Kotura, Inc.

Patent Trials and Appeals Board

Jul 2, 2021

2020000854 (P.T.A.B. Jul. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/741,391 06/16/2015 Saeed Fathololoumi 1058-2037 4997
82253 7590 07/02/2021
KLIGLER & ASSOCIATES PATENT ATTORNEYS LTD.
P.O. Box 57651
Tel Aviv, 61576
ISRAEL
EXAMINER
LEE, JAI M
ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
07/02/2021 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):
alon@dkpat.co.il
daniel@dkpat.co.il
info@dkpat.co.il
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAEED FATHOLOLOUMI, DAZENG FENG,
AMIR ALI TAVALLAEE, JACOB LEVY, PEGAH SEDDIGHIAN, and
MEHDI ASGHARI
Appeal 2020-000854
Application 14/741,391
Technology Center 2600
Before MICHAEL J. STRAUSS, IRVIN E. BRANCH, and
CHRISTA P. ZADO, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18, 20, and 21. See Final Act. 1.
Claim 19 is canceled. Appeal Br. 20 (Claims App.). We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Mellanox
Technologies Silicon Photonics, Inc. Appeal Br. 1.
Appeal 2020-000854
Application 14/741,391
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CLAIMED SUBJECT MATTER
The claims are directed to optical devices having a laser cavity. Spec.
¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An optical system, comprising:
a laser cavity on a substrate, the laser cavity outputting a
laser light signal that exhibits one or more longitudinal mode
hops;
the laser cavity having a SideMode Suppression
Ratio (SMSR) that is less than 100 dB and greater than 40
dB;
the laser cavity having a wavelength error greater
than 0.15 nm and less than 0.25 nm for one or more of the
mode hops;
the laser cavity having a power variation is greater
than -4 dBm and less than 0.2 dBm for one or more of the
mode hops.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Chen US 2004/0156416 A1 Aug. 12, 2004
Kupershmidt US 2005/0281298 A1 Dec. 22, 2005
Xie US 2014/0241722 A1 Aug. 28, 2014
REJECTIONS2
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–18, 20, 21 112(a) Written Description
13, 16–18, 20 103 Chen, Kupershmidt, Xie

