Ex Parte 6415082 et al

Patent Trial and Appeal Board

Sep 5, 2013

95001175 (P.T.A.B. Sep. 5, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
95/001,175 04/24/2009 6415082 29776.184 1652
27571 7590 09/05/2013
Fahmi, Sellers, Embert & Davitz
84 W. Santa Clara St.
Suite 550
San Jose, CA 95113
EXAMINER
MENEFEE, JAMES A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/05/2013 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
____________

CISCO SYSTEMS, INC.
Third Party Requester, Appellant and Cross-Respondent

v.

GRAYWIRE LLC
Patent Owner, Cross-Appellant and Respondent
________

Appeal 2012-006121
Inter partes Reexamination Control 95/001,175
United States Patent 6,415,082 B1
Technology Center 3900
____________

Before KEVIN F. TURNER, JONI Y. CHANG and
THOMAS L. GIANNETTI, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

Third Party Requester Cisco Systems, Inc. (hereinafter “Requester”)
appeals
1
under 35 U.S.C. §§ 134(c) and 315(b)(1) the Examiner’s decision
to not adopt certain proposed rejections of specific claims, as provided

1
See Third Party Requester’s Appeal Brief filed December 6, 2011,
hereinafter “TPR App. Br.” at 2; see also Third Party Requester’s
Respondent Brief filed January 6, 2012, hereinafter “TPR Resp. Br.,” and
Third Party Requester’s Rebuttal Brief filed February 24, 2012, hereinafter
“TPR Rebut. Br.”
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below.
2
Patent Owner Graywire LLC, (hereinafter “Patent Owner”) appeals
under 35 U.S.C. §§ 134(b) and 315(a)(1) (2002) the Examiner’s decision to
adopt rejections of certain claims.
3

We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315 (2002). We
AFFIRM.

STATEMENT OF THE CASE
This proceeding arose from a corrected request for inter partes
reexamination filed on behalf of Requester, on April 24, 2009, of United
States Patent 6,415,082 B1 (“the '082 Patent”), issued to Michael L. Wach
on July 2, 2002, based on United States Application 09/526,091, filed March
15, 2000, that asserted priority to U. S. Provisional Application No.
60/124,424, filed March 15, 1999.
With respect to the claims of the '082 Patent, claims 1-124 are subject
to reexamination, with claims 1-34 having been issued with the Patent and
claims 35-124 added through amendments filed by Patent Owner (RAN
2-3). Original claims 21-25 were amended and original claim 32 was
cancelled (id.). Of the added claims, claims 42, 77, 79, 88, and 123 have
been cancelled and claims 56, 57, 76, 102, and 103 have been found to be
patentable by the Examiner (id.). The Examiner chose to adopt some of the

2
See Right of Appeal Notice, mailed September 9, 2011, hereinafter
“RAN;” see also Examiner’s Answer, mailed January 26, 2012, hereinafter
“Ans.”
3
See Patent Owner’s Appeal Brief filed December 7, 2011, hereinafter “PO
App. Br.,” at 2; see also Patent Owner’s Respondent Brief filed January 6,
2012, hereinafter “PO Resp. Br.,” and Patent Owner’s Rebuttal Brief filed
February 27, 2012, hereinafter “PO Rebut. Br.”
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rejections proffered by Requester, with claims 1-31, 33-41, 43-55, 58-75, 78,
80-87, 89-101, 104-122, and 124 standing rejected.
The '082 Patent is the subject of litigation styled Graywire, LLC v.
Ciena Corp. et al., Case No. 1:08-cv-02993-BBM (N.D. Ga.) (TPR App. Br.
2; accord PO App. Br. 2), where that litigation is said to be stayed pending
the outcome of this proceeding (id.).
We heard oral arguments from the representatives of both Requester
and Patent Owner on July 25, 2012, a transcript
4
of which is part of the
record.

THE INVENTION
The invention of the '082 Patent relates to the manipulation of light
through filtering in a planar lightguide circuit (PLC) (Spec. 1:14-17; Abs.).
Exemplary claim 1 on appeal reads as follows:
1. A cross-connect waveguide system comprising:
a planar lightguide circuit having one or more optical paths;
a plurality of optical waveguides coupled to said planar
lightguide circuit;
a plurality of filtering devices for feeding light energy into said
optical paths of said planar lightguide circuit or receiving light energy
from said optical paths of said planar lightguide circuit; and
a diverting element for feeding first light energy at a
predetermined wavelength having first information content away from
said planar lightguide circuit, and for feeding second light energy at
said predetermined wavelength having second information content
into said planar lightguide circuit, wherein said diverting element is

4
Record of Oral Hearing (hereinafter “Oral Hr’g Tr.”)
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remotely configurable and is controlled with optically encoded
information.
(PO App. Br., Claims App’x.).

PRIOR ART REJECTIONS
The prior art references, relied upon by Requester in the rejections
that have and have not been adopted, are:
Yamasaki 4,693,544 Sep. 15, 1987
Seki 4,790,615 Dec. 13, 1988
Maruyama 5,057,135 Oct. 15, 1991
Bradley 5,111,467 May 5, 1992
Bristow 5,218,198 Jun. 8, 1993
Monacos 5,377,182 Dec. 27, 1994
Wolf (“Wolf ’453”) 5,526,453 Jun. 11, 1996
Chang-Hasnain 5,541,756 Jul. 30. 1996
Alexander (“Alexander ’439”) 5,557,439 Sep. 17, 1996
Scobey 5,583,683 Dec. 10, 1996
Wolf (“IOT ’226 patent”) 5,590,226 Dec. 31, 1996
Alexander (“Alexander”) 5,712,932 Jan. 27, 1998
Henry 5,719,976 Feb. 17, 1998
Giles 5,754,321 May 19, 1998
Wach 5,953,477 Sep. 14, 1999
Danagher 5,959,749 Sep. 28, 1999
Aksyuk 5,974,207 Oct. 26, 1999
Ford 6,317,530 B1 Nov. 13, 2001
Lumish 6,466,341 B1 Oct. 15, 2002

G. K. Chang et al., Multiwavelength Reconfigurable WDM/ATM/SONET
Network Testbed, 14(6) J. of Lightwave Tech. 1320 (June 1996) pp. 1320-
1340 ("Chang").
H. Toba et al., An Optical FDM-Based Self-Healing Ring Network
Employing Arrayed Waveguide Grating Filters and EDFA's with Level
Equalizers, 14(5) IEEE J. on Selected Areas in Communications 900 (June
1996) pp. 800-813 ("Toba").
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K. Kasaya et al., A Simple Laterally Tapered Waveguide for Low-Loss
Coupling to Single Mode Fibers, 5(3) IEEE Photonics Tech. Letters 345
(March 1993) ("Kasaya").
S. Day, Silicon Based Fiber Pigtailed 1 x 16 Power Splitter, 28(1)
Electronics Letters 920 (May 1992) ("Day").
K. Kato et al., Packaging of Large-Scale Integrated-Optic N x N Couplers,
14(3) IEEE Photonics Tech. Letters 348 (March 1993) ("Kato").
Dagenais et al., Complex Needs Drive Optoelectronic Integration,
Optoelectronics World (July 1998) ("Dagenais").
Gates et al., Hybrid Integrated Silicon Optical Bench Planar Lightguide
Circuits, Electronic Components and Technology Conf. (1998) ("Gates").
Huang et al., A Coupled-Waveguide Grating Resonator Filter, IEEE
Photonics Tech. Letters, vol. 4 no. 8 (August 1992) pp. 884-886 ("Huang").
Patent Owner relies upon following Declarations:
ï‚· Declaration of Donald D. Davis, Ph.D., dated February 8, 2010, (PO
App. Br., Evidence App’x.) (“Davis Decl. I”).
ï‚· Declaration of Donald D. Davis, Ph.D., dated December 8, 2010, (PO
App. Br., Evidence App’x.) (“Davis Decl. II”).
ï‚· Declaration of Donald D. Davis, Ph.D., dated April 22, 2011, (PO
App. Br., Evidence App’x.) (“Davis Decl. III”).
Requester relies upon following Declarations:
ï‚· Declaration of W. John Tomlinson, Ph.D., dated May 26, 2010, (TPR
App. Br., Evidence App’x.) (“Tomlinson Decl. I”).
ï‚· Declaration of W. John Tomlinson, Ph.D., dated January 6, 2011, (PO
App. Br., Evidence App’x.) (“Tomlinson Decl. II”).
ï‚· Declaration of W. John Tomlinson, Ph.D., dated May 18, 2011, (PO
App. Br., Evidence App’x.) (“Tomlinson Decl. III”).
The Examiner provides a list of rejections proffered by Requester
(RAN 5-32), with indications as to whether those rejections have been
adopted. Given the large number of rejections and issues listed by both
Patent Owner and Requester (PO App. Br. 5-6; TPR App. Br. 5-7), we
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address the issues, findings of fact, and analysis for each party separately
below.

ISSUES (TPR)
Requester argues that several of the added claims lack written
description because the original specification does not describe a PLC that
equalizes intensities of light or that includes a gain flattening element to
discretely attenuate light energy (TPR App. Br. 7). Additionally, Requester
argues that Alexander discloses a PLC as recited in the instant independent
claims because it discloses the use of an optical splitter that was
commercially available (id.), and also argues that additional rejections, not
adopted because the perceived deficiency in Alexander, should be reinstated
(id.). Patent Owner disputes that the Examiner erred in the Examiner’s
determination of written description, and what Alexander actually discloses
(PO Resp. Br. 4-11).
Arguments which Requester could have made but chose not to make
in the Briefs are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii).
Requester’s issues arising from the respective positions of both parties and
the Examiner, which we consider herein, are:

1. whether the Examiner erred in concluding that claims 56, 57, 76,
102, and 103 satisfy the written description requirement of 35
U.S.C. § 112, first paragraph (TPR App. Br. 8-10).
2. whether the Examiner erred in concluding that claims 66-69 and
112-115 satisfy the written description requirement of 35 U.S.C.
§ 112, first paragraph (TPR App. Br. 10-11).
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3. whether the Examiner erred in concluding that claims 52 and 98
were definite under 35 U.S.C. § 112, second paragraph (TPR App.
Br. 11-12).
4. whether the Examiner erred in not adopting the rejection of claims
1, 3, 5-10, 12, 13, 19-21, 24, 26, 27, 37, 52, 61, 65, and 78 under
35 U.S.C. § 102(b) as being anticipated by Alexander? (See B1 and
BB2, TPR App. Br. 12-15).
5. whether the Examiner erred in not adopting the rejection of claims
1-31, 33-41, 43-55, 58-75, 78, 80-82, 84-87, 89-101, 104-106, and
108-121 under 35 U.S.C. § 103(a) as being obvious over
Alexander in view of various secondary references? (See B4-B22,
B25, B28-B31, BB1, BB3-BB9, and BB11-BB17, TPR App. Br.
15-30).

FINDINGS OF FACT (TPR)
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Specification of the '082 Patent
FF 1. The Specification of the '082 Patent discloses processes and
structures for the manipulation of light through filtering in a planar
lightguide circuit (PLC) (Spec. 1:14-17; Abs.).
FF 2. The Specification of the '082 Patent also provides:
Another approach is to apply an attenuating coating onto the
end-face surface of a waveguided filtering element underneath a
filtering layer. A further approach is to include attenuation
material within the zigzag-depicted optical path within the PLC
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210E. Another approach is to position the channels with the
highest power into locations with the lowest power transfer
efficiency, thereby achieving an inherent reduction of power
that accompanies beam divergence in the zigzag optical path of
a PLC 210E.
(Spec. 15: 20-29).
FF 3. The Specification of the '082 Patent also discloses:
Each optical path 230, and 240 of the PLC as well as the cores
255, 265 and 275 of the optical waveguides, can be made of a
transparent material that has a relatively high index of
refraction. The material 280, 285, 290, and 295 surrounding
the optical paths 230, 240 and cores 255, 265, and 275 can be
made of a medium having a lower index of refraction relative to
the cores and optical paths. . . . Both optical waveguides 255,
265, and 275 and the optical paths of the PLC 210 can be
designed to propagate single modes of optical energy so that the
optical energy travels as a single wave front in order to
substantially reduce attenuation while substantially increasing
band width and transmission distances.
(Spec. 9: 5-11, 30-35).

Alexander
FF 4. Alexander is directed to reconfigurable wavelength division
multiplexed (WDM) systems which include configurable optical routing
systems (Abs.). Alexander is directed to multiple embodiments of such
systems, with Fig. 1 illustrating such a system with switchable wavelength
selectors, and Fig. 3 illustrating such a system with an optical cross-connect
(Alexander 3:33-36, 46-48; 5:21-31; 12:33-53).
FF 5. Alexander provides, in part and with respect to Fig. 1:
Frequently, optical splitters used to divide a signal among
plural outputs are used as optical multiplexers, operated in
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reverse fashion from the splitter. Exemplary optical splitters
used in this manner for multiplexer 40 are selected from 1xN
wideband single mode splitters available from IOT Integrierte
Optik GmbH, Waghausel-Kirrlach, Germany, and fused fiber
combiners available from Gould, Inc., Millersville, Md.
Alternatively, optical routers can be used to combine optical
signals in the systems of the present invention. An exemplary
optical router is a WDM STIMAX®, available from Jobin
Yvon, Longjumeau Cedax, France.
(Alexander 5: 34-42).
FF6. Alexander also provides, in part and with respect to Fig. 3:
Alternatively, one of demultiplexers 410 and 420 can be
substituted with an optical splitter. When one splitter is
employed, the remaining demultiplexer acts as a filter for the
multiplexed wavelengths output by the splitter to ensure proper
wavelength selection through the cross-connect. The
demultiplexers are selected from any optical device which takes
an input multiplexed signal and separates each constituent
signal, placing each constituent signal on a separate output path.
An exemplary demultiplexer is the optical router WDM
STIMAX®, available from Jobin Yvon, Longjumeaeau Cedax,
France.
(Alexander 12: 56-67).

ANALYSIS (TPR)
ISSUE 1
Written Description under 35 U.S.C. § 112, First Paragraph
Claims 56, 57, 76, 102, and 103
With respect to claims 56, 76, and 102, Requester argues that the
Specification of the '082 Patent is not sufficiently detailed to support the
contention that the inventor has possession of the claimed invention of
equalizing the intensities of light energies within the PLC (TPR App. Br. 8).
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Requester alleges that the attenuation material within the PLC would
uniformly attenuate all of the channels of the multiplexed beams and would
not “equalize the intensities of light energy,” as provided in the subject
claims (TPR App. Br. 9). Patent Owner discusses the function of the PLC,
using Fig. 10 of the '082 Patent, to add or drop certain wavelengths of light,
and thus creating potential equalization (PO Resp. Br. 5), but Respondent
argues that the discussion is outside of the original disclosure and irrelevant
to the issue of written description (TPR Rebut. Br. 3). We agree with the
Patent Owner and conclude that the Examiner did not err in withdrawing the
rejection of claims 56, 76, and 102.
The Specification of the '082 Patent provides for attenuation material
within the PLC (FF 2), and Patent Owner has described how that material
may accomplish equalization. Even assuming Requester to be correct, in
arguing that “[t]he type of light energy intensity matching described in the
Patent Owner’s new example is entirely different from the equalization of
light energy described in the original specification and claims in Claim 56”
(TPR Rebut. Br. 4), we conclude that does not mean that such disclosure
cannot provide proper written description. Given that the claims recite only
that “the intensities of light energy” are equalized, we find the disclosed
materials sufficient to show support for that limitation. The test for
sufficiency of support is whether the disclosure “reasonably conveys to the
artisan that the inventor had possession at that time of the later claimed
subject matter.” Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570,
1575 (Fed. Cir. 1985) (quoting In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir.
1983)). While Requester relies on a declaration to argue that ordinarily
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skilled artisans would have understood that such equalization would only be
accomplished through elements external to the PLC (TPR App. Br. 9;
Tomlinson Decl. III ¶ 11), support for the limitation can be found in the
Specification where we are directed by the Examiner and Patent Owner. It
may not be the only way of accomplishing equalization, or possibly the best
mode of accomplishing such equalization, but we conclude it is sufficient to
provide written description support of the claimed limitation.
With respect to claims 57 and 103, Requester argues that “the term
‘discrete attenuation’ means attenuation that is applied to individual
wavelengths of light energy” (TPR App. Br. 9-10), even though Requester’s
citation to the '082 Patent talks about flattening the gain of an extended
spectral range (id.). Requester reiterates that such attenuation would have
been understood to have occurred outside the PLC (TPR App. Br. 10). For
similar reasons to those discussed supra, we do not conclude that the
Examiner erred in withdrawing the rejection of claims 57 and 103. We
understand Requester’s argument that gain flattening cannot be considered
to be discrete attenuation because all attenuation is uniform (TPR Rebut. Br.
5), but we find Patent Owner’s discussion that λ3' is not attenuated in the
PLC (PO Resp. Br. 6) to be sufficient to support the flattening the gain of an
extended spectral range, and thus to support the recitations of claims 57 and
103.
As such, we conclude that the Examiner did not err in withdrawing
the rejections of claims 56, 57, 76, 102, and 103 under 35 U.S.C. § 112, first
paragraph, as lacking proper written description.

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ISSUE 2
Written Description under 35 U.S.C. § 112, First Paragraph
Claims 66-69 and 112-115
Requester argues that the Examiner erred in withdrawing the rejection
of claims 66-69 and 112-115 under 35 U.S.C. § 112, first paragraph, as
lacking written description because the Specification of the '082 Patent does
not disclose waveguides internal to the PLC, only that the PLC has optical
paths (TPR App. Br. 10). Requester argues that the Examiner was in error to
conclude that ordinary skilled artisans would have understood that paths
may be called waveguides (id., citing ACP 9). Requester also cites to
Ethicon Endo-Surgery, Inc, v. U.S. Surgical Corp., 93 F.3d 1572, 1579 (Fed.
Cir. 1996), for the proposition that where different claim terms are used in
the same claim, the plain meaning of the claim will not bear a reading that
the terms are synonymous (TPR App. Br. 10).
However, we agree with Patent Owner (PO Resp. Br. 6-7), that the
Examiner did not err in withdrawing this rejection. While we agree with
Requester that the Specification of the '082 Patent discloses that the PLC has
optical paths, it also discloses that the optical paths in the PLC can be
optimized by the same methods applied to the optical waveguides (FF 3).
Additionally, claim 66 recites “a plurality of second optical waveguides,”
with claim 112 reciting the same limitation, and Requester does not dispute
that the Specification provides that the PLC can have additional internal
structures comporting with this limitation, only asserting that they cannot be
called “waveguides” (TPR Rebut. Br. 6). Written description analysis is not
confined to semantic restrictions but is concerned with what ordinary skilled
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artisans would have discerned from the disclosure. Given the actual
disclosure of the Specification of the '082 Patent (FF 3), we agree with the
Examiner that there is adequate written description support for the
limitations recited in claims 66 and 112.
Additionally, and contrary to Requester’s arguments (TPR App. Br.
11), we do not conclude that the Examiner found that the terms “optical
path” and “optical wavelength” to have the same meaning; rather, the
Examiner’s description provides that one of ordinary skill in the art would
think of the term “waveguide” as having a broad meaning (RAN 41) and that
such artisans could refer to the optical paths in the PLC as waveguides,
based on the disclosure of the '082 Patent (See FF 3). We also find Ethicon
to be unavailing of Requester’s position because the Examiner is not
construing the claims such that differing claim terms have the same
meaning, but rather to determine whether the recitations of the claims have
support in the Specification of the '082 Patent. As such, we conclude that
the Examiner did not err in withdrawing the rejection of claims 66-69 and
112-115 under 35 U.S.C. § 112, first paragraph.

ISSUE 3
Indefiniteness under 35 U.S.C. § 112, Second Paragraph
Claims 52 and 98
Requester argues that the Examiner erred in withdrawing the rejection
of claims 52 and 98 as being indefinite (TPR App. Br. 11). Under claim
differentiation principles, Requester argues that having the diverting
elements “outside the planar lightguide circuit” is the only embodiment
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disclosed, such that providing that limitation in claims 52 and 98 provides no
differentiation from the claims from which they depend, namely independent
claims 1 and 31 (id.). Requester also cites to Retractable Technologies, Inc.
v. Becton, Dickinson and Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011), for the
proposition that a dependent claim does not differentiate over its
independent claim if the dependent claim recites the only construction of the
invention provided in the specification (id.). We do not, however, find these
arguments to be persuasive.
We conclude that claims 52 and 98 cannot be found to be indefinite
under 35 U.S.C. § 112, second paragraph, because the recitations of the
claims are clear and unambiguous. The determination as to whether
independent claims 1 and 31 allow for the “diverting element” to be a part of
the “planar lightguide circuit,” given that they are separately claimed
elements, is discussed below with respect to Patent Owner’s appeal.
Nonetheless, claims 52 and 98, as recited, are not unclear or ambiguous, and
one of ordinary skill in the art could have discerned the scopes of those
claims from their recitations. Requester’s arguments potentially implicate a
rejection of those claims under 35 U.S.C. § 112, fourth paragraph, for failing
to limit a claim from which they depend, but such a rejection is neither
before the Examiner nor this panel.
Further, we note that Retractable Technologies was not directed to
claim differentiation, but rather to the district court’s claim construction,
stating that none of the claims “expressly recite a body that contains multiple
pieces,” and that the claims can be read to imply that the body is not limited
to a one-piece structure, but “that implication is not a strong one.”
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Retractable Technologies, 653 F.3d at 1035. The Federal Circuit did not
find claim 31, which recited a “one-piece” body, to be indefinite, only that
the claim construction for “body” must be limited to a one-piece body, based
on the disclosure of that patent. In the instant case, as Patent Owner argues
(PO Resp. Br. 8), the Specification of the '082 Patent does not limit the
invention to a diverting element outside the PLC.

