Ex Parte Eggleton et al

Board of Patent Appeals and Interferences

Jun 3, 2008

10409227 (B.P.A.I. Jun. 3, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BENJAMIN J. EGGLETON, JUSTIN D. GING, ARTURO HALE,
CHARLES KERBAGE
____________

Appeal 2007-3987
Application 10/409,227
Technology Center 2800
____________

Decided: June 3, 2008
____________

Before ROBERT E. NAPPI, CARLA M. KRIVAK, and KARL D.
EASTHOM Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-12.1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Claims 1-16 are pending in the application. However, claims 13-16 have
been allowed.
Appeal 2007-3987
Application 10/409,227

STATEMENT OF CASE
Appellants claimed invention is a microstructured optical waveguide
that includes an air channel that includes plugs of optically active material
that exhibits a period Λ (Spec. 4:2-11).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.

1. A microstructured optical waveguide comprising

a central core region disposed along the length thereof; and

an inner cladding layer surrounding said central core region, said
inner cladding layer being microstructured to include at least one air
channel disposed along the length of said waveguide, wherein said at
least one air channel comprises a first plurality of plugs of optically
active material disposed along a portion of the length of said
waveguide, said first plurality of plugs thereby exhibiting a desired
periodicity Λ.

REFERENCES
Miyata US 5,626,797 May 6, 1997
DiGiovanni US 5,802,236 Sep. 1, 1998
Chandalia US 2002/0114574A1 Aug. 22, 2002
Soljacic US 2003/0031443A1 Feb. 13, 2003
Reynolds US 6,707,957B1 Mar. 16, 2004
Filed Dec. 18, 2001

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
1. Claims 1-3 and 8-11 as obvious over Soljacic and Miyata;
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2. Claims 4-7 under Soljacic, Miyata and Reynolds; and
3. Claim 12 under DiGiovanni, Soljacic, and Chandalia.
Appellants contend that Soljacic and Miyata do not teach an air
channel including “a plurality of plugs to exhibit a predefined periodicity
along the length of a microstructured fiber” (Br.4; Cl. 1).

ISSUES
Did the Examiner err in rejecting claims 1-3 and 8-11 over Soljacic
and Miyata? In addition, did the Examiner err in rejecting claims 4-7 over
Soljacic, Miyata, and Reynolds, and claim 12 over Soljacic, Chandalia, and
DiGiovanni?

FINDINGS OF FACT
1. Appellants’ disclosure teaches a microstructured optical
waveguide that includes a central core region along the length of the
waveguide and an inner cladding layer surrounding the core. The inner
cladding layer includes at least one air channel. The air channel includes
plugs of optically active material. The plugs exhibit a desired periodicity Λ
(Cl. 1; Spec. 2:10-17; Spec. 4:2-11).
2. Soljacic teaches high index-contrast fiber waveguides and
applications. Soljacic can include inhomogeneous fiber portions referred to
as “holey” portions that include one or more hollow regions or holes
extending along the waveguide axis. The hollow regions can be filled with
gas or a liquid (¶[0166]). The waveguide can include a cladding layer
having a portion of solid glass and a portion of glass with hollow regions
(¶[0166]).
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Application 10/409,227

3. Portions, in Soljacic, are defined as the “structural elements of
the fiber waveguide that determine the optical properties of the waveguide.”
Further, in Bragg fibers, which include photonic crystal fibers, the
confinement region includes multiple layers of different compositions that
give rise to index variation. “In such cases, each of the layers is considered
to be a portion of the waveguide.” (¶[0148])
4. Miyata teaches a non-linear optical material in the form of a
film or fiber (col. 1, ll. 12-14) that uses a solid solution of an organic guest
compound such as trifluorotoluence (Col. 3, ll. 1-4; Col. 10, ll. 14-23).
5. Reynolds teaches compensating polarization mode dispersion
where a series of spaced heating elements are provided along the length of a
tapered fibre. The heating elements can be selectively energized to impose
localized heating. Compensation can be performed at the receive end and/or
the transmit end. This technique can be used to control the grating and
birefringence of the fibre (Col. 4, ll. 14-44).
6. Chandalia teaches a tapered microstructured fiber system. The
microstructured fiber has a core region, a cladding region, and capillary air
holes (Abstract; Fig. 1b; ¶¶[0020]-[0021]).
7. DiGiovanni teaches a non-periodic microstructured optical fiber
and a method of making such a microstructured optical fiber.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
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Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
If the Examiner’s burden of establishing a prima facie case of
obviousness is met, the burden then shifts to the Appellants to overcome the
prima facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).

