Ex Parte Bi et al

Patent Trial and Appeal Board

Aug 21, 2018

14489035 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/489,035 09/17/2014 Xiangxin Bi
62274 7590 08/21/2018
CHRISTENSEN, FONDER, DARDI & HERBERT PLLC
33 South Sixth Street
Suite 3950
Minneapolis, MN 55402
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.
3275.34US03 2457
EXAMINER
MILLER, MICHAEL G
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
08/21/2018 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 XIANGXIN BI, HERMAN A. LOPEZ,
PRASAD NARASIMHA, ERIC EUVRARD,
and RONALD J. MOSSO
Appeal2017-009913
Application 14/489,035
Technology Center 1700
Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-16, 18, 20, and 21 2. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the Applicant, N eoPhotonics Corporation, which, according to
the Appeal Brief, is the real party in interest. Appeal Brief filed January 11,
2017 ("App. Br."), 3.
2 Final Office Action entered July 22, 2016 ("Final Act.").
Appeal2017-009913
Application 14/489,035
STATEMENT OF THE CASE
The subject application is a divisional application of Application
10/854,019 filed May 26, 2004 ('019 Application), now US 8,865,271 B2
issued October 21, 2014. Although Appellant states that "[t]here are no
related appeals or interferences" (App. Br. 3), we note that the PTAB
rendered a Decision on Appeal in the '019 Application on April 9, 2013
affirming the Examiner's decision to reject claims 38--42, 45-50, and 53.
Appellant claims a method for forming an optical coating on a planar
substrate having a first coating. Claim 1, the sole pending independent
claim, illustrates the subject matter on appeal and is reproduced below with
contested language italicized:
1. A method for forming an optical coating on a planar
substrate having a first coating, the method comprising
depositing a powder coating on the first coating from a
product flow
wherein the product flow results from a chemical
reaction in the flow and
wherein the powder coating consolidates under
appropriate conditions into an optical coating
wherein the optical coating and the first coating,
following consolidation, have a difference in index-of-
refraction of at least about 1 % and
wherein the optical coating has a standard deviation for
refractive index over an area of 25 square centimeters of no
more than about 0.001.
App. Br. 18 (Claims Appendix) ( emphasis and spacing added).
The Examiner sets forth the following rejections in the Final Office
Action, and maintains the rejections in the Examiner's Answer entered May
17, 2017 ("Ans."):
I. Claims 1 and 4--15 under 35 U.S.C. § 103(a) as
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unpatentable over Sun (US 5,059,475, issued October 22, 1991) in
view of Bi (WO 02/32588 Al, published April 25, 2002);
II. Claims 2 and 3 under§ I03(a) as unpatentable over Sun in view
of Dawes (US 6,466,707 Bl, issued October 15, 2002) and Chu (US
6,467,313 B 1, issued October 22, 2002); and
III. Claims 16, 18, 20, and 21 under 35 U.S.C. § I03(a) as
unpatentable over Sun in view of Borrelli (US 5,896,484, issued April 20,
1999).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's timely contentions, 3 we affirm the Examiner's rejections
of claims 1-16, 18, 20, and 21 under 35 U.S.C. § I03(a) for the reasons set
forth in the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellant provides for each issue Appellant
identifies. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011 )) ( explaining that even if the Examiner had
failed to make a prima facie case, "it has long been the Board's practice to
require an applicant to identify the alleged error in the examiner's
rejections").
3 We do not consider any new argument that Appellant raises in the Reply
Brief that Appellant could have raised in the Appeal Brief. 37 C.F.R.
§ 4I.37(c)(l)(iv); 37 C.F.R. § 41.4I(b)(2) (arguments raised for the first
time in the Reply Brief that could have been raised in the Appeal Brief will
not be considered by the Board unless good cause is shown).
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Application 14/489,035
Rejection I
Appellant argues claims 1 and 4--15 as a group on the basis of claim 1,
to which we accordingly limit our discussion. App. Br. 11-16; 37 C.F.R.
§ 4I.37(c)(l)(iv).
Claim 1 recites, inter alia, a method of forming an optical coating
having a standard deviation for refractive index over an area of 25 square
centimeters of no more than about 0.001.
The Examiner finds that Sun discloses forming a silica-glass based
waveguide core layer ( optical coating) by flame hydrolysis deposition on a
silica-glass based cladding layer (first coating) formed on a substrate. Final
Act. 4 ( citing Sun Abstract; col. 3, 11. 48---60; col. 4, 11. 45-56; Fig. 2). The
Examiner finds that Sun discloses that the core layer ( optical coating) and
cladding layer (first coating) have a difference in index of refraction of at
least about 1 %. Final Act. 4 (citing Sun col. 4, 11. 51-52). The Examiner
finds that Sun does not disclose forming the waveguide core layer ( optical
coating) using the method recited in claim 1, and the Examiner relies on Bi
for disclosure of such a method. Final Act. 4---6.
