2020003521 (P.T.A.B. May. 17, 2021)

Corning Incorporated

Patent Trials and Appeals BoardMay 17, 2021

2020003521 (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. 15/171,404 06/02/2016 Ziwei Liu SP15-192 9464 22928 7590 05/17/2021 CORNING INCORPORATED SP-TI-3-1 CORNING, NY 14831 EXAMINER DUNLAP, JONATHAN M ART UNIT PAPER NUMBER 2855 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): usdocket@corning.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ZIWEI LIU Appeal 2020-003521 Application 15/171,404 Technology Center 2800 Before KAREN M. HASTINGS, BRIAN D. RANGE, and LILAN REN, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–17 and 19–21. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND of REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 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 Corning Incorporated. Appeal Br. 3. Appeal 2020-003521 Application 15/171,404 2 CLAIMED SUBJECT MATTER The claims are directed to an integrated capstan and apparatus for screen testing an optical fiber. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus for screen testing a coated optical fiber, the apparatus comprising: an integrated capstan comprising: a capstan comprising a surface; and a fiber-engaging material, said fiber-engaging material formed on the surface of said capstan, said fiber-engaging material having a hardness in the range from 35 Shore 00 to 75 Shore 00; and a fiber conveyance pathway, said fiber conveyance pathway positioned adjacent to said integrated capstan and extending around at least a portion of the surface of the capstan, such that when said coated optical fiber is directed along said fiber conveyance pathway, said coated optical fiber contacts said fiber-engaging material. Independent claim 20 recites a process for screen testing a coated optical fiber comprising directing the fiber around the capstan having the fiber-engaging material on its surface (Appeal Br. 25, 27, Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Grant US 3,930,603 Jan. 6, 1976 Bolgiano US 4,138,299 Feb. 6, 1979 Nagayama US 5,472,128 Dec. 5, 1995 Burkhardt US 6,881,166 B1 Apr. 19, 2005 Barrett US 2015/0367970 A1 Dec. 24, 2015 Richards US 2016/0024333 A1 Jan. 28, 2016 Appeal 2020-003521 Application 15/171,404 3 REJECTIONS Claims 1, 2, and 19–21 are rejected under 35 U.S.C. § 103 as being unpatentable over Nagayama and Barrett. Final Act. 4. Claims 3, 4, and 12 are rejected under 35 U.S.C. § 103 as being unpatentable over Nagayama, Barrett, and Grant. Final Act. 10. Claims 5–11 are rejected under 35 U.S.C. § 103 as being unpatentable over Nagayama, Barrett, Grant, and Richards. Final Act. 13. Claims 13 and 14 are rejected under 35 U.S.C. § 103 as being unpatentable over Nagayama, Barrett, Grant, and Burkhardt. Final Act. 18. Claim 15 is rejected under 35 U.S.C. § 103 as being unpatentable over Nagayama, Barrett, Grant, Burkhardt, and Bolgiano. Final Act. 20. Claims 16 and 17 are rejected under 35 U.S.C. § 103 as being unpatentable over Nagayama, Barrett, and Burkhardt. Final Act. 20. OPINION The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections 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), quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). While we appreciate the Examiner’s explanations, we conclude that the preponderance of the evidence supports Appellant’s position that the Examiner has not met the burden in this case for substantially the same reasons as set forth by Appellant in the Appeal Brief (Appeal Br. 11‒17). Appeal 2020-003521 Application 15/171,404 4 Specifically, a preponderance of the evidence supports Appellant’s position that the Examiner has failed to provide adequate reasoning for the proposed modification of Nagayama’s capstan and optical fiber transport testing system based on Barrett’s soft roller for transporting pills as relied upon by the Examiner (Final Act. 5‒6). The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). The Examiner has not adequately explained why the skilled artisan’s knowledge or inferences and creativity would have supported the obviousness determination based on the teachings of the applied references without undue speculation and/or an improper hindsight reconstruction. The preponderance of evidence does not support the Examiner’s determination that one would have looked to the material of the roller of Barrett used in transporting pills for use as a fiber-engaging material formed on the surface of the capstan of Nagayama. The Examiner does not rely upon the