Ex Parte Baynham et al

Board of Patent Appeals and Interferences

Aug 27, 2010

10880205 (B.P.A.I. Aug. 27, 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.
10/880,205 06/29/2004 Grant Baynham 1-10-4 7097
7590 08/27/2010
Law Firm of Peter V.D. Wilde
301 East Landing
Williamsburg, VA 23185
EXAMINER
DEHGHAN, QUEENIE S
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
08/27/2010 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 GRANT BAYNHAM,
PAUL E. GLODIS, and
ROBERT LINGLE, JR.
____________

Appeal No. 2009-012422
Application 10/880,205
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
PETER F. KRATZ Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 through 18. See page 2 of the Appeal Brief (“App

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 2009-012422
Application 10/880,205

2
Br.”) filed June 3, 2008. We have jurisdiction under 35 U.S.C. § § 6 and
134.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “methods for
manufacturing optical fibers” (Spec. 1, ll. 4-5). Details of the appealed
subject matter are recited in representative claims 1 and 152 reproduced from
the Claims Appendix to the Appeal Brief as shown below:
1. Process for the manufacture of optical fiber comprising:

(a) preparing an optical fiber preform, the optical fiber perform
comprising a core and a cladding,

(b) heating the preform to the softening temperature, and

(c) drawing an optical fiber from the preform,

the invention characterized in that the core of the optical fiber preform is
produced by steps consisting essentially of:

(i) forming a germanium doped core layer on the layer inside
of a starting tube, the core layer having a doping level L,

(ii) forming a buffer layer on the doped core layer, the buffer
layer deposited with a doping level L', where L' < L, the buffer layer
constituting the surface layer of the inside of the tube and thereafter,

(iii) collapsing the tube with the said surface layer to produce a
solid glass cylindrical body.

2 Appellants do not argue any of the claims on appeal separately, but instead
focus their arguments on the limitations of claims 1 and 15 (e.g., App. Br. 6-
11).

Appeal 2009-012422
Application 10/880,205

3
15. Process for the manufacture of an optical fiber preform
comprising:

(a) forming a germanium doped core layer on the inside of a starting
tube, the core layer having a doping level L,

(b) forming a buffer layer on the doped core layer, the buffer layer
deposited with a doping level L', where L' < L, the buffer layer constituting
the surface layer of the inside of the tube and thereafter,

(c) collapsing the tube with the said surface layer to produce a solid
glass cylindrical body.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 3 of the Answer
(“Ans.”) dated January 30, 2009:
Krohn 5,221,308 Jun. 22, 1993
Hirano 6,519,403 B1 Feb. 11, 2003
Fabian US 2003/0140659 A1 Jul. 31, 2003
Neuberger US 2004/0031289 A1 Feb. 19, 2004

Appellants request review of the following grounds of rejections set
forth in the Answer:
1. Claims 1, 2, 4, 5, 7, 9, 10, and 14 through 18 under 35 U.S.C.
§ 102(b) as anticipated by Hirano;
2. Claims 6 and 11 under 35 U.S.C. § 102(b) as anticipated by or,
in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Hirano;
3. Claim 3 under 35 U.S.C. § 103 as unpatentable over the
combined disclosures of Hirano and Krohn;
4. Claim 8 under 35 U.S.C. § 103 as unpatentable over the
combined disclosures of Hirano and Fabian; and
Appeal 2009-012422
Application 10/880,205

4
5. Claims 12 and 13 under 35 U.S.C. § 103 as unpatentable over
the combined disclosures of Hirano and Neuberger.
Appellants traverse these rejections, arguing, that Hirano does not
teach the limitation "forming a germanium doped core layer on the inside of
a starting tube, [with] the core layer having a doping level L [and] forming a
buffer layer on the doped core layer, [with] the buffer layer deposited with a
doping level L’ where L’ < L" recited in claims 1 and 15 (emphasis added)
(App. Br. 7-11). Appellants also contend that the phrase “the core of the
optical fiber preform is produced by steps consisting essentially of" recited
in claim 1 precludes the formation of the fluorine doped core region taught
by Hirano (Reply Br. 3-4).
ISSUE AND CONCLUSION
The dispositive question is: Did the Examiner err in finding that
Hirano teaches the core of the optical fiber preform produced by “steps
consisting essentially of" or “comprising” “ forming a germanium doped
core layer on the inside of a starting tube, [with] the core layer having a
doping level L [and] forming a buffer layer on the doped core layer, [with]
the buffer layer deposited with a doping level L’ where L’ < L” as recited in
claims 1 and 15 respectively? On this record, we answer this question in the
negative.
ANALYSIS, FINDINGS OF FACT, AND PRINCIPLES OF LAW
ANTICIPATION UNDER § 102
During examination, claims terms must be given their broadest
reasonable construction consistent with the specification. In re Icon Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). This longstanding
broadest reasonable interpretation requirement is based on the notion that
Appeal 2009-012422
Application 10/880,205

