SHIN-ETSU CHEMICAL CO., LTD.

Patent Trials and Appeals Board

Nov 3, 2020

2020001402 (P.T.A.B. Nov. 3, 2020)

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.
14/960,938 12/07/2015 Tetsuya OTOSAKA P48893 1704
7055 7590 11/03/2020
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TETSUYA OTOSAKA
Appeal 2020-001402
Application 14/960,938
Technology Center 1700
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
JEFFREY R. SNAY, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Shin-Etsu Chemical
Co., Ltd. Appeal Br. 3.
Appeal 2020-001402
Application 14/960,938

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CLAIMED SUBJECT MATTER
The claims are directed to a method of forming a conical shape on a
glass rod. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of forming a conical shape on a glass rod
including an effective portion and an ineffective portion
adjoining the effective portion at a boundary, the method
comprising:
providing a heater, and simultaneously raising the
temperature of the heater and moving the glass rod so that the
boundary between the effective portion and the ineffective
portion is positioned inside the heater;
stopping the movement of the glass rod when the
boundary between the effective portion and the ineffective
portion comes to a middle height of the heater;
raising the temperature of the heater to a forming
temperature for forming a conical shape while the movement of
the glass rod is stopped;
pulling an end of the ineffective portion and forming the
conical shape while maintaining the temperature of the heater at
the forming temperature for forming a conical shape and
heating the boundary between the effective portion and the
ineffective portion; and
removing the ineffective portion from the effective
portion by thermal cutting at the boundary.
Appeal Br. 19.
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Application 14/960,938

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Shimizu US 6,386,001 B1 May 14, 2002
Shah US 2007/0125128 A1 June 7, 2007
REJECTION
Claims 1–4 are rejected under 35 U.S.C. § 103 as being unpatentable
over Shimizu in view of Shah. Final Act. 6.
OPINION
At the outset, we agree with Appellant that the Examiner reversibly
erred in interpreting the claims. Compare Ans. 3–4, with Reply Br. 2–3.
First, the Examiner reversibly erred in interpreting “effective portion”
and “ineffective portion” as those terms are used in the phrase “an effective
portion and an ineffective portion adjoining the effective portion at a
boundary” in the preamble of claim 1. The Examiner determine that “[a]ny
two (arbitrary) adjoining portions can be the effective portion and the
ineffective portion” (Ans. 3). We disagree.
We agree with Appellant that the Examiner’s claim interpretation is
unreasonably broad in light of the definitions of “effective portion,”
“ineffective portion,” and “boundary” provided in the Specification. Reply
Br. 2–3. Appellant’s Specification describes the method as in the technical
field of forming a conical shape on a glass rod, such as an optical fiber base
material. Spec. ¶ 2. In this context, the Specification defines the “effective
portion” of the glass rod as “the portion that can be used as an optical fiber”
and the “ineffective portion” as “a portion that cannot be used as an optical
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Application 14/960,938

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fiber.” Spec. ¶ 3. The Specification further explains that the “ineffective
portion” exists on an end of the base material and is removed by thermal
cutting before a drawing process. Id. Appellant maintains this definition
throughout the Specification. Figures 1A–1E depict a glass rod 1 with an
effective portion 14 and an ineffective portion 15 adjoining the effective
portion 13. Spec. ¶ 18. The Specification designates a boundary 13 between
the two portions. Spec. ¶ 6. Because Appellant defined the terms with
reasonable clarity, deliberateness, and precision, their definition controls. In
re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). While the Board must give
the terms their broadest reasonable construction, the construction cannot be
divorced from the Specification and the record evidence. In re Suitco
Surface, 603 F.3d 1255, 1259 (Fed. Cir. 2010).
Second, the Examiner reversibly erred in interpreting the claim
limitations directed to motion and position recited in claim 1. The Examiner
state that “[t]he claim limitations directed to motion/position are not
interpreted as being limited to absolute motion/position because such would
be inconsistent with the [S]pecification” (Ans. 3, citing Spec. ¶ 17), but the
Examiner’s determination, as pointed out by Appellant, is divorced from the
actual language recited in claim 1. Reply Br. 3. The claim focuses on the
movement of the glass rod. See claim 1 (“moving the glass rod,” “stopping
the movement of the glass rod,” “while the movement of the glass rod is
stopped.”). Although paragraph 17 of the Specification speaks of the relative
positional relationship between a glass rod and a heater, that language is not
used in claim 1. Instead, paragraph 17 indicates there are two options within
the broad pronouncement of “relative positional relationship.” In the first
option the glass rod is moved. In the second option, the heater is moved. See
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Spec. 17 (“Since the change in the positional relationship is a relative
change, it may be configured to move the glass rod with the heater fixed or
to move the heater with the glass rod fixed.”). Claim 1 is not as broad as the
description in paragraph 17, but is instead limited to the first option, i.e.,
moving the glass rod with the heater fixed, and does not encompass the
second option, i.e., moving the heater with the glass rod fixed.
Third, the Examiner reversibly erred in determining that “[t]he conical
shape” recited in the pulling step (at line 11 of claim 1) “need not be exactly
the same as the conical shape at the end of the method” or, in other words,
“the preamble is not construed as requiring the exact same shape at the end
of the method as was created by ‘forming the conical shape’” as recited at
line 11. Ans. 3–4. We disagree because “the conical shape” recited in line 11
derives antecedent basis from the recitation of “a conical shape” in the
preamble. Given the grammar of the claim, “the conical shape” must be
interpreted as referring to the only conical shape set forth in the claim, i.e.,
the conical shape recited in the preamble. See In re Fought, 941 F.3d 1175,
1178 (Fed. Cir. 2019) (holding the preamble limiting where the limitation
reciting “the travel trailer” in the body of the claim relied on the preamble’s
recitation of “[a] travel trailer” for its antecedent basis).
Having resolved the issues of claim interpretation, we next consider
the Examiner’s conclusion of obviousness over Shimizu in view of Shah.
We agree with Appellant that the Examiner reversibly erred in maintaining
the rejection.
Appellant’s claims require a specific sequence of heating and moving
a glass rod. Claim 1. The Examiner finds that Shimizu discloses moving the
glass rod, but acknowledges that Shimizu provides no indication that the
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Application 14/960,938

