Ex Parte Hossein-Zadeh et alDownload PDFPatent Trial and Appeal BoardSep 21, 201512359897 (P.T.A.B. Sep. 21, 2015) Copy Citation 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. 12/359,897 01/26/2009 Mani Hossein-Zadeh CIT-4846 5322 70140 7590 09/22/2015 MILSTEIN ZHANG & WU LLC 2000 Commonwealth Avenue, Suite 400 NEWTON, MA 02466-2004 EXAMINER LI, SHI K ART UNIT PAPER NUMBER 2637 MAIL DATE DELIVERY MODE 09/22/2015 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 MANI HOSSEIN-ZADEH and KERRY J. VAHALA _____________ Appeal 2013-008334 Application 12/359,8971 Technology Center 2600 ______________ Before JASON V. MORGAN, CARL L. SILVERMAN, and MONICA S. ULLAGADDI, Administrative Patent Judges. ULLAGADDI, Administrative Patent Judge DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–7. App. Br. 10. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants’ Appeal Brief identifies the real party in interest as California Institute of Technology. App. Br. 2. Appeal 2013-008334 Application 12/359,897 2 STATEMENT OF THE CASE Appellants’ invention relates to a microtoroid optomechanical oscillator. Claim 1. Independent claim 1 is illustrative of the subject matter on appeal and is reproduced below. 1. An all-optical RF frequency converter, comprising: a microtoroid optomechanical oscillator configured to provide a RF local oscillation frequency and configured to provide a RF mixing functionality, said microtoroid optomechanical oscillator having an optical input port configured to receive an optical signal having an optical frequency carrier and an RF frequency sub-carrier that carries a lower frequency single-tone, modulated thereon, and an optical output port configured to provide an optical signal modulated with said low frequency single- tone without said RF carrier. App. Br. 33. Rejections at Issue Claim 1 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Maleki (US 2008/0075464 A1; Mar. 27, 2008) and Smith (US 2008/0159683 A1; July 3, 2008).2 Final Act. 2. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Maleki, Smith, and Ilchenko (US 2005/0123306 A1; June 9, 2005). Id. at 3. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Maleki, Smith, and Montgomery (US 7,415,178 B2; Aug. 19, 2008).3 Id. at 3–4. 2 Maleki was filed on Sept. 1, 2007, and Smith was filed on Dec. 27, 2006. 3 Montgomery was filed on Aug. 21, 2006. Appeal 2013-008334 Application 12/359,897 3 Claims 5–7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Maleki, Smith, and Kippenberg (US 7,982,944 B2; July 19, 2011).4 Id. at 4. Dispositive Issue Did the Examiner err in concluding the combination of Maleki and Smith discloses or renders obvious the “microtoroid optomechanical oscillator” as claimed in Appellants’ independent claim 1? ANALYSIS The Examiner cites Figure 2 of Maleki as teaching “a frequency converter comprising a microresonator” and Figure 9 as teaching “extract[ing] a lower baseband signal without the RF.” Final Act. 2. The Examiner cites Smith at paragraph 81 to teach a toroidal shape for the microresonator and concludes it would have been obvious to one of ordinary skill in the art to use the toroidal shape described in Smith because “there are a finite number of choices and choosing one over the others would have been a design choice.” Id. Appellants argue Figure 2 of Maleki includes “more than microresonator 130, also described as ‘tunable optical filter 130’” and assert paragraph 27 of Maleki, which describes other elements of Figure 2, in support of the contention that “optical filter 130 alone is not sufficient to perform the up conversion or down conversion.” App. Br. 14–15 (emphasis omitted). Maleki describes an optical coupler 140, downstream from the optical filter 130, which combines laser beams 192 and 194 to produce a combined beam 195, as well as an optical detector 150 that converts 4 Kippenberg claims priority to provisional application no. 60/916,045, which was filed on May 4, 2007. Appeal 2013-008334 Application 12/359,897 4 received light into a receiver output signal having a frequency that is based on detecting the beat between laser beams 192 and 194. Maleki ¶ 27. The Examiner relied on Maleki’s microresonator 130 as the sole structural element of claim 1, as evidenced by the Examiner’s failure to discuss other elements in Maleki’s Figure 2. Final Act. 2. That is, the Examiner did not rely on a combination of elements to teach or suggest the claimed microtoroidal optomechanical oscillator. See id. Notably, the Examiner did not rely on optical coupler 140 and optical detector 150 even though these elements together with microresonator 130, rather than microresonator 130 alone, perform the frequency conversion discussed above (see Maleki ¶ 27). Irrespective of whether Maleki, as a whole, discloses or renders obvious the claimed functionality, the Examiner’s findings did not show the cited microresonator 130 is capable of performing the functional limitations recited in claim 1 or that it would have been obvious to modify microresonator 130 to include such capabilities. For the reasons discussed above, Appellants have persuaded us the Examiner erred in concluding the combination of Maleki and Smith discloses or renders obvious the “microtoroid optomechanical oscillator” recited in Appellants’ independent claim 1. We reach a similar conclusion with respect to claims 2–7, which depend from claim 1. DECISION The decision of the Examiner to reject claims 1–7 under 35 U.S.C. § 103(a) is reversed. REVERSED lv Copy with citationCopy as parenthetical citation