Ex Parte OTO

Patent Trial and Appeal Board

Jun 7, 2017

13861560 (P.T.A.B. Jun. 7, 2017)

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
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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
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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.
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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
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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
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