Ex Parte Sanghera et al

Patent Trial and Appeal Board

Mar 23, 2018

13629648 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/629,648 09/28/2012
26384 7590 03/26/2018
NAVAL RESEARCH LABORATORY
AS SOCIA TE COUNSEL (PA TENTS)
CODE 1008.2
4555 OVERLOOK A VENUE, S.W.
WASHINGTON, DC 20375-5320
FIRST NAMED INVENTOR
Jasbinder S. Sanghera
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.
101397-US2 5903
EXAMINER
MADONNA, JEFFREY E
ART UNIT PAPER NUMBER
2872
MAILDATE DELIVERY MODE
03/26/2018 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 JASBINDER S. SANGHERA, CATALIN M. FLOREA
LESLIE BRANDON SHAW, LYNDA E. BUSSE,
ISHWAR D. AGGARWAL, and STEVEN R. BOWMAN
Appeal2017-007436
Application 13/629,648
Technology Center 2800
Before LINDA GAUDETTE, CHRISTOPHER L. OGDEN,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-16 of Application 13/629,648
as unpatentable under 35 U.S.C. § 103(a). Final Act. (Nov. 9, 2015) 2-8.
Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
1 The Government of the United States of America, as represented by the
Secretary of the Navy, is identified as the real party in interest. Appeal
Br. 2.
Appeal2017-007436
Application 13/629,648
BACKGROUND
The present application generally relates to an optical system having
two or more different optical elements with a corresponding interface
between the optical elements. Spec., Abstract. The application teaches that
at least one of the optical elements has an anti-reflective structure that is
transferred to the interface between the two optical elements, typically by
embossing. Id.
Claim 1 is representative of the claims at issue and is reproduced
below:
1. An optical system, comprising:
a first optical element;
a second optical element wherein the second optical
element comprises a different material from the first optical
element, and wherein one of the first or second optical elements
comprises a chalcogenide fiber;
an interface between the first and second optical
elements; and
an anti-reflective structure on either the first or second
optical element that is transferred to the interface.
Appeal Br. 6 (Claims App.).
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Application 13/629,648
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1-5, 7-9, 11, 12, and 142 are rejected under 35 U.S.C.
§ 103(a) as obvious over Ikarashi3 in view ofKobayashi. 4 Final
Act. 2---6.
2. Claims 6, 10, 13, 15, and 16 are rejected under 35 U.S.C. § 103(a)
as obvious over Ikarashi in view of Kobayashi and further in view
of Sanghera. 5 Final Act. 6-8.
DISCUSSION
Rejection 1. The Examiner rejected claims 1-5, 7-9, 11, 12, and 14
as obvious over Ikarashi in view of Kobayashi. Id. at 2-6. Appellants argue
that such rejection is in error on two bases. First, Appellants argue that
Ikarashi fails to teach "an interface between the first and second optical
elements." Appeal Br. 3--4. Second, Appellants argue that Ikarashi fails to
teach "an anti-reflective structure ... that is transferred to the interface." Id.
at 4--5.
"An Interface Between the First and Second Optical Elements"
In making the rejection, the Examiner found that Ikarashi teaches first
and second optical elements and an interface between the two optical
2 The heading for the first rejection indicates that only claims 1--4, 7-9, 11,
and 14 are rejected. The text, however, indicates that claims 5 and 12 are
rejected over the same references.
3 US 2006/0029321 Al, published Feb. 9, 2006.
4 US 2003/0185517 Al, published Oct. 2, 2003.
5 US 2011/0033156 Al, published Feb. 10, 2011.
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Application 13/629,648
elements. Final Act. 2. In support, the Examiner cites to "interface 501 b &
502b" of Figure 16 ofikarashi, which is reproduced below, as teaching the
optical interface.
Figure 16 is a sectional view showing the coupling portion between two
optical waveguides 501a and 502a. Ikarashi i-fi-f 156, 157. The optical
waveguides are "covered with films (coating mediums) 501b, 502b." Id.
i-f 15 7. A "filling medium 503" occupies the space between the opposing
portions of the waveguides. Id.
Appellants argue that Ikarashi fails to teach "an interface between the
first and second optical elements" as required by independent claims 1 and
8. Appeal Br. 2--4. In support, Appellants argue that "[f]rom Ikarashi's
figures and specification, it is clear that there is not a common boundary
between the optical elements but rather a separation between them that is
filled with a filling material." Id. at 3. The Examiner, however, maintains
that the "broadest reasonable interpretation of the limitation 'interface'
includes any structure or medium which is between two mediums." Answer
3.
In view of the foregoing, there is a question as to whether "an
interface between the first and second optical elements" should be construed
narrowly to mean the boundary where the optical elements meet or more
broadly to permit a "structure or medium" between the optical elements.
During examination, claim terms are given their broadest reasonable
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Application 13/629,648
construction consistent with the specification. In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). However, "[t]he
broadest-construction rubric coupled with the term 'comprising' does not
give the PTO an unfettered license to interpret claims to embrace anything
remotely related to the claimed invention." In re Suitco Surface, Inc., 603
F.3d 1255, 1260 (Fed. Cir. 2010).
