Corning Incorporated

Patent Trials and Appeals Board

Apr 1, 2021

2020000465 (P.T.A.B. Apr. 1, 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.
15/183,927 06/16/2016 Manuela Ocampo SP15-212 6446
22928 7590 04/01/2021
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
JORDAN, ANDREW
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
04/01/2021 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 MANUELA OCAMPO and
JOAN DIANA PATTERSON
Appeal 2020-000465
Application 15/183,927
Technology Center 2800
Before TERRY J. OWENS, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s December 18, 2018 decision to finally reject claims 1–13 and
15–23 (“Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word 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 2020-000465
Application 15/183,927

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CLAIMED SUBJECT MATTER
The claims are directed to a coated optical fiber which includes a first
coated optical fiber segment, a second coated optical fiber segment, and a
splice-junction coating (Abstract). The claimed inventions are directed to
coated optical fibers having a splice junction that is coated with a particular
splice-junction coating material (also called re-coat coating material)
(Appeal Br. 5). In particular, the claimed inventions are directed to coated
optical fibers having a splice junction that is coated with a splice-junction-
coating material cured from a precursor including 0 wt% to 1 wt% total
oligomers (no or low oligomer content) (id.). The claimed junction-coating
materials are said to offer various advantages over junction-coating materials
of the prior art, which are cured from a precursor including a substantial
amount of oligomer(s) (id.). Claim 1, reproduced below from the Claims
Appendix, is illustrative of the claimed subject matter:
1. A coated optical fiber comprising:
a first coated optical fiber segment comprising a first fiber
segment and at least one coating disposed on the first fiber
segment, wherein at least one coating has been removed from an
end portion of the first fiber segment;
a second coated optical fiber segment comprising a second
fiber segment and at least one coating disposed on the second
fiber segment, wherein at least one coating has been removed
from an end portion of the second fiber segment, and wherein the
end portion of the first fiber segment and the end portion of the
second fiber segment abut one another end-to-end; and
a splice-junction coating that encapsulates the end portion
of the first fiber segment and the end portion of the second fiber
segment and contacts the at least one coating of the first coated
optical fiber segment and the at least one coating of the second
coated optical fiber segment, wherein the splice-junction coating
is a cured polymer product of a precursor composition, the
precursor composition comprising:
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from 0 wt% to 1 wt% of total oligomers; and
at least 90 wt% of total monomers;
wherein a Young's modulus of the cured polymer product
is greater than or equal to 1800 MPa, and wherein a Young's
modulus of the at least one coating of the first coated optical fiber
segment and a Young's modulus of the at least one coating of the
second coated optical fiber segment are greater than about 1600
MPa.
REFERENCES
The prior art relied upon by the Examiner is:

Name Reference Date
Chien et al. US 2002/0168165 A1 November 14, 2002
Fabian et al. US 2005/0158001 A1 July 21, 2005
Takase et al. WO 96/11965 A1 April 25, 1996

REJECTIONS
1. Claims 1, 4–6, 8–12, 16, 18, 19, and 21–23 are rejected under
35 U.S.C. § 103 as unpatentable over Fabian in view of Chien.
2. Claims 2, 3, 7, 13, 15, 17, and 20 are rejected under 35 U.S.C. § 103
as unpatentable over Fabian, Chien and further in view of Takase.
OPINION
Appellant argues the claims in three groups: (1) Claims 1 and 16;
(2) claim 13; and (3) claims 4 and 5 (Appeal Br. 12). The remaining claims
will stand or fall with their respective independent claims. Appellant
indicates that the arguments for groups (1) and (2) are essentially the same,
so we consider them together (id.). We address the rejection of claims 4 and
5 separately.
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Claim 1. The Examiner finds that Fabian discloses each element of
claim 1, except that Fabian does not disclose the precursor composition for
making the splice junction coating has 0-1 wt% of oligomers and at least 90
wt% of total monomers, and the cured polymer product has a Young's
modulus greater than or equal to 1600 MPa (Final Act. 6–8). The Examiner
finds that Chien discloses an all fiber polarization mode dispersion
compensator that meets the requirements of claim 1, and determines that it
would have been obvious to use Chien’s polymer in Fabian’s system as a
known alternative coating material and/or to control changes in
birefringence of the fiber as suggested by Chien (Final Act. 8, citing Chien,
Abstract, ¶¶ 57, 60, 103). The Examiner further determines that the claimed
Young’s modulus would have been obvious because when the claimed and
prior art products are identical or substantially identical in composition, or
are produced by identical or substantially identical processes, a prima facie
case of either anticipation or obviousness has been established (Final Act. 9,
citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977)).
In addition, the Examiner finds that Fabian teaches that use of a low-
oligomer polymer is desirable from a cost perspective and, therefore, this
would have been an additional reason a person of skill in the art would have
looked to Chien’s low oligomer polymer to substitute into Fabian’s system
(Ans. 6–7, citing Fabian, ¶ 81).
Appellant argues that the Examiner has not adequately established
that a person of skill in the art would have utilized Chien’s stress-
transmitting secondary coating as a splice-junction coating in Fabian’s
system (Appeal Br. 12). According to Appellant:
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The fiber of Fabian is used in the context of telecom signals
(¶ [0005]), where the purpose is generally to deliver an input
signal through the fiber with as little attenuation and
modification as possible. The purpose of the re-coat coating of
Fabian is to hold two fibers together at a butt-splice junction.

