Desjardins et al.v.Wax et al.

Patent Trial and Appeal Board

Jan 20, 2014

13551348 (P.T.A.B. Jan. 20, 2014)

BoxInterferences@uspto.gov Paper 127
Tel: 571-272-4683 Entered: January 21, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

PATENT TRIAL AND APPEAL BOARD
_______________

ADRIENE E. DESJARDINS, BENJAMIN J. VAKOC,
GUILLERMO J. TEARNEY, AND BRETT EUGENE BOUMA
Junior Party
(U.S. Patent 7,982,879),

v.

ADAM WAX AND JOHN W. PYHTILA
Senior Party
(U.S. Patent Application 13/551,348).
______________

Patent Interference No. 105,915 (RES)
(Technology Center 2800)
______________

Before RICHARD E. SCHAFER, DEBORAH KATZ and
JOHN G. NEW, Administrative Patent Judges.
SCHAFER, Administrative Patent Judge.

Judgment - Motions - 37 CFR § 41.127 1
The decision on interlocutory motions (Paper 125) held that the subject 2
matter of both parties’ claims was unpatentable over prior art. As neither party has 3
claims directed to patentable subject matter, it is not possible to formulate a count 4
representing the common patentable subject matter claimed. Therefore, there is no 5
2

basis to proceed to a priority phase of the interference and entry of judgment 1
against both parties is appropriate. Accordingly, it is: 2
ORDERED that Junior Party Adriene E. Desjardins, Benjamin J. Vakoc, 3
Guillermo J. Tearney, and Brett Eugene Bouma and their assignee The General 4
Hospital Corporation are not entitled to a patent including the subject matter of 5
Claims 1-38 of Patent 7,982,879; 6
FURTHER ORDERED that Claims 1-38 of Patent 7,982,879 are cancelled 7
(35 U.S.C. § 135(a)); 8
FURTHER ORDERED that Senior Party Adam Wax and John W. Pyhtila, 9
and their assignee Duke University, are not entitled to a patent including the 10
subject matter of Claims 1-16 of Application 13/551,348; 11
FURTHER ORDERED that Claims 1-16 of Application 13/551,348 are 12
finally refused (35 U.S.C. § 135(a)); 13
FURTHER ORDERED that a copy of this judgment and the decision on 14
motions (Paper 125) be placed in each of the administrative records of Patent 15
7,982,879 and Application 13/551,348. 16

cc (by electronic transmission):
Counsel for Junior Party Desjardins:

Paul D. Ackerman
Gary Abelev
Jennifer Nguyen
Dorsey & Whitney, LLP
Ackerman.paul@dorsey.com
Ablev.gary@dorsey.com
Nguyen.jennifer@dorsey.com
Counsel for Senior Party Wax:

Brenton R. Babcock
Steven P. Ruden
Jared C. Bunker
Knobbe, Martens, Olson & Bear,
LLP
BoxWax@knobbe.com

BoxInterferences@uspto.gov Paper 125
Tel: 571-272-4683 Entered: January 21, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

PATENT TRIAL AND APPEAL BOARD
_______________

ADRIENE E. DESJARDINS, BENJAMIN J. VAKOC,
GUILLERMO J. TEARNEY, AND BRETT EUGENE BOUMA
Junior Party
(US Patent 7,982,879),

v.

ADAM WAX AND JOHN W. PYHTILA
Senior Party
(US Patent Application 13/551,348).
______________

Patent Interference No. 105,915 (RES)
(Technology Center 2800)
______________

Before RICHARD E. SCHAFER, DEBORAH KATZ and
JOHN G. NEW, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

Decision - Interlocutory Motions - 37 CFR § 41.125(b)
This interference is between Desjardins’ Patent 7,982,879 and Wax’s 1
Application 13/551,348. The real parties in interest of the patent are The General 2
Hospital Corporation, as owner, and Ninepoint Medical, Inc. as an exclusive 3
licensee of certain rights. Paper 4, p. 2. The real parties in interest of the 4
Interference 105,915
2

application are Duke University by assignment from the inventors and 1
Oncoscope, Inc. as exclusive licensee. Paper 11, p. 1. The interference was 2
requested by Wax who presented claims copied from Desjardins’ patent when the 3
involved application was filed on July 17, 2012. Application 13/551,348, 4
“Declaration of Copied Claims” (Miscellaneous Incoming Letter) filed 5
July 17, 2012. 6
I. The Motions 7
Six motions are pending before us: 8
1. Desjardins Substantive Motion 1 attacking Wax’s accorded benefit 9
(Paper 31); 10
2. Desjardins Substantive Motion 2 asserting that Wax’s claims are 11
unpatentable under 35 U.S.C. § 112, first paragraph for lacking an enabling 12
disclosure (Paper 32); 13
3. Wax Substantive Motion 1 asserting that Desjardins’ involved claims are 14
unpatentable over certain prior art (Paper 23); 15
4. Wax Substantive Motion 2 to designate Desjardins’ Claims 4-6, 10-18, 16
31-34 and 36-38 as corresponding to Count 1 and designate Claims 23-25 as 17
corresponding to Count 2 (Paper 24); 18
5. Wax Contingent Substantive Motion 3 (contingent on the granting of 19
Wax Substantive Motion 2) asserting that Desjardins Claims 4-6, 10-18, 23-25, 31-20
34 and 36-38 are unpatentable over prior art (Paper 25); and 21
6. Wax’s Miscellaneous Motion 4 to exclude Desjardins’ Exhibits 2020-26 22
(Paper 91). 23
II. Summary of Decisions 24
We grant Wax’s Substantive Motion 1 to designate Desjardins Claims 4-6, 25
10-18, 23-25, 31-34 and 36-38 as corresponding to the counts. We also grant 26
Wax’s Substantive Motions 2 and 3 and hold that Desjardins’ Claims 1-38 are 27
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unpatentable over prior art. We deny Desjardins Substantive Motions 1 and 2. We 1
dismiss as moot Wax’s Miscellaneous Motion 4. Lastly, we hold that Wax did not 2
adequately rebut the presumption of 37 C.F.R. § 207(c) that the subject matter of 3
Wax Claims 1-16 is unpatentable in view of the prior art that rendered Desjardins’ 4
claims unpatentable. 5
In light of the above decisions, this interference will be redeclared and a 6
judgment of unpatentability entered against both parties’ claimed subject matter. 7
III. The Parties’ Subject Matter 8
The parties’ invention is directed to a method and apparatus for “detecting 9
signals.” The invention uses interferometry to obtain signals representing 10
information about a sample. Interferometry is a technique by which separate light 11
beams are superimposed to form an interference pattern. In the invention, a 12
reference beam, and a beam that has interacted with the sample to be analyzed, are 13
superimposed. The resulting interference pattern is captured on a detector. Signals 14
from the detector may be mathematically manipulated to obtain and display useful 15
information. The signals must be associated with information related to different 16
depths within a sample of material. While the parties’ claims do not recite any 17
specific use beyond determining signals related to information on different depths 18
in a sample, the respective specifications say that the apparatus and method may be 19
used in interferometric systems including “angle-resolved [F]ourier-domain optical 20
coherence tomography” and “angle resolved low coherence interferometry (or 21
[sic]).” Exs. 2001 and 2003. 22
Two counts represent the parties’ subject matter: 23
Count 1: Claim 9 of the Desjardins patent or Claim 7 of the Wax 24
application. 25
Count 2: Claim 28 of the Desjardins patent or Claim 15 of the Wax 26
application 27
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Desjardins’ Claims 9 and 28, which are identical to Wax’s Claims 7 and 15, 1
respectively, are reproduced below: 2
9. A method for detecting signals, comprising: 3
[1] receiving at least one first electro-magnetic radiation; 4
[2] forwarding at least one second electro-magnetic radiation 5
within a solid angle to a sample, 6
wherein the at least one second electro-magnetic 7
radiation is associated with the at least one first 8
electro-magnetic radiation; 9
[3] receiving a plurality of third electro-magnetic radiations 10
from the sample which is associated with the at least one 11
second electro-magnetic radiation, 12
wherein at least one portion of the third electro-magnetic 13
radiations is provided outside a periphery of the 14
solid angle; 15
[4] simultaneously detecting the signals which are 16
(i) provided along optical axes associated therewith that 17
are different from one another, and 18
(ii) associated with each of the third electro-magnetic 19
radiations, 20
wherein the signals are associated with information for 21
the at least one sample at a plurality of depths 22
thereof, and 23
[5] using a computer arrangement, determining the depths using 24
the at least one portion of the third electro-magnetic 25
radiations. 26
28. A method for detecting signals, comprising: 27
[1] receiving at least one first electro-magnetic radiation; 28
[2] forwarding at least one second electro-magnetic radiation within a 29
solid angle to a sample, wherein the at least one second electro-30
magnetic radiation is associated with the at least one first 31
electro-magnetic radiation; 32
[3] simultaneously receiving at least two of a plurality of third electro-33
magnetic radiations from the sample which is associated with 34
the at least one second electro-magnetic radiation, 35
wherein at least one portion of the third electro-magnetic 36
radiations is provided outside a periphery of the solid 37
angle; 38
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[4] simultaneously detecting an interference between the at least two 1
of the third radiations and at least one fourth radiation 2
associated with the at least one first radiation, 3
wherein the third radiations are provided along optical axes 4
associated therewith that are different from one another; 5
and 6
[5] using a computer arrangement, obtaining information associated 7
with the sample as a function of at least one depth within the 8
sample based on the interference. 9
Desjardins Clean Copy of Claims, Paper 5, pp. 5-6 and 10-11 (indentation, 10
bracketed numerals and emphasis added). The invention will be discussed in 11
greater detail below. 12
IV. Wax Substantive Motion 1 13
Wax contends that Desjardins Claims 1-3, 7-9, 19-22, 26-30, and 35 are 14
unpatentable under 35 U.S.C. § 102(b) over the Wax publication (Ex. 1003). 15
Paper 23, p. 11, ll. 3-7. Desjardins opposes, arguing that the Wax publication 16
teaches a non-focused source (a collimated pencil beam) to illuminate the sample 17
while the claims require a focused source. Paper 63, p. 1, ll. 8-10. Desjardins 18
argues that the requirement for a focused source flows from the phrase “solid 19
angle” as used in two limitations present in Desjardins claims: (1) “forwarding at 20
least one second electro-magnetic radiation within a solid angle to a sample” and 21
(2) “at least a portion of the third electro-magnetic radiations is provided outside a 22
periphery of the solid angle”. Paper 63, p. 1, ll. .13-15 (emphasis added). Wax 23
replies that the Desjardins argument fails to give the claims, in particular the 24
phrase “solid angle,” their broadest reasonable interpretation. Paper 73, p. 2, ll. 8-25
15. In Wax’s view the phrase “solid angle” as used in Desjardins’ claims does not 26
require that the beam be focused or even to converge. Paper 73, p. 3, ll. 7-12. 27
Wax’s Claim 9 is representative and was reproduced above. 28
Interference 105,915
6

