Ex Parte Heanue et al

Patent Trial and Appeal Board

Jun 28, 2018

15192890 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/192,890 06/24/2016
22145 7590 07/02/2018
KLEIN, O'NEILL & SINGH, LLP
16755 VON KARMAN AVENUE
SUITE 275
IRVINE, CA 92606
FIRST NAMED INVENTOR
John Heanue
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.
1214-019.101 5944
EXAMINER
SANCHEZ, DIBSON J
ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
KOS_Docketing@koslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN HEANUE, BARDIA PEZESHKI,
CHARLES AMSDEN, and LUCAS SOLDAN0 1
Appeal2018-005862
Application 15/192,890
Technology Center 2600
Before MICHAEL J. STRAUSS, IRVINE. BRANCH, and
AARON W. MOORE, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Kaiam Corp. See App.
Br. 1.
Appeal2018-005862
Application 15/192,890
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § I34(a) from a rejection of claims
1-13. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm. 2
THE INVENTION
The claims are directed to an optical interconnect for switch
applications. Spec., Title. Claim 1, reproduced below, is representative of
the claimed subject matter:
1. A switch module, comprising:
a switch integrated circuit (IC) chip including a switch
for routing inputs to outputs of the switch IC chip;
a silicon photonics chip including photodetectors for use
in converting first optical signals to first electrical signals and
modulators for modulating second optical signals in accordance
with second electrical signals, outputs of the photodetectors
being coupled to inputs of the switch IC chip and outputs of the
switch IC chip being coupled to the modulators;
a planar lightwave circuit (PLC) optically coupled to the
photodetectors and modulators of the silicon photonics chip.
REFERENCES
The following prior art is relied upon by the Examiner in rejecting the
claims on appeal:
Lindberg
Welch et al. ("Welch '666")
US 2004/0257738 Al Dec. 23, 2004
US 7,050,666 B2 May 23, 2006
2 We refer to the Specification, filed June 24, 2016 ("Spec."); the Final
Office Action, mailed July 5, 2017 ("Final Act."); the Appeal Brief, filed
Jan. 24, 2018 ("App. Br."); and the Examiner's Answer, mailed Feb. 22,
2018 ("Ans."). The Reply Brief filed Apr. 23, 2018 is noted but it is not
cited herein.
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Application 15/192,890
Kim et al. ("Kim")
Welch et al. ("Welch' 122")
Huang et al. ("Huang")
Habel et al. ("Habel")
Mitchell et al. ("Mitchell")
Rafel Porti et al. ("Rafel Porti")
Lee et al. ("Lee")
US 2007/0147835 Al
US 7,340,122 B2
US 2008/0279567 Al
US 2009/0245799 Al
US 2010/0086307 Al
US 2011/0013903 Al
US 2012/0213519 Al
REJECTIONS
The Examiner made the following rejections:
June 28, 2007
Mar. 4, 2008
Nov. 13, 2008
Oct. 1, 2009
Apr. 8, 2010
Jan. 20, 2011
Aug.23,2012
Claim 1 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kim, Mitchell, and Huang. Final Act. 5-7.
Claims 2--4, 8, and 9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kim, Mitchell, Huang, and Habel. Final Act. 8-10.
Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kim, Mitchell, Huang, Habel, and Lindberg. Final Act. 10-11.
Claims 6 and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kim, Mitchell, Huang, Habel, Lindberg, and Rafel Porti.
Final Act. 11-12.
Claims 10 and 11 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kim, Mitchell, Huang, and Lee. Final Act. 12-16.
Claims 12 and 13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kim, Mitchell, Huang, Lee, and Habel. Final Act. 16-18.
ANALYSIS
Appellants' contentions are unpersuasive of reversible Examiner error.
We adopt as our own ( 1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken (Final Act. 2-18) and (2) the
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Application 15/192,890
reasons set forth by the Examiner in the Examiner's Answer in response to
Appellants' Appeal Brief (Ans. 2-11) and concur with the conclusions
reached by the Examiner. We highlight the following for emphasis.
Claim 1: The Silicon Photonics Chip (PTC)
Appellants contend Mitchell's receiver (RX) and transmitter (TX)
photonic integrated circuits (PIC), although possibly using a silicon dioxide
(Si02) dielectric passivation layer, are fabricated from indium phosphide
(InP) and, therefore, disclose an InP PIC, not the claimed silicon PIC. App.
Br. 5-6. According to Appellants, neither Mitchell nor the references
describing the structure of Mitchell's RX and TX PI Cs (Welch '666 and
Welch' 122, respectively) disclose "optical signals being transmitted through
the [silicon] dielectric layers and/or of silicon being used as a medium for
the transmission of optical signals." App. Br. 6.
According to the Examiner, "because [Mitchell's] RX PIC has
silicon, one of ordinary skill in the art can interpret the RX PIC as being a
silicon photonic integrated circuit or a silicon photonics chip." Ans. 3. The
Examiner comes to a corresponding conclusion in connection with
Mitchell's TX PIC. Id. at 4. The Examiner further finds Welch '666 and
Welch' 122 disclose RX and TX PICs having Si02 layers 137, 262. Id. at 5.
In construing the presence of Si02 as sufficient to teach or suggest the
claimed silicon photonics chip of claim 1, the Examiner explains
[t]his interpretation is being made because the claim does not
have any special features and/or structure of the "silicon
photonics chip" and it appears that the Appellant[ s are] trying
