Ex Parte Rosenberg et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201713126848 (P.T.A.B. Feb. 28, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/126,848 07/19/2011 Paul Kessler Rosenberg 82716672 6458 56436 7590 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 EXAMINER ROJAS, OMAR R ART UNIT PAPER NUMBER 2883 NOTIFICATION DATE DELIVERY MODE 03/02/2017 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): hpe.ip.mail@hpe.com chris. mania @ hpe. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL KESSLER ROSENBERG, MICHAEL RENNE TY TAN, HUEI PEI KUO, ROBERT G. WALMSLEY, and ERIC PETERSON Appeal 2015-006354 Application 13/126,848 Technology Center 2800 Before PETER F. KRATZ, JAMES C. HOUSEL, and MICHAEL G. McMANUS, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the Examiner’s decision finally rejecting claims 1, 2, 4, 11, 13—19, and 21.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). 1 According to Appellants, the real party in interest is Hewlett-Packard Development Company, LP, a Texas limited partnership whose general or managing partner is HPQ Holdings, LLC and a wholly-owned affiliate of Hewlett-Packard Company. Appeal Br. 3. 2 Claims 5, 6, 8—10, and 20 are also pending, but have been allowed. Final Act. 1. As such, these claims are not before us on appeal. Appeal 2015-006354 Application 13/126,848 We REVERSE.3 STATEMENT OF THE CASE The invention relates to a device for optically coupling photonic elements. Spec. Title; claim 1. Appellants disclose that optical communication between computing units are faster, have increased bandwidth, improved signal integrity, and reduced power usage as compared to electrical signaling. Spec. 1:3—11. Appellants further disclose that bringing optical communication channels transmitting light into relatively precise co-axial alignment provides more efficient communication between pairs of optical fibers or waveguides. Id. at 1:12—14. However, alignment precisions of approximately one to a few microns are needed to minimize loss of optical power in single and multi-mode optical fibers. Id. at 1:14—17. Since it can be difficult to achieve this level of alignment precision between mating assemblies, Appellants disclose it is desirable to reduce the need for precision, and lessen the complexity of parts and processes for connecting optical channels. Id. at 17—19. Claims 1 and 11, reproduced below from the Claims Appendix to the Appeal Brief, are illustrative of the subject matter on appeal. Limitations at issue are italicized. 1. A device for optically coupling photonic elements, comprising: an interposer having two ends and including an optical pathway disposed within the interposer, wherein the optical 3 Our decision refers to the Specification (Spec.) filed April 29, 2011, the Examiner’s Final Office Action (Final Act.) delivered November 12, 2014, Appellants’ Appeal Brief (Appeal Br.) filed February 27, 2015, the Examiner’s Answer (Ans.) mailed May 27, 2015, and Appellants’ Reply Brief (Reply Br.) filed June 15, 2015. 2 Appeal 2015-006354 Application 13/126,848 pathway is substantially linear, a first photonic element situated adjacent to an end of the optical pathway and axially aligned with the optical pathway; a second photonic element situated adjacent to another end of the optical pathway and axially aligned with the optical pathway; an optics assembly to direct a photonic signal along the optical pathway; and at least one mechanical guide assembly located at each end of the optical pathway, wherein the at least one mechanical guide assembly comprises a plurality of protuberances and corresponding sockets that cooperate to prevent relative rotation and tilt between the first and second photonic elements and the interposer. 11. A connection for optically coupling computing units, comprising: a first photonic element coupled to a first computing unit; a second photonic element coupled to a second computing unit, and situated opposite the first photonic element; a partition situated between the first computing unit and the second computing unit; an interposer mounted on the partition, and including an optical pathway situated between the first photonic element and the second photonic element, wherein the optical pathway penetrates the partition and the optical pathway is substantially linear, an optics assembly to direct a signal from the first photonic element through the optical pathway to the second photonic element; and a mechanical guide assembly to connect the first photonic element and the second photonic element to the interposer, wherein the mechanical guide assembly comprises a plurality of protuberances and corresponding sockets that cooperate to prevent relative rotation and tilt between the first and second photonic elements and the interposer. 3 Appeal 2015-006354 Application 13/126,848 Grounds of Rejection The Examiner maintains, and Appellants request review of, the following rejections: 1. Claims 1, 16, and 19 under 35 U.S.C. § 102(e) as anticipated by Tamada;4 2. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over Tamada in view of Hamanaka;5 3. Claims 4, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over Tamada in view of Asakawa;6 4. Claims 11, 14, 15, and 21 under 35 U.S.C. § 103(a) as unpatentable over Tamada in view of Stone;7 and 5. Claim 13 under 35 U.S.C. § 103(a) as unpatentable over Tamada in view of Stone and Asakawa. ANALYSIS Claim 1 We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). After considering the evidence presented in this Appeal and each of Appellants’ contentions, 4 US 7,428,110 B2, issued September 23, 2008. 5 US 5,362,961, issued November 8, 1994. 