Ex Parte Lust et al

Patent Trial and Appeal Board

Dec 12, 2016

13162169 (P.T.A.B. Dec. 12, 2016)

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.
13/162,169 06/16/2011 Lisa Lust H0030263.219173 6961
92689 7590
HONEYWELL/SLW
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
12/14/2016 EXAMINER
BELLO, AGUSTIN
ART UNIT PAPER NUMBER
2637
NOTIFICATION DATE DELIVERY MODE
12/14/2016 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):
patentservices-us @ honey well, com
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LISA LUST, DANIEL YOUNGNER, and DOUG CARLSON
Appeal 2014-008161
Application 13/162,1691
Technology Center 2600
Before ELENI MANTIS MERCADER, JOHN P. PINKERTON, and
STACY B. MARGOLIES, Administrative Patent Judges.
MARGOLIES, Administrative Patent Judge.
DECISION ON APPEAL
This appeal arises under 35 U.S.C. § 134(a) from the rejection of
claims 1—3 and 5—21. No other claims are pending. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b).
1 According to Appellants, the real party in interest is Honeywell
International Inc. App. Br. 2.
Appeal 2014-008161
Application 13/162,169
SUMMARY OF THE INVENTION
The invention is generally directed to an optical microphone.
Abstract.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below (with the disputed limitation emphasized):
1. An optical microphone comprising:
a semiconducting laser that includes a p-n junction within
a cavity;
an acoustic membrane that receives coherent light
emitted from the semiconducting laser and directs reflected
light back toward the cavity, the phase of the reflected light
being dependent upon a distance of the acoustic membrane
from the cavity, wherein the acoustic membrane flexes in
response to pressure waves; and
an electrical conductor that provides power to the
semiconducting laser and monitors the p-n junction voltage of
the semiconducting laser by directly outputting voltage levels
that fluctuate during operation of the optical microphone.
REFERENCE AND REJECTION
The Examiner rejected claims 1—3 and 5—21 under 35 U.S.C. § 102(b)
as being anticipated by Carr (US 7,355,720 Bl; issued Apr. 8, 2008). Final
Act. 2—6.
ISSUE
The issue is whether the Examiner erred in finding that Carr discloses
“an electrical conductor that provides power to the semiconducting laser and
monitors the p-n junction voltage of the semiconducting laser by directly
outputting voltage levels that fluctuate during operation of the optical
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Application 13/162,169
microphone,” as recited in independent claim 1 and similarly recited in
independent claims 16 and 20.
ANALYSIS
The Examiner finds that Carr’s disclosure of an optical microphone
with electrical wiring, external electrical connections, and contact pads
meets the electrical conductor claim limitation. Final Act. 3; Ans. 4—5. The
Examiner reasons that there is no structural difference between Carr’s
electrical conductors and the claimed electrical conductor, and that Carr’s
electrical conductors will perform the claimed function of outputting
fluctuating voltage levels during operation of the optical microphone. Final
Act. 3; Ans. 7—10.
Appellants argue that the Examiner fails to cite any support for the
finding that Carr’s conductors are capable of performing the claimed
functions, and that Carr’s conductors are not needed to perform the functions
because Carr uses an external photodetector to detect the change in lasing
characteristics of the VCSEL by monitoring its output light. Reply 3.
We are persuaded that the Examiner erred. Claim 1 requires an
electrical conductor that “monitors the p-n junction voltage of the
semiconducting laser by directly outputting voltage levels that fluctuate
during operation of the optical microphone.” The Examiner fails to provide
sufficient evidence showing or reasoning explaining that Carr inherently
discloses that the electrical wiring connecting VCSEL 16 to substrate 18
along with the external electrical connections and contact pads perform the
claimed monitoring, given the presence of photodetector 32. See In re
Schreiber, 128 F.3d 1473, 1478—79 (Fed. Cir. 1997). Carr discloses that
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Appeal 2014-008161
Application 13/162,169
photodetector 32 detects the change in intensity of the beam of lasing light
from VCSEL 16 and “generate^] therefrom an electrical output signal
which varies with the displacement of the light-reflective diffractive lens.”
Carr, 2:35—40. Carr discloses that photodetector 32 can be located in
different locations with respect to VCSEL 16, including as part of the same
apparatus (id. at 2:24-40) and on the same substrate as the VCSEL (id. at
2:18—23). Carr discloses an embodiment in which photodetector 32 is
located beneath VCSEL 16 and is connected to substrate 18 via electrical
wiring different from electrical wiring that connects VCSEL 16 to substrate
18. Id. at 7:12—16; see also id. at 5:18 42. The Examiner fails to
sufficiently explain how Carr’s electrical wiring connecting VCSEL 16 to
substrate 18 necessarily “monitors the p-n junction voltage ... by directly
outputting voltage levels that fluctuate during operation of the optical
microphone” given that photodetector 32 detects the change in intensity of
the beam of lasing light from VCSEL 16 and generates an electrical output
signal which varies with the displacement of the light-reflective diffractive
lens. Id. at 2:35—40, 6:23—25. Thus, we reverse the Examiner’s anticipation
rejection of claim 1 and claims 2—15, which depend directly or indirectly
from claim 1.
The Examiner relies on a similar analysis for rejecting independent
claims 16 and 20 as anticipated by Carr. See Final Act. 2—3 and 6. For the
reasons set forth above, we reverse the Examiner’s rejection of claims 16—
21.
We enter a new ground of rejection of claims 1—3 and 5—21 under 35
U.S.C. § 112, first paragraph (pre-AlA) for failing to meet the written
description requirement. Claim 1 recites an optical microphone comprising,
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Appeal 2014-008161
Application 13/162,169
among other things, “an electrical conductor that provides power to the
semiconducting laser and monitors the p-n junction voltage of the
semiconducting laser by directly outputting voltage levels that fluctuate
during operation of the optical microphone.” There is no description in
Appellants’ specification of such a conductor. The closest description is of
bonded wire 23 and reads: “The bonded wire 23 is able to supply current
from a current source to the semiconducting laser 12 in order to power the
semiconducting laser 12 and also enable monitoring of the p-n junction 14
voltage.” Spec. 121. A wire that enables monitoring, however, is different
from an electrical conductor that monitors, as required by the claim. The
specification does not describe a conductor that monitors as claimed. In
others words, there is no disclosure of how a conductor (i.e., wire) monitors.
Electrical wires (i.e., conductors) conduct electricity allowing transmission
of signals, but in no way do they monitor. One skilled in the art at the time
of the invention would, at best, attribute enablement of different functions
such as monitoring through the transmission of signals, but the
wires/conductors themselves do not monitor. We thus determine that
Appellants’ specification fails to provide written description support for
claim 1 and its dependent claims 2, 3, 5—15. Because independent claim 16
likewise requires “using an electrical conductor to provide power to the
semiconducting laser and monitor the p-n junction voltage of the
semiconducting laser” and independent claim 20 similarly requires “wherein
the electrical conductor monitors the voltage changes at the p-n junction,”
we reject those claims, and dependent claims 17—19 and 21, for failure to
meet the written description requirement for the same reason.
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Application 13/162,169
Because our rationale for rejecting the pending claims differs from
that of the Examiner, we enter a new ground of rejection.
DECISION
We reverse the Examiner’s rejection of claims 1—3 and 5—21.
We enter a new ground of rejection of claims 1—3 and 5—21 under 35
U.S.C. § 112, first paragraph, pursuant to our authority under 37 C.F.R.
§ 41.50(b).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED
37 C.F.R, $ 41.50(b)
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