NeoPhotonics Corporation

Patent Trials and Appeals Board

Mar 15, 2022

2021002742 (P.T.A.B. Mar. 15, 2022)

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. 15/287,825 10/07/2016 Edward C. Vail 3275.84US02 2200 62274 7590 03/15/2022 CHRISTENSEN, FONDER, DARDI & HERBERT PLLC 11322 86th Ave. N. Maple Grove, MN 55369 EXAMINER EL SHAMMAA, MARY A ART UNIT PAPER NUMBER 2883 NOTIFICATION DATE DELIVERY MODE 03/15/2022 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): docket@cfd-ip.com patents@cfd-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte EDWARD C. VAIL and MILIND GOKHALE ____________ Appeal 2021-002742 Application 15/287,825 Technology Center 2800 ____________ Before TERRY J. OWENS, GEORGE C. BEST, and DONNA M. PRAISS, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-24 of Application 15/287,825. Non- Final Act. (January 24, 2020). Because at least one of the claims on appeal has been twice rejected, we have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies NeoPhotonics Corp. as the real party in interest. Appeal Br. 3. Appeal 2021-002742 Application 15/287,825 2 I. BACKGROUND The ’825 Application describes optical telecommunication components. Spec. 1. In particular, the Specification describes low power consumption, high bandwidth transmitters and receivers. Id. These components make use of wavelength division multiplexing/demultiplexing to increase the bandwidth of the transmitters/receivers. Id. Claim 1 is representative of the ’825 Application’s claims and is reproduced below from the Appeal Brief’s Claims Appendix. We have italicized claim language that is central to our analysis. 1. An adjustable optical telecommunication transmitter comprising: a plurality of light emitting elements that emit optical signals along adjacent light paths and at specific wavelengths chromatically spaced and distinct from each other; a dispersive element comprising a dispersive structure, a first interface providing a plurality of optical channel paths being optically coupled to the plurality of light emitting elements and to the dispersive structure, and a conjugate spatially-extended second interface to receive a chromatically combined optical signal from the dispersive structure, wherein the dispersive element is configured to chromatically combine the optical signals received at the first interface to transmit a chromatically combined signal at the second interface; and an adjustable beam steering element optically connected to the first interface or to the conjugate spatially-extended second interface. Appeal Br. 27 (emphasis added). Appeal 2021-002742 Application 15/287,825 3 II. REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1-3, 7, 12-14, 16, 17, and 19 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Shen.2 Non-Final Act. 3. 2. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over the combination of Shen and Belser.3 Non-Final Act. 5. 3. Claims 20, 23, and 24 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Shen and Nagarajan.4 Non-Final Act. 6. 4. Claims 21 and 22 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Shen, Nagarajan, and Chang-Hasnain.5 Non-Final Act. 7. 5. Claims 5, 6, and 11 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Shen and Sharma.6 Non- Final Act. 7. 6. Claims 8-10, 15, and 18 are rejected under 35 U.S.C. § 103 as unpatentable over Shen. Non-Final Act. 8. 2 US 2014/0112621 A1, published April 24, 2014. 3 US 2003/0043471 A1, published March 6, 2003. 4 US 2005/0249509 A1, published November 10, 2005. 5 US 2013/0058370 A1, published March 7, 2013. 6 US 2012/0236216 A1, published September 20, 2012. Appeal 2021-002742 Application 15/287,825 4 III. DISCUSSION A. Rejection of claims 1-3, 7, 12-14, 16, 17, and 19 as anticipated by Shen Appellant argues for reversal of this rejection based on the limitations of claim 1. Appeal Br. 12-17. Appellant presents additional arguments for the separate patentability of claims 2, 13, and 17. Id. at 17-19. We begin by considering the rejection of claim 1 as anticipated by Shen. Appellant argues, inter alia, that this rejection should be reversed because the Examiner erred in construing several of the claim’s limitations. Id. at 12-14. Appellant specifically argues that the Examiner erred in the interpretation of the claim term “transmitter,” which appears in claim 1’s preamble. Id. at 12-13. We begin by considering whether claim 1’s preamble is limiting. In general, the preamble limits a claim if it recites essential structure, essential steps, or is otherwise “necessary to give life, meaning, and vitality” to the claim, Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (quoting Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951)), but the preamble is not limiting when the claim body defines a structurally complete invention and the preamble states only a purpose or intended use, Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). The default presumption is that a claim’s preamble is not limiting. Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (“‘Generally,’ we have said, ‘the preamble does not limit the claims.’” (quoting Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002))). Appeal 2021-002742 Application 15/287,825 5 We agree with Appellant that the preamble’s language must be limiting because it “give[s] life, meaning, and vitality” to the claim by distinguishing the claimed subject matter from the cited prior art. See Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1362 (Fed. Cir. 2004) (“A preamble may provide context for claim construction, particularly[] where[,] as here, that preamble’s statement of intended use forms the basis for distinguishing the prior art in the patent’s prosecution history.”); Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (in rare circumstances, a preamble’s recitation of intended use may serve to distinguish the prior art). Next, we turn to the proper interpretation of the term “transmitter.” During prosecution, the PTO gives the language of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account any definitions or other enlightenment provided by the written description contained in the applicant’s specification. In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997). In the context provided by the Specification, we conclude that a person having ordinary skill in the art would understand the ordinary meaning of “transmitter” to be “a device that transmits, such as an apparatus for transmitting radio or television signals.” See Transmitter Definition & Meaning-Merriam-Webster, Merriam-Webster.com, https://www.merriam- webster.com/dictionary/transmitter. In this context, the person having ordinary skill in the art would understand “transmit” to mean “to cause (something, such as light or force) to pass or be conveyed through space or a medium” or “to send out (a signal) either by radio waves or over a wire.” Transmit Definition & Meaning-Merriam-Webster, Merriam-Webster.com. Appeal 2021-002742 Application 15/287,825 6 https://www.merriam-webster.com/dictionary/transmit. Thus, we determine that, in this context, the ordinary meaning of the term “transmitter” is “a device that causes a signal to be conveyed through space or a medium.” We note that this definition requires the transmitter to cause the signal to be conveyed. In other words, the transmitter must generate the signal. We have reviewed the ’825 Application’s Specification and have not found anything that is inconsistent with this definition. We, therefore, give the term “transmitter” the ordinary definition stated above. In rejecting claim 1, the Examiner found that “Shen discloses in at least Fig. 3, an adjustable optical telecommunication transmitter.” Non-Final Act. 3. Under the proper interpretation of the term “transmitter,” this finding is erroneous. Shen does not describe a transmitter as that term is used in claim 1 because Shen’s arrayed waveguide grating does not generate the optical signals that it manipulates. Rather, in the demultiplexer depicted in Shen’s Figure 3, the AWG includes input port 202, which receives optical beam 204. Shen ¶¶ 36, 42. Optical signal, 204, therefore, is generated elsewhere, not by Shen’s device. In view of the foregoing, we determine that the Examiner has erred by finding that Shen anticipates claim 1. Thus, we reverse the rejection of claim 1. Because claim 1’s limitations are part of the remaining claims subject to this ground of rejection, we also reverse the rejection of claims 2, 3, 7, 12- 14, 16, 17, and 19. Appeal 2021-002742 Application 15/287,825 7 B. Rejection of claim 4 as unpatentable over the combination of Shen and Belser Claim 4 depends from claim 1. In rejecting claim 4, the Examiner does not rely upon Belser in a manner that remedies the defects in the rejection of claim 1. We, therefore, reverse the rejection of claim 4. C. Rejection of claims 20, 23, and 24 as unpatentable over the combination of Shen and Nagarajan Claim 20 incorporates the limitations of claim 1. Claims 23 and 24 depend from claim 20. In rejecting claim 20, the Examiner did not rely upon Nagarajan in a manner that remedies the defects in the rejection of claim 1. We, therefore, reverse the rejection of claims 20, 23, and 24. D. Rejection of claims 21 and 22 as unpatentable over the combination of Shen, Nagarajan, and Chang-Hasnain Claims 21 and 22 depend from claim 20. As discussed above, we have reversed the rejection of claim 20. Because the Examiner does not rely upon Chang-Hasnain in a manner that cures the defects in the rejection of claim 1, we also reverse the rejection of claims 21 and 22. E. Rejection of claims 5, 6, and 11 as unpatentable over the combination of Shen and Sharma Claims 5, 6, and 11 depend from claim 1. Because the Examiner does not rely upon Sharma in a manner that cures the defects in the rejection of claim 1, we also reverse the rejection of claims 5, 6, and 11. F. Rejection of claims 8-10, 15, and 18 as unpatentable over Shen The claims subject to this rejection depend, directly or indirectly, from claim 1. In rejecting these claims as obvious over Shen, the Examiner did Appeal 2021-002742 Application 15/287,825 8 not make any findings that cure the defects in the rejection of claim 1. Thus, we reverse the rejection of claims 8-10, 15, and 18. IV. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Basis/Reference(s) Affirmed Reversed 1-3, 7, 12-14, 16, 17, 19 102 Shen 1-3, 7, 12-14, 16, 17, 19 4 103 Shen, Belser 4 20, 23, 24 103 Shen, Nagarajan 20, 23, 24 21, 22 103 Shen, Nagarajan, Chang-Hasnain 21, 22 5, 6, 11 103 Shen, Sharma 5, 6, 11 8-10, 15, 18 103 Shen 8-10, 15, 18 Overall Outcome 1-24 REVERSED