Ex Parte Tan et alDownload PDFPatent Trial and Appeal BoardDec 27, 201613990009 (P.T.A.B. Dec. 27, 2016) Copy Citation 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. 13/990,009 05/28/2013 Michael Renne Ty Tan 83266112 7767 56436 7590 12/29/2016 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 EXAMINER VU, VU A ART UNIT PAPER NUMBER 2828 NOTIFICATION DATE DELIVERY MODE 12/29/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): hpe.ip.mail@hpe.com chris. mania @ hpe. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL RENNE TY TAN, DAVID A. FATTAL, JINGJING LI, and RAYMOND G. BEAUSOLEIL Appeal 2015-007063 Application 13/990,009 Technology Center 2800 Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection2 of claims 1, 2, and 8.3 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The real party in interest is identified as Hewlett-Packard Development Company, LP. (Appeal Brief, filed February 9, 2015 (“App. Br.”), 3.) 2 Final Office Action mailed September 15, 2014 (“Final Office Action,” cited as “Final Act.”). 3 Rejections of claims 3—7 and 9—15 under 35 U.S.C. § 103(a) have been withdrawn. (Examiner’s Answer mailed May 28, 2015 (“Ans.”), 2.) Appeal 2015-007063 Application 13/990,009 CLAIMED SUBJECT MATTER The claims are directed to a vertical-cavity surface-emitting laser (VCESL) system which is a type of semiconductor laser diode with laser beam emission perpendicular from a top surface. (Spec. 11.)4 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A vertical cavity surface emitting laser (VCSEL) system comprising: a first portion comprising a first mirror and a gain region to amplify an optical signal in response to a data signal, the first portion being fabricated on a first wafer; a second portion comprising a second mirror that is partially-reflective to couple the optical signal to an optical fiber, the second portion being fabricated on a second wafer; and a supporting structure to couple the first and second portions such that the first and second mirrors are arranged as a laser cavity having a predetermined length to resonate the optical signal. (Claims Appendix, App. Br. 24.) REFERENCES The prior art references at issue on appeal are: Jian US 6,328,482 B1 Dec. 11,2001 Lin US 6,669,367 B2 Dec. 30,2003 Ye Zhou, Subwavelength High-Contrast Grating (HCG) and Its Applications in Optoelectronic Devices, a dissertation, University of California, Berkeley, 2008. 4 Application 13/990,099, Vertical-Cavity Surface-Emitting Laser System and Method for Fabricating the Same, filed May 28, 2013. We refer to the “’099 Specification,” which we cite as “Spec.” 2 Appeal 2015-007063 Application 13/990,009 REJECTIONS Claims 1 and 8 are rejected under 35 U .S.C. § 103(a) as being unpatentable over Lin and Jian. (Final Act. 3^4; see also Ans. 2.) Claim 2 (a dependent claim of claim 1) is rejected under 35 U .S.C. § 103(a) as being unpatentable over Lin, Jian, and Ye Zhou. (Final Act. 5; see also Ans. 2.) OPINION Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Appellants and the Examiner do not dispute that Lin teaches every limitation of claim 1 except “a second portion comprising a second mirror that is partially-reflective to couple the optical signal to an optical fiber, the second portion being fabricated on a second wafer.” (Compare App. Br. 10 with Final Act. 4.)5 The Examiner relies on Jian for the teaching of “a second mirror . . .” and concludes that a skilled artisan would have modified Lin in view of Jian for cost savings purposes as taught in Jian to arrive at the system recited in claim 1. (Final Act. 4 (citing Jian 3:52—55).) Appellants argue that the Examiner did not provide a reason as to why a skilled artisan would have combined the teachings of Lin and Jian. (App. Br. 10.) Appellants argue that while Lin discloses a VECSEL, Jian discloses an optical fiber coupler which is incompatible with a VECSEL. (Id.) Appellants argue that Jian’s teaching of cost reduction by eliminating polishing and coating of the optical fiber would not have led a skilled artisan 5 Appellants do not present separate arguments for claim 8 and it therefore stands or falls with claim 1. (See App. Br. 17.) 3 Appeal 2015-007063 Application 13/990,009 to combine the references for “a second portion comprising a second mirror” to be “fabricated on a second wafer” as recited. (Reply 5.)6 To establish prima facie obviousness, all of the claim limitations must be taught or suggested by the prior art. In re Royka, 490 F.2d 981 (CCPA 1974). In this case, Jian is directed to a multilayer optical fiber coupler which may be coupled to other devices such as VCSELs. (Jian 4:4—8.) While Jian discloses that VCSELs may be used as a possible laser source for the optical fiber coupler or a component of an optical fiber transmitter (id. at 5:51—54, 10:7—10), the Examiner has not shown that Jian teaches the various components of a VCSEL such as “a second portion comprising a second mirror” as recited in claim 1 or the arrangement of these components in the structure of the VCSEL. (Final Act. 4 (citing Jian 8:61—63, 10:9—10).) Moreover, Jian discloses that the multilayer fiber coupler may include a natural index-matched system which may eliminate the need for polishing and coating resulting in cost savings. (Jian 3:52—55 (cited in Final Act. 4).) The Examiner, however, has not explained why this cost-saving optical coupler would have led a skilled artisan to a VCSEL system having “a second portion . . . being fabricated on a second wafer” as recited in claim 1. (Final Act. 4.) The Examiner’s Answer, stating that Jian discloses an integrated optical fiber having a glass wafer and a VCSEL wafer, likewise does not explain why such teaching would have led a skilled artisan to ’’fabricate^ on a second wafer” “ a second portion comprising a second mirror” of a VCSEL system as recited in claim 1. (See Ans. 3^4 (citing Jian 10:26-50, Fig. 6).) 6 Reply Brief filed July 21, 2015 (“Reply”). 4 Appeal 2015-007063 Application 13/990,009 Under these circumstances, we cannot conclude that the Examiner has met the minimum threshold of establishing obviousness under 35 U.S.C. § 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). DECISION The Examiner’s rejections of claims 1, 2, and 8 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). See 37 C.F.R. § 1.136(a)(l)(iv). REVERSED 5 Copy with citationCopy as parenthetical citation