CCS Technology, Inc.

Patent Trials and Appeals Board

Jul 15, 2020

14806928 - (D) (P.T.A.B. Jul. 15, 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.
14/806,928 07/23/2015 Karsten Contag HI12-154 4780
21495 7590 07/15/2020
CORNING INCORPORATED
INTELLECTUAL PROPERTY DEPARTMENT, SP-TI-3-1
CORNING, NY 14831
EXAMINER
JORDAN, ANDREW
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
07/15/2020 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARSTEN CONTAG and RAINER MATTHIAS KOSSAT
Appeal 2019-004861
Application 14/806,928
Technology Center 2800
Before JULIA HEANEY, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8 and 10–22. See Final Act. 3, 6, 23.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 “CCS Technology,
Inc.” Appeal Br. 2.
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Application 14/806,928

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CLAIMED SUBJECT MATTER
“The application refers to a method for forming optoelectronic
modules connectable to optical fibers. The application further refers to an
optoelectronic module connectable to at least one optical fiber.” Spec. ¶ 2.
Claims 1 and 22, reproduced below, are illustrative of the claimed subject
matter:
1. A method for forming optoelectronic modules connectable
to optical fibers, wherein the method at least comprises:
a) forming a compound substrate:
the compound substrate comprising a substrate having a
plurality of optoelectronic devices constituting a two-
dimensional first array in which the optoelectronic devices are
lined up along two lateral directions;
the compound substrate further comprising a cover layer
disposed on a side of the substrate, the cover layer comprising an
exposed main surface opposite a surface contacting the side of
the substrate, the cover layer having a plurality of fiber end-piece
mounting structures for mounting fiber end-pieces, the fiber end-
piece mounting structures comprising a groove that forms an
indentation in the exposed main surface of the cover layer, the
fiber end-piece mounting structures constituting a two-
dimensional second array in which the fiber end-piece mounting
structures are lined up along the two lateral directions;
wherein forming the compound substrate comprises
arranging the cover layer and/or the plurality of fiber end-piece
mounting structures in an aligned position in relation to the
substrate and/or in relation to the plurality of optoelectronic
devices, thereby bringing all fiber end-piece mounting structures
in alignment to all optoelectronic devices simultaneously such
that a light path between each one of the fiber end-piece
mounting structures and a corresponding one of the
optoelectronic devices is within a material of the cover layer; and
b) singulating the compound substrate into pieces, thereby
forming a plurality of optoelectronic modules each comprising at
least one optoelectronic device covered by an aligned fiber end-
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piece mounting block configured to receive at least one fiber end-
piece of at least one respective optical fiber in the indentation at
the exposed main surface in a position self-aligned to the at least
one optoelectronic device.

22. A compound substrate comprising:
a substrate having a plurality of optoelectronic devices
constituting a two-dimensional first array in which the
optoelectronic devices are lined up along two lateral directions;
a cover layer on one side of the substrate, the cover layer
having a plurality of fiber end-piece mounting structures for
mounting fiber end-pieces, the fiber end-piece mounting
structures comprising:
a groove that forms an indentation in an exposed surface
of the cover layer, the fiber end-piece mounting structures
constituting a two-dimensional second array in which the fiber
end-piece mounting structures are lined up along the two lateral
directions, the fiber end-piece mounting structures being
configured to receive at least one fiber end-piece of at least one
respective optical fiber in the indentation at the exposed main
surface, and
a slanted surface adjacent to the groove, the slanted
surface slanted such as to reflect a beam of electromagnetic
radiation from an optical fiber through the cover layer onto the
optoelectronic device or vice versa,
wherein the fiber end-piece mounting structures of the
second array are aligned to the optoelectronic devices of the first
array so as to enable self-aligned mounting of fiber end-pieces
via the fiber end-piece mounting structures to the optoelectronic
devices such that a light path between each one of the fiber end-
piece mounting structures and a corresponding one of the
optoelectronic devices is within a material of the cover layer.

