Ex Parte 6795605 et al

Board of Patent Appeals and Interferences

Mar 30, 2012

95000240 (B.P.A.I. Mar. 30, 2012)

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.
95/000,240 04/24/2007 6795605 21141-001LL1 2343
7590 03/30/2012
BROOKS KUSHMAN P.C.
1000 TOWN CENTER, TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

INFINERA CORP.
Third Party Requester, Appellant

v.

CHEETAH OMNI, LLC
Patent Owner, Respondent
________

Appeal 2011-009809
Inter partes Reexamination Control 95/000,240
United States Patent 6,795,605 B1
Technology Center 3900
____________

Before RICHARD TORCZON, SALLY C. MEDLEY, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
Third Party Requester Infinera Corp. (hereinafter “Appellant”)
appeals1 under 35 U.S.C. §§ 134(b) and 315(b)(1) the Examiner’s decision
to not adopt Appellant’s proposed rejections and confirm claims 2-17, 19-
23, 25-34, 36-64, and 84.2,3 Patent Owner Cheetah Omni, LLC, (hereinafter

1 See Appeal Brief filed December 13, 2010, hereinafter “App. Br.,” at 2; see
also Rebuttal Brief filed March 28, 2011, hereinafter “Rebut. Br.”
2 See Right of Appeal Notice, mailed August 26, 2010, hereinafter “RAN;”
see also Examiner’s Answer, mailed February 28, 2011, hereinafter “Ans.”
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“Respondent”) is a party to the appeal under 35 U.S.C. § 315(a)(2) and
disputes the Appellant’s contentions.4
We have jurisdiction under 35 U.S.C. §§ 6, 134 and 315. We
AFFIRM.

STATEMENT OF THE CASE
This proceeding arose from a corrected request for inter partes
reexamination (“Request”) filed on behalf of Appellant, on April 24, 2007,
of United States Patent 6,795,605 B1 (“the '605 Patent”), issued to
Mohammed N. Islam and Amos Kuditcher on September 21, 2004, based on
United States Application 10/644,721, filed August 20, 2003. That
application claimed benefit to the following applications:
Relationship Serial No. Filing Date Patent No.
Continuation of 10/227,055 Aug. 22, 2002 6,654,157
Division of 10/131,744 Apr. 22, 2002 6,611,366
Continuation of 09/631,276 Aug. 1, 2000 6,407,851
This appeal is related to another pending appeal, Appeal No. 2011-
007232, in inter partes reexamination proceeding control no. 95/000,239, for
United States Patent 7,142,347 B2, where the '605 Patent is a “multi-
generational grandparent” of the '347 Patent.
The '605 patent is the subject of pending litigation styled Cheetah
Omni, LCC v. Level 3 Communications, Inc. and Infinera Corp., Civ. A. No.

3 Issued claims 1, 18, 24, and 35 have been cancelled and claims 65-83 have
been rejected (RAN 1); Respondent has not sought to have the rejection of
the latter claims be reviewed (Resp. Br. 2).
4 See Respondent Brief filed January 13, 2011, hereinafter “Resp. Br.”
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5:06-cv-101 (E.D. Tex.). (See App. Br. 2). The action was stayed pending
the outcome of this and the related reexamination (id.).
We heard oral arguments from the representatives of both the
Appellant and the Respondent, on September 21, 2011, a transcript5 of
which is part of the record.

THE INVENTION
The invention of the subject patent relates to an optical switch
element, and to methods of forming and using that element (Spec. Col. 1, ll.
18-21).
Exemplary claim 11 on appeal reads as follows:
11. [The optical processing device of claim 1, further
comprising] An optical processing device, comprising:
a wave-guide based router operable to separate an input optical
signal into a plurality of optical signal wavelengths;
a linear array of optical switching elements located on a single
semiconductor substrate, each of the optical switching elements
operable to receive at least a portion of at least one of the plurality of
optical signal wavelengths and to perform an optical switching
operation on the at least one of the plurality of optical signal
wavelengths; and
a linear array of wavelength detectors operable to receive at
least a portion of at least some of the plurality of optical signal
wavelengths, the linear array of wavelength detectors operable to
communicate one or more signals associated with at least some of the
plurality of optical signal wavelengths to the linear array of optical
switching elements.
(App. Br. 40-41, Claims Appx.).