6 US 4,641,915, issued February 10, 1987. 7 US 7,015,454 B2, issued March 21, 2006. 4 Appeal 2015-006354 Application 13/126,848 we are persuaded that Appellants have identified reversible error. Thus, we reverse the Examiner’s rejections for the reasons expressed in the Final Office Action and the Appeal and Reply Briefs. We add the following primarily for emphasis. The Examiner finds Tamada teaches a device for optically coupling photonic elements as recited in claim 1, including an interposer/optical holding units 5B1,8 5Q, 5S1, 5D, 5M1, 5M2, 5B2, 5S2 defining a substantially linear optical pathway, first and second photonic elements 5P, 5R each axially aligned at ends of the optical pathway, an optics assembly with a lens and mirrors within the optical holding units configured to direct a photonic signal along the pathway, and at least one mechanical guide assembly having protuberances and corresponding sockets 13a, 13b to prevent relative rotation and tilt between the photonic elements and the interposer. Final Act. 4. The Examiner defines one possible optical pathway within Tamada as depicted in Figure 1, annotated, which is reproduced below. 8 Throughout this Opinion, for clarity, we present labels to elements in figures in bold font, regardless of their presentation in the original document. 5 Appeal 2015-006354 Application 13/126,848 i Tamada, Figure 1, annotated, depicting an optical pathway of an optical coupling device in schematic planar block diagram The Examiner finds no definition of “linear” in the Specification. Final Act. 3. The Examiner further finds the definition of “linear” is “resembling, represented by, or consisting of a line or lines.” Final Act. 2, citing Collins English Dictionary Complete and Unabridged. (1991, 1994, 1998, 2000, 2003), http://www.thefreedictionary.com/linear, retrieved on November 4, 2014. Accordingly, the Examiner finds the above optical pathway is substantially linear under the broadest reasonable interpretation of Appellants’ claims. Final Act. 2. Appellants contend that the Examiner’s interpretation of the term, “linear,” is unreasonable and the finding that the optical pathway depicted in Tamada, Figure 1, between unit 5P and unit 5R, is “linear” is erroneous. In particular, Appellants proffer four dictionary definitions of “linear,” each of which makes clear that this term describes a property of being or resembling a straight line. Appeal Br. 9. Appellants further argue that, “[u]nder the 6 Appeal 2015-006354 Application 13/126,848 Examiner’s interpretation, a path of nearly any shape would read on ‘substantially linear’,” and would render such a limitation superfluous. Id. We have considered the respective positions articulated by the Examiner and Appellants, and find a preponderance of the evidence favors Appellants. It is axiomatic that during examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). An applicant seeking a narrower construction must either show why the broader construction is unreasonable or amend the claim to expressly state the scope intended. In re Morris, 127 F.3d 1048, 1057 (Fed. Cir. 1997). Here, Appellants dispute the Examiner’s definition of “linear,” and present four alternative definitions for this term. We note that each of Appellants’ proffered definitions is not only consistent with each other, but is also consistent with Appellants’ disclosure. Appellants disclose the need for linear alignment of a pair of photonic elements against both rotational and tilt misalignment. Figs. 1—6; Spec. 4—5. Appellants further disclose an interposer 22 with photonic elements disposed at each end thereof, “so that the photonic elements are situated opposite one another down the length of the interposer.” Id. at 6:17—18. Interposer 22 is depicted to be a straight hollow tubular structure from end to end. Figs. 7A and 7B.9 On the other hand, the Examiner’s selected definition, which permits multiple straight 9 We further note that Appellants disclose that the interposer may be defined by tubular structures on respective photonic elements which are axially aligned together to define the optical pathway. See Figs. 8A and 8B. 7 Appeal 2015-006354 Application 13/126,848 lines in angular arrangement relative to each other to be considered “linear,” is not consistent with Appellants’ disclosure. Moreover, we agree with Appellants that the Examiner’s interpretation, permitting a substantially linear optical pathway to be any pathway composed of a series of lines, is so broad as to read out of the claim the terms, “substantially linear.” A curve may be approximated by a series of sufficiently short lines, yet such a pseudo-curve would be considered “linear” under the Examiner’s interpretation. Such a result renders this limitation meaningless, further supporting our view that the Examiner’s interpretation is unreasonable. On this record, in our view, the Examiner’s interpretation of “linear” is unreasonable because it is inconsistent with Appellants’ Specification as would be understood by one of ordinary skill in the art. Appellants’ proffered interpretation, on the other hand, is consistent with the Specification. As such, we construe Appellants’ claims, taking this definition as the ordinary and customary meaning of the term, “linear.”10 Turning to the Examiner’s finding that Tamada teaches a substantially linear optical pathway through the interposer covering all holding units 5B1, 5Q, 5S1, 5D, 5M1, 5M2, 5B2, 5S2, and given our adoption of Appellants’ proffered definitions for the term, “linear,” we agree with Appellants’ that the Examiner’s finding is erroneous because no optical pathway from 10 We note that though Appellants’ modifier term, “substantially,” was not raised substantively in either the Examiner’s or Appellants’ interpretations of the claims, the ordinary artisan would understand “substantially linear” to mean that the optical pathway is substantially following a straight line between the photonic elements. 