Samtec, Inc.

Patent Trials and Appeals Board

Aug 18, 2020

2020005437 (P.T.A.B. Aug. 18, 2020)

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.
15/078,162 03/23/2016 Jignesh H. SHAH 80505.243.US 1650
54065 7590 08/18/2020
SAMTEC INCORPORATED
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
KIANNI, KAVEH C
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
08/18/2020 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):
JKEATING@KBIPLAW.COM
pmedley@kbiplaw.com
uspto@kbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JIGNESH H. SHAH, WILLIAM J. KOZLOVSKY,
DAVID A. LANGSAM, RAYMOND J. LEE,
R. BRAD BETTMAN, and ERIC JEAN ZBINDEN
____________________

Appeal 2020-005437
Application 15/078,162
Technology Center 2800
____________________

Before N. WHITNEY WILSON, DEBRA L. DENNETT, and
JANE E. INGLESE, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
August 23, 2018 decision rejecting claims 1–112 and 23–27 (“Non-Final
Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Samtec, Inc. as the real party in
interest (Appeal Br. 2).
2 Claim 12 was not rejected, only objected to and, hence, is not on appeal.
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Application 15/078,162

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CLAIMED SUBJECT MATTER
Appellant’s disclosure generally relates to an optical block which
includes a first surface that receives light entering the optical block, a second
surface through which the light exits the optical block, and a reflector that
reflects light from the first surface towards the second surface (Abstract).
The reflector includes a textured surface that scatters or absorbs some of the
light received from the first surface to attenuate the light exiting the optical
block through the second surface (id.). Details of the claimed optical block
are set forth in representative claim 1, which is reproduced below from the
Claims Appendix to the Appeal Brief:
1. An optical block comprising:
a first surface that receives light entering the optical
block;
a second surface through which the light exits the optical
block; and
a reflector that reflects light from the first surface
towards the second surface; wherein
the reflector includes a textured surface that scatters or
absorbs some of the light received from the first surface to
attenuate the light exiting the optical block through the second
surface.
REJECTIONS
1. Claims 1, 5, and 6 are rejected under 35 U.S.C. § 102(a)(1)
and/or § 102(a)(2) as anticipated by Hoshi.3
2. Claim 1 is rejected under 35 U.S.C. § 102(a)(1) and/or
§ 102(a)(2) as anticipated by Mochizuki.4

3 Hoshi et al., US 4,733,065, issued March 22, 1988.
4 Mochizuki et al., US 4,737,896, issued April 12, 1988.
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3. Claims 2–4 are rejected under 35 U.S.C. § 1035 as unpatentable
over Hoshi in view of Sheng.6
4. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over
Hoshi in view of Bakker.7
5. Claims 2–4 are rejected under 35 U.S.C. § 103 as unpatentable
over Mochizuki in view of Sheng.
6. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over
Mochizuki in view of Bakker.
7. Claims 1, 5, 6, 8–11, and 23–27 are rejected under
35 U.S.C. § 103 as unpatentable over Shah8 in view of Timans.9

DISCUSSION
Rejections 1, 3, and 4. The Examiner finds that Hoshi teaches an
optical block with a first surface 235 that receives light entering the optical
block, a second surface from which the light exits the optical block, and
reflector E that reflects light from the first surface towards the second
surface, where the reflector includes a textured surface that scatters or
absorbs some of the light received from the first surface, as shown in the
annotated version of Hoshi’s FIG. 28A:

5 The rejection indicates that it is under § 103(a) (Non-Final Act. 8).
However, because the case is being examined under the first inventor to file
provisions of the America Invents Act, the proper statutory reference is to
§ 103. This is true for each of the obviousness rejections on appeal.
6 Sheng et al., US 2009/0251741 A1, published October 8, 2009.
7 Bakker, US 2005/0024614 A1, published February 3, 2005.
8 Shah, US 9,470,857 B2, issued October 18, 2016.
9 Timans, US 2008/0002753 A1, published January 3, 2008.
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An annotated version of Hoshi’s FIG. 28A shows a schematic cross-
sectional view of a beam splitter.

The Examiner further finds that Hoshi’s diffraction grating “both
scatters and absorbs light, because a diffraction grating will do both by its
very nature” because “diffraction gratings, like many optical components,
are not ‘perfect’ and light will be lost through both scattering and absorption
as light interacts with the various surfaces” (Ans. 4).
However, as explained by Appellant, the Specification specifically
defines the claimed “textured surface” as “a surface with deliberately formed
defects that degrade the optical quality of the surface” (Spec. ¶ 41). Thus,
the broadest reasonable construction of the phrase “textured surface”
requires the presence of deliberately formed defects that degrade the optical
quality of the surface. In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007). Because the Examiner finds that Hoshi’s diffraction
grating only scatters and/or absorbs light because it is “not perfect,” the
Examiner has not made an adequately supported finding that Hoshi includes
a textured surface (i.e., one with deliberately formed defects that degrade the
optical quality of the surface).
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Accordingly, we reverse the anticipation rejection of claims 1, 5, and
6 over Hoshi. Because the obviousness rejection of claims 2–4 over Hoshi
in view of Sheng and claim 7 over Hoshi in view of Bakker depend on the
Examiner’s finding that Hoshi discloses the claimed textured surface, and
because we have determined that this finding is erroneous, we also reverse
the obviousness rejections over Hoshi in view of Sheng and Hoshi in view of
Bakker.
Rejections 2, 5, and 7. The Examiner finds that Mochizuki teaches an
optical block comprising a first surface that receives light entering the
optical block, a second surface 23 through which the light exits the optical
block and a reflector 22 that reflects light from the first surface towards
second surface 23 as shown in FIG. 2 (Non-Final Act. 5):

