Ex Parte Carter et al

Patent Trial and Appeal Board

Nov 15, 2017

13631936 (P.T.A.B. Nov. 15, 2017)

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.
13/631,936 09/29/2012 Jerry Chance Carter IL-12493 3353
86571 7590
LLNL/John P. Wooldridge
Mark H. Lough, Deputy General Counsel
L-703, P.0 Box 808
Livermore, CA 94551
EXAMINER
PENG, CHARLIE YU
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
11/17/2017 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):
llnl-docket@llnl.gov
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERRY CHANCE CARTER, MICHAEL P. CHRISP,
ANASTACIA M. MANUEL, BORIS MIZAIKOFF,
ANDREAS WILK, and SEONG-SOO KIM
Appeal 2016-003962
Application 13/631,936
Technology Center 3600
Before STEVEN D.A. McCARTHY, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 1—3, 5—19, 21, 23—33, and 36-40, under 35 U.S.C.
§ 103(a), as unpatentable over Depeursinge (US 2008/0231857 Al;
published Sept. 25, 2008) and Youmans (US 6,018,390; issued Jan. 25,
2000).3 We have jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify the real party in interest as Lawrence Livermore
National Security, LLC.; and the United States of America as represented by
the United States Department of Energy. Br. 2.
2 Appeal is taken from the Final Office Action dated July 23, 2014 (“Final
Act.”).
3 On this record, the Examiner’s objection to the drawings is a petitionable,
Appeal 2016-003962
Application 13/631,936
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1 and 19 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A substrate integrated hollow waveguide, comprising:
at least one substrate layer having a combined light input
and output port;
a hollow channel formed in one or more layers of said at
least one substrate layer, wherein said hollow channel extends
from said combined light input and output port to a distal
location, wherein said hollow channel is configured in an
inwardly winding spiral pattern, wherein a surface of said hollow
channel is reflective to one or more predetermined wavelengths
of light; and
a reflector operatively and fixedly placed at said distal
location, wherein light entering said port will propagate in said
hollow channel along said inwardly winding spiral pattern until
said light reaches said reflector, wherein said light will be
reflected by said reflector to propagate in said hollow channel
back to said port, wherein said light will exit said port.
ANALYSIS
Rejection I
Independent claims 1 and 19, and dependent claims 2, 3, 5—9, 14, 17, 18, 21,
23—33, and 36—40
Regarding independent claim 1, the Examiner finds, inter alia, that
Depeursinge teaches a substrate integrated hollow waveguide, wherein
not appealable, matter. See Ex parte Frye, 94 USPQ2d 1072, 1078 (BPAI
2010) (precedential) (for discussion of petitionable matters verses appealable
matters).
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Depeursinge’s sampling cell 2 corresponds to the claimed substrate layer,
and Depeursinge’s guiding structure corresponds to the claimed hollow
channel formed in one or more layers of the substrate layer, as claimed.
Final Act. 4 (citing Depeursinge 148, Figs. 6, 7). Notably, Depeursinge’s
Figure 6 depicts guiding structure 18, as compared to an embodiment
depicting a spiral-shaped guiding structure 22 in Depeursinge’s Figure 7.
See Depeursinge H 148, 149, Figs. 6, 7.
The Examiner determines that Depeursinge does not teach “using a
combined input/output port by using a reflector at the distal location of the
spiral but points to designs of folding optical paths.” Final Act. 4 (citing
Depeursinge, Fig. 8); see also Depeursinge 1150 (“FIG. 8 shows the sensor
system with a folded optical light beam path, the light beam path being
folded by means of one or more micro-mirrors (23) reflecting the light
beam.”). The Examiner relies on Youmans for teaching “‘[a]t one end of the
optical waveguide coil, a mirror reflects the light back into the coil,”’ such
that “‘the distance traveled by the light entering the optical waveguide coil is
doubled since the light travels from a first end to a second [end], is reflected
back to travel from the second to the first end.’” Id. 4—5 (citing Youmans
2:12—17). The Examiner reasons that it would have been obvious to
“modify Depeursinge’s spiral hollow waveguide sensor by placing the
reflector at the distal end and thus create the combined input/output port as
suggested by Youmans in order to increase sensitivity without degrading
signal strength or an increase in size.” Id. (citing Youmans 2:18—22).
Appellants argue that Depeursinge’s sampling cell 2 “is not a
substrate layer,” but “an open chamber.” Br. 5 (citing Depeursinge 1137,
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Application 13/631,936
Fig. 1); see also id. at 6 (citing Merriam Webster Online Dictionary for
defining “a cell to be a small enclosed cavity or space.”).
The Examiner responds that the Merriam Webster Online Dictionary
defines a substrate, ‘“by way of ‘substratum,’ as an underlying support
which “does not require the substrate to not be a hollow structure.” Ans. 3.