The anticipation questions turns on whether the phrase “solid angle” as used 1
in Desjardins’ claims excludes the “collimated pencil beam” described in the Wax 2
publication. 3
Neither party has directed us to an express definition of a solid angle in 4
Desjardins’ disclosure. Our review of Desjardins’ disclosure fails to reveal an 5
express definition . It is not immediately apparent from the context in which that 6
phrase is used that a meaning different than the ordinary meaning is intended. See 7
Ex. 1002, Abstract; Col. 2, ll. 38-46; Col. 3, ll. 40-50; Col. 4, ll. 29-41. 8
Both Wax and Desjardins proffer evidence as to the phrase’s meaning. 9
Wax’s expert, Dr. Thomas E. Milner, testifies that a solid angle is the three 10
dimensional analog of a planar angle. Ex. 1009, ¶ 30. Desjardins’ expert, Dr. 11
Albert Rollins, similarly testifies. Ex. 2005, ¶ 10. The magnitude of a planar angle 12
θ in radians is given by the formula θ = s/r. “r” is the radius of a circle centered on 13
the vertex of the angle and “s” is the length of the portion of the circumference 14
subtended by the angle. Ex. 1009, ¶ 33. A representation of planar angle and the 15
formula for θ is shown in Figure 1 (Ex. 1009, ¶ 32): 16
Figure 1 depicts a planar angle and the 17
Interference 105,915
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determination of the magnitude of the angle θ in radians. Ex. 1009, ¶ 32. 1
The value of θ in radians (and in degrees) indicates how much and how quickly the 2
sides of the angle diverge or converge. 3
The magnitude of a solid angle Ω in steradians is given by an analogous 4
formula, Ω = A/r
2
. “r” is the radius of a sphere centered at the vertex of the solid 5
angle and “A” is the area of the sphere subtended by the solid angle. Ex. 1009, 6
¶ 32. Dr. Rollins proffers essentially the same definition. Ex. 2005, ¶ 10; 7
Ex. 2013. The value of Ω in steradians indicates how much and how quickly the 8
sides of the solid angle diverge or converge. Dr. Rollins also testifies that a “‘solid 9
angle’ is also defined as formed by ‘all rays joining a point to form a closed 10
curve’”. Ex. 2005, ¶ 10; Exs. 2008 and 2013. A representation of a solid angle 11
and the formula for Ω is shown in Figure 2: 12
13
Figure 2 depicts a solid angle and the determination of 14
the magnitude of the solid angle Ω in steradians. 15
Ex. 1009, ¶ 32 (annotated with additional arrows). 16
While proffering similar definitions, the experts disagree on how one skilled 17
in the art would have interpreted “solid angle” as used in Desjardins’ claims. 18
Interference 105,915
8

To meet the claim limitation requiring “forwarding a second electro-1
magnetic radiation within a solid angle to a sample,” Wax specifically relies on the 2
teaching in the Wax publication (Ex. 1003, p. 6180) that 3
[l]enses L3 and L4 are arranged to produce a collimated pencil 4
beam incident on the sample. By displacing lens L4 vertically 5
relative to lens L3, the input beam is made to strike the sample 6
at an angle of 0.10 radians relative to the optical axis. 7
Dr. Milner testifies that the collimated pencil beam described in the Wax 8
publication “means that the light from the sample path is forwarded to the sample 9
within a solid angle.” Ex. 1006, ¶ 95, ll. 11-13. Dr. Milner further testifies that as 10
used by those working in the field, the phrase “solid angle” applies to collimated 11
light beams as well as focused beams (Ex. 1009, ¶ 41) and “that skilled artisans 12
understood a collimated beam to have a solid angle or to be within a solid angle” 13
(Ex. 1009, ¶ 48). In support of his testimony, he directs us to several prior art 14
publications where a “collimated beam” is described as having or being within a 15
solid angle. Ex. 1009, ¶¶ 42-47. Those publications are consistent with his 16
testimony. For example, Ex. 1014 discloses an optical system in which a 17
collimated beam incident onto the sample is characterized as having a solid angle 18
dω0. Ex. 1014, p. 300, and Fig. 1. The authors also note that the collimated beam 19
has a divergence of about 1.27º. Id. at 299. 20
Desjardins argues that “solid angle” as used in the claims requires a focused 21
beam and a collimated pencil beam is not a focused beam. Paper 63, p. 1, ll. 8-10. 22
Desjardins relies on their Figure 7 and corresponding written description in their 23
specification as supporting this interpretation: 24
As disclosed in the ‘879 Patent, a solid angle is formed by the 25
focused illumination on the sample 780. The solid angle is 26
defined by the width of [the] sample beam incident on lens 775 27
and the one focal length spacing of the lens 775 from the 28
sample 780 that results in the rays converging on the sample. 29
Interference 105,915
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This cone of illumination has a “solid angle.” The apex of the 1
solid angle of the incident beam is the focal point on 2
sample 780 and the solid angle subtends an area on the surface 3
of the lens 775, the extent of which are defined by the width of 4
the collimated beam incident on lens 775 from lens 730. 5
Paper 63, p. 7, ll. 1-8 (Emphasis added, citations to the record omitted). Desjardins 6
supports the argument with Dr. Rollins’ testimony. He testifies that “a ‘solid 7
angle’ describes the cone of the focused illumination on the sample from lens 775 . 8
. . .” Ex. 2005, ¶ 15. Dr. Rollins further testifies that the phrase as used in 9
Desjardins’ claims is defined in terms of illumination that is focused on the 10
sample. Ex. 2005, ¶ 23. 11
We are persuaded that the phrase “solid angle” is not limited to 12
converging or focused beams and that a collimated pencil beam of the type 13
described in the Wax publication is not excluded by Desjardins’ claims. 14
There is nothing implicit in the phrase “solid angle” which mandates either 15
convergence or divergence. Whether a solid angle converges or diverges is 16
merely a matter of perspective. Referring to Figure 2 above, the solid angle 17
diverges in the direction away from the vertex and converges in the direction 18
towards the vertex. Further, as demonstrated by the prior art cited by 19
Dr. Milner (Ex. 1009, ¶ 124), we find that the phrase “solid angle” is 20
understood by those skilled in the art to apply to collimated beams as well as 21
focused or diverging beams.
1
We also note, based upon Figure 2 above, as a 22
solid angle becomes smaller the amount of convergence or divergence 23
decreases. See Ex. 1009, ¶ 30. Accordingly, a solid angle of 0 steradians 24
would conceptually represent a beam having no convergence or divergence, 25

1
On this point we credit Dr. Milner’s testimony over that of Dr. Rollins.
Dr. Milner’s testimony is supported by evidence showing how persons skilled in
the art actually use the phrase. (E.g., Ex. 1009, ¶¶ 42-48.) Dr. Rollins testimony
does not direct us to a factual basis in support.
Interference 105,915
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i.e., a parallel or perfectly collimated beam. See Ex. 1009, p. 19, ¶ 44, ll. 14-1
16. 2
While we do not disagree that Desjardins’ Figure 7 and the corresponding 3
descriptive text in their written description would convey the use of a focused 4
beam having a converging solid angle, we disagree that one having ordinary skill 5
in the art would understand that that disclosure limits “solid angle” to a focused 6
beam. Indeed, Figure 7 is said to be “a schematic diagram of an exemplary 7
embodiment of an angle-resolved FD-OCT system according to the present 8
invention . . . .” Ex. 1002, Col. 5, ll. 7-11 (emphasis added). A description of an 9
invention is not limited to its specific described embodiments. Accord In re 10
Fracalossi, 681 F.2d 792, 794 n.1 (CCPA1982); In re Chapman, 357 F.2d 418, 11
424 (CCPA 1966) (a reference is not limited to the disclosure of specific working 12
examples). Additionally on this point, Desjardins’ written description notes the 13
non-limiting nature of the described embodiments: 14
The foregoing merely illustrates the principles of the invention. 15
Various modifications and alterations to the described 16
embodiments will be apparent to those skilled in the art in view 17
of the teachings herein. . . . It will thus be appreciated that 18
those skilled in the art will be able to devise numerous systems, 19
arrangements and methods which, although not explicitly 20
shown or described herein, embody the principles of the 21
invention and are thus within the spirit and scope of the present 22
invention. 23
Ex. 1002, Col. 11, 48-65. We also note that if Desjardins considered the invention 24
to be limited to a focused beam, it would have been a simple matter to have 25
included express language to that effect in the claims. 26
We find the Wax publication describes “forwarding a second electro-27
magnetic radiation within a solid angle to a sample” as that phrase is used in 28
Desjardins Claims 1-3, 7-9, 19-22, 26-30, and 35. 29
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With respect to the limitation reciting“at least a portion of the third electro-1
magnetic radiations is provided outside a periphery of the solid angle,” Wax argues 2
that the limitation is taught by the Wax publication (Ex. 1003). Specifically Wax 3
relies on Figure 1b and the teaching that the light from the collimated pencil beam 4
scattered by the sample is collected by lens L4. Paper 23, p. 12, ll. 11-26. Figure 5
1b from the Wax publication is reproduced below as Figure 3: 6

Figure 3 reproduces Figure 1(b) of the Wax publication 7
(Ex. 1003) showing the beam scattered from the sample as a 8
result of irradiation by the collimated pencil beam (not shown). 9
Desjardins concedes that the system taught by the Wax publication “may 10
receive scattered light from a region outside the beam width of the collimated 11
illumination Beam . . . .” Paper 63, p. 11, ll. 17-20. However, Desjardins goes on 12
to argue that the limitation is not met because the source beam does not define a 13
“solid angle,” and therefore the scattered light cannot be outside the “periphery of 14
the solid angle.” Id. at 18-20 15
We held above that a “collimated pencil beam” is not excluded by the “solid 16
angle” limitation. Thus, we find that the scattered light taught by the Wax 17
publication is outside the periphery of the solid angle as required by Desjardins’ 18
claims. 19
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Desjardins has not relied on any other limitations to distinguish the subject 1
matter of Claims 1-3, 7-9, 19-22, 26-30, and 35 from the Wax publication. 2
Because Wax’s position with respect to the other limitations is facially plausible 3
and unchallenged by Desjardins, we find that the subject matter of Claims 1-3, 7-9, 4
19-22, 26-30, and 35 is anticipated by the Wax publication. See In re van Geuns, 5
988 F.2d 1181, 1186 (Fed. Cir. 1993). 6
V. Desjardins’ Substantive Motion 2 7
Desjardins was authorized to file a motion asserting that Wax’s claims 1-16 8
were not supported by an enabling disclosure as required by 35 U.S.C. § 112. 9
Paper 19, pp. 5-6. 10
Wax copied Claims 1-16 from Desjardins patent. All the claims require the 11
following limitations: 12
1. forward [or forwarding] at least one second electro-magnetic radiation 13
within a solid angle to a sample and 14
2. wherein at least one portion of the third electro-magnetic radiations is 15
provided outside a periphery of the solid angle. 16
Desjardins argues that neither concept is enabled by Wax’s specification. 17
Specifically, they argue that the specific language is not found in the specification 18
of Wax’s involved application and it would require an undue amount of 19
experimentation for one skilled in the art to make and use a system including those 20
limitations. Desjardins’ position rests principally on the meaning of the phrase 21
“solid angle.” Desjardins contends that the phrase is well understood in the art and 22
may be considered a three dimensional angular volume defined by the intersection 23
of a cone of rays emanating from a point and the surface of a sphere centered on 24
that point. Paper 32, pp. 1-5. Although not depicted in Desjardins’ application 25
drawings, the radiation within a solid angle to the sample is said to be defined by 26
the beam focused on the sample 780 by lens 775. It is schematically depicted as 27
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the inner angle shown by the dashed lines in the annotated version of Desjardins’ 1
Figure 7 taken from Desjardins’ Motion 2 and reproduced below. Paper 32, p. 5. 2

Fig. 4 is a version of Desjardins’ Figure 7 annotated to depict 3
a “solid angle” according to Desjardins’ argument. 4
The portion of the radiations outside the periphery of the solid angle is said to be 5
depicted by the outer angle formed by the radiation scattered from the sample 780 6
and returning back through the lens 775. According to Desjardins, this concept is 7
not enabled by Wax’s specification. Wax’s specification is said to be directed to “a 8
fundamentally different optical system” that does not use a focused beam forming 9
a solid angle. Paper 32, p. 8, ll. 3-5. Desjardins argues that Wax’s disclosed 10
system uses “a collimated beam - as opposed to a focused beam” that does not 11
define a solid angle. Paper 32, p. 8, ll. 5-7. With a collimated beam, argues 12
Desjardins, the rays of light striking the sample are substantially parallel, rather 13
than focused to a point. Paper 32, p. 9, ll. 1-2. Since no solid angle is taught, there 14
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can be no portion of the radiation that is outside the periphery of that solid angle. 1
Paper 32, p. 9, ll. 7-11. Desjardins’ argument concludes: 2
[E]ach embodiment disclosed in the specification of the 3
‘348 Application uses a collimated light source to illuminate an 4
area on the sample. There is no disclosure in the 5
‘348 Application that would teach a person of ordinary skill in 6
the art to discard the optical system which illuminates an area 7
on the sample that is repeatedly described by Wax and instead 8
use a focused beam on a single point on the sample. Indeed, 9
such a change would be a fundamental change in the operation 10
of the Wax system. Absent even the slightest suggestion in 11
Wax for use of a focused illumination source on a single point, 12
it would certainly take “undue experimentation” for a person 13
of ordinary skill in the art reading the specification of the 14
‘348 Application to arrive at the subject matter claimed in the 15
‘348 Application. 16
Paper 32, p. 12, ll. 14-23 (emphasis original). 17
Desjardins supports this argument with Dr. Rollins’ declaration testimony. 18
Ex. 2005. His testimony tracks Desjardins’ arguments. The crux of his testimony 19
is his opinion that the Wax specification does not describe a device that is capable 20
of “forwarding at least one second electro-magnetic radiation within a solid angle 21
to a sample.” Ex. 2005, p. 8, ¶ 22. Dr. Rollins also opines that because the 22
systems disclosed in the Wax specification does not use a focused beam incident 23
on the sample to form a solid angle Wax does not disclose a device that is 24
“receiving a plurality of third electromagnetic radiations from the sample wherein 25
at least one portion of the third electromagnetic radiations is provided outside a 26
periphery of the solid angle.” Ex. 2005, ¶ 23. 27
The movant bears the burden of proof. 37 C.F.R. § 41.121(b). Thus, 28
Desjardins has the burden of presenting a sufficient factual basis to support the 29
legal conclusion that undue experimentation would be necessary to make and use 30
the invention of Wax’s Claim 1-16. Determining whether a written description 31
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provides an enabling disclosure requires consideration of not only the express 1
teachings of the written description, but what would be known to the person of 2
ordinary skill in the art. Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., 3
Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999) (Whether the subject matter of the 4
claims is enabling requires consideration of “that which is disclosed in the 5
specification plus the scope of what would be known to one of ordinary skill in the 6
art without undue experimentation.”) Thus, the enablement requirement may be 7
satisfied if, given what the person skilled in the art already knows, the specification 8
teaches those in the art enough that they can make and use the invention without 9
undue experimentation. Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 10
1313, 1334, (Fed. Cir. 2003); Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 11
1361, 1365 (Fed. Cir. 1997); In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991). The 12
case law identifies a number of considerations, the “Wands factors,” that enter in 13
the determination. The Wands factors include: (1) the quantity of experimentation 14
necessary, (2) the amount of direction or guidance presented, (3) the presence or 15
absence of working examples, (4) the nature of the invention, (5) the state of the 16
prior art, (6) the relative skill of those in the art, (7) the predictability or 17
unpredictability of the art, and (8) the breadth of the claims. Enzo Biochem Inc. v. 18
Calgene Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999); In re Wands, 858 F.2d 731, 19
737 (Fed. Cir. 1988). It is not necessary, however, to review all of the Wands 20
factors in determining whether a disclosure is enabling. Amgen, Inc. v. Chugai 21
Pharm .Co., Ltd., 927 F.2d 1200, 1213 (Fed. Cir. 1991) (noting that the Wands 22
factors “are illustrative, not mandatory. What is relevant depends on the facts.”). 23
Desjardins’ Motion 2 does not direct us to evidence establishing the 24
knowledge and skill possessed by the person skilled in the art. Nor does the 25
motion address or direct us to evidence related to any of the Wands factors. 26
Without at least some such evidence, it is not possible for us to evaluate what the 27
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person skilled in the art knows or doesn’t know and reach a reasoned conclusion as 1
to whether undue experimentation would be required. The failure of the disclosure 2
alone to describe the exact subject matter of the invention does not mandate that 3
the person skilled in the art would not be enabled to make and use that subject 4
matter without undue experimentation. Vas Cath, 935 F.2d at 1561. Desjardins 5
failed to meet its burden to establish that one skilled in the art would not have been 6
able to make and use the subject matter of Wax’s claims without undue 7
experimentation. 8
Dejardins’ Motion 2 is denied. 9
VI. Wax Substantive Motion 2 10
This interference was declared with two counts. Count 1 is the logical 11
disjunction of Desjardins’ Claim 9 and Wax’s identically worded Claim 7. 12
Count 2 is the logical disjunction of Desjardins’ Claim 28 and Wax’s identically 13
worded Claim 15. Desjardin’s Claim 9 and 28 are reproduced above. 14
Desjardins’ Claims 1-3, 7-9 and 29-30 and Wax Claims 1-8 were designated 15
as corresponding to Count 1. Desjardins’ Claims 19-22, 26-28 and 35 were 16
designated to correspond to Count 2. Desjardins’ Claims 4-6, 10-18, 23-25, 31-34 17
and 36-38 were designated as not corresponding to either count. Paper 1, pp. 5-7. 18
Wax Motion 2 strives to have some of Desjardins’ non-corresponding claims 19
designated as corresponding to Count 1 and the remainder designated as 20
corresponding to Count 2. 21
Wax generally argues that the differences between the counts and the subject 22
matter of the Desjardins non-corresponded claims are common features known to 23
the person having ordinary skill in the art. Paper 24, p. 11, ll. 13-18. Specifically, 24
relying upon the Schmitt (Ex. 1004), Choma (Ex. 1005) and Wax (Ex. 1003) 25
publications and the declaration testimony of Dr. Milner, Wax argues that the 26
subject matter of the non-corresponding claims present obvious variations of the 27
Interference 105,915
17

methods described by the counts. Paper 24, p. 1, ll. 16-20. Dejardins’ opposition 1
does not argue that Wax’s general proposition is incorrect. However, Desjardins’ 2
argues that Wax’s characterizations of those references are incorrect, incomplete or 3
misleading.
2
Paper 64, pp. 2-4. 4
Count 1 5
Wax argues that Desjardins’ Claims 4-6, 10-18, 31-34, and 36-38 should be 6
designated as corresponding to Count 1. 7
Claims 4-6 8
Desjardins’ Claim 4 depends directly from Claim 1. Paper 5, p. 1. 9
Desjardin’s Claim 1 was designated as corresponding to the count in the notice of 10
declaration. Claim 1 is essentially the apparatus form of Desjardins’ method 11
Claim 9. Claim 9 is one alternative of Count 1. 12
Wax acknowledges that the difference between Count 1 and Desjardins’ 13
Claim 4 resides in the limitation “a third arrangement capable of generating at least 14
one image of at least one portion of the sample as a function of the signals.” Paper 15
24, p. 13. Desjardins does not contest that this limitation is a difference or argue 16
any additional differences. Paper 64, p. 4, l. 8 – p. 5, l. 16. 17
The Schmitt and Wax publications show that it is known in the art to display 18
information obtained from interferometric analysis of a sample as an image. Thus, 19
Schmitt shows the production of images from interferometric data obtained from 20
optical coherence tomography (OCT). Ex. 1004, Fig. 3 and 6. The Wax 21

2
Desjardins also argues that Wax’s “Statement of Material Facts” is
insufficient to state a claim on which relief can be granted. Paper 64, pp. 1-2.
Desjardins misapprehends the purpose of this statement. It is not a pleading in the
sense of the Federal Rules of Civil Procedure. The purpose of the requirement is
to narrow issues and assist the Board in identifying the factual matters actually in
dispute in the motion. Notwithstanding the requirement for a separate statement, it
is the body of the motion that must identify the facts and supporting evidence and
present the argument necessary to grant the relief requested.
Interference 105,915
18

publication also shows that it is known to display interferometric data as an image. 1
Ex. 1003, Fig. 2(d) and descriptive text at p. 6181. 2
Relying on the testimony of Dr. Albert Rollins, Desjardins argues that 3
Figures 2(a) - 2(d) of the Wax publication would not be understood by a person 4
having ordinary skill in the art to be considered an “image” as used in Desjardin’s 5
claims. Ex. 2016, ¶ 15. He also testifies that in general terms an image represents 6
a two dimensional representation of a sample in space. Id. 7
We do not credit his testimony on this point because it is unsupported by any 8
factual evidence. See Upjohn Co. v. MOVA Pharm. Corp., 225 F.3d 1306, 1311 9
(Fed. Cir. 2000); Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. 10
Cir. 1997) (the fact finder is not required to credit the unsupported assertions of an 11
expert witness). Additionally, we have not been directed to, and our review of the 12
Desjardins’ specification does not reveal, anything that indicates that the display of 13
information of the type depicted in Figures 2(a)-2(d) of the Wax publication would 14
not be considered an “image” by those working in the art. 15
Desjardins additionally argues that the specific system taught by the Wax 16
publication is not suitable for imaging. Paper 64, p. 5, ll. 3-8. Desjardins again 17
relies on Dr. Rollins’ testimony. Dr. Rollins testifies that the device taught in the 18
Wax publication uses a fundamentally different optical system from the device 19
taught in Desjardins’ patent. Ex. 2016, ¶ 17. Dr. Rollins further testifies that the 20
specific embodiment disclosed in the Wax patent “does not provide adequate 21
horizontal spatial resolution that is suitable for imaging applications as understood 22
in the field of OCT imaging.” Ex. 2016, ¶ 17 (emphasis added). 23
Dr. Rollins’ testimony is not persuasive for two reasons. First, claim 24
correspondence is determined by comparing the subject matter of the count to the 25
claims, not to an embodiment in a party’s specification. “A claim corresponds to a 26
count if the subject matter of the count, treated as prior art to the claimed subject 27
Interference 105,915
19

matter, would have anticipated or rendered obvious the subject matter of the 1
claim.” 37 CFR § 41.207(b)(2). Dr. Rollins bases his testimony on a specific 2
embodiment disclosed in Wax’s specification and the Wax publication rather than 3
the subject matter of the count. Ex. 2016, ¶ 17. It is the subject matter of the 4
Count that is considered “prior art” with respect to the claim and is the basis for 5
assessing differences for the obviousness evaluation when determining claim 6
correspondence. 37 C.F.R. § 41.207(b)(2).
3
7
Second, neither the count nor Claim 4 is limited “to the field of OCT 8
imaging.” Paper 5, pp. 5-6. Claim 4 is simply directed generically to an apparatus 9
for detecting signals without otherwise characterizing its application. Paper 5, pp. 10
4-5. We have not been directed to evidence or argument identifying language in 11
Count 1 or in Claim 4 that would limit either to OCT. During an interference 12
counts and claims are given their broadest reasonable interpretation. Genentech, 13
Inc. v. Chiron Corp., 112 F.3d 495, 500 (Fed. Cir. 1997) (counts); Yorkey v. Diab, 14
605 F.3d 1297, 1300-1301 (Fed. Cir. 2010) (claims). Count 1 is directed to a 15
generic method for detecting signals without limitation to a particular application. 16
Indeed, Count 1 is generic to a variety of applications including OCT and angle 17
resolved low coherency interferometry. 18
Based on the arguments and the record developed before us, we are 19
persuaded that the subject matter of Claim 4 would have been obvious from the 20
subject matter of Count 1. The benefits of displaying the data or information in the 21
form of an image would have been understood and readily apparent to a person 22

3
With respect to obviousness for claim correspondence, additional
references and other evidence may be relied upon to establish the obviousness of
the differences between the count and the claims. The determination is analogous
to the determination of obviousness-type double patenting. As with double
patenting, the content of a party’s specification is only relevant to illuminate the
meaning of count and claim terms.
Interference 105,915
20

having ordinary skill in the art. Adding an arrangement for or a step of displaying 1
an image to the subject matter of Count 1 would have been obvious. 2
Claim 4 corresponds to Count 1. 3
Claims 5-6 4
Claim 5 depends from Claim 4 and Claim 6 depends from Claim 5. Wax 5
argues that the subject matter of these claims also would have been obvious from 6
Count 1. Paper 24, p. 13. 7
Claim 5 additionally requires that a “third arrangement to provide data 8
associated with [a number of] properties [including] angular back-scattering 9
properties or elastic properties of at least one portion of the sample as a function of 10
the signals.” Claim 6 adds that the data provided in Claim 5 be contrast data 11
associated with an image. Wax relies on the Wax publication as teaching the 12
recovery of structural information using elastic scattering properties. Paper 24, 13
p. 13, ll. 8-16. The Schmitt publication is relied upon as teaching contrast data 14
associated with the image. Paper 24, p. 13, ll. 17-19. Desjardins does not 15
challenge Wax on the teachings of the Wax and Schmitt references. Pape 64, p. 5, 16
ll. 17-20. Instead, Desjardins relies on the same arguments made with respect to 17
Claim 4. 18
We agree that the references establish that providing data associated with 19
elastic backscattering properties and displaying such data as contrast data 20
associated with an image was known in the art. Ex. 1003, p. 6183; Ex. 1004, 21
Fig. 3. It would have been obvious to obtain elastic back scattering data and 22
convert that data to contrast data as part of an image. We again note that Count 1 23
is not limited to any particular application of signal detection. One having 24
ordinary skill in the art would have used these concepts to obtain their well-25
recognized advantages in interferometry based signal detection. 26
Interference 105,915
21

Claims 10-18, 31-34 and 36-38 1
Claims 10 and 18 2
Desjardins’ Claims 10 and 18 are independent claims. Wax identifies two 3
differences between the subject matter of Count 1 and that of Claims 10 and 18: 4
(1) “at least one of the electro-magnetic radiations has a frequency that changes 5
over time” and (2) “a second arrangement configured to produce or using a 6
computer arrangement to produce second information associated with contrast data 7
of at least one portion of an image for the at least one sample as a function of the 8
first information.” Paper 24, p. 14, ll. 6-10 and ll. 22-27. Desjardins does not 9
identify any additional differences. Paper 64, pp. 6-9. 10
As to the first difference, Wax relies on Dr. Milner’s testimony (Ex. 1006) 11
and the Choma publication (Ex. 1005). Dr. Milner testifies that “[s]wept-source 12
light sources were well known in the field at the time of the invention . . . .” 13
Dr. Milner’s testimony on this point is not challenged and is supported by the 14
Choma publication. The Choma publication teaches that the use of a frequency 15
that changes over time, i.e a “swept source,” in OCT provides the benefits of 16
increased sensitivity as measured by the signal to noise ratio (SNR). Ex. 1005, p. 17
2186, Fig. 2. Ex. 1006, p. 43, ll. 2-3. 18
In view of the increased sensitivity, it would have been obvious to 19
incorporate the use of a light frequency that changes over time as part of the signal 20
detection method of Count 1. 21
Desjardins argues that Wax has provided no meaningful basis establishing 22
the suitability of a swept source with the optical arrangement of Count 1. 23
Desjardins also argues that there is no motivation for modifying the Count 1 24
subject matter by including a swept source. Paper 64, p. 7, ll. 5-8. 25
To the contrary, the Choma reference teaches (Ex. 1005, p. 2186, Fig. 2) and 26
Dr. Milner’s unrebutted testimony (Ex. 1006, p. 43, ll. 2-3) supports that the 27
Interference 105,915
22

