SHIN-ETSU CHEMICAL CO., LTD.

Patent Trials and Appeals BoardNov 3, 2020

14960938 - (D) (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 2 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. Appeal 2020-001402 Application 14/960,938 3 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 Appeal 2020-001402 Application 14/960,938 4 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 Appeal 2020-001402 Application 14/960,938 5 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 Appeal 2020-001402 Application 14/960,938 6 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 Appeal 2020-001402 Application 14/960,938 7 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. Appeal 2020-001402 Application 14/960,938 8 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