Commissariat à l'énergie atomique et aux énergies alternatives

Patent Trials and Appeals Board

Sep 16, 2020

2019005084 (P.T.A.B. Sep. 16, 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.
14/904,809 01/13/2016 Salim BOUTAMI P11433US00/BAS 4376
881 7590 09/16/2020
STITES & HARBISON PLLC
1800 DIAGONAL ROAD
SUITE 325
ALEXANDRIA, VA 22314
EXAMINER
TAVLYKAEV, ROBERT FUATOVICH
ART UNIT PAPER NUMBER
2896
NOTIFICATION DATE DELIVERY MODE
09/16/2020 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):
iplaw@stites.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SALIM BOUTAMI, MICKAËL BRUN,
PIERRE LABEYE, SERGIO NICOLETTI, and
GRÉGORY MAISONS
____________

Appeal 2019-005084
Application 14/904,809
Technology Center 2800
____________

Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Commissariat à L’Énergie Atomique et aux
Energies Alternatives as the real party in interest. Appeal Brief, filed July
16, 2018 (“Appeal Br.”) 1. Appellant filed Supplemental Appeal Briefs on
August 30, 2018 and November 13, 2018, in response to Notices of
Defective Appeal Brief. In this decision, references to the Appeal Brief are
to the Appeal Brief filed July 16, 2018.
2 Final Action, mailed February 15, 2018 (“Final Act.”).
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We affirm in part.

STATEMENT OF THE CASE
Background
The subject matter on appeal “relates to an optical coupler, a
component comprising such an optical coupler, a determination method, and
a method for manufacturing such an optical coupler.” Specification, filed
January 13, 2013 (“Spec.”) 2:4–6.3 The Specification explains a need exists
for structures that make it possible to guide light effectively in the field of
heterogeneous integration of laser sources on an integrated optical structure.
Id. at 2:9–13. A monolithic laser source effective on silicon does not yet
exist, so laser sources generally use III-V type semiconductors on a silicon
substrate. Id. at 2:14–23. The Specification proposes to use evanescent
waves to effectively couple the laser light the laser source creates in the III-
V semiconductor with a passive waveguide of the silicon guide structure.
Id. at 2:24–26. Such a coupling requires the laser source and passive
waveguide to be very close, but such close proximity is often difficult to
obtain in practice because an insulating layer that protects the passive
waveguide degrades the laser source. Id. at 3:7–12.
To that end, the Specification discloses an optical coupler in a vertical
configuration that includes, among other things, a first waveguide with a
first effective index and a second waveguide distinct from the first
waveguide with a second effective index that is different from the first

3 The Specification filed on January 13, 2013, does not include paragraphs
or line numbers. For ease of reference, we add line numbers to the
Specification.
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effective index. Id. at 3:21–27. The second waveguide further has a
patterning and a period, wherein the pattern has parameters influencing
evanescent wave coupling between the first and second waveguide such that
the coupling is greater than 15%. Id. at 3:27–4:6.
Of the appealed claims, claims 1, 15, 17, and 19 are independent.
Claim 1 is representative of the subject matter on appeal, and is reproduced
below.
1. An optical coupler in a vertical configuration, capable of
working for a wavelength, wherein said optical coupler
comprises:
a first waveguide extending in the longitudinal direction
and capable of propagating a first propagation mode of the light
having a first effective index, an entry plane, and an exit plane
being defined for the first waveguide,
a second waveguide distinct from the first waveguide,
parallel to the first waveguide, having a core and a cladding and
capable of propagating a second propagation mode of the light
having a second effective index, the second effective index
being different from the first effective index, an entry plane,
and an exit plane being defined for the second waveguide, the
entry plane of the first waveguide being situated between the
entry plane of the second waveguide and the exit plane of the
second waveguide,
the second waveguide having a patterning, the patterning
having a period along the longitudinal direction below the ratio
between the wavelength at which the optical coupler is capable
of operating and the product of two by the second effective
index, the patterning being in the form of a series of patterns,
the patterns extending along a transverse direction
perpendicular to the longitudinal direction, being parallel to
each other and orthogonal to the general direction of the first
waveguide, each pattern having parameters influencing the
evanescent wave coupling between the first waveguide and the
second waveguide so that the coupling is determined by a ratio
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between an intensity of an electrical field at the entry plane of
the first waveguide and an intensity of an electrical field at the
exit plane of the second waveguide and is greater than 15%.
Appeal Br. 20 (Claims App’x).
The References
Akiyama US 2011/0299561 A1 Dec. 8, 2011
Faccio et al. US 2007/0058900 A1 Mar. 15, 2007
Madsen et al. US 6,931,180 B2 Aug. 16, 2005
Chen et al. US 7,457,491 B2 Nov. 25, 2008

