Appeal No. 1997-3303 Page 5
Application No. 08/171,126
grating (17) is a conductive material and is capable of serving as an electrode, particularly in view of the
language found in the specification (page 9, lines 2-7) relating to applying a difference of potential
accross the cladding, and controlling the refractive index by regulation of the voltage bias. Accordingly,
we construe the phrase “electrodes in the shape of a grating” set forth in claim 12 to refer to grating
(17) being capable of serving as an electrode. We further note that claims 10 and 11, both of which
depend from claim 12, each state “wherein the cladding comprises. . . .” We find that claim 12 does
not refer to cladding. Thus, there is a lack of antecedent basis for “cladding” in claims 10 and 11.
Turning to claim 12, the only independent claim in the application, the issue before us is whether
the prior art references to Sakata and Okai suggest the specific steps for fabricating the laser structure
set forth in the claim.
Appellants assert (revised brief [hereinafter: rbrief], page 9) that absent from Sakata is a
disclosure of the concept of the formation of a grating by periodically modulating the index of refraction
rejected all of the claims, under 35 U.S.C. §112(1) on the basis that “nowhere in the specification is it mentioned that
electrodes themselves are patterned into a grating, and that layer 17 comprises electrodes” and on the next page of
the same Office action the examiner suggested that appellant modify the independent claim to include “patterning
said conductive material to form electrodes in the form of a grating” in order to overcome a rejection of the claims
under 35 U.S.C.
§ 112(2). In the subsequent Office action (final rejection, Paper no. 6, mailed April 19, 1995, the examiner repeated
the objection to the specification and once again rejected all of the claims pending in the application under 35 U.S.C.
§ 112(1) on the same grounds as the previous Office action. Appellant subsequently filed amendment C (Paper no. 7,
filed on July 21, 1995) in which appellant attemped to delete the term “electrodes” from claim 12. The examiner
(advisory action, Paper no. 8, mailed August 22, 1995) refused entry of the amendment based upon other reasons,
but noted that the objection to the specification and rejection of all of the pending claims under 35 U.S.C. § 112(1)
was withdrawn, without explanation. Appellants’ arguments regarding the term “electrodes” had not changed from
their previous statements in the record.
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