Mochizuki’s FIG. 2 is a sectional view of its illumination device.
The Examiner further finds that reflector 22 includes a textured surface (id.).
As was the case with Hoshi, the Examiner finds that reflector 22 “is [not]
perfect and some light will be lost to scattering and absorption while it
interacts with the surfaces of the prism structure” (Ans. 6).
However, as was the case with the anticipation rejection over Hoshi,
the Examiner has not made any findings that Mochizuki’s reflector 22 is a
“textured surface” as that term is used in the claim, because there have been
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no findings that reflector 22 includes deliberately formed defects that
degrade the optical quality of the surface. Instead, the Examiner only finds
that “no reflector is perfect and some light will be lost to scattering and
absorption while it interacts with the surfaces of the prism” (id.). The
Examiner focuses on the meaning of the word “some” in the claim language
“scatters or absorbs some of the light received” (emphasis added), and finds
that reflector 22 will scatter or absorb some the light (Ans. 6–7). However,
in doing so the Examiner has not adequately addressed the claim term
“textured surface” which, as discussed above, has a specific meaning in the
claims.
Accordingly, we reverse the anticipation rejection of claim 1 over
Mochizuki. Moreover, because the obviousness rejections of claims 2–4
over Mochizuki in view of Sheng and claim 7 over Mochizuki in view of
Bakker rely on the same erroneous findings with regard to Mochizuki, we
also reverse those rejections.
Rejection 7. The Examiner finds that Shah teaches an optical block
comprising a first surface 10a that receives light entering the optical block, a
second surface 20a through which the light exits the optical block, and a
reflector 29c that reflects light from the first surface towards the second
surface, as shown in the following annotated version of Shah’s FIG. 4 (Non-
Final Act. 9):
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An annotated version of Shah’s FIG. 4 shows a side cross section of the
sub-module, which illustrates optical axes from the VCSEL to a monitor
photodiode and to an external optical fiber
The Examiner further finds that Shah does not explicitly teach that the
reflector includes a textured surface that scatters or absorbs some of the light
received from the first surface, but that Timans teaches such a textured
surface in an optical block (Non-Final Act. 10, citing Timans FIGS. 6 and
16). The Examiner determines that it would have been obvious to modify
Shah’s reflector by “texturing the reflecting surface so as to scatter[] or
absorb[] some of the light . . . exiting the optical block through the second
surface so as to direct a portion of the light to a detector . . . so as to monitor
the attenuated transmission light that exits the second surface” (id.).
Appellant argues, inter alia, that the Examiner has failed to provide an
adequate rationale for why a person of skill in the art would have combined
the art as proposed by the Examiner (Appeal Br. 7). This argument is
persuasive. The Examiner does not provide an explanation of why a person
of ordinary skill in the art would have sought to attenuate the light exiting
Shah’s block, and has not explained why a person of skill in the art would
have sought to modify Shah’s block to achieve this property. In order to
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establish obviousness, the Examiner must provide an articulated reasoning
with some rational underpinning to support a legal conclusion of
obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In this
instance, the Examiner has not done so.
In the Answer, the Examiner provides a different explanation of the
rejection, finding that “Shah’s textured surface clearly reflects some light
and scatters some light” and that Shah’s FIG. 4 shows that “[t]he reflected
light exits surface 20a and the scattered light passes through the surface 29a
and on to mirror 27 (shown by [the] dotted line in figs. 4 and 5”) (Ans. 8).
The Examiner specifically points to Shah’s FIG. 5 as illustrating that surface
29a scatters some light by allowing some light to refract through surface
29e:

Shah’s FIG. 5 magnifies a structure around a blip on the reflecting surface to
reflect and refract light coming from the VCSEL.
The Examiner further finds that Shah does not expressly label the
reflective surface a “textured surface,” but Timans teaches a reflector which
both reflects and scatters light and which is labeled a “textured surface.”
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Therefore, according to the Examiner, “surface 29a of Shah is a
reflecting/scattering textured surface” and “it is common in the art to use
such textured surfaces where both reflection and scattering is desired” (Ans.
8).
As was the case with the rejections over Hoshi and Mochizuki, the
Examiner has not construed the term “textured surface” properly in
accordance with the definition set forth in the Specification. That is,
regardless of how Timans uses the term “textured surface,” the claim uses
that phrase in a very specific way, to mean a surface with “deliberately
formed defects that degrade the optical quality of the surface.” In this
instance, the Examiner has not made findings which show that Shah’s
surface 29a meets this requirement. Accordingly, we reverse the rejection.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5, 6 102(a)(1) Hoshi 1, 5, 6
1, 5, 6 102(a)(2) Hoshi 1, 5, 6
1 102(a)(1) Mochizuki 1
1 102(a)(2) Mochizuki 1
2–4 103 Hoshi, Sheng 2–4
7 103 Hoshi, Bakker 7
2–4 103 Mochizuki, Sheng 2–4
7 103 Mochizuki, Bakker 7
1, 5, 6, 8–
11, 23–27
103 Shah, Timans 1, 5, 6, 8–11,
23–27
Overall
Outcome
1–11, 23–27
REVERSED