5
“during patent prosecution when claims can be amended, ambiguities should
be recognized, scope and breadth of language explored, and clarification
imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). “Only in this
way can uncertainties of claim scope be removed, as much as possible,
during the administrative process.” Zletz, 893 F.2d at 322. “[A]s applicants
may amend claims to narrow their scope, a broad construction during
prosecution creates no unfairness to the applicant or patentee.” ICON
Health, 496 F.3d at 1379.
As argued by Appellants, claims 1 and 15 recite "forming a
germanium doped core layer on the inside of a starting tube, [with] the core
layer having a doping level L [and] forming a buffer layer on the doped core
layer, [with] the buffer layer deposited with a doping level L'" (emphasis
added). The Specification defines the claimed buffer layer having a doping
level of L’ as including undoped silica which has a doping level lower than a
germanium doped core layer (Spec. 4, 14, and 15). The Specification also
describes forming a core with a trench region made with silica doped with
appropriate amounts of fluorine and germania and an annular ring region
made with silica doped with an appropriate amount of germania prior to
forming a cladding region (Spec. 12 and 13). The Specification further
mentions employing a germania or fluorine doped silica in forming a core
(Spec. 5).
Having defined the disputed limitations in claims 1 and 15, we now
compare the claimed invention with the prior art, Hirano, relied upon by the
Examiner. The inquiry as to whether a reference anticipates a claim must
focus on what subject matter is encompassed by the claims on appeal and
what subject matter is described by the reference relied upon by the
Appeal 2009-012422
Application 10/880,205

6
Examiner. As set forth by the court in Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772 (Fed. Circ. 1983), to establish anticipation under
35 U.S.C. § 102(b), it is only necessary for the claims to “‘read on’
something disclosed in the reference, i.e., all limitations in the claim are
found in the reference, or ‘fully met’ by it.” The reference need not disclose
or teach Appellants’ purpose disclosed in the Specification. Id.
As is apparent from the record, Appellants do not dispute the
Examiner’s finding that Hirano teaches a process for manufacturing optical
fibers comprising preparing an optical fiber preform having a core and a
cladding, heating the preform to the softening temperature and drawing an
optical fiber from the preform. (Compare Ans. 3-4 with App. Br. 7-10 and
Reply Br. 2-4.) Nor do Appellants dispute the Examiner’s finding that
Hirano teaches forming a germanium doped silica layer and then forming a
buffer layer, the buffer layer constituting the surface layer of the inside of a
tube, on the germanium doped silica layer with the buffer layer having a
doping level less than the germanium doped silica layer, and collapsing the
tube with the surface layer to produce a solid cylindrical body. (Compare
Ans. 4 with App. Br. 7-10 and Reply Br. 2-4). Rather, Appellants contend
that Hirano does not teach a germanium doped core layer (App. Br. 7-10).
Notwithstanding Appellants’ arguments to the contrary, Hirano
clearly teaches forming a germanium doped layer as part of the core (ring
core region 13) of the optical fiber preform (col. 7, ll. 8-19 and Fig. 4C).
Although Hirano teaches forming a fluorine doped silica and an inner buffer
layer surrounding the fluorine doped silica as also part of the core of the
optical fiber preform, claims 1 and 15 do not preclude the formation of such
additional layers. Thus, we concur with the Examiner that claims 1, 2, 4, 5
Appeal 2009-012422
Application 10/880,205

7
through 7, 9, 10, 11, and 14 through 18 read on the steps disclosed in Hirano
within the meaning of 35 U.S.C. § 102(b).
Appellants contend that the transitional phrase “consisting essentially
of” recited in claim 1 excludes the formation of the fluorine doped silica in
the core of the fiber preform taught by Hirano inasmuch as the fluorine
doped silica, according to Appellants, is essential to Hirano’s fiber preform
(Reply Br. 4). This contention is not well taken.
It is well settled that the term “consisting essentially of” is interpreted
as including not only those specifically claimed, but also those that do not
materially affect the basic and novel characteristics of a claimed invention.
PPG Indus. V. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir.
1998). Applicants have the burden of showing that the ingredients or steps
not specifically claimed, but taught in the applied prior art, would materially
affect the basic and novel characteristics of the claimed invention. In re De
Lajarte, 337 F.2d 870, 874 (CCPA 1964). However, on this record,
Appellants have not carried such burden. In fact, contrary to Appellants’
assertion, the Specification indicates that the formation of fluorine doped
silica in the core does not materially affect the basic and novel
characteristics of the claimed invention as discussed supra. In re Herz,
537 F.2d 549, 551-52 (CCPA 1976); Ex parte Boukidis, 154 USPQ 444 (Bd.
App. 1966).
Appellants do not argue that claim 15 recites the transitional term
“consisting essentially of” in the context of forming a core of the preform
(Reply Br. 2-4). In fact, the transitional term “comprising” is used in claim
15. This transitional term permits the inclusion of elements and/or steps,
including the fluorine doped silica forming step taught by Hirano, which are
Appeal 2009-012422
Application 10/880,205

8
not specifically claimed. In re Baxter, 656 F.2d 679, 686 (CCPA 1981) (“As
long as one of the monomers in the reaction is [claimed] propylene, any
other monomer may be present, because the term ‘comprises’ permits the
inclusion of other steps, elements, or materials.”)
Accordingly, based on the findings set forth above and in the Answer,
we affirm the Examiner’s decision rejecting claims 1, 2, 4, 5 through 7, 9,
10, 11, and 14 through 18 under 35 U.S.C. § 102(b).
OBVIOUSNESS UNDER 35 U.S.C. § 103(a)
Appellants only rely on the same arguments advanced in connection
with the Examiner’s § 102(b) rejections to rebut the Examiner’s § 103
rejections set forth in the Answer (App. Br. 10-11). Thus, for the same
reasons set forth above and in the Answer, we affirm the Examiner decision
rejecting claims 3, 6, 8, 11, 12, and 13 under 35 U.S.C. § 103(a).
ORDER
In view of the foregoing, the decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

cam

LAW FIRM OF PETER V.D. WILDE
301 EAST LANDING
WILLIAMSBURG, VA 23185