Ex Parte Otosaka

Patent Trial and Appeal Board

Apr 5, 2016

12178133 (P.T.A.B. Apr. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/178, 133 07/23/2008 Tetsuya OTOSAKA
38834 7590 04/07/2016
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT A VENUE, NW
SUITE 700
WASHINGTON, DC 20036
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.
081956 5748
EXAMINER
FRANKLIN, JODI COHEN
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
04/07/2016 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TETSUY A OTOSAKA 1
Appeal2014-007690
Application 12/178,133
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and
DEBF~A~ L. DEI\TJ\.JETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant identifies the Real Party in Interest as Shin-Etsu Chemical Co.,
Ltd. (Appeal Brief ("App. Br.") 2).
Appeal2014-007690
Application 12/178,133
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, 4---6, and 8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a furnace for fabricating an optical fiber
from an optical fiber preform. Claim 1, the only independent claim,
reproduced below, is illustrative of the claimed subject matter:
1. A furnace provided with an insertion hole for receiving an
optical fiber preform therein so as to be heated in the furnace, the
furnace comprising an entrance hole at a top end thereof for receiving
an optical fiber preform before drawn and an exit hole at a bottom end
thereof for receiving an optical fiber after the optical fiber preform is
drawn, the exit hole being smaller than the entrance hole, comprising
an annular sealing body configured to seal a clearance gap
between said optical fiber preform and said insertion opening; said
annular sealing body consisting of a plurality of identical annular
disks mutually stacked on each other;
each of said plurality of annular disks comprising:
an insertion hole in a central area of the disk;
a plurality of slits formed to extend from an inner edge of said
insertion hole toward an outer periphery of the disk; and
a plurality of flexible portions defined by said plurality of slits
and configured to bend due to an interference fit with said optical
fiber preform when said optical fiber preform is inserted into said
insertion hole,
wherein each of said plurality of annular disks consists of a
highly oriented pyrolytic graphite sheet, and
wherein said annular disk is exposed to inert gas atmosphere
during drawing an optical fiber.
App. Br. 10 (Claims Appendix).
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Application 12/178,133
The Examiner maintains (Ans. 2-9) and Appellant seeks review (App.
Br. 3-8) of the following rejections:
A. Claims 1, 2 and 4--5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Upton, US 3,227,032 issued January 4, 19662 ("Upton")
in view of Motter, DE 3903466 published August 9, 1990, and Diefendorf,
US 3,297,406 issued January 10, 1967.
B. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Upton, Motter, and Nixon, US 4, 116,451, issued
September 26, 2978 (referred to as "prior art '451 by the Examiner), further
in view of Guttman, DE 3731345 Al, published on March 30, 1989.
Appellant did not separately address claim 6's rejection over this
combination of references. Because claim 6 depends from claim 1, and we
affirm the rejection of claim 1 below, we likewise affirm the rejection of
claim 6.
C. Claims 1, 2, 4--6, and 8 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Lysson (DE4006839), published September 12,
1991, in further view of Motter and Diefendorf.
DISPOSITIVE ISSUES
With regard to rejections A and C listed above, Appellant "addresses
[them] concurrently ... for the sake of brevity and clarity." App. Br. 3.
2 The Examiner misidentifies the inventor of US 3,227,032 as "Lee," rather
than correctly as "Upton" (Non-Final Action ("Non-Final Act.") 2, and Ans.
2). Appellant misidentifies the (Lee) Upton patent as "U.S. Patent No.
3,227,466 to Lee" (App. Br. 3). For clarity, we will refer to the patent to
Upton as "Upton."
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Application 12/178,133
Appellant contends that the invention claimed is not obvious over
Upton in view of Motter and Diefendorf---or over Lysson in view of Motter
and Diefendorf-because neither Upton nor Lysson provide for the annular
sealing body claimed, and there is no viable rationale prompting a skilled
artisan to combine Upton or Lysson with Motter and Diefendorf. App. Br.
3. Appellant further argues that neither combination of references provides
the "annular sealing body consisting of a plurality of identical annular disks
mutually stacked on each other" of claim 1, specifically identifying Figs. 5
and 6 and pages 4 and 5 of Motter as not providing this teaching. App. Br.
5, Reply 2 (emphasis in Reply only). Appellant also contends that a skilled
artisan would not replace the seals in Upton or Lysson with the seals
disclosed in Motter; the coating furnace, and related seals, disclosed in
Motter are allegedly so different from the drawing furnaces and seals
disclosed in Upton and Lysson and for such distinctive purposes as to be
non-analogous art. App. Br. 6. Finally, Appellant urges that substituting the
carbon sheets disclosed in Diefendorf for the graphite felt in Motter does not
make Motter "reasonably pertinent to the problems of drawing furnaces"
disclosed in Upton and Lysson. App. Br. 8.
Appellant does not argue any claim apart from the others. Therefore,
we select claim 1 as representative for deciding the issues on appeal for both
rejections.