ISSUE 4
Anticipation by Alexander
Claims 1, 3, 5-10, 12, 13, 19-21, 24, 26, 27, 37, 52, 61, 65, and 78
Requester argues that the Examiner erred in not adopting the rejection
of claims 1, 3, 5-10, 12, 13, 19-21, 24, 26, 27, 37, 52, 61, 65, and 78 as
being anticipated by Alexander (TPR App. Br. 12). Requester argues that
the Examiner erred in determining that Alexander only elaborated on the
optical splitter with respect to the embodiment of Fig. 1 and did not repeat
such details with respect to the embodiment of Fig. 3 (TPR App. Br. 14-15),
and in determining that the mere mention of a company does not require the
substitution of one particular product made by that company (TPR App. Br.
15). We need only consider the first, alleged point of deficiency to
determine that the Examiner did not err in withdrawing the anticipation
rejection over Alexander.
Alexander, with respect to the embodiment of Fig. 1, makes clear that
optical splitters can be used to divide a signal among plural outputs and that
exemplary optical splitters include 1xN wideband single mode splitters
available from IOT Integrierte Optik GmbH, Waghausel-Kirrlach, Germany
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(FF 6). The embodiment of Fig. 3, alleged to be anticipatory, does not
provide a specific example of optical splitters which may be deployed and
provides only that one of the demultiplexers can be substituted with “an
optical splitter” (FF 7). Requester asserts that it is well known in patent
drafting that once a component is introduced in an early figure of a patent,
the introductory detail applies to subsequent references and figures, and that
repetition of such details would be redundant (TPR App. Br. 14; TPR Rebut.
Br. 7). While we agree with Requester’s argument in general, we do not
agree that it shows error with respect to the Examiner’s findings on
Alexander.
Alexander addresses the use of optical splitters in embodiments
illustrated in Figs. 1 and 3, but provides specific examples of such a splitter
only with respect to the embodiment of Fig. 1 (FF 6, 7). Simply because one
embodiment in an applied reference cites to exemplary alternatives to that
embodiment does not mean that other embodiments are anticipatory with
respect to the same exemplary alternatives. An inventor or author may have
considered the full ramifications of espousing the use of exemplary
equipment to a certain embodiment, but not others. To extend the discourse
beyond that evidenced by the inventor’s or author’s writing is not proper
under 35 U.S.C. § 102. With respect to obviousness, such suppositions
could clearly be contemplated by ordinarily skilled artisans, as discussed
below in other sections, but are not pertinent to anticipation.
In addition, as pointed out by Patent Owner (PO Resp. Br. 10-11),
Alexander does sometimes repeat such specific disclosures, especially the
exemplary optical router WDM STIMAX® (FF 6, 7). As such, Alexander
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makes clear that the specific optical router disclosed is applicable to both
embodiments. While Requester points out that other terms in Alexander are
elucidated in their first recitation and then repeated without expansion (TPR
Rebut. Br. 7-8), we conclude that this does not rise to the level of actual
disclosure, although it does suggest obvious alteration that could be made.
Requester also cites to In re Baxter Travenol Labs, 952 F.2d. 388,
390-391 (Fed Cir. 1991), as detailing that secondary documents describing a
commercially available product can be used to explain the meaning of a
primary reference applied in anticipation (TPR App. Br. 13-14). This case,
however, is unavailing of Requester’s position as there was no ambiguity in
that case that the primary reference described a commercially available
product with respect to the embodiment argued to anticipate the claims. In
the instant case, the issue is not whether the IOT ’226 patent can be used to
supplement Alexander, but whether what is discussed with respect to one
embodiment must be applied to subsequent embodiments disclosed.
As such, we do not conclude that the Examiner erred in determining
the extent of the disclosure of Alexander, and we further conclude that the
Examiner did not err in withdrawing the anticipation rejection of claims 1, 3,
5-10, 12, 13, 19-21, 24, 26, 27, 37, 52, 61, 65, and 78 by Alexander.

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ISSUE 5
Obviousness Rejections Relying on Alexander
Claims 1-31, 33-41, 43-55, 58-75, 78, 80-82, 84-87, 89-101, 104-106,
and 108-121
Requester argues that rejections of claims 1-31, 33-41, 43-55, 58-75,
78, 80-82, 84-87, 89-101, 104-106, and 108-121 relying on Alexander
should have been adopted by the Examiner because the Examiner withdrew
the rejections because “Alexander does not disclose the PLC limitation,”
which Requester alleges was in error (TPR App. Br. 15-30). However, per
the discussion supra, we do not conclude that the Examiner erred in
determining the extent of the disclosure of Alexander, and we further
conclude that the Examiner did not err in withdrawing the obviousness
rejections of claims 1-31, 33-41, 43-55, 58-75, 78, 80-82, 84-87, 89-101,
104-106, and 108-121 over Alexander and other references of record.

CONCLUSIONS (TPR)
We conclude that: 1) the Examiner did not err in concluding that
claims 56, 57, 76, 102, and 103 satisfy the written description requirement of
35 U.S.C. § 112, first paragraph; 2) the Examiner did not err in concluding
that claims 66-69 and 112-115 satisfy the written description requirement of
35 U.S.C. § 112, first paragraph; 3) the Examiner did not err in concluding
that claims 52 and 98 were definite under 35 U.S.C. § 112, second
paragraph; 4) the Examiner did not err in not adopting the rejection of claims
1, 3, 5-10, 12, 13, 19-21, 24, 26, 27, 37, 52, 61, 65, and 78 under 35 U.S.C.
§ 102(b) as being anticipated by Alexander; and 5) the Examiner did not err
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in not adopting the rejection of claims 1-31, 33-41, 43-55, 58-75, 78, 80-82,
84-87, 89-101, 104-106, and 108-121 under 35 U.S.C. § 103(a) as being
obvious over Alexander in view of various secondary references.

ISSUES (PO)
We also note that while Patent Owner has indicated the appeal of all
pending, rejected claims in the Notice of Appeal, Patent Owner’s issues
argued in the Briefs do not encompass all of those claims (PO App. Br. 5-6).
Specifically, the merits of the rejections of claims 2, 3, 5-23, 25, 28-31,
33-37, 48, 51, 52, 54, 55, 61-65, 67-74, 78, 80-83, 94, 97, 98, 100, 101,
108-111, 113-120, and 124, adopted by the Examiner, have not been
addressed by Patent Owner in their Briefs. As such, we summarily affirm
the rejections of those claims. See 37 C.F.R. § 41.67(c)(1)(vii).
Arguments which Patent Owner could have made but chose not to
make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.67(c)(1)(vii). Patent Owner’s issues arising from the respective
positions of both parties and the Examiner, which we consider herein, are:

6. whether the Examiner erred in rejecting claims 38-41, 43-47, 49,
50, 58-61, 75, 84-87, 89-93, 95, 96, 104-107, and 121 for failing to
satisfy the written description requirement of 35 U.S.C. § 112, first
paragraph (PO App. Br. 8-12).
7. whether the Examiner erred in rejecting claims 38-41, 43-47, 49,
84-87, 89-93, and 95 as being indefinite under 35 U.S.C. § 112,
second paragraph (PO App. Br. 12).
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8. whether the Examiner erred in adopting the rejection of claim 26
under 35 U.S.C. § 103(a) as being obvious over Aksyuk and
Danagher? (See A2, PO App. Br. 12-16).
9. whether the Examiner erred in adopting the rejections of claims 1,
4, 24, 53, and 66 under 35 U.S.C. § 103(a) as being obvious over
Aksyuk and Danagher, further in view of Seki or Yamasaki, taken
with Scobey, Day, or Kato? (See A4, A6, AA3, AA8, AA9, AA17,
and AA20, PO App. Br. 16, 23-31).
10. whether the Examiner erred in adopting the rejection of claims 1
and 26 under 35 U.S.C. § 103(a) as being obvious over Alexander
and IOT ’226 patent? (See B2, PO App. Br. 16-21).
11. whether the Examiner erred in adopting the rejections of claims 26
and 27 under 35 U.S.C. § 103(a) as being obvious over Toba and
Bristow, and further in view of Chang? (See D1 and D2, PO App.
Br. 21-23, 31-32).
12. whether the Examiner erred in adopting the rejections of claims 99
and 112 under 35 U.S.C. § 103(a) as being obvious over Aksyuk
and Bristow, further in view of Seki or Yamasaki, taken with Day,
or Kato? (See AA26 and AA29, PO App. Br. 31-32).

