Ex Parte INOUE et al

Patent Trials and Appeals Board

May 9, 2019

13006311 - (D) (P.T.A.B. May. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/006,311 01/13/2011
95765 7590
Adam S. Langley
c/o RYUKA USA LLP
111 North Market Street
Suite 300
San Jose, CA 95113
05/13/2019
FIRST NAMED INVENTOR
Dai INOUE
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.
SH-0126PCTUS 4254
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
05/13/2019 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@ryuka.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAI INOUE, TAKAAKI NAGAO, and HIROYUKI KOIDE
Appeal2017-008052
Application 13/006,311
Technology Center 1700
Before WESLEY B. DERRICK, SHELDON M. McGEE, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-7 and 12-24. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b)2.
We REVERSE.
STATEMENT OF THE CASE
Appellants claim an optical fiber base material manufacturing method
for depositing glass particles on a tip of a starting material drawn up while
1 Appellants identify SHIN-ETSU CHEMICAL CO., LTD. as the real party
in interest. Appeal Brief filed April 12, 2016 ("Br."), 4.
2 We heard oral arguments from Appellants' representative on April 30,
2019.
Appeal2017-008052
Application 13/006,311
being rotated in a vapor phase axial deposition (VAD) method. Claim 1
illustrates the subject matter on appeal and is reproduced below with
emphasis added to highlight contested subject matter:
1. An optical fiber base material manufacturing method for
depositing glass particles on a tip of a starting material drawn
up while being rotated in a V AD method, the optical fiber base
material manufacturing method comprising:
supplying oxygen and silicide to a core deposition
burner;
supplying a first hydrogen having a ratio of
orthohydrogen to parahydrogen of 3: 1 or supplying
a second hydrogen having a ratio of orthohydrogen
to parahydrogen that is different from the ratio of
the first hydrogen to the core deposition burner;
depositing, on the tip of the starting material, silicon
dioxide generated in an oxyhydrogen flame by
hydrolysis;
adjusting a drawing up speed so that a deposition tip
position remains at the same position in
accordance with growth of a porous base material;
calculating an average of the drawing up speed at each
of a plurality of time intervals;
calculating a difference between i) the calculated
average at a time interval from among the
plurality of time intervals and ii) a preset value of
the drawing up speed;
during said supplying the first hydrogen, changing a flow
rate of the silicide supplied to the core deposition
burner in proportion to the difference; and
during said supplying the second hydrogen, changing a
flow rate of the second hydrogen supplied to the
core deposition burner in proportion to the
difference and changing a flow rate of the second
hydrogen supplied to a cladding deposition burner
in proportion to the difference.
Br. 24 (Claims Appendix) (emphasis added).
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Application 13/006,311
Like claim 1, independent claims 12 and 19 both recite an optical
fiber base material manufacturing method for depositing glass particles on a
tip of a starting material drawn up while being rotated in a V AD method that
comprises, in part, calculating an average of a drawing up speed at each of a
plurality of time intervals, and calculating a difference between i) the
calculated average at a time interval from among the plurality of time
intervals and ii) a preset value of the drawing up speed.
The Examiner sets forth the following rejections in the Final Office
Action entered July 9, 2015 ("Final Act."), and maintains the rejections in
the Examiner's Answer entered February 16, 2017 ("Ans."):
I. Claims 1-7 under 35 U.S.C. § 103(a) as unpatentable over
Jablonowski et al. (US 6,834,516 B2, issued December 28, 2004) in view of
Appellants' admission in paragraph 2 of the Specification; and
II. Claims 12-24 under 35 U.S.C. § 103(a) as unpatentable over
Jablonowski in view of Briglia et al. (US 7,409,835 B2, issued August 12,
2008).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' contentions, we reverse the Examiner's rejections of
claims 1-7 and 12-24 under 35 U.S.C. § 103(a) for the reasons set forth in
the Appeal Brief and below.
Independent claims 1, 12, and 19 each recite an optical fiber base
material manufacturing method that comprises, in part, calculating an
average of a drawing up speed at each of a plurality of time intervals, and
calculating a difference between i) the calculated average at a time interval
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Application 13/006,311
from among the plurality of time intervals and ii) a preset value of the
drawing up speed.
To address these "calculating" limitations, the Examiner first refers to
the Office Action entered February 26, 2015 ("2015 Office Act.") for an
explanation of "why mental steps do not serve to limit the invention." Final
Act. 6. In the 2015 Office Action, relying on Halliburton v. Walker, 146
F .2d 817, 821 (91h Cir. 1944 ), the Examiner determines that the two
"calculating" steps recited in the independent claims "read on mental steps
of basic addition, subtraction and difference," and "[p]erforming such
mental steps ( even if novel) during a known process cannot make a known
process patentable." 2015 Office Act. 8. The Examiner reasons that "the
calculating steps do not appear to be substantially different from
mathematical formulas," and "there is no application of the calculating steps
to the [claimed] process." Id. at 8-9 (citing In re Abrams, 188 F.2d 165
(CCPA 1951) and In re Bilski, 561 U.S. 593 (2010)). The Examiner
explains that the "Examiner could find no case law nor Office policy nor
anything else that suggests that mental steps have patentable weight or
anything else that indicates Halliburton v Walker [is] improper." Id. at 9
( emphasis added).
As Appellants correctly argue (Br. 16-20), however, although
Halliburton and Abrams indicate that mental steps, even if novel, are not
patentable, these decisions pre-date the 1952 Patent Act, which created
