15075126 - (D) (P.T.A.B. Jul. 28, 2020)

II-VI Incorporated

Patent Trials and Appeals BoardJul 28, 2020

15075126 - (D) (P.T.A.B. Jul. 28, 2020)

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. 15/075,126 03/19/2016 Ian Peter McClean IP00017 7468 146730 7590 07/28/2020 Wendy W. Koba II-VI Incorporated PO Box 556 Springtown, PA 18081 EXAMINER JORDAN, ANDREW ART UNIT PAPER NUMBER 2883 NOTIFICATION DATE DELIVERY MODE 07/28/2020 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): wendykoba@usa.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte IAN PETER McCLEAN, ARAVANAN GURUSAMI, RICHARD SMART, MARK H. GARRETT, and MARK FILIPOWICZ Appeal 2019-004653 Application 15/075,126 Technology Center 2800 ____________ Before MICHAEL P. COLAIANNI, MICHAEL G. McMANUS, and JANE E. INGLESE, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–12. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as II-VI Incorporated. Appeal Br. 1. Appeal 2019-004653 Application 15/075,126 2 Appellant’s invention is directed to optical modules that use a flexible substrate to support various optical, electronic, and opto-electronic module components in a manner that can accommodate various packaging constraints (Spec. ¶ 2; Claim 1). Claim 1 is representative of the subject matter on appeal: 1. An optical module comprising a plurality of optical components; a plurality of electro-optic components; sections of optical fiber interconnecting the plurality of optical components and the plurality of electro-optic components in a predetermined configuration; and a flexible substrate including an adhesive-coated surface layer, where the plurality of optical components and the plurality of electro-optic components are affixed to the adhesive-coated surface layer and the sections of optical fiber are disposed in paths formed within the adhesive-coated surface layer. Appellant appeals the following rejections: 1. Claims 1–7, and 9–12 are rejected under 35 U.S.C. § 103 as unpatentable over Arellano (US 2005/0018950 A1 published Jan. 27, 2005). 2. Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over Arellano in view of Zediker (US 2004/0125846 A1, published July 1, 2004). Appellant argues subject matter common to independent claims 1 and 11 (Appeal Br. 5–11). We select claim 1 as representative. 37 C.F.R. § 41.37(C)(1)(iv). Appellant separately argues claim 8 under rejection (2) (Appeal Br. 11). Appeal 2019-004653 Application 15/075,126 3 FINDINGS OF FACT & ANALYSIS Rejection (1) The Examiner’s findings and conclusions regarding the § 103 rejection of claim 1 over Arellano are located on pages 4–6 of the Final Action. Appellant argues that the Examiner conflates the claim terms “optical components” and “optical fiber” and has not shown that Arellano teaches each claim limitation (i.e., optical components and optical fiber sections) on an optical amplifier (Appeal Br. 7). Appellant contends that optical components and optical fiber sections as interpreted in light of the Specification must be read as mutually exclusive terms where optical fibers are distinct from optical components such as amplifiers, isolators, multiplexers (Appeal Br. 7–10). Appellant further contends that Arellano does not teach electro-optic components (Appeal Br. 6). Appellant concedes that electro-optic components may be used with Arellano’s amplifier, but argues that there would have been no motivation to re-configure Arellano’s circuit to accommodate the temperature independent electro-optic elements on Arellano’s temperature controlled flexible optical circuit (Appeal Br. 7). Appellant contends that a person of ordinary skill in the art would have isolated the optical components and electro-optic components from Arellano’s heated circuit structure instead of incorporating them into the flexible circuit (Appeal Br. 9). Claim 1 recites, in relevant part, “a plurality of optical components; a plurality of electro-optic components; sections of optical fiber interconnecting the . . . optical components and . . . electro-optic components in a predetermined configuration.” By its very terms, the portion of claim 1 Appeal 2019-004653 Application 15/075,126 4 cited includes three distinct elements: electro-optic components, optical components and sections of optical fiber. The Specification does not provide a formal definition of these terms. As pointed out by Appellant, the Specification provides examples of optical components and electro-optic components (Spec. ¶¶ 8, 25). Examples of optical components include, but are not limited to, switches and multiplexers (Spec. ¶ 25). Electro-optic components may include attenuator, tunable filter, laser diode pump source, or any device that includes an electrical input or output signal (Spec. ¶ 25). The Specification further describes that fiber segments 30 are shown in Figure 1 that couple together the components forming the module (Spec. ¶ 26). We agree with Appellant that optical components, electro-optic devices and segments of optical fibers are distinct elements in the claim. The Examiner finds that an optical fiber segment is an optical component (Ans. 4). In light of the distinction set forth in the Specification, we disagree with the Examiner. However, the Examiner does not rely on that interpretation of optical fiber alone. Rather, the Examiner further finds that Arellano’s prior art embodiments disclose that optical components (i.e., multiplexer) and an electro-optic component (i.e., laser diode) must be coupled to one another using optical fiber as shown by arrows 108 and 206 in Arellano’s Figures 1 and 2 (Ans. 8). Appellant does not contest or otherwise show error with this interpretation and finding (No Reply Brief filed). The Examiner’s findings that Arellano’s laser diode is an electro- optic device and the multiplexer is an optical component is supported by the Specification. (See, Spec. ¶ 25). Appellant contends that there is no motivation to combine optical components or electro-optic components with Arellano’s heated optical Appeal 2019-004653 Application 15/075,126 5 amplifier (Appeal Br. 7, 9). Appellant’s argument is not persuasive because it fails to address and establish reversible error with the Examiner’s determination that a person of ordinary skill in the art would have combined the electro-optic components, the optical components and optical fiber segments to provide a more self-contained amplifying system (Final Act. 5; Ans. 6). Appellant provides no evidence that the electro-optic components or the optical components are affected by heat. Rather, Appellant concedes that electro-optic components may be used with Arellano’s invention but these components do not require temperature control of the gain fiber (i.e., they are temperature independent) (Appeal Br. 7). Appellant has not shown that either the optical components, or electro-optic components would have been negatively impacted by Arellano’s heated structure. On this record, we affirm the Examiner’s § 103 rejection of claims 1– 7 and 9–12 over Arellano. Rejection (2) Claim 8 depends from claim 1 and recites “wherein the module further comprises at least one cooler element affixed to the adhesive-coated surface layer of the flexible substrate.” Appellant argues that a person of ordinary skill would not have combined a cooler with Arellano’s subject matter that requires heating an optical fiber (Appeal Br. 11). Appellant’s argument is not persuasive because it fails to address the Examiner’s rejection based on combining Zediker’s heat sink with Arellano’s device to provide temperature control and a tailored index associated with the optical amplifier by varying the thermal impedance of the junction at the heat sink (Final Act. 10). Appellant Appeal 2019-004653 Application 15/075,126 6 provides no specific arguments regarding this combination. The preponderance of the evidence favors the Examiner’s conclusion that using Zediker’s heat sink to provide temperature control and a tailored index to optical amplifiers in Arellano’s optical amplifier would have been obvious. On this record, we affirm the Examiner’s § 103 rejection of claim 8. CONCLUSION In summary: Claims Rejected 35 USC § Prior Art Affirmed Reversed 1–7, 9–12 103 Arellano 1–7, 9,– 12 8 103 Arellano, Zediker 8 Overall Outcome 1–12 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R § 1.136(a) AFFIRMED