Ex Parte Edlinger et al

Board of Patent Appeals and Interferences

Nov 27, 2001

08751369 (B.P.A.I. Nov. 27, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHANNES EDLINGER and HELMUT RUDIGIER
__________
Appeal No. 2000-0038
Application 08/751,369
___________
ON BRIEF
___________
Before PAK, OWENS and KRATZ, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 10-12, 17, 18, 20, 21, 23-34, 36-41, 43 and 44, which are
all of the claims remaining in the application.
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THE INVENTION
The appellants’ claimed invention is directed toward a
process for making an optical waveguide. Claim 10 is
illustrative:
10. A process for the production of an optical waveguide,
comprising the steps of:
(a) shaping a substrate consisting essentially of organic
material only;
(b) applying at least one intermediate layer by a vacuum
coating process, onto the substrate; and
(c) applying a waveguide layer by means of a reactive
physical vapor deposition (PVD) process, onto the intermediate
layer, the reactive physical vapor deposition process being
reactive DC sputtering.
THE REFERENCE
Heming et al. (Heming) 5,369,722 Nov. 29, 1994
(filed Sep. 18, 1992)
THE REJECTION
Claims 10-12, 17, 18, 20, 21, 23-34, 36-41, 43 and 44 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Heming.
OPINION
We affirm the rejection of claims 10-12, 17, 18, 20, 21, 23-
34, 37, 38, 40, 41, 43 and 44, and reverse the rejection of
claims 36 and 39.
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The appellants state that the claims stand or fall in the
following groups: A) claims 10, 11, 17, 18, 20, 25, 26 and 40;
B) claim 12; C) claims 21, 31 and 32; D) claims 23 and 24;
E) claim 27; F) claim 28; G) claims 29 and 30; H) claims 33
and 34; (I) claim 36; J) claims 37 and 38; K) claim 39;
L) claim 41; and M) claims 43 and 44 (brief, pages 8-9). The
appellants, however, do not provide a substantive argument for
the separate patentability of claim 12. This claim, therefore,
stands or falls with claim 10 from which it depends. Thus, we
limit our discussion to one claim in each group except group B,
i.e., respectively, claims 10, 31, 23, 27, 28, 29, 33, 36, 37,
39, 41 and 43. See In re Ochiai, 71 F.3d 1565, 1566 n.2, 37
USPQ2d 1127, 1129 n.2 (Fed. Cir. 1995); In re Burckel, 592 F.2d
1175, 1178-9, 201 USPQ 67, 70 (CCPA 1979); In re Herbert, 461
F.2d 1390, 1391, 174 USPQ 259, 260 (CCPA 1972); 37 CFR
§ 1.192(c)(7)(1997).
Claim 10
Heming discloses a process for producing an optical
waveguide (col. 1, lines 9-11). The waveguide substrate can be a
synthetic resin or a material having a “high organic proportion”,
i.e., more than 0.1 hydrocarbon group per metallic atom of an
oxide (col. 3, lines 24-26 and 36-43). The substrate preferably
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is a synthetic resin film (col. 4, lines 58-59). In one
preferred embodiment at least one intermediate layer is applied
to the substrate (col. 7, lines 3-6). The intermediate layer can
be applied by any method which is suitable for yielding a compact
layer devoid of column structures, and preferably is applied by a
vacuum coating process (col. 8, lines 44-47; col. 12, lines 51-
59). A waveguide layer is applied to the intermediate layer by
known coating methods, the exemplified methods including ion-
enhanced PVD (col. 6, lines 12-22). It is undisputed that ion-
enhanced PVD methods include reactive DC sputtering.
The appellants argue that Heming does not specifically
disclose forming the waveguide layer by reactive sputtering and
would not clearly have taught one of ordinary skill in the art
which method to use to deposit a waveguide layer onto an organic
substrate material (brief, pages 9-10; reply brief, pages 2-3).
Although Heming does not specifically disclose reactive
sputtering, the disclosed ion-enhanced PVD includes ion-enhanced
sputtering, and the appellants state that ion sputtering is a
form of reactive sputtering (brief, page 11). Moreover, the
appellants acknowledge that reactive DC sputtering was a well
known deposition process at the time of the appellants’ invention
Appeal No. 2000-0038
Application 08/751,369

1 It is axiomatic that our consideration of the prior art
must, of necessity, include consideration of the admitted prior
art. See In re Hedges, 783 F.2d 1038, 1039-40, 228 USPQ 685, 686
(Fed. Cir. 1986); In re Davis, 305 F.2d 501, 503, 134 USPQ 256,
258 (CCPA 1962).
