Ex Parte Selbrede

Patent Trial and Appeal BoardSep 25, 2012

11215515 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/215,515 08/30/2005 Martin G. Selbrede UPIXP0112US 4690 93969 7590 09/26/2012 Donald L. Otto (Rambus) Renner, Otto, Boisselle & Sklar, LLP 1621 Euclid Avenue 19th Floor Cleveland, OH 44115 EXAMINER BEDTELYON, JOHN M ART UNIT PAPER NUMBER 2874 MAIL DATE DELIVERY MODE 09/26/2012 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 MARTIN G. SELBREDE ________________ Appeal 2010-003377 Application 11/215,515 Technology Center 2800 ___________________ Before SCOTT R. BOALICK, ERIC B. CHEN, and JOHN A. EVANS, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003377 Application 11/215,515 2 STATEMENT OF THE CASE1 Appellant invokes our review under 35 U.S.C. § 134(a) from the final rejection of claims 1-42. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Exemplary Claim Appealed independent claim 1 is exemplary and reads, with disputed limitations italicized: 1. A noise reduction mechanism comprising: a planar waveguide having a top surface, a bottom surface, and four edge surfaces, wherein each of said four edge surfaces are perpendicular to both said top surface and said bottom surface; a cladding layer disposed onto said top surface; and a light source separated from at least one of said four edge surfaces by a noise reduction layer, wherein said noise reduction layer contacts said at least one of said four edge surfaces, and wherein a material of said noise reduction layer has a refractive index selected to optimize noise reduction. Rejections Claims 1, 13, 25, and 34 are rejected under 35 U.S.C. § 102(e) as being anticipated by Suzuki (US 7,163,331 B2, issued Jan. 16, 2007, filed Aug 15, 2003). (Ans. 4-5). Claims 1, 4, 7, 10-13, 16, 19, 22-25, 27, 29, 31-34, 36, 38, and 40-42 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Steckl (US 7,123,796 B2, issued Oct. 17, 2006, filed Dec. 8, 2003). (Ans. 6-8). 1 Rather than reiterate Appellants’ and the Examiner’s arguments, reference is made to the Appeal Brief, filed May 15, 2009 (App. Br.), the Examiner’s Answer, mailed August 19, 2009 (Ans.), and the Reply Brief, filed October 19, 2009 (Reply Br.) for respective details. Appeal 2010-003377 Application 11/215,515 3 Claims 2, 14, 26, and 35 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Steckl and Mendoza (US 2006/0042322 A1, pub. Mar. 2, 2006, filed July 15, 2005). (Ans. 8-9). Claims 3, 5, 8, 15, 17, and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Steckl and Zhou (US 6,650,822 B1, issued Nov. 18, 2003, filed Jul. 26, 1999). (Ans. 9-10). Claims 6, 9, 18, 21, 28, 30, 37, and 39 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Steckl and Zhang (US 6,946,238 B2, issued Sept. 20, 2005, filed Dec. 24, 2002). (Ans. 10). REJECTIONS OF CLAIMS 1, 13, 25, and 34 CONTENTIONS Appellant contends that Suzuki fails to disclose a noise reduction layer. (App. Br. 9). ANALYSIS Appellant argues: The Examiner's assertion that element 52 reduces noise as it captures light is without any objective support. Except for the unsupported, subjective opinion of the Examiner, the Examiner has failed to show how this limitation is taught in Suzuki. (App. Br. 9). “Noise” in the Specification refers to undesirable escaping of light waves from a planar waveguide due to various factors, primarily caused by manufacturing defects in the planar waveguide. Page 2, lines 1-27. The Examiner’s interpretation essentially replaces the term “noise reduction” with “waveguide,” resulting in this claim limitation reading as “waveguide layer,” because a waveguide's function is to capture light entering it while preventing some light from escaping. In other words, the Examiner is asserting that the function of capturing light and preventing some of this light from escaping Appeal 2010-003377 Application 11/215,515 4 (due to the index of refraction of the waveguide being different than the index of refraction of the adjoining space) is the same as reducing the noise inherent in a planar waveguide. But, capturing light and preventing some of it from escaping is the function referred to as total internal reflection (TIR). The problem recognized by the inventor is that only a planar waveguide manufactured with perfectly parallel and orthogonal sides forming the rectangular solid will exhibit total internal reflection, which is thus a theoretical limit. Since all practical planar waveguides will have an imperfect TIR, noise is inherent in every planar waveguide. Thus, a planar waveguide is inherently capable of restricting X% (which is less than 100%) of light from escaping from its boundaries; the 100 - X% of light that does escape is the “noise.” That noise is inherent in the planar waveguide, and there is no way to reduce this noise level (i.e., no way to reduce the 100-X%) once it has been manufactured. Under the Examiner's interpretation, the inherent function of a waveguide to restrict the escaping of light equates to the reduction of noise. This is incorrect, since this inherent restriction of light from escaping actually equates to the X% of light noted above. Once a waveguide in manufactured, it has an inherent noise percentage due to geometric errors that cannot be reduced. (App. Br. 10). The Examiner answers that Suzuki teaches noise reduction: Wherein a material of said noise reduction layer has a refractive index selected to optimize noise reduction (element 52 reduces noise as it captures light emitted from light source 50 that would otherwise be lost, guides it by total internal reflection and further transmitting that light to element 54. (Ans. 5). Appellant replies: As noted in the specification, light that enters a planar waveguide 104 may exit as noise, rather