Ex Parte Selbrede

Patent Trial and Appeal Board

Sep 25, 2012

11215515 (P.T.A.B. Sep. 25, 2012)

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.
11/215,515 08/30/2005 Martin G. Selbrede UPIXP0112US 4690
93969 7590 09/26/2012
Donald L. Otto (Rambus)
Renner, Otto, Boisselle & Sklar, LLP
1621 Euclid Avenue
19th Floor
Cleveland, OH 44115
EXAMINER
BEDTELYON, JOHN M
ART UNIT PAPER NUMBER
2874
MAIL DATE DELIVERY MODE
09/26/2012 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 MARTIN G. SELBREDE
________________

Appeal 2010-003377
Application 11/215,515
Technology Center 2800
___________________

Before SCOTT R. BOALICK, ERIC B. CHEN, and JOHN A. EVANS,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003377
Application 11/215,515

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STATEMENT OF THE CASE1
Appellant invokes our review under 35 U.S.C. § 134(a) from the final
rejection of claims 1-42. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
Exemplary Claim
Appealed independent claim 1 is exemplary and reads, with disputed
limitations italicized:
1. A noise reduction mechanism comprising:
a planar waveguide having a top surface, a bottom
surface, and four edge surfaces, wherein each of said four edge
surfaces are perpendicular to both said top surface and
said bottom surface;
a cladding layer disposed onto said top surface; and
a light source separated from at least one of said four
edge surfaces by a noise reduction layer, wherein said noise
reduction layer contacts said at least one of said four edge
surfaces, and wherein a material of said noise reduction layer
has a refractive index selected to optimize noise reduction.

Rejections
Claims 1, 13, 25, and 34 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Suzuki (US 7,163,331 B2, issued Jan. 16, 2007, filed
Aug 15, 2003). (Ans. 4-5).
Claims 1, 4, 7, 10-13, 16, 19, 22-25, 27, 29, 31-34, 36, 38, and 40-42
are rejected under 35 U.S.C. § 103(a) as being unpatentable over Steckl (US
7,123,796 B2, issued Oct. 17, 2006, filed Dec. 8, 2003). (Ans. 6-8).

1 Rather than reiterate Appellants’ and the Examiner’s arguments, reference
is made to the Appeal Brief, filed May 15, 2009 (App. Br.), the Examiner’s
Answer, mailed August 19, 2009 (Ans.), and the Reply Brief, filed October
19, 2009 (Reply Br.) for respective details.
Appeal 2010-003377
Application 11/215,515

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Claims 2, 14, 26, and 35 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Steckl and Mendoza (US 2006/0042322 A1, pub.
Mar. 2, 2006, filed July 15, 2005). (Ans. 8-9).
Claims 3, 5, 8, 15, 17, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Steckl and Zhou (US 6,650,822 B1, issued Nov. 18,
2003, filed Jul. 26, 1999). (Ans. 9-10).
Claims 6, 9, 18, 21, 28, 30, 37, and 39 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Steckl and Zhang (US 6,946,238 B2,
issued Sept. 20, 2005, filed Dec. 24, 2002). (Ans. 10).

REJECTIONS OF CLAIMS 1, 13, 25, and 34
CONTENTIONS
Appellant contends that Suzuki fails to disclose a noise reduction
layer. (App. Br. 9).
ANALYSIS
Appellant argues:
The Examiner's assertion that element 52 reduces noise as it
captures light is without any objective support. Except for the
unsupported, subjective opinion of the Examiner, the Examiner
has failed to show how this limitation is taught in Suzuki.
(App. Br. 9).
“Noise” in the Specification refers to undesirable escaping of
light waves from a planar waveguide due to various factors,
primarily caused by manufacturing defects in the planar
waveguide. Page 2, lines 1-27. The Examiner’s interpretation
essentially replaces the term “noise reduction” with
“waveguide,” resulting in this claim limitation reading as
“waveguide layer,” because a waveguide's function is to capture
light entering it while preventing some light from escaping. In
other words, the Examiner is asserting that the function of
capturing light and preventing some of this light from escaping
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Application 11/215,515

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(due to the index of refraction of the waveguide being different
than the index of refraction of the adjoining space) is the same
as reducing the noise inherent in a planar waveguide. But,
capturing light and preventing some of it from escaping is the
function referred to as total internal reflection (TIR). The
problem recognized by the inventor is that only a planar
waveguide manufactured with perfectly parallel and orthogonal
sides forming the rectangular solid will exhibit total internal
reflection, which is thus a theoretical limit. Since all practical
planar waveguides will have an imperfect TIR, noise is inherent
in every planar waveguide. Thus, a planar waveguide is
inherently capable of restricting X% (which is less than 100%)
of light from escaping from its boundaries; the 100 - X% of
light that does escape is the “noise.” That noise is inherent in
the planar waveguide, and there is no way to reduce this noise
level (i.e., no way to reduce the 100-X%) once it has been
manufactured. Under the Examiner's interpretation, the inherent
function of a waveguide to restrict the escaping of light equates
to the reduction of noise. This is incorrect, since this inherent
restriction of light from escaping actually equates to the X% of
light noted above. Once a waveguide in manufactured, it has an
inherent noise percentage due to geometric errors that cannot be
reduced.

(App. Br. 10). The Examiner answers that Suzuki teaches noise reduction:
Wherein a material of said noise reduction layer has a
refractive index selected to optimize noise reduction (element
52 reduces noise as it captures light emitted from light source
50 that would otherwise be lost, guides it by total internal
reflection and further transmitting that light to element 54.