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FINDINGS OF FACT (PO)
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Specification of the '082 Patent
FF 7. The Specification of the '082 Patent discloses a configuration,
illustrated in Fig. 10 reproduced below, where a diverting element (1000) is
inserted at a point common to the branches of the two optical circuits (Spec.
14:1-14).

Fig. 10 provides a diagram of a dynamically and remotely configurable
drop-add plus optical cross-connect format configuration

FF 8. The Specification of the '082 Patent also discloses a
configuration, illustrated in Fig. 13 reproduced below, where gain flattening
elements (1300) are added to flatten the gain of an extended optical range
(Spec. 14:58-15:6).
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Fig. 13 provides a diagram of a configuration providing optical gain
flattening and selective spectral amplification

FF 9. The Specification of the '082 Patent provides that the gain
flattening elements (1300) may be provided, or “attenuation material within
the zigzag-depicted optical path within the PLC 210E” may be employed to
achieve the gain flattening (Spec. 15:22-24).

Aksyuk
FF 10. Aksyuk is directed to a wavelength-selective add-drop
multiplexer for adding and dropping components from a wavelength-
division-multiplexed optical signal (Abs.). Aksyuk does not explicitly
disclose how the selection of specific spectral components occurs for the
add-drop process in the multiplexer.

Danagher
FF 11. Danagher is directed to an optical add/drop multiplexer
(Abs.). In one embodiment, Danagher discloses that a low-frequency,
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low-amplitude dither signal may be incorporated into the main signal
without impairment or corruption of the high-frequency data signal
(Danagher 6:30-39), where that dither signal can be applied to control
the adding or dropping of channels (Danagher 7:15-25).

Seki
FF 12. Seki is directed to a demultiplexing and/or multiplexing
optical circuit (Seki Abs.), which can include an arrangement where
only a single optical fiber array may be needed to provide a
connection (Seki 4:63-66), as illustrated in Fig. 4 below:

Fig. 4 provides second embodiment of an optical circuit

Alexander
FF 4. Alexander is directed to reconfigurable wavelength division
multiplexed (WDM) systems which include configurable optical routing
systems (Abs.). Alexander is directed to multiple embodiments of such
systems, with Fig. 1 illustrating such a system with switchable wavelength
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selectors, and Fig. 3 illustrating such a system with an optical cross-connect
(Alexander 3:33-36, 46-48; 5:21-31; 12:33-53).
FF 13. Alexander details that optical splitters can be used to divide a
signal among plural outputs, and that an exemplary optical splitter is a 1xN
wideband single mode splitters available from IOT Integrierte Optik GmbH
(Alexander 5: 31-36). Alexander also provides that one of demultiplexers,
of the Fig. 3 embodiment, can be substituted with an optical splitter, with the
other demultiplexer acting as a filter for the multiplexed wavelengths output
by the splitter to ensure proper wavelength selection through the cross-
connect (Alexander 12: 56-61).

Toba
FF14. Toba discloses a method for adding and dropping
specific wavelengths, through an add/drop multiplexer (ADM), using
an arrayed waveguide grating (AWG) coupled to 2x2 switches (Toba,
p. 805). Toba provides that one of the ports is used for
adding/dropping the signal at the node, with the optical switches
providing “add/drop” and “through” modes (id.).

Fig. 7 provides a schematic of a 15-channel ADM filter
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Chang
FF15. Chang discloses two embodiments which allow for
remote control without sending an electronic signal to the switch
controller (Chang, p. 1333-1335). One embodiment using in-band
signaling with an extra wavelength dedicated an embedded channel to
transport the control information to the controller to remotely
configure the 2x2 switches (Chang, p. 1335, 1
st
column). In another
embodiment, the system uses a dedicated, separate channel to achieve
out-of-band control signaling (Chang, p. 1335, 2
nd
column).

ANALYSIS (PO)
ISSUE 6
Written Description under 35 U.S.C. § 112, First Paragraph
Claims 38-41, 43-47, 49, 50, 58-61, 75, 84-87, 89-93, 95, 96, 104-
107, and 121
Patent Owner adopts claim 46 as representative of the claims rejected
as lacking proper written description (PO App. Br. 8). Patent Owner argues
that Fig. 10 of the '082 Patent expressly discloses the configuration of a
diverting element with a PLC (PO App. Br. 9), and that the Examiner’s
position on written description fails in the absence of disclosure of the
ordinary level of skill in the art (PO App. Br. 11-12). Requester responds
that nothing in Fig. 10 or the supporting disclosure supports having the
diverting element within the PLC (TPR Resp. Br. 4-6), and that no such
express statement of the level of skill in the art is required by the statute
(TPR Resp. Br. 4-6). We agree with Requester.
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A comparison of Figs. 10 and 13 (FF 7, 8) is helpful in pointing out
the frame of reference from which one of ordinary skill in the art would
view the entire disclosure. Both figures illustrate a PLC, as discussed with
respect to and illustrated in Fig. 7 (Spec. 13:21-38), and a separate element
that is used therewith (elements 1000, 1300, Figs. 10 and 13). As Requestor
points out (TPR Resp. Br. 5), the gain flattening elements are outside the
PLC, with the Specification providing for a separate embodiment with such
elements being incorporated therein (FF 9). The diverting element is
similarly illustrated in Fig. 10, and without an accompanying recitation that
the diverting element can be within the PLC.
Based on this comparison and the supporting description, we conclude
that one of ordinary skill in the art would determine that the diverting
elements are used in the invention of the '082 Patent outside of the PLC. We
acknowledge that Dr. Davis has testified that “the entire optical circuit
depicted in the figure, including the diverting element 1000, is constructed in
a planar optical waveguide structure” and that the optical paths are in the
PLC (Davis Decl. III ¶14). We are not convinced that this conveys the
presence of elements within the PLC, especially in view of Fig. 13 and its
description. Therein, the gain flattening elements are disclosed as being
outside the PLC, with additional description providing that they may be
within the optical path within the PLC (FF 9). No corresponding disclosure
is made for Fig. 10, detailing embodiments that would have the diverting
element(s) within the PLC.
Patent Owner also argues that, per Dr. Davis’ Declaration, the optical
paths illustrated in Fig. 10 cannot be in a fiber because Fig. 10 does not
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illustrate transition elements such as lens or couplers, and cannot be in free
space because that figure does not illustrate any means for changing the path
of the beam (PO App. Br. 9-10), and thus the paths must be in the PLC.
Patent Owner provides a response to this line of argument in its own
Rebuttal Brief by stating that Fig. 10 is not “illustrating representative or
actual structural positions of the PLC and the diverter 1000” (PO Rebut.
Br. 4), and that “Figure 10 is provided as an aide to illustrate the concepts
surrounding the invention” (id.). As such, we do not take a lack of
illustrated transition elements, not needed to explain the concepts of the
invention, as conveying a required structure for the embodiment illustrated
in Fig. 10
Patent Owner also cites column 3, lines 44-46 of the '082 Patent as
“explicitly disclos[ing] that the filtering device can be deposited on the PLC
itself” (PO Rebut. Br. 4-5), but such deposition places it on the outside, and
not on an optical path spanning the sides, per representative claim 46. Patent
Owner also draws our attention to the Specification’s recitations of “the PLC
and filtering device combination” (PO Rebut. Br. 5), but we conclude that
the discussion of the combination would have been moot if the inventors had
contemplated them being a single element. Further, we do not determine
that the absence in the Specification of the '082 Patent of evidence that the
remotely configurable element is outside the PLC (PO Rebut. Br. 5-6) to be
proof that it is in the PLC. As such, looking at the totality of the disclosure
of the '082 Patent, we conclude it does not demonstrate that the inventors
had within their possession at the time of filing embodiments corresponding
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to claims 38-41, 43-47, 49, 50, 58-61, 75, 84-87, 89-93, 95, 96, 104-107, and
121.
Further, we agree with Requester that there is no requirement that an
Examiner expressly set out the level of skill in the art in making a rejection
of claims as lacking proper written description support (TPR Resp. Br. 6).
Per the Patent Owner’s stated level of skill in the art (PO App. Br. 11), we
find that both Dr. Davis and Dr. Tomlinson fall within that standard, and
both reach opposite conclusions about the disclosure of Fig. 10, and
discussion thereof in the Specification, in the view of ordinarily skilled
artisans (Davis Decl. III ¶14; Tomlinson Decl. III ¶14). As such, we
conclude that any lack of an express recitation of the level of skill in the art
by the Examiner does not show error in the Examiner’s analysis or rejection.

