Ex Parte OH et al

Board of Patent Appeals and Interferences

Jul 26, 2002

08872876 (B.P.A.I. Jul. 26, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SEUNG-HUN OH,
KI-UN NAMKOONG,
and
JIN-HAN KIM
____________

Appeal No. 1999-2435
Application No. 08/872,876
____________
HEARD: JULY 11, 2002
____________
Before OWENS, LIEBERMAN, and PAWLIKOWSKI, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner
refusing to allow claims 1, 2, 11 and 16. Claims 17 through 24 are allowed. Claims
4 through 10 and 12 through 15 are objected to as depending from a rejected claim.
Claim 3 is cancelled.
Appeal No. 1999-2435
Application No. 08/872,876
2
THE INVENTION
The invention is directed to a process for fabricating an optical fiber. One aspect of
the claimed process requires supplying a flow of gas through an inlet such that a condition
of reduced pressure is generated in response to the flow of gas within a predetermined
region of an adjoiner as compared to an external pressure of said adjoiner. Additional
limitations are described in the following illustrative claim.
THE CLAIM
Claim 1 is illustrative of appellants’ invention and is reproduced below:
1. A process for fabricating an optical fiber, comprising steps of:
assembling an adjoiner, a primary optical fiber preform having a first primary
axis and an outer surface and an overcladding tube having a second primary axis and
an inner surface defining an interior space, together as a secondary preform
assembly;
holding said primary optical fiber preform in a centrally inserted position
within said interior space with said first and second primary axes in substantial
alignment with each other;
supplying a flow of gas through an inlet;
generating a condition of reduced pressure within a predetermined region of
said adjoiner as compared to an external pressure of said adjoiner, in response to
said flow of gas, wherein said predetermined region includes a gap formed between
said inner surface of said overcladding tube and said outer surface of said primary
optical fiber preform;
heating, by a furnace, a portion of said primary optical fiber preform and a
portion of said overcladding tube to a softened state wherein an optical fiber can be
drawn therefrom; and
Appeal No. 1999-2435
Application No. 08/872,876
3
positioning said secondary preform assembly in a specified position with
respect to said furnace.
THE REFERENCE OF RECORD
As evidence of anticipation the examiner relies upon the following reference:
Hicks, Jr. (Hicks) 2,980,957 Apr. 25, 1961