The Examiner finds that Bi discloses a light reactive deposition
method for forming an optical coating that involves depositing a powder
from a product flow resulting from a chemical reaction in the flow, and
consolidating the powder under appropriate conditions into an optical
coating. Final Act. 4 (citing Bi pgs. 2, 4). The Examiner finds that Bi
discloses that light reactive deposition can be used to produce highly
uniform silica-based optical coatings that are more uniform than coatings
produced by flame hydrolysis deposition. Final Act. 4--5 (citing Bi 3). The
Examiner finds that Bi discloses adjusting the composition of the deposited
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particles to obtain an optical coating with a desired index of refraction, and
the Examiner determines that the more uniform the composition of the
particles, the more uniform the refractive index will be of a coating formed
from the particles. Final Act. 5---6 (citing Bi 12-13, 40).
The Examiner concludes it would have been obvious to one of
ordinary skill in the art at the time of Appellant's invention to deposit the
silica-based core and cladding layers disclosed in Sun using the light
reactive deposition method disclosed in Bi to produce more uniform core
and cladding layers than those obtainable using Sun's flame hydrolysis
deposition process. Final Act. 5.
Appellant argues that Bi does not discuss compositional uniformity of
particles or any way to evaluate this property, and Appellant contends that
Bi does not discuss how to improve compositional uniformity of a product
particle stream or the index of refraction uniformity of a resulting film. App.
Br. 13. Appellant further argues that due to the "significant process
differences between the teachings of Bi ... and the present application" the
Examiner has not established that Bi's method would necessarily or
inherently achieve the index of refraction uniformity recited in claim 1.
App. Br. 14.
However, Bi discloses a method of forming an optical coating on a
substrate-referred to as "light reactive deposition"-that involves
generating a reactant stream, directing a focused radiation beam at the
reactant stream to drive and mediate a chemical reaction that produces a
product stream of particles (product flow resulting from a chemical reaction
in the flow, as recited in claim 1 ), directing the stream of particles on a
substrate so as to deposit the particles on the substrate ( depositing a powder
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coating, as recited in claim 1 ), and heating the particle coating at a
temperature and for a time sufficient to fuse the particles into an optical
glass coating ( consolidating the powder coating under appropriate conditions
into an optical coating, as recited in claim 1 ). Bi 3--4, 7. The light reactive
deposition process disclosed in Bi thus appears to be the same or
substantially the same as the process recited in claim 1.
Although Bi does not explicitly disclose that an optical coating
formed according to Bi's light reactive deposition process has a standard
deviation for refractive index over an area of 25 square centimeters of not
more than about 0.001 as recited in claim 1, Bi discloses that basic
characteristics of optical film coatings include optical quality, and Bi
indicates that optical quality includes uniformity of optical properties, such
as index of refraction. Bi 2. Bi further discloses that the light reactive
deposition process of Bi's invention produces highly uniform product
particles that form highly uniform continuous coatings. Bi 7, 13.
In view of these disclosures in Bi, and in view of the fact that Bi's
light reactive deposition process appears to be substantially the same as the
process recited in claim 1, an optical coating having a standard deviation for
refractive index as recited in claim 1 would have naturally flowed from
following the suggestion, stemming from Bi's disclosure that the flame
hydrolysis deposition process disclosed in Sun "cannot be easily adapted to
obtain more uniform coatings," (Bi 2) of forming Sun's waveguide core
layer ( optical coating) using Bi's light reactive deposition process, to
produce a highly uniform waveguide core layer ( optical coating). Ex parte
Obiaya, 227 USPQ 58, 60 (BPAI 1985) ("The fact that appellant has
recognized another advantage which would flow naturally from following
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the suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious."); In re Wiseman, 596 F .2d 1019,
1023 (CCP A 1979) ("[The Appellant is], in effect, arguing that a structure
suggested by the prior art, and, hence, potentially in the possession of the
public, is patentable to them because it also possesses an inherent, but
hitherto unknown, function which they claim to have discovered. This is not
the law. A patent on such a structure would remove from the public that
which is in the public domain by virtue of its inclusion in, or obviousness
from, the prior art"); cf In re Huai-Hung Kao, 639 F.3d 1057, 1072 (Fed.
