Thorlabs Quantum Electronics, Inc.

Patent Trials and Appeals Board

Jun 24, 2020

13772694 - (D) (P.T.A.B. Jun. 24, 2020)

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.
13/772,694 02/21/2013 Catherine Genevieve Caneau CRNG 5430 1664
61650 7590 06/24/2020
MYERS WOLIN, LLC
100 HEADQUARTERS PLAZA
WEST TOWER, FLOOR 7
MORRISTOWN, NJ 07960-6834
EXAMINER
HAGAN, SEAN P
ART UNIT PAPER NUMBER
2828
NOTIFICATION DATE DELIVERY MODE
06/24/2020 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):
patent@myerswolin.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CATHERINE GENEVIEVE CANEAU, FENG XIE, and
CHUNG-EN ZAH

Appeal 2019-003432
Application 13/772,694
Technology Center 2800
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
DONNA M. PRAISS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–11, and 19–21; claims 12–18 are
withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Thorlabs
Quantum Electronics, Inc. Appeal Br. 3.
Appeal 2019-003432
Application 13/772,694

2
The following rejections are presented for appeal:
I. Claims 1, 3–6, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Arimura (US 7,856,046 B2; Dec. 21, 2010) in view of
Kawasaki (US 5,115,284; May 19, 1992) and further in view of Hwang (US
6,560,259 B1; May 6, 2003).
II. Claims 7–11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Arimura in view of Kawasaki in view of Hwang and further in view of
Goyal (US 2012/0033697 A1; Feb. 9, 2012).
III. Claims 19 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Arimura in view of Kawasaki in view of Hwang and
further in view of Kwon (US 5,561,683; Oct. 1, 1996).
Appellant’s invention relates generally to distributed feedback lasers
in the mid-infrared region that have an active core made of concentric rings
to generate several wavelengths simultaneously or sequentially. (Spec. ¶ 2.)
Independent claims 1 and 19 are presented in the appeal and representative
claim 1 is reproduced below:
1. A laser comprising:
i) a gain material comprising at least two,
compositionally non-identical, layers forming a superlattice,
wherein the gain material generates photons by intersubband
transitions;
ii) at least two circular lasing sections with non-
equivalent lengths placed in a concentric circle with a common
center, the surface of the circular lasing sections being parallel
to the layers forming the superlattice, wherein:
a. each lasing section comprises
i. a grating;
ii. an active region; and
iii. an electrical contact for injecting current into
the gain material in a direction perpendicular to the
surface of the circular lasing sections;
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Application 13/772,694

3
b. the lasing sections are separated by an electrical
isolation region; and
c. the gratings in the at least two circular lasing sections
have non-equivalent periods or Bragg wavelengths, and
are configured to act as reflectors reflecting the photons
partly within the surface to achieve lasing and partly out
of the surface as surface emitting output,
wherein the lasing sections are arranged such that the section
emitting at the shortest wavelength, which is defined by the
grating with the smallest grating period, is closest to the
common center, and the section emitting at the longest
wavelength, which is defined by the grating with the largest
grating period, is farthest from the common center.

Appeal Br. 19, Claims Appendix (italics added).

OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we reverse the Examiner’s
rejections based on the arguments presented by Appellant. We add the
following.
We limit our discussion to the independent claims 1 and 19.
The Examiner finds Arimura teaches a laser comprising a gain
material comprising at least two, compositionally non-identical, layers
forming a superlattice as required by independent claim 1. (Final Act. 6.)
The Examiner finds Arimura differs from the claimed invention by not
disclosing “at least two circular lasing sections with non-equivalent lengths
placed in a concentric circle with a common center.” The Examiner finds
Kawasaki teaches this feature. (Final Act. 6.) The Examiner determines it
would have been obvious to one of ordinary skill in the art at the time of the
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Application 13/772,694

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invention to combine the teachings of Arimura with the teachings of
Kawasaki. 2 The Examiner further states:
In view of the teachings of Arimura regarding the provision of a ring
laser having vertical output, the formation of such lasers in an array of
ring lasers having vertical output by nesting lasers having a common
center as taught by Kawasaki would enhance the teachings of Arimura
by allowing additional independent lasing regions of the same or
different wavelength to be formed with predetermined alignment in a
compact area.
(Final Act. 6).

During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see also,
Ball Aerosol and Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) (“[T]he analysis that ‘should be made explicit’
refers not to the teachings in the prior art of a motivation to combine, but to
the court’s analysis.”).
The dispositive issue on appeal is:
Did the Examiner err in determining that a person of ordinary skill in
the art would have combined the teachings of Arimura and Kawasaki to
form a laser having at least two circular lasing sections with non-equivalent

2 The Examiner cites Hwang for describing subject matter not related to the
dispositive issue.

Appeal 2019-003432
Application 13/772,694

5
lengths placed in a concentric circle with a common center as required by
independent claim 1?
We answer this question in the affirmative.
Appellant argues the cited references do not teach a laser wherein the
lasing sections are arranged such that the section emitting at the shortest
wavelength, which is defined by the grating with the smallest grating period,
is closest to the common center, and the section emitting at the longest
wavelength, which is defined by the grating with the largest grating period,
is farthest from the common center as required by independent claim 1.
(Appeal Br. 10–16.)
The Examiner has not identified where Arimura and Kawasaki teach
lasing sections arranged such that the section emitting at the shortest
wavelength is closest to the common center, and the section emitting at the
longest wavelength is farthest from the common center as required by
independent claim 1.
Although the combination of Arimura and Kawasaki might suggest
arriving at a device having multiple rings, neither Arimura nor Kawasaki
discloses a wavelength relationship among the rings. The Examiner’s
reliance on Arimura for teaching the radius of the ring as an input variable
for the value that sets the emission wavelength of the ring resonator does not
describe a relationship among concentric rings. Although Kawasaki
discloses multiple polygons, there is no teaching or suggestion of wherein
the lasing sections are arranged as required by independent claim 1.
Consequently, the combined teachings of Arimura and Kawasaki do not
suggest a device wherein the lasing sections are arranged such that the
section emitting at the shortest wavelength, which is defined by the grating
Appeal 2019-003432
Application 13/772,694

6
with the smallest grating period, is closest to the common center, and the
section emitting at the longest wavelength, which is defined by the grating
with the largest grating period, is farthest from the common center as
required by independent claim 1.
Therefore, we do not sustain the Examiner’s decision to reject
independent claims 1 and 19 for the reasons presented by Appellant and
given above. We likewise reverse the Examiner’s decision to reject
dependent claims 3–11, 20, and 21 because the rejections of these claims are
premised on the Examiner’s unsupported combination of Arimura and
Kawasaki. We need not reach whether the Examiner’s reliance on other
references in addition to Arimura and Kawasaki for the rejection of the
dependent claims was supported by the evidence of record because the base
combination of Arimura and Kawasaki cannot stand.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1, 3–6,
20 103(a) Arimura, Kawasaki, Hwang 
1, 3–6,
20
7–11 103(a) Arimura, Kawasaki, Hwang, Goyal  7–11
19, 21 103(a) Arimura, Kawasaki, Hwang, Kwon 19, 21
Overall
Outcome
1, 3–11,
19–21

REVERSED