FINDINGS OF FACT
The following Findings of Fact (FF) are particularly relevant for
disposing of the issues on appeal.
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Application 12/178,133
1. Upton teaches a furnace for preparing fiber optical elements, the furnace
comprising a cover (25a or 38a) to seal the surrounding atmosphere,
prevent updraft, and maintain uniform temperature. Upton col. 1, 11. 9-
12; col. 4, 11. 35-58; Figs. 2 and 4. The reference does not teach an
annular sealing body consisting of a plurality of identical annular disks
mutually stacked on each other, as recited in claim 1.
2. Lysson teaches sealing a furnace chamber for use with preform tubes
being drawn to glass fibers. Lysson Abstract. The sealing devices
consists of at least one felt ring, preferably graphite or ceramic felt,
which seals the furnace chamber against the preform cylinder. Id.
Abstract; 2. The preform may be a quartz glass cylinder which is doped
on the inside by use of a reaction gas within the cylinder. Id. 2.
3. Motter teaches a furnace for heating a substrate tube (optical fiber
preform) and sealing the gap between the substrate tube and an insertion
opening in a furnace chamber. Motter 3 ("a furnace for the internal
coating of substrate tubes for optical fibers, in which a complete seal of
the space between the substrate tube and the furnace is ensured."). The
substrate tube is moved relative to the furnace. Id. 2. The substrate tube
may become thinner as a result of the heat treatment, or even collapse to
a rod. Id. 3.
4. Diefendorf teaches pyrolytic graphite sheets for use in gas-impermeable
membranes. Diefendorf col. 1, 11. 9-11, 21-23.
ANALYSIS
Appellant contends that Motter is "non-analogous art to the drawing
furnaces of Upton and Lysson." App. Br. 6.
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Application 12/178,133
At the outset, we note that, while Appellant presents this argument as
one concerning non-analogous art the analogous art inquiry focuses on
whether the prior art is "analogous to the claimed invention." See In re
Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004) (emphasis added) AppeHant's
argument, on the other hand, appears to focus on whether Upton, Lysson,
and Motter are sufficiently similar to each other such that a person of
ordinary skill in the art would have been motivated to combine them.
Upton, Lysson, and Motter all cited by the Examiner, relate to furnaces for
optical fiber prefonns. Each addresses similar problems because each
discloses a seal with a similar function. See, e.g., Upton col. 4, 11. 52-58;
L ysson Abstract, Motter 3.
Appellant's argument to distinguish Motter as teaching a quartz glass
tube that "must be heated at a fundamentally lower temperature than a
drawing furnace [such as in the claimed invention, Upton, and Lysson] so as
to keep the shape of the tube intact" and "not soften the tube" (App. Br. 7) is
countered by Matter's disclosure that it "ensure[s] an automatic seal of the
space without manual adjustment even when the substrate tube becomes
thinner as a result of the heat treatment, or even collapses to a rod." Motter
3 (emphasis added). Thus, contrary to Appellant's argument, in Motter, the
shape of the glass preform is not kept intact and the tube may be softened to
the point of collapse.
Appellant's argument that drawing furnaces, e.g., in Upton and
Lysson, in which the optical glass preform is moved through the furnace, are
fundamentally different from the mobile furnace of Motter, which moves
along the substrate tube, is also unavailing. In all cases, the substrate moves
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Application 12/178,133
relative to the furnace, with the result that the substrate may become thinner.
See, e.g., Upton 4:59-5:5; Lysson Abstract; Motter 2-3.
The differences urged by Appellant between Motter and
Upton/Lysson are not persuasive in establishing that they are so different
from each other as to negate a motivation to combine. As the Examiner
explained, Motter, Upton and Lysson all require moving an optical fiber
preform relative to a furnace. Ans. 11-12. Even more to the point, Motter
teaches sealing the interior of the furnace from the exterior by use of flexible
seals. Id. 12. "Under the correct analysis, any need or problem known in
the field of endeavor at the time of the invention and addressed by the patent
[or application at issue] can provide a reason for combining the elements in
the manner claimed.'~ KSR lnl'l Co. v. Telejlex Inc., 550 \J,S, 398, 420
(2007), Appellant has not identified differences in the references that would
dissuade a skilled artisan from combining the references to achieve the
claimed invention under the rationale set forth by the Examiner. The
proposed modification of Upton or Lysson with Motter is a simple
substitution of one known sealing element for another. "The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results." Id. at 416.
To the extent that Appellant did intend to raise an analogous art
argument, we are not persuaded that the cited prior art references are not
analogous to the claimed invention. The references-Upton, Lysson, and
Motter-are from the same field of technology (a furnace for working with
optical fiber preforms), and they are reasonably pertinent to the problem
faced by the inventor (sealing the gap between an optical fiber preform and
an insertion opening in a furnace chamber). In re Klein, 647 F.3d 1343,
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1348 (Fed. Cir. 2011). Thus, the cited prior art is analogous to the claimed
invention. See Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir.
2010 (scope of analogous art is to be construed broadly).
