Ex Parte KakuiDownload PDFPatent Trial and Appeal BoardJun 30, 201611364364 (P.T.A.B. Jun. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/364,364 03/01/2006 20277 7590 07/05/2016 MCDERMOTT WILL & EMERY LLP The McDermott Building 500 North Capitol Street, N.W. WASHINGTON, DC 20001 FIRST NAMED INVENTOR Motoki Kakui 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 050212-0705 8580 EXAMINER BEDTEL YON, JOHN M ART UNIT PAPER NUMBER 2874 NOTIFICATION DATE DELIVERY MODE 07/05/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): ipdocketmwe@mwe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MOTOKI KAKUI Appeal2015-000896 Application 11/364,364 Technology Center 2800 Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision2 twice rejecting claims 2 and 5-11. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies the real party in interest as Sumitomo Electric Industries, Ltd. Appeal Brief filed July 10, 2012 ("App. Br."), 1. 2 Non-Final Office Action mailed May 24, 2011 ("Non-Final Act."). Appeal2015-000896 Application 11/364,364 The claims are directed to a light source module. Claim 6, reproduced below with the disputed claim terms in italics, is illustrative of the claims on appeal. 6. A light source module comprising: a photodetection device including: a photodetector having detection sensitivity at a first wavelength; a first optical fiber of which the number of possible propagation modes is plural at the first wavelength, the first optical fiber having an entrance end on which light at the first wavelength falls; and a second optical fiber of which the number of possible propagation modes is plural at the first wavelength, the second optical fiber having a product of a core diameter and a numerical aperture at the first wavelength that is greater than a product of a core diameter and a numerical aperture at the first wavelength of said first optical fiber, the second optical fiber having one end and another end, the second optical fiber being optically coupled to said first optical fiber by having a middle portion of the second optical fiber approximately parallel with a middle portion of the first optical fiber, and the one end of the second optical fiber being optically coupled to said photodetector; and a light source for emitting light of the first wavelength to the entrance end of said first optical fiber, wherein the entrance end optically opposes the one end of said second optical fiber via the connection point between said first optical fiber and said second optical fiber, and wherein the core diameter of the first optical fiber is not less than 15 µm. App. Br. 11-12 (Claim Appendix). 2 Appeal2015-000896 Application 11/364,364 REJECTIONS The following rejections are before us for review: 1. Claims 2, 5, 6, and 8-10 are rejected under 35 U.S.C. § 103(a) as unpatentable over Fling (US 4,810,052, issued Mar. 7, 1989) (hereinafter "Fling") in view of JP 07-174932 (published July 14, 1995) (hereinafter "JP '932")3; 2. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over Fling in view of JP '932, and further in view of Fevrier et al. (US 4,959,837, issued Sept. 25, 1990) (hereinafter "Fevrier"); and 3. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over Fling in view of JP '932, and further in view of Vaganov et al. (US 2002/0197025 Al, published Dec. 26, 2002 (hereinafter "Vaganov"). ANALYSIS Appellant argues that the Examiner reversibly erred in rejecting independent claim 6 by improperly combining the teachings of JP '932 and Fling. App. Br. 4-8; see also Reply Br. 2-3. Specifically, Appellant contends that the Examiner erred by "incorrectly applying the 'tap' and 'bus' fibers of JP '932 to the 'bus' and 'tap' fibers of Fling, respectively." Id. We are not persuaded by Appellant's argument. As the Examiner responds in the Answer, obviousness does not require the bodily incorporation of the features of a secondary reference into the structure of the primary reference. 3 We refer the Figures in JP '932, but refer to the machine translation of record of JP '932, as cited by the Appellant and the Examiner, for JP '932's remaining disclosure. See, e.g., App. Br. 5; see also Ans. 10, 12. 3 Appeal2015-000896 Application 11/364,364 Ans. 11. Rather, the test is what the combined teachings of the references would have suggested to a person of ordinary skill in the art at the time of the invention. Id. Appellant does not dispute the Examiner's finding that Fling teaches all the claim limitations except "[a] second optical fiber having a product of a core diameter and a numerical aperture at the first wavelength that is greater than a product of a core diameter and a numerical aperture at the first wavelength of said first optical fiber" (Ans. 5). Rather, Appellant argues that the Examiner failed to provide any evidence as to why one of ordinary skill in the art would apply the features of the bus fibers 20, 21, and 22 of JP '932 to the tap fiber 16 of Fling, and apply the features of the tap fiber 10 of JP '932 to the data