The Rejections
The Examiner maintains the following rejections on appeal:
1. Claims 1–7, 9, 11, 12, and 14–16 under 35 U.S.C. § 103 as
unpatentable over Akiyama in view of Faccio;
2. Claims 8 and 10 under 35 U.S.C. § 103 as unpatentable over
Akiyama in view of Faccio and Madsen; and
3. Claims 13 and 17–20 under 35 U.S.C. § 103 as unpatentable
over Akiyama in view of Faccio and Chen.
Final Act. 4–16; Examiner’s Answer, dated April 15, 2019 (“Ans.”) 2.

OPINION
Rejection over Akiyama and Faccio
The Examiner rejects claims 1–7, 9, 11, 12, and 14–16 under
35 U.S.C. § 103 as unpatentable over Akiyama and Faccio. Final Act. 4–14.
Appellant argues claims 1 and 15 as a first group, and separately argues
claim 3, claim 6, and claim 12. Appeal Br. 9–15. Appellant does not
present separate arguments for claims 2, 4, 5, 7, 9, 11, 14, and 16, which
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depend from claim 1. Thus, those claims stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(iv). We address the claims Appellant argues
separately below.
Claims 1, 2, 4, 5, 7, 9, 11, and 14–16
Relevant to independent claims 1 and 15, the Examiner finds
Akiyama discloses, among other things, a coupler in a vertically-stacked
configuration that includes a first waveguide and a second waveguide with a
patterning. Final Act. 4–6. The Examiner finds Akiyama does not disclose
the patterning period recited in claims 1 and 15, but finds it would have been
obvious to optimize this parameter in view of Faccio. Id. at 6. Specifically,
the Examiner finds Faccio, like Akiyama, discloses a vertically-stacked
coupler that includes a first waveguide and a second waveguide having a
patterning. Id. at 6–7. The Examiner also finds Faccio discloses equations
that govern the patterning period and Faccio’s patterning has parameters that
influence optical coupling between the first and second waveguides. Id. at
7–8. The Examiner concludes it would have been obvious to modify
Akiyama’s patterning in view of Faccio’s teachings regarding patterning
period. Id. at 7–8. The Examiner further finds Faccio teaches selecting
patterning parameters so there is a “complete power exchange” between two
waveguides. Id. at 10. In view of this finding, the Examiner determines that
the combination of Akiyama and Faccio would result in coupling that is
greater than 15%, as claims 1 and 15 require. Id.
Appellant contends that Akiyama’s diffraction gratings 6 and 7 are not
the patterning recited in claims 1 and 15 because “Applicant's specification
makes it clear that the patterning is not a diffraction grating.” Appeal Br. 9;
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Reply Brief, filed June 17, 2019 (“Reply Br.”) 1, 3. Appellant’s
Specification, states:
The second waveguide 14 has a patterning 33 in the form of a
series of patterns 36. The patterning 33 can also be designated
using the generic term ‘grating’ 33. However, for clarity reasons,
this term is not used in the context of this description, since the
patterning 33 is not a diffraction grating. In particular, the
patterning 33 does not serve to amplify the field in the gain
medium. On the contrary, the patterning 33 makes it possible to
extract light by modifying the effective index. (Emphasis
added).
Appeal Br. 10 (citing Spec. 5:27–32 (emphasis added)).
Akiyama’s Figure 1 is reproduced below.