5
(brief, page 15).1 Heming, therefore, would have fairly
suggested, to one of ordinary skill in the art, forming the
waveguide layer by reactive DC sputtering. Because Heming does
not limit the disclosed waveguide layer formation methods to any
particular disclosed substrate material, the reference would have
fairly suggested, to one of ordinary skill in the art, using any
of the disclosed waveguide layer formation methods in combination
with any of the disclosed substrate materials. For this reason
and because ion-enhanced PVD is one of only three exemplified
types of deposition methods (col. 6, lines 16-18), and synthetic
resins are one of only two disclosed types of substrate materials
(col. 3, lines 24-25), Heming would have fairly suggested, to one
of ordinary skill in the art, using a synthetic resin substrate
in combination with waveguide layer formation by ion-enhanced
PVD.
The appellants argue that Heming prefers to deposit the
waveguide layer by PCVD, especially PICVD (col. 12, lines 61-63),
and that in Heming’s examples, only microwave PICVD is used
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(col. 13, lines 45-48) (brief, pages 14-16; reply brief, page 3).
Heming’s disclosure, however, is not limited to the preferred
embodiment or to the examples. See In re Fracalossi, 681 F.2d
792, 794 n.1, 215 USPQ 569, 570 n.1 (CCPA 1982); In re Kohler,
475 F.2d 651, 653, 177 USPQ 399, 400 (CCPA 1973); In re Mills,
470 F.2d 649, 651, 176 USPQ 196, 198 (CCPA 1972); In re Bozek,
416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Instead, all
disclosures in the reference must be evaluated for what they
would have fairly suggested to one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
The disclosures by Heming discussed above would have fairly
suggested, to one of ordinary skill in the art, using reactive DC
sputtering to form a waveguide layer on a synthetic resin
substrate.
The appellants argue that Heming’s preference for PCVD and
PICVD indicates that ion sputtering is not a valuable method for
depositing the waveguide layer (brief, page 15). This argument
is incorrect because Heming teaches that ion-enhanced PVD
processes are effective for forming the waveguide layer (col. 6,
lines 12-18).
The appellants argue that it is not clear why, in view of
the fact that ion sputtering such as reactive DC sputtering was
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known to have the advantages of controllability, high rate of
deposition and rather low cost, Heming would not have disclosed
ion sputtering as a method for forming the waveguide layer
(brief, pages 15-17). The appellants provide no evidence that
ion sputtering has these advantages. The appellants provide only
argument of counsel, and such argument cannot take the place of
evidence. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191,
196 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315, 203 USPQ
245, 256 (CCPA 1979); In re Greenfield, 571 F.2d 1185, 1189, 197
USPQ 227, 230 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405,
181 USPQ 641, 646 (CCPA 1974). Regardless of any benefits of
reactive DC sputtering, Heming’s teaching that ion-enhanced PVD,
which includes reactive DC sputtering, is an effective method for
forming the waveguide layer (col. 6, lines 12-18) would have been
sufficient to have fairly suggested, to one of ordinary skill in
the art, forming the waveguide layer by reactive DC sputtering.
The appellants argue that because their specification
teaches that their process produces a sufficiently critical
waveguide layer despite the fact that an essentially organic
substrate is used, and Heming teaches that such a substrate
introduces its own set of difficulties in achieving a serviceable
waveguide layer, the appellants’ specification provides evidence
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of unexpected results (reply brief, page 3). This argument is
not well taken because the appellants have not provided a side-
by-side comparison, commensurate in scope with the claims, of
their claimed invention with the closest prior art, and have not
explained why the results would have been unexpected by one of
ordinary skill in the art. See In re Baxter Travenol Labs., 952
F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991); De Blauwe,
736 F.2d at 705, 222 USPQ at 196; In re Grasselli, 713 F.2d 731,
743, 218 USPQ 769, 778 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035, 206 USPQ 289, 296 (CCPA 1980); In re Freeman, 474
F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973); In re Klosak, 455
F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972).
