Ex Parte Atkins et al

Patent Trial and Appeal Board

Sep 20, 2012

11607385 (P.T.A.B. Sep. 20, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/607,385 12/01/2006 Robert M. Atkins 22-20DIV 8785
7590 09/21/2012
Wendy W. Koba
PO Box 556
Springtown, PA 18081
EXAMINER
BLACKWELL, GWENDOLYN
ART UNIT PAPER NUMBER
4131
MAIL DATE DELIVERY MODE
09/21/2012 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 ROBERT M. ATKINS
and ROBERT SCOTT WINDELER
____________

Appeal 2011-010789
Application 11/607,385
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
GRACE KARAFFA OBERMAN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 22 and 23. We have jurisdiction under 35 U.S.C. § 6.

STATEMENT OF THE CASE
Claim 22 is representative of the subject matter on appeal and is set
forth below:
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Application 11/607,385

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22. An optical perform tube including at least one dual layer of soot,
wherein said dual layer comprises an internal soot structure used for a
solution doping process, said internal soot structure comprising:

a bottom soot layer overlying said bottom soot layer, said top soot
layer formed by using a heat source internal to said perform tube during
deposition so as to form a top soot layer exhibiting an essentially uniform
morphology.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Atkins et al. (Atkins) 6,109,065 Aug. 29, 2000

THE REJECTION
Claims 22 and 23 are rejected as being anticipated under 35 U.S.C.
§ 102(b) by Atkins, or in the alternative, are obvious over Atkins under
35 U.S.C. §103(a).
ANALYSIS

As an initial matter, Appellants have not presented separate arguments
for all of the rejected claims. Rather, Appellants’ arguments are principally
directed to independent claim 22. Any claim not separately argued will
stand or fall with its respective independent claim. See 37 C.F.R.
§ 41.37(c)(1)(vii).
With regard to the prior art rejection, we essentially adopt the
Examiner’s findings pertinent to the issues raised by Appellants for these
rejections. We, therefore, incorporate the Examiner’s position as set forth in
the Answer. We add the following for emphasis only.
Appellants argue that the claimed top soot layer overlying said bottom
soot layer “formed by using a heat source internal to said perform tube
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during deposition so as to form a top soot layer exhibiting an essentially
uniform morphology” creates a different product (a top soot layer with an
essentially uniform morphology). Hence, it is Appellants’ position that the
different process as recited in claim 21 in fact is attributable to creating a
different product. Br. 4. Appellants explain:
In accordance with the present invention, the presence of the
"internal heat source" is used to raise the temperature within the
tube until the interior temperature is greater than the tube wall
temperature (see page 6, lines 2-3). Indeed, the "internal heat
source" is heated until ignition occurs (see applicants'
specification at page 7, beginning at line 5). The ignition of the
internal heat source results in creating two separate hot zones
(indicated as I and II in FIG. 5), resulting in the formation of a
"top" layer of soot in the upstream hot zone. Without the
utilization of an "internal heat source", no "top" layer of
"essentially uniform morphology" would form, as evidenced by
comparing the soot morphology of the prior art (FIG. 7) and
Appellants' invention (FIG. 6).
Br. 4.
It is the Examiner’s position that Appellants are arguing limitations
not present in the claims. That is, the Examiner’s position is that the claims
do not recite that the internal heat source raises the temperature of the tube
until the interior temperature is greater than the tube wall temperature. We
agree.
The Examiner further states:
Appellants' assertions are not considered persuasive due to
Appellants' arguing limitations that are not part of the claimed
invention. Appellants’ specification, in particular, page 5, lines
9-19, disclose that the internal heat source is N2O. Atkins uses
the same gas. While Atkins indicates that the temperature is
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lowered to prevent an explosion, the temperature is still greater
than 1000 oC, preferably in the range of 1200-1900 oC, (Atkins,
column 3, lines 18-24). Appellant's disclosed deposition
temperature is in the range of 1660 to 1790 °C, (Appellant's
specification, page 6, lines 23-26), which falls within Atkins
disclosed preferred temperature range. In addition, Atkins does
not disclose anything that would indicate that preventing an
explosion is synonymous with preventing ignition. That is
mere conjecture on the part of Appellant. Furthermore,
Appellant's arguments are not commensurate in scope with the
claims as Appellant is arguing features which are not part of the
claim, (ie: raising the temperature). Appellant's claimed
invention does not contain any limitations with regards to
raising the temperature of the interior to the ignition
temperature, the temperature of the interior versus the
temperature of the tube wall, or the temperature range at which
deposition of the soot layer should occur, all of which are the
basis for Appellant's assertion of patentable distinction between
the claimed invention and the prior art.
Ans. 5-6.
As demonstrated by the Examiner’s above-mentioned position,
Appellants argue limitations not in the claims. It is the claims that define the
invention and, therefore, the absence in the prior art of subject matter not
included in the claims cannot be a basis for patentability. See Constant v.
Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); see
In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of appellant's
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.”).
Also, assuming, arguendo, that such limitations were in the claims,
the Examiner has indicated, supra, that Atkins also raises the temperature to
a range that encompasses the temperature range disclosed in Appellants’
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Specification. Hence, we are unpersuaded by Appellants that the process is
different in such a way that the resultant product is patentably distinct.
With regard to Appellants’ aforementioned comments regarding the
comparison of Figures 6 and 7 of their Specification, we defer to the
Examiner’s position on page 6 of the Answer, and for the reasons stated
therein, are unpersuaded of error.
In view of the above, we affirm the rejection.

CONCLUSIONS OF LAW AND DECISION
The rejection 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)(1).
AFFIRMED

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