Ex Parte Murali

Board of Patent Appeals and Interferences

May 10, 2005

09741237 (B.P.A.I. May. 10, 2005)

Appeal NO. 2005-0577
Application No. 09/741,237
1
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte VENKATESAN MURALL
__________
Appeal No. 2005-0577
Application No. 09/741,237
___________
ON BRIEF
___________
Before KIMLIN, PAK, and PAWLIKOWSKI, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s refusal to
allow claims 1-2, 12, and 14-17, which are all of the claims
pending in the above-identified application.
Claims 1 and 12 are representative of the subject matter on
appeal and read as follows:
1. A method of making an angled surface on a waveguide,
comprising:
creating a substrate having two levels;
depositing an optical core material onto a first side of the
Appeal NO. 2005-0577
Application No. 09/741,237
1 The examiner refers to U.S. Patent 4,901,329 issued to Leas on February 1990
in the Prior Art of Record section of the Answer. However, the examiner does
not rely on this reference in the statements of rejections set forth in the
Answer. Accordingly, we will not consider this reference .
2
substrate to produce an angled surface, wherein the angled surface
is aligned to a photonic via extending straight through the
substrate to a second side of the substrate, wherein the first
side of the substrate is substantially parallel to the second side
of the substrate,
wherein the depositing of the optical core material deposits
a material that has an index of refraction substantially similar
to that of the photonic via.
12. A method of making a waveguide comprising:
depositing an optical cladding material on the first
side of a substrate;
etching the optical cladding materials to form a wall
substantially normal to the substrate; and
depositing an optical core material onto the substrate
and the optical cladding material to form an angled surface,
wherein the angled surface is in optical alignment with a photonic
via that extends from the first side of the substrate straight
through the substrate to an opposite side of the substrate.
REFERENCES
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are1:
Austin et al. (Austin) 5,200,631 Apr. 6, 1993
Allman et al. (Allman) 6,324,313 Nov. 27, 2001
The appealed claims stand rejected as follows:
(1) Claim 1 under § 35 U.S.C. 102(b) as unpatentable over Austin.
Appeal NO. 2005-0577
Application No. 09/741,237
3
(2) Claims 1-2, 12, and 14-17 under § 35 U.S.C. 103(a) as
unpatentable over Allman in view of Austin.
For the reasons set forth below, we reverse the
aforementioned rejections and enter a new grounds of rejection
pursuant to of 37 CFR § 41.50(b)(2004).
OPINION
I. The 35 U.S.C. § 102(b) rejection of claim 1 and the 35 U.S.C.
§ 103(a) rejection of claims 1, 2, and 16.
For reasons stated infra in our new ground of rejection under
the provisions of 37 CFR § 41.50(b)(2004), we are of the opinion
that claims 1, 2, and 16 fail to satisfy the requirements of 35
U.S.C. § 112, second paragraph. We note that the claims, which
fail to comply with the second paragraph of Section 112, cannot be
analyzed as to whether they are patentable over the prior art
since to do so would of necessity require speculation with regard
to the metes and bounds of the claimed subject matter. See In re
Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962); In re Wilson, 424
F.2d 1382, 165 USPQ 494 (CCPA 1970). Accordingly, we procedurally
reverse the examiner’s rejection of claim 1 under 35 U.S.C. § 102
and claims 1, 2, and 16 under 35 U.S.C. § 103. We take no
position as to the pertinence of the prior art relied on by the
examiner with respect to the subject matter of claims 1, 2, and 16
Appeal NO. 2005-0577
Application No. 09/741,237
4
since the prior art cannot be applied until the scope of these
claims on appeal can be ascertained.
Pursuant to the provisions of 37 CFR § 41.50(b)(2004), we
enter the following new ground of rejection.
Claims 1, 2, and 16 are rejected under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and
distinctly claim the subject matter the appellant regards as his
invention. The legal standard for determining whether the
language in claims is definite under Section 112, second
paragraph, is whether one of ordinary skill in this art would have
been reasonably apprised of the scope of the claims, when the
claim language is read in light of the specification. See In re
Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
1994).
Here, claims 1, 2, and 16 recite an optical core material
having an index of refraction that is “substantially similar” to a
photonic via. The language “substantially similar” is a “word of
degree” which is imprecise unless a definition or guideline has
been set forth in the specification or the term is otherwise well
known in the art. See Seattle Box Co. v. Industrial Crating and
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984). However, there is no evidence in this record that the