The preponderance of the evidence, therefore, indicates that
the process recited in the appellants’ claim 10 would have been
obvious to one of ordinary skill in the art within the meaning of
35 U.S.C. § 103.
Claim 31
Heming discloses that the intermediate layer can be, and in
one embodiment preferably is, SiO2 (col. 8, lines 48-50 and 57-
58). Since the claim recites “at least one of SiO2 and a mixture
of SiO2 and TiO2 and of Si3N4", the appellants’ argument (brief,
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page 17) that Heming does not disclose the recited materials
other than SiO2 is irrelevant.
Claim 23
The appellants argue that Heming does not disclose
depositing the waveguide layer at low temperature using reactive
sputtering (brief, pages 17-18). Heming’s teachings that the
synthetic resin substrate is to be heated to a temperature which
is lower than its glass transition temperature (col. 3, lines 26-
27), and that some of the synthetic resins have long term usage
temperatures below 100ºC (col. 4, lines 25-26 and 51-54), would
have fairly suggested, to one of ordinary skill in the art,
carrying out any of the disclosed waveguide layer formation
processes, including ion-enhanced PVD (col. 6, line 18), at a
sufficiently low temperature, such as a temperature below 100ºC,
to avoid thermally damaging the synthetic resin substrate.
Claim 27
The appellants argue that Heming does not relate the
disclosure of low absorbance of the intermediate layer (col. 8,
lines 37-38) to the substrate characteristics (brief, page 18).
The appellants do not specify in their specification how much
lower the propagation attenuation of the intermediate layer must
be relative to that of the substrate to be “substantially lower”
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Application 08/751,369

2 See Webster’s II New Riverside University Dictionary 1155
(Riverside 1984).
3 The appellants exemplify a particular polyester, i.e.,
polyethylene terephthalate (PET) (specification, page 8, lines 3-
5).
10
as recited in claim 27. Thus, we consider “substantially lower”
to be lower by any considerable amount or degree.2 It reasonably
appears, considering that Heming’s glassy SiO2 intermediate layer
material is among the intermediate layer materials used by the
appellants (specification, page 8, line 12), and that Heming’s
polycarbonate, polymethylmethacrylate, PVC and polyester
substrate materials (col. 4, lines 5-7 and 52) are substrate
materials exemplified by the appellants (specification, page 8,
lines 3-5),3 that Heming’s SiO2 intermediate layer, like that of
the appellants, has a propagation attenuation which is lower to a
considerable degree than that of the synthetic resin substrate
materials.
Claim 28
Heming discloses that the waveguide layer preferably can be
made of TiO2, TiO2-SiO2, ZnO2, Nb2O5, Si3N4 or HfO2 (col. 6,
lines 12-14), all of which are recited in the appellants’
claim 28. The fact that the appellants’ claim 28 recites
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additional materials, as argued by the appellants (brief,
page 18), is irrelevant.
Claim 29
The appellants argue that Heming does not disclose or
suggest selecting a waveguide layer from group (a) in the
appellants’ claim 28 for guiding light having a 400-1000 nm
wavelength (brief, page 18). As discussed above regarding
claim 28, Heming discloses waveguide layer materials which are
among those in group (a) of the appellants’ claim 28. Heming’s
materials and those of the appellants which have the same
composition necessarily are capable of passing light of the same
wavelengths. Thus, the capability of the waveguide layer
material required by claim 29 does not serve to distinguish over
Heming the claimed process for making the waveguide.
Claim 33
The appellants acknowledge that Heming’s intermediate layer
thickness of 10-5,000 nm falls within the scope of at least 5 nm
recited in the appellants’ claim 33, but argue that this
thickness is not disclosed in combination with a waveguide layer
deposited by reactive sputtering (page 19). Heming’s disclosed
intermediate layer thickness, however, is not limited to an
intermediate layer in combination with a waveguide layer formed
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by any particular process (col. 5, line 64 - col. 6, line 2).
Hence, Heming would have fairly suggested, to one of ordinary
skill in the art, using an intermediate layer having the
disclosed thickness in combination with a waveguide layer formed
by any of the disclosed processes including ion-enhanced PVD.