5 Record of Oral Hearing (hereinafter Oral Hr’g Tr.)
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POTENTIAL PRIOR ART REJECTIONS
The prior art references relied upon by Appellant in the proposed
rejections, upon which the non-adoption is appealed, are:
Chang ‘527 6,214,527 May 25, 1993
Tachikawa 5,414,548 May 9, 1995
Goossen 5,943,155 Aug. 24, 1999
Aksyuk 6,148,124 Nov. 14, 2000
Chraplyvy 6,191,877 Feb. 20, 2001
Chang ‘537 6,580,537 Jun. 17, 2003

Appellant proposed rejections of the claims on numerous bases,6
where those rejections over prior art were not adopted (ACP 23-103).

ISSUES
We have considered in this decision only those arguments that
Appellant actually raised in the Briefs. Arguments which Appellant could
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).
The issues arising from the respective positions of Appellant,
Respondent, and the Examiner, which we consider herein, are:7
1. whether the Examiner erred in not adopting the rejection of claims
11, 17, 38, and 84 under 35 U.S.C. § 103(a) as being unpatentable
over Chang ‘537 and Goossen?

6 See Request 18-60.
7 Appellant cites many issues to be reviewed, designated A. through G.
(App. Br. 5-6), but we need only consider the three above-cited issues,
involving the independent claims, unless we determine that the Examiner
erred in not adopting one of the discussed rejections.
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2. whether the Examiner erred in not adopting the rejection of claim
20 under 35 U.S.C. § 103(a) as being unpatentable over Chang
‘537 and Chang ‘527? and
3. whether the proposed rejection of claim 84 under 35 U.S.C.
§ 102(e) as being anticipated by Aksyuk was properly offered by
Appellant such that it is an appealable issue?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Chang ‘537
FF1. Chang ‘537 is directed to optical networks which use
high-speed optical header generation, detection, and reinsertion to
achieve switching (Abs.). In operation, module (410) taps a small
fraction of the optical signals appearing on paths (401-403) in order to
detect information in each header, and determine the appropriate
commands for switching device (430) after looking up the connection
table stored in module (410) and the circuit switch controller (420)
(col. 10, ll. 61-65, col. 11, ll. 13-20; Fig. 4).
FF2. Chang ‘537 provides more detailed embodiments than that
illustrated in Fig. 4, with the following embodiments illustrated in
Figs. 12-15: 1) Fig. 12 illustrating circuitry for detecting a header
signal and inserting a new header signal without local injection of
light; 2) Fig. 13 illustrating circuitry for deleting a header signal and
inserting a new, original header signal; 3) Fig. 14 illustrating circuitry
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for detecting a header signal and inserting a new header signal with
local injection of light; and 4) Fig. 15 illustrating circuitry for
removing a single header signal and replacing with a new header
signal. (col. 7, l. 65, col. 8, l. 9).
FF3. Fig. 12 illustrates circuitry for detecting a header signal
with one of a plurality of header detectors (1010) shown, and having a
modulator (1296) which is separate from the optical switch/add-drop
multiplexer (1207), where the latter operates as switching device
(430) of Fig. 4 (col. 19, l. 53 – col. 21, l. 48).
FF4. Fig. 14 illustrates circuitry for detecting a header signal
having a light modulator (1450) that receives a CW burst (1451) and
an electrical signal (1284) to produce a modulated light signal (1452)
(col. 21, ll. 36-39; col. 24, ll. 3-11), and a modulator (1296) modulates
the incoming modulated light by a new sub-carrier header signal (col.
22, ll. 60-62).
FF5. Fig. 15 illustrates circuitry which notches out the header
portion from the optical signal and supplies a new header through the
use of a write circuit (1294), a modulator (1296), and an up-converter
(1281) to the signal (col. 24, ll. 36-55).
FF6. Chang ‘537 also discloses that Micromachined Electro
Mechanical Switches (MEMS) are fast optical switches (col. 25, ll.
10-18), but Chang ‘537 does not disclose where they are used in the
embodiments disclosed therein.

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PRINCIPLES OF LAW
“To render a later invention unpatentable for obviousness, the prior
art must enable a person of ordinary skill in the field to make and use the
later invention.” In re Kumar, 418 F.3d 1361, 1369 (Fed. Cir. 2005) (citing
Beckman Instruments, Inc., v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed.
Cir. 1989) and In re Payne, 606 F.2d 303, 314-15 (CCPA 1979)).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).