ANALYSIS
Claims 1-3 and 8-11
The Examiner finds that Soljacic teaches the features of claims 1-3
and 8-11. With respect to representative independent claim 1, the Examiner
states Soljacic teaches that portions of a fiber waveguide can include “holey”
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portions that are one or more hollow regions, or holes, extending along the
waveguide axis. The hollow regions can be filled with gas or liquid (FF 2;
Ans. 9). Thus, the fiber waveguide can include a cladding layer having a
portion of solid glass and a portion of glass with hollow regions (¶[0166];
Ans. 4). Further, the Examiner has interpreted Appellants “plugs” as
“bubbles formed within the axial air channels of a fiber waveguide, which
when selectively filled with an optically active fluid, provides a periodic
variation in refractive index along the waveguide axis. Equivalently, the
hollow regions or holes along Soljacic’s waveguide axis are also bubbles”
(Ans. 10).
Appellants counter that Soljacic discusses the use of “hollow regions”
and not a plurality of plugs disposed in at least one air channel along the
length of the fiber, the plugs “thereby exhibiting a desired periodicity Λ
(emphasis Appellants’)” (Br. 4; Cl. 1).
Soljacic teaches a cladding layer can have a portion of solid glass and
a portion of glass with hollow regions. The Examiner relies on Fig. 29 to
show a core surrounded by a confinement region. The core includes regions
such that adjacent regions have different refractive indices (Ans. 9; ¶[0259]).
The Examiner then interprets the “plugs” as bubbles formed within the axial
channels of a fiber waveguide, and that the hollow regions or holes along
Soljacic’s waveguide axis are also bubbles when filled with air or liquid
(Ans. 10). We do not agree. A hollow is defined as an unfilled space:
cavity, hole.2 Thus, the teachings of Soljacic do not include an air channel
having plugs of optically active material disposed therein as claimed by

2 Merriam-Webster On-Line Dictionary, http://www.merriam-
webster.com/dictionary/hollow.
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Appellants; rather Soljacic teaches a glass portion having hollow regions
(holes or voids). There is no “hollow region” within a glass portion in
Appellants’ disclosure; rather, the inner cladding layer has at least one air
channel in which plugs are disposed.
The Examiner relied on Miyata for teaching the use of trifluorotoluene
as a non-linear material. This limitation is found only in claim 9. Miyata
does not cure the deficiencies found in Soljacic.
Thus, the Examiner has not provided a prima facie case of
obviousness with respect to claim 1. It should be noted that claims 2, 3, and
8-11, which depend from claim 1, were not argued separately. Thus, claims
2, 3, and 8-11 are also non-obvious over the collective teachings of the cited
prior art

Claims 4-7
The Examiner rejected claims 4-7 as obvious over Soljacic, Miyata,
and Reynolds. The Examiner cited Reynolds as disclosing temperature
induced index changes and altering modal shape (Ans. 11). Appellants
assert that Reynolds does not cure the defects of Soljacic and Miyata. With
respect to claim 7, this claim changes the spacing of the plugs (and thus,
modifies the periodicity) by applying pressure. The Examiner correctly
notes that applying heat to the channels would thus apply pressure (Spec.
7:18-30). However, none of the references teaches applying pressure to alter
the spacing of plugs within an air channel, which affects the periodicity.
Thus, for this reason and the reasons provided above with respect to claim 1,
we find claims 4-7 not obvious over the collective teachings of the cited
prior art.
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Claim 12
The Examiner rejected claim 12 over DiGiovanni, Soljacic, and
Chandalia. Chandalia teaches “air holes” which are longitudinal channels
that extend along the length of the microstructured fiber (An. 14). The
Examiner has merely stated that he has interpreted the term “air holes” as
“plugs” for the reasons set forth with respect to claim 1.
We find that Chandalia does not cure the deficiencies of the other
references and thus, for the reasons provided above with respect to claim 1,
we find claim 12 also not obvious over the collective teachings of the cited
prior art.

CONCLUSION
We therefore conclude that the Examiner erred in rejecting claims 1-
12 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner rejecting claims 1-12 is reversed.
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).

REVERSED

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gvw

Wendy W. Koba
P O Box 556
Springtown, PA 18081
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