Ex Parte 6415082 et al

Patent Trial and Appeal Board

Jul 14, 2015

95001175 (P.T.A.B. Jul. 14, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,175 04/24/2009 6415082 5145-CIRREX-RI175 1652
27571 7590 07/15/2015
Ascenda Law Group, PC
333 W San Carlos St.
Suite 200
San Jose, CA 95110
EXAMINER
MENEFEE, JAMES A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/15/2015 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 Respondent

v.

GRAYWIRE LLC
Patent Owner, 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 REQUEST FOR REHEARING

Appeal 2012-006121
Reexamination Control No. 95/001,175
Patent 6,415,082 B1

2
In a Request for Rehearing, filed October 2, 2013 (“Req. Reh’g.”),
Third Party Requester Cisco Systems, Inc. (hereinafter “Requester”)
requests that we reconsider the Board’s Decision of September 5, 2013
(hereinafter “Decision”). Specifically, Requester asserts that we overlooked
or misapprehended specific claims and claim limitations in rendering our
decision, as well as misapprehending an applied reference and the
Specification of United States Patent 6,415,082 B1 (“the '082 Patent”).
Patent Owner Graywire LLC, (hereinafter “Patent Owner”) submitted an
Opposition to the Request for Rehearing (“Opp.”) on November 4, 2013,
arguing that the Decision did not misapprehend what Requester has alleged.
Based on the discussion which follows, the Request for Rehearing is
denied, other than providing additional discussion below, which does not
alter the disposition of this Appeal.

DISCUSSION
Requester begins that its appealed, proposed obviousness rejections
included claims 56, 57, 76, 102, and 103 in those rejections but that these
claims are omitted from the listing of claims included in one of the
Decision’s conclusions. Req. Reh’g. 1; Dec. 18. Based on this, Requester
asserts that the Decision overlooked whether the Examiner erred with
respect to those claims. Req. Reh’g. 1-2. We do not agree. The
“DECISION” section of the Decision makes clear that “[t]he Examiner’s
decision to not adopt proffered rejections of claims 56, 57, 76, 102, and 103
is affirmed.” Dec. 42. Thus, the Decision is clear as to whether we found
error in the Examiner’s decision to not adopt rejections of those claims. We
Appeal 2012-006121
Reexamination Control No. 95/001,175
Patent 6,415,082 B1

3
cannot conclude that the Decision is unclear with respect to the status of
claims 56, 57, 76, 102, and 103.
Requester also asserts that the Decision misapprehends key limitations
of claims 56, 76, and 102. Req. Reh’g. 2-7. Requester argues that the
Decision failed to recognize the specific recitations of those claims, that the
Decision relies on subject matter not found in the original disclosure, and the
Decision misapplied the law with respect to 35 U.S.C. § 112, first paragraph.
Id. We address each of these contentions in turn.
Requester alleges that the claims specify where the light energy is
while it is equalized and the Decision mischaracterizes the claims by
concluding that the claims recite “only” the equalizations of light. Req.
Reh’g. 2. Claim 56 recites, in part, that “the planar lightguide circuit is
operative to equalize the intensities of light energy traveling in the plurality
of optical paths of the planar lightguide circuit.” This recitation is not the
same as Requester’s characterization that “[t]he intensities of light energy
must be equalized while ‘traveling in the plurality of optical paths of the
planar lightguide circuit.’” Id. (emphasis added). Claim 56 does not
provide a specific location within the planar lightguide circuit (PLC) in
which the equalization occurs, and the “traveling” recitation specifies the
light being equalized and not where it is equalized. In addition, claim 56
makes clear that the PLC “is operative” to create the equalization, detailing
that the process occurs but not specifying how or where it occurs. As such,
we conclude that the Decision did not mischaracterize the language of the
claims.
Appeal 2012-006121
Reexamination Control No. 95/001,175
Patent 6,415,082 B1

4
Requester also alleges that the Decision relied on subject matter not
found in the original disclosure. Id. at 2-5. Requester argues that a new
example provided by the Patent Owner in its Respondent’s Brief is
misleading and not supported by the subject matter of the original
disclosure. Id. at 2-3. However, the Decision relied upon the discussion of
attenuation material within the PLC (Dec. 10), and discussed Patent Owner’s
example in the context of what the specification would have reasonably
conveyed to the ordinarily skilled artisan. Id. We further concluded that the
disclosure material was sufficient to support the limitations of claims 56, 76,
and 102. As such, the Decision did not combine embodiments of the
disclosure of the ’082 Patent, nor consider elements external to the PLC to
find support for the limitations of the subject claims, as alleged by
Requester. Id. at 3-5.
In addition, Requester alleges that we misapplied the law with respect
to 35 U.S.C. § 112, first paragraph, failing to find possession of invention as
broadly claimed, and instead finding support for “a hyper-narrow scenario
[that] can be said to fall with a claim.” Id. at 6. Requester continues that
“the new claims require a much broader solution, squarely encompassing the
ability to equalize different light intensities.” Id. We do not agree.
The breadth of the disclosure required to support a claim limitation is
a fact-dependent inquiry. “Compliance with the written description
requirement is essentially a fact-based inquiry that will ‘necessarily vary
depending on the nature of the invention claimed.’” Enzo Biochem, Inc. v.
Gen-Probe, Inc., 323 F.3d 956, 963 (Fed. Cir. 2002). As discussed in In re
Rasmussen, 650 F.2d 1212, 1214 (CCPA 1981), the disclosure of a single
Appeal 2012-006121
Reexamination Control No. 95/001,175
Patent 6,415,082 B1

