Ex Parte Luff et al

Patent Trial and Appeal Board

Nov 5, 2018

13385339 (P.T.A.B. Nov. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/385,339 02/13/2012
7590 11/05/2018
ATTN: Travis Dodd
GA VRILOVICH, DODD & LINDSEY, LLP
2490 Heyneman Hollow
Fallbrook, CA 92028
FIRST NAMED INVENTOR
Bradley Jonathan Luff
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.
LT3640 8130
EXAMINER
CHIEM, DINH D
ART UNIT PAPER NUMBER
2883
MAIL DATE DELIVERY MODE
11/05/2018 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 BRADLEY JONATHAN LUFF, MEHDI ASGHARI,
and DAZENG FENG
Appeal2018-000821
Application 13/385,339
Technology Center 2800
Before RAEL YNN P. GUEST, A VEL YN M. ROSS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claim 1. 2 We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
1 The real party in interest is identified as Kotura, Inc. App. Br. 1.
2 On June 12, 2014, Appellants filed a communication entitled PARTIAL
WITHDRAWAL OF APPEAL UNDERMPEP § 1215.03 (hereinafter,
Communication). In the Communication, Appellants withdraw the appeal
with respect to claims 3-15, and 17-20 and maintain the appeal only with
respect to claim 1. The Communication presumes claim 2 and 16 have been
cancelled via an amendment submitted concurrently with the Appeal Brief
on January 9, 2014. However, we find no evidence in the Answer or the
electronic record that this amendment was considered and entered by the
Examiner. For the purposes of this opinion, we also treat claims 2 and 16 as
Appeal2018-000821
Application 13/385,339
We reverse the rejection of record.
Claim 1 is illustrative of the claimed subject matter:
1. An optical system, comprising:
a base device having a first waveguide positioned on a first
base, the first waveguide being at least partially defined by a ridge
extending away from the first base; and
an auxiliary device that serves as an interface between the base
device and an optical fiber, the auxiliary device having a second
waveguide positioned on a second base,
the second waveguide being between the first base of the
base device and the second base of the auxiliary device,
the first waveguide having a first waveguide facet
optically aligned with a first facet of the second waveguide such
that the first waveguide and the second waveguide can
exchange optical signals,
a height of a top of the first waveguide facet being
above a height of a top of the first facet of the second
waveguide, and
the second waveguide including a tapered region.
Appellants request review of the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as unpatentable over Glebov (US 2008/0056638
withdrawn from appeal. Appellants and the Examiner are encouraged to
address this discrepancy upon our decision. Notwithstanding this
discrepancy, we note that the text of claim 1 in the Claims Appendix is the
same as the last entered amendment of January 22, 2013. We limit our
consideration to claim 1 for the purposes of this opinion, consistent with
Appellants' request in the Communication.
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Appeal2018-000821
Application 13/385,339
Al, published March 6, 2008), Gunn (US 2007/0196049 Al, published
August 23, 2007), Harpin (US 6,108,478, issued August 22, 2000), and Rhee
(US 6,442,315 Bl, issued August 27, 2002). Final Act. 3; Communication.
ANALYSIS
We refer to the Examiner's Final Action for a complete statement of
the rejection of claim 1. Final Act. 3-6. The premise of the Examiner's
rejection is that it would have been obvious to a person having ordinary skill
in the art to substitute Harpin's waveguide for Glebov's waveguide of the
EO chip 32 to eliminate the need for the output waveguides on waveguide
substrate 34 and create the predictable result of coupling to an optical fiber
in order send optical signals to another device. Final Act. 4--5.
We agree with Appellants that the Examiner has not provided an
adequate technical explanation of how one skilled in the art would adapt the
waveguide of Harpin for use in Glebov's device. App. Br. 13-15. In
substituting Harpin's waveguide for Glebov's device 32, the Examiner also
further modifies Glebov by removing the output waveguides. Given that
Glebov is directed to multiplexers using input and output waveguides of the
same cross-section (Glebov Figure 4B) while Harpin is directed to
connecting optical devices of varying cross-sections (Harpin Figure 1 ), the
Examiner has not explained why one skilled in the art would have found
Harpin's waveguide suitable for Glebov's device so the device is still
operable. Reply Br. 3.
Accordingly, the Examiner's§ 103 rejection is reversed.
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Appeal2018-000821
Application 13/385,339
DECISION
The Examiner's prior art rejection of claim 1 is reversed.
REVERSED
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