Ex Parte Glebov

Board of Patent Appeals and Interferences

May 18, 2009

11010789 (B.P.A.I. May. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALEXEI GLEBOV
____________

Appeal 2009-1319
Application 11/010,789
Technology Center 2800
____________

Decided:1 May 18, 2009
____________

Before, JOSEPH F. RUGGIERO, CARLA M. KRIVAK,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 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 2009-1319
Application 11/010,789

2
STATEMENT OF CASE
Appellant’s claimed invention is directed to a dynamic polarization
controller for an optical waveguide. The waveguide is formed on a substrate
and includes an intermediate portion of the waveguide being suspended in a
cavity over the substrate. A deflecting structure controllably exerts a force
on the suspended portion of the waveguide to control the polarization
properties of the waveguide (Spec. ¶ [0005]).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A dynamic polarization controller, comprising:

a substrate,

an optical waveguide formed on said substrate, said optical waveguide
having an intermediate portion thereof suspended in a cavity over said
substrate,

a deflecting structure for controllably exerting a force on the
suspended portion of said waveguide, such that the polarization
properties of said waveguide can be controllably varied by said
deflecting structure.

REFERENCES
Carlson US 6,724,512 B2 Apr. 20, 2004
(filed Dec. 18, 2001)
MacDonald US 6,763,154 B2 Jul. 13, 2004
(filed May 20, 2002)

The Examiner rejected claims 1, 2, 4-9, 12, 13, 15-20, 22, and 24-27
under 35 U.S.C. § 103(a) based upon the teachings of MacDonald.

Appeal 2009-1319
Application 11/010,789

3
The Examiner rejected claims 3, 10-11, 14, 21, and 23 under 35
U.S.C. § 103(a) based upon the teachings of MacDonald and Carlson.
Appellant contends that MacDonald’s optical waveguide suspended
“over” a cavity is not the same as Appellant’s optical waveguide that is “in”
a cavity. (App. Br. 11-12; Reply Br. 2-3).

ISSUES
Did Appellant establish that the Examiner erred in finding the optical
waveguide suspended “over” a cavity as taught by MacDonald renders
obvious the optical waveguide suspended “in” a cavity as taught by
Appellant?

FINDINGS OF FACT
1. Appellant’s claimed invention is directed to deflecting an
optical waveguide 110 for controlling the polarization of light propagating
within the optical waveguide (Fig. 2; Spec. ¶¶ [0021-0023]). Specifically, a
dynamic polarization controller (“DPC”) 40 includes a silicon substrate 100
and cladding layers 120, 130 formed on the substrate around the optical
waveguide (Fig. 2; Spec. ¶ [0027]). The optical waveguide has an
intermediate portion suspended in functional proximity to a cavity 150 (Fig.
2; Spec. ¶ [0028]). The DPC includes a deflecting structure having a
number of electrodes 160, 170, 180 for controllably exerting a physical force
on the suspended portion of the waveguide to deflect the intermediate
portion of the waveguide such that the polarization properties of the
waveguide can be controllably varied by the deflecting structure (Figs. 2, 6;
Spec. ¶¶ [0029-0031]).
Appeal 2009-1319
Application 11/010,789

4
2. Appellant’s optical waveguide is polymeric (Spec. ¶ [0027]).
3. Appellant discloses a degree of polarization (“DOP”)
monitoring device 80 that measures the polarization of light propagating
within the optical waveguide. The Specification discloses that, “DOP
analyzers, or other equivalent apparatus for monitoring polarization of an
optical signal in real time, are known and need not be described in further
detail” (Spec. ¶ [0026]).
4. Appellant’s DOP provides a feedback signal to a controller 50
which correspondingly controls one or more DPCs. The Specification
discloses that, “[t]hose skilled in the art will appreciate that controller 50
may comprise a microprocessor-based system, with appropriate I/O devices,
software, voltage supply, etc.” (Spec. ¶ [0026]).
5. Appellant’s DPC may be combined with a number of
differential group delay (“DGD”) compensators 60a (Fig. 1; Spec. ¶¶ [0024-
0025]). Appellant recognizes that, “[v]arious types of adjustable DGD
compensators are known in the art” (Spec. ¶ [0025]).
6. MacDonald teaches deflecting a silica optical waveguide 306
(Figs. 3a, 3b); 3102 (Fig. 3c) for controlling the polarization of light
propagating therein (col. 4, ll. 45-65; Figs. 3a-c). The optical waveguide is
formed on a substrate 302 (Figs. 3a, 3b) in a membrane layer 304(Figs. 3a,
3b); 3104 (Fig. 3c) (col. 5, ll. 46-48; Figs. 3a-c).
7. MacDonald’s optical waveguide has an intermediate portion
suspended in functional proximity over a cavity 308 (Figs. 3a, 3b); 3108
(Fig. 3c) when not deflected and within the cavity during deflection by a
deflecting structure (col. 5, ll. 49-64; Figs. 3a-c). The deflecting structure
includes electrodes 3106 for controllably exerting a physical force on the
Appeal 2009-1319
Application 11/010,789

5
suspended portion of the waveguide to deflect the intermediate portion of the
waveguide (col. 5, ll. 58-66; Fig. 3c). Deflection of the intermediate portion
of the waveguide by the deflecting structure causes changes in the
polarization properties of the waveguide (col. 2, ll. 49-57).
8. Carlson teaches the substitution of a polymeric waveguide for a
silica waveguide in optical devices (col. 54, l. 64-col. 55, l. 4).

PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If that
burden is met, then the burden shifts to the Appellant to overcome the prima
facie case with argument and/or evidence. See Id.
The claim terms should be given their broadest reasonable meaning in
their ordinary usage as such claim terms would be understood by one skilled
in the art by way of definitions and the written description. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
The Supreme Court recently reaffirmed 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.” KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007).
[In] Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct.
1532 47 L.Ed.2d 784 (1976), the Court derived from the
precedents the conclusion that when a patent “simply
arranges old elements with each performing the same
function it had been known to perform” and yields no
more than one would expect from such an arrangement,
the combination is obvious.

Id. at 417.
Appeal 2009-1319
Application 11/010,789

6
ANALYSIS
Claims 1, 2, 4-9, 12, 13, 15-20, 22 and 24-27
The Examiner rejected the claims 1, 2, 4-9, 12, 13, 15-20, 22 and 24-
27 under 35 U.S.C. § 103(a) based upon the teachings of MacDonald (Ans.
3-7). Appellant argues claims 1, 5 12, 20, and 27 (App. Br. 11-13), with the
remaining claims standing or falling therewith.
Regarding representative claim 1, Appellant contends that
“MacDonald does not disclose a portion of a waveguide suspended in a
cavity, but instead discloses a waveguide suspended over a cavity” (App. Br.
11). Appellant further contends that even if the intermediate portion of the
waveguide in MacDonald is suspended in the cavity when it is being
deflected, claim 1 effectively requires that the intermediate portion of the
waveguide be “already” suspended in a cavity prior to deflection (App. Br.
11; Reply Br. 2).
As the Examiner correctly finds, MacDonald teaches that “the cavity
is [a] hole/well (308) and while a force is exerted on the waveguide, part of
the waveguide is suspended in the cavity” (Ans. 9). Further, MacDonald
discloses that an intermediate portion of its optical waveguide is suspended
in functional proximity over a cavity when not deflected and is within the
cavity during deflection (FF 6, 7). Appellant’s argument requiring that some
portion of the waveguide be “already” in the cavity is without merit.
Appellant is attempting to add a limitation which does not exist to claim 1,
i.e., that the deflecting force is applied to a waveguide that is “already”
suspended in the cavity. Furthermore, Appellant is ignoring the electrostatic
force that is required to keep the waveguide suspended in the cavity. That
is, in MacDonald, after the initial deflection of the waveguide into the
Appeal 2009-1319
Application 11/010,789

7
cavity, the waveguide remains suspended in the cavity while force continues
to be applied (FF 7). Therefore, MacDonald teaches a portion of the
waveguide is suspended in the cavity and the polarization properties of the
waveguide are controllably varied by a deflecting structure as is recited in
claim 1.
Thus, Appellant has not shown the Examiner erred in rejecting claim
1 or dependent claims 2, 4 and 6-9, which fall with claim 1. Accordingly,
the Examiner’s rejection of claims 1, 2, 4, and 6-9 is sustained.
Regarding claim 5, Appellant contends that MacDonald does not
disclose that “said cavity has sidewalls adjacent to sidewalls of said
waveguide” and that claim 6 provides orientation of the device recited in
claim 5 (App. Br. 12; cl. 5). Even assuming, arguendo, that Appellant’s
interpretation of the orientation of the walls of the waveguide and cavity is
correct, the Examiner still correctly finds the optical waveguide of
MacDonald does have multiple walls adjacent to the cavity (Ans. 11).
Although Appellant argues, “there is no disclosure of multiple walls of the
waveguide 306 that have deflector electrodes disposed thereon” (App. Br.
12), the Examiner correctly finds, “from Figure 3C of MacDonald et al, it
can be observed that the electrodes are indirectly formed on the sidewalls of
the cavity and waveguide via intermediate components” (Ans. 11). There is
no discernable difference between the electrodes being formed directly or
indirectly on the waveguide when the claimed invention simply rearranges
old elements, each performing the same function it had been known to
perform, yielding no more than one would expect from such an arrangement
(KSR, supra). Thus, Appellant has not shown the Examiner erred in
Appeal 2009-1319
Application 11/010,789