separate and distinct requirements for patentabilty under § 101 based on
subject matter eligibility, and under§§ 102 and 103 based on novelty and
obviousness. As Appellants point out (Br. 20), the Supreme Court indicated
in Diamond v. Diehr 450 U.S. 175,211 n. 34 (1981) that the Court of
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Application 13/006,311
Customs and Patent Appeals in Halliburton and Abrams failed to understand
or disregarded the distinction between eligible subject matter and novelty,
and the Supreme Court explained that "[t]he question [] of whether a
particular invention is novel is 'wholly apart from whether the invention
falls into a category of statutory subject matter."' Diehr, 450 U.S. at 190
(citing In re Bergy, 596 F.2d 952,961 (CCPA 1979)). And the portion of
Bilski quoted by the Examiner indicates that the Court reaffirmed Diehr 's
holding related to subject matter eligibility, and does not relate to the legal
requirements necessary to establish obviousness. 2015 Office Act. 9.
Therefore, the Examiner's reliance on Halliburton, Abrams, and Bilski
to determine that the "calculating" steps recited in independent claims 1, 12,
and 19 are mental steps that do not have "patentable weight" in the context
of making an obviousness rejection improperly blurs the distinction between
eligible subject matter and obviousness, and thus constitutes legal error.
Nonetheless, the Examiner also determines in the Answer that "even
if mental steps can be found [to] have substantial weight," Jablonowski
would have suggested the two "calculating" steps recited in the independent
claims, for the reasons set forth in the Final Office Action entered June 13,
2014 ("2014 Final Act."). Ans. 10. In the 2014 Final Action, the Examiner
finds that Jablonowski discloses "obtaining the [pulling] speed by measuring
a displacement [ of the pulling rod]," and "the only way to obtain a speed by
measuring a displacement, is by dividing the displacement by the time
interval over which the displacement occurs." 2014 Final Act. 5 (citing
Jablonowski col. 3, 11. 31-33). The Examiner finds that Jablonowski does
not disclose calculating a difference between this calculated drawing up
speed and a preset value of the drawing up speed, but finds that
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Application 13/006,311
"Jablonowski discloses that the pulling rate typically varies in the range of
40-100 mm/hour." Id. at 6. The Examiner concludes that "[i]t would have
been obvious to one of ordinary skill to compare the actual measured
velocity to the 40 and 100 mm/hour boundaries to make sure the speed
remains within this range." Id. at 6.
Contrary to the Examiner's assertions, however, the cited disclosures
in Jablonowski do not teach, and would not have suggested, calculating a
difference between an average drawing up speed and a preset value of the
drawing up speed, as required by independent claims 1, 12, and 19. The
Examiner cites Example 1 of Jablonowski, which discloses preparing a soot
preform using the dual torch arrangement shown in Jablonowski's Figure 1.
Col. 3, 11. 24-26; Fig. 1. Jablonowski discloses that the "soot preform was
pulled at a rate that typically varies over the range of 40-100 mm/hr" and
"[t]he pulling speed is obtained by measuring the z-axis displacement of the
pulling rod 12 in FIG. l." Col. 3, 11. 26-33.
By characterizing the pulling rate range of 40-100 mm/hr disclosed in
Jablonowski as defining upper and lower "boundaries" to which one of
ordinary skill in the art would have compared "the actual measured
velocity," the Examiner implicitly equates the pulling rate range of 40-100
mm/hr disclosed in Jablonowski with the preset value of the drawing up
speed recited in claims 1, 12, and 19. Jablonowski, however, describes the
40-100 mm/hr pulling rate range in the context of an experimental example,
and indicates that the pulling rate used in the experiments described in the
Example "typically varies" within this range. Col. 3, 11. 24-33.
Accordingly, this exemplary pulling rate range disclosed in Jablonowski
does not correspond to a "preset value" as recited in claims 1, 12, and 19
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Application 13/006,311
from which a difference from an average pulling rate is calculated. Rather,
the 40 mm/hr and 100 mm/hr pulling rate disclosed in Jablonowski describes
the typical degree of variation observed in the actual pulling rate used in the
experimental example, and does not define upper and lower boundaries that
serve to constrain the pulling rate utilized. Nor does the Examiner provide a
sufficient basis for why one of ordinary skill in the art would have sought to
maintain the pulling rate within the range that Jablonowski observes to be
typical in its example. It follows that the Examiner's conclusion that "[i]t
would have been obvious to one of ordinary skill to compare the actual
measured velocity to the 40 and 100 mm/hour boundaries to make sure the
speed remains within this range" is based on factual error.
On this record, therefore, the Examiner does not provide a sufficient
factual basis to establish that Jablonowski discloses or would have suggested
an optical fiber base material manufacturing method that comprises, in part,
calculating an average of a drawing up speed at each of a plurality of time
intervals, and calculating a difference between i) the calculated average at a
time interval from among the plurality of time intervals and ii) a preset value
of the drawing up speed, as required by each of independent claims 1, 12,
and 19. We accordingly do not sustain the Examiner's rejections of claims
1, 12, and 19, and of claims 2-7, 13-18, and 20-24, which each depend
from claims 1, 12, or 19, under 35 U.S.C. § 103(a).3
3 The Examiner does not rely on Briglia for any disclosure that remedies the
deficiencies of Jablonowski discussed above. Final Act. 9-10.
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Application 13/006,311
DECISION
We reverse the Examiner's rejections of claims 1-7 and 12-24 under
35 U.S.C. § 103(a).
REVERSED
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