Ex Parte Faraone et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201410507015 (P.T.A.B. Feb. 27, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LORENZO FARAONE, JOHN MARCEL DELL, CHARLES MUSCA, JAREK ANTOSZEWSKI, and KEVIN JAMES WINCHESTER ____________ Appeal 2011-011190 Application 10/507,015 Technology Center 2800 ____________ Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and KRISTINA M. KALAN, Administrative Patent Judges. KALAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011190 Application 10/507,015 2 Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 26-35 and 61-63. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE The invention relates to tunable cavity resonators utilizing micro electromechanical systems (MEMS) structures in the form of deformable suspended membranes suitable for, but not limited to, photonic purposes involving infrared (lR) electromagnetic radiation, and a method for fabricating the same. Spec. 1, ll. 4-8. Representative independent claims 26 and 61, reproduced below from the Claims Appendix section of the Appellants’ Brief, are illustrative of the subject matter on appeal: Claim 26: A tunable cavity resonator comprising: a substrate; a moveable membrane disposed in substantially parallel relationship to said substrate and suspended relative thereto at the periphery of the membrane by a support structure; a pair of reflectors, one being a first reflector layer disposed in fixed relationship upon the substrate and the other being a second reflector layer disposed on the suspended deformable membrane to form a resonant cavity, the reflectors being disposed a cavity length from each other; the membrane and one reflector being shaped in accordance with a prescribed membrane geometry; and a pair of electrodes either being constituted by the reflectors or being juxtaposed therewith, one electrode with the one reflector and the other electrode with the other reflector; 1 Appellants identify the Real Party in Interest in this appeal as The University of Western Australia, an entity of the country of the Australia. Appellants’ Brief (App. Br.) filed January 31, 2011, at 3. Appeal 2011-011190 Application 10/507,015 3 wherein the suspended moveable membrane is of substantially uniform thickness and has an intrinsic stress to permit electrostatic displacement of the membrane over distances for tuning in the infrared band using voltages applied to the electrodes commensurate with read out integrated circuit electronics associated with the resonator, and wherein the intrinsic stress of the membrane is an intrinsic tensile stress adapted to be compensated by a compressive stress applied thereto such that the resultant stress in the membrane is substantially zero or sufficiently low to permit said electrostatic displacement. Claim 61: A tunable cavity resonator comprising: a substrate; a moveable membrane disposed in substantially parallel relationship to the substrate and suspended relative thereto at the periphery of the membrane by a support structure; a pair of reflectors, one being a first reflector layer disposed in fixed relationship upon the substrate and the other being a second reflector layer disposed on the suspended deformable membrane to form a resonant cavity, the reflectors being disposed a cavity length from each other; and a pair of electrodes either being constituted by the reflectors or being juxtaposed therewith, one electrode with the one reflector and the other electrode with the other reflector; wherein the suspended moveable membrane is of substantially uniform thickness and has an intrinsic stress to permit electrostatic displacement of the membrane for tuning in the infrared band using voltages applied to the electrodes, and wherein the intrinsic stress of the membrane is an intrinsic tensile stress adapted to be compensated by a compressive stress applied thereto such that the resultant stress in the membrane is substantially zero or sufficiently low to permit the electrostatic displacement. App. Br. 20-21, 22-23, Claims App'x. The Examiner maintains, and Appellants appeal, the following rejections: Appeal 2011-011190 Application 10/507,015 4 I. Claims 26-30, 32, 34, and 61 under 35 U.S.C. § 102(e) as anticipated by Tayebati et al., U.S. Patent No. 6,438,149 B1, issued on August 20, 2002 (“Tayebati”); II. Claim 31 under 35 U.S.C. § 103(a) as obvious over Tayebati in view of Lipson et al., U.S. Patent No. 6,567,209 B2, issued May 20, 2003 (“Lipson”); III. Claim 33 under 35 U.S.C. § 103(a) as obvious over Tayebati in view of Carey et al., U.S. Patent No. 6,277,696 B1, issued August 21, 2001 (“Carey”); IV. Claim 35 under 35 U.S.C. § 103(a) as obvious over Tayebati; and V. Claims 62 and 63 under 35 U.S.C. § 103(a) as obvious over Tayebati in view of Sirbu et al., U.S. Patent Publication No. 2002/0131458 A1, published September 19, 2002 (“Sirbu”). ANALYSIS After careful consideration of the respective positions of the Examiner and Appellants, we find a preponderance of the evidence supports the Examiner’s rejections. We will sustain the Examiner’s rejections for the reasons expressed in the Examiner’s Answer mailed April 12, 2011 (“Ans.”) with the comments below added for emphasis.2 2 For purposes of this appeal, to the extent that the claims on appeal are separately argued, we will address them separately consistent with 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-011190 Application 10/507,015 5 Section 102 The factual determination of anticipation requires the disclosure in a single reference of every element of the claimed invention, either explicitly or inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Anticipation by a prior art reference does not require that the