(Ans. 5). Appellant replies:
As noted in the specification, light that enters a planar
waveguide 104 may exit as noise, rather than be totally
internally reflected, if the light strikes a boundary of the
waveguide 104 at an angle exceeding the critical angle. See id.,
page l3, line 20, to page 14, line 28. Noise may be reduced if
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the range of angles is restricted to angles less than a critical
angle of an interior boundary of the planar waveguide 104.
(Reply 2).
Appellant defines “noise” as light that leaks from a waveguide,
unconstrained by TIR. The Examiner defines “noise” as light that is lost
because it is not introduced into the waveguide. In view of the contrasting
definitions, Appellant is persuasive that Suzuki does not disclose a “noise
reduction layer.” In view thereof, we are persuaded that the Examiner has
erred in rejecting claims 1, 13, 25, and 34.

REJECTIONS OF CLAIMS
1, 4, 7, 10-13, 16, 19, 22-25, 27, 29, 31-34, 36, 38, and 40-42
CONTENTIONS
Appellants contend that Steckl fails to disclose a noise reduction
layer. (App. Br. 13).
ANALYSIS
Appellant argues “nowhere does Steckl mention ‘noise reduction’ or a
‘noise reduction layer’.” (App Br. 13). Appellant argues that the Examiner
has re-worded the claim to meet the reference:
The Examiner states that element 42 is the noise reduction
portion. Claim 1 does not recite a noise reduction portion,
rather Claim 1 recites a noise reduction layer that contacts at
least one of the four edge surfaces of the planar waveguide. The
Examiner changes “layer” to “portion” because Steckl does not
show a noise reduction layer 42, rather, 42 is an integral,
extruded extension of planar waveguide 12a. [(]Column 10,
lines 65-68[)]. Extension 42 integral with waveguide 12a means
they are part of a whole. Therefore, it does not make logical
sense to assert that two parts of a whole body can “contact”
each other.

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(App. Br. 13). The Examiner finds Steckl to disclose:
A light source (34) separate from at least one of said four
edge surfaces by a noise reduction portion (42); and

Wherein a material of said noise reduction layer has a
refractive index selected to optimize noise reduction (column
10, line 65 through column 11, line 19, portion 42 prevents
light from leaking out of the device, thereby reducing noise);

(Ans. 6). Appellant replies:
However, as appreciated by those of ordinary skill in the art, the
index of refraction of the noise reduction layer 111 or 203
remains lower than that of the planar waveguide 104 or 202, or
else the noise reduction layer 111 or 203 would fail to
“restrict[] the range of admissible angles entering waveguide
202, where the maximum admitted ray angle is less than the
critical angle for total internal reflection within planar
waveguide 202,” which is needed by the noise reduction layer
111 or 202 to optimize noise reduction. Id., page 15, lines 27-
29.
(Reply 5).
The Steckl disclosure cited by the Examiner does not relate to
regulating the angle of internal reflection by a differential refractive index
method, as claimed. Rather Steckl relates to an external reflector method:
The short wavelength source 34 may be embedded in an
extruded extension 42 of the waveguide 12a, which increases
the light extraction efficiency from the short wavelength source.
Furthermore, by embedding the short wavelength light source
34 in the extruded extension 42 surrounded by the diffuse
reflector 38, light injected into and not satisfying the critical
angle requirement within the extruded portion of the waveguide
12a is reflected by the diffuse reflector 38 and, therefore,
recycled until it satisfies the critical angle requirement.

(Steckl, 10:65-11:7). In view of the Steckl disclosure, we are persuaded by
Appellant that Steckl does not disclose a “noise reduction layer.” In view
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thereof, we are persuaded that the Examiner as erred in rejecting claims 1, 4,
7, 10-13, 16, 19, 22-25, 27, 29, 31-34, 36, 38, and 40-42.

THE REJECTION OF CLAIMS 2, 14, 26, and 35
ANALYSIS
Claims 2, 14, 26, and 35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Steckl in view of Mendoza. (Ans. 8-9). Steckl is
cited as teaching the limitations of claims 1, 13, 25, and 34 as discussed
above. Mendoza is cited as teaching a cladding lay comprising a sol-gel.
(Ans. 9). Appellant traverses Steckl, as discussed above.
We are persuaded that Steckl does not teach or suggest a noise
reduction layer and Mendoza is not cited as so teaching. Therefore, we do
not sustain the rejection of claims 2, 14, 26, and 35.

THE REJECTION OF CLAIMS 3, 5, 8, 15, 17, and 20
ANALYSIS
Claims 3, 5, 8, 15, 17, and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Steckl in view of Zhou. (Ans. 8-9). Steckl is cited
as teaching the limitations of claims 1, 13, 25, and 34 as discussed above.
Zhou is cited as teaching a cladding lay comprising an aerogel. (Ans. 9-10).
Appellant traverses Steckl, as discussed above.
We are persuaded that Steckl does not teach or suggest a noise
reduction layer and Zhou is not cited as so teaching. Therefore, we do not
sustain the rejection of claims 3, 5, 8, 15, 17, and 20.

Appeal 2010-003377
Application 11/215,515

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THE REJECTION OF CLAIMS 6, 9, 18, 21, 28, 30, 37, and 39
ANALYSIS
Claims 6, 9, 18, 21, 28, 30, 37, and 39 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Steckl in view of Zhang. (Ans. 10).
Steckl is discussed above. Zhang is cited as teaching a core layer comprising
an aerogel. (Ans. 10). Appellant traverses Steckl, as discussed above.
We are persuaded that Steckl does not teach or suggest a noise
reduction layer and Zhang is not cited as so teaching. Therefore, we do not
sustain the rejection of claims 6, 9, 18, 21, 28, 30, 37, and 39.

ORDER
The Examiner’s decision rejecting claims 1-42 is reversed.

REVERSED