Ex Parte Groh et alDownload PDFPatent Trials and Appeals BoardMay 20, 201914970642 - (D) (P.T.A.B. May. 20, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/970,642 12/16/2015 22928 7590 05/22/2019 CORNING INCORPORATED SP-TI-3-1 CORNING, NY 14831 FIRST NAMED INVENTOR Raymond D. Groh 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. SP14-388 1063 EXAMINER HERRING, LISA L ART UNIT PAPER NUMBER 1741 NOTIFICATION DATE DELIVERY MODE 05/22/2019 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 RAYMOND D. GROH, MING-JUN LI, ALPER OZTURK, and CHUNFENG ZHOU Appeal2018-007865 Application 14/970,642 Technology Center 1700 Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and BRIAND. RANGE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's rejections of claims 1 and 3-11 under 35 U.S.C. § 103(a) as being unpatentable based on at least the combined prior art of Bailey (US 4,362,545, issued Dec. 7, 1982) and Batchelder (US 2011/0074065 Al, published Mar. 31, 2011). 2 We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellant is the applicant, Coming Incorporated, which is also stated to be the real party of interest (Appeal Br. 3). 2 The rejections of claims 3, 4, and 7-11 includes various additional prior art references (Final Act. 4---6). It is noted that original claim 2 (use of a removable insert which is now incorporated into claim 1) and claim 4 which recites welding the glass sleeve to a glass core each separately depended Appeal2018-007865 Application 14/970,642 Claim 1 is illustrative of the claimed subject matter ( emphasis added to highlight key limitation in dispute): 1. A method for forming an optical fiber preform, the method compnsmg: inserting a glass core cane into a glass sleeve such that the glass sleeve surrounds a portion of the glass core cane and such that there is a gap between the glass sleeve and the portion of the glass core surrounded by the glass sleeve, the glass sleeve having an inner diameter that is greater than an outer diameter of the glass core cane; inserting a removable insert in the gap between the glass sleeve and the portion of the glass core cane surrounded by the glass sleeve, the removable insert having a length at least equal to the length of the glass sleeve, depositing silica soot onto at least a portion of the glass core cane and at least a portion of the glass sleeve to form a silica soot preform; and flowing gas through the gap during processing of the silica soot preform. ANALYSIS The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 from claim 1. The Specification only describes that welding the glass sleeve to a portion of the glass core cane is an alternative to the use of a removable insert (Spec. ,r,r 30, 31 ). Thus, Appellant and the Examiner should consider the issue of whether the Specification provides written description for the combination of original claim 4 with claim 1 as amended. 2 Appeal2018-007865 Application 14/970,642 (Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prim a f acie case of unpatentability."). "[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'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)). 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")). After review of the respective positions provided by Appellant and the Examiner, we agree with Appellant that the Examiner has not met the applicable burden in this case. A preponderance of the evidence supports Appellant's assertions that the Examiner's rejection is based on improper hindsight in proposing to modify Bailey's method to include having its shims 28 extending "at least equal to" the entire length of its glass sleeve as required by sole independent claim 1. Appellant's arguments focus on the Examiner's failure to articulate a reason with some rational underpinning to combine the C-shaped shim component 70 for a ribbon liquefier of Batchelder with the optical waveguide preform sleeve of Bailey (e.g., Appeal Br. 18; Reply Br. 2). 3 Appeal2018-007865 Application 14/970,642 Appellant points out that Batchelder' s channel 72 is formed by the shim 70 and allows a drive mechanism 42 to engage ribbon filament 44 while it extends through the channel (Appeal Br. 17; Batchelder ,r 51). Appellant urges that the Examiner's position that one could envision making the shims 28 of Bailey extend the entire length of its handle based on Batchelder's configuration is not adequate reasoning with some rational underpinning to support obviousness. The Examiner relies upon Bailey's handle as depicted in Figs. 2 and 4 (Ans. 2, 3), which show two tubes of different diameter forming the handle 10 (which the Examiner equates to the recited sleeve (id.)), with shims 28 located at the open end of the largest diameter section (Bailey col. 7, 11. 12- 32; 40-68; col. 3, 11. 1-13). It is not clear how one of ordinary skill in the art would have envisioned making shims 28 extend along the entire length of the varying inner diameter handle of Bailey based on the teachings of Batchelder. Furthermore, Bailey teaches heating and shrinking the end of the tubing/sleeve/handle such that the inside diameter of the tubing is smaller than the outside diameter of the starting mandrel or rod (Bailey, col. 7, 11. 27-32) and that the outer edge of the tubing/sleeve/handle is tapered preferably to a feathered edge ( col. 7, 11. 60-65). These disclosures appears to further support Appellant's position that, contrary to the Examiner's view, one would not have envisioned the use of a shim extending "at least the length" of the sleeve/tubing/handle of Bailey based on Batchelder. Accordingly, a preponderance of the evidence supports Appellant's position that the Examiner has not articulated a sufficient reason to combine 4 Appeal2018-007865 Application 14/970,642 these references so as to result in the invention as recited in claim 1. 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 an improper hindsight reconstruction. The Examiner does not establish that any other reference as applied in the§ 103 rejections of dependent claims 3, 4, and 7-11 cures these deficiencies and/or otherwise provides another rationale that cures these deficiencies. Accordingly, we reverse the§ 103 rejections on appeal. ORDER It is ordered that the Examiner's decision is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation