Ex Parte Tobisaka et alDownload PDFPatent Trial and Appeal BoardJun 27, 201610594071 (P.T.A.B. Jun. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 10/594,071 0912512006 Yuuji Tobisaka 21254 7590 06/27/2016 MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 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-0068PCTUS 3356 EXAMINER DEHGHAN, QUEENIE S ART UNIT PAPER NUMBER 1741 MAILDATE DELIVERY MODE 06/27/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte YUUJI TOBISAKA and W AICHI Y AMAMURA Appeal2014-007114 Application 10/594,071 1 Technology Center 1700 Before PETER F. KRATZ, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims 1, 18, 20, 21, and 25-31. We have jurisdiction pursuant to 35 U.S.C. § 6(b ). We affirm 1 According to the Appeal Brief, the Real Party in Interest is Shin-Etsu Chemical Co., Ltd. App. Br. 1. Appeal2014-007114 Application 10/594,071 BACKGROUND Appellants' invention is directed to a method of processing a glass base material for an optical fiber using a processing apparatus. (Spec. 1) Claim 1 is reproduced below from the Claims Appendix to the Appeal Brief: 1. A processing method of processing a glass base material for an optical fiber using a processing apparatus, the processing method comprising: providing a glass base material having a diameter of about 100-120 mm; welding a second end of the glass base material to a first glass supporting rod while a first end of the glass base material is supported by a first rotatable chuck, a midway part of the glass base material is supported by a first midway holding device, and the first glass supporting rod is supported by a second rotatable chuck; moving, once the second end of the glass base material is welded to the first glass supporting rod, the first midway holding device to a vicinity of the first rotatable chuck, and moving, before the first end is released from the first rotatable chuck, a second midway holding device to the midway part; after the moving, welding the first end to a second glass supporting rod while the first glass supporting rod welded to the second end is supported by the second rotatable chuck, the midway part is supported by the second midway holding device, and the second glass supporting rod is supported by the first rotatable chuck; heating, once the first end is welded to the second glass supporting rod, the glass base material while the first glass supporting rod welded to the second end is supported by the second rotatable chuck, the midway part is supported by the second midway holding device, and the second glass supporting rod welded to the first end is supported by the first rotatable chuck, the first and second rotatable chucks exerting no tensile stress on the glass base material along a central axis of the glass base material; 2 Appeal2014-007114 Application 10/594,071 elongating the glass base material by moving one of the first and the second rotatable chucks in a direction parallel to the central axis; moving, once the elongating begins, the second midway holding device along a slide rail parallel to the central axis to a vicinity of the second rotatable chuck such that a burner for heating the glass base material is able to move substantially from the first end to the second end along the slide rail during the elongating; and processing, after the elongating, the first end of the glass base material into a spindle shape while the midway part of the glass base material is supported by the second midway holding device, and processing the second end of the glass base material into a spindle shape while the midway part of the glass base material is supported by the first midway holding device. The Examiner maintains, and Appellants appeal, the following rejections: I. Claims 1, 20, 21, and 25-27 under 35 U.S.C. § 103(a) as obvious over Sugiyama et al., (US 2004/0129027 Al published July 8, 2004) in view of Kenmochi2 (JP 2004-050303 published Feb. 19, 2004), Mileo et al., (US 7,215,857 B2 issued May 8, 2007 ), and Koumura et al., (US 2003/0053778 Al published Mar. 20, 2003). II. Claims 18 and 28-31under35 U.S.C. § 103(a) as obvious over Sugiyama, Kenmochi, and Mileo, in view of Shimizu et al., (US 2002/0148257Al published Oct. 17, 2002). III. Claim 18 under 35 U.S.C. § 103(a) as obvious over Sugiyama, Kenmochi, and Mileo, in view ofLysson (EP 0623563 Al published Nov. 9, 1994). OPINION 2 We refer to the machine translation that has been entered into the record. 3 Appeal2014-007114 Application 10/594,071 Upon consideration of the evidence on this record and each of Appellants' contentions, we find that the preponderance of evidence on this record supports the Examiner's conclusion that the subject matter of Appellants' claims is unpatentable over the applied prior art. We sustain the Examiner's§ 103 rejections essentially for the reasons set out by the Examiner in the Answer. We add the following primarily for emphasis. The complete statement of the rejections on appeal appear in the Final Action and the Answer. (Final Act. 2-11; Ans. 2-11). Rejection J3 Appellants argue there is nothing in Sugiyama, nor any other reference of record, that teaches or fairly describes midway supporting devices that slide along the same rail as a burner. (App.Br. 7). Appellants also argue Sugiyama teaches using both supporting devices simultaneously, when both glass rods are both long and one skilled in the art would not be inclined to use two supporting devices for attaching glass supporting rods, as the supporting rod is short. (Id.). Appellants' arguments are not persuasive. Contrary to Appellants' argument, Sugiyama teaches supporting devices that slide along the same rail as a burner. (See Figs. 3--4). A person of ordinary skill would have had sufficient skill to recognize when additional support is needed based on the length of the rod. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art); In re Bozek, 416 3 Appellants present arguments directed only to independent claim 1. Appellants have not addressed claims 20, 21, and 25-27. See Appeal Brief, generally. We limit our discussion to independent claim 1. 4 Appeal2014-007114 Application 10/594,071 F.2d 1385, 1390 (CCPA 1969) ("Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness 'from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.'"). For example, Sugiyama describes the use of additional support on a longer glass rod to avoid concentration of stress on the grasped portion. (Sugiyama i-f 27). Moreover, the Examiner in addition to Sugiyama cited Kenmochi for teaching the importance of proper alignment arrangement of the supporting devices for the welding and elongation steps in the apparatus. A person of ordinary skill in the art joining two glass rods together would have reasonably expected that supporting devices would have aided the proper alignment of the glass rods which were to be joined. For the reasons presented by the Examiner and those presented above we sustain the Examiner's obviousness rejection of claims 1, 20, 21, and 25- 27. Rejections II and III Appellants have not provided arguments addressing the specific limitations of claims 18 and 28-31. Appellants assert claims 18 and 28-31 are patentable for the same reasons as independent claim 1. (App. Br. IO- 11). As stated above we did not find Appellants' arguments regarding the patentability of independent claim 1 persuasive. Consequently we sustain the rejections of dependent claims 18 and 28-31 for the reasons presented by the Examiner and stated above. 5 Appeal2014-007114 Application 10/594,071 CONCLUSION We sustain the Examiner's obviousness rejections of claims 1, 18, 20, 21, and 25-31. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 6 Copy with citationCopy as parenthetical citation