Claims Appendix (Appeal Br. 34–35, 40).
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REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Zaborsky
Kuhmann
Darbinyan
US 2004/0033031 A1
US 2005/0236562 A1
US 2010/0151614 A1
Feb. 19, 2004
Oct. 27, 2005
June 17, 2010

REJECTIONS
Claim 22 is rejected under 35 U.S.C. § 102(b) as being anticipated by
Darbinyan. Final Act. 3.
Claims 1–8, 10–15, and 17–21 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Darbinyan and Zaborsky. Final Act. 6–7.
Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Darbinyan, Zaborsky, and Kuhmann. Final Act. 20.

OPINION
Claim 22
In rejecting claim 22, the Examiner finds that Darbinyan discloses the
recited “cover layer” “by the top half of the device shown above wafer 204,
including wafer 202 having top substrate 102 and the accompanying half
space for the optical fiber 120) on one side of the substrate (top thereof, Fig.
1).” Final Act. 4; see also Ans. 4 (quoting the same and citing Final Act. 4,
7, 15 and stating again that “[t]his means that for claim interpretation that []
‘the cover layer’ may include more than just the wafer 202 alone”). Based
on Darbinyan’s disclosure of the “cover layer,” the Examiner proceeds to
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explain that the limitation “a light path . . . is within a material of the cover
layer” is disclosed in Darbinyan. Id. at 5–6.
Appellant states that “the Final Office Action also admits that the
cover layer is ‘the layer provided by the top half of the device shown above
wafer 24.’” Appeal Br. 22 (citing “Final Office Action p. 4”). Appellant’s
quotation of the Examiner’s findings with regard to the recited “cover
layer”— as provided in full in the preceding paragraph – is incomplete.
Appellant’s arguments that the Examiner reversibly erred because “top
substrate 102 does not include a light path within the material of top
substrate 102 as recited by claim 22” are unpersuasive as they do not address
the Examiner’s findings in support of the rejection. Appeal Br. 16, 17
(repeating the argument that “an optical path 140 does not propagate through
the top substrate 102 whatsoever”) (emphasis omitted), 20–21. Appellant’s
additional argument that “the bottom substrate 104 shown in annotated FIG.
1A of Darbinyan hereinabove cannot be considered a cover layer” (Appeal
Br. 21) is likewise unpersuasive because it is not responsive to the
Examiner’s finding in support of the rejection.
We note that Appellant, for the first time in the Reply Brief, disagrees
with the Examiner’s finding that the recited “cover layer” is not limited to
Darbinyan wafer 202 or top substrate 102. Reply Br. 2–9. An argument
raised for the first time in a Reply Brief can be considered waived if
Appellant does not explain why it could not have been raised previously.
See Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative)
(explaining that arguments and evidence not timely presented in the
principal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
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presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477
(BPAI 2010) (informative) (“Properly interpreted, the Rules do not require
the Board to take up a belated argument that has not been addressed by the
Examiner, absent a showing of good cause.”).
In this case, Appellant does not explain why these arguments raised
for the first time in the Reply Brief could not have been raised previously.
See Reply Br. 2–9. We further note that, in the Final Rejection, the Examiner
not only finds that the “cover layer” is disclosed by “the layer provided by
the top half of the device shown above wafer 204, including wafer 202
having top substrate 102 and the accompanying half space for the optical
fiber 120) on one side of the substrate,” (Final Act. 4), but the Examiner also
specifically responds to Appellant’s argument by stating that “neither the
cover layer of claims 22, 1[,] and 14, nor the fiber end-piece mounting block
as seen as strictly limited to substrate 102. See the rejections as the substrate
102 is seen as part of a layer or block that includes any defined recess.”
(Final Act. 22).2
Appellant’s new arguments, advanced in the Reply Brief, have not
afforded the Examiner an opportunity to respond to the new argument. It is a
requirement of 37 C.F.R. § 192 that Appellant submits arguments in the
Brief(s) specifying all of the errors made by the Examiner in the rejection.
See Ex Parte Hindersinn, 177 USPQ 78, 80 (BPAI 1971). We sustain the

