Ex Parte Massa et al

Board of Patent Appeals and Interferences

Feb 24, 2009

10879803 (B.P.A.I. Feb. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN MASSA
and ADRIAN TAYLOR

____________

Appeal 2008-6364
Application 10/879,803
Technology Center 2800
____________

Decided:1 February 24, 2009
____________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-6364
Application 10/879,803

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 7, all of the claims pending in
the above-identified application. We have jurisdiction pursuant to 35 U.S.C.
§ 6.
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal is directed to an integrated optical
device. According to Appellants, the integrated optical device comprises a
first optical device and a second optical device including a MQW (quantum
well material) layer, which may be composed of undoped InGaAsP (Indium
Gallium Arsenide Phosphide). (Spec. 3-4, and 8). The first and second
optical devices may be a detector and a laser in one embodiment and a laser
and an electroabsorption modulator (EAM) in another embodiment. (Spec.
2-3).
The first optical device further comprises an intermixed MQW (an
intermixed quantum well material) region, which may be formed by "one of
a number of conventional techniques." (Spec. 2, 4, and 6 and claim 1). One
technique that is said to be conventional involves depositing silica on an area
to be to be intermixed, which includes an intermixed MQW region and its
absorption edge, and annealing to cause intermixing in the MQW region.
(Spec. 6). According to Appellants, this technique causes the wavelength of
the absorption edge of the intermixed MQW to shift to a higher wavelength
so that the wavelength of the intermixed MQW is higher than the MQW.
(Spec. 5-6, and claim 1).
2
Appeal 2008-6364
Application 10/879,803

Further details of the appealed subject matter are recited in claims
1 through 7, which are reproduced below2:
1. An integrated optical device comprising:
a first optical device and a second optical device,
the first optical device and the second optical device including
quantum well material,
the first optical device further including intermixed quantum well
material, the absorption edge of the intermixed quantum well material
having a higher wavelength than the quantum well material.

2. An integrated optical device according to claim 1, wherein the first
optical device comprises a laser and the second optical device comprises an
electro absorption modulator.

3. An integrated optical device according to claim 2, wherein the
laser and the EAM are in optical communication such that the light emitted
by the laser is modulated by the EAM.

4. An integrated optical device according to claim 2, wherein the
intermixed quantum well material in the laser improves the modulation
contrast of the integrated optical device without degrading the modulation
contrast of the electro absorption modulator.

5. An integrated optical device according to claim 1, wherein the first
optical device comprises a detector and the second optical device comprises
a laser.

6. An integrated optical device according to claim 5, wherein the
detector and the laser are in optical alignment.

2 We note the Examiner finds, and Appellants agree, that Claims 1 and 4
reproduced in the Claims Appendix section of the Appeal Brief are incorrect
as they do not incorporate the changes made by the Amendment dated June
26, 2006. (See Ans. 3 and 12-13 and Reply Br. 2). The claims reproduced
in this Decision are correct as they incorporate the changes made by the
Amendment dated June 26, 2006.
3
Appeal 2008-6364
Application 10/879,803

7. An integrated optical device according to claim 5, wherein the
intermixed quantum well material in the detector increases the absorption of
the detector.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following reference3:
Marsh US 2003/0141511 A1 Jul. 31, 2003

The Examiner rejects claims 1 through 7 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of Marsh.
Appellants separately argue independent claim 1 and dependent
claims 3, 4, 6, and 7. (App. Br. 5-18 and Reply Br. 2-4).
Accordingly, we address Appellants’ arguments regarding the
rejection with respect to independent claim 1 and dependent claims 3, 4, 6,
and 7.

ISSUES
With respect to claim 1, the Examiner determines that one of ordinary
skill in the art would have "tun[ed] an absorption band edge [absorption

3 We note that the Examiner refers to US 2002/0131668 A1 (issued to Marsh
on September 19, 2002), US 6,027,989 (issued to Poole on February 22,
2000), US 5,238,868 (issued to Elman on August 24, 1993), and US
6,797,533 B2 (issued to Thompson on September 28, 2004) at page 4 of the
Answer. The Examiner, however, does not include any of these references
in the statements of rejections set forth in the Answer. See Ans. 3-8.
Therefore, we will not consider these references in determining the propriety
of the Examiner’s rejections. See In re Hoch, 428 F.2d 1341, 1342 n.3
(CCPA 1970) (“Where a reference is relied on to support a rejection,
whether or not in a 'minor capacity,' there would appear to be no excuse for
not positively including the reference in the statement of the rejection.").

4
Appeal 2008-6364
Application 10/879,803

edge] in quantum wells structures . . . to achieve an absorption edge having a
greater wavelength than the quantum well material . . ." (Ans. 5).
Appellants, on the other hand, argue that "Marsh et al. does not teach an
absorption edge of an intermixed quantum well material having a greater
wavelength than the quantum well material." (App. Br. 8 and Reply Br. 3).
Thus, the issue is: Have Appellants shown reversible error in the
Examiner’s determination that one of ordinary skill in the art would have
tuned Marsh's absorption edge of the intermixed quantum well material to
have a higher wavelength than its quantum well material as required by
claim 1 within the meaning of 35 U.S.C. § 103(a)?
With respect to claim 3, the Examiner determines that Marsh would
have suggested placing the laser and the EAM in optical communication
such that the light emitted by the laser is modulated by the EAM as required
by claim 3. (Ans. 6-7). Appellants, on the other hand, argue that Marsh
does not teach or suggest this claim limitation and it is not a matter within
the knowledge of a person of ordinary skill in the art. (App. Br. 11 and
Reply Br. 3).
Thus, the issue is: Have Appellants shown reversible error in the
Examiner’s determination that Marsh would have suggested placing the laser
and the EAM in optical communication such that the light emitted by the
laser is modulated by the EAM as required by claim 3 within the meaning of
35 U.S.C. § 103(a)?
With respect to claim 4, the Examiner determines that one of ordinary
skill in the art would have used quantum well intermixing in the laser to
improve the modulation contrast of the integrated optical device without
degrading the modulation contrast of the electro absorption modulator as
5
Appeal 2008-6364
Application 10/879,803

required by claim 4. (Ans. 6-7). Appellants, on the other hand, argue that
Marsh does not teach or suggest this claim limitation and it is not a matter
within the knowledge of a person of ordinary skill in the art. (App. Br. 13-
14 and Reply Br. 3-4).
Thus, the issue is: Have Appellants shown reversible error in the
Examiner’s determination that it would have been obvious to use quantum
well intermixing in the laser to improve the modulation contrast of the
integrated optical device without degrading the modulation contrast of the
electro absorption modulator as required by claim 4 within the meaning of
35 U.S.C. § 103(a)?
With respect to claim 6, the Examiner determines that Marsh would
have suggested placing the detector and the laser in optical alignment. (Ans.
11-12). Appellants, on the other hand, argue that Marsh does not teach this
claim limitation and it is not a matter within the knowledge of a person of
ordinary skill in the art. (App. Br. 15-16).
Thus, the issue is: Have Appellants shown reversible error in the
Examiner’s determination that Marsh would have suggested placing the
detector and the laser in optical alignment as required by claim 6 within the
meaning of 35 U.S.C. § 103(a)?
With respect to claim 7, the Examiner determines that it would have
been obvious to tune an absorption band edge of the detector via quantum
well intermixing in order to increase the absorption of the detector. (Ans. 7,
12). Appellants, on the other hand, argue that Marsh does not teach the
limitation "the intermixed quantum well material in the detector increases
the absorption of the detector" as recited in claim 7 and such limitation is not
6
Appeal 2008-6364
Application 10/879,803

a matter within the knowledge of a person of ordinary skill in the art. (App.
Br. 17-18 and Reply Br. 7).
Thus, the issue is: Have Appellants shown reversible error in the
Examiner’s determination that it would have been obvious to tune an
absorption band edge of the detector via quantum well intermixing in order
to increase the absorption of the detector as required by claim 7 within the
meaning of 35 U.S.C. § 103(a)?

RELEVANT FINDINGS OF FACT (FF)
1. Appellants do not dispute the Examiner’s finding that:
Marsh discloses an integrated optical device comprising:
1) a first optical device and a second optical device (P.0009);
2) the first and second optical devices including quantum well
material (P.0010);
3) the first optical device further including intermixed quantum
well material (P.0009).
(Compare Ans. 4-5 and 8-10 with App. Br. 8 and Reply Br. 3).