Figure 1 shows a semiconductor configuration
Figure 1 depicts silicon waveguide substrate 1 that includes silicon
substrate 3, silicon waveguide 4, first diffraction grating 6, second
diffraction grating 7, DFB laser region 10, and DBR mirror region 11.
Akiyama ¶¶ 28, 39. The Examiner identifies DFB laser region 10 and DBR
mirror region 11 as a first waveguide, silicon waveguide 4 as a second
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waveguide, and first and second diffraction gratings 6 and 7 as the recited
patterning. Final Act. 4–5. Therefore, Appellant is correct that Akiyama
refers to structures 6 and 7 as diffraction gratings. As noted above,
Appellant’s Specification states “the patterning 33 is not a diffraction
grating.” Spec. 8:3–4.
The record, however, includes further evidence indicating that
Akiyama’s structures correspond to the recited patterning. Akiyama
describes its laser as an “evanescent laser” and explains “light propagating
through the silicon waveguide evanescently couples to the light-emitting
material, thereby providing an optical gain.” Akiyama ¶¶ 19, 20, 25. Thus,
Akiyama discloses that its device performs evanescent coupling. See also
Faccio ¶¶ 19, 47, 49, Fig. 2a (demonstrating that gratings were known to
optically couple two waveguides).
The structure of Akiyama’s gratings 6 and 7 are shown in Figure 3,
which is reproduced below.
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Figure 3 illustrates Akiyama’s silicon waveguide substrate
Akiyama discloses that first and second diffraction gratings 6 and 7 are
formed by periodically varying the width of waveguide core 4A of silicon
waveguide 4, so that first diffraction grating 6 has a coupling coefficient and
second diffraction grating 7 has another coupling coefficient (i.e., by
forming periodic grooves with different depths in waveguide core 4A). Id.
¶¶ 37, 43, 45. As a result, second diffraction grating 7 has a deeper
diffraction grating groove in comparison to first diffraction grating 6. Id.
¶ 38. Akiyama also teaches that “the equivalent refractive index varies
along the waveguide.” Id. ¶ 20.
In the process of making Akiyama’s laser, light-emitting layer 12
covers first and second diffraction gratings 6 and 7. Akiyama ¶ 105. It is
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unclear from Akiyama’s disclosure whether light-emitting layer 12 covers
first and second diffraction gratings 6 and 7 so the grooves of the gratings
remain as unfilled openings, or whether the material of light-emitting layer
12 fills those grooves. Nonetheless, either structure corresponds to the
patterning structure of one of Appellant’s embodiments. Specifically,
Appellant discloses its “patterns are chosen from the group consisting of
openings formed in the second waveguide and blades.” Spec. 4:11–12.
When the patterns are blades, the blades are formed by making holes in the
second waveguide and filling the holes with a material. Spec. 20:28–21:1.
Thus, although Akiyama describes elements 6 and 7 as diffraction
gratings and Appellant’s Specification states its patterning “is not a
diffraction grating,” the record supports the Examiner’s finding that
Akiyama’s diffraction gratings 6 and 7 correspond to the recited patterning,
because diffraction gratings 6 and 7 have substantially the same structure as
Appellant’s patterning (i.e., either openings in a waveguide or openings
filled with another material) and perform the same function as Appellant’s
patterning (i.e., evanescently coupling waveguides).
When arguing that Akiyama’s diffraction gratings 6 and 7 cannot be
the recited patterning, Appellant asserts “[b]y contrast, it is to be noted that
Akiyama uses the diffraction gratings 6 and 7 to make a laser, the diffraction
