Ex Parte Homa et al

Patent Trial and Appeal Board

Apr 28, 2017

12638528 (P.T.A.B. Apr. 28, 2017)

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.
12/638,528 12/15/2009 Daniel Homa OPS4-49757-US(OSY0021US) 5241
44639 7590 05/02/2017
CANTOR COLBURN LLP- BAKER HUGHES INCORPORATED
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
DEHGHAN, QUEENIE S
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL HOMA and CHARLES GIEBNER
Appeal 2016-002456
Application 12/638,528
Technology Center 1700
Before TERRY J. OWENS, DONNA M. PRAISS, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal the Examiner’s decision to finally reject claims 1—
8 and 10-21, which constitute all the claims pending in this application.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Decision, we refer to the Final Office Action appealed from, mailed
May 20, 2014 (“Final Act.”); the Appeal Brief dated September 23, 2014
(“App. Br.”); and the Examiner’s Answer to the Appeal Brief dated October
27, 2014 (“Ans.”).
2 Appellants identify Baker Hughes Incorporated as the Real Party in
Interest. App. Br. 2.
Appeal 2016-002456
Application 12/638,528
The Claimed Invention
Appellants’ disclosure relates to a method of manufacturing an optical
fiber. Spec. 13, Abstract. Claim 1 is illustrative of the claimed subject
matter on appeal and is reproduced below from the Claims Appendix to the
Appeal Brief (App. Br. 11):
1. A method of manufacturing an optical fiber comprising:
disposing an axially extending preform structure on a
support structure;
directing a first gas mixture inside the preform structure
along a major axis of the preform structure in a first axial
direction;
disposing a heating device proximate to the preform
structure;
activating the heating device and moving the heating device
along the major axis in a second axial direction to heat the
preform structure and deposit at least one cladding layer of
material on an inside surface of the preform structure, the second
axial direction being opposite to the first axial direction;
directing a second gas mixture including at least one dopant
along the major axis and activating the heating device and
moving the heating device along the major axis to sinter the at
least one cladding layer to form at least one sintered cladding
layer doped with the at least one dopant;
directing a third gas mixture inside the at least one sintered
cladding layer along the major axis; and
activating the heating device and moving the heating device
along the major axis to deposit at least one core layer on an inside
surface of the at least one sintered cladding layer, wherein the
method is a modified chemical vapor deposition (MCVD)
method.
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Appeal 2016-002456
Application 12/638,528
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Fleury et al., US 2002/0168162 A1 Nov. 14, 2002
(hereinafter “Fleury”)
Tankala US 6,578,387 B2 June 17,2003
Guskov et al., US 6,769,275 B2 Aug. 3, 2004
(hereinafter “Guskov”)
Sasaki et al., US 7,376,316 B2 May 20, 2008
(hereinafter “Sasaki”)
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1—8, 10-12, 14, and 15 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Fleury in view of Guskov
(“Rejection 1”). Ans. 2; Final Act. 2.3
2. Claim 13 is rejected under pre-AI A 35 U.S.C. § 103(a) as being
unpatentable over Fleury in view of Guskov as applied to claim 1 above, and
in further view of Sasaki (“Rejection 2”). Ans. 4; Final Act. 5.
3. Claims 16—20 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Fleury in view of Guskov (“Rejection 3”). Ans. 5;
Final Act. 5.
3 The Examiner’s Statement of Rejection has been corrected to reflect that
claim 9 has been cancelled. App. Br. 12 (Claims App’x); Final Act. 1.
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Application 12/638,528
4. Claim 21 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Fleury in view of Guskov as applied to claim 7 above, and
in further view of Tankala (“Rejection 4”). Ans. 7; Final Act. 7.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
rejections for the reasons set forth in the Answer to the Appeal Brief and
Final Office Action appealed from, which we adopt as our own. We
highlight and address specific findings and arguments for emphasis as
follows.
Rejection 1
Appellants argue claims 1—8, 10-12, 14, and 15 as a group. App. Br.
