Zeus Industrial Products, Inc.

Patent Trials and Appeals Board

May 17, 2021

2020004777 (P.T.A.B. May. 17, 2021)

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.
15/291,323 10/12/2016 Brian R. Tomblin Z013 1200US.1 1763
26158 7590 05/17/2021
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
JORDAN, ANDREW
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
05/17/2021 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):
BostonDocket@wbd-us.com
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN R. TOMBLIN, SHANNON M. GIOVANNINI,
MATTHEW W. COX, and AARON E. HYDRICK
Appeal 2020-004777
Application 15/291,323
Technology Center 2800
Before JEFFREY B. ROBERTSON, N. WHITNEY WILSON, and
JANE E. INGLESE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
Appeal 2020-004777
Application 15/291,323

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 1–10 and 12–15. See Appeal Br. 3.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to polymer-coated optical fibers
and fiber optic cables. Spec. 1, ll. 4–5. Claim 1, reproduced below, is
illustrative of the claimed subject matter (Appeal Br., Claims Appendix 28):
1. A thermoplastic polymer-coated optical element comprising:
an optical element, wherein the optical element comprises
an optical fiber having a core, a cladding on at least a portion of
an outer surface of the core, and a polymeric primary buffer
coating on at least a portion of an outer surface of the cladding;
and
a thermoplastic polymeric tight buffer coating on at least
a portion of an outer surface of the polymeric primary buffer
coating of the optical element,
wherein the thermoplastic polymeric tight buffer coating
is in contact with the outer surface of the polymeric primary
buffer coating with no airspace there between,

1 This Decision includes citations to the following documents:
Specification filed October 12, 2016 (“Spec.”); Non-Final Office Action
mailed April 2, 2019 (“Non-Final Act.”); Appeal Brief filed October 30,
2019 (“Appeal Br.”); Examiner’s Answer mailed April 8, 2020 (“Ans.”),
and Reply Brief filed June 8, 2020 (“Reply Br.”).
2 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Zeus
Industrial Products, Inc. Appeal Br. 1.
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Application 15/291,323

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wherein the polymer-coated optical element exhibits a first
attenuation at room temperature of plus or minus 50% the
attenuation of a comparable optical element with no
thermoplastic polymeric tight buffer coating thereon, and
wherein the polymer-coated optical element exhibits a
second attenuation at room temperature after thermal cycling to
a temperature of at least l70°C that is about 2 times the first
attenuation or less.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Drenzek US 2005/0238309 A1 Oct. 27, 2005
Solomon US 2009/0103870 A1 Apr. 23, 2009
Yamamoto US 3,980,390 Sept. 14, 1976

REJECTIONS
1. Claims 1, 3–10, and 12–15 are rejected under 35 U.S.C. § 103 as
being unpatentable over Drenzek in view of Solomon. Non-Final
Act. 5–11.
2. Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable
over Drenzek, Solomon, and Yamamoto. Non-Final Act. 11–12.
OPINION
Rejection 1
We limit our discussion to claim 1, which is sufficient for disposition
of this rejection.

Appeal 2020-004777
Application 15/291,323

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The Examiner’s Rejection
In rejecting claim 1 as unpatentable over Drenzek and Solomon, the
Examiner found Drenzek discloses a thermoplastic polymer coated optical
element including an optical fiber (20) having a core (24), a cladding (26), a
primary buffer coating (hermetic layer 28), and a thermoplastic tight buffer
coating layer (outer layer 30). Non-Final Act. 5–6, citing Drenzek, ¶ 28,
Fig. 3. The Examiner found Figure 3 of Drenzek depicts outer layer 30 in
contact with the outer surface of hermetic layer 28 such that there is no
airspace in between the two layers. Id. at 6. The Examiner found Drenzek
does not disclose the primary buffer coating (hermetic layer 28) is a
polymeric primary buffer coating or that the polymer-coated optical element
exhibits the attenuation properties recited in claim 1. Id. at 6–7.
The Examiner found Solomon discloses a fiber optic slice including a
hermetic polyimide coating applied directly to the optical fiber core. Id. at
7, citing Solomon ¶¶ 64, 93. The Examiner determined that it would have
been obvious to have used a polyimide hermetic coating as disclosed in
Solomon in the system of Drenzek “in order to provide an additional
material for hermetic coating as well as providing for manufacturing
efficiencies in using similar materials.” Id. The Examiner determined that
because the Drenzek provides the structure of claim 1, the combination
would provide the same claimed properties or functions recited in claim 1.
Id. at 7–8.

