Ex Parte Li et al

Patent Trials and Appeals Board

Jan 29, 2019

14247894 - (D) (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/247,894 04/08/2014
22928 7590 01/31/2019
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Ming-Jun Li
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.
SP14-090Z 1070
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
01/31/2019 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 MING-JUN LI, XIAOMING LUO,
JOSEPH EDWARD MCCARTHY, GAOZHU PENG,
JEFFERY SCOTT STONE, PUSHKAR TANDON, and
CHUNFENG ZHOU 1
Appeal2018-002358
Application 14/247,894
Technology Center 1700
Before BRADLEY R. GARRIS, GEORGIANNA W. BRADEN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-16 and 18-20. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
1 Appellant is the Applicant, Coming Incorporated, which is identified as the
real party in interest (App. Br. 3).
Appeal2018-002358
Application 14/247,894
Appellant claims a method of forming a soot blank, to be used in
forming an optical fiber, comprising the steps of forming a soot body,
partially consolidating the soot body to form a soot blank with a bulk density
of between 0.8 and 1.6 g/cm3, and drilling a plurality of holes into the soot
blank (independent claim 13; see remaining independent claims 1 and 19).
According to Appellant's Specification, the partial consolidation step is a
heating operation that creates a soot blank having a bulk density within the
claimed range (Spec. ,r,r 28-29) "to provide sufficient body and mechanical
strength for drilling, while being an easier material to drill than fully
consolidated glass, allowing the drilling of deeper and more precise holes
... than would be possible into a fully consolidated glass preform" (id. at
i130).
A copy of representative claim 13, taken from the Claims Appendix of
the Appeal Brief, appears below.
steps:
13. A method for forming a soot blank, comprising the following
forming a soot body, the soot body comprising a silica-based soot
material;
partially consolidating the soot body to form a soot blank with a top
surface and a bulk density of between 0.8 g/cm3 and 1.6 g/cm3; and
drilling a plurality of holes into the top surface of the soot blank.
Appellant does not present separate arguments specifically directed to
the dependent claims under rejection (see App. Br. 14--18). Therefore, the
dependent claims will stand or fall with their parent independent claims, of
which claim 13 is representative.
2
Appeal2018-002358
Application 14/247,894
Under 35 U.S.C. § 103, the Examiner rejects claims 1-16 and 18 as
unpatentable over Jakobsen (WO 03/078338 A2, published September 25,
2003) in view of Dawes (US 2001/0132038 Al, published June 9, 2011) and
Edagawa (US 5,246,475, issued September 21, 1993) and rejects claims 19
and 20 as unpatentable over these references in combination with Deneka
(US 4,767,430, issued August 30, 1988).
We sustain these rejections for the reasons given in the Final Office
Action, the Examiner's Answer, and below.
In rejecting claim 13, the Examiner finds that Jakobsen discloses
forming a soot body (i.e., a preform) and drilling holes into the soot body but
does not disclose the claimed step of partially consolidating to form a soot
blank with a bulk density of between 0.8 and 1.6 g/cm3 (Final Action 4--5).
The Examiner finds that it was known in the prior art to partially sinter (i.e.,
partially consolidate) a soot body (1) in order to increase bulk density and
strength whereby the partially sintered soot body can be soaked in a rare
earth doping solution without disintegrating as taught by Edagawa and (2) in
order to increase strength and durability whereby the partially sintered soot
body can be handled more easily or machined ( e.g., drilled) as taught by
Dawes (id. at 5 ( citing Edagawa col. 3, 11. 51---68 and Dawes ,r,r 46, 98) ). In
light of these Edagawa and Dawes teachings, the Examiner concludes that
"[i]t would have been obvious to partially sinter (i.e. partially consolidate)
the soot body [ of Jakobsen] so as to make the preform more durable [i.e., by
densifying and strengthening Jakobsen's preform via partial sintering]" (id.).
Regarding the particular bulk density range of claim 13, the Examiner
3
Appeal2018-002358
Application 14/247,894
concludes that "[i]t would have been obvious to perform routine
experimentation to determine the optimal density" (id.).
Appellant argues that there is no motivation or reason to modify
Jakobsen according to Dawes or Edagawa (App. Br. 15-16). Specifically,
Appellant argues that "the vapor-deposited preform of Jakobsen in the
absence of partial sintering possesses a mechanical strength similar to the
mechanical strength of the soot-pressed preform of Dawes after partial
sintering" (id. at 15) and accordingly that "one of ordinary skill in the art
would lack a rationale to partially sinter the vapor-deposited preform of
Jakobsen based on the disclosure of Dawes" (id.). Furthermore, Appellant
