10822642 (B.P.A.I. Sep. 23, 2010)

Ex Parte Horne et al

Board of Patent Appeals and InterferencesSep 23, 2010

10822642 (B.P.A.I. Sep. 23, 2010)

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. 10/822,642 04/12/2004 Craig R. Horne 3275.06US03 1933 62274 7590 09/24/2010 DARDI & HERBERT, PLLC Moore Lake Plaza, Suite 205 1250 East Moore Lake Drive Fridley, MN 55432 EXAMINER HOFFMANN, JOHN M ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 09/24/2010 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 CRAIG R. HORNE, JESSE S. JUR, RONALD J. MOSSO, ERIC H. EUVRARD, and XIANGXIN BI ________________ Appeal 2009-011075 Application 10/822,642 Technology Center 1700 ________________ BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and LINDA M. GAUDETTE, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-011075 Application 10/822,642 2 Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 20, 25, 26, 31-39, 41, and 43-48. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appellants claim a method for forming an optical fiber preform comprising inserting an insert within a glass preform structure, the insert comprising a coating over a glass rod core structure, "wherein the coating has an average density that is a factor within the range from about 0.02 to about 0.55 of the fully densified mass density" and "wherein the coating and the [core structure/glass rod] have different dopant compositions" (claims 20, 31). Representative claim 20 reads as follows: 20. A method for forming an optical fiber preform, the method comprising inserting an insert within a glass preform structure, the insert comprising a coating over a core structure, wherein the coating on the core structure comprises an oxide composition comprising SiO2, a rare earth element and a dopant comprising a metal element that is not a rare earth element, the core structure being a glass rod, wherein the coating comprises particles having an average primary particle diameter of no more than about 500 nm, the coating having a fully densified mass density, wherein the coating has an average density that is a factor within the range from about 0.02 to about 0.55 of the fully densified mass density, wherein the coating and the core structure have different dopant compositions. Under 35 U.S.C. § 103(a), the Examiner rejects claims 20, 25, 26, 39, 41, and 44-48 as being unpatentable over Hicks (US Patent 4,749,396 issued June 7, 1988) in view of Miller (US Patent 4,501,602 issued February 26, 1985), Berkey (US Patent 4,684,384 issued August 4, 1987), and Kobayashi Appeal 2009-011075 Application 10/822,642 3 (US Patent 3,957,474 issued May 18, 1976) and rejects claims 31-38 and 43 as being unpatentable over these references and further in view of Bi (US Patent 5,958,348 issued September 28, 1999). The Examiner relies on the Hicks reference alone in concluding that it would have been obvious for one with ordinary skill in this art to provide Hicks' method with the average density feature and the feature of different dopant compositions required by the independent claims on appeal (Ans. 6- 8). "Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We agree with Appellants that the Examiner has provided no acceptable support for concluding that it would have been obvious to provide the method of Hicks with the independent claim features "wherein the coating has an average density that is a factor within the range from about 0.02 to about 0.55 of the fully densified mass density" and "wherein the coating in the [core structure/glass rod] have different dopant compositions" (claims 20, 31) (App. Br. 13-17; Reply Br. 3-7, 9-10). It is undisputed that Hicks contains no teaching or suggestion of Appellants' claimed average density feature. Nevertheless, the Examiner concludes that "[i]t would have been obvious to perform routine experimentation to determine the optimal process parameters" (Ans. 7). On this record, however, the Examiner has provided no evidence that the average density feature claimed by Appellants is recognized in the prior art Appeal 2009-011075 Application 10/822,642 4 as an optimizable, result-effective parameter. See In re Antonie, 559 F.2d 618, 620 (CCPA 1977) (not obvious to optimize where parameter was not recognized to be a result-effective variable). Although the Examiner is correct that Hicks teaches adding dopants to the inner member (i.e., the claimed "insert") (Ans. 8), this reference contains no teaching or suggestion that the inner member and the coating thereon should have different dopant compositions as required by the appealed claims. It follows that the Examiner's obviousness conclusion regarding this claim feature is not supported by articulated reasoning with rational underpinning. Moreover, the Examiner's assertion that "[t]he claims do not preclude identical compositions" (id. at 13) is irrational and contrary to the express language of independent claims 20 and 31. For these reasons, we cannot sustain either of the § 103 rejections advanced by the Examiner in this appeal. The decision of the Examiner is reversed. REVERSED bar DARDI & HERBERT, PLLC MOORE LAKE PLAZA, SUITE 205 1250 EAST MOORE LAKE DRIVE FRIDLEY, MN 55432