Ex Parte Djordjev et al

Board of Patent Appeals and Interferences

Aug 7, 2008

10961940 (B.P.A.I. Aug. 7, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KOSTADIN D. DJORDJEV,
CHAO-KUN LIN, and MICHAEL R. T. TAN
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Appeal 2008-2863
Application 10/961,940
Technology Center 2800
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Decided: August 7, 2008
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Before EDWARD C. KIMLIN, TERRY J. OWENS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-11 and 21.
Claims 22 and 23 stand objected to by the Examiner.1 Claim 1 is
illustrative:

1 Appellants incorrectly state at page 5 of the Principal Brief that "[t]he
claims on appeal are claims 1-11 and 21-23."
Appeal 2008-2863
Application 10/961,940

1. An optical device comprising:
a substrate having a surface;
a waveguide that is located upon the surface; and
a resonator that is vertically coupled to the waveguide in a coupling
region of the device, and is located upon the surface.
The Examiner relies upon the following references in the rejection of
the appealed claims:
Holm US 2004/0150043 A1 Aug. 5, 2004
Ma US 2005/0025199 A1 Feb. 3, 2005

Appellants' claimed invention is directed to an optical device
comprising a waveguide and a resonator that is vertically coupled to the
waveguide. Also, the waveguide and resonator are located upon the surface
of a substrate.
Appealed claims 1, 2, 6-11, and 21 stand rejected under 35U.S.C.
§ 103(a) as being unpatentable over Ma. Claims 1-7, 10, 11, and 21 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by Holm.
Appellants do not separately argue any of the claims rejected under
§ 103. Accordingly, claims 1, 2, 6-11, and 21 stand or fall together with
respect to the § 103 rejection. As for the § 102 rejection, Appellants
separately argue claims 3, 4, and 10. Accordingly, claims 1, 2, 5-7, 11, and
21 stand or fall together with respect to the § 102 rejection.
We have carefully reviewed each of Appellants' arguments set forth in
the Principal and Reply Briefs on appeal. However, we find that the
Examiner's rejections are well founded and supported by the prior art
evidence relied upon. Accordingly, we will sustain the Examiner's
rejections for essentially those reasons expressed in the Answer.
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Application 10/961,940

We consider first the Examiner's §103 rejection over Ma. There is no
dispute that Ma discloses an optical switch which comprises a waveguide
and a resonator that is vertically coupled to the waveguide in a coupling
region. It is Appellants' contention that "Ma does not teach or suggest both a
waveguide and a resonator upon the surface of a substrate" (Principal Br. 13,
first para.). Although Figure 4B of Ma depicts waveguides 44 and 46 and
resonator 42 supported by wafer substrate 43 and substrate 41, Appellants
maintain that the Figure "shows a waveguide and a resonator on top of a
wafer, rather than a substrate" (Principal Br. 13, second para.). However,
Appellants' argument is not persuasive because wafer 43 is, in fact, a
substrate and, as acknowledged by Appellants, the waveguide and resonator
of Ma are on top of such wafer or substrate.
Appellants present a different argument in the Reply Brief. In
particular, Appellants submit that "[f]igure 4 of Ma shows a waveguide (44)
that is arranged the surface [sic] of a wafer (43), and a resonator (42) that is
not on the surface of the wafer (43) but is instead arranged on the surface of
a different material (Layer 3) that is on the surface of the wafer (43)" (Reply
Br. 5, third para.). Appellants argue that even if wafer 43 of Ma is
considered a substrate, the reference "fails to disclose that both the
waveguide (44) and the resonator (42) are 'upon the surface of' such wafer
43" (Reply Br., 5, last para.). Appellants note that the "claim element
expressly recites that the waveguide and resonator are upon the 'surface' of
the substrate, rather than merely reciting that these elements are on or
supported by the substrate" (id.).
Appellants' latter argument is not persuasive because it is improperly
premised on the notion that the claim requires the waveguide and resonator
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Application 10/961,940

to be located upon and in contact with the same surface. However, when the
claim language is given its broadest reasonable interpretation, as we must
during ex parte prosecution, the claim only requires that the waveguide and
resonator be upon or over a substrate which supports the elements of the
device. The claim term "upon" does not require contact between the
waveguide or resonator and the surface of the substrate. For example, it can
be reasonably said that a pencil upon a book that is on the surface of a table
is upon the table. Appellants have pointed to no definition in the present
Specification for the term "upon" which requires such contact with the
surface of the substrate. Indeed, it would appear from Figure 2a of the
present Specification that waveguide 201 is not in contact with the surface of
substrate 203 although it is upon the substrate surface. Moreover, as noted
above, Appellants acknowledge in the principal Brief that "Ma shows a
waveguide and a resonator on top of a wafer" (Principal Br. 13, second
para.).
We now turn to the Examiner's § 102 rejection over Holm. Although
there is no dispute that Holm describes an optical device comprising a
waveguide and a resonator that is coupled to the waveguide, it is Appellants'
argument that Figures 29 and 31 of Holm, cited by the Examiner, describe
lateral optical coupling rather than the presently claimed vertical coupling.
However, as set forth by the Examiner and acknowledged by Appellants,
Holm expressly describes the following:
In an alternative embodiment of microresonator device
400, vertical optical couplings can be achieved when the
waveguides 404 and 409 are located below or above an
edge portion of the microresonator 403 and an appropriate
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Application 10/961,940

coupling gap has been formed between the waveguide 404
and 409 and the resonator 403 by the addition of a layer of
material.

Accordingly, contrary to Appellants' argument, we agree with the
Examiner that Holm discloses sufficient detail for the alternative
embodiment of vertical optical coupling to qualify as a description of the
claimed optical device within the meaning of § 102, bearing in mind that the
appealed claims do not require contact between the waveguide or resonator
and surface of the supporting substrate.
Regarding separately argued claims 3 and 4, Appellants have not
refuted the Examiner's reasonable position set forth at pages 10-11 of the
Answer. We note that Appellants' Reply Brief does not address the
Examiner's analysis for separately argued claim 10. We concur with the
Examiner that Holm's disclosure of changing the refractive indices of
waveguides 404 and 409 to control the lateral coupling of the waveguides to
the microresonator reasonably describes varying from a high index
waveguide to a conventional BH waveguide.
As a final point, with respect to the § 103 rejection, we note that
Appellants base no argument upon objective evidence of nonobviousness,
such as unexpected results.
In conclusion, based on the foregoing, the Examiner's decision
rejecting the appealed claims is affirmed.
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Application 10/961,940

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)(iv)(effective
Sept. 13, 2004).
AFFIRMED

cam

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