Ex Parte Boek et al - Page 2

                    Appeal 2006-2592                                                                                                    
                    Application 10/035,535                                                                                              

                    gas to dope the preform with chlorine, where the atmosphere is at an                                                
                    absolute pressure substantially greater than 1.013x102 kPa (Br. 2).                                                 
                    Independent claim 1 is illustrative of the invention and is reproduced below:                                       
                    1. A method of manufacturing an optical waveguide preform, said                                                     
                    method comprising:                                                                                                  
                           exposing a soot preform to an atmosphere including a chlorine-                                               
                    containing gas and thereby doping the soot preform with chlorine, wherein                                           
                    the absolute pressure of the atmosphere is substantially greater than                                               
                    1.013 x 102 kPa and the mole percentage of chlorine present in the                                                  
                    atmosphere is between about 20% and 40%.                                                                            
                           The Examiner has relied on the following prior art references as                                             
                    evidence of obviousness:                                                                                            
                    Ishikawa                             US 6,116,055                             Sep. 12, 2000                         
                    Kingery, Introduction to Ceramics 219-226 (2d. ed., John Wiley & Sons,                                              
                    1976)                                                                                                               
                                                     ISSUES ON APPEAL                                                                   
                           Claims 1-3, 6-31, and 36-37 stand rejected under 35 U.S.C. § 103(a)                                          
                    as unpatentable over Ishikawa in view of Kingery (Answer 3).                                                        
                           Appellants contend that Ishikawa and Kingery at best provide an                                              
                    incentive to try, since Ishikawa teaches that partial pressures greater than 1                                      
                    atmosphere present a problem, and provides no motivation or expectation of                                          
                    success in trying high pressures (Br. 4-5).                                                                         
                           Appellants contend that Ishikawa provides no enablement on how to                                            
                    overcome the problem and specifically discourages extending the partial                                             
                    pressure above 1 atmosphere (Br. 5).                                                                                
                           The Examiner contends that Ishikawa does not teach the pressure as                                           
                    required by claim 1 on appeal but teaches use of pressures greater than                                             

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