8 Appeal 2015-006354 Application 13/126,848 photonic element 5P to photonic element 5R substantially follows a straight line. Alternatively, the Examiner finds the mirror holding unit 5M1 may be interpreted to be the second photonic element and holding units 5B1, 5Q, 5S1, 5D would correspond to the interposer axially aligned with the photonic elements, such that the optical pathway within the interposer between first photonic element 5P and second photonic element 5M1 is linear. Ans. 3^4. Appellants argue that the Examiner’s alternative interpretation is similarly unreasonable. Reply Br. 5. In particular, Appellants note that claim 1 requires that each photonic element be situated adjacent a respective end of the optical pathway. Id. Appellants urge that mirror holding unit 5M1 would not be considered to be a photonic element by one of ordinary skill in the art and that mirror holding unit 5M1 is not at an end of the optical pathway. Id. In support of this argument, Appellants proffer two dictionary definitions for “end” which indicate this term means a limit or extremity of something. Id. According to Appellants, the Examiner’s alternative interpretation would permit the “end of the optical pathway” to be any point on the optical pathway, and would render such a limitation superfluous. Id. at 6. Appellants’ arguments are persuasive of reversible error. Claim 1 requires that each photonic element is “situated adjacent to an end of the optical pathway.” Claim 1 additionally requires that the optical pathway is disposed within the interposer and that each photonic element is axially aligned with the optical pathway. Thus, claim 1 requires an optical 9 Appeal 2015-006354 Application 13/126,848 transmitter or receiver (or external access point thereof) axially aligned with and situated adjacent an end of the optical pathway. The Specification teaches ‘“photonic element’ refers to an element configured to transmit or receive light-based signals.” Spec. 4:5—6. The Specification further describes that “[a] photonic element may be an optical transmitter (e.g. a laser) or receiver (e.g. a photodiode), or it may be an external access point to such elements (e.g. the terminal end of a waveguide).” Id. at 7—9. In addition, Figures 7A and 7B depict photonic elements 16a, 16b axially aligned at opposing ends of the interposer 22, which itself serves “as a pathway directing the photonic signal from the transmitting element to the receiving element.” Spec. 6:9—11. Finally, the Specification also teaches “[t]o establish the optical connection, the photonic elements are connected to each end of the interposer so that the photonic elements are situated opposite one another down the length of the interposer.” Id. at 6:16—18. We note that the Examiner has raised the alternative interpretation for the first time in the Examiner’s Answer. The Examiner has not sufficiently explained how the mirror holding unit 5M1 would correspond to the second photonic element other than that it, along with holding units 5B1, 5Q, 5S1, 5D, is axially aligned with an optical pathway between photonic element 5P and mirror holding unit 5M1. The Examiner fails to explain how mirror holding unit 5M1 either is an optical transmitter or an optical receiver (or an external access point thereof) as Appellants’ have defined “photonic element.” We further find that Appellants’ proffered definition of “end” being a limit or extremity of the optical pathway is consistent with the 10 Appeal 2015-006354 Application 13/126,848 Specification. The Examiner does not sufficiently explain how mirror holding unit 5M1 is at an end of the optical pathway. Thus, as to the Examiner’s alternative interpretation, the Examiner has not carried the burden of establishing, by a preponderance of the evidence, the factual basis anticipation of claim 1. The Examiner rejects claims 4, 17, and 18 as unpatentable over Tamada in view of Asakawa. However, the Examiner does not rely on Asakawa to address the deficiencies discussed above with regard to Tamada. Accordingly, we do not sustain the Examiner’s anticipation and obviousness rejections of claim 1 and its dependent claims. Claim 11 As to remaining independent claim 11, we note that Appellants rely on the same arguments raised against the Examiner’s rejection of claim 1. Claim 11, similarly to claim 1, recites an interposer including a substantially linear optical pathway situated between the first and second photonic elements. The Examiner rejects claim 11 under 35 U.S.C. § 103(a) as unpatentable over Tamada in view of Stone, and adds Asakawa to reject claim 13. However, the Examiner does not rely on Stone or Asakawa to address the deficiencies discussed above with regard to Tamada. Accordingly, for the same reasons given above, we do not sustain the Examiner’s obviousness rejection of claim 11 and its dependent claims. 11 Appeal 2015-006354 Application 13/126,848 DECISION Upon consideration of the record, and for the reasons given above and in the Appeal and Reply Briefs, the decision of the Examiner rejecting claims 1, 16, and 19 under 35 U.S.C. § 102(e) as anticipated by Tamada, and rejecting claims 2, 4, 11, 13—15, 17, 18, and 21 under 35 U.S.C. § 103(a) as unpatentable over Tamada in view of Hamanaka, Stone, and/or Asakawa, is reversed. REVERSED 12 Copy with citationCopy as parenthetical citation