ISSUE 7
Indefiniteness under 35 U.S.C. § 112, Second Paragraph
Claims 38-41, 43-47, 49, 84-87, 89-93, and 95
Patent Owner argues that the Examiner’s rejection under § 112,
second paragraph, “rests solely on his erroneous conclusion that the written
description is not met for these claims,” and that Patent Owner’s prior
comments have shown this be in error (PO App. Br. 12). Requester
responds that the rejections under different paragraphs of § 112 are separate
and distinct, because the Examiner concluded it was not clear how light
energy already inside the PLC can be fed into the PLC (TPR Resp. Br. 7).
However, because we conclude that the Examiner did not err in rejecting the
subject claims under § 112, first paragraph, supra, and that is the only basis
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that Patent Owner traverses the rejection under § 112, second paragraph, in
their brief, we conclude that Patent Owner has not shown that the Examiner
erred in rejecting claims 38-41, 43-47, 49, 84-87, 89-93, and 95 as being
indefinite under 35 U.S.C. § 112, second paragraph.

ISSUE 8
Aksyuk and Danagher
Claim 26
Patent Owner argues that the Examiner erred in adopting the rejection
of claim 26 as being obvious over Aksyuk amd Danagher because one of
ordinary skill in the art would have had no reason to combine the references
“to achieve the invention recited by Claim 26” (PO App. Br. 12-13). Patent
Owner argues that there would have been no reason to introduce additional
complexity into the simple, robust system of Aksyuk, other than improper
hindsight, that the changes envisioned by the Examiner would require
additional infrastructure and processing steps, and that “power penalties” on
the incoming signal introduced by the system of Danagher would require
compensation to achieve the required power level at the receiver (PO App.
Br. 13-15). In making these arguments, Patent Owner references numerous
portions of Dr. Davis’ declaration (Davis Decl. II ¶¶ 19-21). Requester
counters that the Examiner’s conclusions about the necessity of adding
complexity through the use of some type of controller are logical and not
based on improper hindsight (TPR Resp. Br. 7-10). We agree with
Requester.
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As noted by both the Examiner and Requester (ACP 38-39; TPR
Resp. Br. 7-8), some type of control for the system of Aksyuk would be
required for the system to perform as a switch, where Aksyuk does not
explicitly disclose any particular controller (FF 10). Patent Owner has
tacitly acknowledged the same (PO Rebut. Br. 8), although Patent Owner
contends that any control should not impair the working of Aksyuk’s system
(id.), and that a simpler control method than the processes disclosed in
Danagher would have been selected by one of ordinary skill in the art (id. at
9). Such a position acknowledges that some type control was necessary and
undercuts Patent Owner’s argument that only hindsight would motivate the
addition of equipment (PO App. Br. 13), and Patent Owner’s argument that
Danagher would require additional infrastructure and processing steps (id. at
13-14), in that the addition of any control means would require further
infrastructure and/or processing steps.
With respect to Patent Owner’s contention that “it is more likely that
one having ordinary skill in the art would have settled on a simpler method
or means to control the optical switches of Akysuk than that described by
Danagher” (PO Rebut. Br. 9), we do not conclude that such a contention is
dispositive of obviousness. The manner of control applied to the switch of
Akysuk would be dependent on the application of the switch, with the
derivation of a control signal from the processed optical signal being one of
the possibilities. Patent Owner has not shown that the processes in
Danagher were not prior art to the instant invention, and as such, could be
considered with respect to specific applications, even if simpler
constructions could have been adopted for other applications. Thus, while
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the simplest method or means may be obvious, that does not imply that other
methods or means would not also be obvious. With respect to the contention
that Danagher would impair the function of Aksyuk’s system, we discuss
that and the potential “power penalties” below.
Patent Owner relies on Dr. Davis’ declaration, providing that power
reductions or “penalties” must be overcome by increasing transmitter power
or reducing power losses in other components (Davis Decl. II ¶ 21). We
agree but conclude that any system which derives a control signal from the
subject optical signal would have some sort of loss or “penalty,” occurring
from modulation of the subject signal. The proper consideration is whether
such losses or “penalties” would be unacceptable to ordinarily skilled
artisans, contemplating the combination of Aksyuk and Danagher.
Patent Owner argues that the Examiner’s position that such power
losses would have been found to be “not unacceptable” (ACP 39) is in error,
and the testimony of Dr. Tomlinson (Tomlinson Decl. III ¶17) cannot be
relied upon, because the declarant provides no basis for his opinion and fails
to identify the level of skill in the art (PO App. Br. 15). We do not agree.
As discussed above with respect to the Examiner’s findings, we do not
conclude that it is necessary to define explicitly the level of skill in the art if
there is no dispute in what that level is. Dr. Tomlinson is certainly capable
of reading Danagher and observing the disclosure there of the incorporation
of a dither signal, used for control, into the main signal without impairment
or corruption (FF 11), as are we. Minor differences in the level of skill in
the art would not change such testimony, nor change the disclosure of
Danagher itself. One of ordinary skill in the art could have conceived that
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the application of Danagher could be made, relying on the specific
embodiment (FF 11), to a system of Aksyuk without impairment or
corruption of the main signal. The proscription of a basis other than logic
does not seem necessary. Dr. Davis’ testimony (Davis Decl. II ¶¶ 19-21),
proffered by Patent Owner, raises the issue of “power penalties,” but does
not indicate them to be fatal to the combination, only that they “must be
accounted for” (id. at ¶ 21). We conclude that accounting for such potential
problems is well within the skill of ordinarily skilled artisans. We further
conclude that Patent Owner has not provided persuasive evidence that one of
ordinary skill in the art would have had no reason to combine Aksyuk and
Danagher to reach the method recited in claim 26.