The Specification provides that "[ t ]he present invention provides a
method of protecting sensitive optics while at the same time reducing
dramatically the transmission loss at the optical interface without the use of
foreign material between the optical elements." Spec. ,-r 16 (emphasis
added). The Specification further provides that Figure 1 depicts "an anti-
reflective interface structure between two optical elements." Id. ,-r 12
(emphasis added). Figure 1 is reproduced below:
Figure 1 shows two optical elements in direct contact. The Specification
additionally describes an anti-reflective structure on one element that is
"faithfully replicated into the surface of the glass fiber end, allowing for no
air gap at the interface between the two materials." Spec. ,-r 19 (emphasis
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Application 13/629,648
added). The Examiner does not cite to (nor do we find) any statement in the
Specification weighing in favor of a broader construction of "an interface
between the first and second optical elements" that would permit a structure
or medium between the optical elements. See Answer 2-3.
Accordingly, reading the claim language in view of the Specification,
we determine that the broadest reasonable construction of "an interface
between the first and second optical elements" requires direct contact
between the first and second optical elements. Cf In re Abbott Diabetes
Care Inc., 696 F.3d 1142 (Fed. Cir. 2012) (holding that the claim term
"electrochemical sensor" excluded cables and wires based on critical
language in the claims and specification, despite their having been no
explicit disclaimer of cables or wires).
The portion of Ikarashi relied upon by the Examiner does not teach
optical elements (waveguides 501a, 502a) in direct contact. Rather, "filling
medium 503" occupies the space between the opposing portions of the
waveguides. As a consequence, Ikarashi does not teach "an interface
between the first and second optical elements" as required by claims 1 and 8.
"An Anti-Reflective Structure . .. that is Transferred to the Interface"
Appellants additionally argue that Ikarashi fails to teach "an anti-
reflective structure on either the first or second optical element that is
transferred to the interface" as required by claim 1 or "transferring the anti-
reflective structure to an interface between the first and second optical
elements" as required by claim 8. Appeal Br. 4.
The Examiner found that Ikarashi teaches an anti-reflective structure
on either the first or second optical element that is transferred to the
interface. Final Act. 2 (citing Ikarashi i-f 158). The cited portion of Ikarashi
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Application 13/629,648
teaches that "since both end surfaces of the opposing portions become
smooth, the scattering of the light ... can be prevented. Therefore, the loss
due to the reflection and the coupling loss can be reduced." Ikarashi i-f 158.
This portion of Ikarashi appears to teach an anti-reflective structure.
Ikarashi, however, does not teach that such structure (the shape of the face of
the optical element) is "transferred to the interface."
In the context of claim 3 (which depends from claim 1 ), the Examiner
determines that a similar limitation, "the anti-reflective structure is
transferred to the interface by embossing" is a product-by-process limitation.
We address such determination for completeness. "[W]hen considering the
patentability of product claims that contain process limitations, claim scope
is generally based on the product itself, not the process. If the process
limitation connotes specific structure and may be considered a structural
limitation, however, that structure should be considered." In re Nordt Dev.
Co., LLC, 881F.3d1371, 1374 (Fed. Cir. 2018) (internal citations omitted).
Here, claim 1 requires that a structure (surface structure, Spec. i-f 4) be
transferred from one element to the interface by embossing or otherwise.
Thus, the "transferred to the interface" limitation connotes an interface
where both elements have the anti-reflective structure at the interface (see,
e.g., Fig. 1 (b) ). This structure is not taught by the cited portion of Ikarashi.
In view of the foregoing, Appellants have shown reversible error in
the rejection of independent claims 1 and 8. As all claims at issue in
Rejection 1 depend from claim 1 or claim 8, such showing is applicable to
each of claims 1-5, 7-9, 11, 12, and 14.
Rejection 2. Appellants rely upon the same arguments in regard to
the rejection of claims 6, 10, 13, 15, and 16 as with regard to the claims
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subject to Rejection 1 (claims 1-5, 7-9, 11, 12, and 14). Appeal Br. 4--5.
The Examiner has not made any finding that Sanghera teaches "an interface
between the first and second optical elements." See Final Act. 6-8 (although
the Examiner has made a finding regarding Sanghera teaching a structure
being transferred by embossing). As we have determined Appellants'
arguments regarding the absence of a teaching of the requisite "interface" to
be persuasive, we reverse the rejection of claims 6, 10, 13, 15, and 16 on the
same basis.
CONCLUSION
The rejection of claims 1-5, 7-9, 11, 12, and 14 as obvious over
Ikarashi in view of Kobayashi is reversed. The rejection of claims 6, 10, 13,
15, and 16 as obvious over Ikarashi in view of Kobayashi and further in
view of Sanghera 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).
AFFIRMED
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