reference recognize either the inventive concept of the claimed subject matter or the inherent properties that may be possessed by the prior art reference. See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 633 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987). The Examiner finds that Tayebati discloses the tunable cavity resonator of claims 26-30, 32, 34, and 61. Ans. 4-5. Appellants argue that Tayebati is not concerned with providing a tuning cavity resonator having a membrane which can be displaced over large distances using low voltages. App. Br. 12-13. Appellants also argue that Tayebati teaches away from the resultant stress in the membrane being substantially zero, id. at 13; and that the Examiner’s argument that the resultant stress in Tayebati’s planar tunable filter is zero is incorrect. Id. at 14-15. The Examiner responds that Tayebati does not teach away, and regardless, Tayebati teaches stress “sufficiently low to permit electrostatic displacement” as claimed in claim 26. Ans. 7. The Examiner further finds that Tayebati also discloses a method of making a planar tunable filter, and because the planar membrane is substantially flat, the resultant stresses in that planar membrane can be described as substantially zero. Id. at 8. With respect to Appellants’ assertion that Tayebati is not concerned with providing a tuning cavity resonator having a membrane which can be Appeal 2011-011190 Application 10/507,015 6 displaced over large distances using low voltages, Tayebati nevertheless discloses all the elements of claim 26 as found by the Examiner. As stated by Appellants, App. Br. 12, “there is no mention of the tuning voltages required;” either in Tayebati or Appellants’ claims. The large distances and low voltages argued by Appellants are not part of the claims before us on appeal. Arguments on appeal must be commensurate in scope with the actual claim language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). A reference teaches away only if a person of ordinary skill, upon reading the reference, would be discouraged from following the path that was taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “We will not read into a reference a teaching away . . . where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Tayebati describes the manufacturing process of its curved DBRs, including the supporting membrane, in detail. Tayebati, col. 6, l. 60-col. 7, l. 25; Ans. 7. The Examiner finds that the stress described in the foregoing passage “is introduced exclusively during the formation process” and is “not present in the device’s normal operating environment.” Ans. 7. Appellants do not rebut this finding, nor do they present evidence to rebut the Examiner’s finding that a planar membrane would have a resultant stress of substantially zero. Even so, the language of claim 26 is written in the alternative, such that the “the resultant stress in the membrane is substantially zero or sufficiently low to permit said electrostatic displacement.” Examiner reasonably finds that even if Tayebati does not teach that the resultant stress in the membrane is substantially zero, the Appeal 2011-011190 Application 10/507,015 7 resultant stress is nevertheless “sufficiently low to permit electrostatic displacement.” Id.; Tayebati, col. 9, ll. 55-65. Section 103 The Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner finds that Lipson discloses a pair of supports formed of ZnS as claimed in claim 31, Ans. 5; Carey discloses a substrate comprising MCT as claimed in claim 33, id. at 5-6; one of ordinary skill would have been motivated to combine Tayebati’s electrode functions into the reflectors as claimed in claim 35, id. at 6; and Sirbu discloses a DBR membrane which is substantially flat as claimed in claims 62 and 63. Id. Appellants argue that the rejection of claims 62 and 63 over Tayebati and Sirbu is incorrect, as modification of the confocal cavity tunable filter disclosed by Tayebati to a planar tunable filter as suggested by the Examiner would fail to have the features of claims 62 and 63. App. Br. 17-19. The Examiner responds that the “principle of operation of the device of Tayebati is the tunable Fabry Perot cavity filter design which allows for electrostatic displacement of the reflector membrane in order to tune the wavelength filtering.” Ans. 9. Providing Tayebati with Sirbu’s planar membrane instead of Tayebati’s curved membrane, the Examiner finds, Appeal 2011-011190 Application 10/507,015 8 would not change the principle of operation, as it would merely filter the incident wavelengths without the focusing feature. Id.3 We find that the Examiner has provided a rational underpinning for the rejection of claims 62 and 63 over Tayebati and Sirbu, and that the preponderance of the evidence favors the Examiner’s determination of obviousness. We have considered Appellants’ remaining arguments and find none that warrant reversal of the Examiner’s § 103(a) rejection of the claims on appeal over the prior art. We find the Examiner has provided sufficient reasoning with rational factual underpinning to support his obviousness conclusion. ORDER Upon consideration of the record, and for the reasons given above and in the Answer, it is ORDERED that the decision of the Examiner rejecting claims 26-35 and 61-63 is affirmed; and FURTHER ORDERED that 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) (2010). AFFIRMED cdc 3 Tayebati states: “it is also to be appreciated that the tunable filter, and/or the tunable VCSEL, can be formed with a top distributed Bragg reflector having a planar configuration, without departing from the scope of the present invention.” Tayebati, col. 4, ll. 1-4. Copy with citationCopy as parenthetical citation