Ex Parte SHIN et al

Patent Trials and Appeals Board

Apr 3, 2019

14833406 - (D) (P.T.A.B. Apr. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/833,406 08/24/2015
74712 7590 04/05/2019
Muir Patent Law, PLLC
P.O. Box 1213
9913 Georgetown Pike, Suite 200
Great Falls, VA 22066
FIRST NAMED INVENTOR
Dong-jae SHIN
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.
SAM-57228T 1023
EXAMINER
CARTER, MICHAEL W
ART UNIT PAPER NUMBER
2828
NOTIFICATION DATE DELIVERY MODE
04/05/2019 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):
eofficeaction@appcoll.com
pto@muirpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONG-JAE SHIN, DONG-HYUN KIM, SEONG-
GU KIM, IN-SUNG JOE, and KYOUNG-HO HA
Appeal2018-006931
Application 14/833,406
Technology Center 2800
Before DEBRA L. DENNETT, LILAN REN, and JANEE. INGLESE,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-006931
Application 14/833,406
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
1-3, 5, 8, 10-13, 15-18, 22, 23, 26, 27, 34, and 35. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
CLAIMED SUBJECT MATTER
"The inventive concept relates generally to lasers, and more
particularly, to a hybrid silicon laser embodied on a bulk silicon substrate."
Spec. ,r 2. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A hybrid silicon laser comprising:
a silicon substrate;
a localized insulating layer extending on a portion of a
surface of the silicon substrate, the portion of the surface being
less than all the surface of the silicon substrate;
an optical waveguide structure on a surface of the
localized insulating layer and including an optical waveguide;
a lasing structure on the optical waveguide structure; and
an intermediate medium layer between the optical
waveguide structure and the lasing structure,
wherein a center point of the optical waveguide is deviated
from a center point of the localized insulating layer in a lateral
direction.
Claims Appendix (Br. 12) ( emphasis added).
1 The real party in interest is identified as "Samsung Electronics Co., Ltd."
Appeal Brief of January 3, 2018 ("Br."), 1.
2 Final Office Action of June 6, 2017 ("Final Act."). In this opinion, we also
refer to the Examiner's Answer of April 25, 2018 ("Ans."). No Reply Brief
was filed.
2
Appeal2018-006931
Application 14/833,406
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Kim
Ramdani
Minato
Bowers
Ji
Sysak
Baets
US 7,715,458 B2
US 2002/0047123 Al
US 2003/0059969 Al
US 2008/0002929 Al
US 2011/0133063 Al
US 2012/0300796 Al
US 2012/0320939 Al
REJECTIONS
May 11, 2010
Apr. 25, 2002
Mar. 27, 2003
Jan.3,2008
Jun. 9, 2011
Nov. 29, 2012
Dec. 20, 2012
Claims 1-3, 5, 8, 10 and 34 are rejected under 35 U.S.C. § 103 as
being unpatentable over Baets in view of Kim and further in view of Ji.
Final Act. 2.
Claims 11, 12, 15, 35 are rejected under 35 U.S.C. § 103 as being
unpatentable over Kim in view of Ramdani and further in view of Ji. Final
Act. 6.
Claims 13, 17, and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Kim in view of Ramdanik, Ji and in further view of
Bowers. Final Act. 8.
Claim 16 is rejected under 35 U.S.C. § 103 as being unpatentable over
Kim in view of Ramdani and Ji and further in view of Sysak as evidenced by
Minato. Final Act. 10.
Claims 22 and 23 are rejected under 35 U.S.C. § 103 as being
unpatentable over Kim in view of Sysak and further in view of Ji. Final Act.
1 1.
3
Appeal2018-006931
Application 14/833,406
OPINION
Appellants argue that the Examiner reversibly erred in rejecting claim
1 3 because "nothing in Kim discloses or suggests a center point of an optical
guide and a localized insulating layer as recited in Claim 1." Br. 7 ( citing
Figure 2 of Kim and associated text). Appellants' argument, however, does
not address the Examiner's finding with regard to Figure 6A of Kim in
support of the rejection. Compare id., with Final Act. 3; see also Ans. 2
(noting that "it is figure 6A of Kim[] and not figure 2 which teaches 'a
center point of an optical guide and a localized insulating layer"'). Because
the Examiner's finding with regard to Figure 6A of Kim is reasonable and
Appellants do not challenge it, we accept it as fact. See In re Kunzmann, 326
F.2d 424,425 n.3 (CCPA 1964). We are therefore unpersuaded that the
Examiner reversibly erred in this aspect of the obviousness analysis.
Without disputing Ji' s teachings, Appellants next argue that the
Examiner reversibly erred in combining the references because "Kim does
not contemplate more than one waveguide" on the prior art insulating layer.
Br. 7. Appellants' argument, however, does not address the Examiner's
rationale for combining the references, which is that a skilled artisan would
have found it obvious "to use the offset waveguide of Ji as a simple
substitution for the centered waveguide structure of previous combination as
the substituted components and their functions were known in the art and the
substitution would have yielded predictable results." Compare id., with Final
Act. 4; see also Ans. 4 (pointing out that the obviousness rejection "does not
rely upon Kim to teach more than one waveguide ... "). Because Appellants'
3 Appellants do not present separate arguments regarding claims 2, 3, 5, 8,
10 and 34 and they stand or fall with claim 1. Br. 5-10; see also 37 C.F.R.
§ 4I.37(c)(1)(iv)(2013).
4
Appeal2018-006931
Application 14/833,406
argument does not address the Examiner's rationale to combine the
references, specifically, that the "patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field," KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416
(2007) (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)), and the
combination does no more than yield a predictable result (Final Act. 4 ), we
are unpersuaded that reversible error has been identified here.
We are also unpersuaded by Appellants' argument that Ji and Kim are
not combinable because the combination would render Kim's purpose of
leak reduction ineffective. Br. 9. Appellants' argument is not supported by
evidence or sufficient explanation as to why Kim's device would be
ineffective. "Attorneys' argument is no substitute for evidence." Johnston v.
IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). We further note that the
Examiner's finding that "[i]f Kim's purpose is to prevent leakage as argued
by the appellant and Ji provides distances d 1 and d2 to minimize leakage
then the application of Ji does not render Kim ineffective as in both cases
leakage may be minimized" remains undisputed. Ans. 5. We are accordingly
unpersuaded that reversible error has been identified here.
With regard to the remaining claims (claims 11, 12, 13, 15-18, 22, 26,
27, and 35), Appellants do not present arguments separate from those for
claim 1. See Br. 10-11 ( for example, arguing that independent claims 11 and
22 are "patentable over the cited combination for at least the reasons
discussed above with respect to Claim 1" and that the dependent claims are
"patentable over the cited combination for at least the reasons discussed
above with respect to Claim 1"). We accordingly sustain the rejections of
these remaining claim based on the analysis for claim 1.
5
Appeal2018-006931
Application 14/833,406
DECISION
The Examiner's decision is affirmed.
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
6