Ex Parte Popp

Patent Trial and Appeal Board

Oct 17, 2013

12338589 (P.T.A.B. Oct. 17, 2013)

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.
12/338,589 12/18/2008 Gregor Popp 5858-10300 SR 2007/24
US
5690
35617 7590 10/18/2013
DAFFER MCDANIEL LLP
P.O. BOX 684908
AUSTIN, TX 78768
EXAMINER
TAVLYKAEV, ROBERT FUATOVICH
ART UNIT PAPER NUMBER
2883
MAIL DATE DELIVERY MODE
10/18/2013 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 GREGOR POPP
________________

Appeal 2011-005382
Application 12/338,589
Technology Center 2800
________________

Before RICHARD E. SCHAFER, SALLY G. LANE, and JOHN G. NEW,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/338,589

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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1-24. Specifically, claims 1-7, 9-11,
13-18, 20, 21, 23, and 24 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Ames et al. (US
5,371,814, December 6, 1994) (“Ames”) and Basavanhally et al. (US
5,185,846, February 9, 1993) (“Basavanhally”).
Claims 8, 12, 19, and 22 stand rejected as unpatentable under 35
U.S.C. § 103(a) as being obvious over the combination of Ames,
Basavanhally, and Thiele et al. (US 2004/0017984 Al, January, 29, 2004)
(“Thiele”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s invention is directed to a rotating data transmission
device for optical signals comprising two collimator arrangements for
coupling light-waveguides, the collimator arrangements being rotatable
relative to each other, and a derotating element being interposed in a light
path between the collimator arrangements. At least one collimator
arrangement comprises a lens system with a micro-lens array, and a light-
waveguide holder firmly mounted to the micro-lens array with an
intermediate space between the holder and the micro-lens array. At least
one light-waveguide for supplying or collecting light to or from a micro-
lens is fastened to both the micro-lens array and to the holder to prevent
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bending loads with attendant shifts of a mode field from acting upon the
light-waveguide between the holder and the micro-lens array. Abstract.

GROUPING OF CLAIMS

Claim 1 is representative of the claims on appeal. App. Br. 5, 10.
Claim 1 recites:
1. An optical rotating data transmission device, comprising:

a first collimator arrangement for coupling first light-
waveguides;

a second collimator arrangement for coupling second
light-waveguides rotatable relative to the first
collimator arrangement about a rotation axis; and

a derotating optical element located in a light path
between the first collimator arrangement and the
second collimator arrangement;

wherein the first collimator arrangement and the second
collimator arrangement comprises a substrate
having a front surface on which micro-lenses are
formed, and an opposite rear surface through
which light-waveguides are led for optical
coupling with the micro-lenses, and a light-
waveguide holder connected to the substrate;

wherein the light-waveguide holder has a holding portion
extending parallel along and at a given distance
from the rear surface; and

wherein at least one light-waveguide optically coupled to
a micro-lens is connected both to the substrate and
the holding portion.

App. Br. 11.
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ISSUES AND ANALYSES
Issue 1
Appellant argues that the Examiner erred in finding that the
combination of Ames and Basavanhally teaches or suggests the limitation
of claim 1 reciting “wherein the first collimator arrangement and the second
collimator arrangement comprises a substrate having a front surface on
which micro-lenses are formed….” App. Br. 6-7. We therefore address the
issue of whether the Examiner so erred.