bus 12 of Fling. Reply Br. 3--4. Appellant, however, misunderstands the Examiner's rejection. As the Examiner explains, the rejection over the combination of Fling and JP '932 is not based on bodily incorporating "bus" and "tap" fibers of JP '932 into the "bus" and "tap" fibers of Fling. Ans. 12. Instead, the Examiner relies on JP '932 for teaching a relationship between two coupled fibers, where one fiber has a product of a core diameter and a numerical aperture larger than the product of a core diameter and a numerical aperture of the other fiber. Id. The Examiner finds that one of ordinary skill in the art would have been motivated to modify the first and second optical fibers of Fling because JP '932 teaches that "light is easily coupled into the fiber having a larger product of a core diameter and a numerical aperture." Ans. 12. We are not persuaded the Examiner's findings are erroneous. "A person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In 4 Appeal2015-000896 Application 11/364,364 making an obviousness determination one "can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR, 550 U.S. at 418. JP '932 teaches that light (P3) is "easily" coupled to fiber 10 because fiber 10 has a larger core diameter and numerical aperture (and thus a larger product of core diameter and numerical aperture) than fiber 21. JP '932 iJ 10; Fig. 2. Although fiber 10 is a "bus" fiber and fiber 21 is a "tap" fiber, JP '932 does not indicate that tap fibers could not have a larger core diameter and numerical aperture than bus fibers. Therefore, as the Examiner finds, JP '932 would have led one of ordinary skill in the art, through no more than ordinary creativity, to modify Fling's second optical fiber ( 16) to have a greater core diameter and numerical aperture than the first optical fiber (12) in order to more easily couple light from the second fiber to the first fiber. See Ans. 5-6. Appellant argues that "the alleged modification of Fling ... would impair the purpose and functionality of Fling ... which requires the coupling efficiency of the bus fiber 12 to the tap fiber 16 to be 2--4%, to appropriately remove the energy from the bus fiber." App. Br. 8; Reply Br. 6. We are not persuaded by Appellant's argument. Fling teaches that the coupler "preferably" has a coupling efficiency in the range of about 2% to 4%. Even though modifying Fling's fiber 16 to have a large core diameter and numerical aperture, based on the teachings of JP '932, may increase the coupling efficiency from the bus fiber 12 to the tap fiber 16, and thus remove more energy from the bus fiber, Appellant has not directed us to any evidence demonstrating that, in the proposed modification, the coupling efficiency would be so large that Fling's fiber optic bus tap would be rendered inoperable for its intended purpose-monitoring the coupling 5 Appeal2015-000896 Application 11/364,364 efficiency between the fibers 12 and 16 (Fling 11:30-38). See Jn re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (prior art teaches away from proposed modification where modification would render the prior art apparatus inoperable for its intended purpose). Appellant argues that because "the purposes [of] the present application and the cited references are different, there is no motivation or suggestion to combine the cited references to arrive at the present subject matter." Reply Br. 7. We are not persuaded by Appellant's argument. Establishing a prima facie case of obviousness does not require combining the references for the purpose of solving the same problem solved by the Appellant. See In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990); see also In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972). As discussed above, the weight of the evidence supports the Examiner's determination that it would have been prima facie obvious to one of ordinary skill in the art to modify Fling's second optical fiber to have a product of a core diameter and a numerical aperture at the first wavelength that is greater than the product of a core diameter and a numerical aperture at the first wavelength of the first optical fiber for the benefit of more easily coupling light between the coupled fibers. See Ans. 11-12. For the reasons above, the arguments presented by the Appellant do not persuade us of reversible error in the Examiner's obviousness rejection of independent claim 6. Accordingly, we sustain the Examiner's rejection of claim 6. Claims 2, 5, and 7-11 depend from independent claim 6. Appellant does not present separate arguments in support of the patentability of dependent claims 2, 5, and 7-11. App. Br. 9. Therefore, the§ 103(a) 6 Appeal2015-000896 Application 11/364,364 rejections of claims 2, 5, and 7-11 are sustained for the reasons set forth above with respect to claim 6. DECISION For the above reasons, the Examiner's rejections of claims 2 and 5-11 are sustained. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a). AFFIRMED 7 Copy with citationCopy as parenthetical citation