Ex Parte Yi et al

Board of Patent Appeals and Interferences

Oct 17, 2011

10995691 (B.P.A.I. Oct. 17, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT H. YI, BRENTON A. BAUGH, JIM H. WILLIAMS,
ROBERT E. WILSON, and RICHARD A. RUH
____________________

Appeal 2009-011640
Application 10/995,691
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, JEFFREY S. SMITH, and
BRUCE R. WINSOR, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 2, 3, 5-8, 10-15, and 17-21. We have jurisdiction under 35 U.S.C.
§ 6(b).
Exemplary Claim
Exemplary independent claim 5 under appeal reads as follows:
5. An optoelectronic module comprising:
a primary module; and
an optical subassembly mounted on the primary module,
comprising:
a substrate;
an optoelectronic chip mounted on the substrate;
a cap that encloses the optoelectronic chip and comprises
a turning mirror that is integrated as part of the cap;
wherein the substrate is substantially parallel to the
primary module and the turning mirror turns a light path of the
optical subassembly between being perpendicular to the
substrate to being parallel to the substrate.

Rejections on Appeal 1
1. The Examiner rejected claims 3, 5, 7, 12, 14, and 21 under
35 U.S.C. § 102(b) as being anticipated by Dwarkin (US 6,454,470 B1). 2

1 Separate patentability is not argued for claims 6-8, 10-15, 17-19, or 21.
Rather, Appellants merely quote selected claims under separate headings
and restate verbatim the argument made for claim 5. “A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii)(last
sentence).

2 Claim 7 is rejected under both § 102 and § 103 for the reasons set forth by
the Examiner. (Ans. 5).
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2. The Examiner rejected claims 2, 7, and 20 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Dwarkin and
Jewell (US 5,500,540).
3. The Examiner rejected claim 6 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Dwarkin, Gilliland (US
6,556,608 B1), and McGarvey (US 2005/0191012 A1).
4. The Examiner rejected claims 8, 10, and 11 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Dwarkin and
Wilson (US 6,921,214 B2).
5. The Examiner rejected claims 13, 15, 17, 18, and 19 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Dwarkin and
Hargis (US 2005/0175299 A1).
Appellants’ Contentions
1. At pages 8-9 of the Appeal Brief, Appellants contend that
Dwarkin does not support anticipation of claim 5 because while “Dwarkin et
al. discloses a mirror 96 integrated as part of a housing 82,” “Dwarkin et al.
does not disclose a turning mirror, wherein the turning mirror and the cap
are a one-piece structure.”
2. At page 18 of the Appeal Brief, Appellants contend that
Dwarkin and Jewell do not support the obviousness of claim 20 because
“[n]either Dwarkin nor Jewell either in combination or individually teach a
heatsink mounted on the cap.”
3. At page 8 of the Reply Brief, Appellants contend that Dwarkin
and Jewell do not support the obviousness of claims 2 and 7 because “the
Examiner’s proposed combination of Dwarkin nor Jewell is based solely on
hindsight derived from Appellants’ specification.”
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Issues on Appeal
Whether the Examiner has erred in rejecting claim 5 as being
anticipated because Dwarkin fails to teach the turning mirror and the cap are
a one-piece structure?
Whether the Examiner has erred in rejecting claim 20 as being
obvious because the prior art fails to suggest a heatsink mounted on the cap?
Whether the Appellants have timely raised the issue of hindsight?

ANALYSIS
We have reviewed the Examiners’ rejections in light of Appellants’
contentions that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. We
concur with the conclusions reached by the Examiner.
Further as to above contention 1, see particularly the Examiner’s
discussion at pages 11-12 of the Answer. Separately, we see no basis in
claim 5 for Appellants’ argument that the claim requires a “one-piece
structure” for the turning mirror and cap. Rather, claim 5 explicitly requires
“a turning mirror that is integrated as part of the cap” and places no
restriction on the number of additional pieces that form the cap.
Further as to above contention 2, see particularly the Examiner’s
discussion at pages 12-13 of the Answer. Separately, we note the
Appellants’ contention is not consistent with Appellants’ admission that the
prior art comprises a heatsink. (Appellants’ Spec. at ¶[0005] and Fig. 1).
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Lastly, as to above contention 3, in Appellants’ Reply Brief, we are
asked to consider an argument that could have been presented in the
Principal Brief on Appeal, but was not. In the absence of a showing of good
cause, we conclude that the regulations set out in 37 C.F.R. § 41, Practice
Before the Board of Patent Appeals and Interferences, do not require the
Board to consider such a belated argument. For a full discussion of this
issue, see Ex Parte Borden, 93 USPQ2d 1473 (BPAI 2010) (Informative).
The Examiner’s statement of rejections in the Answer appears to be
identical to the statement of the rejections in the Final Rejection.
Appellants, however, raised new arguments against the rejections in the
Reply Brief and do not explain what “good cause” there might be to consider
the new arguments. On this record, Appellants’ new arguments are belated.
The Rules do not require the Board to take up a belated argument that has
not been addressed by the Examiner, absent a showing of good cause.
Further with respect to contention 3, we are particularly concerned
that Appellants’ principle Appeal Brief (Sept. 20, 2007), which was filed
more than four months subsequent to KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398 (2007), fails to acknowledge the Court’s decision in KSR and instead
argues the suggestion or motivation theory explicitly rejected by the Court.
KSR, 550 U.S. at 415 (“We begin by rejecting the rigid approach of the
Court of Appeals.”). In light of Appellants’ decision not to address KSR in
their principle Appeal Brief, that the Examiner in the Answer pointed the
Appellants to the Court’s analysis in KSR is not by itself “good cause” for
Appellants to present belated arguments.
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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 3, 5, 7, 12, 14, and
21 as being anticipated under 35 U.S.C. § 102(b).
(2) The Examiner has not erred in rejecting claims 2, 6, 7, 8, 10, 11,
13, 15, and 17-20 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 2, 3, 5-8, 10-15, and 17-21 are not patentable.

DECISION
The Examiner’s rejections of claims 2, 3, 5-8, 10-15, and 17-21 are
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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