Analysis
Appellant argues that Ames explicitly teaches mounting lenses 54
within apertures of pieces 12 and 26, rather than forming lenses on one
surface of the substrate as required by claim 1. App. Br. 6 (citing Ames,
col. 7, ll. 53-55). According to Appellant, the teachings of Ames require
that the lenses 54 be “mounted in” aperture 52, since they are first coupled
to the “end face” of the fiber transmission optical fibers by an epoxy
cement. App. Br. 6 (citing Ames, col. 7, ll. 59-65).
Appellant argues further that Ames teaches that the spacing between
the terminal ends of optical fibers 53 and corresponding lenses 54 should be
adjustable so as to properly adjust the amount of collimation and beam
focus. App. Br. 6 (citing Ames, col. 11, ll. 3-45; Fig. 1). Appellant
contends that, if the beam is not properly optically coupled, the optic fiber
is detached from the lens and the lenses are cleaned and polished to a
shorter length prior to reattachment of the optic fiber. App. Br. 6 (citing
Ames, col. 11, ll. 22-32, 35-44). Therefore, argues Appellant, Ames
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teaches away from the present claims by requiring that the lenses be
separate so they can be polished and re-secured through a repeated process
to the lens and fiber joints 18, 28. App. Br. 6. Appellant also argues that
joints 18, 28 must be separate and apart from the array piece substrates, not
on which they are formed (as claimed), but rather in which they are
mounted. App. Br. 6-7. Appellant thus argues that because Ames teaches
that lens 54 is polished or ground prior to insertion into apertures 52, lens
54 cannot be the claimed micro-lens array formed on a front surface of the
substrate. App. Br. 7.
The Examiner responds that Ames teaches that types of lenses other
than the illustrated rod-shaped graded-index (“GRIN”) lenses can be
employed in the disclosed invention. Ans. 10 (citing Ames, col. 9,
ll. 30-35). The Examiner particularly notes that Ames teaches that
aspherical lenses can be used which, when compared to rod-shaped GRIN
lenses, have the benefit of reducing optical loss. Id. The Examiner finds
that Ames provides an illustration of one such aspherical lens disposed on a
rod-shaped GRIN lens. Ans. 10 (citing Ames, Fig. 3). The Examiner
therefore finds that the teachings of Ames contemplate embodiments
wherein such an aspherical lens can be used by itself, i.e., without any
GRIN lens. Ans. 10. The Examiner finds that since the lens size/diameter
can exceed that of the optical fibers, the lens would necessarily have to be
placed on the front surface of the substrate (56) and that the fibers (53)
would have to extend to the front surface of the substrate (through
respective holes). Ans. 10-11.
We are persuaded by the Examiner’s reasoning. As an initial matter,
Appellant’s argument concerning the detachability and polishing of the
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lenses, as taught by Ames, is inapposite. The language of Appellant’s
claims say nothing with respect to the attachment of the optic fibers to the
micro-lenses beyond the fact that they are coupled. Appellant concedes that
Ames teaches that the optic fibers are coupled to the GRIN lenses. App. Br.
6 (citing Ames, col. 11, lines 35-44). We therefore need not address that
argument further.
Moreover, we disagree that Ames teaches away from the disputed
limitation. A reference may be said to teach away when “a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). Appellant has adduced no evidence
suggesting that the teachings of Ames would discourage or divert an artisan
of ordinary skill from the requirements of the disputed limitation.
Appellant merely argues that Ames does not teach “a substrate having a
front surface on which micro-lenses are formed” but teaches rather that the
lenses are inserted into apertures in the substrate. App. Br. 6-7. We find
that this does not rise to the measure of teaching away from the disputed
limitation.
Ames teaches cylindrical lenses (54) inserted into forward-facing
apertures (52) in the substrate (56). Ames, col. 7, ll. 53-57. Ames depicts
the forward face of these GRIN lenses in Figure 1 as being flush with the
forward surface of the substrate. See Ames, Figure 1. We agree with the
Examiner, however, that Ames teaches that other types of lenses may
alternatively be employed, including an aspherical-type collimation lens.
Ames, col. 9, ll. 30-35; see Fig. 3. Examining Figure 3, which depicts an
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aspherical lens coupled at its base to a cylindrical GRIN lens, we find that a
person of ordinary skill would likely position the aspherical lens such that
the base of the aspherical lens would be flush with the forward surface of
the substrate. However, we agree with the Examiner that Ames teaches that
an aspherical lens alone may be used in the disclosed invention; Ames
teaches that “[t]he lenses preferably are gradient index rods …. However,
other types of lenses which may be employed include an aspherical type
miniature collimation lens.” Ames, col. 9, ll. 25-35. The teachings of
Ames do not therefore teach or suggest that the latter lens must be
combined with the former.
Given the hemispherical shape of the aspherical lens taught in Ames’
Figure 3, we conclude that a person of ordinary skill in the art would have
found it obvious to attach these aspherical lenses to the forward face of the
substrate, over the aperture, and to couple the lens with a fiber optic
waveguide through the aperture. We therefore conclude that the Examiner
did not err in determining that the cited prior art references teach or suggest
the disputed limitation.

Issue 2
Appellant argues that the Examiner erred in combining Ames and
Basavanhally, which also teach away from the limitation of claim 1 reciting
a “light-waveguide holder has a holding portion extending parallel along
and at a given distance from the rear surface.” App. Br. 9. We therefore
address the issue of whether the Examiner so erred.

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Analysis
Appellant argues that Ames does not teach or suggest a holder that is
spaced from the rear surface of a substrate, such as substrate 56, 57. App.
Br. 9. Appellant also argues that although Basavanhally describes a holder
spaced from plate 15, plate 15 is not a substrate on which a micro-lens array
is formed on the front surface. Id. Instead, according to Appellant, any
lenses taught by Basavanhally must be spaced and separate from plate 15 in
order to gain access and grind the fiber ends 39. Id.
The Examiner responds that Basavanhally teaches a holding portion
extending parallel along and at a given distance from the rear surface; and
wherein at least one light-waveguide is inside a through bore hole and is
connected both to the substrate and the holding portion. Ans. 6 (citing
(Basavanhally, col. 3, ll. 40-43).
We are not persuaded by Appellant’s reasoning. As an initial matter,
the Examiner’s rejection of claim 1 is based on the combination of the cited
prior art references, rather than on an individual reference. See In re Keller,
642 F.2d 413, 426 (C.C.P.A. 1981) (“[O]ne cannot show non-obviousness
by attacking references individually where … the rejections are based on
combinations of references”).
We agree with the Examiner that Basavanhally teaches the disputed
limitation. Figure 3 of Basavanhally depicts a substrate 15 and, spaced
parallel to its rear surface, a holder 14, which is connected 19 to the
substrate. We have explained supra our finding that Ames teaches or
suggests the limitation of a substrate upon which a micro-lens array is
positioned on its forward surface. We therefore conclude that the Examiner
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did not err in finding that the cited prior art references teach or suggest the
disputed limitation.

DECISION
The Examiner’s rejection of claims 1-24 under 35 U.S.C. § 103(a) is
affirmed.

TIME PERIOD FOR RESPONSE
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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