Ex Parte Gothoskar et al

Board of Patent Appeals and Interferences

Sep 22, 2010

10830571 (B.P.A.I. Sep. 22, 2010)

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.
10/830,571 04/23/2004 Prakash Gothoskar SIO-0111 9276
7590 09/22/2010
Wendy W. Koba
PO Box 556
Springtown, PA 18081
EXAMINER
EL SHAMMAA, MARY A
ART UNIT PAPER NUMBER
2883
MAIL DATE DELIVERY MODE
09/22/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte PRAKASH GOTHOSKAR, MARGARET GHIRON,
ROBERT KEITH MONTGOMERY, VIPULKUMAR PATEL,
KALPENDU SHASTRI, SOHAM PATHAK,
and KATHERINE A. YANUSHEFSKI
________________

Appeal 2009-009790
Application 10/830,571
Technology Center 2800
________________

CHUNG K. PAK, TERRY J. OWENS, and JEFFREY T. SMITH,
Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009790
Application 10/830,571

2
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-4. Pending claims 7-72 have been withdrawn from
consideration as directed to a non-elected species and are not included in the
rejection on appeal. (Br. 2) The Examiner has indicated that pending claims
5 and 6 contain allowable subject matter. However, these claims are objected
to as depending from a rejected base claim. (Final Rejection, pg. 1; Br. 2).
We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
Appellants claim a silicon-on-insulator (SOI) based optical
arrangement for manipulating a planar lightwave signal. Claim 1 is
illustrative:
1. An SOI-based optical arrangement for
manipulating a propagating planar lightwave signal, the
arrangement comprising
a silicon substrate;
a dielectric layer disposed over the silicon substrate; and
a single crystal silicon layer disposed over the dielectric
layer, the single crystal silicon layer having a thickness of less
than one micron (sub-micron) and being etched through in
predetermined regions so as to expose the underlying dielectric
layer, the refractive index difference between the remaining
sub-micron single crystal silicon regions and the etched regions
creating interfaces for forming substantially planar optical
devices confining the propagating planar lightwave signal as a
two-dimensional signal within the confines of the single crystal
silicon layer and manipulating the properties of the propagating
planar lightwave signal therein.
Appeal 2009-009790
Application 10/830,571

3
Claims 1-4 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Deliwala and Wu.2
OPINION3
The issue presented for review is the following:
Did the Examiner err in determining that it would have been obvious
to a person of ordinary skill in the art to form a silicon-on-insulator (SOI)
based optical arrangement incorporating shaped side walls of a waveguide to
allow the redirection of signals as required by independent claim 1? We
answer this question in the negative.
Appellants assert that Wu is not directed to an SOI based
arrangement, as described by the present invention and Deliwala. (Br. 4).
Appellants maintain that Wu describes an optical cross-point switch formed
in optically active materials. Id. Thus, Appellants contend that Wu is not
reasonably pertinent to the claimed invention and therefore a person of
ordinary skill in the art would not look to the optically active materials of
Wu for assistance in solving the problems associated with SOI based
arrangements. Id.
Appellants’ arguments are not persuasive for the reasons provided by
the Examiner in the Answer.

2 Wu (US 5,581,643, issued Dec. 3, 1996); Deliwala (US 2003/0118306 A1,
published June 26, 2003)
3 Appellant has not presented separate arguments for all of the rejected
claims. Rather, Appellant’s arguments are principally directed to
independent claim 1. Any claim not separately argued will stand or fall with
independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Appeal 2009-009790
Application 10/830,571

4
The Examiner found that Deliwala describes SOI based arrangements
for manipulation and propagating lightwave signals as required by the
claimed invention. (Ans. 4). Deliwala discloses that known fabrication
techniques suitable for SOI semiconductor chips are suitable for use in the
described invention. (Deliwala [0355]). The Examiner recognized that
Deliwala did not specifically mention shaping sidewalls of the waveguide
for manipulation and propagating lightwave signals. However, the
Examiner determined that the concept of shaping sidewalls of the waveguide
at an angle, of e.g. 45 degrees, to allow re-direction of the signal from a first
to a second direction within the single crystal silicon layer was notoriously
well known. The Examiner relied upon Wu as further evidence of this well
known concept. (Ans. 4-5).
Based on the teachings of Wu with Deliwala, we concur with the
Examiner that a person of ordinary skill in the art would have reasonably
expected that well-known etching techniques, such as those described by
Wu, would have been suitable for use in the invention of Deliwala. See KSR
Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an
obviousness determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”)
Moreover, Appellants have not specifically addressed the Examiner’s
position that the concept of shaping sidewalls of the waveguide at an angle
to allow re-direction of the signal from a first to a second direction within
the single crystal silicon layer was notoriously well known. (See Brief
generally).
For the foregoing reasons and those presented in the Answer, the
rejections of claims 1-4 under 35 U.S.C. § 103(a) is affirmed.
Appeal 2009-009790
Application 10/830,571

5
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)(v).

AFFIRMED

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WENDY W. KOBA
P.O. BOX 556
SPRINGTOWN, PA 18081