Ex Parte Rosiewicz et al

Patent Trial and Appeal BoardDec 6, 2012

11261261 (P.T.A.B. Dec. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALEX ROSIEWICZ, MICHIO MATSUKI, and NINGHUI ZHU ____________ Appeal 2010-008308 Application 11/261,261 Technology Center 2800 ____________ Before KARL D. EASTHOM, JOSIAH C. COCKS, and MICHAEL R. ZECHER, Administrative Patent Judges. EASTHOM, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to finally reject claims 1-20. No other claims are pending. (See App. Br. 3 (Sept. 25, 2009).) We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-008308 Application 11/261,261 2 STATEMENT OF THE CASE According to Appellants: the invention relates to using known, prior art packages known as TO or MO packages (2:11-16) for optical components. TO and MO packages are generally commercially available packages that are designed and used typically for electrical devices, such as high power transistors (3:17-19). The inventions include using such packages for an optical component, typically by modifying the package to drill a hole and provide a fiber ferrule 18 at a side of the package for holding an optical fiber. (4:1-7; Fig. 1). (App. Br. 3 (citing Spec.).) Claim 1 and the rejections follow: 1. An apparatus comprising: a MO or TO series package having a wall with an opening for coupling to an optical fiber; and an optical device housed within the package. Claims 1-9, 11-17, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as obvious based on Applicant’s admitted prior art (APA) (see Spec. ¶ 4) and Tatoh, U.S. 6,345,917 B2 (Feb. 12, 2002). Claims 10 and 18 stand rejected under 35 U.S.C. § 103(a) as obvious based on APA, Tatoh, and Sekiya, U.S. 2003/0053501 A1 (Mar. 20, 2003). Appeal 2010-008308 Application 11/261,261 3 DICUSSION Appellants state that “[a]ll claims stand or fall together” with claim 1. (See App. Br. 5.) As indicated supra, Appellants readily admit that “MO or TO packages have been known for a long time, at least since the 1980s.” (Reply Br. 1.) The Examiner relies on similar admissions in the Specification. (Ans. 3 (citing Spec. ¶ 4).) That paragraph admits that such packages “have become standard package body styles widely used in semiconductor power module applications, and have undergone continued improvement.” (Spec. ¶ 4.) The Examiner finds that “Tatoh discloses an optical device having a wall with an opening for coupling to an optical fiber. Tatoh shows in fig. 5 that the optical device package is very similar to the MO and TO series packages.” (Ans. 3.) Based on these admissions and findings, the Examiner reasons as follows: [I]t would have been obvious to the ordinary skill in the art at the time the invention was made to modify the well known MO and TO series packages to have a wall with an opening for coupling to an optical fiber as shown in Tatoh’s device for coupling to an optical fiber as shown in Tatoh’s device for the purpose of preventing deviation of the optical axis [see column 4, lines 8-15]. It is clear that this would improve the device. (Ans. 3.) Appellants argue that the Examiner has presented no “teaching suggestion, or motivation (TSM)” or “‘a clear articulation of the reason(s) why the claimed invention would have been obvious.’” (See App. Br. 8 (quoting “the Patent Office Guidelines”).) “[T]here must be some Appeal 2010-008308 Application 11/261,261 4 articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citation omitted). There is no dispute that MO or TO packages were widely used, commercially available, standard electronic device packages. Appellants also do not dispute the Examiner’s finding that Tatoh’s “optical device package is very similar to the[se standard] MO and TO series packages.” (See Ans. 3.) The Examiner relies on these factual underpinnings to support the conclusion of obviousness as the quoted passages supra indicate. The record supports the Examiner’s findings further. The Specification indicates that the TO packages have “[a]n additional benefit” of a “copper base material,” which increases the thermal conductivity of the package. (Spec. ¶ 5.) Tatoh similarly employs “preferably pure copper” (col. 6, ll. 49-50) in a package bottom plate to provide better thermal properties, including heat dissipation and thermal matching to the frame. (See col. 5, ll. 41-58, col. 6, ll. 49-60; Abstract.) Aside from the claimed optical opening, Appellants do not describe any meaningful difference between the known MO or TO packages as set forth in claim 1 and Tatoh’s package represented in Figure 5. The Specification explains that MO or TO packages “can have more than 3 leads” and that a “TO-258 package can have different styles, including different tab styles.” (Spec. ¶ 15.) Tatoh’s Figure 5 depicts leads 4 and tabs 12a and 12b. The TO packages and Tatoh’s packages have a hermetic seal. (Spec. ¶ 15; Tatoh Abstract). Also, according to the Specification, “it should be apparent that other materials and devices can be used” in the TO or MO packages. (See Spec. ¶ 17.) Appeal 2010-008308 Application 11/261,261 5 Using similar packages to hold electronic devices, such as an optical electronic device, and including a hole “for coupling [the optical device] to an optical fiber” (Ans. 3), amounts to a “simple substitution of one known element for another” with predictable benefits. See KSR, 550 U.S. at 417. In other words, the Examiner’s rationale involves a “simple substitution” of a widely known, standard TO or MO electronic device package type for a similar electronic device package. Such a rationale is sufficient to support the conclusion of obviousness. But in addition to that rationale, as the Examiner also implicitly reasons, Tatoh further suggests improving these standard TO or MO packages since a modified TO or MO package would be able to couple optical devices to an optical line, and as an added benefit, without optical axis deviation due to high heating caused during brazing and package formation.1 Contrary to Appellant’s argument that there is no reason to modify an existing TO or MO package because Tatoh discloses a “supposedly superior package . . . with multiple plates with different specific values,” (see App. Br. 8), open-ended apparatus claim 1 also does not preclude adding an additional plate or bottom layer (see Figure 5 of Tatoh) to standard TO or MO packages to thereby “prevent[] deviation of the optical axis.” (Ans. 3.) Moreover, as noted in the discussion supra, the Specification indicates that the standard packages were continually being improved (i.e., altered) and included different materials and styles. 1 (See Tatoh, col. 5, l. 59 to col. 6, l. 14.) A second bottom layer evidently minimizes warping due to thermal stresses between different materials in the frame and first bottom layer created by high temperature brazing during package formation. Appeal 2010-008308 Application 11/261,261 6 Assuming for the sake of argument that claim 1 does preclude an extra bottom layer, the Examiner’s rationale does not necessarily require such an extra layer. Moreover, Appellants’ argument that Tatoh’s packages are only “supposedly superior” implies that skilled artisans would have recognized that a single copper bottom layer existing in standard TO or MO packages would suffice in certain optical applications – especially where Tatoh teaches copper is superior for heat dissipation and useful for optical applications. In any event, Appellants do not maintain that skilled artisans, reading Tatoh, would have been led away from TO or MO packages because they would incur a warped or deviated optical axis or require an additional bottom layer.2 Based on the foregoing discussion, Appellants fail to show error in the Examiner’s conclusion of obviousness of claim 1 and of claims 2-20 which Appellants do not separately argue. DECISION The Examiner’s decision to reject claims 1-20 is 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)(1)(iv). AFFIRMED 2 Skilled artisans also would have recognized that since Tatoh teaches that an additional bottom layer is required to alleviate heating and minimize warping caused by brazing during package formation, the added layer could be removed after the TO or MO package has been formed. (See supra note 1.)