ANALYSIS
ISSUE 1
Chang ‘537 and Goossen, Independent Claims 11, 17, 38, and 84
The Examiner supplied several reasons for not adopting this ground of
rejection (ACP 64-65, 73-74), which Appellant disputes (App. Br. 6-8).
Appellant argues that Chang ‘537 discloses both LiNbO3 modulators and
MEMS which satisfy the “optical switching element” limitations of claims
11, 17, 38, and 84 (App. Br. 6-7). Appellant argues that the Examiner erred
in not adopting this rejection and that the Examiner failed to justify that
Appellant’s rejection considered claim elements in isolation (App. Br. 7).
We do not agree.
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In deciding not to adopt the rejection over Chang ‘537 and Goossen of
claims 11, 17, 38, and 84 (ACP 64-65, 73-74), the Examiner relies on earlier
findings made with respect to rejections which are not the subject of this
appeal. Particularly, the Examiner finds that an electrical/optical (E/O)
converter is a means of converting electrical signals to optical signals, and is
not an optical switch (ACP 14). The Examiner also finds that “an optical
switch selectively switches from one circuit path to another,” citing an
external source (id.). The Examiner also disagrees that Respondent acted as
his own lexicographer, because the Examiner does not find persuasive
Appellant’s argument that claim 39, issued in the '605 Patent, sought to
define the modulators as performing an optical switching operation (ACP
15). We agree and adopt these findings.
We also note that claims 11, 17, 38, and 84 all recite, in part, “a linear
array of optical switching elements,” with each receiving optical signal
wavelengths and performing an optical switching operation thereon. Any
equivalents to the “optical switching elements” in Chang ‘537 would need to
demonstrate equivalent functions and connections. Appellant argues that
Chang ‘537 discloses both LiNbO3 modulators and MEMS which satisfy the
above limitations (App. Br. 6-7).
With respect to the LiNbO3 modulators of Chang ‘537,
Appellant relies on different embodiments and elements of Chang
‘537 as providing those modulators (Request, App’x J). These
include the optical switch/add-drop multiplexer (optical switch/ADM)
(1207), the modulator (1296), and the light modulator (1450). Chang
‘537 discloses a single optical switch/ADM (1207), such that it cannot
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be equivalent to an “array of optical switching elements” (FF3-5).
While Appellant alleges that the optical switch/ADM includes a linear
array of optical switching elements (Rebut. Br. 4), we can find
nothing in Chang ‘537 that corroborates this. With respect to
modulator (1296) and light modulator (1450), those elements are not
disclosed as a plurality, nor disclosed to be in an array (FF3-5). While
it is clear that Chang ‘537 discloses multiple demultiplexers and
header detectors (Fig. 10), the other relied upon elements appear to be
singular elements of the system. And while Chang ‘537 discloses
multiple E/O converters, we agree with the Examiner that they cannot
be said to be optical switching elements (ACP 14).
With respect to the MEMS disclosed in Chang ‘537, Appellant further
argues that those MEMS are the same as the optical switches disclosed in the
'605 Patent (App. Br. 8), and that they are connected in the same manner as
provided in the independent claims (id.). However, the MEMS in Chang
‘537 are discussed only with respect to optical switching technology
generally (FF6), and are not disclosed to be specifically used in any
embodiment disclosed therein. In other words, Chang ‘537 may disclose
MEMS but does not disclose how they are used in its system. As such, the
disclosure of MEMS in Chang ‘537 cannot teach or suggest the actual
“optical switching elements” recited in the claims with specific functions
and connections. Additionally, even if Appellant is correct, in that a MEMS
“necessarily includes a linear array of optical switching elements” (Rebut.
Br. 4), the lack of specific disclosure as to function or connections do not
teach or suggest elements of claims 11, 17, 38, and 84.
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We further concur with the Examiner that Goossen does not
ameliorate the deficiencies of Chang ‘537 (ACP 64). As such, the Examiner
did not err in not adopting the proffered rejection of claims 11, 17, 38, and
84 over Chang ‘537 and Goossen.

