Ex Parte Krug et al

Patent Trials and Appeals Board

Mar 26, 2019

13031227 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/031,227 02/20/2011
122219 7590 03/28/2019
Miller, Matthias & Hull LLP/ The Boeing Company
One North Franklin Street
Suite 2350
Chicago, IL 60606
William P. Krug
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.
02-0379-US-CNT 4462
EXAMINER
SHAND, ROBERTA A
ART UNIT PAPER NUMBER
2472
NOTIFICATION DATE DELIVERY MODE
03/28/2019 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):
patentadmin@boeing.com
bmatthias@millermatthiashull.com
ynunez@millermatthiashull.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM P. KRUG, HAROLD HAGER,
MICHAEL C. HAMIL TON, and AXEL SCHERER
Appeal2018-007122
Application 13/031,22 7
Technology Center 2400
Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.
BELISLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
all pending claims, namely, claims 48, 52, 53, 55-57, 59, and 60. App.
Br. 6. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify THE BOEING COMP ANY as the real party in
interest. App. Br. 2.
Appeal2018-007122
Application 13/031,227
STATEMENT OF THE CASE
The Claimed Invention
Appellants' invention generally relates to "a mixed analog and digital
chip-scale reconfigurable WDM [ wavelength division multiplexing]
network." Spec. 5:11-12.
In one exemplary embodiment, [a] mixed analog and
digital chip-scale wavelength selective router includes an optical
de-multiplexer associated with each of a plurality of fiber optic
inputs and an optical multiplexer associated with each of a
plurality of programmable fiber optic outputs. A programmable
resonator filter is associated with each of a plurality of
programmed light wavelengths predesignated as channels for
carrying digital signals for receiving light from the plurality of
optical de-multiplexers and in optical communication with the
programmably associated optical multiplexer. A first
programmable superprism is associated with each of the light
wavelengths predesignated as channels for carrying analog
signals receiving the associated light wavelength from the
plurality of optical de-multiplexers and directs the associated
light wavelength as programmed. A second programmable
superprism is programmably associated with each first
programmable superprism and located for receiving the directed
light wavelength and redirecting the directed light to the
programmably associated optical multiplexer.
Spec. 5:18-30.
The Claims
Appellants separately argue patentability of the three pending
independent claims, namely, claims 48, 53, and 60, each of which is
representative of the claimed subject matter on appeal and reproduced
below.
48. A WDM router comprising:
a programmable wavelength filter resonator disposed on a
single semiconductor chip for changing paths of different
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Application 13/031,227
wavelength channels of light, the resonator including
dynamically programmable wavelength filter photonic crystal
resonator components; and
a device disposed on the single semiconductor chip for
cross-connecting selected wavelengths of light output by the
programmable wavelength filter resonator to selected outputs of
the router.
53. A WDM router comprising:
a programmable wavelength filter resonator for changing
paths of different wavelength channels of light, the resonator
including a Q-tunable active layer on top of a passive ring
waveguide; and
a device for cross-connecting selected wavelengths output
by the programmable wavelength filter resonator to selected
outputs of the router.
60. A WDM router comprising a chip, the chip including a
programmable wavelength filter resonator for changing paths of
different wavelength channels of light, and a device for cross-
connecting selected wavelengths to selected outputs, the
resonator including at least one of dynamically programmable
wavelength filter photonic crystal resonator components and
dynamically programmable wavelength filter ring resonator
components including Q-tunable optically active layers on top of
passive ring waveguides.
References
The Examiner relies on the following references as evidence of
unpatentability of the claims on appeal:
Garmire
Lomashevitch
Page
Scherer
us 4,488,307
us 5,446,579
us 6,075,910
US 6,466,709 Bl
3
Dec. 11, 1984
Aug.29, 1995
June 13, 2000
Oct. 15, 2002
Appeal2018-007122
Application 13/031,227
Al-hemyari
Gunn, III
Levner
US 6,636,668 Bl
US 6,839,488 B2
US 2008/0112053 Al
Rejections
Oct. 21, 2003
Jan.4,2005
May 15, 2008
The Examiner made the following rejections of the claims on appeal:
Claims 48 and 55-572 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as obvious over Al-hemyari, Scherer, and Page.
Claim 59 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
obvious over Al-hemyari, Scherer, Page, and Levner.
Claim 53 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
obvious over Al-hemyari, Lomashevitch, and Gunn.
Claim 52 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
obvious over Al-hemyari, Lomashevitch, Gunn, and Garmire.
Claim 60 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
obvious over Al-hemyari, Lomashevitch, Gunn, and Page.
ANALYSIS 3
Appellants argue patentability of all pending claims, namely, claims
48, 52, 53, 55-57, 59, and 60, over the pending rejections solely by arguing
2 The Examiner inadvertently includes claim 58 in this rejection; however,
Appellants had previously cancelled claim 58. See Final Act. 2 ("Claims 1-
47, 49-51, 54 and 58 were previously cancelled.") and 5.
3 Throughout this Decision, we have considered Appellants' Appeal Brief
filed December 15, 2017 (and replacement Summary) ("App. Br.");
Appellants' Reply Brief filed July 5, 2018; the Examiner's Answer mailed
May 21, 2018 ("Ans."); the Final Office Action mailed February 8, 2017
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Application 13/031,227
the Examiner failed to articulate reasons with rational underpinning to
combine the cited art to support obviousness. App. Br. 6-10.
The U.S. Supreme Court has held the relevant inquiry in an
obviousness analysis is whether the Examiner has set forth "some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007)). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. See In re Keller, 642 F .2d
413,425 (CCPA 1981); In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979)
("[A] reference must be considered not only for what it expressly teaches,
but also for what it fairly suggests."). One of ordinary skill can use his or