The Examiner determines that because Depeursinge’s sampling cell “is a
support for all of a medium (1), a lensed fiber (13a), a light receiver (9), a
membrane (12) and a sampling area (20), the sampling cell can be
reasonably interpreted as a substrate layer.” Id.
The claim term “substrate layer” is not disclosed in Appellants’
Specification, except as recited in the claims as originally filed. The
Specification states that “[t]he following terms are intended to have the
following general meanings as they are used herein,” and defines “substrate”
as “a material/solid having a rigid or semi-rigid surface.” Spec. ^fl[ 36, 43.
Depeursinge discloses “a sensor system . . . comprising] an optical
sampling cell holding a sampling chamber.” Depeursinge 113.
Depeursinge defines the term “optical sampling cell” as “a body for holding
a sample for analysis by optical means,” wherein “the term ‘cell’ relates to
the any [sic] sampling chamber within the cell as well as to the body of the
sampling cell.” Id. 122 (emphasis added). Moreover, Depeursinge
separately defines the “sampling chamber” (i.e., the “open chamber”
referred to by Appellants) disclosing that “‘sampling chamber’ means a
chamber within the sampling cell for receiving a sample comprising the
chemical substance,” wherein “[t]he sampling chamber has a certain volume
and may be void, or it may be filled with a porous material which allows
relatively unhindered diffusion of the sample of gas.” Id. 123. Thus, a
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Application 13/631,936
preponderance of the evidence supports the Examiner’s finding that
Depeursinge’s sampling cell 2 is a body—and not merely an open chamber,
as argued by Appellants, within which at least a chamber (i.e., a sampling
chamber) can be formed.
Further, Depeursinge discloses that the term “integrated with the
optical sampling cell” means that “the light emitter and/or the receiver may
be held by the sampling cell... or it may be fully integrated therewith, i.e. [,]
manufactured as one single structure, e.g.[,] on one single wafer board” (id.
1114 (emphasis added)), and further, that “the sampling cell may be a
semiconductor, like silicon” (id. 1115 (emphasis added)). Cf Spec. 1 86
(“FIG. 13 is a diagrammatic representation of a substrate-integrated hollow
waveguide sensor 400 wherein the light source 410, meandering waveguide
channel 420, detector 430 are fabricated by way of monolithic silicon
micromachining.”). We determine that the use of terms like “wafer” and
“board” to describe Depeursinge’s sampling cell 2 also support the
Examiner’s finding that Depeursinge suggests that sampling cell 2 is a
substrate layer (i.e., rigid or semi-rigid, as required by the definition of
“substrate” that is disclosed in the Specification).
Thus, Appellants’ arguments do not apprise us of error in the
Examiner’s finding that Depeursinge’s sampling cell 2 is “at least one
substrate layer,” as claimed.
Appellants also argue that Depeursinge’s guiding structure 18, 22
cannot correspond to the claimed “hollow channel formed in one or more
layers of said at least one substrate,” as set forth supra, because
Depeursinge’s sampling cell 2 “is not a substrate.” Br. 7. Appellants submit
that because Depeursinge’s sample cell 2 is an open cavity, rather than a
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substrate layer, as claimed, “[t]he un-numbered horizontal lines or the
numbered ducts 21 of the cross-sectional view of Figure 6 must be the
means for support; however, the figure cannot be interpreted to mean that
the guiding structure 18 is formed in one or more layers.” Id.
The Examiner responds that “[u]sing a solid substrate is the industrial
standard in the art, and [that] there is nothing in Depeursinge that suggests
suspending a guiding structure within an empty chamber would be
advantageous.” Ans. 4.
As discussed supra, we are not apprised of error in the Examiner’s
finding that Depeursinge’s sampling cell 2 (or body) meets the claim
recitation of a “substrate layer.” Further, a preponderance of the evidence
does not support Appellants’ interpretation of Depeursinge’s Figure 6,
wherein guiding structure 18 is suspended, rather than formed, within
sampling cell 2. Depeursinge discloses that
FIG. 6 shows the sensor system in which the guiding structure is
embedded in the sampling cell and connected to the sampling
area (20) by one or several duct(s) (21). The purpose of the
duct(s) is to let the chemical substance diffuse or flow, from the
collecting area, along the duct(s), to the sampling chamber for
sensing interaction.
Depeursinge 1148 (emphasis added). Thus, preponderance of the evidence
supports the Examiner’s finding that sampling cell 2 is a substrate layer, as
claimed, and that, therefore, ducts 21 are required to conduct fluid flow
within the substrate. Additionally, it is unclear why sampling area 20 would
be separately depicted and described in the event sampling cell 2 was an
open chamber (as opposed to a body or a substrate layer), as argued by
Appellants. See, e.g., id. 1148, Fig. 6. In sum, Appellants’ arguments do
not apprise us of error in the Examiner’s finding that Depeursinge’s guiding
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structure is a hollow channel formed in a substrate layer (i.e., Depeursinge’s
sampling cell 2), as claimed.
