Ex Parte Asghari et al

Patent Trial and Appeal Board

Dec 10, 2018

13573892 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/573,892 10/12/2012
7590 12/10/2018
Travis Dodd
GA VRILOVICH, DODD & LINDSEY, LLP
2490 Heyneman Hollow
Fallbrook, CA 92028
FIRST NAMED INVENTOR
Mehdi Asghari
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
LT3522 2640
EXAMINER
VU,VUA
ART UNIT PAPER NUMBER
2828
MAIL DATE DELIVERY MODE
12/10/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEHDI ASGHARI and DAZENG FENG
Appeal2017-009037
Application 13/573,892
Technology Center 2800
Before DONNA M. PRAISS, MONTE T. SQUIRE, and
SHELDON M. McGEE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to finally reject claims 1, 5, 15-31, and 33, which constitute all the
claims pending in this application. Claims 2--4, 6-14, and 32 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 In explaining our Decision, we refer to the Specification filed October 12,
2012 ("Spec."); Final Office Action dated November 30, 2015 ("Final
Act."); Appeal Brief filed June 1, 2016 ("Appeal Br."); Examiner's Answer
dated December 20, 2016 ("Ans."); and Reply Brief filed February 21, 2017
("Reply Br.").
2 Appellants identify Mellanox Technologies Silicon Photonics, Inc. as the
real party in interest. Appeal Br. 1.
Appeal2017-009037
Application 13/573,892
The Claimed Invention
Appellants' disclosure relates to optical devices having a laser cavity.
Spec. ,r 2. The laser cavity is positioned on a substrate and includes a cavity
waveguide guiding a laser light signal between a gain medium and a partial
return device, which reflects different wavelengths of the laser light signal at
different intensities. Id. ,r 5, Abstract. The partial return device is
configured such that when the most intense wavelength of the laser light
signal reflected by the partial return device is the same as a wavelength of
one of modes of the laser light signal, the mode with the next longest
wavelength and the mode with the next shortest wavelength are each
reflected by the partial return device at an intensity greater than a specified
percentage of the intensity of the most intensely reflected wavelength. Id.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. An optical device, comprising:
a laser cavity on a substrate, the laser cavity including a
gain medium and a partial return device,
the partial return device positioned to receive a laser light
signal from the gain medium, the partial return device returning
a first portion of the laser light signal to the gain medium and a
second portion of the laser light signal exiting from the laser
cavity through the partial return device,
the second portion of the laser light signal being an output
from the laser cavity and the first portion of the laser light signal
including multiple different modes that concurrently lase within
the laser cavity,
the partial return device reflecting different wavelengths
of the laser light signal at different intensities, the reflected
intensity of a particular wavelength being the percentage of the
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Application 13/573,892
incident light at the particular wavelength that is reflected by the
partial return device, and
the partial return device configured to have a reflection
profile that is sufficiently broad that when the most intense
wavelength reflected by the partial return device is the same as a
wavelength of one of the modes, the mode with the next longest
wavelength and the mode with the next shortest wavelength are
each reflected by the partial return device at an intensity greater
than 40% and less than 90% of the intensity of the most
intensely reflected wavelength.
Appeal Br. 16 (key disputed claim language italicized and bolded)
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Bradley et al., us 5,011,264 Apr. 30, 1991
("Bradley")
Farber et al., US 2006/0002443 Al Jan.5,2006
("Farber")
Sakuma et al., US 2011/0053095 Al Mar. 3, 2011
("Sakuma")
Dallesasse et al., US 2011/0267676 Al Nov. 3, 2011
("Dallesasse")
The Rejections
On appeal, the Examiner maintains (Ans. 2) the following rejections:
1. Claims 1, 5, 15-21, 25, 28-31, and 33 are rejected under pre-
AIA 35 U.S.C. § I02(b) as anticipated by or, in the alternative, under pre-
AIA 35 U.S.C. § I03(a) as obvious over Farber ("Rejection 1"). Final
Act. 3.
2. Claims 22 and 23 are rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Farber, as applied to claims 1
and 21 above, in view of Dallesasse ("Rejection 2"). Final Act. 9.
