Ex Parte Dunwoody et al

Patent Trials and Appeals Board

Apr 23, 2019

14338556 - (D) (P.T.A.B. Apr. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/338,556 07/23/2014
22928 7590 04/25/2019
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Steven Akin Dunwoody
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SP13-243 3727
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
04/25/2019 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 STEVEN AKIN DUNWOODY, ROBERT CLARK MOORE, and
PUSHKAR TANDON
Appeal2018-007202
Application 14/338,556
Technology Center 1700
Before BRADLEY R. GARRIS, MARK NAGUMO, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, 6-18, 21, 22, and 26-31. (Appeal Br. 5.) We
have jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.
1 This Decision includes citations to the following documents: Specification
filed July 23, 2014 ("Spec."); Non-Final Office Action dated September 21,
2017 ("Non-Final Act."); Appeal Brief filed December 19, 2017 ("Appeal
Br."); Examiner's Answer dated April 30, 2018 ("Ans."); and Reply Brief
filed June 28, 2018 ("Reply Br.").
2 Appellant is the Applicant, Coming Incorporated, which is identified as
the real party in interest. (Appeal Br. 3.)
Appeal2018-007202
Application 14/338,556
THE INVENTION
Appellant states that the invention relates to methods of making
optical fibers that exhibit reduced sensitivity to hydrogen through controlled
cooling protocols. (Spec. ,r 2.)
Claim 1 is representative and reproduced below from the Claims
Appendix to the Appeal Brief ( with emphasis added to highlight disputed
claim terms):
1. A method of processing an optical fiber comprising:
cooling an optical fiber from a first average temperature
to a second average temperature at a first cooling rate in a
first furnace along a first pathway, said first furnace
having a first inlet and a first outlet, said fiber having
said first average temperature at said first inlet and said
second average temperature at said first outlet, said first
average temperature being in the range from 1500 °C to
1700 °C, said second average temperature being in the
range from 1000 °C to 1500 °C, said first cooling rate
being less than 5000 °C/s; and
cooling said fiber from a third average temperature to a
fourth average temperature at a second cooling rate in a
second furnace along said first pathway, said second
furnace having a second inlet and a second outlet, said
fiber having said third average temperature at said second
inlet and said fourth average temperature at said second
outlet, said third average temperature being less than or
equal to said second average temperature, said fourth
average temperature being in the range from 1000 °C to
117 5 °C, said second cooling rate being greater than
5000 °C/s and less than 12,000 °C/s.
(Appeal Br. 19, Claims Appendix.)
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Appeal2018-007202
Application 14/338,556
REJECTIONS
The Examiner rejected claims 1, 2, 6-18, and 22 under 35 U.S.C.
§ 103 as obvious over Nagayama et al. (US 6,851,282 B2, issued February
8, 2005, "Nagayama").
The Examiner rejected claims 26-28, 30, and 21 under 35 U.S.C.
§ 103 as obvious over Nagayama and Appellant's admitted prior art in the
Specification (i-f 41) ("AAP A").
The Examiner rejected claims 31 and 29 under 35 U.S.C. § 103 as
obvious over Nagayama, AAP A, and Darsey et al. (US 5,277,730, issued
January 11, 1994, "Darsey").
We limit our discussion to claim 1, which is sufficient for disposition
of this appeal.
ISSUE
The Examiner found, inter alia, that Nagayama discloses a method of
processing an optical fiber including cooling an optical fiber in a first
furnace (section 21) and further cooling an optical fiber in a second furnace
(section 61). (Ans. 4--7; citing Nagayama Figs. 3A and 3B.) The Examiner
found that Nagayama does not disclose cooling an optical fiber to a fourth
average temperature at a second outlet as recited in claim 1. (Ans. 7 .) The
Examiner determined that it would have been obvious to have the optical
fiber leave the second furnace at any suitable temperature including 1000 °C
to 1175 °C as recited in claim 1 with no new or unexpected results. (Ans. 7,
11.)
Appellant argues that the Examiner identifies section 61 in the
apparatus ofNagayama as a second furnace, but Nagayama fails to disclose
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Appeal2018-007202
Application 14/338,556
an outlet temperature of 1000 °C to 1175 °C from section 61. ( Appeal
Br. 13, Reply Br. 2.) As a result, Appellant argues that one of ordinary skill
in the art would have lacked a rationale or a reasonable expectation of
success to control cooling to the fourth temperature range recited in claim 1.
(Appeal Br. 15.)
Accordingly, the issue on appeal is:
Did the Examiner err in determining that it would have been obvious
in view ofNagayama to cool an optical fiber such that it has a fourth average
temperature at a second outlet being in the range from 1000 °C to 117 5 °C
as recited in claim 1?
DISCUSSION
Rejection 1
We are persuaded that the Examiner erred in determining that
Nagayama renders obvious a method of cooling an optical fiber where the
optical fiber has a fourth average temperature at a second outlet in the range
from 1000 °C to 1175 °C. As acknowledged by the Examiner, Nagayama
fails to disclose that at the exit of cooling section 61 ("second furnace"), the
optical fiber has a temperature of 1000 °C to 1175 °C. (Ans. 7; Nagayama,
Fig. 3B, lines a, b, c, each depicting optical fibers at temperatures less than
800 °C in cooling section 61; see col. 11, 11. 30-34.) However, the
Examiner's reasoning merely states that there is no evidence of criticality to
the temperature range. (Ans. 7.) Missing from the Examiner's analysis is
sufficient reasoning why one of ordinary skill in the art would have forcibly
cooled the optical fibers as disclosed in Nagayama to the temperature range
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Appeal2018-007202
Application 14/338,556
for the fourth average temperature recited in claim 1 at the outlet of the
cooling section 61.
The Examiner bears the initial burden, on review of prior art or on any
other ground, of presenting a prima facie case ofunpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Here, the Examiner makes a
conclusory statement without sufficient reasoning supported by rational
underpinnings to support the position that the fourth temperature range
recited in claim 1 would have been obvious in view ofNagayama.
"' [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."' KSR Int 'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Accordingly, we reverse the Examiner's rejection of claims 1, as well
as claims 2, 6-18, and 22 dependent therefrom.
Re} ections 2 and 3
The Examiner's further reliance on Applicant's admissions in the
Specification in order to reject dependent claims 21, 26-28, and 30 in
Rejection 2, and on Darsey to reject dependent claims 29 and 31 in
Rejection 3 fails to remedy the deficiency in Nagayama identified above for
claim 1. Accordingly, we reverse Rejections 2 and 3 for similar reasons as
Rejection 1 discussed above.
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Appeal2018-007202
Application 14/338,556
DECISION
We reverse the Examiner's decision rejecting claims 1, 2, 6-18, 21,
22, and 26-31.
REVERSED
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