Ex Parte Hunter et al

Patent Trial and Appeal Board

Oct 29, 2012

11649801 (P.T.A.B. Oct. 29, 2012)

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.
11/649,801 01/05/2007 Susan Hunter 00765.12.0002 7090
22506 7590 10/29/2012
Vedder Price, PC
1401 I Street, NW
Suite 1100
Washington, DC 20005
EXAMINER
STAFFORD, PATRICK
ART UNIT PAPER NUMBER
2828
MAIL DATE DELIVERY MODE
10/29/2012 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 SUSAN HUNTER, IAN R. REDMOND, JAMES JENSEN,
KEVIN R. CURTIS, and WILLIAM L. WILSON
____________

Appeal 2010-001238
Application 11/649,801
Technology Center 2800
____________

Before JOSEPH F. RUGGIERO, BRADLEY W. BAUMEISTER, and
JENNIFER S. BISK, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-25, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed Dec. 3, 2008), the Answer (mailed Apr. 6,
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2
2009), and the Reply Brief (filed May 18, 2009). We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments which Appellants could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. 41.37(c)(1)(iv).

Appellants’ Invention
Appellants’ invention relates to a tunable laser device that includes a
tunable Bragg reflector that is responsive to temperature and/or pressure
changes to adjust a tuned wavelength. See generally Abstract.

Claim 1 is illustrative of the invention and reads as follows:
1. A system for generating a coherent light beam, comprising:

a coherent light source;

a lens which collimates the light to provide a collimated coherent light
beam; and

a reflective device which is tunable to reflect at least a portion of a
tuned wavelength of light of the collimated coherent light beam,
wherein the reflective device is responsive to at least one of
temperature and/or pressure to adjust the tuned wavelength;

wherein the reflective device comprises a tunable Bragg reflector.

The Examiner’s Rejections
The Examiner’s Answer cites the following prior art references:
Tanaka US 6,301,028 B1 Oct. 9, 2001
Kapany US 6,480,513 B1 Nov. 12, 2002
Sidorin US 2003/0214700 A1 Nov. 20, 2003
Zimmerman US 6,816,518 B2 Nov. 9, 2004
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Claims 1, 5, 7, 8, 17, 19, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sidorin in view of Zimmerman.
Claims 2-4, 6, 18, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sidorin in view of Zimmerman and Kapany.
Claims 9-16 and 23-25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sidorin in view of Zimmerman, Kapany, and
Tanaka.

ANALYSIS
Claims 1 and 17
Appellants argue, with respect to the obviousness rejection of
independent claims 1 and 17, that the Examiner has not provided a proper
basis for the proposed combination of Sidorin with Zimmerman. According
to Appellants, the Examiner has made improper conclusory statements and
relied on unsupported speculation to support the determination of
obviousness with respect to the substitution of the tunable Bragg reflector of
Zimmerman for the diffraction device 115 of Sidorin (App. Br. 9-12; Reply
Br. 10-14).
We do not find Appellants’ arguments convincing of any error in the
Examiner’s stated position. Initially, we note that our interpretation of the
disclosure of Sidorin coincides with that of the Examiner. As explained by
the Examiner, Sidorin discloses a system for tuning an optical source
including a laser coherent light source 100, a collimating lens 120 which
generates a collimated coherent light beam, and a tunable reflective device
115 which reflects a portion of a tuned wavelength of light of the collimated
coherent light beam. Sidorin further discloses that the reflective device is
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responsive to temperature to adjust the tuned wavelength (¶¶ [0084] and
[0199]).
We also find that, contrary to Appellants’ generalized conclusion
(App. Br. 8-12; Reply Br. 10-14), the Examiner has provided a valid
articulated line of reasoning with a rational underpinning to support the
conclusion of obviousness with respect to the substitution of the explicitly
disclosed Bragg tunable reflector of Zimmerman for the tunable reflective
device of Sidorin.
1
We note that the Examiner has expanded upon the stated
rationale for combining Sidorin and Zimmerman at page 11 of the
“Response to Arguments” portion of the Answer. The Examiner has cited
column 5, lines 36-44 of Zimmerman in support of the determination that the
use of Zimmerman’s Bragg reflector in Sidorin would provide for tunability
over a broader wavelength range. Appellants’ arguments in the Reply Brief
do not challenge the Examiner’s position.
Further, referring to our earlier discussion of Sidorin, while the
Examiner has correctly recognized that Sidorin does not explicitly disclose
tunable reflective device 115 as being a Bragg reflector, we note that Figure
3 of Sidorin illustrates that the reflective device, operating in a transmission
mode, will reflect light of a particular wavelength while allowing others to
pass through (¶¶ [0066] and [0085]). It is noteworthy that this disclosed
operation of Sidorin’s reflective device 115 comports with what Appellants

1
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The Court
recognized that when a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result.”
(citations omitted)).

