Ex Parte Azemati et al

Patent Trial and Appeal Board

Apr 21, 2017

13246779 (P.T.A.B. Apr. 21, 2017)

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.
13/246,779 09/27/2011 Saeid Azemati F1002.10679US02 5498
97149 7590
Maschoff Brennan
1389 Center Drive, Suite 300
Park City, UT 84098
04/25/2017 EXAMINER
LAMBERT, DAVID W
ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
04/25/2017 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):
docket @ mabr. com
info@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAEID AZEMATI, FARHANG SAKHITAB, and
JAMIE LARS SILVA
Appeal 2016-006780
Application 13/246,779
Technology Center 2600
Before MICHAEL L. HOELTER, BRUCE R. WINSOR, and
NATHAN A. ENGELS, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1—8, 10-17, 19, and 20, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b). Claims 9 and
18 are cancelled. App. Br. (Claims App’x) 21, 23.
We affirm-in-part.
1 The real party in interest identified by Appellants is FINISAR
CORPORATION. App. Br. 3.
Appeal 2016-006780
Application 13/246,779
STATEMENT OF THE CASE
Appellants’ disclosed invention relates to “regulation of the
temperatures of multiple internal components of a TOSA [transmitter optical
subassembly].” Spec. 1 5. More particularly, the disclosed invention relates
to “[tjhermal management of a locker etalon in a transmitter optical
subassembly (TOSA).” Spec. Abstract. Claims 1 and 19, which are
illustrative, read as follows:
1. A transmitter optical subassembly (TOSA) comprising:
a case;
a laser positioned within the case and electro-thermally
connected to the case;
a locker etalon positioned in the case and thermally
connected to the case; and
a thermoelectric cooler (TEC) positioned within the case
and in thermal contact with both the laser and the locker etalon,
wherein the thermal connection between the case and the
locker etalon is configured to maintain a substantially constant
difference in temperature between the laser and the locker
etalon over a pre-defmed range of case temperatures.
19. A method for thermal management of a locker etalon
positioned within a case of a transmitter optical subassembly
(TOSA), the method comprising the following acts:
in the TOSA that includes the locker etalon and a
laser both in thermal contact with a single thermoelectric
cooler (TEC) positioned within the case, thermally
connecting the locker etalon to the case via at least one or
more wire bonds;
while operating the TOSA over a pre-defmed
range of case temperatures, determining the differences
in temperature between the laser and the locker etalon
over the pre-defmed range of case temperatures;
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determining that the differences in temperature
between the laser and the locker etalon over the pre­
defined range of case temperatures are not substantially
constant; and
modifying the number of wire bonds that are
thermally connecting the locker etalon to the case.
The Examiner relies on the following prior art in rejecting the claims:
Yamauchi et al. US 2001/0033592 Al Oct. 25, 2001
Fang et al. US 6,556,752 B2 Apr. 29, 2003
Kleinschmidt US 6,667,804 B1 Dec. 23, 2003
Mazed US 2004/0004980 Al Jan. 8, 2004
McCallion et al. US 2008/0187325 Al Aug. 7, 2008
Hosking et al. US 2009/0122493 Al May 14, 2009
Claims 1—32 and 6—8 stand rejected under 35 U.S.C. § 103(a)3 as
being unpatentable over Mazed, Yamauchi et al. (hereinafter “Yamauchi”),
Kleinschmidt, and Fang et al. (hereinafter “Fang”). See Final Act. 7—10.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mazed, Yamauchi, Kleinschmidt, Fang, and McCallion et
al. (hereinafter “McCallion”). See Final Act. 10—11.
2 Appellants label claim 2 as “[cjancelled” in the Claims Appendix. App.
Br. 20. However, both Appellants and the Examiner treat claim 2 as
pending, rejected, and on appeal. See, e.g., App. Br. 3, 6; Final Act. 1, 7, 9
Accordingly, we treat the labelling of claim 2 in the Claims Appendix as a
clerical or typographical error, so that the rejection of claim 2 is before us.
3 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Feahy-Smith America Invents Act of 2011. See, e.g.,
Final Act. 6 (“pre-AIA”).