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temperature is raised during the moving. Final Act. 7. The Examiner further
acknowledges that Shimizu does not disclose stopping the movement of the
glass rod or raising the temperature of the heater while the glass rod is
stopped. Final Act. 7–8.
The Examiner turns to Shah to support the obviousness of raising the
temperature of the glass rod as it moves. Final Act. 7–8. The Examiner also
points to Figures 41 and 42 of Shimizu to support the obviousness of
stopping the movement of the glass rod and raising the temperature of the
heater. Final Act. 8. We agree with Appellant that Shimizu and Shah fail to
support the Examiner’s findings of suggestions to conduct the simultaneous
heating and moving, stopping, and further heating required by Appellant’s
claim 1. Appeal Br. 11–12; Reply Br. 4–5.
Shimizu describes an optical fiber manufacturing method that is
summarized in Figure 4. Shimizu col. 9, ll. 27–28. Shimizu’s method
elongates a glass base material in a first elongating step (S204) to produce
glass rod 106 and transports glass rod 106 to a second elongating step (S206)
where it is heated and elongated to produce preform 107. Shimizu col. 9, ll.
36–51; Figs. 5 and 25.
The Examiner’s relies upon heater 176, shown in Shimizu’s Figure 5,
as the heater provided in the first step of claim 1. Final Act. 7. Shimizu pulls
glass rod 106 at a prescribed speed through heater 176 to fuse the glass rod.
Shimizu col. 10, ll. 7–36. Fusing is accomplished by heating glass rod 106
with rotating burner 176 while chuck 218 pulls glass rod 106 with a
prescribed speed and pull strength. Shimizu col. 10, ll. 33–36.
Shimizu teaches another embodiment, shown in Figure 19, in which
glass rod 106 is set inside the ring of ring burner 176, after which hydrogen
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and oxygen gases are supplied to ring burner 176 and the gases are ignited.
Shimizu col. 14, ll. 45–65. Flame 178 heats and fuses the surface of glass
rod 106. Id. Shimizu discloses heating for 10 minutes during the elongation.
Shimizu col. 14, l. 66–col. 15, l. 7. But Shimizu does not disclose
simultaneous heating and elongating and then stopping the movement of the
glass rod when the boundary between the effective portion and the
ineffective portion comes to a middle height of the heater and raising the
temperature to a forming temperature for forming a conical shape while the
movement is stopped.
Neither Shah nor the other portions of Shimizu suggest modifying the
fusing step of Shimizu occurring at heater 176. The other portions of
Shimizu relied on by the Examiner, i.e., Figures 41 and 42, are directed to a
second elongating step (S206 of Figure 4) for end drawing and are not
related to the first elongating step (S204 of Figure 4) that includes fusing
with heater 176. Paragraph 11 of Shah, relied on by the Examiner, discloses
problems with known processes employing heating to form conical shapes in
optical fibers, but suggests overcoming those problems by completely
removing the heating step. Shah ¶¶ 11, 23. A preponderance of the evidence
fails to support the Examiner’s finding of a suggestion in the prior art to
simultaneously raise the temperature of heater 176 and move glass rod 106,
stop the movement of glass rod 106 when the required boundary is at a
middle height of heater 176 and only then, while glass rod 106 is stopped,
raising the temperature of heater 176 to the forming temperature.
Appellant has identified a reversible error in the Examiner’s finding of
a suggestion to conduct the heating and moving steps in the manner of claim
1.
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CONCLUSION
The Examiner’s decision to reject claims 1–4 is REVERSED.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4 103 Shimizu, Shah 1–4
REVERSED