than be totally internally reflected, if the light strikes a boundary of the waveguide 104 at an angle exceeding the critical angle. See id., page l3, line 20, to page 14, line 28. Noise may be reduced if Appeal 2010-003377 Application 11/215,515 5 the range of angles is restricted to angles less than a critical angle of an interior boundary of the planar waveguide 104. (Reply 2). Appellant defines “noise” as light that leaks from a waveguide, unconstrained by TIR. The Examiner defines “noise” as light that is lost because it is not introduced into the waveguide. In view of the contrasting definitions, Appellant is persuasive that Suzuki does not disclose a “noise reduction layer.” In view thereof, we are persuaded that the Examiner has erred in rejecting claims 1, 13, 25, and 34. REJECTIONS OF CLAIMS 1, 4, 7, 10-13, 16, 19, 22-25, 27, 29, 31-34, 36, 38, and 40-42 CONTENTIONS Appellants contend that Steckl fails to disclose a noise reduction layer. (App. Br. 13). ANALYSIS Appellant argues “nowhere does Steckl mention ‘noise reduction’ or a ‘noise reduction layer’.” (App Br. 13). Appellant argues that the Examiner has re-worded the claim to meet the reference: The Examiner states that element 42 is the noise reduction portion. Claim 1 does not recite a noise reduction portion, rather Claim 1 recites a noise reduction layer that contacts at least one of the four edge surfaces of the planar waveguide. The Examiner changes “layer” to “portion” because Steckl does not show a noise reduction layer 42, rather, 42 is an integral, extruded extension of planar waveguide 12a. [(]Column 10, lines 65-68[)]. Extension 42 integral with waveguide 12a means they are part of a whole. Therefore, it does not make logical sense to assert that two parts of a whole body can “contact” each other. Appeal 2010-003377 Application 11/215,515 6 (App. Br. 13). The Examiner finds Steckl to disclose: A light source (34) separate from at least one of said four edge surfaces by a noise reduction portion (42); and Wherein a material of said noise reduction layer has a refractive index selected to optimize noise reduction (column 10, line 65 through column 11, line 19, portion 42 prevents light from leaking out of the device, thereby reducing noise); (Ans. 6). Appellant replies: However, as appreciated by those of ordinary skill in the art, the index of refraction of the noise reduction layer 111 or 203 remains lower than that of the planar waveguide 104 or 202, or else the noise reduction layer 111 or 203 would fail to “restrict[] the range of admissible angles entering waveguide 202, where the maximum admitted ray angle is less than the critical angle for total internal reflection within planar waveguide 202,” which is needed by the noise reduction layer 111 or 202 to optimize noise reduction. Id., page 15, lines 27- 29. (Reply 5). The Steckl disclosure cited by the Examiner does not relate to regulating the angle of internal reflection by a differential refractive index method, as claimed. Rather Steckl relates to an external reflector method: The short wavelength source 34 may be embedded in an extruded extension 42 of the waveguide 12a, which increases the light extraction efficiency from the short wavelength source. Furthermore, by embedding the short wavelength light source 34 in the extruded extension 42 surrounded by the diffuse reflector 38, light injected into and not satisfying the critical angle requirement within the extruded portion of the waveguide 12a is reflected by the diffuse reflector 38 and, therefore, recycled until it satisfies the critical angle requirement. (Steckl, 10:65-11:7). In view of the Steckl disclosure, we are persuaded by Appellant that Steckl does not disclose a “noise reduction layer.” In view Appeal 2010-003377 Application 11/215,515 7 thereof, we are persuaded that the Examiner as erred in rejecting claims 1, 4, 7, 10-13, 16, 19, 22-25, 27, 29, 31-34, 36, 38, and 40-42. THE REJECTION OF CLAIMS 2, 14, 26, and 35 ANALYSIS Claims 2, 14, 26, and 35 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Steckl in view of Mendoza. (Ans. 8-9). Steckl is cited as teaching the limitations of claims 1, 13, 25, and 34 as discussed above. Mendoza is cited as teaching a cladding lay comprising a sol-gel. (Ans. 9). Appellant traverses Steckl, as discussed above. We are persuaded that Steckl does not teach or suggest a noise reduction layer and Mendoza is not cited as so teaching. Therefore, we do not sustain the rejection of claims 2, 14, 26, and 35. THE REJECTION OF CLAIMS 3, 5, 8, 15, 17, and 20 ANALYSIS Claims 3, 5, 8, 15, 17, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Steckl in view of Zhou. (Ans. 8-9). Steckl is cited as teaching the limitations of claims 1, 13, 25, and 34 as discussed above. Zhou is cited as teaching a cladding lay comprising an aerogel. (Ans. 9-10). Appellant traverses Steckl, as discussed above. We are persuaded that Steckl does not teach or suggest a noise reduction layer and Zhou is not cited as so teaching. Therefore, we do not sustain the rejection of claims 3, 5, 8, 15, 17, and 20. Appeal 2010-003377 Application 11/215,515 8 THE REJECTION OF CLAIMS 6, 9, 18, 21, 28, 30, 37, and 39 ANALYSIS Claims 6, 9, 18, 21, 28, 30, 37, and 39 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Steckl in view of Zhang. (Ans. 10). Steckl is discussed above. Zhang is cited as teaching a core layer comprising an aerogel. (Ans. 10). Appellant traverses Steckl, as discussed above. We are persuaded that Steckl does not teach or suggest a noise reduction layer and Zhang is not cited as so teaching. Therefore, we do not sustain the rejection of claims 6, 9, 18, 21, 28, 30, 37, and 39. ORDER The Examiner’s decision rejecting claims 1-42 is reversed. REVERSED