Ex Parte Kolb et al

Patent Trial and Appeal Board

Mar 11, 2016

13133740 (P.T.A.B. Mar. 11, 2016)

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
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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.
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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.
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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
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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
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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
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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
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