Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardMay 13, 201612756166 (P.T.A.B. May. 13, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121756, 166 04/07/2010 47394 7590 05/17/2016 PARKER JUSTISS, P,CJALCATEL-LUCENT PO BOX 832570 RICHARDSON, TX 75083 FIRST NAMED INVENTOR Long Chen 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 806801-US-NP 1090 EXAMINER JORDAN, ANDREW ART UNIT PAPER NUMBER 2883 NOTIFICATION DATE DELIVERY MODE 05/1712016 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): docket@pj-iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LONG CHEN, LIMING ZHANG, CHRISTOPHER DOERR, and NICOLAS DUPUIS Appeal2015-000515 Application 12/756,166 Technology Center 2800 Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and NATHAN A. ENGELS, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-16 and 18-20. We have jurisdiction under 35 U.S.C. § 6(b ). Claims 17 and 21 are canceled. See App. Br. 21. We reverse. 1 According to Appellants, the real party in interest is Alcatel-Lucent USA, Incorporated. App. Br. 3. Appeal2015-000515 Application 12/756,166 STATEMENT OF THE CASE The Invention Appellants' invention relates "to optical devices and, more specifically, to an optical coupler." Spec. i-f 1. Claims 1, 10, and 16 are independent. Claim 1 is illustrative of the subject matter on appeal: 1. An apparatus, comprising: a crystalline inorganic semiconductor substrate, having a cavity formed therein; a planar optical waveguide core located over said substrate such that a first length of said planar optical waveguide core is directly on and supported by a portion of said substrate adjacent said cavity; and a regular array of optical scattering structures located within a second length of said planar optical waveguide core, said second length extending over said cavity, and said planar optical waveguide having a terminal end located over said cavity. See App. Br. 18. Rejections on Appeal Claims 1, 3, 4, 9, 10, 13, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gunn, III et al. (2004/0156589 Al; published Aug. 12, 2004) ("Gunn") and Haskell et al. (US 2008/0100176 Al; published May 1, 2008) ("Haskell"). See Final Act. 3-10. Claims 8 and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gunn, Haskell, and Yokouchi (US 2007/0274638 Al; published Nov. 29, 2007). See Final Act. 10-12. Claims 2, 11, and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gunn, Haskell, and R. Grover et al., Ultracompact single- 2 Appeal2015-000515 Application 12/756,166 mode GalnAsP-lnP microracetrack resonators, 91 OSA Trends in Optics and Photonics 1-3 (Paper ITuE5) (2003) ("Grover"). See Final Act. 12-13. Claims 5, 6, 14, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gunn, Haskell, and Dirk Taillaert et al., A Compact Two- Dimensional Grating Coupler Used as a Polarization Splitter, 15 IEEE Photonics Technology Letters 1249-51 (2003) ("Taillaert"). See Final Act. 13-15. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Gunn, Haskell, and Kwon et al. (US 2003/0219208 Al; published Nov. 27, 2003) ("Kwon"). See Final Act. 15-16. ISSUE The dispositive issue presented by Appellants' contentions is as follows: Does the Examiner err in combining Gunn and Haskell to reject claim 1? ANALYSIS The Examiner finds Gunn's integrated optical apparatus, which has a planar waveguide on a semiconductor substrate and a grating coupler that includes a gas-filled cavity, teaches or suggests every element of claim 1 except "said planar optical waveguide having a terminal end located over said cavity." See Final Act. 3--4 (citing Gunn Fig. 27, i-f 193). To teach this limitation, the Examiner relies on the cantilevered mechanical structure of Haskell's acoustic wave microsensor (see Final Act. 4; Haskell Fig. 2b; Fig. I Ob, item 170; i-fi-1138-140), but explains that the flexing operation of Haskell's cantilevered mechanical structure is collateral to and not included 3 Appeal2015-000515 Application 12/756,166 in the Examiner's rejection (see Ans. 2-3). The Examiner concludes "[i]t would have been obvious to one having ordinary skill in the art at the time of [Appellants'] invention to have a terminal end with a grating located over a cavity along the lines of Haskell in a system according to Gunn ... as an alternative structure having similar operating characteristics." See Final Act. 4. The Examiner further concludes "[i]t would [have been] obvious to try a cavity configuration along the lines of Haskell in a system according to Gunn in order to control/effect the reflection of deviant light rays and direct them back toward the waveguide grating for coupling into a planar waveguide." See id. at 5; Gunn i-f 41. Appellants contend, inter alia, "the applied combination of the cited portions of Gunn and Haskell is improper" because "one of ordinary skill in the art at the time of the invention would not be motivated to modify Gunn with the mechanical structure of Haskell" as "[t]here is no suggestion or motivation to make the proposed modification." See Reply Br. 2; App. Br. 9-10. We have considered Appellants' arguments (see App. Br. 6-10; Reply Br. 2-3) in view of the Examiner's findings (See Final Act. 3-5) and explanations (see Ans. 2-3) and are persuaded of error. We find nothing in the Examiner's findings, explanations, or conclusions that would lead, or otherwise suggest to, one of ordinary skill in the art to apply Haskell's cantilevered acoustic wave microsensor to Gunn's integrated optical apparatus in order to improve coupling efficiency between Gunn's planar optical waveguide and fiber waveguide. We disagree with the Examiner that the similar operating characteristics between optical and acoustic waves would have led one of ordinary skill in the art to combine Gunn and Haskell. 4 Appeal2015-000515 Application 12/756,166 See Final Act. 4. Indeed, the mere fact that optical and acoustic waves have similar operating characteristics does not persuasively evidence that Haskell's cantilevered acoustic wave microsensor would guide light waves in a manner similar or equivalent to the claimed "planar optical waveguide having a terminal end located over said cavity." Further, contrary to the Examiner's position, we agree with Appellants that "the intentional flexing structure of [Haskell's cantilevered acoustic wave microsensor] cannot simply be ignored or discounted" because the ability to flex is the intended purpose and principle mode of operation of Haskell's cantilevered acoustic wave micro sensor. See Haskell Abstract ("[A] flexure of the cantilever produces force-frequency effects measurable by the acoustic wave device."); see also id. Title ("HIGH SENSITIVITY MICROSENSORS BASED ON FLEXURE INDUCED FREQUENCY EFFECTS") (emphasis added). In view of the foregoing, Appellants have persuaded us the Examiner erred in combining Gunn and Haskell to reject claim 1. Accordingly, we do not sustain the rejection of claim 1; as well as independent claims 10, 16, and dependent claims 2-9, 11-15, and 18-20, each of which includes the same deficiency. DECISION The decision of the Examiner to reject claims 1-16 and 18-20 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation