Ex Parte OTODownload PDFPatent Trial and Appeal BoardJun 7, 201713861560 (P.T.A.B. Jun. 7, 2017) Copy Citation 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. 13/861,560 04/12/2013 Masanori OTO FUJI-0732 9287 37013 7590 06/09/2017 Rossi, Kimms & McDowell LLP 20609 Gordon Park Square Suite 150 Ashburn, VA 20147 EXAMINER CARTER, MICHAEL W ART UNIT PAPER NUMBER 2828 NOTIFICATION DATE DELIVERY MODE 06/09/2017 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): mail@rkmllp.com EOfficeAction@rkmllp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FUJI ELECTRIC CO., LTD. (Inventor: MASANORI OTO) Appeal 2016-004004 Application 13/861,560 Technology Center 2800 Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1—5 and 7—10 of Application 13/861,560 under 35 U.S.C. § 103(a) as obvious. Final Act. (Dec. 18, 2014) 2—9. Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we AFFIRM. 1 FUJI ELECTRIC CO., LTD. is identified as the real party in interest. Appeal Br. 1. Appeal 2016-004004 Application 13/861,560 BACKGROUND The present application describes a light source device which can emit light at a plurality of wavelengths from a single optical axis, can perform modulation independently for each wavelength, and is inexpensive. Spec. 111. Claim 1 is representative of the pending claims and is reproduced below with the disputed limitation in italics: 1. A light source device, comprising: a plurality of laser light sources; a plurality of wavelength conversion elements provided for each of the plurality of laser light sources and having different wavelength conversion characteristics, and converting laser light into different wavelengths; a multiplexer coupling the plurality of laser light rays output from the plurality of wavelength conversion elements and outputting the rays as coaxial light; and a first Bragg reflection portion provide between the plurality of laser light sources and the plurality of wavelength conversion elements and forming at least one portion of a resonator for the laser light, wherein a VBG (Volume Bragg Grating) element, which is the first Bragg reflection portion, is provided between at least one of the plurality of laser light sources and the wavelength conversion element corresponding to the laser light source, the laser light source for which the VBG element is provided faces the VBG element at a position where a desired frequency exhibits a reflection frequency of the VBG element, the plurality of wavelength conversion elements are quasi-phase matching elements with different polarization inversion periods, and 2 Appeal 2016-004004 Application 13/861,560 the plurality of wavelength conversion elements are physically separated from each other. Appeal Br. 11 (Claims App.) (emphasis added). REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1, 7, 8, and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over US 2010/0220384 Al, pub. Sept. 2, 2010 (hereinafter “Kimura”) in view of US 6,041,070, iss. March 21, 2000 (hereinafter “Koch”), and further in view of JP 2008-276097, pub. Nov. 13, 2008 (hereinafter “Kinoshita”). Final Act. 2. 2. Claims 2—5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kimura in view of Koch and Kinoshita and further in view of US 6,996,140, iss. Feb. 7, 2006 (hereinafter “Waarts”). Id. at 6. 3. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over Kimura in view of Kinoshita and JP 2009-264814, pub. Nov. 12, 2009 (hereinafter “Hirayama”). Id. at 7. DISCUSSION Rejection 1. The Examiner rejected claims 1, 7, 8, and 10 over Kimura in view of Koch and further in view of Kinoshita. Id. at 2. Independent claims 1 and 10 require that “the plurality of wavelength conversion elements are physically separated from each other.” Appeal Br. 11—13 (Claims App.). The Examiner finds that the primary reference, Kimura, teaches a plurality of wavelength conversion elements, but not that such elements be physically separate. Final Act. 2—3. The Examiner further finds that Kinoshita teaches a plurality of wavelength conversion elements 3 Appeal 2016-004004 Application 13/861,560 that are physically separated, id. at 3, and that it would have been obvious to one of ordinary skill in the art to form the device of Kimura with the physically separate wavelength conversion elements of Kinoshita because the physically separate elements were a known alternative, id. at 3^4. Appellant argues that such combination is improper because Kimura teaches away from separate wavelength conversion elements. Appeal Br. 6— 7. Specifically, Appellant argues that the single structure optical element of Kimura has the advantage that it permits the device to “reliably generate the second order harmonics each having the wide wavelength width” even where the components are mispositioned as by manufacturing error. Appeal Br. 7 (citing Kimura 177). Asa result, certain highly precise optical adjustments are rendered unnecessary. Appeal Br. 7. In view of such advantage, Appellant argues for the “apparent necessity of a single structure optical element” in the device taught by Kimura. Id. at 8. The Examiner finds that Kimura does teach that there is a benefit in using a single structure conversion element, but that Kinoshita does not “teach away” from the use of multiple conversion elements. Answer 2—3. The Examiner finds that the single nonlinear optical element structure of Kimura is not “necessary” to the function of the Kimura device as it may still function to produce a plurality of wave length converted beams with multiple nonlinear optical elements. Id. at 3. Rather, the single element and multiple element conversion elements were both alternatives known to those of skill in the art. Id. The Examiner (citing to Kinoshita 17) further finds that the economic benefit associated with the use of multiple conversion elements may be considered as a trade-off for the ease of alignment described in Kimura. Answer 3. 4 Appeal 2016-004004 Application 13/861,560 “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSRInt'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Here, Kinoshita teaches the use of “seven wavelength changing elements 21.” Kinoshita 135. Accordingly, the use of multiple, physically separate wavelength conversion elements would have been familiar to a person of ordinary skill in the art. We are not persuaded that Kimura teaches away from the use of multiple wavelength conversion elements. A reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellant fails to direct us to any portion of Kimura (or Kinoshita) that would discourage a person of ordinary skill from the use of physically separate wavelength conversion elements. Appellant further asserts that the use of a single optical element is an “apparent necessity” to the invention of Kimura. Appeal Br. 8. But the mere fact that a disclosed alternative may be more advantageous in one or more respects compared to another disclosed alternative in the prior art does not necessarily constitute a teaching away as to the less preferred alternative. In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[C]ase law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide [the] motivation [or reason] for the current invention.”). Moreover, Appellant’s assertion is not supported by record evidence and is mere attorney argument. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience 5 Appeal 2016-004004 Application 13/861,560 is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). In view of the foregoing, Appellant has failed to show error in the Examiner’s determination that the claims at issue would have been obvious to a person of ordinary skill in the art. Rejections 2 and 3. Appellant argues that claims 2—5 depend from claim 1 and their rejection should be reversed for the same reason as for the rejection of claim 1. Appeal Br. 9. That argument is not found persuasive for the reasons set forth above. Similarly, Appellant argues that claim 9 includes “the same or similar features as those discussed above with respect to claims 1 and 10” and is improper for “at least the same reasons.” Id. Again, that argument is not found persuasive for the reasons set forth above. Any argument not considered above fails to comply with Board rules requiring that “[t]he arguments shall explain why the examiner erred as to each ground of rejection contested by appellant.” 37 C.F.R. § 41.37(c)(l)(iv). CONCLUSION The rejections of claims 1—5 and 7—10 as obvious are 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 Copy with citationCopy as parenthetical citation