4. We select claim 1 as representative and the remaining claims subject to
this rejection stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner determines that the combination of Fleury and Guskov
suggests a method for making an optical fiber satisfying all of the limitations
of claim 1 and that the combination would have rendered claim 1 obvious.
Ans. 2-4.
The Examiner finds that Fleury discloses a modified chemical vapor
deposition (MCVD) method for making an optical fiber comprising
depositing successive layers of silica containing dopant inside a silica
deposition tube (Ans. 2 (citing Fleury || 6, 7, 9, 11, 13, 14)) and that the
method could be implemented using plasma assisted chemical vapor
deposition (PCVD) {id. at 9 (citing Fleury 194)). The Examiner finds that
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Application 12/638,528
although Fleury’s invention is described in the context of MCVD, the
reference does not explicitly disclose all of the details/steps of implementing
MCVD, as recited in the claim. Ans. 2. The Examiner, however, relies on
Guskov for disclosing these steps. Id. at 2.
In particular, the Examiner finds that Guskov discloses a PCVD
method of manufacturing an optical fiber comprising disposing a hollow
tubular member, directing a gas mixture into the tubular structure along a
forward axial direction, and activating a torch disposed proximate to the
tubular member. Ans. 2 (citing Guskov, col. 10,11. 2—11, 24—35, col. 13,11.
29—35, Fig. 1). The Examiner finds further that Guskov discloses moving
the torch along the axial direction of the tubular member in a reverse
direction to heat the preform structure and to deposit at least one layer of
material on the inside of the tubular member with the reverse direction being
opposite to the forward direction. Id. at 2, 3 (citing Guskov, col. 15,11. 32—
45, col. 17,11. 26-43).
The Examiner also finds that Guskov discloses that the deposition step
is followed by directing a dopant gas mixture in the first direction along the
major axis; sintering the layer to agglomerate the layer to form a doped layer
while moving the torch in the same first direction; and that after the layer
has been sintered, the deposition of another layer upon the sintered layer can
be repeated to achieve the desired thickness. Ans. 3 (citing Guskov, col. 17,
11. 57-68, col. 18,11. 8-14, 45-67).
Based on the above findings, the Examiner concludes that it would
have been obvious for one of ordinary skill in the art at the time of the
invention to employ the steps of Guskov’s PCVD method in Fleury’s
MCVD method for depositing the different layers of the preform because
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Application 12/638,528
Guskov demonstrates that the steps are “effective” for successful deposition
of doped layers. Ans. 4. The Examiner concludes that it would have been
obvious to adapt Fleury’s MCVD process to incorporate the disclosed steps
of the Guskov’s PCVD process, such as the direction of the supply of the
gases, the burner traverse direction, the sintering step, and further deposition
of the additional layer(s), because these steps are applicable in either a
MCVD or PCVD process. Id. at 11.
Appellants argue that the Examiner’s rejection should be reversed
because there is no reason why one skilled in the art would have applied the
techniques of Guskov’s process to Fleury’s process. App. Br. 5. In
particular, Appellants contend that because PCVD and MCVD are very
different processes, one skilled in the art would have had no reason to look
to Guskov’s PCVD process to improve or modify Fleury’s MCVD process.
Id. at 5, 6 (citing Guskov, col. 1,11. 17-44, col. 21,11. 21—53).
We do not find Appellants’ argument persuasive of reversible error in
the Examiner’s analysis. Contrary to what Appellants argue, the Examiner
does provide a reasoned basis and identifies a preponderance of evidence in
the record (Ans. 2-4, 8, 9) to evince why one of ordinary skill would have
had reason to look to Guskov’s PCVD process to modify Fleury’s MCVD
process and combine the teachings of the references to arrive at Appellants’
claimed invention. Fleury || 6, 7, 9, 11, 13, 14, 94; Guskov, col. 10,11. 2—
11, 24—35, col. 13,11. 29-35, col. 15,11. 32-45, col. 17,11. 26-43, 57-68, col.
18,11. 8-14, 45-67, Fig. 1.