ISSUE 9
Aksyuk and Danagher, further in view of Seki or Yamasaki, taken with
Scobey, Day, or Kato
Claims 1, 4, 24, 53, and 66
With respect to claims 1, 4, 24, 53, and 66, Patent Owner asserts that
its arguments regarding the combination of Aksyuk and Danagher supra,
apply equally to the rejections based on the same references with the
addition of other secondary references (PO App. Br. 16, 23-24, 29-30). We
agree that they apply equally, but we continue not to find them persuasive,
as discussed supra.
In addition, Patent Owner argues that the combination of Aksyuk,
Danagher, and Yamasaki fails to teach or suggest all of the elements of
claim 4 (PO App. Br. 23). Specifically, Patent Owner argues that Danagher
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does not disclose that the “diverting element is controlled by sampling the
first light energy,” per claim 4, because the dither signal in Danagher in not
the same as the digital payload signal (id.). Requester responds that
Danagher teaches that the demultiplexed optical signal B1 is tapped by the
optoelectronic converter and the sampled signal is used to control the switch
(TPR Resp. Br. 13). We agree with Requester.
Patent Owner appears to argue that because Danagher uses the dither
signal that operates at a wavelength other than the wavelength of the
information signal, it cannot meet the limitations of claim 4 (PO Rebut. Br.
12). Claim 1 recites that “first light energy at a predetermined wavelength”
is fed away from the PLC, but we do not read that claim as requiring that the
first light energy can only comprise light of a single wavelength. A
predetermined wavelength is fed away, per claim 1, but we do not read
Patent Owner’s implicit limitation onto the “first light energy.” Similarly,
Patent Owner’s disclosed support for claim 4 (PO App. Br. 3) is column 14,
lines 15-27 of the '082 Patent, which does not require that the sampling of
the first light energy, used to control the diverting element, is at the same
“predetermined wavelength” specified in claim 1. Requester has specified
the section of Danagher that teaches the recitations of claim 4 (TPR Resp.
Br. 13). Thus, we do not find Patent Owner’s arguments to be persuasive of
Examiner error in the adopted of the rejection of claim 4.
Additionally, with respect to the rejection of claim 24, Patent Owner
argues that one of ordinary skill in the art would not have combined the filter
of Scobey with the device of Seki or Yamasaki because the result would
have been inoperable (PO App. Br. 24). Patent Owner alleges that Scobey
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describes positioning a continuous filter but not tuning the continuous filter
(PO App. Br. 24-25; PO Rebut. Br. 13), as claim 24 requires “a tunable
filter.” Requester responds that the Examiner properly gave “tunable filter”
its broadest reasonable interpretation consistent with the specification,
without importing additional unclaimed limitations and without ignoring any
express language of the claims (TPR Resp. Br. 13). We agree with
Requester.
Patent Owner opines that “[n]othing in the specification states that this
tunable character of the filter can be achieved by moving the position of an
optical path as disclosed in Scobey” (PO App. Br. 24), but that answers the
wrong question. The question is what the Specification provides for a
definition for “tunable filter,” but the answer is that while the Specification
mentions the term, no definition is given. Patent Owner suggests that one of
ordinary skill in the art would have understood a “tunable filter” to mean a
“filter structure is adjusted, such as by temperature, to cause the filter to act
upon a different wavelength of light” (PO App. Br. 25), but such a definition
is consistent with the broader definition asserted by the Examiner. We
conclude that the filter in Scobey provides filtering that is adjustable and is
sufficient to disclose that element of claim 24.
Patent Owner also argues that the filter of Scobey would not work on
the devices disclosed in Seki and Yamasaki, and any combination would not
work as intended (PO App. Br. 26-28). However, it is well-established that
a determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.” In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859
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(Fed. Cir. 1985) (en banc) (noting that the criterion for obviousness is not
whether the references can be combined physically, but whether the claimed
invention is rendered obvious by the teachings of the prior art as a whole)).
Thus, the question is not whether the filter of Scobey can be integrated
physically with the devices in Seki and Yamasaki, but rather whether the
incorporation of a filter that is tunable into those devices would have been
obvious to those of ordinary skill in the art in view of the cited references.
As Requester points out (TPR Resp. Br. 14), Dr. Tomlinson testifies that it
would have been obvious to incorporate the filter of Scobey into the PLC of
Seki and Yamasaki (Tomlinson Decl. I ¶14), and we agree that such a
combination would have been motivated, as determined by the Examiner
(RAN 15). As such, we conclude that the Examiner did not err in adopting
the rejections of claim 24.
In addition, with respect to claim 53, Patent Owner argues that the
Examiner has misconstrued the term “serpentine,” as recited in claim 53, in
that the paths in Fig. 4 of Seki, relied upon by the Examiner (RAN 20), do
not include an “S” shape as required by the Specification of the '082 Patent
(PO App. Br. 29-30). Requester responds that the '082 Patent Specification
“says nothing at all about an “S” shaped waveguide” (TPR Resp. Br. 15).
We agree with Requester. Patent Owner’s broader definition of “serpentine”
of “winding or turning one way or another” (PO App. Br. 30) seems to
comport with the selected embodiment of Seki (FF 12), and we agree that
neither the claims nor the Specification recite a requirement of an “S” shape.
As such, we conclude that the Examiner did not err in adopting the
rejections of claim 53.
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With respect to the rejection of claim 66, Patent Owner argues that
while Day or Kato supply the additional claim elements of claim 66, the
Examiner does not consider the effect of the combination (PO App. Br. 29).
Patent Owner argues that both Day and Kato disclose splitters, not
multiplexers or demultiplexers, one of ordinary skill in the art would not
have substituted those splitters for the multiplexers or demultiplexers of
Aksyuk (id.). However, we agree with Requester (TPR Resp. Br. 14) that
the combination would be motivated by mounting structures employed by
Day or Kato, to which claim 66 is directed. While we acknowledge that
splitters and multiplexers or demultiplexers are not synonymous, we agree
with the Examiner and Requester that it would have been obvious to employ
the same mounting structures. As such, we conclude that the Examiner did
not err in adopting the rejections of claim 66.
As such, we conclude that Patent Owner has not shown the Examiner
erred in adopting the rejections of claims 1, 4, 24, 53, and 66 over Aksyuk
and Danagher, further in view of Seki or Yamasaki, taken with Scobey, Day,
or Kato.