We tum next to Appellant's contention that the Examiner committed
reversible error in finding that both combinations of prior art references
teach the "annular sealing body consisting of a plurality of identical annular
disks mutually stacked on each other" of claim 1. In the Appeal Brief, the
Appellants appear to focus their argument on whether the prior art teaches
identical annular disks. App. Br. 5. For the first time in the Reply Brief, the
Appellants emphasize the "consisting of' language of the claim and appear
to shift their argument to whether Figure 5 of Matter's disclosure of two
identical disks (items 11 and 12) and two disks that do not appear to be
identical to items 11 and 12 (i.e., items 13 and 14) fall beyond the scope of
the "consisting of' language of the claim. Reply Br. 2. An argument raised
in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner's answer, will not be
considered by us for purposes of the present appeal, unless good cause is
shown. 37 C.F.R. § 41.41(b). As good cause has not been shown, we deem
Appellant's argument to be waived. Cf In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) ("[T]he Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.").
In any event, we reject Appellant's argument on the merits. Figure 5
of Motter is a "design example" that illustrates seals 11 and 12 and punched
disks 13 and 14 made of graphite felt. Motter 4, 11. The slots of seal 11
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Application 12/178,133
come to rest over the crosspieces between the slots of the lower seal 12. Id.
Illustrations of the seals taught in Motter and those disclosed in the
Specification are shown below.
Fig. 5 of Motter showing seals
11, 12 and punched disks 13, 14
Fig. 3 of Specification showing
seals lOn
As noted above, Appellant's point appears to be that seals 11 and 12
are not identical to punched disks 13 and 14 of Motter, therefore the seals
taught are not "consisting of a plurality of identical annular disks mutually
stacked on each other." Reply 2. This argument is unpersuasive, as Fig. 5
of Motter is merely a design example. Motter 4. The reference does not
require that non-identical seals and punched disks be employed in the device
taught, and Appellant has not shown otherwise. Moreover, Motter teaches
that "multiple seals with the same configuration ... are generally used." Id.
In addition, claim 1 claims a furnace with the transitional language
"comprising," which does not exclude additional elements. The evidence as
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Application 12/178,133
a whole supports the Examiner's finding that Motter teaches "a plurality of
identical annular disks mutually stacked on each other." Ans. 10-11.
The seals 11 and 12 of Motter may be 0.5 mm thick carbon fiber-
carbon and possess an elastic resilience. Motter 4. The punched disks 13
and 14 may be made of graphite felt, which clings to the substrate and
ensures a tight closure. Id. Either seals 11 and 12 or punched disks 13 and
14 could be used in the "annular sealing body configured to seal a clearance
gap between said optical fiber preform and said insertion opening," as
claimed in claim 1. We find, therefore, that the Examiner did not err in
finding that Motter teaches the annular sealing body of claim 1.
Next, we tum to the question of whether the carbon sheets of
Diefendorf could be substituted for the graphite felt of Motter. Appellant
gives this issue short shrift. While noting that "[t]he current rejections rely
upon the additional secondary reference, Diefendorf as to substituting the
graphite felt of Motter with the graphite material thereof on the basis that the
pyrolytic graphite sheets are suitable as gas impermeable membranes, or
seals ... such as the one taught by Motter" (App. Br. 8), Appellant focuses
on Motter, not Diefendorf: "appellant respectfully notes that regardless of
the substitutability of carbon sheets between Diefendorf and Motter, the fact
that Motter not reasonably pertinent to the problems of drawing furnaces
remains." The Examiner's proposed modification is simply the substitution
of one known element or material for another (the carbon sheets of
Diefendorf for the graphite felt of Motter). Appellant's arguments do not
persuade us that one of ordinary skill in the art would not have had a
reasonable expectation of success in making the substitution. KSR, 550 U.S.
at 416.
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Finally, we note that Appellant complains in the Reply that the
Examiner "reduces the operation of the seals of Motter and Upton/Lysson to
their gist, failing to take into account the disclosures of the references as a
whole." Reply 4. As with Appellant's "consisting of' argument, this
argument could have been raised in the Appeal Brief, but was not. It is not
responsive to an argument raised in the Examiner's Answer, and is rejected
on procedural grounds, as good cause is not shown for the delay. 37 C.F.R.
§ 41.41(b). In addition, Appellant's argument fails on substantive grounds.
In essence, we view Appellant's complaint that the Examiner reduced the
operation of the prior art seals to their gist as an assertion that the prior art
teaches away from the claimed invention. We do not agree. The prior art is
viewed for what it discloses, which in this case is furnaces for preparing
fiber optical elements comprising a seal at the insertion point (FF 1 and 2),
said seal comprising a plurality of identical annular disks (FF 3) which may
be made from pyrolytic graphite sheets (FF 4). Appellant has not shown
error by the Examiner in her analysis of the prior art.
CONCLUSIONS OF LAW
On the record before us, we sustain the rejections maintained by the
Examiner.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 2, 4---6,
and 8 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)(l )(iv) (2009).
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AFFIRMED
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