Ex Parte Negro et al

Patent Trial and Appeal Board

Jun 22, 2013

11113542 (P.T.A.B. Jun. 22, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/113,542 04/25/2005 Luca Dal Negro MIT.10762 7367
55740 7590 06/22/2013
Gesmer Updegrove LLP
40 Broad Street
BOSTON, MA 02109
EXAMINER
HAGAN, SEAN P
ART UNIT PAPER NUMBER
2828
MAIL DATE DELIVERY MODE
06/22/2013 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 LUCA DAL NEGRO, JAE HYUNG YI,
JURGEN MICHEL, and LIONEL C. KIMERLING
____________

Appeal 2010-011954
Application 11/113,542
Technology Center 2800
____________

Before KRISTEN L. DROESCH, DENISE M. POTHIER, and
BARBARA A. BENOIT, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 3-6. Claims 1, 2, and 7-9 have been canceled. App.
Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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Application 11/113,542

2
Invention
Appellants’ invention relates to a light emitting device (e.g., a laser)
having light emitting silicon(Si)-based material demonstrating optical gain.
See Spec. ¶¶ 0003, 0007. Illustrative claim 3 is reproduced below:
3. A vertical emission Fabry-Perot microcavity laser, comprising:
an active laser material;
a first Si/SiNx Bragg reflector located on first side of said active laser
material; and
a second Si/SiNx Bragg reflector located on a side of said active laser
material opposite said first side of said active laser material.

The Examiner relies on the following as evidence of unpatentability:
Glass US 5,363,398 Nov. 8, 1994
Taneya US 5,815,615 Sept. 29, 1998
Kondow US 5,912,913 June 15, 1999

The Rejections
Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Glass and Kondow. Ans. 3-4.
Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Glass and Taneya. Ans. 4-5.

OBVIOUSNESS REJECTION OVER GLASS AND KONDOW
Regarding illustrative independent claim 3, the Examiner finds that
Glass teaches all the recited limitations, except that the reflector is a Si/SiNx
Bragg reflector, for which Kondow is cited. Ans. 3-4.
Appellants contend that Glass requires that a vertical emitting
Fabry-Perot cavity laser have one reflector that is more reflective than the
other, while a horizontal emitting laser requires the two reflectors have equal
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reflective properties. See App. Br. 5 (citing col. 3, ll. 30-48). Based on this
discussion, Appellants assert Glass’ reflectors related to vertically emitting
lasers must be made of different materials. Id. Consistent with Glass’
purported teaching, Appellants argue that Kondow similarly discloses a
vertical cavity surface-emitting laser having reflectors with different types of
Bragg reflectors made from different materials. App. Br. 5-7. In
Appellants’ view, both Kondow and Glass teach away from the claimed
invention requiring both reflectors to be made from the same material. See
App. Br. 7.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 3 by finding
that Glass and Kondow collectively would have taught or suggested a
vertically emission Fabry-Perot microcavity laser having first and second
Si/SiNx Bragg reflectors located on a first side of and opposing second side
of the active laser material respectively?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of illustrative claim 3. We are not persuaded that the Bragg
reflectors in Glass must be made of different materials and have different
properties in order to produce a vertical emission Fabry-Perot microcavity
laser. See App. Br. 5-7. The Examiner explains how a laser can create a
vertically emissive laser using reflectors with the same material. See Ans. 6
(citing Glass, col. 4, l. 60–col. 5, l. 12). That is, Glass describes an
embodiment where a different number of layer pairs are used for the top and
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bottom reflectors to achieve differing reflectivities and vertical emission.
See Glass, col. 4, l. 60–col. 5, l. 12. Appellants have not filed a Reply Brief,
and thus this finding remains unchallenged.
Given this finding is undisputed, we further disagree that Glass
teaches away from the claimed invention, which includes a first and second
Bragg reflector made from the same material. See App. Br. 7. As the
Examiner notes (Ans. 8), Glass teaches a vertical emitting Fabry-Perot
microcavity laser embodiment where the reflectors are made from the same
material by differing the number of layer pairs on opposing sides of the
active laser material. See Glass, col. 4, l. 60–col. 5, l. 12.
Also, the Examiner relies on Kondow for the limited purpose of
teaching a known Bragg reflector material (e.g., Si/SiNx) to an ordinarily
skilled artisan. See Ans. 3-4 (citing col. 7, ll. 56-62). Specifically, Kondow
teaches a known material for a Bragg reflector of a vertical cavity surface
emitting laser includes a pair of layer materials from the group of amorphous
Si and SiNx (e.g., Si/SiNx). Kondow, col. 7, ll. 53-62. Contrary to
Appellants’ assertions (see App. Br. 6-7), the Examiner is not proposing
substituting both of Kondow’s reflectors, which may according to
Appellants (see id.) be made from differing materials, for Glass’s reflectors.
Rather, the Examiner is simply proposing using a known material, as taught
by Kondow, for the Bragg reflectors in Glass. See Ans. 3-4.
We therefore are unpersuaded that Kondow cannot be combined with
Glass or that Glass and Kondow teach away from the claimed invention.
See App. Br. 6-7. As indicated above, Glass teaches an embodiment where
the reflectors can be made of the same material to create a vertical emitting
laser as recited. The Examiner is thus not ignoring Glass’s teachings. See
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App. Br. 7. Also, combining Kondow’s teaching regarding a known
reflector material (e.g., Si/SiNx) for vertically emitting lasers with Glass
does not teach away from the claimed invention. See id. Instead, such a
combination predictably yields no more than an ordinary artisan would have
recognized–a first and second Si/SiNx Bragg reflector. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007).
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 3 and claim 4 not separately argued.

OBVIOUSNESS REJECTION OVER GLASS AND TANEYA
Regarding illustrative independent claim 5, the Examiner finds that
Glass teaches all the recited limitations, except that the reflector is a
SiO2/Si3N4 Bragg reflector, for which Taneya is cited. Ans. 4-5.
Appellants repeat their position that Glass requires the laser to have
reflectors of different properties and materials to create the vertical emitting
Fabry-Perot laser. App. Br. 8-10. We are not persuaded for the above-stated
reasons. See also Ans. 9. We additionally refer to our above discussion that
Glass does not teach away from the claimed invention.
Appellants also contend that Taneya teaches many materials are used
to form the multilayer reflection film but that Taneya does not teach that, if
two reflection films are used, these films would be composed of the same
SiO2/Si3N4 material. However, similar to our discussion above in connection
with the Glass/Kondow combination, the Examiner relies on Taneya for a
limited purpose–its teaching of a known Bragg reflector material for a
vertically emitting laser. See Ans. 4-5, 9. Thus, when combining Taneya’s
teaching with Glass, the Examiner has not ignored Glass’ alleged teaching
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that different materials must be used for the reflectors to create a vertical
emitting laser or teaches away from the claimed combination. See App.
Br. 9-10.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 5 and claim 6 not separately argued.

CONCLUSION
The Examiner did not err in rejecting claims 3-6 under § 103.

DECISION
The Examiner’s decision rejecting claims 3-6 is affirmed.
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).

AFFIRMED

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