additional references applied in the § 103 rejections of dependent claims 3‒17 to cure these deficiencies and/or otherwise provide another rationale that cures these deficiencies. Accordingly, we reverse the § 103 rejections of claims 1‒17 and 19‒ 21 which all rely on an impermissible hindsight reconstruction of the capstan of Nagayama to have a surface formed of the material of Barrett as a fiber- engaging material. Appeal 2020-003521 Application 15/171,404 5 New Grounds of Rejection Claims 1, 2, and 19‒21 are rejected under 35 USC § 103 as unpatentable over Shigeru as evidenced by Dow, optionally with Oka Shigeru2 teaches an apparatus and a method for screen testing a coated optical fiber, the apparatus comprising an integrated capstan having a surface, a fiber engaging material formed on the surface of the capstan, and a fiber conveyance pathway (Fig. 4; ¶ 11). Shigeru teaches a range of hardness of the fiber engaging material as measured by its Young’s modulus of preferably less than 200 kg/mm2 (Shigeru ¶ 12). This prevents slipping of the optical fiber, as wells as prevents the coating on the fiber from peeling or collapse (id.). Shigeru also exemplifies a silicone rubber as a film on the surface of reel 5A and 5B (¶ 16). The Young’s modulus of silicon rubber is reported as 1 kg/mm2 (9.88 MPa) (Table 2, 4th row).3 Notably, as evidenced by Dow4, the range of hardness of the coating layer taught by Shigeru of less than 200 kg/mm2 (i.e., less than 1961 Mpa) (Shigeru ¶ 12) encompasses the range of claim 1, thus the claimed hardness is prima facie obvious over the teachings of Shigeru. Dow correlates Young’s modulus to Shore 00 2 Shigeru (JPH05-215640A) cited by Appellant on the IDS filed August 18, 2016. 3 Tables 1 and 2 are only shown in the original Japanese document (not in the provided translation). A spot translation was requested by a USPTO translator who stated that the materials listed at Table 2 in descending order are stainless steel, plastic, nylon, silicone rubber. We also note that silicone rubber may be made of different hardness formulations, e.g., as low as 20 Shore A (70 Shore 00). See, e.g., https://www.rubbercal.com/sheet- rubber/silicone-durometer/ 4 Dow White Paper. “Can You Estimate Modulus From Durometer Hardness for Silicones.” 11-3716-01-durometer-hardness-for-silicones.pdf (dow.com) (hereinafter “Dow”) Appeal 2020-003521 Application 15/171,404 6 Durometer (Dow 3 (bottom Table)), evidencing that the Young’s modulus range taught by Shigeru encompasses the claimed range of Shore 00 hardness. It is well established that when claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established. These cases have also consistently held that the Appellant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The burden rests with Appellant to establish (1) that the alleged unexpected results are, in fact, unexpected, (2) that the comparisons are to the disclosure of closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Moreover, it is well settled that it would have been obvious for an artisan with ordinary skill to develop workable or even optimum ranges for result-effective parameters. In re Woodruff, 919 F.2d at 1577; In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955). Furthermore, “[a] recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). As detailed above, Shigeru teaches that the harness/softness of the coating on Appeal 2020-003521 Application 15/171,404 7 the capstan is a result effective variable to prevent damage to the optical fiber being transported. Oka5 is optionally applied as it shows a hardness range for a capstan belt that also overlaps the claimed range (Oka ¶ 19). Oka teaches using a soft foam urethane belt 5 to 20 Shore A (roughly equivalent to 45 to 70 Shore 00)6 to prevent damage to the optical fiber. While we appreciate that Oka exemplifies the capstan belt being soft to prevent damage to the optical fiber being transported, Shigeru exemplifies a soft coating on the capstan itself for this same purpose, to prevent damage to the fiber being transported. Thus, it would have been prima facie obvious to one of ordinary skill in the art, using no more than ordinary creativity, to have made the capstan coating of Shigeru in the range of softness taught in Oka for its capstan belt. KSR, 550 U.S. at 418 (“[T]he [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Having determined that a prima facie case of obviousness has been established over Shigeru, optionally with Oka, the issue becomes whether Appellant has established any criticality to the claimed range. 