Appeal NO. 2005-0577
Application No. 09/741,237
would allow one of ordinary skill in the art to understand the
meaning of the words “substantially similar2.” Indeed, the
appellant has not referred to any portion of the specification or
any evidence to define the scope of these words. Accordingly, we
determine that one of ordinary skill in this art would not have
been apprised of the scope of claims 1, 2, and 16. Therefore, we
determine that claims 1, 2, and 16 are indefinite and fail to meet
the requirement of 35 U.S.C. § 112, second paragraph.
II. The 35 U.S.C. § 103(a) rejection with respect to claims 12,
14,15 and 17
With respect to the examiner’s rejection of claims 12, 14,15
and 17, we find ourselves in agreement with appellant insofar as
the examiner has failed to carry the burden of establishing a
prima facie case of obviousness. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). As is apparent
from pages 6, 10 and 11 of the Answer, the examiner appears to
rely on layers (63), (40a), (26a) and (26), or alternatively, only
a layer (26), in figures 10-12 of Allman as the claimed substrate.
The examiner then relies on features (26b) and (68) in figure 12
of Allman as the optical cladding material and the wall
substantially normal to the substrate, respectively. Id.
Additionally, the examiner relies on features (70) and (76) in
figure 14 of Allman as the core material and the angled surface.
2 The specification does not mention an index of refraction
“substantially similar” to the photonic via.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007