Ex Parte Coleman

Board of Patent Appeals and Interferences

Apr 10, 2009

10301988 (B.P.A.I. Apr. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CHRISTOPHER L. COLEMAN
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Appeal 2008-5120
Application 10/301,988
Technology Center 2800
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Decided:1 April 13, 2009
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Before ROBERT E. NAPPI, JOHN A. JEFFERY, and
KEVIN F. TURNER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5120
Application 10/301,988

This is a decision on appeal under 35 U.S.C. § 134 of the final
rejection of claims 1, 3 through 12, and 14 through 20.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed towards an apparatus which creates an
optical signal and a system with a beam shaping lens that converges the
optical signal at a focal plane into a predetermined shape. See generally
Specification 5-9. Claim 1 is representative of the invention and reproduced
below:
1. An apparatus comprising:
an optical source adapted to provide optical signal;
a beam shaping lens system adapted to converge the
optical signal into a focal area at a focal plane, the
converged optical signal having a predetermined power
distribution profile at the focal area;
a waveguide with a core adapted to receive said
converged optical signal within said focal area at said
focal plane, said focal area defining an area greater than
the cross sectional area of the core; and
wherein the predetermined power distribution profile
is generally uniform.

REFERENCES
Kosoburd US 5,760,871 Jun. 2, 1998

Johnson US 6,530,697 B1 Mar. 11, 2003

2 An updated Claims Appendix was filed on November 26, 2007, correcting
the dependency of claim 3 which, in the original Claims Appendix,
erroneously depended from cancelled claim 2.
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(filed Jun. 11, 1999)

Smith US 2003/0063884 A1 Apr. 3, 2003
(filed Apr. 5, 2002)

REJECTIONS AT ISSUE
The Examiner rejected claims 1, 10, 14, and 15 under 35 U.S.C.
§ 102(e) as being anticipated by Johnson.
The Examiner rejected claims 8, 9, 16, and 17 under 35 U.S.C. §
103(a) as being unpatentable over Johnson in view of Kosoburd.
The Examiner rejected claims 3, 5, and 7 under 35 U.S.C. § 103(a) as
being unpatentable over Johnson in view of Smith.
The Examiner rejected claims 4 and 6 under 35 U.S.C. § 103(a) as
being unpatentable over Appellant’s admitted prior art in view of Johnson
and Smith.
The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as being
unpatentable over Appellant’s admitted prior art in view of Johnson.
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Johnson in view of Kosoburd and Smith.
The Examiner rejected claims 18 through 20 under 35 U.S.C. § 103(a)
as being unpatentable over Johnson in view of Smith.

ISSUES
Rejection of claims 1, 10, 14, and 15 under 35 U.S.C. § 102(e) as being
anticipated by Johnson

Appellant argues on pages 9 through 12 of the Appeal Brief and pages
5 through 6 of the Reply Brief that the Examiner’s rejection of claim 1 is in
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error. Appellant argues that Johnson does not teach a generally uniform
predetermined power distribution profile. App. Br. 9; Reply Br. 5.
Thus, with respect to claim 13, Appellant’s contention presents us
with the issue: has Appellant shown that the Examiner erred in finding
Johnson teaches a generally uniform predetermined power distribution
profile?

Rejection of claims 8, 9, 16, and 17 under 35 U.S.C. § 103(a) over Johnson
in view of Kosoburd

Claim 8
Appellant argues on pages 13 through 15 of the Appeal Brief that the
Examiner’s rejection of claim 8 is in error. Appellant argues that the
Examiner does not provide a prima facie case of obviousness. App. Br. 14.
Additionally, Appellant argues that claim 8 is allowable based upon its
dependency on claim 1. App. Br. 15.
Thus, with respect to claim 8, Appellant’s contentions present us with
the same issue as claim 1. Additionally, has Appellant shown that the
Examiner erred in combining the references?

Claims 9, 16 and 17

3 Appellant’s statements on page 13 of the Appeal Brief directed to claims
10, 14 and 15 merely identify that these claims are dependent upon claim 1
and are allowable for the reasons that claim 1 is allowable. These statements
do not amount to separate arguments under 37 CFR § 41.37 (c)(1)(vii).
Accordingly, claims 10, 14 and 15 are grouped with claim 1.
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Appellant argues on pages 15 through 17 of the Appeal Brief that the
Examiner’s rejection of claims 9, 16 and 17 is in error. Appellant argues
that the Examiner does not establish a prima facie case of obviousness. App.
Br. 16, 17. Additionally, Appellant argues that claims 9, 16 and 17 are
allowable based upon their dependency on claims 1 and 14. App. Br. 16.
Thus, with respect to claims 9, 16 and 17, Appellant’s contentions
present us with the same issues as claims 1, 8, and 14.