Cir. 2011) ( affirming finding of obviousness even where "the only claim
element not expressly disclosed in the prior art was the previously-unknown,
yet inherent . . . property.")
Although Appellant asserts that "significant process differences" exist
"between the teachings of Bi ... and the present application," Appellant
does not identify any specific differences between the method recited in
claim 1 and the light reactive deposition process disclosed in Bi. App. Br.
11-16. Nor does Appellant direct us to any persuasive reasoning or
evidence-such as factual data----demonstrating that the method recited in
claim 1 achieves results that would have been unexpected by one of ordinary
skill in the art at the time of Appellant's invention. App. Br. 11-16; In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (Explaining that Appellant
can evince the criticality of a feature of the claimed invention, "generally by
showing that the claimed [ novel feature] achieves unexpected results relative
to the prior art" feature.) Appellant's arguments regarding Bi's lack of
explicit disclosure of compositional uniformity of deposited particles, and
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index of refraction uniformity of a resulting coating, are therefore
unpersuasive of reversible error.
Appellant argues that Bi teaches "bubblers for the delivery of
precursors," which Appellant asserts does not necessarily teach uniform
delivery of compositions into reactant vapor flow, and would not necessarily
result in the index of refraction uniformity recited in claim 1. App. Br. 14.
Although Appellant does not provide any citation to the relied-upon
disclosure in Bi of "bubblers for the delivery of precursors," we note that Bi
discloses that light reactive deposition can be performed with gas/vapor
phase reactants having vapor pressures sufficient to introduce desired
amounts of the precursor gas/vapor into a reactant stream. Bi 19. Bi
explains that a "carrier gas can be bubbled through a liquid precursor to
facilitate delivery of a desired amount of precursor vapor." Id.
Similarly, Appellant's Specification describes delivery of gaseous
precursors or reactants into a reaction chamber for formation of desired
product particles using light reactive deposition. Spec. 18-19. The
Specification explains that precursor compositions for gaseous delivery need
to have vapor pressures sufficient to introduce desired amounts of precursor
gas/vapor into a reactant stream, and indicates that a "carrier gas can be
bubbled through a liquid precursor to facilitate delivery of a desired amount
of precursor vapor." Spec. 19, 1. 28-20, 1. 3.
Contrary to Appellant's arguments, the similarities between the
description provided in Bi and Appellant's Specification of using bubblers
for delivery of precursors, further supports, rather than undermines, the
determination that an optical coating having a standard deviation for
refractive index as recited in claim 1 would have naturally flowed from
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following the suggestion stemming from the combined disclosures of Bi and
Sun of forming Sun's waveguide core layer (optical coating) using Bi's light
reactive deposition process.
Appellant argues that the applied prior art references "simply do not
describe what parameters in their process to adjust to change the index of
refraction uniformity," and Appellant contends that the Examiner does not
identify any result-effective variable related to uniformity of index of
refraction. App. Br. 14; Reply Br. 6. Appellant asserts that the index of
refraction discussed in Bi is the average index of refraction, and Appellant
argues that Bi does not discuss index of refraction uniformity and how to
measure the uniformity of the index of refraction. Reply Br. 3. Appellant
contends that adjustment of index of refraction generally does not imply
anything about uniformity of the index of refraction. Reply Br. 5.
However, as discussed above, although Bi does not explicitly disclose
that an optical coating formed according to Bi's light reactive deposition
process has a standard deviation for refractive index over an area of 25
square centimeters of not more than about 0.001 as recited in claim 1, an
optical coating having this property would have naturally flowed from
following the suggestion stemming from the combined disclosures of Bi and
Sun of forming Sun's waveguide core layer (optical coating) using Bi's light
reactive deposition process. Because Appellant does not demonstrate that
the method recited in claim 1 achieves results that would have been
unexpected by one of ordinary skill in the art at the time of Appellant's
invention, Appellant's arguments regarding Bi's lack of explicit disclosure
of measuring and adjusting the uniformity of the index of refraction are
unpersuasive of reversible error.
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We accordingly sustain the Examiner's rejection of claims 1 and 4--15
under 35 U.S.C. § 103(a).
Rejections II and III
Appellant argues that the additional references applied in the
rejections of claims 2, 3, 16, 18, 20, and 21 fail to cure the deficiencies of
Sun and Bi. App. Br. 16-17. Because we are unpersuaded of reversible
error in the Examiner's rejection of claim 1 for the reasons discussed above,
Appellant's position as to these rejections is also without merit.
We accordingly sustain the Examiner's rejections of claims 2, 3, 16,
18, 20, and 21 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejections of claims 1-16, 18, 20, and 21
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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