8
rejecting claim 5. Accordingly, the Examiner’s rejection of claim 5 is
sustained.
Regarding claim 12, Appellant contends that claim 12 “requires that
the cavity surround an intermediate portion of the waveguide” (App. Br.
12). Appellant argues that MacDonald does not disclose this feature because
MacDonald’s waveguide is only suspended over its hole/well and is not
surrounded by it (App. Br. 12). The Examiner finds that the cavity recited in
claim 12 does not surround the waveguide on all sides in Appellant’s
specification and drawings, which are used to interpret the claims.
Therefore the term “surround” can only mean something less than
completely encompassing the intermediate portion of the waveguide (Ans.
11; Fig. 2). Because the intermediate portion of MacDonald’s waveguide is
surrounded by the cavity in essentially the same manner as shown in
Appellant’s specification and drawings, MacDonald meets this limitation.
Appellant has not shown the Examiner erred in rejecting claim 12, and thus,
dependent claims 13 and 15-19, which fall with claim 12. Accordingly, the
Examiner’s rejection of claims 12, 13 and 15-19 is sustained.
Regarding representative claims 20 and 27, Appellant asserts that in
addition to the arguments presented with regard to claim 1, “[c]laims 20 and
27 also require a differential group delay compensator, a control
system/controller, and a polarization monitoring device/monitoring system”
(App. Br. 13; cls. 20, 27) which the Examiner finds would be obvious to
include in the system (Ans. 6, 7).
MacDonald discloses “a controllable waveguide structure that
combines waveguide and MEMS processing to produce electrostatically
actuated, beam deflection stress-inducing birefringence shifters” (col. 2, ll.
Appeal 2009-1319
Application 11/010,789

9
36-39). Given that the controllable waveguide structure is electrostatically
actuated, one may infer that it is electrically controlled. Furthermore, as the
Examiner finds, “MacDonald et al discusses a wide range of devices the
polarization controller can be configured with. Some of these devices
include gain equalizers and optical add/drop configurations. Furthermore,
MacDonald et al teaches the present invention applications are configured to
operate with control optical devices” (Ans. 12).
Appellant’s Specification acknowledges that microprocessors used for
control are well known as are degree of polarization sensors (FF 3-4). The
microprocessors and DOPs together provide the required feedback and
control system to implement dynamic polarization control (FF 3-4).2
Likewise, Appellant acknowledges “[v]arious types of adjustable DGD
compensators are known in the art” (FF 5). Thus, from Appellant’s own
Specification, it would have been well within the knowledge of one skilled
in the art at the time the invention to include the elements recited in claims
20 and 27 to control the waveguide.
Appellant has not shown the Examiner erred in rejecting claims 20 or
27 and claims 22 and 24-26 which fall therewith. Accordingly, the
Examiner’s rejection of claims 20, 22 and 24-27 is sustained.

2 It should be noted that Carlson, although not used in the rejection of
claims 20 and 27, provides further confirmation that these devices would
have been known to and used by one having ordinary skill in the art at the
time of Appellant’s invention (see Carlson col. 45, ll. 33-44; col. 36, ll. 57-
60).
Appeal 2009-1319
Application 11/010,789

10
Claims 3, 14, 21, and 23
The Examiner rejected claims 3, 14, 21, and 23 under 35 U.S.C.
§ 103(a) based upon the teachings of MacDonald in view of the teachings of
Carlson (Ans. 7-8). Appellant asserts these claims are allowable for the
same reasons as claims 1, 12 and 20 from which they depend.
Appellant also provided additional arguments with respect to claim
23, reiterating the arguments discussed above with respect to claim 5 (App.
Br. 14). Thus, for the reasons set forth above, the Examiner’s rejection of
claims 3, 14, 21, and 23 is sustained.
Claims 10 and 11
The Examiner rejected claims 10 and 11 under 35 U.S.C. § 103(a)
based upon the teachings of MacDonald in view of the teachings of Carlson
(Ans. 8).
Appellant argues that, in addition to the arguments presented with
respect to claims 1 and 5, claim 10 is allowable because it requires “at least
two deflector electrodes formed on walls of said suspended portion of said
polymeric optical waveguide, and corresponding opposing electrodes
formed on walls of said cavity thereby forming a plurality of opposing
electrode pairs” (App. Br. 14-15).
MacDonald clearly discloses the use of electrodes to deflect the
suspended portion of a silica optical waveguide (FF 7; Fig. 3c; col. 5, ll. 54-
57, 59-64). Carlson teaches the substitution of a polymeric waveguide for a
silica waveguide in optical devices (FF 8). Thus, the combination of
MacDonald and Carlson teaches all the limitations of claim 10. Therefore,
claim 10, and claim 11, which falls therewith (App. Br. 15), is obvious in
Appeal 2009-1319
Application 11/010,789

11
view of MacDonald and Carlson. Accordingly, the Examiner’s rejection of
claims 10 and 11 is sustained.

CONCLUSION
Appellant has not established that the Examiner erred in finding
claims 1-27 obvious under 35 U.S.C. § 103(a) over MacDonald in view of
Carlson.

DECISION
The Examiner’s decision rejecting claims 1-27 under 35 U.S.C.
§103(a) is affirmed.
No time period for taking any subsequent action in connection this
appeal may be extended under 37 C.F.R. §1.136(a)(1)(iv).

AFFIRMED

KIS

BAKER BOTTS L.L.P.
2001 ROSS AVENUE
SUITE 600
DALLAS TX 75201-2980