Rejection of claims 3, 5, and 7 under 35 U.S.C. § 103(a) over Johnson in
view of Smith

Appellant argues on page 18 of the Appeal Brief that the Examiner’s
rejection of claims 3, 5, and 7 is in error. Appellant argues that the
Examiner does not establish a prima facie case of obviousness. App. Br. 18.
Additionally, Appellant argues that claims 3, 5, and 7 are allowable based
upon their dependency on claim 1. App. Br. 15.
Thus, with respect to claims 3, 5, and 7, Appellant’s contentions
present us with the same issues as claims 1 and 8.

Rejection of claims 4 and 6 under 35 U.S.C. § 103(a) over Appellant’s
Admitted Prior Art in view of Johnson and Smith

Appellant argues on pages 18 through 19 of the Appeal Brief that the
Examiner’s rejection of claims 4 and 6 is in error. Appellant argues that the
Examiner does not provide a prima facie case of obviousness. App. Br. 18-
19. Additionally, Appellant argues that claims 4 and 6 are allowable based
upon their dependency on claim 1. App. Br. 15.
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Thus, with respect to claims 4 and 6, Appellant’s contentions present
us with the same issues as claims 1 and 8.
Rejection of claim 11 under 35 U.S.C. § 103(a) over Appellant’s Admitted
Prior Art and Johnson

Appellant argues on pages 19 through 20 of the Appeal Brief that the
Examiner’s rejection of claim 11 is in error. Appellant argues that the
Examiner does not establish a prima facie case of obviousness. App. Br. 19.
Additionally, Appellant argues that claim 11 is allowable based upon its
dependency on claim 1. App. Br. 15.
Thus, with respect to claim 11, Appellant’s contentions present us
with the same issues as claims 1 and 8.

Rejection of claim 12 under 35 U.S.C. § 103(a) over Johnson in view of
Kosoburd and Smith

Appellant argues on page 20 of the Appeal Brief that the Examiner’s
rejection of claim 12 is in error. Appellant argues that the Examiner does
not establish a prima facie case of obviousness. App. Br. 20. Additionally,
Appellant argues that claim 12 is allowable based upon its dependency on
claim 1. App. Br. 15.
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Thus, with respect to claim 12, Appellant’s contentions present us
with the same issues as claims 1 and 8.

Rejection of claims 18 through 20 over Johnson in view of Smith

Appellant argues on pages 20 through 21 of the Appeal Brief that the
Examiner’s rejection of claims 18 through 20 is in error. Appellant argues
that the Examiner does not establish a prima facie case of obviousness. App.
Br. 20. Additionally, Appellant argues that claims 18 through 20 are
allowable based upon their dependency on claim 14. App. Br. 21.
Thus, with respect to claims 18 through 20, Appellant’s contentions
present us with the same issues as claims 8 and 14.

FINDINGS OF FACT
Johnson
1. Johnson teaches a system that couples light to a multi-mode fiber.
Col. 1, ll. 13-15.
2. The system contains a super-Gaussian beam shaper that converts
the input beam of a particular intensity into a beam with a super-
Gaussian distribution. Col. 3, ll. 43-45.
3. The super-Gaussian distribution contains a flatter peak which falls
off to zero faster than a normal Gaussian beam. Therefore, more
power is pushed toward the edges creating a fairly uniform power
distribution across the peak. Col. 3, ll. 46-51.
4. After the light has traversed the optical element a bimodal
distribution is created. Col. 3, l. 66 through col. 4, l. 3.
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Kosoburd
5. Kosoburd discloses diffractive multi-focal lenses. Abstract.
6. One of Kosoburd’s lenses is a super-Gaussian-topography lens that
creates a power distribution profile shown in Figure 8C. Col. 13,
ll. 46-50, and Fig. 8C.

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PRINCIPLES OF LAW
Office personnel must rely on Appellants’ disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim is not to be confused with
adding an extraneous limitation appearing in the specification, which is
improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed.
Cir. 2002) (internal quotation marks and citations omitted; emphasis in
original).
It is well settled that in order for the Examiner to establish a prima
facie case of anticipation, each and every element of the claimed invention,
arranged as required by the claim, must be found in a single prior art
reference, either expressly or under the principles of inherency. See
generally In re Schreiber, 128 F.3d 1473, 1477; Diversitech Corp. v.
Century Steps, Inc., 850 F.2d 675, 677-78 (Fed. Cir. 1988); Lindemann
Maschinenfabrik GMBH v. American Hoist and Derrick, 730 F.2d 1452,
1458 (Fed. Cir. 1984).
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, 127 S. Ct. 1727, 1734 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art, and (4) where in evidence, so-called secondary
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considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 127 S. Ct. at 1734 (“While the sequence of these questions might
be reordered in any particular case, the [Graham] factors continue to define
the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S. Ct. at 1739 (citing Graham v. John
Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 1740. The operative question in this “functional approach” is
thus “whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
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As was described in In re Kahn, 441 F.3d 977 (Fed. Cir. 2006):

