LeBlond, Nicolas et al.

Patent Trials and Appeals Board

Apr 14, 2020

13206004 - (D) (P.T.A.B. Apr. 14, 2020)

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.
13/206,004 08/09/2011 Nicolas LeBlond SP10-300 2962
22928 7590 04/14/2020
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
04/14/2020 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICHOLAS LEBLOND, PUSHKAR TANDON, and
SRINIVAS VEMURY
Appeal 2019-003651
Application 13/206,004
Technology Center 1700
BEFORE JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and
JANE E. INGLESE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
Appeal 2019-003651
Application 13/206,004
2
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–12 and 14–17.3 See Appeal Br. 13.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to a method of decreasing the
concentration of impurities in silica soot, such as ZrO2 and Cr2O3 particles.
Spec. ¶ 2. Claims 4 and 14, reproduced below, are illustrative of the claimed
subject matter (Appeal Br. 28–29, Claims Appendix):
4. A method of treating silica-based soot or an article
comprising a silica-based soot layer, said method comprising:
treating said silica-based soot or said article comprising a
silica-based soot layer, said silica-based soot or said silica-based
soot layer comprising Cr2O3, with:
a mixture comprising CO, Cl2, and a carrier gas at a
treatment temperature between 900 °C and 1200 °C such that a
total concentration of CO and Cl2 in said mixture is greater than
10%, by volume, a ratio of CO:Cl2 in said mixture is between

1 This Decision includes citations to the following documents: Specification
filed August 9, 2011 and amended on October 6, 2017 (“Spec.”); Non-Final
Office Action mailed June 6, 2018 (“Non-Final Act.”); Appeal Brief filed
November 2, 2018 (“Appeal Br.”); Examiner’s Answer mailed February 8,
2018 (“Ans.”); and Reply Brief filed April 8, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Corning, Inc.
Appeal Br. 2.
3 Although the Appeal Brief states claims 1–20 are pending (Appeal Br. 4),
claims 13 and 18–20 were cancelled in Responses to Office Actions filed on
May 13, 2013 and April 3, 2015, respectively.
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0.25 and 5, and a
treatment time, ttreatment, Cr2O3,
with said mixture is:
ttreatment, Cr2O3 (in min) > tdiffusion, Cr2O3 + treaction, Cr2O3,
a diffusion time, tdiffusion, Cr2O3, and a reaction time, treaction,
Cr2O3, have the following values:

tdiffusion, Cr2O3 (in min) = ; and

treaction, Cr2O3 (in min)=

and

L>0 and is a thickness of said silica based soot or said
silica-based soot layer, Deff (in cm2/sec) is a diffusion rate of said
mixture through said silica-based soot layer or silica-based soot,
dp>0 and is an initial particle size of said Cr2O3, T is the
treatment temperature, xCl2 is (yCl2)/(yCl2 + yCO), and yCl2 and yCO
are the partial pressure of chlorine and carbon monoxide,
respectively, in said mixture.

14. A method of treating a porous silica-based soot
preform with a soot layer having a thickness L, said method
comprising;
treating said silica-based soot preform comprising ZrO2,
with CCl4 in a carrier gas at a treatment temperature such that a
concentration of CCl4 is greater than 1%, by volume, and a
treatment time, ttreatment, ZrO2, with CCl4 is:
ttreatment, ZrO2 (in min) > tdiffusion, ZrO2 + treaction, ZrO2,
a diffusion time, tdiffusion, ZrO2, and a reaction time, treaction,
ZrO2, have the following values:

tdiffusion, ZrO2 (in min) = ;

treaction, ZrO2 (in min) = , and
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L>0 and is said soot layer thickness, Deff, CCl4 (in cm2/sec)
is a diffusion rate of CCl4 through said porous silica-based soot
preform, T is the treatment temperature for treating said porous
soot preform in said CCl4 in a carrier gas, yCCl4 is a partial
pressure of CCl4, and dp>0 and is an initial particle size of said
ZrO2.