5
method of adheringly applying one layer to another was sufficient to support
a generic claim to “adheringly applying” because one skilled in the art
reading the specification would understand that it is unimportant how the
layers are adhered, so long as they are adhered. In the instant case, we
continue to be persuaded that the disclosed embodiment discussed (Dec.
10-11) is sufficient to support “the ability to equalize different light
intensities,” as argued by Requester. Req. Reh’g. 6. As such, we cannot say
that we overlooked, misapprehended, or misapplied Requester’s arguments,
the relevant disclosures, or the law with respect to 35 U.S.C. § 112, first
paragraph.
Requester continues that we misapprehended key limitations of claims
57 and 103. Id. at 7-12. Similar to the arguments addressed above,
Requester alleges that we failed to consider the specific recitations of claims
57 and 103, namely that the gain flattening unit be used “to discretely
attenuate light energy traveling in the planar lightguide circuit.” Id. at 7-8.
Requester continues that there is no support in the original disclosure for a
collective attenuation of a spectral range being characterized as a discrete
attenuation. Id. at 9-11. Requester also argues that even if the original
disclosure supported λ3' having a different intensity than λ3, such attenuation
would not occur in the optical paths of the PLC, as required by claims 57
and 103. Id. at 11-12. We do not agree.
As Patent Owner argues, the Specification supports the combination
of the aspects of the invention where λ3' is not attenuated. Opp. 8-9. See
col. 15, ll. 30-40 of the '082 Patent (gain flattening elements can be applied
to selective spectral regions, where a spectral region may contain one or
Appeal 2012-006121
Reexamination Control No. 95/001,175
Patent 6,415,082 B1

6
more channels, or wavelengths, of light energy). The example of the “drop
leg” embodiment illustrates that λ1, λ2, and λ4 but not added wavelength λ3'
may be attenuated, which we continue to support the claims’ recitations of
“to discretely attenuate.” See Dec. 10-11. In addition, as discussed above,
we continue to construe the claims such that they do not provide a specific
location within the PLC in which the attenuation occurs, and the “traveling”
recitation specifies the light being attenuated and not the where it is
attenuated.
Additionally, with respect to claims 57 and 103, Requester again
alleges that our Decision misapplied 35 U.S.C. § 112, first paragraph, as a
matter of law. Req. Reh’g. 11-12. We have addressed this same issue
above, with respect to claims 56, 76, and 102, and do not find Requester’s
arguments any more persuasive as to error in the Decision with respect to
claims 57 and 103.
Requester also alleges that we misapprehended Alexander with
respect to its different embodiments and the use of an optical splitter.
Req. Reh’g. 12-14. We determined that Alexander specifically
disclosed a particular optical splitter with respect to Fig. 1 only.
Decision 15-17. Requester argues that multiple embodiments may be
used to make an anticipation rejection, and that the first description in
Alexander of the splitter is applicable to all other recitations therein.
Req. Reh’g. 13. In addition, Requester asserts that “[t]he IOT ’226
Patent serves as extrinsic evidence to more fully explain, what is
meant by the [specific] term.” Id.
Appeal 2012-006121
Reexamination Control No. 95/001,175
Patent 6,415,082 B1

7
However, we agree with Patent Owner that Requester’s arguments
have been presented before in the original Appeal and Rebuttal Briefs. Opp.
9. Compare Req. Reh’g. 12-14 with TPR App. Br. 12-15 and TPR Rebut.
Br. 7-8
1
. We were fully responsive to these arguments in the Decision
(Decision 15-17) and we see no need to respond again to the same
arguments.
Lastly, Requester argues that we misapprehended the original
disclosure in formulating our first Finding of Fact in the Decision (“FF1”).
Req. Reh’g. 14-15. More specifically, Requester alleges that there is no
support in the Specification for “‘filtering in a planar lightguide circuit,’”
and that the PLC channels optical energy toward the filtering device, such
that the filtering device is a structure distinct from the PLC. Req. Reh’g. 14.
Requester indicates that FF1 should be withdrawn or restated to eliminate
potential ambiguity, but acknowledges that FF1 is not expressly relied upon
in the Decision. Req. Reh’g. 15.
We agree with Patent Owner (Opp. 11) that since Requester has
acknowledged that the first Finding of Fact is not expressly relied upon in
the Decision’s analysis, any rehearing on this issue would be moot as it
would not be determinative. However, “out of an abundance of caution”
(Req. Reh’g. 15), we acknowledge that FF1 could more consistently be
recited as: “The Specification of the '082 Patent discloses processes and
structures for the manipulation of light through filtering with a planar
lightguide circuit (PLC) (Spec. 1:14-17; Abs.).”

1
“TPR App. Br.” connotes Third Party Requester’s Appeal Brief filed
December 6, 2011 and “TPR Rebut. Br.” connotes Third Party Requester’s
Rebuttal Brief filed February 24, 2012.
Appeal 2012-006121
Reexamination Control No. 95/001,175
Patent 6,415,082 B1

8
DECISION
Accordingly, the Request is denied with respect to making any
modification to the Decision because Requester has not demonstrated that
anything was overlooked or misapprehended.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REHEARING DENIED

Appeal 2012-006121
Reexamination Control No. 95/001,175
Patent 6,415,082 B1

9
cc:
FOR PATENT OWNER:
ASCENDA LAW GROUP, PC
333 W SAN CARLOS STREET
SUITE 200
SAN JOSE, CA 95110

FOR THIRD PARTY REQUESTER:
DAVID L. MCCOMBS
HAYNES AND BOONE, LLP, IP SECTION
2323 VICTORY AVENUE, SUITE 700
DALLAS, TX 75219