ISSUE 10
Alexander and IOT ’226 Patent
Claims 1 and 26
Patent Owner argues that the Examiner erred in adopting the rejection
of claims 1 and 26 over the combination of Alexander and IOT ’226 patent
because one of ordinary skill in the art would not have modified the Fig. 3
embodiment of Alexander with the splitter disclosed in IOT ’226 patent (PO
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App. Br. 16). While Patent Owner acknowledges the express language in
Alexander to attempt the combination, Patent Owner argues that the
combination would fail because there would have been no reasonable
expectation of success (PO App. Br. 21). Patent Owner expounds on the
results for the proffered combination of Alexander and IOT ‘226 patent and
the power losses that would be incumbent on such a combination (PO App.
Br. 18-21).
Requester responds that the decision to uses splitters and/or
multiplexers/demultiplexers “would have been an engineering decision that
took in to consideration the high cost of the multiplexer/ demultiplexer
elements and the higher losses associated with the splitter” (TPR Resp. Br.
11). Requester also argues that potential increased costs and inefficiencies
do not bear on the question of obviousness in view of other reasons to
implement (TPR Resp. Br. 11-12). We agree with Requester.
Only a reasonable expectation of success, and not a guarantee, is
needed to show obviousness. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1364 (Fed. Cir. 2007). Patent Owner has not provided persuasive evidence
that the system of the combination of Alexander and IOT ’226 patent would
not function, only that that power losses would raise issues. Given the
explicit recitation in Alexander (FF 13), the inventors clearly contemplated
that splitters could be substituted for the multiplexer and/or the
demultiplexer. We also agree with the Examiner that any splitter, other than
that recited in IOT ’226 patent, would raise the issues of power losses and
imbalance to the system (RAN 36). Like the Examiner (RAN 36-37), we
find it difficult to imagine that one of ordinary skill in the art simply would
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dismiss the suggestion found explicitly in Alexander, even with full
consideration of the potential problems identified by Patent Owner.
Patent Owner argues that while the splitter of IOT ’226 patent may be
used as a multiplexer, it may not be used as a demultiplexer (PO App. Br.
18), citing to Dr. Davis’ declaration (Davis Decl. III ¶¶ 18-19). Requester
acknowledges the same (TPR Resp. 11), but argues that the splitter, in
conjunction with wavelength selectors 300 of Alexander, can act as a
demultiplexer (id.), citing Dr. Tomlinson’s declaration (Tomlinson Decl. II
¶ 11). We agree with Requester that it would have been obvious that a
splitter could have been used as a demultiplxer in the context of the setup of
Alexander. Additionally, Patent Owner’s discussion (PO App. Br. 18-21)
also makes clear that splitters can be used to demultiplex, albeit at a power
loss, discussed supra, such that we determine that Patent Owner’s assertion
that the splitter of IOT ’226 patent may not be used as a demultiplexer to be
incorrect.
As such, we conclude that Patent Owner has not shown the Examiner
erred in adopting the rejection of claims 1and 26 as being obvious over
Alexander and IOT ’226 patent.

ISSUE 11
Toba and Bristow, also taken with Chang
Claims 26 and 27
Patent Owner argues that Toba fails to disclose all of claim 26,
namely “demultiplexing the light energy by dropping first light energy at a
predetermined wavelength having first information content from said planar
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lightguide circuit” (PO App. Br. 21-22). Patent Owner argues that the loop-
back filters of Toba provide optical switches which allow for the adding and
dropping of optical signals, but that those elements are outside of the PLC,
and thus cannot teach or suggest the cited element of claim 26 (PO App. Br.
22). Requester responds that Toba provides for the demultiplexing function
recited in claim 26 (TPR Resp. Br. 12). We agree with Requester.
Further to our discussion supra, finding no written description support
for the filtering device residing inside of the PLC, we agree with the
Examiner that Toba operates in the same manner as Fig. 10 of the '082
Patent (RAN 37-38). Compare FF 7 with FF 14. Both provide for dropping
of a predetermined wavelength using a PLC (element “λ3” in FF 7; element
“[1]” and “[3]” in FF 14). Given that earlier discussion, we conclude that
claim 26 should not be read as dropping of a predetermined wavelength
within the PLC, but rather as dropping of the predetermined wavelength so
that is does not pass through and return to the PLC, i.e. from said planar
lightguide circuit. Under such an interpretation, we conclude that Toba and
Bristow teach or suggest all of the elements of claim 26 and we further
conclude that the Examiner did not err in adopting the rejection of claim 26
on that basis.
With respect to the rejection of claim 27, which the Examiner adopted
in view of the combination of Toba, Bristow, and Chang (RAN 37-38),
Patent Owner argues that since the Examiner has combined Toba and
Bristow to provide a system which can have the control information travel
on the same channel as the information signal, this rationale runs counter to
Chang, where the control signal travels independent of the information
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signal (PO App. Br. 32). Requester responds that the rationale for
combining the references and Chang is not in conflict because remote
configuration and a dedicated control signal are not mutually exclusive (TPR
Resp. Br. 16). We agree with Requester.
Patent Owner points out that the proposed rationale for combining
Toba and Bristow, in Requester’s Request for Reexamination, is Bristow’s
teaching that optical control removes the requirement that entire signals
must be converted to achieve routing (PO Rebut. Br. 17). Patent Owner
likens this rationale to Bristow’s teaching of reading and routing based on
the header information, and that control information must travel on the same
channel as the information signal (id.). However, we do not necessarily find
this to be the case. The removal of the requirement that entire signals be
converted does not necessarily result in the control information traveling in
the same channel as the information signal. Chang discloses two
embodiments as alternatives, with in-band and out-of-band signaling (FF
16). Having a “dedicated control signal of light energy,” per claim 27,
would have been seen as an obvious variation of the in-band signaling as
disclosed in Toba and Bristow. Chang provides for remote control of
switching (FF 15), which is the rationale for the combination of Toba and
Bristow. We discern no conflict in the adopted rationales. As such, we
conclude that Patent Owner has not shown the Examiner erred in adopting
the rejection of claim 27 over Toba, Bristow, and Chang.

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ISSUE 12
Aksyuk and Bristow, further in view of Seki or Yamasaki, taken with
Day, or Kato
Claims 99 and 112
Patent Owner argues that claims 99 and 112 recite comparable subject
matter to claims 53 and 66, respectively (PO App. Br. 31), and that the
rejections of those claims should be withdrawn for similar reasons (id.). As
we do not find Patent Owner’s arguments with respect to the rejections of
claims 53 and 66 persuasive, as discussed supra, we likewise do not find
them persuasive of examiner error with respect to the adopted rejections of
claims 99 and 112.

CONCLUSIONS (PO)
We conclude that: 6) the Examiner did not err in in concluding that
claims 38-41, 43-47, 49, 50, 58-61, 75, 84-87, 89-93, 95, 96, 104-107, and
121 fail to satisfy the written description requirement of 35 U.S.C. § 112,
first paragraph ; 7) the Examiner did not err in concluding that claims 38-41,
43-47, 49, 84-87, 89-93, and 95 were indefinite under 35 U.S.C. § 112,
second paragraph; 8) the Examiner did not err in adopting the rejection of
claim 26 under 35 U.S.C. § 103(a) as being obvious over Aksyuk and
Danagher; 9) the Examiner did not err in adopting the rejections of claims 1,
4, 24, 53, and 66 under 35 U.S.C. § 103(a) as being obvious over Aksyuk
and Danagher, further in view of Seki or Yamasaki, taken with Scobey, Day,
or Kato; 10) the Examiner did not err in adopting the rejection of claims 1
and 26 under 35 U.S.C. § 103(a) as being obvious over Alexander and IOT
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’226 patent; 11) the Examiner did not err in adopting the rejections of claims
26 and 27 under 35 U.S.C. § 103(a) as being obvious over Toba and
Bristow, and further in view of Chang; and 12) the Examiner did not err in
adopting the rejections of claims 99 and 112 under 35 U.S.C. § 103(a) as
being obvious over Aksyuk and Bristow, further in view of Seki or
Yamasaki, taken with Day, or Kato.

DECISION
The Examiner’s decision to not adopt proffered rejections of claims
56, 57, 76, 102, and 103 is affirmed. The Examiner’s decision to adopt
rejections of claims 1, 4, 24, 26, 27, 38-41, 43-47, 49, 50, 53, 58-60, 66, 75,
77, 82-87, 89-93, 95, 96, 99, 104-107, 112, and 121-122 is also affirmed.
Additionally, the rejections of claims 2, 3, 5-23, 25, 28-31, 33-37, 48,
51, 52, 54, 55, 61-65, 67-74, 78, 80-83, 94, 97, 98, 100, 101, 108-111,
113-120, and 124 are affirmed summarily.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED

ack

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Patent Owner:
Fahmi, Sellers, Embert & Davitz
84 W. Santa Clara St.
Suite 550
San Jose, CA 95113

Third Party Requester:
David L. McCombs
Haynes and Boone, LLP.
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219