words “substantially similar” have any art-recognized meaning.
Nor is there any guidance or definition in the specification that
Appeal NO. 2005-0577
Application No. 09/741,237
2 The specification does not mention an index of refraction
“substantially similar” to the photonic via.
5
would allow one of ordinary skill in the art to understand the
meaning of the words “substantially similar2.” Indeed, the
appellant has not referred to any portion of the specification or
any evidence to define the scope of these words. Accordingly, we
determine that one of ordinary skill in this art would not have
been apprised of the scope of claims 1, 2, and 16. Therefore, we
determine that claims 1, 2, and 16 are indefinite and fail to meet
the requirement of 35 U.S.C. § 112, second paragraph.
II. The 35 U.S.C. § 103(a) rejection with respect to claims 12,
14,15 and 17
With respect to the examiner’s rejection of claims 12, 14,15
and 17, we find ourselves in agreement with appellant insofar as
the examiner has failed to carry the burden of establishing a
prima facie case of obviousness. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). As is apparent
from pages 6, 10 and 11 of the Answer, the examiner appears to
rely on layers (63), (40a), (26a) and (26), or alternatively, only
a layer (26), in figures 10-12 of Allman as the claimed substrate.
The examiner then relies on features (26b) and (68) in figure 12
of Allman as the optical cladding material and the wall
substantially normal to the substrate, respectively. Id.
Additionally, the examiner relies on features (70) and (76) in
figure 14 of Allman as the core material and the angled surface.
Appeal NO. 2005-0577
Application No. 09/741,237
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Id. The examiner admits that the photonic via of Allman does not
extend through the substrate. Id.
To remedy this deficiency, the examiner relies on Austin to
teach this limitation and concludes that it would have been
obvious to form a photonic via through the substrate (Answer, pp.
6 and 7).
The examiner’s position is not well taken. Allman discloses
(col. 5, ll. 15-21) removing the light reflecting structure and
the second horizontal waveguide to prevent deflecting the light to
the horizontal direction after deflecting the light into the
vertical direction in a single chip. However, Allman does not
disclose forming a via through the layers (63), (40a), (26a), and
(26) or just the layer 26. The examiner has not demonstrated that
one of ordinary skill in the art would have been led to form a
photonic via through the above layers since Allman’s chip is not
shown to be useful for the same purpose as Austin’s chip. In this
regard, we note that the chip of Austin has a different structure
than that of Allman’s chip.
To the extent that the via can be formed in the layer (26) of
Allman as suggested by the examiner, the resulting waveguide still
would not meet the claimed limitation “wherein the angled surface
is an optical alignment with a photonic via extend[ing] . . .
through the substrate.” To meet the claim limitation in
question, the examiner must point to some suggestion or motivation
Appeal NO. 2005-0577
Application No. 09/741,237
7
in Allman and Austin which would have led one of ordinary skill in
the art to form a photonic via through the layers (63), (40a),
(26a), and (26).
The legal conclusion of obviousness must be supported by
facts. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1976). Where the legal conclusion is not supported by facts, it
cannot stand. Id. In the instant case, as indicated supra, the
examiner has not provided sufficient factual evidence to make a
hole through the layers (63), (40a), (26a) and (26) described in
Allman.
CONCLUSION
For the above reasons, we (i) procedurally reverse the
examiner’s rejection of claim 1 under 35 U.S.C. § 102(b) and
claims 1, 2, and 16 under 35 U.S.C. § 103(a); (ii) enter a new
grounds of rejection of claims 1, 2, and 16 under 35 U.S.C. § 112,
second paragraph; and (iii) reverse the examiner’s rejection of
claims 12, 14-15 and 17 under 35 U.S.C. §103(a) over Allman in
view of Austin.
This decision contains a new ground of rejection pursuant to
37 CFR § 41.50(b) (effective September 13, 2004, 69 Fed. Reg.
49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September
7, 2004)). 37 CFR § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for
judicial review."
Appeal NO. 2005-0577
Application No. 09/741,237
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37 CFR § 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 CFR § 1.136(a).

Appeal NO. 2005-0577
Application No. 09/741,237
9
REVERSED; § 41.50(b)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
CKP/dal
Appeal NO. 2005-0577
Application No. 09/741,237
10
Charles K. Young
BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN LLP
12400 Wilshire Boulevard, Seventh Floor
Los Angeles CA 90025-1026