to force the Examiner to read the [S]pecification into the claim
which is contrary to what the MPEP 2145 section VI
[("Arguing Limitations Which Are Not claimed")] states.
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Ans. 4. In response to Appellants' argument directing attention to the
Specification for disclosing distinguishing characteristics of a silicon IC
versus an InP IC, the Examiner finds "none of what is broadly and vaguely
described in the application paragraphs [41][42] is recited in the claim and
therefore this argument is moot and irrelevant." Id. at 6.
Appellants' arguments are conclusory, lacking sufficient evidence to
persuade us of Examiner error. Whether a chip having an InP substrate but
including silicon would be understood as being a InP PIC, a silicon PIC, or
something else, is a question of fact. The Examiner finds, in the absence of
either the claims or Specification specifying particular structures that must
be made of silicon or a silicon compound, it is sufficient to characterize the
PIC as silicon if silicon is present. In contrast, Appellants provide only
attorney argument urging us to distinguish the claims based on an undefined
naming convention that is unsupported by sufficient evidence, i.e., what
portion of the PIC need be made of silicon to constitute a silicon PIC. Mere
attorney arguments and conclusory statements, which are unsupported by
factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984). Attorney argument is not evidence. In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974). Nor can such argument take the place of
evidence lacking in the record. Accordingly, under a broad but reasonable
interpretation, Mitchell's RX and TX PICs teach or suggest the disputed
silicon photonics chip. Therefore, on the record before us, we sustain the
rejection of independent claim 1 and, for the same reasons, independent
claim 10, together with dependent claims 2--4, 8, 9, and 11-13, which are
not argued separately with particularity.
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Claim 5: A Common Heatsink
Claim 5 further requires (i) the switch IC chip and (ii) a plurality of
light sources optically coupled to the planar lightwave circuit (PLC) share a
common heatsink. The Examiner finds Lindberg's electrical circuit 430,
440 and optical circuit 100, 200 sharing heatsink 500 teaches or suggests the
configuration of claim 5. Final Act. 10. Appellants contend "Lindberg
teaches heatsinks for an optoelectrical unit that converts between electrical
and optical signal formats, with the optoelectrical unit formed of a signal
transmitter and a corresponding signal receiver." App. Br. 8. Appellants
argue modifying Kim to include the heatsink of Lindberg "would result in a
heatsink for optoelectrical units for converting between electrical and optical
signals, and not the sharing of a common heatsink between a switch IC and a
plurality of light sources in a switch module." Id. at 9.
The Examiner responds, finding the combination of Kim and Huang
teaches a switch as an integrated circuit, Kim teaches an injecting light
source, and Hebel an injecting light source having a plurality of light
sources, such that the combination of Kim, Huang, and Hebel teaches or
suggests an injecting light source integrated circuit having a plurality of light
sources. The Examiner further finds "it is old and well known in the art that
electrical elements and optical elements which perform any type of
processing have heatsinks to dissipate heat and avoid overheating." Ans. 9
(citing Bird et al., US 2003/0029602 Al, Feb. 13, 2003 and Varshneya et al.,
US 2006/0280505 Al, Dec. 14, 2006 in support). Addressing Lindberg, the
Examiner finds "Fig[ ure] 6 teaches the concept that electrical elements and
optical elements can share a single common heatsink." Id. The Examiner
concludes "the combination of Kim, Huang, Habel and the concept of
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Lindberg teaches that the switch 202 which is an integrated circuit (IC) chip
(electrical element) and the injecting light source 209b which has a plurality
of light sources ( optical element) can share a common heat sink." Id.
Appellants' arguments are unpersuasive of Examiner error. We agree
with the Examiner in finding Lindberg discloses electrical and optical
elements sharing a common heat sink. Thus, as further found by the
Examiner, the combination of Kim, Huang, Habel, and Lindberg, rather than
Lindberg standing alone, teaches or suggests the disputed limitation of
dependent claim 5.
We are also not persuaded of error by Appellants' argument that it
might not be obvious to employ a common heatsink because the "optical
transceivers in the prior art are generally located at a front panel of a switch
enclosure." App. Br. 9. This argument is neither commensurate in scope
with the claim (which does not require such an arrangement) nor have
Appellants demonstrated the prior art teaches away from using a common
heat sink for this or other reasons. Accordingly, we sustain the rejection of
dependent claim 5 together with the rejection of claims 6 and 7, which are
dependent therefrom and are not argued separately with particularity.
DECISION
We affirm the Examiner's decision to reject claims 1-13 under
35 U.S.C. § 103(a).
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Application 15/192,890
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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