2 In the Examiner’s Answer, the Examiner further notes that “[c]laims 3 and
18 include the limitation ‘the cover layer is a further substrate’, indicating
that without this added narrowing limitation, that the ‘cover layer’, as used
in claims 22, 14, and 1 for example, should be interpreted broadly.” Ans. 4.
Appellant does not respond to this argument in the Reply Brief.
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rejection of claim 22 because Appellant’s arguments do not address the
Examiner’s findings in support of the rejection.
Claim 13
In rejecting claim 1, the Examiner finds that Darbinyan teaches or
suggests all recited limitations but “the cover layer comprising an exposed
main surface opposite a surface contacting the side of the substrate.” Final
Act. 9 (analyzing the rejection of claim 14 which recites a compound
substrate identical to that recited in the method of claim 1), 10 (analyzing the
rejection of claim 15 which recites an optoelectronic module identical to that
recited in the method of claim 1), 13–14 (analyzing the rejection of claim 1
based on the rejection of claims 14 and 15). The Examiner accordingly relies
on Zaborsky for the teaching. Id. at 9.
Appellant argues that the Examiner erred because “Zaborsky does not
disclose ‘a light path between each one of the fiber end-piece mounting
structures and a corresponding one of the optoelectronic devices is within a
material of the cover layer’ as recited by claim 1.” Appeal Br. 24. We are
not persuaded by the argument because Zaborsky is only relied upon for the
teaching of “the cover layer comprising an exposed main surface opposite a
surface contacting the side of the substrate.” See Final Act. 9, 10.
Appellant also repeats the argument that “the optoelectronic package
100 disclosed in Darbinyan is not arranged to have a light path within the
top substrate 102 at any point whatsoever. Furthermore, the bottom substrate
104 cannot be considered a cover layer for at least the reasons stated above.”

3 Appellant does not separately argue claims 2–7 and 10–13; they stand or
fall with claim 1. See Appeal Br. 22–28; see also 37 C.F.R.
§ 41.37(c)(1)(vii).
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Appeal Br. 24. We have addressed the argument supra and find it
unpersuasive. The rejection of claim 1 is sustained.
Claim 8
Claim 8 depends from claim 1 and additionally recites, “wherein for
each optoelectronic device an associated fiber end-piece mounting structure
is formed which comprises at least one of: a surface portion configured to
receive a fiber end-piece free of play; and the surface portion configured to
insert a fiber end-piece in a position fixed in two or three directions.”
Appellant argues that the Examiner reversibly erred because it is
“physically impossible to insert the [prior art] optical fiber 120 in any other
direction” but one and therefore does not meet the “two or three directions”
claim limitation. Appeal Br. 29.
As the Examiner points out, Appellant’s argument is not persuasive
because it is not based on the claim language which requires the “surface
portion” to be “configured to insert a fiber end-piece in a position fixed in
two or three directions.” Ans. 13–14 (emphasis omitted). The claim
language does not require the fiber end-piece (e.g., the prior art optical fiber)
to be inserted in a particular direction. The rejection of claim 8 is sustained.
Claims 14, 15, & 16
Appellant does not separately argue the rejections of independent
claims 14 and 15 (and their respective dependent claims), and 16. See
Appeal Br. 29 (“For at least the reasons stated with respect to independent
claim 1, the purported combination fails to disclose, teach or otherwise
reasonably suggest each and every feature of independent claim 14 and its
dependent claims.”), 30 (“For at least the reasons stated with respect to
independent claim 1, the purported combination fails to disclose, teach or
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otherwise reasonably suggest each and every feature of independent claim
15 and its dependent claims.”), 32 (“Kuhmann fails to cure the deficiencies
of Darbinyan and Zaborsky regarding independent claim 14.”). The
rejections are sustained for the reasons provided supra. 37 C.F.R.
§ 41.37(c)(1)(vii).
CONCLUSION
The Examiner’s rejections are affirmed.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
22 102 Darbinyan 22
1–8, 10–15,
17–21
103 Darbinyan, Zaborsky 1–8, 10–
15, 17–21

16 103 Darbinyan, Zaborsky,
Kuhmann
16
Overall
Outcome:
1–8, 10–22

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