gratings notably serving as mirrors.” Appeal Br. 10 (citing Akiyama ¶¶ 26,
28). These arguments are unpersuasive in view of the above analysis and
the teachings by Akiyama and Faccio that a grating optically couples
waveguides.
Appellant argues “Akiyama does not disclose or suggest any structure
of the type of Applicant’s claimed invention, namely one that relies on
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interferential effects which is contrary to the system in Akiyama.” Appeal
Br. 9. Appellant further argues that the recited patterning extracts light by
modifying the effective index, whereas Akiyama’s gratings only amplify the
field in the gain medium. Reply Br. 2–3. According to Appellant, “the
Akiyama reference relates to a fundamentally different device than the
present claims, and Examiner appears to have overlooked these important
distinctions.” Id. at 3. Appellant continues that “modifying the effective
index as is done in Applicant’s claims is substantially different compared to
amplifying the field in the gain medium which is done by Akiyama.” Id. at
4. These arguments are not persuasive because claims 1 and 15 do not
require that the patterning modifies an effective index. Moreover, Appellant
does not explain why Akiyama’s device amplifies the field in a gain
medium. Appellant only presents attorney argument that is lacking
evidentiary support. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence.”).
Appellant further contends that “the patterning of the claimed
invention relies on the coupling of evanescent waves” and “the coupling of
evanescent waves as in the present claims is not described by the same
equations as the equation of an interferential diffraction grating as in
Akiyama.” Appeal Br. 10. As noted above, Akiyama describes evanescent
coupling of optical waveguides and describes substantially the same basic
structure (i.e., openings or blades) as Appellant’s patterning. In addition,
claims 1 and 15 do not recite evanescent coupling via a particular equation
(other than the period of the patterning). And Appellant does not identify
any particular equations Akiyama discloses or explain how its argument
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otherwise demonstrates a patentable distinction between claims 1 and 15 and
the combination of Akiyama and Faccio.
Appellant argues that “Akiyama does not disclose or suggest that the
proposed parameters of the grating ensure obtaining a coupling efficiency
superior to 15%” and “it is impossible to obtain the efficiency of the present
claims through the use of the device disclosed in Akiyama.” Appeal Br. 11.
These arguments are unpersuasive because they do not address the
Examiner’s rejection. The Examiner determines that the combination of
Akiyama and Faccio would have provided coupling that is greater than 15%,
as claims 1 and 15 recite, because Faccio describes a tunable grating assisted
optical coupler that provides “complete power exchange,” which suggests
coupling greater than 15%. Final Act. 7, 10. In other words, Faccio
suggests coupling as great as 100% due to its disclosure of “complete power
exchange” when coupling waveguides. Faccio ¶¶ 1, 50.4
In addition, Appellant asserts that Faccio teaches away from the
invention of claims 1 and 15 because Faccio relates to a counter-propagating
embodiment, not a co-propagating configuration. Appeal Br. 11–12.
Appellant also argues Faccio’s equation II applies to a co-propagating
configuration, whereas Faccio’s equation I applies to a counter-propagating
configuration, but that the Examiner either attempts to combine Akiyama’s
co-propagating configuration with Faccio’s counter-propagating
configuration or relies upon Faccio’s co-propagating configuration and