(Appeal Br. 15, citations omitted). Furthermore, according to Appellant,
Chien’s coating is specifically designed to transmit a residual stress to a
fiber to affect the fiber’s transmission properties, which means that it has
different engineering design constraints (id., citing Chien ¶¶ 12–14).
Therefore, according to Appellant, a person of skill in the art would not have
looked to combine Chien’s polymer with Fabian’s system (id.).
Appellant’s arguments are not persuasive. As found by the Examiner,
Fabian states that lower oligomer-content polymers would be more cost-
effective, and specifically indicates that polymers with oligomer contents of
as low as “at least about 1 wt%” would be “desirable” (Fabian, ¶ 81). The
listed amount of “about 1 wt%” at least abuts the claimed range of 0 wt%–
1.0 wt%, and, because of Fabian’s use of the term “about,” actually overlaps
with the claimed range. A prima facie case of obviousness exists in
situations where the claimed ranges overlap the ranges disclosed by the prior
art. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990). Moreover, Fabian plainly describes
the desirability of limiting the amount of oligomer in the polymer
composition (Fabian ¶ 81), which would have suggested to one of skill in the
art to use even lower amounts.
Finally, Fabian also discloses that the splice-junction coating and the
general coating may have the same composition (Fabian ¶ 94). This is
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further evidence of why a person of skill in the art would have been
motivated to use Chien’s coating as Fabian’s splice-junction coating.
In order to establish obviousness, the Examiner must, inter alia,
articulate some “reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir
2006). This reasoning must show that “there was an apparent reason to
combine the known elements in the fashion claimed.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007). In this instance, the preponderance
of the evidence of record supports the Examiner’s determination that a
person of skill in the art would have had reason to use Chien’s coating, with
its very low oligomer content in Fabian’s system. The Rule 132
Declarations relied upon by Appellant do not overcome the clear teachings
set forth by Fabian.
Claims 4 and 5. Claims 4 and 5 recite that either a gap forms between
the splice-junction coating and the coating on the optical fiber at a rate of
less than 20% at a specific tensile stress (claim 4) or does not form at all at
that tensile stress. The Examiner finds that because the combination of
Fabian and Chien would have had the same composition as the claimed
system, the claimed properties recited in claims 4 and 5 would have been
obvious:
Where the claimed and prior art products are identical or
substantially identical in structure or composition, or are
produced by identical or substantially identical processes, a
prima facie case of either anticipation or obviousness has been
established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433 (CCPA 1977). MPEP § 2112.01 (I).
Consequently, because Fabian as set forth above
provides the structure of claim 1, the combination is seen as
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also providing the same claimed properties or functions of
claim 1. This includes the gap formation characteristics.

(Final Act. 10). As discussed above, we determine that the Examiner has
established that it would have been obvious for a person of skill in the art to
have combined the teachings of Fabian and Chien to arrive at a product
which is identical or substantially identical in structure or composition
invention of claim 1. Therefore, the burden shifts to Appellant to
demonstrate that its product does not have the properties set forth in claims 4
and 5. In re Best, 562 F.2d at 1255. Appellant has not met this burden.
CONCLUSION
Accordingly, we affirm the rejections of claims 4 and 5.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–6, 8–
12, 16, 18,
19, 21–23
103 Fabian, Chien 1, 4–6, 8–
12, 16, 18,
19, 21–23

2, 3, 7, 13,
15, 17, 20
103 Fabian, Chien,
Takase
2, 3, 7, 13,
15, 17, 20

Overall
Outcome
1–13, 15–
23

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