ISSUE 2
Chang ‘537 and Chang ‘527, Independent Claim 20
In the Action Closing Prosecution, the Examiner does not appear to
provide any rationale for not adopting a rejection of claim 20 as being
obvious over the combination of Chang ‘537 and Chang ‘527. The
Examiner discussed the non-adoption of the rejection of Chang ‘537 and
Goosen of claim 20 (ACP 65-66), but such a rejection was not proffered by
Appellant (Request 42). Instead, Appellant proffered a rejection of claim 20
over the combination of Chang ‘537 and Chang ‘527 (Request 44).
Normally, such an omission would be taken as clear error. However,
Appellant has acknowledged the Examiner’s error (App. Br. 9), and
indicated that both Goossen and Chang ‘527were only cited to demonstrate
that placing optical components on a single substrate would have been
obvious to one of ordinary skill in the art and that Goossen and Chang ‘527
are “interchangeable for this purpose” (id.). As such, we review the
Examiner’s rationale for not adopting the rejection of claim 20 for error
below.
As discussed supra, the Examiner finds that Respondent did not act as
his own lexicographer and did not redefine modulators as optical switches,
and that ordinary skilled artisans would not have found modulators to be the
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same as optical switches (ACP 65). As discussed supra, Chang ‘537 does
not teach or suggest an array of modulators, acting as specified in claim 20,
and Chang ‘527 does not cure such a deficiency. Thus, for similar reasons,
we find that the combination of Chang ‘537 and Chang ‘527 fails to render
obvious claim 20, where claim 20 recites, in part, that “at least some of the
modulators operable to perform an optical switching operation.” As such,
the Examiner did not err in not adopting the proffered rejection of claim 20
over Chang ‘537 and Chang ‘527.

ISSUE 3
Aksyuk, Independent Claim 84
Appellant argues that because of Respondent’s amendment of June 4,
2009, which introduced claim 84 for the first time, Appellant proposed a
rejection of claim 84 over Aksyuk (App. Br. 11). Appellant argues that the
Examiner erred in not acknowledging the proposed rejection, and that
Aksyuk anticipates claim 84 (App. Br. 11-12). Respondent argues that
claim 84 is merely originally issued claim 10 rewritten in independent form
and the new rejection should not have been considered by the Examiner
(Resp. Br. 10). Appellant argues that Respondent’s amendment necessitated
a new proposed rejection, and cites M.P.E.P. 2666.05II (Rebut. Br. 5). We
agree with Respondent.
It is clear that the proposed rejection over Aksyuk is a new rejection,
which is only allowed where it is necessitated to rebut a response of the
patent owner. See 37 C.F.R. §1.948(a)(2). We do not find that the
Examiner’s apparent lack of acknowledgement of this proposed rejection to
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be an issue that can be decided on appeal. We can review, however, if
Respondent’s amendment, i.e. the addition of claim 84, necessitated a new
ground of rejection. Reviewing claim 84, we conclude it is identical to
issued claim 10. Placing a claim in independent form, i.e. an amendment to
the claim that does not alter its scope, cannot necessitate a new rejection
thereof under the Rules. No rejection over Aksyuk of claim 10, or any other
claim, was made in the Request (Request 15-17). As such, while the
Examiner should have acknowledged the proposed new ground, the
Examiner was under no obligation to adopt or not adopt the new rejection
because it did not comply with 37 C.F.R. §1.948(a)(2). Thus, the proposed
rejection of claim 84 over Aksyuk cannot be a decidable issue in this appeal.
See 35 U.S.C. §315(b)(1).

CONCLUSIONS
We conclude that the Examiner did not err in not adopting 1) the
rejection of claims 2-14, 16-19, 36-47, 49-59, 61-64, and 84 under 35 U.S.C.
§ 103(a) as being unpatentable over Chang ‘537 and Goossen; and 2) the
rejection of claims 20-23, 25, 30-34 under 35 U.S.C. § 103(a) as being
unpatentable over Chang ‘537 and Chang ‘527. Further, we conclude that 3)
the proposed rejection of claim 84 under 35 U.S.C. § 102(e) as being
anticipated by Aksyuk was not properly offered by Appellant such that it is
not an appealable issue.

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DECISION
The Examiner’s decision to not adopt the proffered rejections of
claims 2-17, 19-23, 25-34, 36-64, and 84 is affirmed.
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
cc:
FOR PATENT OWNER:
BROOKS KUSHMAN P.C.
1000 TOWN CENTER, TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075

FOR THIRD PARTY REQUESTER:
TIMOTHY W. RIFFE
FISH & RICHARDSON, P.C.
1425 K STREET N.W. 11TH FLOOR
WASHINGTON, D.C. 20005-3500