As the Examiner finds (Ans. 9), paragraph 94 of Fleury explicitly
discloses that:
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Application 12/638,528
The invention is described in the context of MCVD. It could
also be implemented using plasma-assisted chemical vapor
deposition (PCVD)... for depositing inside a deposition tube.
Moreover, as the Examiner finds (Ans. 8, 9), although MCVD and PCVD
may employ different heat sources (i.e., flame for MCVD and plasma for
PCVD), there is significant overlap between the two processes, including
that both processes utilize a heat source to traverse the length of a substrate
tube to heat and react gases to form a deposit on the inside wall of the
substrate tube. Fleury || 6, 7, 9, 11, 13, 14; Guskov, col. 10,11. 2—11, 24—
35, col. 13,11. 29—35. Both processes also are directed to the same field of
endeavor (i.e., chemical vapor deposition methods for making an optical
fiber) and address problems reasonably pertinent to the problem in which the
claimed invention is involved (i.e., problems associated with using chemical
vapor deposition for deposition inside a deposition tube). See In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004) (explaining that prior art references
may be analogous if they involve the “same field of endeavor”).
Appellants fail to direct us to adequate evidence or provide a
persuasive technical explanation to show why the Examiner’s articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
Appellants argue that Guskov teaches away from Fleury’s MCVD
process. App. Br. 6. In particular, Appellants contend Guskov teaches that
a MCVD process is undesirable because it results in incomplete oxidation of
dopants; uses hydrogen, resulting in the generation of water; and is limited
to smaller preforms than a PCVD process. Id. at 6, 7 (citing Guskov, col. 2,
11. 55-57, col. 21,11. 36-38, 41^14).
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Application 12/638,528
We do not find Appellants’ teaching away argument persuasive of
reversible error in the Examiner’s rejection for the well-stated reasons
provided by the Examiner at pages 10 and 11 of the Answer and because a
reference is good for all that it teaches to a person of ordinary skill in the art,
and not only for what it sets forth as preferred. See, e.g., Merck & Co., Inc.
v. Bio craft Labs, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). The fact that
Guskov teaches that MCVD may be less desirable than PCVD does not take
away from Guskov’s broad disclosure regarding MCVD being well-known
in the art as a process for making optical fiber preforms (Guskov, col. 1,11.
32—45) and all that it teaches, including the reasonable inferences that would
be drawn by the skilled artisan. See In re Preda, 401 F.2d 825, 826 (CCPA
1968).
Appellants argue that the Examiner’s proposed modification would
change Guskov’s principle of operation. App. Br. 7. In particular,
Appellants contend that “changing the system of Guskov to be an MCVD
system would change the principle of operation of Guskov” because Guskov
would not be using plasma to deposit materials on the tube. Id. at 7.
This argument is not persuasive because it is conclusory and
Appellants do not direct us to sufficient evidence in the record or provide an
adequate technical explanation to support it. In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984).
We also do not find Appellants’ argument persuasive for the well-
stated reasons provided by the Examiner at pages 10 and 11 of the Answer.
In particular, on the record before us, we agree with the Examiner’s
determination that modifying Fleury’s MCVD process to incorporate
Guskov’s steps would not change the principle of operation of Fleury, but
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Application 12/638,528
instead would actually improve the process by providing a means for better
incorporation of the dopant into the deposited cladding layer.
Accordingly, we affirm the Examiner’s rejection of claims 1—8, 10—
12, 14, and 15 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over
the combination of Fleury and Guskov.
Rejections 2, 3, and 4
Appellants do not present any additional substantive arguments in
response to the Examiner’s Rejections 2 through 4, stated above. Rather,
Appellants rely on the same arguments presented in response to the
Examiner’s Rejection 1 and the combination of Fleury and Guskov. See
App. Br. 8, 9.
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming
Rejection 1, we affirm the Examiner’s Rejections 2, 3, and 4.
DECISION
The Examiner’s rejections of claims 1—8 and 10—21 are affirmed.
It is ordered that 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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