concept of employing a swept light source was known to those working in the art. 1
Choma expressly teaches that the use of a swept source provides improved signal 2
to noise ratio. E.g., Ex. 1005, p. 2186, Fig. 2. Where a technique has been used to 3
improve one device, and a person of ordinary skill in the art would recognize that it 4
would improve similar devices in the same way, using the technique is obvious 5
unless its actual application is beyond the skill of the person having ordinary skill 6
in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). 7
The second difference between the subject matter of Count 1 and Claims 10 8
and 18 is an “arrangement configured to produce second information associated 9
with contrast data of at least one portion of an image for the at least one sample as 10
a function of the first information.” Wax again relies on the Schmitt publication to 11
demonstrate that this concept is known to those working in the art. Paper 24, p. 14, 12
ll. 22-27. Desjardins does not challenge that this concept is known to those skilled 13
in the art. The Schmitt publication teaches the production of information 14
associated with contrast data as part of a computer generated image formed from 15
interferometry data. Ex. 1004, Fig. 3 and Fig.6 and accompanying text at p. 100, 16
2
nd
col. The known advantages of displaying the interferometric data in the form 17
of an image having contrast data would have been appreciated by the person 18
having ordinary skill in the art. It would have been obvious to add “an 19
arrangement configured to produce second information associated with contrast 20
data of at least one portion of an image for the at least one sample as a function of 21
the first information” to the subject matter of Count 1. 22
The subject matter Desjardins Claims 10 and 18 would have been obvious 23
from Count 1. Claims 10 and 18 are designated as corresponding to Count 1. 24
Claims 11-17 and 31-34 25
Claims 11-17 and 31-33 depend from Claim 10. Claim 34 depends from 26
Claim 18. 27
Interference 105,915
23

Wax identifies where each of the concepts added by Claims 11-17 and 31-34 1
is present in either Count 1 or taught to be known by the Schmitt and Wax 2
publications. Paper 24, pp. 6-9. Wax also identifies where some of the added 3
concepts are present in Desjardin claims that have been designated as 4
corresponding to the count. For example, non-corresponding Claim 13 adds a 5
“second arrangement [that] is capable of determining the at least one depth using 6
data associated with a single one of the signals.” Ex. 1002, col. 13, ll. 38-40. 7
Claim 8, which corresponds to Count 1, similarly requires an “arrangement [that] 8
is configured to determine the depths using a single one of the third electro-9
magnetic radiations.
[4]
” Ex. 1002, col 12, ll. 57-59. Wax then argues that the 10
subject matter of Claims 11-17 and 31-34 would have been obvious from the 11
subject matter of Count 1. Paper 24, p. 17, ll. 20-22. 12
Desjardins does not challenge Wax with respect to the presence of the 13
limitations in Count 1 or the teachings of the Wax or Schmitt publications. Nor 14
does Desjardins challenge that the certain of the claim limitations are included in 15
claims designated as corresponding to Count 1. Paper 64, pp. 6-9. Rather, 16
Desjardins argues that the subject matter of Claims 11-17 and 31-34 would not 17
have been obvious for the same reasons that were argued with respect to Claims 10 18
and 18. Paper 64, p. 9, ll. 3-7. We held above that Desjardins’ Claims 10 and 18 19
were not patentably distinct from Count 1. 20
We are persuaded that Wax’s position as to the obviousness of the subject 21
matter of Claims 11-17 and 31-34. Each of the concepts or techniques added by 22
those claims has been shown to be known to those working in the art. Paper 24, 23
pp. 15-17. Desjardins does not argue that the additional subject matter of each 24
claim is not known in the art or presents an unobvious distinction. The person 25

4
These limitations have not been asserted to patentably distinguish the claims
including the limitations from the counts.
Interference 105,915
24

having ordinary skill in the art would have employed the known concepts of 1
Claims 11-17 and 31-34 in order to obtain their known and predictable benefits. It 2
would have been obvious to incorporate these known concepts to the signal 3
detection method of Count 1. 4
Claims 11-17 and 31-34 are designated as corresponding to Count 1. 5
Claims 36-38 6
Wax identifies three differences between Desjardins’ Claims 36 and 38 and 7
Count 1: (1) a detector arrangement or use of a detector arrangement “configured 8
to receive a plurality of collimated electro-magnetic radiations provided from the at 9
least one sample and generate first information based on the collimated electro-10
magnetic radiations”; (2) an arrangement or computer arrangement producing 11
“second information associated with contrast data of at least one portion of an 12
image for the at least one sample as a function of the first information; and (3) “at 13
least one of the electro-magnetic radiations has a frequency that changes over 14
time.” Paper 24, pp. 17, l. 24 – p.18, l. 9 and p. 18, ll. 19-23. Desjardins has not 15
identified any additional differences. 16
With respect to the use of a collimated beam and producing information 17
associated with contrast data, Wax again directs us to the Schmitt publication 18
(Ex. 1006) and Dr. Milner’s testimony to establish that these concepts are known 19
in the art. Paper 24, p. 18, ll. 1-4 and 19-23. Figure 7 of the Schmitt publications 20
shows directing a collimated beam from the sample to a detector array (Ex. 1004, 21
p. 101) and Dr. Milner testifies that that figure shows a detector arrangement that 22
receives collimated light from the irradiated sample (Ex. 1006, ¶ 147). Desjardins 23
does not challenge either the teachings of the Wax publication or Dr. Milner’s 24
testimony on what is known by a person having ordinary skill in the art. Paper 64, 25
pp. 9-10. 26
Interference 105,915
25

The Schmitt publication also teaches that the signals from the detector array 1
are used to generate information including contrast data as a function of the light 2
beams used to generate the interferometric information. Ex. 1004, paragraph 3
bridging pp. 101 and 102 and Figure 8. Schmitt further teaches that the 4
arrangement shown in Figure 7 has the advantage of allowing for optimal 5
separation of signal-carrying speckle from signal-degrading speckle. Id. In view 6
of this known advantage, we are persuaded that it would have been obvious to use 7
the collimated beam and detector array of the Schmitt arrangement to collect 8
interferometric information associated with contrast data of an image. 9
With respect to the use of a frequency that changes over time, employing 10
this concept would have been obvious for the reasons stated with respect to 11
Claims 10 and 18 above. 12
Desjardins’ Claim 37 adds the requirement that “the collimated electro-13
magnetic radiations are provided from the same location of the at least one 14
sample.” Ex. 1002, Col. 16, ll. 16-18. Wax relies on Dr. Milner’s testimony. 15
Paper 24, p. 18, ll. 26-27. Dr. Milner testifies that Figure 7 of the Schmitt article 16
“teaches both collimation of scattered light and collimating light originating from 17
the same location in the sample. Ex. 1006, p. 45, ll. 5-7. Disjardins does not 18
challenge Dr. Milner on this point. 19
The Schmitt publication establishes that providing collimated light from the 20
same location as the sample is a technique known and used by those working in the 21
art. Ex. 1004, Fig. 7. We are persuaded that to use this arrangement in 22
conjunction with the method of detecting signals defined by Count 1 would have 23
been obvious. The addition of an old element that performs only its known 24
function and yields only the expected result is obvious. KSR, 550 U.S. at 416 25
(“The combination of familiar elements according to known methods is likely to be 26
obvious when it does no more than yield predictable results.”). 27
Interference 105,915
26

Desjardins argues that hindsight is the only guiding hand that would lead to 1
modifying the subject matter of Count 1. Paper 64, p. 10, ll. 2-5. This argument is 2
without merit. The consideration of obviousness always requires the use of some 3
measure of hindsight. However, hindsight is impermissible when it relies on 4
information gleaned only from a party’s disclosure. In re McLaughlin, 443 F.2d 5
1392, 1395 (CCPA 1971). The additional subject matter of Claims 36-38 has been 6
shown to be known and used by those working in the art. Such information is part 7
of the knowledge possessed by the hypothetical person having ordinary skill in the 8
art. The Standard Oil Company v. American Cyanamid Company, 774 F.2d 448, 9
454 (Fed. Cir. 1985) (The hypothetical person of ordinary skill in the art is 10
presumed to have knowledge of all the pertinent prior art.) It is this knowledge 11
which guides the hypothetical person of ordinary skill to employ the known 12
concepts added by Claims 36 to 38, not Desjardins’ disclosure. 13
The subject matter of Claims 36 to 38 would have been obvious to the 14
person having ordinary skill in the art from the Count 1 subject matter. 15
Claims 36 to 38 correspond to Count 1. 16
Count 2 17
Wax moves to have Claims 23-25 designated as corresponding to Count 2. 18
Claims 23-25 depend from Claim 19 which corresponds to Count 2. Claim 19 is 19
essentially the apparatus form of Desjardin’s method Claim 28. Claim 28 is one of 20
the alternatives of Count 2. The subject matter added by Claims 23-25 parallels 21
that added by Claims 4-6, respectively, discussed above. The parties make 22
essentially the same arguments that they made with respect Claims 4-6. We 23
addressed above why it would have been obvious to add the concepts recited by 24
Claims 4-6. Those same reasons apply to the subject matter of Claims 23-25. The 25
subject matter of Claims 23-25 would have been obvious from the subject matter 26
of Count 2. 27
Interference 105,915
27

Claims 23-25 are designated as corresponding to Count 2. 1
Wax’s Substantive Motion 2 is granted. 2
VII. Wax Contingent Motion 3 3
Wax Contingent Motion 3 is contingent on granting Wax’s Motion 2 to 4
designate Desjardins Claims 4-6, 10-18, 23-25, 31-34, and 36-38 as corresponding 5
to the counts. Because we granted Wax Motion 2, we here address the contingent 6
motion. 7
Wax moves for a judgment that Desjardins Claims 4-6, 10-18, 31-34, and 8
36-38 are unpatentable under 35 U.S.C. § 103(a) over the Wax publication 9
(Ex. 1003) combined with the Schmitt (Ex. 1004)) or Choma (Ex. 1005) 10
publications. Paper 25, p. 1, ll. 5-7. For each claim Wax explains where the 11
limitations are taught in either the Wax publication or the Choma and Schmitt 12
references. Rather than addressing specific claims, Desjardins limits their 13
arguments to specific limitations contending that these limitations are not taught by 14
the Wax publication or would not have been obvious from the combined teachings 15
of the Wax publication with Schmitt or Choma. Specifically, Desjardins argues 16
(1) that the system described in the Wax publication does not disclose or suggest 17
“forwarding at least one second electro-magnetic radiation within a solid angle to a 18
sample” or “at least a portion of the third electro-magnetic radiations is provided 19
outside a periphery of the solid angle” (Paper 54, pp. 4-10); (2) that the Wax 20
publication does not disclose a system for making an image and it would not have 21
been obvious to modify that system to generate images (Paper 54, pp. 11-18); 22
(3) that the Wax publication does not teach a system having a frequency that 23
changes over time (swept source illumination) and it would not have been obvious 24
to substitute a swept source for the broadband illumination source taught by the 25
Wax publication (Paper 54, pp. 18-22). We confine our discussion to the 26
Interference 105,915
28

limitations argued by Desjardins as presenting unobvious differences over the prior 1
art. 2
We held above that the limitations requiring “forwarding at least one second 3
electro-magnetic radiation within a solid angle to a sample” and “wherein at least 4
one portion of the third electro-magnetic radiations is provided outside a periphery 5
of the solid angle” did not exclude the collimated pencil beam described in the 6
Wax publication. Thus, the Wax publication teaches an embodiment within the 7
scope of the phrase “solid angle” and that limitation does not present a difference 8
between the teachings of the Wax publication and the claimed subject matter. 9
As to the limitations directed to generation of an image and the use of swept-10
source illumination, Wax principally contends that any differences between the 11
system described in the Wax publication and the subject matter of Claims 4-6, 10-12
18, 31-34, and 36-38 relates to commonly used concepts and techniques well 13
known to those working in the art. Paper 25, p. 1, ll. 12-16. Wax then argues: 14
A person of ordinary skill in the art would have readily 15
modified the interferometry techniques taught in the Wax 16
Article to arrive at the apparatuses and methods covered by the 17
uninvolved claims of the ’879 patent, as confirmed by the prior 18
art and Wax’s expert in the field, Dr. Milner. The prior art 19
routinely describes angle-resolved LCI and OCT systems that 20
generate an image or image contrast by combining multiple 21
scans or profiles, as well as systems that implement the use of 22
swept light sources and collimated light. Indeed some of the 23
earliest interferometers incorporated these features. 24
Paper 25, p. 1, ll. 17-25. 25
Desjardins does not contest that the techniques for, and benefits of, 26
displaying image data and using a swept source of illumination are conventional 27
and well known in the art. Rather, they argue that these techniques “are not 28
compatible limitations with all references in the field of OCT instrumentation and 29
cannot simply be selected or exchanged without consequence.” Paper 54, p. 10, 30
Interference 105,915
29

ll. 3-10. According to Desjardins, one having ordinary skill in the art would not 1
have combined the teachings of the Wax publication with any references to result 2
in a system suitable of imaging or to replace the broadband illumination (low 3
coherence illumination) described in the Wax publication with swept source 4
illumination. Paper 54, p. 10, ll. 11-18. 5
We are persuaded that the subject matter of Claims 4-6, 10-18, 31-34, and 6
36-38 would have been obvious under 35 U.S.C. § 103(a). Wax’s evidence 7
establishes that the techniques for and benefits of generating images and using 8
swept source illumination were conventional and well known in the art. Thus, 9
Dr. Milner testifies that 10
a person having ordinary skill in the art at the time of the 11
invention would have had an understanding of the various types 12
of LCI and OCT systems. This person would have understood 13
the various characteristics of time-domain LCI and OCT, swept 14
source LCI or OCT, and spectral-domain LCI and OCT. This 15
person would have understood all the variants of LCI and their 16
respective light sources and detectors. This person not only 17
would have understood these systems, but would have 18
understood the significance of any relative advantages and 19
weaknesses of each. 20
Ex. 1006, ¶ 82, p. 26, l. 26 – p. 27, l. 5. Dr. Milner further testifies that the person 21
of ordinary skill would have had experience both designing and implementing LCI 22
and OCT systems. Ex. 1006, ¶ 83, p. 27, ll. 6-15. 23
Dr. Milner’s testimony on these points is unchallenged. Indeed, Dr. Rollins, 24
Desjardins’ expert, substantially concurs with Dr. Milner’s testimony: “I generally 25
agree with Dr. Milner's view of the definition of a person of ordinary skill in the art 26
in and around 2006 that would be relevant to the present subject matter.” Ex. 27
2012, p. 3, ¶ 12. 28
Dr. Milner’s testimony on the level of ordinary skill in the art is also 29
supported by other evidence of record. The Schmitt publication teaches that it 30
Interference 105,915
30

was known in the art to use angular compounding to create images having reduced 1
speckle. Ex. 1004, § 3.2, pp. 101-102 and Fig. 7. We note that angular 2
compounding is one of the techniques described in Desjardins’ involved patent to 3
generate images. Ex. 1002, col. 6, l. 53 – col. 7, l. 28 and Figure 7. The Choma 4
publication teaches that the use of a “swept source,” in OCT provides increased 5
sensitivity as measured by the signal to noise ratio making the technique useful for 6
ultra high resolution OCT images. Ex. 1005, Abstract and p. 2189. 7
Desjardins identifies the limitations requiring generation of an image as not 8
taught by the Wax publication. Paper 54, p. 11, ll. 16-18. 9
We are not convinced that generating an image is not taught by the Wax 10
publication. The Wax publication describes an “angle-resolved low coherence 11
interferometry scheme for rapid measurement of depth-resolved angular scattering 12
distributions to enable determination of scatterer size via elastic scattering 13
properties.” Ex. 1003, p. 6178, Abstract. The publication further teaches that 14
“[d]epth resolution is achieved using a superluminescent diode in a modified 15
Mach-Zehnder interferometer with the mixed signal and reference fields dispersed 16
by an imaging spectrograph.” Id. The publication describes this system with 17
reference to Figure 1(a): 18
Lenses L3 and L4 are arranged to produce a collimated pencil 19
beam incident on the sample. By displacing lens L4 vertically 20
relative to lens L3, the input beam is made to strike the sample 21
at an angle of 0.10 radians relative to the optical axis. This 22
arrangement allows the full angular aperture of L4 to be used to 23
collect scattered light. The light scattered by the sample is 24
collected by lens L4 (ƒ4 = 3.5 cm) and relayed by a 4ƒ imaging 25
system (lenses L5 and L6) such that the Fourier plane of lens 26
L4 is reproduced in phase and amplitude at the spectrograph 27
slit. The scattered light is mixed with the reference field at BS2 28
with the combined fields falling upon the entrance slit to an 29
imaging spectrograph. Fig. 1(b) shows the distribution of 30
Interference 105,915
31

scattering angle across the dimension of the slit. The mixed 1
fields are dispersed with a high resolution grating (1200 l/mm) 2
and detected using a cooled CCD. 3
Ex. 1003, p. 6180 (parentheticals identifying equipment trade designations 4
deleted). The data from the CCD is used to generate images showing 5
intensity as a function of wavelength and angle. Ex. 1003, p. 6181-82 and 6
Figs. 2(a) – 2(d). The images are said to represent the total detected 7
intensity (Fig. 2(a)), the intensity of the reference and signal fields 8
(Figs. 2(b) and 2(c)) and the interference field resulting from the subtraction 9
of the reference and signal fields from the total intensity field (Fig. 2(d)). 10
Ex. 1003, p. 6181, 11
Relying on Dr. Rollins’ testimony, Desjardins argues that Figures 2(a) 12
- 2(d) of the Wax publication would not be understood by a person having 13
ordinary skill in the art to be considered an “image” as used in Desjardin’s 14
claims. Ex. 2016, ¶ 15. He also testifies that in general terms an image 15
represents a two dimensional representation of a sample in space. Id. 16
We do not credit his testimony on this point because it is unsupported 17
by any factual evidence. See Upjohn, 225 F.3d at 1311; Rohm and Haas, 18
127 F.3d at 1092 (the fact finder is not required to credit the unsupported 19
assertions of an expert witness). Dr. Rollins does not tell us why the “4ƒ 20
imaging system” described in the Wax publication would not be considered 21
by one having ordinary skill in the art as generating an image. Additionally, 22
we have not been directed to a portion of Desjardins’ specification that 23
indicates that “image” is limited to a specific way of presenting information. 24
Our own review of that disclosure also does not reveal anything that 25
indicates that “image” is limited as asserted by Dr. Rollins. 26
Interference 105,915
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In any event, it would have been obvious to modify the system taught in the 1
Wax publication by replacing the imaging spectrograph and CCD with an angular 2
compounding arrangement of the type taught by Schmitt. The Schmitt publication 3
discusses techniques for improving OCT images by minimizing speckle effects —4
the random differences in image intensity that show up as noise in OCT images. 5
Ex. 1004, p. 95, left column, 1
st
¶. The Schmitt publication also teaches that it was 6
known in the art to use angular compounding to create images having reduced 7
speckle. Ex. 1004, § 3.2, pp. 101-102 and Fig. 7. As testified to by Dr. Milner, the 8
person having ordinary skill in the art would understand the characteristics of LCI 9
and OPT systems and the light sources and detectors. Ex. 1006, ¶ 82. The person 10
of ordinary skill would also understand the design and implementation of those 11
systems. Ex. 1006, ¶ 83. In view of this level of ordinary skill in the art, it would 12
have been obvious to substitute the known angular compounding arrangement of 13
the type taught by Schmitt (Ex. 1004, § 3.2, pp. 101-102 and Fig. 7) for the 14
imaging spectrograph and CCD used in the system taught in the Wax publication. 15
One having ordinary skill in the art would have made this substitution in order to 16
get the benefits of reduced speckle said to be achieved with the angular 17
compounding arrangement. “[If] a technique has been used to improve one device, 18
and a person of ordinary skill in the art would recognize that it would improve 19
similar devices in the same way, using the technique is obvious unless its actual 20
application is beyond his or her skill.” KSR, 550 U.S. at 417. 21
Desjardins also identifies the limitations requiring the use of a swept source, 22
as not taught by the Wax publication and argues that it would not have been 23
obvious to modify the system described by the Wax publication to include swept-24
source illumination. Paper 54, p. 18, ll. 8-18. 25
Relying on Dr. Milner’s testimony and the Choma publication, Wax 26
contends that the use of swept-source illumination was common and well known to 27
Interference 105,915
33