4 Appellant also asserts that Faccio also does not disclose or suggest
coupling equal to or greater than 15%. Id. at 13. This argument is
unpersuasive in view Faccio’s disclosure of “complete power exchange.”
Faccio ¶ 50.
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equation I, which does not satisfy the claimed patterning period. Reply
Br. 4–5.
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” Id. Appellant’s arguments are not
persuasive because they fail to consider what Akiyama’s and Faccio’s
combined teachings would have taught or suggested to one of ordinary skill
in the art. The Examiner mentions Faccio’s equations when explaining the
rejection because the equations describe a relationship between certain
parameters. Specifically, the Examiner concludes it would have been
obvious to optimize the patterning period in view of Faccio’s teachings of a
relationship between grating period, two times the refractive index of the
second waveguide, and the wavelength of light. Final Act. 6, 8; Ans. 7.
Faccio’s disclosure supports the Examiner’s finding as to this relationship.
Faccio ¶ 7.
“[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). Because Faccio recognizes patterning period
as a result effective variable, we find that it would have been a matter of
routine experimentation and design within the level of the ordinary skill to
modify the period of Akiyama’s diffraction gratings in view of Faccio’s
teachings to arrive at a patterning period within the scope of claims 1 and 15.
In view of the foregoing, Appellant does not identify a reversible error
in the Examiner’s rejection of claims 1 and 15. Accordingly, we affirm the
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Examiner’s rejection of claims 1, 2, 4, 5, 7, 9, 11, and 14–16 under
35 U.S.C. § 103.
Claims 3 and 6
Claim 3 depends from claim 1 and recites “wherein the patterns have
a dimension along the transverse direction larger than the dimension of the
core of the second waveguide along the transverse direction.” Appeal Br. 21
(Claims App’x). Claim 6 depends from claim 1 and recites “wherein each
pattern is arranged both in the core and the cladding of the second
waveguide.” Id. Although Appellant argues claims 3 and 6 separately, we
address both claims here for the sake of efficiency.
The Examiner treats claims 3 and 6 together and determines that those
claims would have been obvious over the combination of Akiyama and
Faccio, finding “[i]n this case, each pattern is arranged both in the core and
the cladding of the second waveguide.” Final Act. 12. The Examiner does
not elaborate or cite to any disclosure in Akiyama or Faccio to support the
obviousness determination. See id.
Appellant argues that neither Akiyama nor Faccio suggests claim 3’s
or claim 6’s pattern but, instead, disclose patterns inside a core that do not
have the recited dimension. Appeal Br. 14.
The Examiner provides a section in the Answer that begins “[w]ith
regard to claims 3, 6, and 12,” but this section only responds to Appellant’s
arguments for claim 12. Ans. 8–10. In other words, the Examiner provides
no further explanation supporting the rejection of claim 3 or claim 6. As a
result, the Examiner does not set forth a prima facie case of obviousness for
claims 3 and 6. Accordingly, we reverse the Examiner’s rejection of claims
3 and 6 under 35 U.S.C. § 103.
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Claim 12
Claim 12 recites:
The optical coupler according to claim 1, wherein the optical
coupler includes a third waveguide distinct from the first and
second waveguides and extending parallel to the first and second
waveguides, the third waveguide being arranged between the
first waveguide and the second waveguide and being capable of
propagating a third light propagation mode having a third
effective index.
Appeal Br. 22 (Claims App’x).
The Examiner rejects claim 12 over the combination of Akiyama and
Faccio, concluding that “[t]he use/implementation of an additional layer(s)
and waveguide(s) would be well within the ordinary skill in the art and does
not rise above the threshold of novelty.” Ans. 13–14. In other words, the
Examiner appears to conclude that claim 12 encompasses the mere
duplication of a waveguide of the Akiyama and Faccio combination.5
Appellant asserts that “[n]either Akiyama or Faccio discloses or
suggests such a third waveguide, much less any disclosure or suggestion as
to why a third waveguide would be used when arranged between the first
and the second waveguide” and “[n]othing suggests to one skilled in the art
that using such a third waveguide results in a better behavior for the
coupler.” Appeal Br. 14–15. These arguments, however, do not address the
Examiner’s rationale, which relies on duplicating known elements with
predictable results.

