
process (Ans. 7). According to the Examiner, the implication of these
passages of Schaper is that the velocity decrease occurs at the juncture of
two passes because if one were to change the rotational velocity in the midst
of a burner pass, the peripheral velocity will change (id.).
Appellants contend that Schaper does not teach or suggest varying the
rotational velocity only between deposition passes (Br. 15). According to
Appellants, column 3, lines 22-28 of Schaper “discloses the rotational
velocity must be continually decreased when the translation velocity is kept
constant.” (id.).
Column 3, lines 22-28 read as follows:
The average peripheral velocity can also be held constant
during the entire deposition process. In this case[,] the rotation
velocity of the carrier must be continually decreased since the
outer diameter of the preform and with it the cylinder mantle
surface continually increase during the deposition process.
(Schaper, col. 3, ll. 22-28.)
Schaper at column 3, lines 22-28 does not disclose anything about the
translation velocity. This portion of Schaper is concerned with keeping the
peripheral velocity constant. Peripheral velocity is the distance covered by
every point on the surface of the preform during the motion cycle relative to
the time required to cover that distance (Schaper, col. 3, ll. 11-14). Like
Appellants’ helix formation velocity Ve, Schaper’s peripheral velocity
changes as the diameter of the preform changes.
Appeal 2010-005287
Application 10/475,750

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Similarly to Appellants’ process, Schaper teaches changing the
rotational velocity to counter the change in preform diameter. The preform
diameter changes in stepwise fashion with the completion of each layer.
In Schaper’s apparatus, there are multiple burners (Figure 6). Each
burner translates back and forth between points A and B, and this translation
defines one “motion cycle.” (Schaper, col. 7, ll. 13-15 and 24-25). Each
“pass” of the multiple burners between portions A and B results in a layer of
deposited soot across the preform. Therefore, it is at the position between
these “passes” at each endpoint point A and B at which the rotational
velocity must be changed in order to maintain the peripheral velocity
constant. As Appellants state in the Specification, “a layer is defined as that
portion of glass soot that is deposited by one pass of the burner along the
mandrel.” (Spec. 2:4-6.)
The evidence supports the Examiner’s finding that Schaper would
have disclosed to one of ordinary skill in the art varying the rotational
velocity only between deposition passes as claimed.
2. CLAIM 4
Turning to claim 4, Appellants contend that claim 4 requires that the
same velocity be increased and then decreased (Br. 18). However, as
pointed out by the Examiner, the claim is not so limited (Ans. 14).
Appellants have not shown that the Examiner erred in rejecting claim 4.
3. CLAIM 12
Claim 12 further requires that “the same translation velocity is used
throughout deposition of each of the plurality of deposition layers.”
Appeal 2010-005287
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The Examiner finds that column 7, lines 48-56 discloses holding the
translational velocity constant (Ans. 8). The Examiner acknowledges that
there are turnaround portions where the velocity changes, but finds these
turnaround portions “insignificant” and similar to turnaround portions that
would be present in Appellants’ process (Ans. 8.)
Appellants contend that their process is not the same as Schaper’s
process (Br. 19). In their process, the burner 11 is mounted on slide 5 that
extends beyond the field of deposition so that one can adjust the velocity
outside the field of deposition (Br. 19).
Claim 12 requires that the same translation velocity be used
throughout deposition of each of the plurality of layers. In the process of
Schaper the Examiner relies upon, i.e., the process disclosed in Example 1,
the average translation velocity is kept constant, but there are slowing and
accelerating distances in the area of the transitional points A and B. While
these velocities are insignificant “as far as the average translation velocity,”
they are differences in velocity nonetheless. The differences in velocity
occur at the beginning and end of the process of depositing the layer, but not
outside the field of deposition. The Examiner has not provided any
convincing evidence that deposition does not occur during the slowing and
accelerating portions of Schaper’s process. Therefore, the Examiner has not
established that the same translation velocity is used “throughout deposition”
of each layer.
C. OBVIOUSNESS OF CLAIMS 5, 6, 10, AND 15-17
With regard to the rejection of claims 5, 6, and 15-17 in which the
Examiner added Gilliland as evidence of obviousness, and the rejection of
Appeal 2010-005287
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claim 10 in which the Examiner added Cain, Appellants do not present any
further arguments over and above those addressed above (Br. 19-20).
Therefore, Appellants have not identified an error in the rejection of these
claims.
D. OBVIOUSNESS OF CLAIMS 18-21
The Examiner rejects claims 18-21 as obvious over Schaper, the
AAPA, and further Gilliland (Ans.8-9). Appellants contend that the prior art
fails to teach the velocity increasing and decreasing steps required by claim
18 (Br. 21).
Because the Examiner fails to point out where in the references is
taught a step of “progressively increasing at least one of said translation
velocity and said rotational velocity to a respective top value, said
progressive increasing occurring only between deposition passes,” we agree
with Appellants that the Examiner erred.

CONCLUSION
We sustain the Examiner’s rejection of claims 1, 4-11, and 13-17
under 35 U.S.C. § 103(a).
We do not sustain the Examiner’s rejection of claims 1 and 4-21 under
35 U.S.C. § 112, ¶ 1. Nor do we sustain the Examiner’s rejection of claim
12, or the rejection of claims 18-21 under 35 U.S.C. § 103(a).
DECISION
The Examiner’s decision is affirmed-in-part.

Appeal 2010-005287
Application 10/475,750

12
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED-IN-PART

cam