Ex Parte Roba et al

Board of Patent Appeals and Interferences

Nov 12, 2010

10177669 (B.P.A.I. Nov. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/177,669 06/24/2002 Giacomo Stefano Roba 05788.0227 4557
7590 11/15/2010
Finnegan, Henderson, Farabow,
Garrett & Dunner, L.L.P.
1300 I Street, N.W.
Washington, DC 20005-3315
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
11/15/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte GIACOMO STEFANO ROBA
and Franco Veronelli
________________

Appeal 2009-013580
Application 10/177,669
Technology Center 1700
________________

Before EDWARD C. KIMLIN, BEVERLY A. FRANKLIN, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-013580
Application 10/177,669

2
A. Introduction2
Giacomo Stefano Roba and Franco Veronelli (“Roba”) timely appeal
under 35 U.S.C. § 134(a) from the final rejection3 of claims 31 and 34-44,
which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6. We REVERSE.
The subject matter on appeal relates to a method of manufacturing
preforms for optical fibers. Preforms are generally made by condensing
silica particles onto an “elongated element” (used synonymously with the
term “cylindrical support” (Spec. 7, ll. 20-24)) in a chamber. In Vapor Axial
Deposition (“VAD”) methods, the support is held vertically while being
rotated axially and translated vertically while it is exposed to a flow of
reactants from stationary burners. In Outside Vapor Deposition (“OVD”)
methods, the support is held horizontally or vertically, rotated axially, and
the burners are moved along the axis of the support. Following a number of
additional preparative steps, the preform is placed in a furnace and an optical
fiber is drawn from the preform. According to the 669 Specification, prior
art methods of making preforms share the common problem that it is
difficult to load the support in the chamber while avoiding collisions with
the chamber walls or with other supports. (Id. at 6, ll. 7-20.) This problem

2 Application 10/177,669, Method for Manufacturing at Least One Preform
for Optical Fibers, filed 24 June 2002, claiming the benefit of a provisional
application filed 9 July 2001, and of a foreign application filed 25 June
2001. The specification is referred to as the “669 Specification,” and is cited
as “Spec.” The real party in interest is listed as Prysmian Cavi e Sistemi
Energia, S.r.L. (Appeal Brief, filed 10 October 2008 (“Br.”), 3.)
3 Office action mailed 18 January 2008 (“Final Rejection”; cited as “FR”).
Appeal 2009-013580
Application 10/177,669

3
is overcome in the claimed invention by providing a “carriage” (used
synonymously with the term “support unit” (id. at 7, ll. 25-29), i.e., a unit
that holds the cylindrical supports, and that can be inserted into and removed
from the chemical deposition chamber. (Id. at 6, ll. 22-30.)
As claimed, the process involves coupling at least a first elongated
element with a support unit via one or more gripping elements, inserting the
support unit holding the elongated element into the chemical deposition
chamber, depositing the preform materials, withdrawing the carriage which
carries the preforms, removing the preforms, and repeating these steps with
at least a second elongated element. The support unit (carriage) has a
surface that, upon introducing the support unit to the deposition chamber,
closes an opening in the deposition chamber.
Representative Claim 31 reads in the part most relevant to Roba’s
arguments:
31. A method for manufacturing preforms for optical fibers
using a chemical deposition chamber, the method comprising:
(A) coupling, outside of the chemical deposition
chamber, at least a first elongated element with a support
unit,
the support unit including one or more gripping
members that couple the first elongated element
with the support unit,
the support unit being removable from within the
chemical deposition chamber and
having a surface that closes an opening in the
chemical deposition chamber when the support
unit is introduced into the chemical deposition
chamber;
* * * * *
Appeal 2009-013580
Application 10/177,669

4
(Claims App., Br. 23; indentation, paragraphing, and emphasis added.)
Claim 43 is representative of claims 36-44:
43. The method of claim 31, wherein the at least one elongated
element comprises two or more elongated elements.
(Claims App., Br. 26; emphasis added.)
The Examiner has maintained the following grounds of rejection:4
A. Claims 31 and 34-44 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Saito,5 Drouart,6 Kawazoe,7
and Edahiro.8
B. Claims 36-44 stand rejected under 35 U.S.C. § 112(2) for lack
of unambiguous antecedent basis for the term “the at least one
elongated element.”

