Ex Parte Nishida et al

Patent Trial and Appeal BoardSep 17, 2013

10898196 (P.T.A.B. Sep. 17, 2013)

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. 10/898,196 07/26/2004 Takehiro Nishida 50006-191 2678 7590 09/18/2013 McDERMOTT, WILL & EMERY 600 13th Street, N.W. Washington, DC 20005-3096 EXAMINER SAYADIAN, HRAYR ART UNIT PAPER NUMBER 2814 MAIL DATE DELIVERY MODE 09/18/2013 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 TAKEHIRO NISHIDA, MOTOHARU MIYASHITA, and TSUTOMU YAMAGUCHI ________________ Appeal 2011-003564 Application 10/898,196 Technology Center 2800 ________________ Before CHUNG K. PAK, TERRY J. OWENS, and BEVERLY A. FRANKLIN, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003564 Application 10/898,196 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 2, 5 and 18-20. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a monolithic semiconductor laser. Claim 1 is illustrative: 1. A monolithic semiconductor laser having plural semiconductor lasers having different emission wavelengths from each other, comprising: a semiconductor substrate; a first double hetero-structure formed within a first area on the semiconductor substrate and having first clad layers disposed above and below a first active layer, wherein said first double heterostructure has an upper surface spaced apart from said substrate; and a second double hetero-structure formed within a second area on the semiconductor substrate and having second clad layers disposed above and below a second active layer, wherein said second double hetero-structure has an upper surface spaced apart from said substrate; wherein the first and second active layers are made of different semiconductor materials from each other, the first clad layers above and below the first active layer are of approximately the same semiconductor materials and the second clad layers above and below the second active layer are of approximately the same semiconductor materials; a plurality of first ridges formed in the upper surface of the first double hetero-structure, said first ridges defined by a plurality of first trenches formed adjacent said first ridges; and a plurality of second ridges formed in the upper surface of the second double hetero-structure, said second ridges defined by a plurality of second trenches formed adjacent said second ridges, wherein the second trenches are formed to a greater depth than a depth of the first trenches. Appeal 2011-003564 Application 10/898,196 3 The References Suyama US 5,022,036 Jun. 4, 1991 Li US 5,536,085 Jul. 16, 1996 Bour US 5,982,799 Nov. 9, 1999 LaComb US 6,256,330 B1 Jul. 3, 2001 Hamamoto US 2001/0014109 A1 Aug. 16, 2001 Uchizaki US 2004/0062285 A1 Apr. 1, 2004 The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1, 2, 5, 19 and 20 over Uchizaki in view of Li, Suyama, LaComb and Hamamoto and claim 18 over Uchizaki in view of Li, Suyama, LaComb, Hamamoto and Bour. OPINION We reverse the rejections. We need to address only the independent claims (1 and 18). Claim 1 requires that “the second trenches are formed to a greater depth than a depth of the first trenches”. The Examiner states that the combination of Uchizaki, Li, Suyama and LaComb “fails to explicitly disclose the gaps/trenches to have different depths as recited in claim 1” (Ans. 4-5). The Examiner argues that “one of ordinary skill in the art would know that different gap/trench depths would be required to stabilize SL1 and SL2 operation to their respective different fundamental optical modes, as least when equal width middle ridges are used in Uchizaki as modified according to Li/Suyama/LaComb” (Ans. 5). The Examiner provides no support for that argument. The Examiner’s mere speculation is not sufficient for establishing a prima facie case of obviousness. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967); In re Sporck, 301 F.2d 686, 690 (CCPA 1962). Appeal 2011-003564 Application 10/898,196 4 Claim 18 requires that “said first double hetero-structure extends to a different height above the semiconductor substrate than a height said second double hetero-structure extends above the semiconductor substrate.” The Examiner argues that Uchizaki and Bour “are equivalents for the purpose of shifting the wavelength of one SL with respect to the other SL, or changing the wavelength, or obtaining different wavelengths” (Ans. 14) and that “combining art-recognized equivalents for the same purpose would be prima facie obvious to one of ordinary skill in the art.” Id. The Examiner has not established that equivalence. The Examiner merely points out Bour disclosure that “the strong ridge-width and ridge- depth dependence of the fundamental mode loss can be used to shift the lasing wavelength through bandfilling” (col. 2, ll. 43-45) and argues that Uchizaki discloses “‘shift[ing]’ the wavelength to a desired wavelength without ‘a serious sacrifice in threshold current” (which appears to be a disclosure by Bour (col. 2, ll. 52-54), not Uchizaki) (Ans. 14). The Examiner argues that “one of ordinary skill in the art would know to use the teaching of Bour ‘to [further] shift’ the wavelength of one SL from that of another SL, monolithically produced by the teaching of Uchizaki” (Ans. 14). The Examiner provides no support for that argument. The Examiner’s mere speculation is not sufficient for establishing prima facie obviousness. See Warner, 379 F.2d at 1017; Sporck, 301 F.2d at 690. Accordingly, we reverse the Examiner’s rejections. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 1, 2, 5, 19 and 20 over Uchizaki in view of Li, Suyama, LaComb and Hamamoto and claim 18 over Appeal 2011-003564 Application 10/898,196 5 Uchizaki in view of Li, Suyama, LaComb, Hamamoto and Bour are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED tc