Claim 36
Claim 36 requires sputtering with a DC plasma discharge
supplied by a DC generator, and cyclically separating the
generator from the plasma discharge and simultaneously short
circuiting the plasma discharge. The examiner argues that this
is analogous to the pulsing microwave treatment disclosed by
Heming (col. 13, lines 47-48 and 68). The examiner, however,
provides no support for this argument. The mere speculation
provided by the examiner is not sufficient for establishing a
prima facie case of obviousness. See In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968); In re Sporck, 301 F.2d 686, 690, 133 USPQ 360, 364
(CCPA 1962). Moreover, the examiner has not explained why, even
if these processes are analogous, Heming’s disclosure of pulsed
microwave PICVD treatment would have led one of ordinary skill in
the art to the particular process recited in the appellants’
claim 36.
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Claim 37
The appellants argue that Heming does not disclose varying
the index of refraction of the intermediate layer to produce
different refraction profiles (brief, page 20). The
predetermined course of index of refraction along the thickness
of the intermediate layer required by the appellants’ claim 37,
however, can be any predetermined course including one which does
not vary. Heming reasonably appears to disclose a predetermined
course of index of refraction which does not vary (col. 8,
line 20 - col. 9, line 2).
Claim 39
The appellants’ claim 39 requires that the at least one
intermediate layer is applied such that only a negligible part of
light energy reaches an interface between the intermediate layer
and the substrate. The examiner argues (answer, page 4): “One of
ordinary skill in the art would desire to limit signal loss, and
hence limit the amount of light energy leaving the waveguide
layer. Concerning light reaching the interface of the
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intermediate layer and the substrate, see column 8, lines 21-28.”
The portion of Heming relied upon by the examiner states:
With an increasing thickness of the intermediate layer,
the substrate surface will be increasingly removed from
the region of the transversely damped field of the
wave. Due to the fact that the guided wave, with
adequate thickness of the intermediate layer, will
interact with the substrate surface now merely in its
marginal zone, scattering and absorption losses are
minimized.
Heming teaches that the light absorption of the intermediate
layer is low (col. 8, lines 37-38), and the above excerpt
indicates that light interacts with the substrate surface in its
marginal zone. The examiner has not explained how these
teachings indicate that only a negligible part of light energy
reaches an interface between the intermediate layer and the
substrate. Hence, the examiner has not carried the burden of
establishing a prima facie case of obviousness of the process
recited in the appellants’ claim 39.
Claim 41
The appellants argue that the interaction of the
intermediate layer with the waveguide to reduce the propagation
losses in the waveguide is not clearly disclosed by Heming
(brief, page 20). To the contrary, Heming teaches that
commercially available thermoplastic synthetic resin plates or
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films have too high a surface roughness, and that the
intermediate layer reduces the surface roughness, thereby
reducing propagation losses in the waveguide (col. 7, lines 3-
23).
Claim 43
The appellants argue that Heming does not disclose applying
both the intermediate layer and the waveguide layer by reactive
DC sputtering (brief, page 21). Heming, however, teaches
applying the intermediate layer by ion sputtering (col. 12,
lines 51-55). The appellants do not dispute that this teaching
would have fairly suggested, to one of ordinary skill in the art,
applying the intermediate layer by reactive DC sputtering.
Forming the waveguide layer by reactive DC sputtering would have
been fairly suggested to one of ordinary skill in the art by
Heming as discussed above regarding the rejection of claim 10.
Conclusion
For the above reasons we conclude that the processes recited
in the appellants’ claims 10, 23, 27, 28, 29, 31, 33, 37, 41
and 43 would have been obvious to one of ordinary skill in the
art within the meaning of 35 U.S.C. § 103, and that the examiner
has not established a prima facie case of obviousness of the
processes recited in the appellants’ claims 36 and 39.
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DECISION
The rejection of claims 10-12, 17, 18, 20, 21, 23-34, 37,
38, 40, 41, 43 and 44 under 35 U.S.C. § 103 over Heming is
affirmed, and the rejection of claims 36 and 39 under 35 U.S.C.
§ 103 over Heming is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
)
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PETER F. KRATZ )
Administrative Patent Judge )
TJO/ki
Appeal No. 2000-0038
Application 08/751,369

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Cushman, Darby and Cushman
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Washington, DC 20005-3918
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