THE REJECTION
Claims 1, 2, 11 and 16 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Hicks.
OPINION
We have carefully considered all of the arguments advanced by the appellants and
the examiner, and agree with the appellants that the rejection of the claims is not well
founded. Accordingly, we reverse this rejection.
The Rejection Under Section 103(a)
"[T]he examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability." See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
As described in the specification, the invention is directed to a “plurality of
passages to provide an inlet for flow of gas, a region in which the flow of gas generates a
condition of reduced pressure, and an extension of the region of reduced pressure to
interior space.” See specification, page 7, lines 8-10. Reference to Figure 6A further
Appeal No. 1999-2435
Application No. 08/872,876
4
1 Webster’s Ninth New Collegiate Dictionary, p. 623 (Merriam-Webster Inc., Springfield, MA,
1986). Copy attached.
discloses that the flow of gas from the inlet tube A to the outlet tube B, “generates a
condition of reduced pressure at the upper ends of suction tubes C, in accordance with
Bernoulli’s theorem, and therefore partially evacuates the space between the overcladding
tube 44 and the primary optical fiber preform 46.” See Figure 6A and specification, page
14, lines 9-11. It is evident that the claimed invention requires “generating a condition of
reduced pressure . . . in response to said flow of gas,” as required by claim 1.
In contrast, it is the examiner’s position in applying the Hicks reference that, “13 is
the inlet; the gas removed (via 13a) from the enjoiner is flow of gas that goes through the
inlet 13; it is inherent that the flow is supplied to something (perhaps a vacuum pump). It
is noted that ‘inlet’ merely describes an opening and not a direction through which a fluid
enters (e.g.[,] an inlet to a lagoon has [a] flow in either direction - depending upon the
tide).” See Final Rejection, page 4. We disagree.
One critical limitation of the claimed subject matter requires, “supplying a flow of
gas through an inlet; generating a condition of reduced pressure within a predetermined
region of said adjoiner as compared to an external pressure of said adjoiner, in response to
said flow of gas.”
The term, “inlet” is defined in part, as “a way of entering,” or “an opening for
intake.”1 We find that Hicks discloses that, “a vacuum line 13a is connected to the
Appeal No. 1999-2435
Application No. 08/872,876
5
plunger 7 with a fitting 13b so as to provide means for producing a relatively high vacuum
in the space 14 between the members 10 and 12.” See column 2, line 72 to column 3,
line 3. Member 10 is the glass rod. Member 12 is the tubular glass member surrounding
the rod. The only gas present is that limited and static amount present between members
10 and 12. Although this gas can be evacuated as the tubular glass member enters into
contact with the glass rod upon heating, it does not supply a flow of gas through an inlet
which in and of itself generates a condition of reduced pressure in response to said flow of
gas, as required by the claimed subject matter. Indeed, in the absence of the vacuum line
13a, the gas pressure would have increased as the tubular member 12 entered into contact
with the glass rod 10 and said gas flowed out of 13a or become entrapped in either the
glass rod or the tubular glass member as it softened and became molten, thereby resulting
in imperfections in the optical fiber. Indeed Hicks states that, “[b]y providing the
relatively high vacuum in the space 14 while simultaneously controlling the rate of
collapsing of the tubular member 12 with the low vacuum in the space 16, a substantially
perfect interface which is free of air or gas bubbles or the like will result since all air or
gases which might form during the heating of the rod and tubular member will be forced
upwardly by the upward collapsing of the tubular member 12 and be drawn outwardly of
the space 14 by the vacuum line 13a.” See column 3, lines 23-33.
Based upon the above findings and analysis, we conclude that no flow of gas which
results in a condition of reduced pressure occurs through inlet 13 in the absence of vacuum
Appeal No. 1999-2435
Application No. 08/872,876
6
line 13a. To the contrary, we conclude that the reduced pressure causes the removal of
gas from the space between 10 and 12 rather than the flow of gas generating a condition
of reduced pressure in response to said flow as required by the claimed subject matter.
Furthermore, we find that Hicks discloses that, “[t]he neutral atmosphere may
consist of nitrogen with a possible trace of oxygen or other known neutral atmospheric
gases which are fed into the chamber under a slight pressure by a suitable pipeline 36.”
See column 6, lines 44-47. We further find a second vacuum line 15, “communicat[es]
with the space between the housing 5 and the tubular member 12 whereby the suction pull
of the high vacuum which is drawn from the space 14 and on the tubular member 12 may
be counteracted by the simultaneous drawing of controlled lower vacuum from the space
16." See column 3, lines 4-9. As stated by appellants in the Reply Brief, page 7, “[t]he
low pressure which is created in space 16 by vacuum line 15 and which enables a
continuous flow of gas via pipeline 36 to be supplied to chamber 28 and to pull the heated
gas from chamber 28 via opening 18 in order to maintain the neutral atmosphere in
chamber 28 at a constant level,” represents the teachings of Hicks. We further conclude
that 36 is the only inlet which supplies a flow of gas. Moreover, the examiner in his
finding has expressly relied upon outlet tube 13a to establish that 13 is an inlet tube and
has ignored the express teaching by Hicks of the only disclosed inlet tube that discloses a
flow of gas is 36. Based upon the above findings and analysis, the rejection of the
examiner is not sustainable.
Appeal No. 1999-2435
Application No. 08/872,876
7
We have determined that the examiner's legal conclusion of obviousness is not
supported by the facts. "Where the legal conclusion [of obviousness] is not supported by
[the] facts[,] it cannot stand." In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968), reh’g denied, 390 U.S. 1000
(1968).
Appeal No. 1999-2435
Application No. 08/872,876
8
DECISION
The rejection of claims 1, 2, 11 and 16 under 35 U.S.C. § 102(b) as anticipated
by Hicks is reversed.
The decision of the examiner is reversed.

REVERSED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
PAUL LIEBERMAN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
PL:hh
Appeal No. 1999-2435
Application No. 08/872,876
9
ROBERT E. BUSHNELL
ATTORNEY-AT-LAW
SUITE 300
1522 K STREET, N.W.
WASHINGTON, DC 20005-1202