Claims 1 and 7 are also independent and recite similar methods as
recited in claims 4 and 14. Id. at 27–29.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Schultz US 4,263,031 April 21, 1981
Pluijms et al.
hereinafter “Pluijms”
US 4,854,956 August 8, 1989
Kyoto et al.
hereinafter “Kyoto”
US 4,969,941 November 13, 1990
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Burke et al.
hereinafter “Burke”
US 2002/0108404 A1 August 15, 2002
Fletcher, III et al.
hereinafter “Fletcher”
US 2004/0107735 A1 June 10, 2004
Hiroo et al.
hereinafter “Hiroo”
JP1164740 A June 28, 1989

REJECTIONS4
1. The Examiner rejected claims 1–6 and 9–12 under 35 U.S.C.
§ 103(a) as unpatentable over Burke and Schultz. Ans. 3–7; Non-
Final Act. 4–8.
2. The Examiner rejected claims 7, 8, and 14–17 under 35 U.S.C.
§ 103(a) as unpatentable over Kyoto, Schultz, Pluijms, and Burke.
Ans. 7–9; Non-Final Act. 8–10.
3. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Hiroo, Schultz, Pluijms, Burke, and Fletcher.
Ans. 9–11; Non-Final Act. 10–12.
4. The Examiner rejected claims 7, 8, and 15–17 under 35 U.S.C.
§ 103(a) as unpatentable over Hiroo, Schultz, Pluijms, Burke,
Fletcher, and Kyoto. Ans. 11–12; Non-Final Act. 12–13.

OPINION
Rejection 1
Appellant presents the same or similar arguments with respect to
independent claims 1 and 4 subject to this rejection, relying on the
dependency of the dependent claims as a basis for their patentability. See

4 The Examiner withdrew the rejection of Claims 1–6 and 9–12 under 35
U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph. Ans. 12;
Non-Final Act. 2–3.
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Appeal Br. 13–22. We select claim 4 as representative for disposition of this
rejection, with the patentability of the other claims standing or falling with
claim 4. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner’s Rejection
As to claim 4, the Examiner found Burke discloses a method for
treating silica-based soot containing chromium oxide. Ans. 3, citing Burke
¶¶ 8, 52, 53. The Examiner found Burke does not disclose a “layer” of
silica-based soot as recited in claim 4, but the Examiner found Schultz
discloses conventional methods of creating optical fibers involve creating
soot layers 30 microns thick. Id. The Examiner determined it would have
been obvious to use a conventional method as disclosed in Schultz to create
a preform when using the Burke method, because Burke does not disclose
how to make the preform. Id. at 3–4. The Examiner found Burke discloses
a mixture as recited in claim 4 including components in concentrations
meeting the recited CO:Cl2 ratio as well as amounts that either meet or
overlap the recited “greater than 10%, by volume” amount. Id. at 4.
As to the “treatment time” recited in claim 4, the Examiner set forth
several alternative rationales as to how Burke either would meet or render
obvious the recitations in claim 4. Id. at 4–6. In particular, the Examiner
determined that because the method recited in claim 4 uses the same gases at
the same temperature, and obtains the same results as in Burke, one of
ordinary skill in the art would have expected Burke’s treatment is for the
same duration recited in the claims, based on the needed treatment time
necessary to remove Cr2O3 particles determined through routine
experimentation. Id. at 6.