[T]he “motivation-suggestion-teaching” test asks not merely
what the references disclose, but whether a person of ordinary
skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the
general problem facing the inventor, would have been led to
make the combination recited in the claims. From this it may
be determined whether the overall disclosures, teachings, and
suggestions of the prior art, and the level of skill in the art – i.e.,
the understandings and knowledge of persons having ordinary
skill in the art at the time of the invention-support the legal
conclusion of obviousness (internal citations omitted).
Id. at 988. To establish a prima facie case of obviousness, the references
being combined do not need to explicitly suggest combining their teachings.
See id. at 987 (“the teaching, motivation, or suggestion may be implicit from
the prior art as a whole, rather than expressly stated in the references . . .”).
“‘The test for an implicit showing is what the combined teachings,
knowledge of one of ordinary skill in the art, and the nature of the problem
to be solved as a whole would have suggested to those of ordinary skill in
the art.’” Id. at 987-88 (quoting In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir.
2000)). One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what
the combined teachings of the references would have suggested to
those of ordinary skill in the art.

Id. at 425.
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ANALYSIS
Rejection of claims 1, 10, 14, and 15 under 35 U.S.C. § 102(e) as being
anticipated by Johnson

Appellant’s arguments have not persuaded us that the Examiner erred
in rejecting claim 1. Claim 1 recites “a beam shaping lens system adapted to
converge the optical signal into a focal area at a focal plane, the converged
optical signal having a predetermined power distribution profile at the focal
area; … wherein the predetermined power distribution profile is generally
uniform.” The Examiner interprets the claim to require a generally uniform
power distribution profile at the focal area, not within the fiber after the
optical signal is received. Ans. 9. We agree.
Appellant argues that Johnson teaches a bimodal distribution of the
optical power which results in an angular distribution. App. Br. 9-10.
Additionally, Appellant argues that while Johnson’s super-Gaussian
distribution is more uniform and flat, it is not “truly” uniform or flat. App.
Br. 11; Reply Br. 5. Therefore, Appellant argues that Johnson does not
teach a generally uniform power distribution profile as required by the
claim. App. Br. 9; Reply Br. 5. The Examiner finds, however, that Johnson
does teach the limitation because the bimodal distribution is the result of a
measurement taken within the fiber after the signal has been received by the
fiber, not when it is received at the focal point. Ans. 9. In addition, the
Examiner finds that Johnson teaches the super-Gaussian distribution profile
which is generally uniform. Ans. 9. We agree with the Examiner.
Johnson teaches a system that couples light to a multi-mode fiber.
FF 1. The system contains a super-Gaussian beam shaper that creates a
beam with a super-Gaussian distribution after converting the input beam of a
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particular intensity. FF 2. The super-Gaussian distribution contains a flatter
peak which falls off to zero faster than a normal Gaussian beam. FF 3. As a
result, more power is pushed toward the edges creating a fairly uniform
power distribution across the peak. FF 3. Therefore, the super-Gaussian
distribution looks similar to Appellant’s Figure 5B, reference numeral 117,
where the peak is generally uniform and the edges fall off to zero very
quickly. Thus, Johnson teaches a system that produces a generally uniform
predetermined power distribution profile at the focal area.
Johnson also discloses a bimodal distribution that is created after the
light has traversed the optical element. FF 4. As noted above by the
Examiner, the claim only requires that the generally uniform power
distribution profile is present at the focal area and not after the light is
received by the fiber. Therefore, the argument made by Appellant is not
commensurate with the scope of the claims and will not be read into the
claims. Accordingly, we affirm the Examiner’s rejection of claim 1. As a
result, we also affirm the Examiner’s rejection of claims 10, 14, and 15
which are grouped with claim 1.

Rejection of claims 8, 9, 16, and 17 under 35 U.S.C. § 103(a) over Johnson
in view of Kosoburd