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3. Claim 24 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Farber, as applied to claims 1 and 21 above, in view of
Bradley ("Rejection 3"). Final Act. 10.
4. Claim 26 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Farber, as applied to claims 1 and 21 above
("Rejection 4"). Final Act. 11.
5. Claim 27 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Farber, as applied to claims 1 and 21 above, in view of
Sakuma ("Rejection 5"). Final Act. 12.
OPINION
Reiection 1
The Examiner determines that Farber discloses all of the limitations of
claim 1 and, thus, anticipates the claim. Final Act. 3-6 ( citing Farber ,r,r 16,
19-21, 29, 31, Figs. 1, 2). Alternatively, the Examiner concludes that the
reference would have rendered claim 1 obvious. Id.
Regarding the recitation "the mode with the next longest wavelength
and the mode with the next shortest wavelength are each reflected by the
partial return device at an intensity greater than 40% and less than 90% of
the intensity of the most intensely reflected wavelength," the Examiner relies
on paragraphs 20 and 29 of Farber for disclosing this limitation. Id. at 4--5
( citing Farber ,r 20, 11. 4--5, ,r 29, 11. 1--4). In particular, the Examiner finds
that Farber discloses a "10% or less reflectivity among the supported
modes," which the Examiner contends corresponds to the mode with the
next longest wavelength and the mode with the next shortest wavelength
each being reflected by the partial return device at an intensity of 90% of the
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Application 13/573,892
intensity of the most intensely reflected wavelength. Id. at 5 ( citing Farber
,r 29, 11. 1--4). The Examiner concedes that although Farber does not
disclose an intensity of "less than 90% of the intensity of the most intensely
reflected wavelength," one of ordinary skill would have expected that the
modes being reflected by Farber's device would "have the same properties"
as those being reflected by the claimed partial return device because the
intensity Farber discloses is "very close to the highest value of the claimed
range" and "there is not any unexpected result from the partial return device
provided by Farber." Id.
Appellants argue that the Examiner's rejection of claim 1 should be
reversed because Farber does not disclose or suggest the "the mode with the
next longest wavelength and the mode with the next shortest wavelength are
each reflected by the partial return device at an intensity greater than 40%
and less than 90% of the intensity of the most intensely reflected
wavelength" recitation of the claim. 3 Appeal Br. 8-9; Reply Br. 2-3. In
particular, Appellants contend that Farber's disclosure regarding a grating
profile that produces "approximately 10% or less grating reflectivity
difference among the supported modes" (Farber ,r 29), without more, neither
discloses nor suggests an intensity of "less than 90% of the intensity of the
most intensely reflected wavelength," as required by the claim. Appeal Br.
8-9. Appellants also contend that, based on Farber's disclosures, one of
ordinary skill would have actually been led away from an intensity of "less
than 90% of the intensity of the most intensely reflected wavelength" and
3 We note that, in both the Appeal Brief and the Reply Brief, Appellants
refer to the disputed recitation of claim 1 as the "claimed reflectivity drop."
See, e.g., Appeal Br. 8; Reply Br. 3.
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had no reason to modify Farber's device in the manner claimed. Id. at 8; see
also Reply Br. 3.
The weight of the evidence supports Appellants' argument. To serve
as an anticipatory reference, "the reference must disclose each and every
element of the claimed invention, whether it does so explicitly or
inherently." In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). We agree
with Appellants that the portions of Farber upon which the Examiner relies
do not explicitly or inherently disclose that "the mode with the next longest
wavelength and the mode with the next shortest wavelength are each
reflected by the partial return device at an intensity greater than 40% and
less than 90% of the intensity of the most intensely reflected wavelength," as
recited in claim 1. We also agree with Appellants that the Examiner has not
established by a preponderance of the evidence that Farber's disclosures
would have rendered claim 1 obvious to one of ordinary skill in the art at the
time of the invention. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(holding that the examiner bears the initial burden of establishing a prima
facie case of obviousness).