4 Examiner’s Answer mailed 14 November 2008 (“Ans.”).
5 Tatsuo Saito et al., Apparatus for Supporting Article in Heating Furnace,
U.S. Patent 5,417,399 (1995).
6 Alain Drouart et al., Device for Drawing Down an Optical Fiber Preform,
U.S., Patent 5,931,984 (1999).
7 Hideyo Kawazoe et al., Method of Fabricating Porous Glass Rod and
Apparatus for Fabricating the Same, U.S. Patent 4,707,173 (1987).
8 Takao Edahiro et al., Process for Producing Optical Fiber Preform, U.S.
Patent 4,414,008 (1983).
Appeal 2009-013580
Application 10/177,669

5
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
An embodiment of an apparatus suitable for carrying out the claimed
process is illustrated in 669 Specification Figure 1, which is reproduced
below.

{Figure 1 shows an external view of a preform reactor}
The interior of external unit 2 defines a chemical reaction chamber 3, which
comprises a burner section (motors 50 and 60 on the right of Figure 1 move
the burners), a central depositing section filled by support unit 5, and a
collection and discharge section (motor 80 on the left of figure 1 moves the
internal exhaust hoods) to exhaust the substances produced by the burners.
Appeal 2009-013580
Application 10/177,669

6
In supporting unit 5, which is shown in Figure 4 below:

{Figure 4 shows a support unit or preform carriage}
preforms 400 are deposited on cylindrical supports 4a held by gripping
units 22a and 22b (e.g., chucks: Spec. 15, ll. 20-25). Referring to Figure 1,
the reader can see that support unit 5 comprises “frontal side surface 9,”
which is adapted to close opening 7a in wall 7 of unit 2 when supporting
unit 5 is fully inserted into chamber 3. (Id. at 14, l. 35 to 15, l. 4.)
Claims are indefinite if a person having ordinary skill in the art would
have been unable to determine the metes and bounds of the claimed subject
matter. Although claim 31 recites a first and a second elongated element,
each is introduced as “at least one elongated element” (see limitations (A)
and (F), respectively). The Examiner has not explained what “insoluble
ambiguity” arises from the reference in claims 36-44 to “the at least one
Appeal 2009-013580
Application 10/177,669

7
elongated element” recited in the independent claim. The first and the
second elongated elements are defined and are treated mechanically and
chemically in substantially the same way in the claimed process. Clearly,
the claims are met if either the first or the second—or both—elements are
subjected to the further limitations recited in claims 36-44. Breadth is not
indefiniteness. The Examiner’s rejection for indefiniteness is without merit.
Regarding the rejection for obviousness, Roba argues only features of
independent claim 31. Roba argues first that Saito does not teach or suggest
a support unit including a gripping member. (Br. 15-17; Reply 8-12.)
The Examiner finds that Saito describes a method of making preforms
in which, as shown in Figure 10, reproduced below left, supporting rods 21
{Saito Figure 10 below left: Saito Figure 14, below right:}

{Saito Figure 10 shows a preform rod and coupling assembly}
{Saito Figure 14 shows a detail of an alternative coupling assembly}
Appeal 2009-013580
Application 10/177,669

8
are coupled via collar 23 to rods 22, on which preforms P are formed.
The Examiner finds that collar 23, which is coupled to rod 22 by pins 26a
and 26b meets the “gripping unit” recited in claim 31, part A. (FR 2;
Ans. 4.) In the alternative, the Examiner finds that Saito describes a
gripping unit in Figure 14, reproduced above right, in which screws 34 grip
rod 22, as required by limitation (A). (Ans. 9, 2d para.)
Roba has not directed our attention to a definition in the supporting
669 Specification of the term “gripping unit” that excludes either
embodiment suggested by the Examiner. We note that every day we “grip”
things, such as brief cases or coffee mugs, by handles that have an open
space between the body of the handle and the body of the main object. In
the absence of a definition, we are not persuaded that Roba has demonstrated
harmful error in the Examiner’s rejection based on the alleged failure to
show a gripping member. Moreover, the difference between a chuck and a
cylinder fitted with one or more set screws to secure a rod is too subtle, on
the present record, to be distinguished by an undefined general term such as
“gripping member.”
Roba argues further that neither Kawazoe nor Edahiro, on which the
Examiner relies to make up for Saito’s failure to describe a chemical
deposition chamber, describe a “lid” on a chamber (Br. 19-20.) Nor, in
Roba’s view, does either secondary reference teach or suggest any openings
that would require an additional “lid.” (Id.) Roba concludes that none of the
references provides the “requisite surface” as found by the Examiner at FR 3
and Ans. 5. (Br. 21.)
Appeal 2009-013580
Application 10/177,669

9
Referring to Figure 1 in each of Kawazoe and Edahiro, which are
reproduced below, the Examiner finds that the references show “a typical
{Kawazoe Figure 1below left: Edahiro Figure 1 below right:}

{The Figures show preform reactors}
VAD chamber, which includes a lid through which the rod is inserted.”
(FR 3; Ans. 5; emphasis added.) The Examiner finds further that “[t]he lid
is/has the requisite surface [required by claim 31].” (Id.) A person having
ordinary skill in the art, according to the Examiner, who used the “Saito
arrangement” with the deposition chambers and “lids” described by
Kawazoe or Edahiro, would have understood “that one would have to
assemble everything prior to the insertion into the chamber.” (Id.) The
Examiner also relies on Druoart as evidence that such pre-assembled
structures are known in the art of drawing preforms. (Id.)
Appeal 2009-013580
Application 10/177,669

10
The Examiner’s use of the descriptive term “lid,” in conjunction with
the description that “the rod is inserted through” the lid, provides adequate
notice to the reader of the structure the Examiner refers to as the “lid.”
Thus, the lid in Kawazoe Figure 1 is cylinder 16, through the top of which
elongated support 15 passes, while the lid in Edahiro Figure 1 is the
unlabeled structure on top of chamber 12 through which elongated
support 14 passes. In the reactor described by Kawazoe, flange 18 provides
a surface that closes an opening when the support unit is introduced into the
chemical deposition chamber. A similar role is played by the downward-
projecting rim of the lid-like structure shown in Edahiro Figure 1.
The silence of Edahiro regarding the removability of the lid is not
evidence of harmful error in the Examiner’s rejection. We have no difficulty
finding that a person having ordinary skill in the art would have recognized
that once the preform was made in either the Kawazoe or the Edahiro
deposition chamber, the chamber would have to be disassembled to remove
the preform and the associated supporting structures. In other words, such a
support unit would be removable from within the chemical deposition
chamber, as required in limitation (A) of claim 31. Similarly, the
Examiner’s inference that the supporting collar described by Saito would
have to be preassembled with the cylindrical support prior to inserting the
support into the deposition chambers of Kawazoe or Edahiro (FR 3; Ans. 5)
merely attributes an ordinary level of perceptiveness and inventiveness to
the ordinary worker in the art. Roba has not come forward with evidence to
the contrary.
Appeal 2009-013580
Application 10/177,669

11
We note that Roba has not raised other substantive arguments for
patentability, including unexpected results or other “secondary” indicia.
Such arguments have been waived in the present appeal.
37 C.F.R. § 41.37(c)(1)(vii)(second sentence) (2007).
C. Order
We REVERSE the rejection of claims 36-44 as indefinite under
35 U.S.C. § 112(2).
We AFFIRM the rejection of claims 31 and 34-44 under
35 U.S.C. § 103(a) in view of the combined teachings of Saito, Drouart,
Kawazoe, and Edahiro.
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

bar

FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.
1300 I STREET, N.W.
WASHINGTON, DC 20005-3315