5 Merely duplicating known elements is likely to be obvious when the results
are predictable. See In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is
well settled that the mere duplication of parts has no patentable significance
unless a new and unexpected result is produced.”).
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Moreover, as noted above, claim 12 recites a third waveguide “distinct
form the first and second waveguides.” Although this limitation
encompasses a third waveguide that is physically separate or distinct in
location from the first and second waveguide (e.g., arranged between the
first and second waveguides, as claim 12 recites), the third waveguide need
not be distinct in its properties. Claim 12 further recites that the third
waveguide has “a third effective index,” but does not require that the third
effective index be different from the first and/or second index of the first or
second waveguide. Claim 12 also recites that the third waveguide is capable
of propagating a third light propagation mode, but this does not require that
the third mode differ from the modes of the first or second waveguide.
Therefore, the Examiner sets forth a prima facie case obviousness for claim
12 based on duplication of parts. As such, we affirm the Examiner’s
rejection of claim 12 under 35 U.S.C. § 103.
Rejection over Akiyama, Faccio, and Madsen
The Examiner rejects claims 8 and 10 under 35 U.S.C. § 103 as
unpatentable over Akiyama in view of Faccio and further in view of
Madsen. Claims 8 and 10 depend from claim 1 and add further limitations
to the optical coupler. Claim 8 recites “wherein the spacing along the
longitudinal direction between the patterns is variable in the longitudinal
direction.” Appeal Br. 21 (Claims App’x). Claim 10 recites “wherein the
core of the second waveguide has a variable dimension in the transverse
direction.” Id. at 22.
The Examiner finds Akiyama and Faccio do not expressly teach the
limitations of claims 8 and 10, but “Madsen discloses a vertically-stacked
grating-assisted coupler (the same type of that of Akiyama and Faccio)” and
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discloses an embodiment in which spacing of a pattern and core cross-
section are varied along a longitudinal direction, citing Madsen’s Figures 1
and 6. Final Act. 14. The Examiner concludes it would have been obvious
to vary the pattern spacing and cross-section of Akiyama and Faccio along
the longitudinal direction in view of Madsen’s teachings in order to improve
coupling efficiency between an input element and an output element with
dissimilar transverse optical sizes. Id. at 14–15.
Appellant argues that Madsen discloses a horizontal coupler, not a
vertically-stacked coupler. Appeal Br. 15. Appellant’s arguments are
persuasive. Madsen’s Figure 1 depicts a horizontal arrangement in which a
segmented waveguide section 14 couples a fiber core 12 with a smaller
waveguide core 13. Madsen 3:3–5. As noted at page 6 of the Reply Brief,
the Examiner does not respond to Appellant’s arguments in the Answer to
explain why it would have been obvious to modify the combination of
Akiyama and Faccio in view of Madsen, which discloses a different type of
arrangement than Akiyama and Faccio.
Accordingly, we reverse the Examiner’s rejection of claims 8 and 10
under 35 U.S.C. § 103.
Rejection over Akiyama, Faccio, and Chen
The Examiner rejects claims 13 and 17–20 under 35 U.S.C. § 103 as
unpatentable over Akiyama in view of Faccio and further in view of Chen.
Claims 13 and 17–20 require a “thermal insulation zone” (claim 13) or a
“thermal insulation element” (claims 17–20). Appeal Br. 22–25 (Claims
App’x).
The Examiner finds that Akiyama and Faccio do not disclose or
suggest the use of a thermal insulation element. Final Act. 15. The
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Examiner finds Chen discloses a laser that generates heat and is embedded
in an optoelectronic board, and discloses a heat sink that functions as a
thermal insulation element and is incorporated in the optoelectronics board.
Id. The Examiner concludes it would have been obvious to add a thermal
insulation element to the laser waveguide of Akiyama and Faccio, which
would also generate heat, so the heat is directed away from the coupler and