5 Oka, JP 2005097051, pub. Sept. 25, 2003, discussed by Appellant at Appeal Br. 20. 6 https://www.apstpe.com/media/pdf/Shore-Hardness-Scales.pdf; see also, https://www.mechanicalrubber.com/elastomericsolutions/wp- content/uploads/2013/08/Durometer-Conversion-Table.pdf Appeal 2020-003521 Application 15/171,404 8 Appellant relies on the Kaimal Declaration7 as describing the failure in the screening process with a fiber-engaging material having a hardness less than 35 Shore 00, and a failure of the optical fiber coating when a fiber- engaging material having a hardness greater than 75 Shore 00 is utilized (Appeal Br. 18‒20; Kaimal Decl. ¶ 6). The mere conclusion/determination of the Declarant does not appear to be sufficient as no objective evidence is presented in the Declaration. In any event, since the claimed range of hardness lies inside the range disclosed by Shigeru (and also overlaps the range taught in Oka), and since Shigeru teaches the balance of preventing slipping and minimizing damage to the optical fiber (see Shigeru ¶¶ 11, 12) (and optionally Oka further discusses a capstan belt softness for preventing damage to the optical fiber), these results (that is, determinations of the declarant, see Kaimal Decl. ¶¶ 5, 6) are not sufficient to outweigh the prima facie case of obviousness set forth herein. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior property must be unexpected to be considered as evidence of non-obviousness”). Under these circumstances, we view this data as merely representing the optimization of the softness described in Shigeru (optionally with Oka) which would have been within the skill of and, thus, obvious to the artisan. See id. at 1371 (“At most, then, Pfizer engaged in routine, verification testing to optimize selection of one of several known and clearly suggested pharmaceutically- acceptable salts to ease its commercial manufacturing and marketing of the tablet form of the therapeutic amlodipine.”). 7 Declaration of Aditya Kaimal under 37 CFR 1.132 filed on May 7, 2019 (hereinafter “Kaimal Decl.”). Appeal 2020-003521 Application 15/171,404 9 In addition, we emphasize that, although secondary considerations such as unexpected results must be taken into account, they do not necessarily control the obviousness conclusion. See Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“[E]vidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”); Pfizer, Inc., 480 F.3d at 1372 (“[T]his secondary consideration does not overcome the strong showing of obviousness in this case. Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion.”). Here, the case of obviousness established is strong such that when the teachings of the reference(s) are weighed against Appellant’s alleged unexpected results, the preponderance of the evidence of record still weighs in favor of a conclusion of obviousness. Dependent claim 21 (dependent from apparatus claim 1) recites a coated optical fiber having a primary coating and a recoat coating. This optical fiber is the material being transported through the capstan and belt apparatus. As noted by the Examiner (Final Act. 10), where the claims are to an apparatus, the “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937 (CCPA 1963); see also In re Young, 75 F.2d 996 (CCPA 1935). Claims 3, 4, and 12 are rejected under 35 USC § 103 as unpatentable over the combined prior art of Shigeru, Dow, optionally Oka and Grant Appeal 2020-003521 Application 15/171,404 10 Shigeru teaches an apparatus for screen testing a coated optical fiber, the apparatus comprising an integrated capstan comprising a surface and a fiber engaging material formed on the surface of the capstan (¶ 11) as set forth above with regard to claim 1, optionally with Oka as explained above. Shigeru is silent as to the fiber engaging material being a polyurethane as required by claims 3 and 4, where the polyurethane has a hardness as required by claim 12 (note claim 12 recites the same hardness range of claim 1). Grant is relied upon for the same reasons as set forth by the Examiner (Final Act. 11, 12) to exemplify that a polyurethane coating on a capstan and thus it would have been prima facie obvious to provide an outer coating on the capstan of Shigeru of polyurethane as recited in claims 3, 4, and 12. Additionally, Oka exemplifies a soft urethane belt to prevent damage to the fiber (Oka ¶ 19), providing further evidence of the obviousness of a polyurethane coating. Claims 5–11 are rejected under 