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have defined as a Bragg reflector in their disclosure (Spec. ¶ [0027]).
Accordingly, although we find no error in the Examiner’s proposed
combination of Sidorin and Zimmerman, the Examiner’s reliance on
Zimmerman for providing a teaching of a Bragg reflector is cumulative to
what is already disclosed by Sidorin. Nonetheless, we find that Zimmerman
supplements the teachings of Sidorin to buttress the Examiner’s conclusion
that the claims are obvious over the combination of those references.
Lastly, we find inappropriate Appellants’ request (App. Br. 15; Reply
Br. 15) that the Examiner provide an affidavit/declaration under 37 C.F.R.
§ 1.104(d)(2) to support statements based on facts which appear to be based
on the personal knowledge of the Examiner. We agree with the Examiner
(Ans. 17) that, contrary to Appellants’ contention, the Examiner’s stated
position relies on specifically cited portions of the applied Sidorin and
Zimmerman references, not on mere personal knowledge of the Examiner.
For the above reasons, we find that the Examiner did not err in
concluding that the combination of Sidorin and Zimmerman renders the
rejected claims unpatentable. Accordingly, the Examiner’s obviousness
rejection of independent claims 1 and 17 is sustained.

Claims 5, 7, 8, 19, 21, and 22
We also sustain the Examiner’s obviousness rejection, based on the
combination of Sidorin and Zimmerman, of dependent claims 5, 7, 8, 19, 21,
and 22. Appellants’ arguments (App. Br. 12-14; Reply Br. 13-14) are not
persuasive of any error in the Examiner’s determination (Ans. 4, 15, and 16)
that the Sidorin/Zimmerman combination teaches or suggests the
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temperature change, cavity length adjustment, and reflective device mount
features of the rejected claims.
In particular, we agree with the Examiner that the mount and
adjustment system of Sidorin already includes a reflective device and would
not require undue modification to implement the Bragg reflector teachings
of Zimmerman (Ans. 16). An artisan is presumed to possess both skill and
common sense. See KSR., 550 U.S. at 420 (“A person of ordinary skill is
also a person of ordinary creativity, not an automaton.”).

Claims 2-4, 6, 18, and 20
The Examiner’s obviousness rejection of dependent claims 2-4, 6, 18,
20, based on the combination of Sidorin, Zimmerman, and Kapany is also
sustained. The Examiner has added Kapany to the Sidorin/Zimmerman
combination to address, inter alia, the parallel fringe Bragg grating feature
of the rejected claims.
Contrary to Appellants’ contentions (App. Br. 17-21; Reply Br. 16-
19), we find that the Examiner has provided a valid articulated line of
reasoning with a rational underpinning to support the proposed combination.
We agree with the Examiner that a skilled artisan would have recognized
and appreciated that Kapany’s teaching (col. 3, ll. 15-46) of a parallel fringe
Bragg grating structure would have served as an obvious enhancement to the
combined system of Sidorin and Zimmerman, thereby limiting the
wavelength that exits the grating to a narrower mode (Ans. 4, 5, and 21-24).
We further agree with the Examiner that Sidorin, Zimmerman, and Kapany
each teach laser systems with grating structures tunable by temperature
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variation and the substitution of one known gating for another would obtain
predictable results and is within routine skill in the art.
2

Claims 23 and 25
We also sustain the Examiner’s obviousness rejection of dependent
claims 23 and 25 in which the Examiner has applied Tanaka to the
combination of Sidorin, Zimmerman, and Kapany to address the holographic
material storage feature of the rejected claims. Appellants’ arguments (App.
Br. 23-28; Reply Br. 21-25) are not persuasive of any error in the
Examiner’s determination of obviousness to the ordinarily skilled artisan of
applying Tanaka’s teaching (col. 2, 12-16 and 30-38) of storing a grating
and refractive index profile in holographic material to the
Sidorin/Zimmerman/Kapany combination to generate a high density output
(Ans. 5, 6, and 28-32).
Contrary to Appellants’ contention, the Examiner has relied upon
Kapany, not Tanaka, for a teaching of a Bragg grating with a parallel fringe
construction. Similarly, we find no error in the Examiner’s determination
that the addition of Tanaka to the Sidorin/Zimmerman/Kapany combination
would result in the storage of a Bragg grating and fringe pattern in
holographic material as claimed (Ans. 29).

2
See KSR at 417 (“[W]hen a patent simply arranges old elements with each
performing the same function it had been known to perform and yields no
more than one would expect from such an arrangement, the combination is
obvious.” (citations and internal quotations omitted)).

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Claims 9-16 and 24
The Examiner’s obviousness rejection of claims 9-16 and 24, which
are method counterparts of previously discussed system claims 1-8, 17-23,
and 25, is also sustained. In the statement of the rejection, the Examiner
grouped all of the claims 9-16 and 24 together and relied upon the
combination of all of the previously applied references, i.e., Sidorin,
Zimmerman, Kapany, and Tanaka, to reject the claims (Ans. 6 and 36).
Appellants do not argue the merits of the applied prior art as related to
the rejected claims but, instead, contend that the Examiner did not set forth
which claims have been rejected on which particular combination of
references. We do not agree with Appellants. From a review of rejected
claims 9-16 and 24, it is apparent that all of the claimed features have been
presented in previously discussed claims 1-8, 17-23, and 25 and have been
previously addressed by the Examiner using the same prior art references.
Contrary to Appellants’ contention, we find that the applicable combination
of applied references for each particular rejected claim is easily discernible
by referring to the Examiner’s detailed statement of the rejection for each of
claims 1-8, 17-23, and 25.

CONCLUSION OF LAW
Based on the analysis above, we conclude that the Examiner did not
err in rejecting claims 1-25 for obviousness under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s decision rejecting claims 1-25 under
35 U.S.C. § 103(a).
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Application 11/649,801

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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

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