2. Marsh's Figure 1A is reproduced below:

3. Figure 1A of Marsh illustrates an integrated optical device
including, inter alia, first and second devices 10a, 15a optically
7
Appeal 2008-6364
Application 10/879,803

coupled to one another, where the first device 10a has a quantum
well intermixed region 20a at or adjacent to a coupling region
between the first and second devices 10a, 15a. (¶¶ [0009] and
[0041]). Marsh states (¶ [0014]) that "[t]he first device [10a] may
be or include an active device component [22a], such as a laser
diode . . . optical modulator . . . optical detector . . . or the like." In
another embodiment, Marsh teaches (¶ [0063]) that electro-
absorptive [electroabsorptive] modulation, which is known to
modulate light emitted by a laser via an electroabsorption
modulator, may be employed for "high-performance device
action."
4. Marsh teaches (¶ [0044]) that the active device component 22a and
quantum well intermixed region 20a are in optical communication
with one another via waveguide 23a.
5. Marsh teaches (¶¶ [0010] and [0029]) that quantum well
intermixing permits a post-growth modification to the absorption
edge of a quantum well material to cause intermixing of the
quantum well intermixed region. Marsh further teaches (¶¶ [0012],
[0030] and [0059]) that the quantum well intermixed region is
formed by depositing a dielectric, e.g., silica (SiO2), layer on a
semiconductor material, which may be InGaAsP, and subsequently
rapid thermal annealing the semiconductor material. This quantum
well intermixing allows the wavelength of an absorption band edge
to be controllably tuned (shifted). (Marsh, ¶¶ [0011] and [0023]).
Marsh further teaches that the tuning “may” be used to fabricate
low-loss optical interconnects and that the device “may be adapted
8
Appeal 2008-6364
Application 10/879,803

to operate in a wavelength region of about 600 to 1300 nm or of
about 1200-1700 nm.” (Marsh, ¶¶ [0011] and [0023]).
6. Marsh in the background section of the patent indicates that
previous optical (i.e., light) systems have had problems with hybrid
integration of semiconductor material with passive waveguides.
(Marsh, ¶¶ [0002]-[0003]). The problems involved high reflection
coefficients at the interface and optical power loss. (Marsh, ¶
[0003]).
7. The Specification states that the integrated optical device
comprises a first optical device and a second optical device
including a MQW (quantum well material) layer, which may be
composed of undoped InGaAsP (Indium Gallium Arsenide
Phosphide). (Spec. 3-4 and 8).
8. The Specification states that the first optical device further
comprises an intermixed MQW (an intermixed quantum well
material) region, which may be formed by depositing silica on an
area to be to be intermixed, which includes an intermixed MQW
(an intermixed quantum well material) region and its absorption
edge, and annealing to cause intermixing in the MQW (quantum
well material) region. (Spec. 6). This technique causes the
wavelength of the absorption edge of the intermixed MQW (the
intermixed quantum well material) to shift to a higher wavelength
so that the wavelength of the intermixed MQW (the intermixed
quantum well material) is higher than the MQW (quantum well
material). (Spec. 5-6).
9
Appeal 2008-6364
Application 10/879,803

9. The Specification, in one embodiment where the first and second
optical devices are a laser and an electroabsorption modulator
(EAM), states that because "the wavelength of the absorption edge
of the laser section is shifted . . . the modulation contrast of the
EAM section . . . [is] not degraded." (Spec. 2). This results in an
improved modulation contrast of the integrated optical device.
(Spec. 2 and 8).
10. The Specification, in another embodiment where the first and
second optical devices are a detector and a laser, states that a
wavelength shift caused by quantum well intermixing increases the
absorption of a detector. (Spec. 6).

PRINCIPLES OF LAW
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. Graham
v. John Deere Co., 383 U.S. 1, 17-18 (1966). “[D]iscovery of an optimum
value of a result effective variable in a known process is ordinarily within
the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
As stated in In re Echerd:
There is nothing intrinsically wrong in defining something by what it
does rather than by what it is. In re Swinehart, 439 F.2d 210, 212, 58
CCPA 1027, 1030 (1971); In re Fuetterer, 319 F.2d 259, 50 CCPA
1453 (1963). Here, the flexibility, wet strength and latent adhesive
requirements recited in the claims must be recognized as positive
qualities of appellants' product. While the Patent Office may properly
require proof that the functional limitations being relied upon are not
inherent characteristics of the prior art, Swinehart, 439 F.2d at 213, 58
10
Appeal 2008-6364
Application 10/879,803

CCPA at 1031, these potentially distinguishing features cannot simply
be ignored.
471 F.2d 632, 635 (CCPA 1973).
Moreover, as stated in In re Best:
Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the
characteristics of his claimed product. See In re Ludtke, supra.
Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102,
on ‘prima facie obviousness' under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO's inability to manufacture products or to obtain
and compare prior art products.
562 F.2d 1252, 1255 (CCPA 1977) (footnote omitted).
“Combining two embodiments disclosed adjacent to each other in a
prior art patent does not require a leap of inventiveness,” that is, the
combination would have been obvious. Boston Scientific Scimed, Inc. v.
Cordis Corp., -- F.3d --, 2009 WL 89246, *8 (Fed. Cir. 2009).