the person having ordinary skill in the art in the field of interferometry. Paper 25, 1
p. 7, ll. 10-22. Dr. Milner testifies that the “[d]esign and operating principles of 2
swept-source interferometric systems were well known in the art . . . .” Ex. 1006, 3
p. 39, ll. 20-21. Dr. Milner’s statement is unchallenged. The Choma publication 4
supports his testimony. Choma expressly teaches that the use of a swept source 5
provides improved signal to noise ratio. E.g., Ex. 1005, p. 2186, Fig. 2. 6
Incorporating the use of well-known swept-source illumination to improve the 7
signal to noise ratio would have been obvious. Where a technique has been used to 8
improve one device, and a person of ordinary skill in the art would recognize that it 9
would improve similar devices in the same way, “using the technique is obvious 10
unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. 11
Desjardins contends that the use of imaging and swept-source “are not 12
compatible limitations with all references in the field of OCT instrumentation and 13
cannot simply be selected or exchanged without consequence” Paper 54, p. 10, 14
ll. 3-10. Dr. Rollins so testifies. Ex. 2012, ¶ 13. Dr. Rollins does not explain what 15
those consequences are or why, notwithstanding the consequences, the person of 16
ordinary skill in the art would be unable to make the adaptations necessary to 17
utilize the well-known techniques. “See KSR, 550 U. S. at 417. On this point we 18
again note Dr. Milner’s uncontested testimony that the person having ordinary skill 19
in the art would understand various types of interferometry systems, their 20
characteristics, their variants and the significance of any relative advantages and 21
weaknesses. Ex. 1006, ¶ 82, p. 26, l. 26 – p. 27, l. 5. It would have been obvious 22
to modify a system of the type taught in the Wax publication by including swept-23
source illumination 24
We conclude that the subject matter of Claims 4-6, 10-18, 31-34, and 25
36-38 would have been obvious. 26
Interference 105,915
34

VIII. Desjardins Substantive Motion 1 1
When this interference was declared Wax was accorded the benefit of the 2
filing date of Provisional Application 60/725,603 for both Counts 1 and 2. 3
Paper 1, pp. 6-7. Desjardins contends that benefit should not have been accorded. 4
Desjardins argues: 5
Wax copied claims 1-16 of the ‘348 Application from US 6
Patent No. 7,982,879 (“the ‘879 Patent”). Those claims, which 7
were first introduced by Wax on July 17, 2012, are not 8
supported by the disclosure of the ‘603 Provisional. In 9
particular, although the wording in the individual claims has 10
slight variations, independent claims 7 and 15 (which define 11
Counts I and II, respectively) both require “forwarding at least 12
one second electro-magnetic radiation within a solid angle to a 13
sample” and “receiving a plurality of third electro-magnetic 14
radiations from the sample . . . wherein at least one portion of 15
the third electro-magnetic radiations is provided outside a 16
periphery of the solid angle.” 17
Paper 31, p. 3, ll. 5-11 (citations to the record omitted). Desjardins further 18
contends: 19
All embodiments described in the ‘603 Provisional employ a 20
collimated beam as opposed to a focused beam and thus does not 21
define a solid angle to illuminate the sample. 22
Paper 31, p. 8, ll. 5-7. Desjardins then argues: 23
By definition, in a collimated beam, the rays of light striking 24
the sample are substantially parallel to one another, rather than 25
being focused or converging. As such, the collimated beam 30 26
does not define a “solid angle.” Thus, the embodiment of 27
Fig. 1A and supporting description of this figure in the 28
‘603 Provisional does not provide any disclosure of 29
“forwarding at least one second electro-magnetic radiation 30
within a solid angle to a sample.” Since there is no solid angle 31
defined by the collimated radiation incident on the sample in 32
the ‘603 Provisional, it is axiomatic that the reflected radiation 33
from the sample does not include “at least one portion of the 34
Interference 105,915
35

third electro-magnetic radiations [being] provided outside a 1
periphery of the solid angle.” 2
Paper 31, p. 9, ll. 1-10 (citations to the record omitted). 3
An application or patent only needs to describe a single enabled embodiment 4
within the scope of the count to constitute a constructive reduction to practice of 5
the invention of the count. Hunt v. Treppschuh, 523 F.2d 1386, 1389 (CCPA 6
1975). See also Weil v. Fritz, 572 F.2d 856, 865 n.16 (CCPA 1978) (as Hunt v. 7
Treppschuh explains, “the § 112, first paragraph, requirements need only be met 8
for an embodiment within the count” where the count is drawn to a genus and the 9
previously-filed application discloses only a species thereof.). Hunt continues to 10
be applicable Federal Circuit precedent. Falkner v. Inglis, 448 F.3d 1357, 1362 11
(Fed. Cir. 2006). 12
Count 1 is Claim 1 of Desjardins patent or Claim 7 of the Wax application. 13
Count 2 is Claim 28 of the Desjardins patent of Claim 15 of the Wax application. 14
Paper 1, pp. 5-6. Wax’s Claims 7 and 15 are identically worded copies of 15
Desjardins’ Claims 1 and 28, respectively. Thus, for the purposes of this motion, 16
there is no difference in subject matter between Desjardins’ Claim 1 and Wax’s 17
Claim 7 or between Desjardins’ Claim 28 and Wax’s Claim 15 as those claims are 18
interpreted in view of Desjardins’ specification. 19
In order for Desjardins to prevail on its motion, Desjardins must establish 20
that Wax’s provisional application does not teach at least an embodiment within 21
the scope of the counts. Hunt, 523 F.2d at1389; Weil, 572 F.2d at 865 n.16; 22
Falkner, 448 F.3d at 1362. Desjardins argues that the provisional application does 23
not disclose the “solid angle” limitations. In deciding Wax Substantive Motion 1 24
we held that the phrase “solid angle” as used in Desjardins’ claims did not require 25
a focused beam and did not exclude the use of a collimated pencil beam. Wax’s 26
provisional application, like the Wax publication, teaches the use of a collimated 27
Interference 105,915
36

pencil beam to irradiate the sample and teaches using scattered radiation outside 1
the periphery of that beam. Ex. 2002, ¶ 15 and 16 and Figs. 1(a) and 1(b). In other 2
words, the collimated pencil beam taught by the Wax provisional application is an 3
embodiment within the scope of the “solid angle” limitations of the counts. Thus, 4
Desjardins’ argument and evidence fail to establish a prima facie case that the Wax 5
provisional application does not teach an enabled embodiment within the scope of 6
the counts. 37 C.F.R. §§ 41.121(b) and 41.208(b). 7
Desjardins’ Substantive Motion 1 (Paper 31) is denied. 8
IX. Wax Miscellaneous Motion 4 9
Wax filed a motion (Paper 91) to exclude certain exhibits submitted in in 10
support of Desjardins’ Replies 1 and 2 (Papers 85 and 86). Those papers were 11
filed in response to Wax’s oppositions to Desjardins’ motions challenging Wax’s 12
accorded benefit and the compliance of Wax’s claims with 35 U.S.C. § 112 13
(Papers 31 and 32). Because we held that Desjardins’ Substantive Motions 1 and 2 14
did not establish prima facie entitlement to the relief requested, we did not consider 15
Wax’s oppositions to those motions, Desjardins’ replies or the evidence submitted 16
in support of those papers. 17
Wax’s Miscellaneous Motion 4 (Paper 91) is dismissed as moot. 18
X. Patentability of Wax’s Claims 19
The interference rules create a rebuttable presumption as to the cross-20
applicability of prior art asserted against an opponent. Section 41.207(c) of 21
37 C.F.R. provides: 22
(c) Cross-applicability of prior art. 23
When a motion for judgment of unpatentability against an 24
opponent’s claim on the basis of prior art is granted, each of the 25
movant’s claims corresponding to the same count as the 26
opponent’s claim will be presumed to be unpatentable in view 27
of the same prior art unless the movant in its motion rebuts this 28
presumption. 29
Interference 105,915
37

