Ex Parte Kolb et alDownload PDFPatent Trial and Appeal BoardMar 11, 201613133740 (P.T.A.B. Mar. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/133,740 06/09/2011 Johanna S. Kolb 24737 7590 03/15/2016 PHILIPS INTELLECTUAL PROPERTY & STANDARDS P.O. BOX 3001 BRIARCLIFF MANOR, NY 10510 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. 2008P01251WOUS 5384 EXAMINER NGUYEN, TUAN N ART UNIT PAPER NUMBER 2828 NOTIFICATION DATE DELIVERY MODE 03/15/2016 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): debbie.henn@philips.com marianne.fox@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHANNA S. KOLB, MICHAEL MILLER, SEBASTIEN WINTERSTEIN, and UWE ERNST1 Appeal2014-005018 Application 13/133,740 Technology Center 2800 Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to a vertical cavity surface emitting laser ("VCSEL"). Spec. 1 :7-8; Claim 1. Claim 1 is reproduced below from page 17 (Claims Appendix) of the Appeal Brief: 1 According to the Appellants, the real party in interest is Koninklijke Philips Electronics N.V. App. Br. 2. Appeal2014-005018 Application 13/133,740 1. A VCSEL device comprising: an optical gain medium arranged between a first DBR [distributed Bragg reflector] and a second DBR, said first and said second DBR forming a laser cavity and being designed to allow self-contained lasing in said laser cavity and said second DBR being partially transparent for laser radiation resonating in said laser cavity, and an optical element arranged on a side of said second DBR outside of said laser cavity on an optical axis of said laser cavity, said optical element having a concave surface facing said second DBR and being designed to reflect a portion of laser radiation emitted through the second DBR back into the laser cavity, wherein a ratio RI d of a radius of curvature R of said concave surface and a distance d between said concave surface and said gain medium is in the range between 1 and 2; and, wherein the optical element has a reflectivity of less than 40%. ANALYSIS Claims 1-7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mooradian (US 2002/0176473 Al, published November 28, 2002) in view of Lee (EP 1207599 A2, published May 22, 2002), further in view of Caprara (WO 01/95445 A2, published December 13, 2001). The Appellants do not argue the claims separately, so the claims stand or fall together. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). We treat claim 1, reproduced above, as representative of the rejected claims. After review of the cited evidence in the appeal record and the opposing positions of the Appellants and the Examiner, we determine that the Appellants have not identified reversible error in the Examiner's rejection. Accordingly, we affirm the rejection for reasons set forth by the 2 Appeal2014-005018 Application 13/133,740 Examiner in the Final Action and in the Answer. See generally Final Act. 2---6; Ans. 3-8. We add the following for emphasis and completeness. In the Final Action, the Examiner finds that Mooradian teaches each element of claim 1 except that it does not explicitly disclose (1) a ratio of Rid between 1 and 2, and (2) that the reflectivity of the optical element is less than 40%. Final Act. 4. Concerning the Rid ratio, the Examiner finds that Mooradian discloses the general conditions of claim 1 (i.e., a VCSEL with a concave optical element that is spaced a distance from the gain medium), and further finds that "it is within [the ordinary level of] skill in the art to select certain curvature ratio, to achieve the beam type focus output." Id. at 3--4 (citing Mooradian Fig. 1 ). Similarly, the Examiner finds that Lee discloses a VCSEL with a concave optical element and teaches the optimization of variables (including lens curvature, width of window, focal length, and others) to affect beam output. Id. The Examiner concludes that, in light of the teachings of Mooradian and Lee, it would have required only routine skill to optimize the RI d ratio "for the benefit of achieving focus and alignment of the optic output." Id. at 4. Concerning reflectivity of the optical element of less than 40%, the Examiner finds that Caprara teaches an optical pumped semiconductor laser comprising a mirror having reflectivity of less than 40%. Id. In the Answer, the Examiner also finds that Mooradian teaches a reflectivity of the optical element "from near zero to more than 99%, depending on the specific application." Ans. 4 (citing Mooradian i-f 25). The Examiner concludes that it would have been obvious to optimize the reflectivity of the optical element of Mooradian to less than 40% in order to minimize noise from reflective feedback. Final Act. 4; Ans. 4. 3 Appeal2014-005018 Application 13/133,740 The Appellants first argue that the cited prior art references do not teach an optical element having a reflectivity of less than 40%. App. Br. 5- 9. Specifically, they argue that the portions of Caprara relied upon by the Examiner as disclosing a reflectivity of less than 40% do not describe "the optical element" of Caprara, but instead describe "the emitting surface ... of the laser gain structure." Id. at 8-9. Even taking that to be true, it fails to establish reversible error in the Examiner's rejection. The Examiner relies principally on Mooradian for the teaching of an optical element as recited by claim 1. E.g., Final Act. 2-3. The Examiner relies on Caprara only to support the finding that it was generally known to optimize the reflectivity of surfaces (including optical elements) in laser devices to achieve a desired noise level from reflective feedback. Ans. 4, 6-8. That finding is consistent with Mooradian, which also teaches optimizing reflectivity to control feedback. E.g., Mooradian i-fi-125, 31. Thus, Caprara and Mooradian provide general guidance on optimizing feedback to the lasing cavity in order to achieve desired beam characteristics, and those general teachings would apply to feedback from any source, including the optical element. Thus, the Examiner's rejection does not hinge on whether the specific element of Caprara having a reflectivity of less than 40% is "the optical element" recited by claim 1. E.g., Ans. 6-8 ("[Caprara] was used to refine the reflectivity range with output beam through the optical element that was taught by Mooradian .... "). The Appellants' argument fails to explain why the teachings of Caprara and Mooradian relied on by the Examiner would not have motivated a person of ordinary skill in the art to optimize the reflectivity of the optical element of Mooradian to be less than 40% in order to achieve desired levels of feedback. 