35 USC § 103 as unpatentable over the combined prior art of Shigeru, Dow, optionally Oka, Grant and Richards The combination of Shigeru (optionally with Oka) and Grant teaches an apparatus for screen testing optical fibers as set forth above with regard to claim 4. The combination is silent as to the fiber-engaging material being a polyurethane cured from a di-functional isocyanate, etc., as required by claims 5‒11. For the reasons set forth by the Examiner (Final Act. 13‒18), it would have been obvious to have made the polyurethane of Grant (or Oka) with a di-functional isocyanate, etc., as taught in Richards to provide a Appeal 2020-003521 Application 15/171,404 11 capstan having a fiber engaging material as recited in claims 5–11 formed on its surface. Claims 13 and 14 are rejected under 35 USC § 103 as unpatentable over the combined prior art of Shigeru, Dow, optionally Oka, Grant, and Burkhardt The combination of Shigeru (optionally with Oka), Grant, and Burkhardt teaches an apparatus for screen testing optical fibers as set forth above with regard to claim 3. The combination is silent as to the fiber- engaging material further comprising a capping layer, said capping layer formed on the polyurethane material and having a hardness as required by claims 13 and 14. Burkhardt exemplifies the obviousness of an elastomeric material with a capping layer for use as a pulley/capstan surface. For the reasons set forth by the Examiner (Final Act. 18‒19), it would have been obvious to have modified the polyurethane of Shigeru/Grant/Oka to provide a capstan having a fiber engaging material as recited in claims 13 and 14 formed on its surface. Claim 15 is rejected under 35 USC § 103 as unpatentable over the combined prior art of Shigeru, Dow, optionally Oka, Grant, Burkhardt, and Bolgiano The combination of Shigeru (optionally with Oka), Grant and Burkhardt teaches an apparatus for screen testing optical fibers as set forth above with regard to claim 14. The combination is silent as to the capping layer comprising a cured product of a formulation that includes an acrylate compound according to claim 15. For the reasons set forth by the Examiner (Final Act. 20), it would have been obvious to have modified the capping Appeal 2020-003521 Application 15/171,404 12 layer of Burkhardt to provide a formulation that includes an acrylate compound as such was known as exemplified in Bolgiano. Claims 16 and 17 are rejected under 35 USC § 103 as unpatentable over the combined prior art of Shigeru, Dow, optionally Oka and Burkhardt Shigeru (optionally with Oka) teaches an apparatus for screen testing a coated optical fiber, the apparatus comprising an integrated capstan comprising a surface and a fiber engaging material formed on the surface of the capstan (Shigeru ¶ 11) as set forth above with regard to claim 1. Shigeru is silent as to the fiber engaging resilient material comprising a capping layer. Shigeru (optionally with Oka) teaches and suggests the resilient material having a hardness in the range as claimed. Burkhardt is relied upon for the same reasons as set forth by the Examiner (Final Act. 21) to teach the obviousness of capping layer having a hardness as claimed in combination with an underlying resilient material so as to render the subject matter of claims 16 and 17 obvious. Therefore, we set forth § 103 rejections based on Shigeru as NEW GROUNDS OF REJECTION pursuant to 37 C.F.R. § 41.50(b). CONCLUSION The Examiner’s decision to reject claims 1–17 and 19–21 is REVERSED. We add NEW GROUNDS OF REJECTIONS pursuant to 37 C.F.R. § 41.50(b). Appeal 2020-003521 Application 15/171,404 13 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Grounds 1, 2, 19– 21 103 Nagayama, Barrett 1, 2, 19– 21 3, 4, 12 103 Nagayama, Barrett, Grant 3, 4, 12 5–11 103 Nagayama, Barrett, Grant, Richards 5–11 13, 14 103 Nagayama, Barrett, Grant, Burkhardt 13, 14 15 103 Nagayama, Barrett, Grant, Burkhardt, Bolgiano 15 16, 17 103 Nagayama, Barrett, Burkhardt 16, 17 1, 2, 19‒21 103 Shigeru, Dow, Oka 1, 2, 19‒21 3, 4, 12 103 Shigeru, Dow, Oka, Grant 3, 4, 12 5–11 103 Shigeru, Dow, Oka, Grant, Richards 5–11 13, 14 103 Shigeru, Dow, Oka, Grant, Burkhardt 13, 14 15 103 Shigeru, Dow, Oka, Grant, Burkhardt, Bolgiano 15 16, 17 103 Shigeru, Dow, Oka, Burkhardt 16, 17 Overall Outcome 1–17, 19–21 1–17, 19–21 TIME PERIOD FOR RESPONSE Appeal 2020-003521 Application 15/171,404 14 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). Appeal 2020-003521 Application 15/171,404 15 REVERSED; 37 C.F.R. § 41.50(b)