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Claims 5, 10-12, and 14—17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Mazed, Yamauchi, Kleinschmidt, Fang, and
Hosking et al. (hereinafter “Hosking”). See Final Act. 11—14.
Claim 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mazed, Yamauchi, Kleinschmidt, Fang, Hosking, and
McCallion. See Final Act. 14—15.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fang, Kleinschmidt, and Yamauchi. See Final Act. 15—
17.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Nov. 4, 2015; “Reply Br.” filed June 6, 2016) and the
Specification (“Spec.” filed Sept. 27, 2011) for the positions of Appellants
and the Final Office Action (“Final Act.” mailed June 11, 2015) and Answer
(“Ans.” mailed Apr. 15, 2016) for the reasoning, findings, and conclusions
of the Examiner. Only those arguments actually made by Appellants have
been considered in this decision. Arguments that Appellants did not make in
the Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv) (2015).
ISSUES
Based on Appellants’ arguments, we discuss the appeal by reference
to claims 1 and 19. The issues presented by Appellants’ arguments are as
follows:
Does the Examiner err in finding that the combination of Mazed,
Yamauchi, Kleinschmidt, and Fang teaches or suggests “a thermoelectric
cooler (TEC) positioned within the case and in thermal contact with both the
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laser and the locker etalon” (hereinafter the “thermal contact limitation”), as
recited in claim 1 ?
Does the Examiner err in finding that the combination of Mazed,
Yamauchi, Kleinschmidt, and Fang teaches or suggests “the thermal
connection between the case and the locker etalon is configured to maintain
a substantially constant difference in temperature between the laser and the
locker etalon over a pre-defmed range of case temperatures” (hereinafter the
“constant difference limitation”), as recited in claim 1?
Does the Examiner err in finding that the combination of Fang,
Kleinschmidt, and Yamauchi teaches or suggests “the TOSA that includes
the locker etalon and a laser both in thermal contact with a single
thermoelectric cooler (TEC) positioned within the case” (hereinafter the
“single TEC limitation”), as recited in claim 19?
ANALYSIS
Claim 1
The Thermal Contact Limitation
Appellants contend the thermal contact limitation requires “a single
TEC that is ‘in thermal contact with both the laser and the locker etalon.’”
App. Br. 12—13 (citing Spec. Tflf 4, 23, 24, 29, 35, 39, 43). Appellants further
contend that Fang does not teach a single TEC but rather teaches a TEC
assembly comprising two complete TEC circuits. App. Br. 13—14 (citing
Fang col. 1,11. 65—67, col. 2,11. 46-47, col. 3,11. 32—52, Fig. 5). We are not
persuaded of Examiner error for at least two reasons.
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First of all, we do not agree that the broadest reasonable interpretation
of the thermal contact limitation as recited in claim 1 is limited to a single
TEC. Our reviewing court
[“]has repeatedly emphasized that an indefinite article ‘a’ or ‘an’
in patent parlance carries the meaning of ‘one or more’ in open-
ended claims containing the transitional phrase ‘comprising.’”
KCJCorp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed.
Cir. 2000). That “a” or “an” can mean “one or more” is best
described as a rule, rather than merely as a presumption or even
a convention. The exceptions to this rule are extremely limited:
a patentee must “evince[ ] a clear intent” to limit “a” or “an” to
“on q.” Id.
Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed.
Cir. 2008). No such clear intent is evinced here. Indeed, where Appellants
intend to limit a similar claim recitation to a single TEC, Appellants
explicitly recite “a single thermoelectric cooler (TEC)” (App. Br 23 (Claims
App’x, claim 19) (emphasis added)).
Secondly, Appellants’ argument does not address the rejection
articulated by the Examiner. The Examiner relies on Mazed, not Fang, to
teach the thermal contact limitation of claim 1. See Final Act. 7 (citing
Mazed H 53-54, Fig. 1).