points out that the partial sintering of Edagawa is to achieve a body "having
sufficient mechanical strength to withstand soaking in a rare earth solution"
(id.) and argues that "there is no reason to expect that the partial sintering
used by Edagawa would make the preform of Jakobsen more amenable to
drilling" (id. at 16). Appellant also points out that "the mechanical strength
of the vapor-deposited preform of Jakobsen is sufficient for drilling" (id.)
and argues that "accordingly ... one of ordinary skill in the art has no
rationale to modify Jakobsen to include partial sintering before drilling"
(id.).
As the Examiner correctly observes, Appellant provides no evidence
in support of the above quoted argument that Jakobsen's preform in the
absence of partial sintering possesses a mechanical strength similar to the
preform of Dawes after partial sintering (Ans. 11-12; see Final Action 12).
Moreover, contrary to Appellant's contentions, the fact that Edagawa's
partial sintering increases strength and density in order to withstand soaking
4
Appeal2018-002358
Application 14/247,894
does not show error in the Examiner's determination that increased strength
and density would make Jakobsen's preform more durable and, therefore,
more amenable to drilling (i.e., drilling without damaging the preform).
Similarly, this determination by the Examiner is not shown to be erroneous
because Jakobsen's preform is capable of being drilled in the absence of
further strengthening. The issue presented by the Examiner's rejection is
whether the drilling operation of Jakobsen would have been facilitated by
partially sintering the preform. We find that the combined teachings of
Dawes and Edagawa support a conclusion that an artisan would have
partially sintered Jakobsen's preform in order to facilitate drilling without
damaging the preform by increasing its density, strength, and durability.
Appellant also argues that partially sintering the preform of Jakobsen
would be contrary to Jakobsen's purpose because a partially sintered
preform would be less porous, more solid and thus less amenable to
processing (App. Br. 16-17).
The Examiner's rejection cites Jakobsen's disclosure at lines 12-23
on page 39 (Final Action 4). In this disclosure, Jakobsen teaches "the
formation of a porous body, which is later sintered to a solid body forming
the finished preform" (Jakobsen 39:13-15), "[t]he porous body is more
amenable to processing than the solid" (id. at 39:15-16), and "[t]he present
inventors have found methods to form structures in the porous body that
remain in the final solidified preform" (id. at 39: 16-18). Jakobsen discloses
that such structures are "holes ... made ... by traditional drilling" (id. at
39:19-20). This disclosure reveals that Jakobsen's purpose is to drill holes
in a porous body before it is fully sintered into a solid body because "[t]he
5
Appeal2018-002358
Application 14/247,894
porous body is more amenable to processing than the solid" (id. at 39:15-
16). We perceive insufficient convincing merit in Appellant's argument that
partial sintering is contrary to this purpose. Appellant has not even asserted,
much less shown, that a partially sintered body would be less porous and,
therefore, less amenable to processing than a fully sintered solid body.
Finally, Appellant challenges the Examiner's conclusion that it would
have been obvious to perform routine experimentation to determine optimal
density and thereby achieve the claimed density range (App. Br. 17). In
particular, Appellant argues that "[ s ]ince the non-sintered porous body of
Jakobsen is readily amenable to drilling, ... [such] drilling can similarly be
readily accomplished at densities outside of Applicant's claimed density
range ... [ and therefore] densities determined through routine optimization
suggested by the Examiner need not fall within Applicant's claimed range"
(id.at 17).
Appellant offers insufficient evidence that Jakobsen's drilling step can
be accomplished at densities outside the claimed range or that densities
optimized for drilling need not fall within the claimed range. On the other
hand, bulk densities in the claimed range of 0.8-1.6 g/cm3 are described in
the Specification as "provid[ing] sufficient body and mechanical strength for
drilling, while being an easier material to drill than fully consolidated glass"
(Spec. ,r 30). This description supports the Examiner's position that
densities which have been optimized for drilling (i.e., by providing a
partially sintered body with sufficient strength for drilling while being easier
to drill than a fully sintered or consolidated body as taught by Jakobsen,
Dawes and Edagawa) would fall within the density range of claim 13.
6
Appeal2018-002358
Application 14/247,894
In summary, Appellant's arguments fail to show reversible error in the
§ 103 rejection of representative independent claim 13 and correspondingly
the§ 103 rejections of remaining claims 1-12, 14--16, and 18-20.
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).
AFFIRMED
7