4 Appeal2014-005018 Application 13/133,740 In the Reply Brie±: the Appellants challenge the Examiner's reliance on Mooradian's teaching that reflectivity may range "from near zero to more than 99%." Mooradian i-f 25; Reply Br. 2-5. They note that the paragraph of Mooradian that includes that teaching discusses the intermediate mirror, which is not equivalent to the optical element of claim 1. Id. (citing Mooradian i-f 25). While conceding that Mooradian subsequently discloses that the output mirror-which is equivalent to the optical element of claim I-may also have a reflectivity "in the above-mentioned range," see Mooradian i-f 3 1, they argue that it is unclear whether that statement refers to the broader range of "near zero to more than 99%" or one of the narrower ranges disclosed by i-f 25 such as "80-98%" or "90-95%." Reply Br. 3--4. The Appellant's argument does not establish reversible error in the Examiner's rejection. We find that a person of ordinary skill in the art would have understood Mooradian as teaching that the output mirror may have the same reflectivity as the intermediate mirror, i.e., "from near zero to more than 99%, depending on the specific application." Mooradian i-fi-125, 31. But even if Mooradian did not disclose a range of reflectivity for the optical element encompassing reflectivities of less than 40%, the Appellants do not contest the Examiner's finding that Mooradian generally teaches optimization of the reflectivity of the optical element. The Appellants' arguments fail to persuasively explain why Caprara's general teaching of a reflectivity less than 40% to optimize noise from reflective feedback would not have led a person of ordinary skill in the art to use such a reflectivity in the optical element of Mooradian, which also provides reflective feedback, as the Examiner finds. In other words, although the Appellants have challenged Caprara and Mooradian individually, they have not established 5 Appeal2014-005018 Application 13/133,740 reversible error in the combination rationale set forth by the Examiner. Cf In re Keller, 642 F.2d413, 426(CCPA1981) ("[O]ne cannot shownon- obviousness by attacking references individually where, as here, the rejections are based on combinations of references."); see also In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) ("Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (internal alterations omitted)). The Appellants also argue that Lee does not teach an optical element having a reflectivity of less than 40%. App. Br. 9. The Examiner, however, does not rely on Lee for teaching that element, so that argument fails to establish reversible error in the rejection. See Keller, 642 F .2d at 426. Similarly, the Appellants appear to argue that the micro lens of Lee relied upon by the Examiner is not an "optical element" as recited by claim 1 because it is not a mirror. App. Br. 10. The Appellants, however, fail to explain why the micro lens of Lee does not constitute an "optical element" under the broadest reasonable interpretation of claim 1 consistent with the Specification. The Specification teaches that the optical element may be a micro lens. Spec. at 6:22-23. In any event, the Appellants do not dispute that the output mirror of Mooradian relied upon by the Examiner constitutes an "optical element." Thus, we are not persuaded by the Appellants' arguments concerning Lee. The Appellants present various arguments that "no motivation exists for the Examiner's proposed modification." App. Br. 11-15. For example, they argue that Mooradian teaches away from a reflectivity of less than 40%. App. Br. 12. However, they provide no support or explanation for that 6 Appeal2014-005018 Application 13/133,740 assertion. See id. The Appellants also argue that Mooradian teaches away from "the Rid ratio" limitation because Figure 2 of Mooradian "depicts the external output mirror as being flat." Id. at 12-13. That argument is not persuasive because the Examiner relies on Figure 1 of Mooradian, which plainly depicts a concave output mirror. The fact that Mooradian teaches multiple embodiments does not constitute "teaching away" from the embodiment on which the Examiner relies. Cf In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). The Appellants' arguments fail to address the Examiner's findings concerning routine optimization of the Rid ratio based on the disclosures of Mooradian and Lee and, therefore, provide no basis to reject those findings. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that, even if the examiner had failed to make a prima facie case, the Board would not have erred in framing the issue as one of reversible error because "it has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections" (citing Ex parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential))); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that "the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art"). The Appellants also argue that a person of ordinary skill would not be motivated to combine either Lee or Caprara with Mooradian. App. Br. 13. Those arguments appear to focus on whether the relied-upon elements of Lee and Caprara could be bodily incorporated into the device of Mooradian. See id. "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary 7 Appeal2014-005018 Application 13/133,740 reference." Keller, 642 F.2d at 425. "Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." Id.; see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."). As explained above, the Examiner relies on both Mooradian and Lee in support of the finding that routine optimization of the Rid ratio would have been within the ordinary level of skill in the art; the Examiner relies on Caprara for the general teaching that the reflectivity of an optical element in a laser may be optimized to less than 40% to achieve desired noise from reflective feedback. The Appellants' arguments fail to refute those findings. Finally, to the extent that the Appellants raise new arguments in the Reply Brief, e.g., Reply Br. 4--5 (concerning self-contained lasing), 5---6 (concerning the Rid ratio of Lee), we decline to consider those arguments because the Appellants have not established good cause for failing to raise them in the opening Appeal Brief. See 37 C.F.R. § 41.41(b)(2) (2012). Based on the arguments presented, we are not persuaded of reversible error in the obviousness combination proposed by the Examiner. We therefore sustain the Examiner's rejection. CONCLUSION We AFFIRM the Examiner's rejection of claims 1-7. 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 8 Copy with citationCopy as parenthetical citation