Appellants argue that Youmans’ waveguide “is a solid core fiber and
is not ‘formed’ in the substrate.” Br. 10. However, the Examiner correctly
responds that Youmans was relied on for disclosing a mirror for reflecting
light back into a coil at one end (i.e., an input/output port) of an optical
waveguide, whereas Depeursinge was relied upon for teaching a hollow
channel formed in a substrate layer, as claimed. Ans. 4.
Appellants also argue that Youmans “fails to teach that light entering
the combined input and output port will propagate in a hollow channel along
an inwardly winding spiral pattern until the light reaches the reflector,
wherein the light will be reflected by the reflector to propagate in the hollow
channel back to the port,” as claimed. Br. 10. However, Appellants’ mere
recitation of the claim language does not apprise us of errors in the
Examiner’s findings or reasoning. See 37 C.F.R. § 41.37(c)(l)(iv) (2013)
(“A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); see also In
re Lovin, 652 F.3d 1349, 1356—57 (Fed. Cir. 2011) (holding that “the 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”).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Appellants chose not to present separate arguments for the
patentability of independent claim 19 and claims 2, 3, 5—9, 14, 17, 18, 21,
and 23 40, which depend from independent claims 1 and 19. Br. 5—11.
Therefore, we also sustain the Examiner’s rejection of claims 2, 3, 5—9, 14,
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17-19, 21, and 23^10.
Dependent claims 10 and 11, and claims 12, 15, and 16 depending
therefrom
Claim 10, which depends from independent claim 1, recites “wherein
said at least one substrate layer comprises a first layer and a second layer,
wherein said first layer comprises said channel, wherein said second layer
covers said first layer and said channel.” Br. 13 (Claims App.). Claim 11,
which also depends from independent claim 1, similarly recites “wherein
said at least one substrate layer comprises a first layer and a second layer,
wherein said second layer comprises said channel.” Id. at 14 (Claims App.).
The Examiner finds that the horizontal line present in the cross-
sectional view of Depeursinge’s Figure 6 depicts two layers of sampling cell
top and bottom layers of sampling cell 2. Ans. 4; see also Final Act. 6.
Appellants argue that (i) “there is no clear teaching that the guiding
structure is formed in two layers because the guiding structure 18 is placed
within the cell 2,” as argued supra', (ii) “the horizontal lines in the cross-
sectional view of Figure 6 cannot be interpreted to be a separation of layers;”
and (3) “there is no indication that the guiding structure 18 is other than a
single integral structure.” Br. 10—11.
The cross-sectional view of Depeursinge’s Figure 6 is reproduced
below.
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Application 13/631,936
21
18
The cross-sectional view of Depeursinge’s Figure 6 “shows a schematic of
the sensor system with an embedded guiding structure [18] and ducts [21].”
Depeursinge 1130. We determine that a preponderance of the evidence
supports the Examiner’s finding that sampling cell 2 (i.e., the claimed “at
least one substrate layer,” as discussed supra) comprises a first layer and a
second layer, as separated by the horizontal line depicted in Depeursinge’s
Figure 6 (cross-sectional view), and that Depeursinge’s Figure 6 (cross-
sectional view) depicts guiding structure 18 as discussed supra (i.e., the
claimed channel) as being as comprised in either layer, as required by claims
10 and 11. Further, Depeursinge’s Figure 6 (cross-sectional view) depicts
the other layer (i.e., the claimed second layer) as “covering” the layer
comprising the channel, as required by claim 10.
Accordingly, we sustain the Examiner’s rejection of claims 10 and 11
and claims 12, 15, and 16 depending therefrom.
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Dependent claim 13
Claim 13, which ultimately depends from independent claim 1, recites
“wherein said at least one substrate layer further comprises a third layer that
covers said second layer and said channel.” Br. 14 (Claims App.).
The Examiner finds that Depeursinge’s membrane 12 corresponds to
the claimed third layer. Final Act. 6.
Appellants argue that Depeursinge’s guiding structure 18 “is not
formed in [Depeursinge’s] membrane 12.” Br. 11.
Appellants’ argument does not apprise us of error in the Examiner’s
findings because claim 13 does not require guiding structure 18 (i.e., the
claimed channel) to be formed in membrane 12 (i.e., the claimed third
layer), but rather, that the third layer is comprised in the substrate layer and
covers the second layer and channel. See Ans. 4—5.
Accordingly, we sustain the Examiner’s rejection of claim 13.
DECISION
The Examiner’s rejection of claims 1—3, 5—19, 21, 23—33, and 36-40
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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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