The Constant Difference Limitation
Appellants contend as follows:
[According to [the constant difference limitation of] claim[] 1
. . ., the substantially constant difference in temperature between
the laser and the locker etalon is maintained by the thermal
connection between the case and the locker etalon. Insofar as
Fang does not appear to teach any thermal connection at all
between the locker 70 and a case of the package 45 and insofar
as Fang appears to teach that the difference in temperature
between the laser 50 and the locker 70 is maintained by
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independently operating TEC1 80 and TEC2 82, Fang therefore
does not appear to teach “wherein the thermal connection
between the case and the locker etalon is configured to
maintain a substantially constant difference in temperature
between the laser and the locker etalon over a predefined
range of case temperatures,” as recited in claim[] 1 . . . .
App. Br. 9.
We are not persuaded of error. The Examiner finds the combination
of Mazed, Yamauchi, and Kleinschmidt teaches all of the specific structural
limitations of claim 1 (Final Act. 7—8 (citing Mazed 28, 32, 53—54, Fig 1
(items 11,21, 13); Yamauchi || 6, 24, 47-48, 59—60, Fig 5B (items 1C, 9);
Kleinschmidt col. 14,1. 60-col. 15,1. 2, Fig. 2a (item 34))), but does not
teach the constant difference limitation (Final Act. 8). The Examiner finds
Fang teaches the desirability of “maintainEngl a substantially constant
difference in temperature between the laser and the locker etalon over a pre­
defined range of. . . temperatures.” {Id. (citing Fang col. 3,11. 32—52, col. 4,
11. 23—35, Figs. 5 (items 50, 70), 6)). The Examiner then concludes it would
have been obvious to one of ordinary skill in the art at the time of the
invention to modify the structural elements taught by the combination of
Mazed, Yamauchi, and Kleinschmidt to configure the thermal connection
between the case and the locker etalon taught by Yamauchi (see Final Act.
7) to “maintain a substantially constant difference in temperature between
the laser and the locker etalon over a pre-defmed range of case
temperatures,” as recited in claim 1. Id. at 8—9.
Courts have generally interpreted “configured to” more narrowly than
simply “capable of.” See Typhoon Touch Technologies, Inc. v. Dell, Inc.,
659 F.3d 1376, 1380 (Fed. Cir. 2011) (construing “memory ... configured
to” as “memory that must perform the recited function”); see also Aspex
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Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir.
2012) (interpreting “adapted to” and construing it in the “narrow” sense of
“configured to” in contrast to the “broader” sense as “capable of’); Sta—Rite
Indus., LLCv. ITTCorp., 682 F.Supp.2d 738, 753 (E.D. Tex. 2010)
(construing “adapted to,” in context, to mean “designed or configured to,”
not “‘having the capacity to’”); Boston Scientific Corp. v. Cordis Corp.,
2006 WL 3782840 (N.D. Cal. Dec. 20, 2006) (construing “adapted to,” in
light of patent as a whole, to mean “configured to,” not “capable of’).
Accordingly we give the constant difference limitation full patentable weight
as a requirement of the claim. That said however, the claim does not recite
any specific limitations regarding the pre-defmed range of case temperatures
or the nature of the configuration of the thermal connection between the case
and the locker etalon.
Appellants’ invention is based on the recognition that for some pre-
defmed range of case temperatures and configuration of the thermal
connection between the case and the locker etalon, the difference in
temperature between the laser and locker etalon will be maintained
substantially constant. See, e.g., Spec. 126. However, “[t]he fact that
[Appellants have] recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious.” Ex parte
Obiaya, 227 USPQ 58, 60 (BPAI 1985) {referencing In re Best, 562 F.2d
1252 (CCPA 1977) and In re Wilder, 429 F.2d447 (CCPA 1970)).
Here the Examiner has established that it would have been obvious to
combine Mazed, Yamauchi, and Kleinschmidt to create the structure defined
by claim 1, except for the constant difference limitation. The Examiner has
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implicitly, but reasonably, presumed that in such a structure, the
configuration of the thermal connection would cause the difference in
temperature between the laser and the locker etalon to be maintained
substantially constant over some pre-defmed range of case temperatures,
which Fang suggests is a desirable property of the structure. See generally
Ans. 15—16; see also Spec. 14 (“[A] single TEC is sometimes ineffective at
simultaneously regulating the temperatures of multiple internal
components.” (emphasis added)). In other words, the Examiner has
established a prima facie case of obviousness with regard to claim 1,
including the constant difference limitation; Appellants have not pointed to
any evidence in the record that rebuts the Examiner’s prima facie case.
