Ex Parte Chen et al

Patent Trial and Appeal Board

May 13, 2016

12756166 (P.T.A.B. May. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121756, 166 04/07/2010
47394 7590 05/17/2016
PARKER JUSTISS, P,CJALCATEL-LUCENT
PO BOX 832570
RICHARDSON, TX 75083
FIRST NAMED INVENTOR
Long Chen
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.
806801-US-NP 1090
EXAMINER
JORDAN, ANDREW
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
05/1712016 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):
docket@pj-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LONG CHEN, LIMING ZHANG, CHRISTOPHER DOERR,
and NICOLAS DUPUIS
Appeal2015-000515
Application 12/756,166
Technology Center 2800
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-16 and 18-20. We have jurisdiction under 35 U.S.C. § 6(b ).
Claims 17 and 21 are canceled. See App. Br. 21.
We reverse.
1 According to Appellants, the real party in interest is Alcatel-Lucent USA,
Incorporated. App. Br. 3.
Appeal2015-000515
Application 12/756,166
STATEMENT OF THE CASE
The Invention
Appellants' invention relates "to optical devices and, more
specifically, to an optical coupler." Spec. i-f 1. Claims 1, 10, and 16 are
independent. Claim 1 is illustrative of the subject matter on appeal:
1. An apparatus, comprising:
a crystalline inorganic semiconductor substrate, having a
cavity formed therein;
a planar optical waveguide core located over said
substrate such that a first length of said planar optical
waveguide core is directly on and supported by a portion of said
substrate adjacent said cavity; and
a regular array of optical scattering structures located
within a second length of said planar optical waveguide core,
said second length extending over said cavity, and said planar
optical waveguide having a terminal end located over said
cavity.
See App. Br. 18.
Rejections on Appeal
Claims 1, 3, 4, 9, 10, 13, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gunn, III et al. (2004/0156589 Al; published
Aug. 12, 2004) ("Gunn") and Haskell et al. (US 2008/0100176 Al;
published May 1, 2008) ("Haskell"). See Final Act. 3-10.
Claims 8 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gunn, Haskell, and Yokouchi (US 2007/0274638 Al;
published Nov. 29, 2007). See Final Act. 10-12.
Claims 2, 11, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gunn, Haskell, and R. Grover et al., Ultracompact single-
2
Appeal2015-000515
Application 12/756,166
mode GalnAsP-lnP microracetrack resonators, 91 OSA Trends in Optics
and Photonics 1-3 (Paper ITuE5) (2003) ("Grover"). See Final Act. 12-13.
Claims 5, 6, 14, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gunn, Haskell, and Dirk Taillaert et al., A Compact Two-
Dimensional Grating Coupler Used as a Polarization Splitter, 15 IEEE
Photonics Technology Letters 1249-51 (2003) ("Taillaert"). See Final Act.
13-15.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Gunn, Haskell, and Kwon et al. (US 2003/0219208 Al; published Nov. 27,
2003) ("Kwon"). See Final Act. 15-16.
ISSUE
The dispositive issue presented by Appellants' contentions is as
follows:
Does the Examiner err in combining Gunn and Haskell to reject claim
1?
ANALYSIS
The Examiner finds Gunn's integrated optical apparatus, which has a
planar waveguide on a semiconductor substrate and a grating coupler that
includes a gas-filled cavity, teaches or suggests every element of claim 1
except "said planar optical waveguide having a terminal end located over
said cavity." See Final Act. 3--4 (citing Gunn Fig. 27, i-f 193). To teach this
limitation, the Examiner relies on the cantilevered mechanical structure of
Haskell's acoustic wave microsensor (see Final Act. 4; Haskell Fig. 2b; Fig.
I Ob, item 170; i-fi-1138-140), but explains that the flexing operation of
Haskell's cantilevered mechanical structure is collateral to and not included
3
Appeal2015-000515
Application 12/756,166
in the Examiner's rejection (see Ans. 2-3). The Examiner concludes "[i]t
would have been obvious to one having ordinary skill in the art at the time of
[Appellants'] invention to have a terminal end with a grating located over a
cavity along the lines of Haskell in a system according to Gunn ... as an
alternative structure having similar operating characteristics." See Final Act.
4. The Examiner further concludes "[i]t would [have been] obvious to try a
cavity configuration along the lines of Haskell in a system according to
Gunn in order to control/effect the reflection of deviant light rays and direct
them back toward the waveguide grating for coupling into a planar
waveguide." See id. at 5; Gunn i-f 41.
Appellants contend, inter alia, "the applied combination of the cited
portions of Gunn and Haskell is improper" because "one of ordinary skill in
the art at the time of the invention would not be motivated to modify Gunn
with the mechanical structure of Haskell" as "[t]here is no suggestion or
motivation to make the proposed modification." See Reply Br. 2; App. Br.
9-10.
We have considered Appellants' arguments (see App. Br. 6-10; Reply
Br. 2-3) in view of the Examiner's findings (See Final Act. 3-5) and
explanations (see Ans. 2-3) and are persuaded of error. We find nothing in
the Examiner's findings, explanations, or conclusions that would lead, or
otherwise suggest to, one of ordinary skill in the art to apply Haskell's
cantilevered acoustic wave microsensor to Gunn's integrated optical
apparatus in order to improve coupling efficiency between Gunn's planar
optical waveguide and fiber waveguide. We disagree with the Examiner that
the similar operating characteristics between optical and acoustic waves
would have led one of ordinary skill in the art to combine Gunn and Haskell.
4
Appeal2015-000515
Application 12/756,166
See Final Act. 4. Indeed, the mere fact that optical and acoustic waves have
similar operating characteristics does not persuasively evidence that
Haskell's cantilevered acoustic wave microsensor would guide light waves
in a manner similar or equivalent to the claimed "planar optical waveguide
having a terminal end located over said cavity." Further, contrary to the
Examiner's position, we agree with Appellants that "the intentional flexing
structure of [Haskell's cantilevered acoustic wave microsensor] cannot
simply be ignored or discounted" because the ability to flex is the intended
purpose and principle mode of operation of Haskell's cantilevered acoustic
wave micro sensor. See Haskell Abstract ("[A] flexure of the cantilever
produces force-frequency effects measurable by the acoustic wave device.");
see also id. Title ("HIGH SENSITIVITY MICROSENSORS BASED ON
FLEXURE INDUCED FREQUENCY EFFECTS") (emphasis added).
In view of the foregoing, Appellants have persuaded us the Examiner
erred in combining Gunn and Haskell to reject claim 1. Accordingly, we do
not sustain the rejection of claim 1; as well as independent claims 10, 16,
and dependent claims 2-9, 11-15, and 18-20, each of which includes the
same deficiency.
DECISION
The decision of the Examiner to reject claims 1-16 and 18-20 is
reversed.
REVERSED
5