Ex Parte Peng

Patent Trial and Appeal Board

Sep 23, 2016

13779853 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131779,853 02/28/2013
75742 7590 09/26/2016
MUETING, RAASCH & GEBHARDT, P.A.
P.O. Box 581336
Minneapolis, MN 55458-1336
FIRST NAMED INVENTOR
Chubing Peng
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.
430.16652011 9208
EXAMINER
HEYi, HENOK G
ART UNIT PAPER NUMBER
2695
MAIL DATE DELIVERY MODE
09/26/2016 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 CHUBING PENG
Appeal2015-007050
Application 13/779,853
Technology Center 2600
Before THU A. DANG, ERIC S. FRAHM, and
JOHN P. PINKERTON, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-007050
Application 13/779,853
l. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
A. INVENTION
According to Appellant, the invention relates to a "waveguide" that
includes a "first cladding layer" having an index of refraction, a "gradient
index layer" positioned adjacent the first cladding layer, and an "assist
layer" positioned adjacent the gradient index layer and having another index
of refraction ( Abst. ).
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A waveguide having a first axis, the waveguide comprising:
a first cladding layer, the first cladding layer having an index of
refraction, n3;
a gradient index layer positioned adjacent the first cladding layer, the
gradient index layer having a local index of refraction that varies along the
first axis of the waveguide;
an assist layer positioned adjacent the gradient index layer, the assist
layer having an index of refraction, n2; and
a core layer positioned adjacent the assist layer, the core layer having
an index of refraction, n 1;
wherein nl is greater than n2, and n3; and n2 is greater than n3.
2
Appeal2015-007050
Application 13/779,853
C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
I wanabe et al.
Zhou
US 2011/0090770 Al
US 2012/0257490 Al
Apr. 21, 2011
Oct. 11, 2012
Claims 1-8 and 11-20 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Zhou.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhou and I wanabe.
II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
finding Zhou discloses receiving a "gradient index layer" having "a local
index of refraction that varies along the first axis of the waveguide," and an
"assist layer positioned adjacent the gradient index layer ... having an index
of refraction, n2" (claim 1, emphases added).
III. FINDINGS OF FACTS
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Zhou
Zhou discloses gratings for waveguide coupling, wherein Figure 2A is
reproduced below:
3
Appeal2015-007050
Application 13/779,853
FIG. 2A
Figure 2A shows a grating formed by a plurality of slanted elements
52 that extend through the core layer 16 and into the first and second
cladding layers 18 and 20, wherein the elements comprise a filler material 54
positioned in slanted slots (i-f 20).
IV. ANALYSIS
Appellant contends "Zhou at least fails to disclose either the gradient
index layer or the assist layer, or both" (App. Br. 5). According to
Appellant, "[Zhou's] grating could be described as the voids that give the
filler its form," wherein "the tilted slots 52 can be etched ... and then filled
with the filler material" (App. Br. 6). Thus, Appellant contends, "it is not
correct to state that the grating 'is equivalent structure to the gradient
index"' especially a grating "having an index of refraction" as claimed,
because "only the filler material has an index of refraction" (App. Br. 7).
Based on the record before us, we agree with Appellant that the
Examiner erred in finding claim 1 is anticipated by Zhou under 35 U.S.C. §
102( e ). In particular, we agree with Appellant that the preponderance of
evidence on this record fails to support the Examiner's finding that Zhou
4
Appeal2015-007050
Application 13/779,853
discloses "gradient index layer" having a local index of refraction, and an
"assist layer" positioned adjacent the gradient index layer and also having
index of refraction, as required by claim 1.
Although we agree with the Examiner's finding that the filler material
of Zhou has a refractive index (Ans. 10; FF) wherein Zhou discloses a
grating having a refractive index (Ans. 11, FF), we agree with Appellant that
Zhou' s grating comprises "tilted slots 5 2" that are "filled with the filler
material" (App. Br. 6). That is, Zhou's grating is comprised of slots (voids)
and filler material filling the slots, wherein, although Zhou's grating
comprises a refractive index, the refractive index is the refractive index of
the filler material filling the slots (the slots themselves do not have any
refractive index) (FF). We find no support in the cited sections of Zhou of a
"gradient index layer" having a local index of refraction, and an "assist
layer" positioned adjacent the gradient index layer (i.e., separate and distinct
from the gradient index layer) that also has an index of refraction.
We are of the view that the Examiner has not fully developed the
record to show express or inherent anticipation regarding the disputed
limitations ofclaim 1 pursuant to 35 U.S.C. § 102(e). 1 Therefore, we are
constrained to reverse the Examiner's rejection of representative claim 1,
1 In the event of further prosecution, we leave it to the Examiner to consider
whether claim 1 should instead be rejected under 35 U.S.C. § 103(a) and to
explain how the above-discussed deficiencies of Zhou would have been
obvious to one of ordinary skill in the art. Although the Board is authorized
to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See Manual of Patent Examining
Procedure (MPEP) § 1213.02.
5
Appeal2015-007050
Application 13/779,853
and independent claims 11 and 18 argued therewith (App. Br. 7), over Zhou,
as well as claims 2-8, 12-17, 19, and 20 respectively depending therefrom.
Regarding claims 9 and 10, the Examiner does not show how the
Iwanabe overcomes the deficiencies of Zhou. Rather, the Examiner merely
relies on Iwanabe for disclosing a "core" having a "tapered region" of 0.05
to 50 micrometers (Ans. 9-10). Therefore, we also reverse the Examiner's
§ 103 rejections of claims 9 and 10 over Zhou in further view of Iwanabe.
V. CONCLUSION AND DECISION
The Examiner's rejections of claims 1-8 and 11-20 under 35 U.S.C. §
102(b), and claims 9 and 10 under 35 U.S.C. § 103(a), are reversed.
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
6