2 The Examiner withdrew a 35 U.S.C. § 112(b) indefiniteness rejection of
claim 21. Ans. 12.
Appeal 2020-000854
Application 14/741,391
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OPINION
35 U.S.C. § 112(a) rejection
The Examiner finds claims 1 and 13 fail to comply with the written
description requirement of 35 U.S.C. § 112(a). The Examiner finds
Appellant’s Specification “does not provide adequate explanation as to how
the laser cavity having a wavelength error greater than 0.15 nm and less than
0.3 nm for one of the mode hops[] is achieved.” Final Act. 4 (referring to
claim 1 and Spec. ¶ 45 (“the desired level of wavelength error for all or a
portion of the mode hops can be generally [] achieved by altering the length
of the passive section of the laser cavity, grating length, and/or length of the
gain medium.”). Referring to paragraph 45, the Examiner finds as follows:
this description fails to convey how the length of the passive
section of the laser cavity, grating length, and/or length of the
gain medium is related to the wavelength error. One cannot
figure out what length of the passive section of the laser cavity,
what length of grating length, and what length of the gain
medium produce wavelength error greater than 0.15 nm and less
than 0.3 nm. The description also fails to adequately explain how
the length of the each part controls the output wavelength.
Id. at. 5. The Examiner makes similar findings regarding claim 1’s “the laser
cavity having a power variation is greater than -4dBm and less than 0.2 dBm
for one or more of the mode hops” and claim 13’s “the optical link having a
Bit Error Rate less than 10-12.” Id. at 5–9.
Appellant argues that the Examiner errs in rejecting claims 1 and 13
for failure to satisfy the written description requirement. Appeal Br. 8–11.
Appellant contends “Applicant’s specification includes a single paragraph
that supports both phrases” of claim 1. Id. at 9 (citing Spec. ¶ 46). The
portion of the Specification Appellant relies on reads as follows:
Appeal 2020-000854
Application 14/741,391
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In some instances, the laser cavity is configured to have
one, two, or three conditions selected from a group consisting of
a wavelength error that is greater than 0.15 nm and/or less than
0.30 nm for at least one, for at least a portion, or for all of the
mode hops in the functional operational range of the laser cavity
or for all mode hops experienced by the laser cavity; a power
variation that is greater than -10 dBm and/or less than 0.6 dBm
for at least one, for a portion, or for all of the mode hops in the
functional operational range of the laser cavity or for all mode
hops experienced by the laser cavity; and a SideMode
Suppression Ratio (SMSR) that is less than 100 dB and/or greater
than 30 dB for at least the functional operational range of the
laser cavity. In some instances, a device having the laser cavity
with these one, two, or three conditions is included in a[n] optical
link having a data travel distance less than 1 km, 500 m, or 100
m. In some instances, the laser cavity is configured to have two
of the conditions satisfied for the same mode hop.
Spec. ¶ 46 (emphasis added).
Appellant contends this portion of the Specification includes
“practically a word-for-word copy of” claim 1’s “the laser cavity having a
wavelength error greater than 0.15 nm and less than 0.3 nm for one or more
of the mode hops.” Appeal Br. 8. Appellant makes a similar argument
regarding claim 1’s “the laser cavity having a power variation is greater than
-4 dBm and less than 0.2 dBm for one or more of the mode hops.” Id.
(referring to Spec. ¶ 5); see Spec. ¶ 5 (“The laser cavity has one, two, or
three conditions selected from a group consisting of . . ., a power variation
that is greater than -4 dBm and less than 0.2 dBm for at least one of the
mode hops”). Appellant contends because “the Applicant’s specification
provides support for the first and second phrases extracted from claim 1,
claim 1 is properly supported by the specification.” Appeal Br. 10. Appellant
also makes a similar argument regarding claim 13’s “the laser cavity having
Appeal 2020-000854
Application 14/741,391
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a power variation is greater than -4 dBm and less than 0.2 dBm for one or
more of the mode hops.” Id. at 8 (citing Spec. ¶¶ 4–5, 23, 45–46, Abstract,
and originally-filed claims). Appellant also contends “[t]he examples section
of the Applicant’s specification describes an example of a laser cavity that
falls within the scope of claim 1.” Id.; see id. at 10.
We are not persuaded of error.
Compliance with the written description requirement is a question of
fact that is context-sensitive. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc) (“the level of detail required to satisfy
the written description requirement varies depending on the nature and scope
of the claims and on the complexity and predictability of the relevant
technology”). To fulfill the written description requirement, the
“specification must clearly allow persons of ordinary skill in the art to
recognize that the inventor invented what is claimed.” Gentry Gallery, Inc.
v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998) (internal citation
and quotation omitted). The written description requirement limits patent
protection to those who disclose to the public “the complete and final
invention with all its claimed limitations.” Ariad, 598 F.3d at 1353.
When relying on functional language to define a desired result to
describe a genus, “the specification must demonstrate that the applicant has
made a generic invention that achieves the claimed result and do so by
showing that the applicant has invented species sufficient to support a claim
to the functionally-defined genus.” AbbVie Deutschland GmbH v. Janssen
Biotech, Inc., 759 F.3d 1285, 1299 (Fed. Cir. 2014) (quoting Ariad, 598 F.3d
at 1349).
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Application 14/741,391
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We agree with and adopt the Examiner’s findings and conclusion that
claims 1 and 13—and claims 2–12, 14–18, 20, and 21, which depend
therefrom—are unpatentable for failure to satisfy the written description
requirement.
Appellant does not persuasively rebut the Examiner’s findings and
conclusion. See Appeal Br. 8–13; Reply Br. 1–12. Notably, Appellant’s
contention that “the specification [teaches] a specific combination of laser
dimensions that can be used to generate a laser with the claim conditions”
(Reply Br. 3 (emphasis added)) highlights the shortcomings of Appellant’s
disclosure. Specifically, Appellant discloses a species within a range yet
claims a genus encompassing an entire range—entire ranges, in fact—
without the required demonstration that “the applicant has made a generic
invention that achieves the claimed result [] by showing that the applicant
has invented species sufficient to support a claim to the functionally-defined
genus.” AbbVie 759 at 1299. Because Appellant has not disclosed how the
various parameters “can be used” to achieve the entirety of the claimed
ranges—how, for example, the length of the passive section of the laser
cavity, grating length, and/or length of the gain medium produces the
claimed range of wavelength error (Final Act. 5) we agree with the
Examiner that one skilled in the art would not find Appellant to have had
possession of the invention encompassing the claimed ranges.
35 U.S.C. § 103 rejection
Our decision above is dispositive with respect to all pending claims.
We note, however, that we have reviewed Appellant’s arguments alleging
error in the Examiner’s rejection of claims 13 and 16–20 as obvious over the
combination of Chen, Kupershmidt, and Xie. See Appeal Br. 14–16; Reply
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Application 14/741,391
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Br. 12–103. We find Appellant’s arguments unpersuasive for the reasons
stated by the Examiner. Ans. 9–12, 21–22. We note the following for
emphasis.
Appellant first argues modifying Chen’s laser to include
Kuperschmidt’s SMSR would return Chen’s laser to a single mode
operation, which is contrary to Chen’s disclosure that single mode operation
has significant problems that are solved by use of multimode operation.
Appeal Br. 16. The Examiner disagrees, explaining “[w]hat is being
modified in Chen’s teaching is using ‘AR coating that is less than about
0.05% reflectivity’ to increase the SideMode Suppression ratio.” Ans. 22.
Furthermore, according to the Examiner “Chen discloses, in Fig. 6, the
outputs of the two external cavity lasers configured for multimode operation,
by use of a Bragg grating having a FWHM of 90 GHz (see, Para. 37). The
output of the external cavity laser is single wavelength and thus only one
mode is output as shown.” Id. Appellant replies, arguing Chen’s Figure 6
depicts two external cavity lasers configured for multimode operation, not a
single mode. Reply Br. 12–13.
Appellant’s argument is unpersuasive of reversible Examiner error.
Even if, as asserted by Appellant, Chen discloses the advantages of a
multimode laser over a single mode laser, Appellant fails to provide
sufficient persuasive evidence that one skilled in the art would have avoided
making the combination. To teach away, the prior art must “criticize,
discredit, or otherwise discourage the solution claimed.” In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Teaching an alternative method does not
teach away from the use of a claimed method. See In re Dunn, 349 F.2d 433,
438 (CCPA 1965); see also Ex parte Shuping, No. 2008-0394, 2008 WL
Appeal 2020-000854
Application 14/741,391
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336222, at *2 (BPAI 2008) (unpublished) (“[T]eaching a way is not teaching
away.” (citation omitted)); In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir.
1997) (holding that merely “express[ing] a preference” falls short of
discouraging one of ordinary skill in the art from following a particular
path). Other than expressing a preference, Appellant fails to persuade us that
Chen so criticizes, discredits, or otherwise discourages the use of single
mode laser that one skilled in the art would have been discouraged from
making the asserted modification.
We also are unpersuaded by Appellant’s argument that the
combination is improper because the Examiner “does not appear indicate
how the prior art provides a reason to modify the prior art as proposed.”
Appeal Br. 16. The Federal Circuit has held “that while an analysis of
obviousness always depends on evidence that supports the required Graham
factual findings, it also may include recourse to logic, judgment, and
common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion.” Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009); see
also Nat’l Steel Car, Ltd. v. Canadian Pacific Ry., Ltd., 357 F.3d 1319, 1337
(Fed. Cir. 2004) (“It has long been the law that the motivation to combine
need not be found in prior art references, but equally can be found ‘in the
knowledge generally available to one of ordinary skill in the art.’” (Quoting
In re Jones, 958 F.2d 347, 351 (Fed. Cir. 1992))).
The Examiner finds the reason for combining the teachings of Chen
with the SMSR of Kupershmidet by using an AR coating with less than
about 0.05% reflectivity is to achieve an SMSR larger than 35 dB. Final Act.
13. In light of the absence of evidence to rebut the Examiner’s findings and
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Application 14/741,391
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conclusion, we find the Examiner has articulated reasoning with rational
underpinnings sufficient to justify the legal conclusion of obviousness and
are unpersuaded by Appellant’s argument that the Examiner’s combination
of references is inadequate or improper.
Accordingly, we sustain the rejection of claims 13, 16–18, and 20
under 35 U.S.C. § 103.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–18, 20, 21 112(a) Written
Description
1–18, 20, 21
13, 16–18,
20
103 Chen,
Kupershmidt, Xie
13, 16–18,
20

Overall
Outcome
1–18, 20, 21
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(v).
AFFIRMED