her ordinary skill, creativity, and common sense to make the necessary
adjustments and further modifications to result in a properly functioning
device. KSR, 550 U.S. at 418 ("[A] court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.").
Furthermore, "if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill." Id. at 417.
("Final Act."); and Appellants' Specification filed February 20, 2011
("Spec.").
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Application 13/031,227
Thus, a claim is obvious where it "'simply arranges old elements with
each performing the same function it had been known to perform' and yields
no more than one would expect from such an arrangement .... " KSR, 550
U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976)); In re
Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) ("Because the applicants
merely substituted one element known in the art for a known equivalent, this
court affirms [the rejection for obviousness].").
Independent Claim 48
The Examiner's stated motivation to combine Page's teaching of a
filter for channel signal wavelengths on a single semiconductor chip with
Al-hemyari's teaching of a WDM router and Scherer's teaching of a
dynamically programmable (tunable) wavelength filter photonic crystal
resonator is that "[i]t would have been obvious to one of ordinary skill in the
art ... to modify Al-hemyari and Scherer to include Page's optical switch on
a single chip to maintain a low optical signal-to-noise ratio ["SNR"]." Final
Act. 3.
As an initial matter, we note, as do Appellants (see App. Br. 7 n.1 ), an
ordinarily skilled artisan would recognize that a higher SNR is more
desirable. We continue with that understanding (which Appellants also
accept).
Appellants argue that even with a correct desire to improve (i.e.,
increase) the SNR, Page does not address SNR "in any way." App. Br. 7.
Accordingly, Appellants assert Page does not offer any solution to
improving the SNR. App. Br. 7-8.
In response, the Examiner repeats the same statement of motivation
(again asserting a desire "to maintain a low optical signal-to-noise ratio"),
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Application 13/031,227
and further states "it is a well-known established scientific principle that
signal-to-noise ratio is lower when devices are smaller and situated closer
together like on a single chip." Ans. 10-11.
Contrary to the Examiner's stated reasoning, a lower SNR is not
desirable. To be clear, as Appellants explain in the Specification (see Spec.
2:29--35), when transmitting a signal (desired content) over a particular
medium (analog or digital), noise (undesired content) is present. A higher
SNR indicates the amount of desired content is greater than the noise
(undesired content). It is axiomatic that as the SNR becomes lower, the
amount of noise (i.e., undesired content) increases. Thus, a higher SNR-
not a lower SNR-is desirable.
Page is generally directed to controlling an electro-optical switch.
Page 1: 10-12. Further, Page describes "[a] control arrangement for
minimizing optical leakage" in the electro-optical switch. Page, Abstract.
Page describes that when an optical signal is partially blocked or
misdirected, the result may be a reduction in magnitude of the signal, which
is described as optical leakage. Page 2: 17-32.
Page does not expressly state that minimizing optical leakage results
in an improved SNR. Further, the Examiner does not make a specific
finding as to whether one of ordinary skill in the art would recognize that by
minimizing optical leakage (i.e., minimizing a reduction in the desired
signal) the SNR is improved. Additionally, we note that although
integrating known components is generally insufficient to establish
patentability (see In re Larson, 340 F.2d 965, 968 (CCPA 1965)), the
Examiner has not made a finding that such integration would not be
"uniquely challenging or difficult for one of ordinary skill in the art" or
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Application 13/031,227
"represented an unobvious step over the prior art." Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418-19). 4
Accordingly, constrained by the record before us, we do not sustain
the Examiner's rejection under pre-AIA 35 U.S.C. § 103(a) of claim 48.
Independent Claim 53
The Examiner states that one of ordinary skill in the art would have
been motivated to combine Lomashevitch's teaching of an active layer on
top of a passive ring waveguide, as taught by Al-hemyari, "to maintain low
cavity loss." Final Act. 6.
Appellants assert Lomashevitch does not teach preventing loss, but
rather teaches amplification. App. Br. 9 (citing Lomashevitch 1 :5-9).
Accordingly, Appellants assert because Lomashevitch does not affect a
magnitude of loss, the Examiner's proffered reason to modify Al-hemyari
with Lomashevitch is deficient. App. Br. 9.
The Examiner's stated reasoning here is conclusory. See Final
Act. 6-7; Ans. 11-12. The Examiner does not provide sufficient evidence or
technical reasoning that Lomashevitch recognizes a waveguide may have
loss associated with it and by providing amplification of the signal using the
disclosed active layer, the overall signal magnitude may not be subject to
losses associated with a passive waveguide approach.
4 Although the Board is authorized to reject claims under 37 C.F.R.
§ 4I.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02 (9th ed. Rev.
08.2017, Jan. 2018).
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Application 13/031,227
Accordingly, constrained by the record before us, we do not sustain
the Examiner's rejection underpre-AIA 35 U.S.C. § 103(a) of claim 53.
Independent Claim 60
In rejecting independent claim 60, the Examiner relies upon the same
stated motivations to combine Page and Lomashevitch with Al-hemyari as
discussed above regarding independent claim 48 (Page) and independent
claim 53 (Lomashevitch). See Final Act. 7-9; Ans. 12; Reply Br. 4
("Examiner offers the same rationale discredited above for the proposed
combination."). Accordingly, for the same reasons discussed above
regarding claims 48 and 53, and constrained by the record before us, we do
not sustain the Examiner's rejection under pre-AIA 35 U.S.C. § 103(a) of
claim 60.
In addition, we do not sustain the Examiner's rejection under pre-AIA
35 U.S.C. § 103(a) of claims 52, 55-57, and 59, which depend directly or
indirectly from either claim 48 or 53.
DECISION
We reverse the Examiner's obviousness rejections of claims 48, 52,
53, 55-57, 59, and 60.
REVERSED
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