Appellants further contend as follows
One of ordinary skill in the art at the time of the invention
would not have modified Mazed’s wavelength locked
semiconductor laser or laser array module to include Fang’s TEC
assembly with two independently-controlled TEC circuits 15 and
17 as doing so would increase the size of Mazed’s wavelength
locked semiconductor laser or laser array module.
App. Br. 11. We find this argument unpersuasive because, as pointed out by
the Examiner, “this argument is based upon a modification that was simply
not made [by] the Examiner” (Ans. 16—17 (emphasis omitted)).
Summary
Appellants do not persuade us of error in the rejection of claim 1.
Accordingly, we sustain the rejection of (1) claim 1; (2) independent claim
10, which was argued together with claim 1; and (3) claims 2—8 and 11—17,
which depend from claims 1 and 10, respectively, and were not separately
argued with particularity.
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Claim 19
The Examiner relies on Fang to teach the single TEC limitation
recited in claim 19. Final Act. 15 (citing Fang col. 1,11. 65—67, col. 2,11.
36—55, Fig. 5). The Examiner maps the recited “single thermoelectric cooler
(TEC)” to Fang’s TEC1 (Fang Fig. 5, item 80) and TEC2 (id,., item 82).4
Final Act. 15. The Examiner explains that in the absence of a special
definition of the phrase in the Specification, the broadest reasonable
interpretation of a “single thermoelectric cooler” encompasses a single TEC
assembly having two TEC circuits fabricated on the assembly. See Ans. 21—
22 (citing Fang col. 1,11. 65—67, col. 2,11. 36—55, Fig. 5).
Appellants contend as follows:
[I]n contrast to claim 19, Fang teaches a laser 50 on TEC1 80 and
a locker 70 on a different TEC2 82. Fang does not appear to
teach that the laser 50 and the locker 70 are in thermal contact
with the same TEC; rather each is in thermal contact with a
different TEC. . . .
. . . [A] single multi-TEC assembly is simply not
equivalent to a “single thermoelectric cooler” as recited in claim
19. ... [T]he broadest reasonable interpretation of the term
“single thermoelectric cooler” includes a single TEC circuit.
App. Br. 17.
We agree with Appellants for the reasons stated by Appellants. We
conclude the Examiner’s claim construction is unreasonably broad. The
ordinary meaning of the adjective “single” is “3 a (1) : consisting of or
having only one part, feature, or portion ... (2) : consisting of one as
4 We note, in passing, that the Examiner does not rely on the teachings of
Mazed in rejecting claims 19 and 20. See Final Act. 15. Nor does the
Examiner rely on Kleinschmidt or Yamauchi to teach the single TEC
limitation. See Ans. 22—23 (responding to App. Br. 18—19).
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opposed to or in contrast with many ... (3) : consisting of only one in
number.” Merriam Webster’s Collegiate Dictionary 1095 (10th ed.
1999). In other words, the ordinary meaning of “single” is one and only one.
The Examiner’s claim construction reads the word “single” out of the claim.
For example, under the Examiner’s claim construction, if two previously
separate TECs were assembled into a TOSA, they would become a “single
thermoelectric cooler” by virtue of being included in the same TOSA
assembly. We conclude a “single thermoelectric cooler” is one and only one
TEC circuit. We agree with Appellants that an assembly of multiple TECs
is not “a single thermoelectric cooler (TEC)” as recited in claim 19.
Appellants persuade us of error in the rejection of claim 19 as
articulated by the Examiner. Accordingly, constrained by the record before
us, we do not sustain the rejection of claim 19 and claim 20, which depends
from claim 19.
DECISION
The decision of the Examiner to reject claims 1—8 and 10—17 is
affirmed.
The decision of the Examiner to reject claims 19 and 20 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
AFFIRMED-IN-PART
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