Ex Parte PengDownload PDFPatent Trial and Appeal BoardSep 23, 201613779853 (P.T.A.B. Sep. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 131779,853 02/28/2013 75742 7590 09/26/2016 MUETING, RAASCH & GEBHARDT, P.A. P.O. Box 581336 Minneapolis, MN 55458-1336 FIRST NAMED INVENTOR Chubing Peng 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. 430.16652011 9208 EXAMINER HEYi, HENOK G ART UNIT PAPER NUMBER 2695 MAIL DATE DELIVERY MODE 09/26/2016 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 CHUBING PENG Appeal2015-007050 Application 13/779,853 Technology Center 2600 Before THU A. DANG, ERIC S. FRAHM, and JOHN P. PINKERTON, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-007050 Application 13/779,853 l. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. A. INVENTION According to Appellant, the invention relates to a "waveguide" that includes a "first cladding layer" having an index of refraction, a "gradient index layer" positioned adjacent the first cladding layer, and an "assist layer" positioned adjacent the gradient index layer and having another index of refraction ( Abst. ). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary and is reproduced below: 1. A waveguide having a first axis, the waveguide comprising: a first cladding layer, the first cladding layer having an index of refraction, n3; a gradient index layer positioned adjacent the first cladding layer, the gradient index layer having a local index of refraction that varies along the first axis of the waveguide; an assist layer positioned adjacent the gradient index layer, the assist layer having an index of refraction, n2; and a core layer positioned adjacent the assist layer, the core layer having an index of refraction, n 1; wherein nl is greater than n2, and n3; and n2 is greater than n3. 2 Appeal2015-007050 Application 13/779,853 C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: I wanabe et al. Zhou US 2011/0090770 Al US 2012/0257490 Al Apr. 21, 2011 Oct. 11, 2012 Claims 1-8 and 11-20 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Zhou. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhou and I wanabe. II. ISSUE The dispositive issue before us is whether the Examiner has erred in finding Zhou discloses receiving a "gradient index layer" having "a local index of refraction that varies along the first axis of the waveguide," and an "assist layer positioned adjacent the gradient index layer ... having an index of refraction, n2" (claim 1, emphases added). III. FINDINGS OF FACTS The following Findings of Fact (FF) are shown by a preponderance of the evidence. Zhou Zhou discloses gratings for waveguide coupling, wherein Figure 2A is reproduced below: 3 Appeal2015-007050 Application 13/779,853 FIG. 2A Figure 2A shows a grating formed by a plurality of slanted elements 52 that extend through the core layer 16 and into the first and second cladding layers 18 and 20, wherein the elements comprise a filler material 54 positioned in slanted slots (i-f 20). IV. ANALYSIS Appellant contends "Zhou at least fails to disclose either the gradient index layer or the assist layer, or both" (App. Br. 5). According to Appellant, "[Zhou's] grating could be described as the voids that give the filler its form," wherein "the tilted slots 52 can be etched ... and then filled with the filler material" (App. Br. 6). Thus, Appellant contends, "it is not correct to state that the grating 'is equivalent structure to the gradient index"' especially a grating "having an index of refraction" as claimed, because "only the filler material has an index of refraction" (App. Br. 7). Based on the record before us, we agree with Appellant that the Examiner erred in finding claim 1 is anticipated by Zhou under 35 U.S.C. § 102( e ). In particular, we agree with Appellant that the preponderance of evidence on this record fails to support the Examiner's finding that Zhou 4 Appeal2015-007050 Application 13/779,853 discloses "gradient index layer" having a local index of refraction, and an "assist layer" positioned adjacent the gradient index layer and also having index of refraction, as required by claim 1. Although we agree with the Examiner's finding that the filler material of Zhou has a refractive index (Ans. 10; FF) wherein Zhou discloses a grating having a refractive index (Ans. 11, FF), we agree with Appellant that Zhou' s grating comprises "tilted slots 5 2" that are "filled with the filler material" (App. Br. 6). That is, Zhou's grating is comprised of slots (voids) and filler material filling the slots, wherein, although Zhou's grating comprises a refractive index, the refractive index is the refractive index of the filler material filling the slots (the slots themselves do not have any refractive index) (FF). We find no support in the cited sections of Zhou of a "gradient index layer" having a local index of refraction, and an "assist layer" positioned adjacent the gradient index layer (i.e., separate and distinct from the gradient index layer) that also has an index of refraction. We are of the view that the Examiner has not fully developed the record to show express or inherent anticipation regarding the disputed limitations ofclaim 1 pursuant to 35 U.S.C. § 102(e). 1 Therefore, we are constrained to reverse the Examiner's rejection of representative claim 1, 1 In the event of further prosecution, we leave it to the Examiner to consider whether claim 1 should instead be rejected under 35 U.S.C. § 103(a) and to explain how the above-discussed deficiencies of Zhou would have been obvious to one of ordinary skill in the art. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. 5 Appeal2015-007050 Application 13/779,853 and independent claims 11 and 18 argued therewith (App. Br. 7), over Zhou, as well as claims 2-8, 12-17, 19, and 20 respectively depending therefrom. Regarding claims 9 and 10, the Examiner does not show how the Iwanabe overcomes the deficiencies of Zhou. Rather, the Examiner merely relies on Iwanabe for disclosing a "core" having a "tapered region" of 0.05 to 50 micrometers (Ans. 9-10). Therefore, we also reverse the Examiner's § 103 rejections of claims 9 and 10 over Zhou in further view of Iwanabe. V. CONCLUSION AND DECISION The Examiner's rejections of claims 1-8 and 11-20 under 35 U.S.C. § 102(b), and claims 9 and 10 under 35 U.S.C. § 103(a), are 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)(l )(iv). REVERSED 6 Copy with citationCopy as parenthetical citation