ANALYSES AND CONCLUSIONS OF LAW
Claim 1
It is undisputed that Marsh’s integrated optical device, like
Appellants’ integrated optical device, has a first and second device (first and
second optical device) including a quantum well material, wherein the first
device further includes a quantum well intermixed (intermixed quantum well
material) region. (FF 1, 3). Marsh in the background section of the patent
indicates that previous optical (i.e., light) systems have had problems with
hybrid integration of semiconductor material with passive waveguides. (FF
11
Appeal 2008-6364
Application 10/879,803

6). The problems involved high reflection coefficients at the interface and
optical power loss. (FF 6).
Marsh teaches using quantum well intermixing to controllably tune
(shift) the absorption band edge of the quantum well intermixed region. (FF
3-5). Marsh further teaches that the tuning “may” be used to fabricate low-
loss optical interconnects and that the device “may be adapted to operate in a
wavelength region of about 600 to 1300 nm or of about 1200-1700 nm.”
(FF 5). In other words, the art recognized that quantum well intermixing is a
result effective variable that affects the optical properties of the material,
which would include wavelength because the quantum well intermixed area
must be capable of operating within Marsh’s disclosed wavelength region.
Thus, we agree with the Examiner that controlling the quantum well
intermixing to determine an optimum wavelength of the absorption band
edge of the quantum well intermixed region, which includes the claimed
wavelength, to suit the particular end use of the device is well within the
ambit of one of ordinary skill in the art. See Boesch, 617 F.2d at 276.
Moreover, Marsh, like Appellants, forms its quantum well intermixed
(intermixed quantum well material) region, which includes an absorption
band edge, by depositing silica on an area of the InGaAsP semiconductor to
be intermixed and subsequently annealing, inter alia, that same area. (FF 5
and 7-8). As stated above, Marsh further discloses that the quantum well
intermixing tunes (i.e., shifts) the wavelength of an absorption band edge of
the quantum well material. (FF 5).
Thus, Marsh's and Appellants’ integrated optical devices have
intermixed quantum well materials made by the same or substantially the
same method. Accordingly, we determine that there is a reasonable basis for
12
Appeal 2008-6364
Application 10/879,803

determining that Marsh's quantum well intermixed region, which includes an
absorption band edge, in its optical device would have been capable of
performing the functional limitation "the absorption edge of the intermixed
quantum well material having a higher wavelength than the quantum well
material" recited in claim 1.
Therefore, because a prima facie case of obviousness has been
established, we determine that the burden properly shifted to Appellants to
present persuasive arguments or evidence refuting the prima facie case.
However, on this record, Appellants have not done so.
Therefore, based on the factual findings set forth in the Answer and
above, we affirm the Examiner's decision rejecting claims 1, 2, and 5 under
35 U.S.C. § 103(a) over Marsh.

Claim 3
Marsh's Figure 1a illustrates, inter alia, a first device 10a, which
includes a laser diode (laser) and an optical modulator, in optical
communication with a quantum well intermixed region 20a via waveguide
23a. (FF 2-4). This waveguide 23a runs through both the laser and optical
modulator. (FF 2-3).
Although this embodiment does not mention an electroabsorption
modulator, Marsh, in another embodiment, teaches that electroabsorptive
modulation, which is known to modulate light emitted by a laser via an
electroabsorption modulator, may be employed for "high-performance . . .
action." (FF 3).
Thus, we concur with the Examiner that Marsh would have suggested
to one of ordinary skill in the art to employ an electroabsorption modulator
13
Appeal 2008-6364
Application 10/879,803

in Marsh's integrated optical device with the reasonable expectation of
obtaining a high-performance device. Boston Scientific, 2009 WL at *8.
Therefore, based on the factual findings set forth in the Answer and
above, we affirm the Examiner's decision rejecting claim 3 under 35 U.S.C.
§ 103(a) over Marsh.

