11960017 (P.T.A.B. Mar. 21, 2014)

Ex Parte Chen et al

Patent Trial and Appeal BoardMar 21, 2014

11960017 (P.T.A.B. Mar. 21, 2014)

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. 11/960,017 12/19/2007 Young-Kai Chen CHEN 55-20-15-9 (LCNT/129 3752 46363 7590 03/21/2014 WALL & TONG, LLP/ ALCATEL-LUCENT USA INC. 25 James Way Eatontown, NJ 07724 EXAMINER LEE, HWA S ART UNIT PAPER NUMBER 2886 MAIL DATE DELIVERY MODE 03/21/2014 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 YOUNG-KAI CHEN, SANJAY PATEL, MAHMOUD RASRAS, and KUN-YII TU ____________ Appeal 2012-003531 Application 11/960,017 Technology Center 2800 ____________ Before LINDA M. GAUDETTE, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-003531 Application 11/960,017 2 Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1 finally rejecting claims 11-17 and 19-30.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The invention “generally relates to an apparatus and method for automatic calibration of optical devices.” (Spec.3 1:10-11.) The Examiner maintains the following grounds of rejection under 35 U.S.C. § 103(a) (Ans.4 5-11): 1. claims 11-17 and 19 are rejected as unpatentable over Ilchenko et al. (US 7,184,451 B2, patented Feb. 27, 2007) in view of Chen (US 7,627,203 B2, patented Dec. 1, 2009) and Maleki et al. (US 7,460,746 B2, patented Dec. 2, 2008); 2. claims 20-25 are rejected as unpatentable over Ilchenko, Chen, and Maleki, further in view of Yamazaki (US 2006/0222038 A1, published Oct. 5, 2006); and 3. claims 26-30 are rejected as unpatentable over Ilchenko, Chen, and Maleki, further in view of Youngquist et al. (US 4,818,064, patented Apr. 4, 1989). Appellants argue the appealed claims as a group. (See App. Br. 22- 23.) Accordingly, dependent claims 12-17 and 19-30 will stand or fall with independent claim 11, 37 C.F.R. § 41.37(c)(1)(vii), which is reproduced below from the Claims Appendix to the Appeal Brief: 1 Final Office Action mailed Apr. 18, 2011. 2 Appeal Brief filed Oct. 3, 2011 (“App. Br.”). 3 Specification filed Dec. 19, 2007. 4 Examiner’s Answer mailed Nov. 25, 2011. Appeal 2012-003531 Application 11/960,017 3 11. A method of calibrating a tunable optical device formed upon a substrate of an optoelectronic planar structure, the substrate further including an input optical waveguide for coupling input optical signal to said tunable optical device and an output optical waveguide for providing output optical signal from said tunable optical device, the method comprising: providing on said substrate an optical source coupled to the input optical waveguide and controllably providing thereto an optical calibration signal, an optical detector coupled to the output optical waveguide, and an electronic controller, the optical device having at least one tuning element for varying a characteristic of the device; and operating the controller to: (a) cause said optical source to provide said calibration signal to said input optical waveguide, (b) receive from said optical detector measurements of an intensity of a resulting optical signal at said output waveguide, and (c) adjust a parameter of the tuning element of the tunable optical device to vary thereby the characteristic of the device until said intensity measurement is proximate a desired intensity measurement. We have fully considered the arguments advanced by Appellants in the Appeal and Reply Briefs, but are not persuaded of error in the Examiner’s conclusion of obviousness for the reasons expressed in the Answer. We add the following: Appellants argue the Examiner failed to establish proper motivation to combine Ilchenko, Chen, and Maleki because “the Examiner’s supposed motivation for combining the references has nothing to do with ‘calibration’ and in particular ‘calibration of the tunable resonators.’” (App. Br. 21.) “[M]otivation to modify a prior art reference to arrive at the claimed invention need not be the same motivation that the patentee had.” Alcon Appeal 2012-003531 Application 11/960,017 4 Research, Ltd. v Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 402, 420 (2007) (stating that it is error to look “only to the problem the patentee was trying to solve”)); see also In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007) (explaining that a reference’s teachings and its obvious variants are relevant prior art, even if the reference addresses a problem which differs from that addressed by a patent applicant). As explained by the Examiner (Ans. 21- 22), this argument fails to show error in the facts and reasons relied on by the Examiner in support a finding of motivation to combine the references. Appellants also argue “Maleki’s calibration approach is not equivalent to the calibration of the tunable resonators as claimed.” (App. Br. 17; see also Reply Br.5 4.) During examination, claim terms are given their broadest reasonable construction consistent with the Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). As observed by the Examiner (Ans. 18-19), Appellants’ argument appears to be based on a contention that “calibration,” as recited in claim 11, is limited to “monitoring the transmittance of the signal intensity through the waveguide structure 120 as a function of the heater powers applied to the phase shifter 112 and/or the tunable coupler 102” (Spec. 4:10-12, cited in App. Br. 15- 16). We agree with the Examiner (see Ans. 19) that this narrow claim interpretation is not supported by the Specification (see, e.g., Spec. 14:17-20 (“The phase of the resonator can be obtained based on the phase shift measurements as a function of heater power applied to the phase shifter (or other appropriate parameters of the phase shifter, depending on the tuning 5 Reply Brief filed Dec. 14, 2011. Appeal 2012-003531 Application 11/960,017 5 mechanism).”) or Claims (see, e.g., dependent claim 206 (“wherein said phase shifter is responsive to a heater controlled by said controller via a heater”). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED cdc 6 See In re Tanaka, 640 F.3d 1246, 1250 (Fed. Cir. 2011) (“Claims of narrower scope can be useful to clarify the meaning of broader, independent claims under the doctrine of claim differentiation.”).