does not adversely affect the performance of the laser. Id. For claim 20, the
Examiner further cites to Akiyama’s substrate and waveguides and to
Chen’s heat sink. Id. at 16.
Appellant contends Chen does not disclose or suggest a thermal
insulation zone, as claim 13 recites, because “Chen discloses a heat sink 100
or 200 connected to the substrate . . . and not to the waveguides 106 or 108.”
Appeal Br. 16. With regard to claims 17 and 19, Appellant similarly asserts
that Chen’s heat sink is not connected to Chen’s waveguides because the
heat sink is instead connected to the substrate. Id. at 17–18.
Appellant’s arguments regarding the thermal insulation arrangement
do not identify a reversible error in the Examiner’s rejection over Akiyama,
Faccio, and Chen. Claim 13 recites “a thermal insulation zone of the first
waveguide in which the patterning is arranged.” Appeal Br. 22 (Claims
App’x). Therefore, claim 13 requires that the thermal insulation provides a
zone for the first waveguide in which the patterning is arranged, not that the
thermal insulation is directly connected to the first waveguide, as Appellant
appears to argue. Claims 17 and 19 recite “a thermal insulation element
connected to the first or second waveguide.” Id. at 24–25. Thus, claims 17
and 19 also do not require a direct connection between thermal insulation
and a first or second waveguide, but merely require a connection between
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the thermal insulation and a waveguide, whether it is indirect (e.g., via other
structures) or direct. As a result, Appellant’s arguments do not reflect the
limitations of claims 13, 17, and 19 or their scope.
Appellant argues “[s]ince Claim 20 includes all of the elements of
Claim 19, it is patentable over the cited references for at least the same
reasons as stated above with regard to Claim 19” but “Chen clearly does not
have the substrate/waveguide pattern nor the thermal insulated element as
set forth in Claim 20.” Id. at 18. As explained above, Appellant’s
arguments do not identify a reversible error in the Examiner’s rejection of
claim 19. Appellant’s further argument that Chen does not disclose or
suggest the thermal insulated element of claim 20 amounts to a general
denial that merely references the limitations of claim 20 without identifying
a reversible error in the Examiner’s rejection.
With regard to claim 18, Appellant contends that the Examiner’s
position “is incorrect because the U-shaped heat sink in Chen [is] clearly
different and is not an opening or a blade as claimed by Applicant.” Id. at
17. This argument is not persuasive. The Examiner rejects claim 18 by
finding that “Fig. 2 of Chen shows that the thermal insulation element 200 is
patterned to have an opening between at least two vertical blades.” Final
Act. 15–16. An annotated copy of Chen’s Figure 2 is reproduced below.
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Figure 2 is a cross-sectional view of an electrical-to-optical transmitter
The Examiner appears to reference the vertical elements of Chen’s
heat sink 200 shown above in the annotated copy of Figure 2 when finding
the thermal insulation element 200 has an opening between two vertical
blades. Appellant’s arguments do not identify a reversible error in this
finding or otherwise explain why these vertical elements, as annotate above,
do not function as blades of a thermal insulation element.
Accordingly, we affirm the Examiner’s rejection of claims 13 and 17–
20 under 35 U.S.C. § 103.

CONCLUSION
We affirm the Examiner’s rejections of claims 1, 2, 4, 5, 7, 9, 11, 12,
and 14–16 under 35 U.S.C. § 103 over Akiyama and Faccio, and claims 13
and 17–20 under 35 U.S.C. § 103 over Akiyama, Faccio, and Chen. We
reverse the Examiner’s rejections of claims 3 and 6 under 35 U.S.C. § 103
vertical elements
Appeal 2019-005048
Application 14/904,809

20
over Akiyama and Faccio, and claims 8 and 10 under 35 U.S.C. § 103 over
Akiyama, Faccio, and Chen.
In summary:
Claims
Rejected
35
U.S.C. § References/Basis Affirmed Reversed
1–7, 9, 11,
12, 14–16 103 Akiyama, Faccio
1, 2, 4, 5, 7,
9, 11, 12,
14–16
3, 6,
8, 10 103 Akiyama, Faccio, Madsen 8, 10
13, 17–20 103 Akiyama, Faccio, Chen 13, 17–20
Overall
Outcome
1, 2, 4, 5, 7,
9, 11, 12–20 3, 6, 8, 10

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 IN PART