Claim 4
As stated above, quantum well intermixing is a result effective
variable that affects the wavelength of the intermixed region.
Thus, controlling the quantum well intermixing to determine an
optimum wavelength of the absorption band edge of the quantum well
intermixed region to suit the particular end use of the device would have
been well within the ambit of one of ordinary skill in the art. See Boesch,
617 F.2d at 276. Such optimum wavelength is inclusive of the claimed
wavelength that improves the modulation contrast of the integrated optical
device without degrading the modulation contrast of the electroabsorption
modulator.
Moreover, as stated above, Marsh's integrated optical device, like
Appellants', may include a laser and an electroabsorption modulator.
Marsh's laser, like Appellants', further includes a quantum well intermixed
region 20a formed by depositing silica on an area of the InGaAsP
semiconductor to be intermixed and subsequently annealing, inter alia, the
area to be intermixed. (FF 5 and 7-8). Also like Appellants, Marsh teaches
that quantum well intermixing allows the wavelength of an absorption band
edge to be controllably tuned (shifted). (FF 5 and 8-9).
14
Appeal 2008-6364
Application 10/879,803

Thus, Marsh's and Appellants’ integrated optical devices have
intermixed quantum well materials made by the same or substantially the
same method. Accordingly, we determine that is reasonable to believe that
Marsh's intermixed quantum well material in its optical device is capable of
performing the functional limitation "the intermixed quantum well material
in the laser improves the modulation contrast of the integrated optical device
without degrading the modulation contrast of the electroabsorption
modulator” recited in claim 4.
Therefore, because a prima facie case of obviousness has been
established, we determine that the burden properly shifted to Appellants to
present persuasive arguments or evidence refuting the prima facie case.
However, on this record, Appellants have not done so.
Therefore, based on the Factual Findings set forth in the Answer and
above, we affirm the Examiner's decision rejecting claim 4 under 35 U.S.C.
§ 103(a) over Marsh.

Claim 6
We find that Marsh's Figure 1a illustrates an active device component
22a comprising, inter alia, a laser diode attached to an optical detector,
where a waveguide 23a runs through the laser diode and optical detector so
as to optically couple the laser diode and detector in a straight line. (FF 2-4).
In other words, the laser and optical detector taught by Marsh are in optical
alignment.
Therefore, we agree with the Examiner that Marsh teaches or would
have suggested optically aligning the detector and the laser as required by
claim 6.
15
Appeal 2008-6364
Application 10/879,803

Accordingly, based on the factual findings set forth in the Answer and
above, we affirm the Examiner's decision rejecting claim 6 under 35 U.S.C.
§ 103(a) over Marsh.

Claim 7
As stated above, quantum well intermixing is a result effective
variable that affects the wavelength of intermixed region.
Thus, controlling the quantum well intermixing to determine an
optimum wavelength of the absorption band edge of the quantum well
intermixed region to suit the particular end use of the device would have
been well within the ambit of one of ordinary skill in the art. See Boesch,
617 F.2d at 276. Such optimum wavelength is inclusive of the wavelength
that increases the absorption of the detector.
Moreover, Marsh's integrated optical device, like Appellants',
comprises a detector and a laser diode, where the detector further includes a
quantum well intermixed region formed by depositing silica on the area of
the InGaAsP semiconductor to be intermixed and subsequently annealing,
inter alia, the area to be intermixed. (FF 5 and 7-8). Also like Appellants,
Marsh teaches that quantum well intermixing allows the wavelength of the
absorption band edge of the quantum well intermixed region to be
controllably tuned (shifted). (FF 5, 8, 10).
Thus, Marsh's and Appellants’ integrated optical devices have
intermixed quantum well materials made with the same or substantially the
same method. Accordingly, we determine that it is reasonable to believe
that Marsh's intermixed quantum well material in its optical device is
capable of performing the functional limitation "the intermixed quantum
16
Appeal 2008-6364
Application 10/879,803

well material in the detector increases the absorption of the detector" recited
in claim 7.
Therefore, because a prima facie case of obviousness has been
established, we determine that the burden properly shifted to Appellants to
present persuasive arguments or evidence refuting the prima facie case.
However, on this record, Appellants have not done so.
Therefore, based on the factual findings set forth in the Answer and
above, we affirm the Examiner's decision rejecting claim 7 under 35 U.S.C.
§ 103(a) over Marsh.
ORDER
The decision of the Examiner is affirmed.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

cam

KATHY MANKE
AVAGO TECHNOLOGIES LIMITED
4380 ZIEGLER ROAD
FORT COLLINS, CO 80525
17