Appellant’s Arguments
Appellant argues, inter alia, that one of ordinary skill in the art would
not have replaced the hermetic layer of Drenzek with the polyimide hermetic
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layer disclosed in Solomon, because the polyimide hermetic layer disclosed
in Solomon would not provide all of the functions of the hermetic layer
disclosed in Drenzek. Appeal Br. 5–18. Appellant argues Drenzek and
Solomon do not disclose the attenuation properties recited in the claims, and
the Examiner’s reliance on inherency is insufficiently supported. Id. at 21–
24.

Issue
Did the Examiner err in determining that the combination of Drenzek
and Solomon would have rendered obvious the thermoplastic polymer-
coated optical element having the attenuation properties recited in claim 1?

Discussion
Initially, we appreciate the Examiner’s thorough discussion of the
prior art and explanations as to how the prior art has been applied to the
claims. However, after careful consideration, we are persuaded by
Appellant’s arguments. That is, we agree with Appellant that there is
insufficient support for the Examiner’s position that the attenuation
properties recited in claim 1 would necessarily be present in the optical fiber
that results from the combination of Drenzek and Solomon.
The Examiner explained that with respect to thermal resistance and
attenuation characteristics of the optical fiber cable, the key structure in
claim 1 is the “thermoplastic polymer tight buffer coating” recited therein, a
layer which is already present in Drenzek. Ans. 20–21. The Examiner
further explained that because the optical fibers disclosed in Drenzek have a
minimal effect on the ability to transmit light, the attenuation would not
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Application 15/291,323

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increase significantly such that the attenuation properties in the claims,
which are broadly recited, would be met. Id. at 22–23. The Examiner also
relied on the Examples disclosed in Drenzek for the attenuations disclosed in
dependent claims 14 and 15. Id. at 25.
However, we are of the view that one cannot discount the effect of the
substitution of Solomon’s polyimide hermetic layer for Drenzek’s hermetic
layer in accessing the inherent ability of the resulting optical fiber to satisfy
the attenuation properties recited in claim 1. That is, there is evidence in the
record that polyimides allow hydrogen permeation (see Appeal Br. 10–11;
1st Tomblin Decl. ¶ 16), which Drenzek discloses affects proper function of
optical fibers. Drenzek ¶ 3. Thus, although Drenzek discloses that the outer
layer 30 (corresponding to the recited thermoplastic polymeric tight buffer
coating) provides resistance to water and air (Drenzek ¶ 28), there is
insufficient evidence to find that the substitution of polyimide for the
hermetic layer in Drenzek would yield the attenuation properties recited in
claim 1. Accordingly, we agree with Appellant that due to the structural
differences between Drenzek and Solomon, the attenuation properties would
not necessarily flow from the combination of Drenzek and Solomon. See
Reply Br. 11–12.
As a result, we reverse the Examiner’s decision to reject claim 1 as
obvious over Drenzek and Solomon.

Rejection 2
Claim 2, the subject of Rejection 2, depends from claim 1, and the
Examiner’s rejection thereof depends on similar positions with respect to
Drenzek and Solomon. Non-Final Act. 11–12. The Examiner’s citation to
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Yamamoto does not remedy the deficiencies with respect to Drenzek and
Solomon discussed above. Id. at 12.
Accordingly, we reverse the Examiner’s decision to reject claim 2 for
similar reasons as discussed above with respect to claim 1.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–10, 12–
15
103 Drenzek, Solomon 1, 3–10, 12–
15
2 103 Drenzek, Solomon,
Yamamoto
2
Overall
Outcome
1–10, 12–15

REVERSED