Claim 8
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claim 8. Appellant argues that the Examiner has
improperly combined Johnson with Kosoburd. App. Br. 13-14. However,
the Examiner finds that the combination of the two references would
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“converge the optical signal in order to provide a focused output beam
having a uniform power distribution.” Ans. 9. We agree with the Examiner.
Appellant uses the teaching, suggestion, and motivation test to argue
that the references are not properly combined. App. Br. 13-14. However,
KSR does not require there be a teaching, suggestion, or motivation to
combine the references. KSR, 127 S. Ct. at 1739. The Court characterized
the TSM test merely as “helpful insight.” Id at 1727. In KSR, the Supreme
Court has merely stated that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. The combination of Johnson with
Kosoburd yields predictable results.
Kosoburd discloses diffractive multi-focal lenses. FF 5. One of the
lenses includes a super-Gaussian-topography lens. FF 6. The super-
Gaussian-topography lens creates a power distribution profile shown in
Kosoburd’s Figure 8C. FF 6. This super-Gaussian distribution is similar to
the generally uniform power distribution profile described by Johnson.
Therefore, we consider using Kosoburd’s super-Gaussian-topography
diffractive lens in the system of Johnson’s device, which requires an element
to create a super-Gaussian power distribution profile, to be nothing more
that using a known device to perform its known function i.e. produce the
predictable result of a super-Gaussian power distribution profile. As such,
the combination is obvious.
Additionally, claim 8 ultimately depends upon claim 1. Appellant’s
argument presents the same issues discussed with respect to claim 1 (App.
Br. 15). Therefore, we sustain the Examiner’s rejection of claim 8 for the
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reasons discussed above as well as the reasons discussed supra with respect
to claim 1.

Claims 9, 16, and 17
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 9, 16, and 17. Claims 9, 16, and 17
ultimately depend upon claims 1 and 14. Appellant’s arguments present the
same issues discussed with respect to claims 1 and 14 (App. Br. 16-17).
Appellant additionally argues the same issues discussed with respect to
claim 8 (App. Br. 16-17). Therefore, we sustain the Examiner’s rejection of
claims 9, 16, and 17 for the reasons discussed supra with respect to claims 1,
8, and 14.

Rejection of claims 3, 5, and 7 under 35 U.S.C. § 103(a) over Johnson in
view of Smith

Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 3, 5, and 7. Appellant did not particularly
point out errors in the Examiner’s reasoning to persuasively rebut the
Examiner’s prima facie case of obviousness. See App. Br. 18. Additionally,
claims 3, 5, and 7 ultimately depend upon claim 1. Appellant’s argument
presents the same issues discussed with respect to claim 1 (App. Br. 18).
Therefore, we sustain the Examiner’s rejection of claims 3, 5, and 7 for the
reasons discussed supra with respect to claims 1 and 8.

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Rejection of claims 4 and 6 under 35 U.S.C. § 103(a) over Appellant’s
Admitted Prior Art in view of Johnson and Smith

Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 4 and 6. Appellant did not particularly point
out errors in the Examiner’s reasoning to persuasively rebut the Examiner’s
prima facie case of obviousness. See App. Br. 18-19. Additionally, claims 4
and 6 ultimately depend upon claim 1. Appellant’s argument presents the
same issues discussed with respect to claim 1 (App. Br. 19). Therefore, we
sustain the Examiner’s rejection of claims 4 and 6 for the reasons discussed
supra with respect to claims 1 and 8.

Rejection of claim 11 under 35 U.S.C. § 103(a) over Appellant’s Admitted
Prior Art and Johnson

Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claim 11. Appellant did not particularly point out
errors in the Examiner’s reasoning to persuasively rebut the Examiner’s
prima facie case of obviousness. See App. Br. 19-20. Additionally, claim
11 ultimately depends upon claim 1. Appellant’s argument presents the
same issues discussed with respect to claim 1 (App. Br. 19). Therefore, we
sustain the Examiner’s rejection of claim 11 for the reasons discussed supra
with respect to claims 1 and 8.

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Rejection of claim 12 under 35 U.S.C. § 103(a) over Johnson in view of
Kosoburd and Smith

Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claim 12. Appellant did not particularly point out
errors in the Examiner’s reasoning to persuasively rebut the Examiner’s
prima facie case of obviousness. See App. Br. 20. Additionally, claim 12
recites similar limitations as claim 1. Appellant’s argument presents the
same issues discussed with respect to claim 1 (App. Br. 19). Therefore, we
sustain the Examiner’s rejection of claim 12 for the reasons discussed supra
with respect to claims 1 and 8.

Rejection of claims 18 through 20 over Johnson in view of Smith

Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 18 through 20. Appellant did not particularly
point out errors in the Examiner’s reasoning to persuasively rebut the
Examiner’s prima facie case of obviousness. See App. Br. 20-21.
Additionally, claims 18 through 20 ultimately depend from claim 14.
Appellant’s argument presents the same issues discussed with respect to
claim 14 (App. Br. 20). Therefore, we sustain the Examiner’s rejection of
claims 18 through 20 for the reasons discussed supra with respect to claims
8 and 14.

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CONCLUSIONS OF LAW
Appellant has not shown that the Examiner erred in finding that
Johnson teaches a generally uniform predetermined power distribution
profile.
Appellant has not shown that the Examiner erred in combining the
references to arrive at the claimed invention.

SUMMARY
The Examiner’s rejection of claims 1, 3 through 12, and 14 through 20
is affirmed.
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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

ELD

KATHY MANKE
AVAGO TECHNOLOGIES LIMITED
4380 ZIEGLER ROAD
FORT COLLINS, CO 80525
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