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Appellant’s Contentions
Appellant argues Burke does not disclose the particle size of Cr2O3
particles present in its article and that Burke and Schultz, individually or
combined, fail to disclose or provide any reasoning for one of ordinary skill
in the art to have considered the initial particle size of Cr2O3 particles in
determining the reaction time for treating the silica based soot or article
comprising silica based soot. Appeal Br. 14. Appellant contends the
Examiner’s positions regarding Cr2O3 particle sizes and whether such
particles would shrink over time, which are crucial to the Examiner’s
obviousness rejection, are unsupported by any evidence. Id. at 14–19.
Appellant contends there is no basis for the Examiner’s position that
the recitations in claim 4 as to reaction time would be determined by routine
experimentation or would be inherently met. Id. at 19–22. Appellant
contends Burke simply discloses the dry time for 1–4 hours is a parameter,
and Burke does not disclose that increasing or decreasing drying time aids in
removal of Cr2O3 particles based on the size of particles present. Id. at 19.
Appellant argues that the reaction time requirements recited in the claims
would not have been inherent as evidenced by the Specification, which
provides examples where the treatment time exceeds the maximum drying
time of 4 hours disclosed in Burke. Id. at 20.
Issue
The dispositive issue with respect to this rejection is:
Has Appellant demonstrated reversible error in the Examiner’s
position that the method of treating silica-based soot or an article comprising
a silica-based soot layer as recited in claim 4 would have been obvious over
Burke in view of Schultz?
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Discussion
We are not persuaded by Appellant’s arguments. In particular, Burke
discloses a process for manufacturing a soot preform employing a soot
preform drying agent including at least one halide and at least one reducing
agent, which removes metal oxides from the preform. Burke, ¶¶ 3, 8, 10, 13.
Burke discloses: “[t]he removal of the impurities from the soot preform will
eliminate fiber breaks which are attributed to the presence of the impurities.”
Id. at ¶ 13. In a preferred embodiment, Burke discloses a mixture of CO and
Cl2 as the drying agent at temperatures from 900 to 1200 °C, which as
discussed above, the Examiner found, and Appellant does not dispute,
includes the temperatures, as well as the ratios and percentages by volume of
CO and Cl2 recited in claim 4. Burke ¶¶ 52, 53. Burke discloses “the draw
blank is treated with the gas mixture for preferably about 1 to about 4
hours.” Id. at ¶ 53. We observe that Burke discloses preferable treatment
times of 1–4 hours, and contemplates longer reaction times, such as 1–6
hours. Burke, ¶¶ 52, 53. Thus, Burke discloses the general process
conditions of the CO and Cl2 mixture and treatment temperatures recited in
claim 4.
As to treatment time, it is true Burke does not disclose the particular
treatment time relationship recited in claim 4, including dp, the initial
particle size of Cr2O3. However, as discussed above, Burke discloses
removal of impurities causing fiber breaks from the preform attributed
thereto. Thus, we are of the view that one of ordinary skill in the art, when
applying the method disclosed in Burke to a preform produced in accordance
with the combined teachings of Burke and Schultz, would do so such that all
the Cr2O3 particles would be removed. In doing so, one of ordinary skill in
the art would ensure the treatment time was sufficient in order to remove
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such particles, which would necessarily satisfy the reaction time
requirements set forth in claim 4. See Burke, ¶ 46 (explaining that process
times must be examined when using different temperatures); see also Ans.
17. The Examiner’s rejection relies on the similarity of conditions disclosed
in Burke along with the purpose in Burke to remove impurities to eliminate
fiber breaks, which is the same as Appellant’s purpose (Spec. ¶ 11), to
support the position that the reaction time requirements recited in claim 4
would be satisfied. Indeed, claim 4 only recites a lower limit for the
treatment time, i.e., the treatment time must be greater than the diffusion
time and reaction time combined. See Ans. 19.
In this regard, we do not agree with Appellant that the Examiner’s
reasoning improperly reduces the claim language and the disclosure of
Burke to a single “gist” or “thrust” or that the Examiner’s statements that
Burke discloses the “complete” removal of particles constitute reversible
error. Reply Br. 4, 8–11. Rather, as discussed above, the Examiner relies on
specific teachings of the prior art to support the rejection. As to Appellant’s
argument that Burke fails to disclose “complete” removal of particles,
Appellant does not sufficiently explain why the express disclosures in Burke
that “metal oxides, and alkali metal oxides are removed from the soot
preform” (Burke ¶ 13, see also Burke ¶ 65) somehow means less than
“complete” removal, or that simply because Burke does not quantify the
results of the drying agent treatment, means Burke was unsuccessful, or one
of ordinary skill in the art would be unsuccessful in achieving the purpose
set forth therein.
As a result, we affirm the Examiner’s rejection of claims 1 and 4, as
well as claims 5, 6, and 9–12 dependent therefrom.

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Rejection 2
We limit our discussion to claim 14, which is sufficient for disposition
of this rejection.