We granted Wax’s motions that Desjardin’s claims were unpatentable in light of 1
the Wax publication (Ex. 1003) alone or in combination with other references. The 2
decisions created a presumption that Wax’s involved claims are unpatentable over 3
that same prior art. 4
Wax argues that the Wax publication is not applicable against its claims. 5
Paper 23, p. 20, ll. 11-22. According to Wax, the publication is not prior art 6
against their claimed subject matter. Wax argues that the publication is potentially 7
prior art only under 35 U.S.C. §§ 102(a) or 102(f) because it was published less 8
than a year before its provisional application was filed. Additionally, relying on, 9
In re Katz, 687 F.2d 450, 454-455 (C.C.P.A 1982), Wax argues that the publication 10
does not constitute prior art because it was authored by the named inventors. In 11
other words, the publication does not establish that the subject matter of the claims 12
was known and used by others or described in a printed publication before “the 13
invention thereof by the applicants.” Wax further argues that the publication also 14
does not establish that the applicants were not the inventors of the subject matter in 15
the sense of 35b U.S.C. § 102(f). 16
Desjardins argues that if any of their claims are unpatentable over the cited 17
prior art, then Wax’s claims are also unpatentable. Dejardins argues that Wax’s 18
“position is based on the flawed premise that the ‘348 Application may 19
properly claim priority back to US Application No. 60/725,603 (‘the ‘603 20
Provisional’).” Paper 52, p. 13, ll. 8-10. Desjardins further argues: “Since the 21
‘603 Provisional application does not support the copied claims in the ‘348 22
Application, Wax is not entitled to the filing date of the provisional application for 23
these claims.” Paper 52, p. 14, ll. 5-6. Desjardins again relies on the “solid angle” 24
and “collimated beam” distinctions: 25
the ‘603 Provisional neither adequately provides written 26
description support nor an enabling disclosure for the 27
Interference 105,915
38

limitations of “forwarding at least one second electro-magnetic 1
radiation within a solid angle to a sample” or “at least one 2
portion of the third electro-magnetic radiations is provided 3
outside a periphery of the solid angle” as required by all claims 4
of the ‘348 Application, including (but not limited to) claims 7 5
and 15 which define Counts 1 and 2, respectively. 6
Paper 52, p. 14, ll. 11-16. 7
Wax replies that “[u]nder a proper claim construction, the “solid angle” 8
limitations cover interferometry systems that incorporate either focused or 9
collimated sample beams, and Wax’s provisional application contains a detailed 10
description and figure depicting interferometry systems and methods that meet 11
these claim limitations . . . .” Paper 73, p. 9, l. 27 – p. 10, l. 2. 12
Wax has not met their burden of showing that the Wax publication is not 13
prior art against its own claims. Wax has not established that the subject matter of 14
their involved claims is entitled to the benefit of the provisional application for the 15
purposes of overcoming the date of the prior art. Absent a showing that Wax’s 16
claims are entitled to the benefit the provisional application, the Wax publication 17
qualifies as prior art under § 102(b). 18
We begin our discussion noting that there is a difference between seeking 19
the benefit of the filing date of an earlier application for the purpose of establish a 20
constructive reduction to practice of the subject matter of a count and the benefit of 21
the filing date of an earlier application to overcome the date of a reference under 22
35 U.S.C. § 119 and 120. Anderson v. Norman, 185 USPQ 371 (Comm'r Pat. 23
1968) (an earlier disclosure of a species is a constructive reduction to practice of a 24
count expressing a genus; according benefit for purpose of priority is different 25
from according benefit to antedate prior art); Furman v. Cheng, 59 USPQ2d 1668 26
(BPAI 2001) (discussion of the difference between benefit to overcome prior art 27
and benefit for the purpose of priority); Cromlish v. D.Y., 57 USPQ2d 1318, 1319 28
Interference 105,915
39

(BPAI 2000) (difference between benefit for priority and benefit to overcome prior 1
art reference explained). 2
With respect to the former, a party to an interference is accorded the benefit 3
of an earlier application if the earlier application describes an enabled embodiment 4
that meets all the limitations of the count. Hunt, 523 F.2d at1389; Weil, 572 F.2d 5
at 865 n.16; Falkner, 448 F.3d at 1362. This principle is codified in 37 C.F.R. 6
§ 41.201 in the definitions of “accord benefit” and “constructive reduction to 7
practice.” “Accord benefit means Board recognition that a patent application 8
provides a proper constructive reduction to practice under 35 U.S.C. 102(g)(1).” 9
“Constructive reduction to practice” is defined as “a described and enabled 10
anticipation under 35 U.S.C. § 102(g)(1) in a patent application of the subject 11
matter of a count.” 37 CFR § 41.201. Under these long-established principles, an 12
enabled and described embodiment meeting all the limitations of the count, i.e. “a 13
described and enabled and anticipation” is sufficient to be accorded the benefit of 14
the earlier constructive reduction to practice.
5
Thus, a disclosure in an earlier 15
application limited to a single species within the scope of a genus count including 16
that species would be sufficient to accord the filing date of the earlier application.
6
17
The requirements for the benefit of an earlier filing date under §§ 119 or 120 18
are different. The specification must be sufficiently clear that persons of skill in 19
the art will recognize that the inventor made the invention having all the claim 20
limitations. In re Spina, 975 F.2d 854, 857 (Fed. Cir. 1992). Benefit under these 21

5
There are other requirements not relevant here. For example, each application in
a chain of applications must describe an enabled embodiment without any break in
copendency between the applications . 37 C.F.R. § 41.201, definition of “earliest
constructive reduction to practice.” See also Stevens v. Tamai, 366 F.3d 1325,
1331 (Fed. Cir. 2004)
6
Subject of course to meeting the other requirements for according benefit. See
note 5, supra.
Interference 105,915
40

sections requires that the subject matter claimed meet the requirements of 35 1
U.S.C. § 112, first paragraph, for the full scope of the claimed subject matter. In re 2
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993). Thus, claims in an application to a 3
genus would not be entitled to the benefit of the filing date of an earlier application 4
that described only a species within that genus. 5
The distinction between the two approaches is analogous to the principle that 6
an earlier document may anticipate and thus defeat a patent while at the same time 7
not enable the full scope of the claimed subject matter. It is not impermissibly 8
anomalous or logically inconsistent to hold that broad claims are anticipated by a 9
reference while not providing descriptive support for the scope of the exact same 10
claims. Chester v. Miller, 906 F.2d 1574, 1577 (Fed. Cir. 1990). 11
Wax has the burden of overcoming the presumption that their claims are 12
unpatentable over the art held to render Desjardins claimed subject matter 13
unpatentable. 37 CFR § 41.207(c). Thus Wax has the burden of showing 14
entitlement to the benefit of the filing date of their provisional application under 15
35 U.S.C. § 119 and/or § 120. Benefit under those sections requires that the full 16
scope of their involved claims meet the requirements of § 112, ¶ 1. Wax has not 17
directed us to evidence demonstrating that the person skilled in the art would 18
understand the Wax’s provisional application as conveying the full scope of the 19
solid angle limitations. While the provisional application discloses an embodiment 20
using a collimated pencil beam and meets the “solid angle” limitation, that 21
application does not have a description of the use of a focused beam. As Wax 22
notes “[u]nder a proper claim construction, the ‘solid angle’ limitations cover 23
interferometry systems that incorporate either focused or collimated sample 24
beams . . . .” Paper 73, p. 9, l. 27 – p. 10, l. 2. Dr. Milner testifies that a “solid 25
angle describes the divergence or convergence of lines in three-dimensional 26
space.” Ex. 1009, p. 12, ll. 7-8. Wax’s provisional application does not expressly 27
Interference 105,915
41

describe the use of a focused beam. Wax has failed to direct us to sufficient 1
evidence establishing that the person having ordinary skill in the art would have 2
recognized that the disclosure of the provisional application conveyed possession 3
of the concept of the full scope of the solid angle limitations, i.e., the use of a 4
focused as well as a collimated beam. Wax has failed to meet its burden of 5
establishing entitlement to the filing date of its provisional application for the 6
purposes of patentability over the prior art. On this record the Wax publication 7
was published more than a year prior to the filing of Wax’s great grandparent 8
application and therefore qualifies as prior art under 35 U.S.C. § 102(b).
7
9
Wax’s Claims 1-16 are unpatentable over the Wax, Schmitt and Choma 10
publications as a result of the presumption of 37 C.F.R. § 41.207(c). 11
XII. ORDER 12
1. Desjardins Substantive Motion 1 attacking Wax’s accorded benefit 13
(Paper 31) is denied; 14
2. Desjardins Substantive Motion 2 asserting that Wax’s claims are 15
unpatentable under 35 U.S.C. § 112, first paragraph, for failing to be supported by 16
an enabling disclosure (Paper 32) is denied; 17
3. Wax Substantive Motion 2 to designate Desjardins’ Claims 4-6, 10-18, 18
31-34 and 36-38 as corresponding to Count 1 and designate Claims 23-25 as 19
corresponding to Count 2 (Paper 24) is granted; 20
4. Wax Substantive Motion 1 and Wax Contingent Substantive Motion 3 21
asserting the unpatentability of Desjardins’ involved claims over certain prior art 22
(Papers 23 and 25) are granted; 23
5. Wax’s Miscellaneous Motion 4 to exclude Desjardins’ Exhibits 2020-26 24
(Paper 91) is dismissed as moot; and 25

7
In reaching this conclusion it was not necessary to evaluate whether Wax’s other
parent applications meet the requirements of 35 U.S.C. §§ 112 and 120.
Interference 105,915
42

6. We hold Wax Claims 1-16 unpatentable over the prior art asserted 1
against Desjardins’ claims by application of the presumption of 37 C.F.R. § 2
41.207(c). 3

cc (by electronic transmission):
Counsel for Junior Party Desjardins:

Paul D. Ackerman
Gary Abelev
Jennifer Nguyen
Dorsey & Whitney, LLP
Ackerman.paul@dorsey.com
Ablev.gary@dorsey.com
Nguyen.jennifer@dorsey.com

Counsel for Senior Party Wax:

Brenton R. Babcock
Steven P. Ruden
Jared C. Bunker
Knobbe, Martens, Olson & Bear, LLP
BoxWax@knobbe.com