The portions of Farber upon which the Examiner relies do not teach or
suggest the "less than 90% of the intensity of the most intensely reflected
wavelength" recitation of the claim. Although paragraph 20 of Farber
discusses a "laser cavity 122" that supports a plurality of laser modes and
includes a "highly-reflective, partially transmissive grating 124" that may be
70o/o-90% reflective, it does not teach or suggest modes being reflected at a
specified intensity or at an intensity relative to the most intensely reflected
wavelength. Likewise, although paragraph 29 of Farber discusses that "a
substantially flat grating profile may be chosen with a plateau that produces
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approximately 10% or less grating reflectivity difference among the
supported modes," there is no teaching or suggestion that any of the modes
are reflected by Farber's grating 124 in the manner or at an intensity of "less
than 90% of the intensity of the most intensely reflected wavelength," as
required by the claim. Rather, as Appellants correctly point out, the
Examiner admits that Farber does not disclose this recitation of the claim.
See Final Act. 5.
The Examiner also does not provide an adequate technical explanation
explaining how or why Farber's teachings at paragraphs 20 and 29 would
have suggested to one of ordinary skill in the art modes being reflected in
the manner claimed. The Examiner's assertion that there are "several
reflected modes in the profile, and inherently, there are a most intense
wavelength reflected by the partial return device the same as a wavelength
of one of the modes, a mode with the next longest wavelength, and a mode
with the next shortest wavelength" (Ans. 2) is not adequate because it is
conclusory and the Examiner does not identify or direct us to sufficient
evidence in the record to support it. Ex parte Levy, 17 USPQ2d 1461, 1464
(BPAI 1990) (holding "the examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art"); see also PAR Pharm., Inc. v. TWI Pharms, Inc., 773 F .3d
1186, 1195-96 (Fed. Cir. 2014) (requiring that "the limitation at issue
necessarily must be present, or the natural result of the combination of
elements explicitly disclosed by the prior art").
The Examiner's assertions that one of ordinary skill would have
expected that the modes being reflected by Farber's device to "have the
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same properties" as those being reflected by the claimed partial return device
and "there is not any unexpected result from the partial return device
provided by Farber" (Final Act. 5) are equally unpersuasive because they,
too, are conclusory and, without more, insufficient to sustain the Examiner's
rejection. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (holding that
rejections "cannot be sustained by mere conclusory statements").
Moreover, the Examiner does not identify evidence or provide
reasoning sufficient to support a finding that one of ordinary skill would
have had reason to modify Farber's device to reflect modes at an intensity
less than 90% of the intensity of the most intensely reflected wavelength, as
would be required to arrive at the claimed invention. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,418 (2007) (requiring "reasoning with some
rational underpinning to support the legal conclusion of obviousness")
(quoting In re Kahn, 441 F.3d at 988). In particular, at pages 2-3 of the
Answer, the Examiner does not persuasively respond to Appellants'
argument (Appeal Br. 8) that one of ordinary skill would have had no reason
to modify Farber's device in the manner claimed. For example, the
Examiner does not direct us to any teaching or suggestion in the prior art
regarding the technical feasibility of Farber's grating 124 selectively
reflecting modes of differing wavelengths at an intensity of less than 90% of
the intensity of the most intensely reflected wavelength, as claimed; or why
one of ordinary skill in the art would have had a reasonable expectation of
success in modifying Farber's grating device in such a manner.
We, therefore, cannot sustain the Examiner's rejection of claim 1.
Because claims 5, 15-21, 25, 28-31, and 33 each depends from claim 1, we
also cannot sustain the Examiner's rejection of these claims.
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Accordingly, we reverse the Examiner's rejection of claims 1, 5, 15-
21, 25, 28-31, and 33 under 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under U.S.C. § 103(a) as obvious over Farber.
Reiections 2. 3. 4. and 5
The foregoing deficiencies in the Examiner's analysis and conclusion
regarding Rejection 1 and the Farber reference are not remedied by the
Examiner's findings regarding the additional references or combination of
references cited in support of the second, third, fourth, and fifth grounds of
rejection (Rejections 2, 3, 4, and 5, stated above).
Accordingly, for principally the same reasons discussed above in
reversing the Examiner's Rejection 1, we also reverse the Examiner's
Rejections 2, 3, 4, and 5.
DECISION/ORDER
The Examiner's rejections of claims 1, 5, 15-31, and 33 are reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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