The Examiner’s Rejection
Regarding claim 14, the Examiner found Kyoto discloses treating a
soot preform, but Kyoto fails to disclose ZrO2 particles as impurities in the
soot preform, the concentration and temperature, the soot layer thickness, or
the treatment time having the requirements set forth in claim 7. Ans. 7–9,
citing Kyoto, col. 15, ll. 56–63. The Examiner found Pluijms and Burke
provide evidence that ZrO2 particles are conventionally-known impurities in
optical fiber preforms such that it would have been obvious to expect finding
ZrO2 particles as impurities in the Kyoto preform. Id. at 7. The Examiner
found that the ranges of concentration of CCl4 in Kyoto overlap the ranges
claimed, which demonstrates a prima facie case of obviousness. Id. at 8.
The Examiner found Schultz discloses conventional methods of creating
optical fibers involve creating soot layers 30 microns thick, such that it
would have been obvious to have used a conventional method of creating a
preform when using the Burke method, because Burke does not disclose
how to make the preform. Id. Regarding the reaction time, the Examiner
found that in view of the heating procedure disclosed in Kyoto (col. 19, ll.
1–5), and inherent particle sizes of the ZrO2 particles present in the Kyoto
preform, the duration would be much less than one second. Id.
Appellant’s contentions
Appellant contends that, inter alia, Kyoto does not disclose ZrO2
particles in its article, and that even taking into account the Examiner’s
findings with respect to Pluijms and Burke that ZrO2 is a known impurity in
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optical fiber preforms, Kyoto does not provide any reasoning for selecting
treatment times as recited in claim 14, because the reaction times and
diffusion times in the claims are based on the particle size of ZrO2. Id. at 24.
Issue
Has Appellant demonstrated reversible error in the Examiner’s
position that Kyoto in combination with Schultz, Pluijms, and Burke would
have rendered the treatment time recited in claim 14 obvious?
Discussion
We are persuaded by Appellant’s argument that the Examiner’s
rejection, which relies on Pluijms or Burke for the position that ZrO2
particles would be present in Kyoto, and thus the reaction times based on
ZrO2 particles would have been obvious, is not sufficiently supported.
Kyoto merely discloses “dehydration of the soot preform” using chlorine-
containing gases, and does not mention the presence of impurities such as
ZrO2 particles. Kyoto, col. 15, ll. 46-63. Moreover, Kyoto discloses making
the muffle tube body disclosed therein from quartz glass as pure as possible
to prevent contamination of the preform. Kyoto, col. 11, ll. 3–6; col. 12, ll.
47–54. Thus, the Examiner’s rationale is insufficient to establish that the
preforms in Kyoto would contain ZrO2 particles, or to explain why one of
ordinary skill in the art would seek to treat the soot preform for a reaction
time based on ZrO2 particles in order to perform the “dehydration” treatment
disclosed in Kyoto. Accordingly, the rejection does not provide sufficient
reasoning that the reaction time requirements in claim 14 would be met or
would have been obvious.
Therefore, we reverse the Examiner’s rejection of claims 7, 8, and 14–
17.

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Rejections 3 and 4
We limit our discussion to claim 14, which is sufficient for disposition
of these rejections.
The Examiner’s Rejections
The Examiner found Hiroo discloses a preform that is treated with
CCl4 in order to dry the preform. Ans. 9–11; Hiroo, Abstract. As with
Rejection 2, the Examiner cited Pluijms and Burke for the proposition that
one of ordinary skill in the art would expect to find ZrO2 particles in the
Hiroo preform. Id. at 11–12. The Examiner found that Figure 1(B) of Hiroo
shows a zone treatment, which depends on the length of the preform, and
that “it would have been obvious to perform routine experimentation to
determine the time needed to dry the preform.” Id. at 11.
Appellant’s Arguments
Appellant argues, as with Rejection 2 above, that Hiroo does not
disclose articles containing ZrO2 particles, and Hiroo does not disclose a
treatment time based on the particle size of ZrO2 particles. Appeal Br. 24.
Issue
Has Appellant demonstrated reversible error in the Examiner’s
position that Hiroo in combination with the other prior art cited would have
rendered the treatment time recited in claim 14 obvious?
Discussion
We are persuaded by Appellant’s argument that the Examiner’s
rejection, which relies on Pluijms or Burke for the position that ZrO2
particles would be present in Hiroo in order to determine the reaction times
based on ZrO2 particles would have been obvious, is not sufficiently
supported. Although Hiroo discloses dehydrating and reducing with a
mixture of CCl4 and O2 gas in the English Abstract, Hiroo does not disclose
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any particular reaction times, and the Examiner does not provide sufficient
explanation as to how such reaction times would translate into reaction times
based on ZrO2 particles.5 In this regard, the Examiner’s rationale is based
only on the time necessary “to dry the preform” and the Examiner does not
explain how the presence of ZrO2 particles relates to such drying time.
Thus, the Examiner’s rationale is insufficient to explain why one of ordinary
skill in the art would seek to treat the soot preform for a reaction time based
on ZrO2 particles in order to perform the “dehydrating and reducing”
treatment disclosed in Hiroo, and does not provide sufficient reasoning that
the reaction time requirements in claim 14 would be met or would have been
obvious.
Accordingly, we reverse the Examiner’s rejections of claims 7, 8, 14–
17 as set forth in Rejections 3 and 4.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 9–12 103 Burke, Schultz 1–6, 9–12
7, 8, 14–17 103 Kyoto, Schultz,
Pluijms, Burke
7, 8, 14–17
14 103 Hiroo, Schultz,
Pluijms, Burke,
Fletcher
14
7, 8, 15–17 103 Hiroo, Schultz,
Pluijms, Burke,
Fletcher, Kyoto
7, 8, 15–17
Overall
Outcome
1–6, 9–12 7, 8, 14–17

5 We observe that the full English translation of Hiroo is not of record, and
therefore our review is limited by what is relied upon by the Examiner.
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART