Ex Parte Guttmann et al

Board of Patent Appeals and Interferences

Dec 30, 2010

10399938 (B.P.A.I. Dec. 30, 2010)

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.
10/399,938 04/24/2003 Joachim Guttmann 510.1064 8884
23280 7590 12/30/2010
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
KIM, ELLEN E
ART UNIT PAPER NUMBER
2874
MAIL DATE DELIVERY MODE
12/30/2010 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
____________

Ex parte JOACHIM GUTTMAN, HANS-PETER HUBER, OSKAR
KRUMPHOLZ, JOERG MOISEL and MANFRED ROSE
____________

Appeal 2009-011850
Application 10/399,938
Technology Center 2800
____________

DECISION ON APPEAL1

Before KENNETH W. HAIRSTON, MARC S. HOFF, and KARL D.
EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-011850
Application 10/399,938

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
6-12. (App. Br. 1.)2 Claims 1-5 have been cancelled. (Id.). No other
claims are pending. (Id.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Disclosed Invention3
The disclosed invention includes a system for transmitting optical
signals comprising a transmitting element 8 having a transmitting surface,
and a receiving element 9 having an acceptance surface. (Spec. ¶ 8; Figs. 1-
3.) The transmitting and receiving elements are detachably connected to
each other. (Spec. ¶¶ 8 and 11.) The acceptance surface is larger than the
transmitting surface to minimize optical power loss that may result from a
misadjustment at a separation point of the transmitting and receiving
elements. (Spec. ¶¶ 11 and 17-19; Fig. 3.)
Exemplary claim 6 follows:
6. A separable optical signal transmission system,
comprising:
a transmitting element including a transmitter having a
transmitting surface and a first optical element having an object
side facing the transmitter and disposed at a distance from the
transmitter;
a receiving element including a receiver having an
acceptance surface and a second optical element having an
image side facing the receiver and disposed at a distance from
the receiver;

2 Appellants’ Appeal Brief (filed June 30, 2008) (“App. Br.”) and Reply
Brief (filed Dec. 4, 2008) (“Reply Br.”) and the Examiner’s Answer (mailed
Sept. 30, 2009) (“Ans.”) are referenced here.
3 The ensuing description constitutes findings of fact [hereinafter FF 0].
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Application 10/399,938

3
wherein each of the transmitting and receiving elements
are configured to be detachably connectable with each other so
that the first and second optical elements form an optical
imaging system and so as to define a separation point between
the first and second optical elements, the separation point
having a positioning tolerance and being disposed between the
first and second optical elements and wherein the acceptance
surface is larger than the transmitting surface by an amount
determined by the positioning tolerance so as to minimize an
optical power loss.
The Examiner relies on the following prior art references:
Tatoh US 5,175,783 December 29, 1992
Waska US 5,312,535 May 17, 1994
Savage US 5,548,676 August 20, 1996
Scavennec US 6,107,652 August 22, 2000
Jewell US 6,243,508 June 5, 2001

Claim 11 stands rejected under 35 U.S.C. 112, first paragraph, for
failing to meet the enablement requirement.
Claims 6-12 stand rejected under 35 U.S.C. 112, first paragraph, for
failing to meet the written description requirement.
Claims 6 and 11 stand rejected as obvious under 35 U.S.C. 103(a)
based on Savage and Waska.
Claims 7, 8 and 10 stand rejected as obvious under 35 U.S.C. 103(a)
based on Savage, Waska, and Jewell.
Claim 9 stands rejected as obvious under 35 U.S.C. 103(a) based on
Savage, Waska, Jewell, and Scavennec.
Claim 12 stands rejected as obvious under 35 U.S.C. 103(a) based on
Savage, Waska, and Tatoh.
Appeal 2009-011850
Application 10/399,938

4
ISSUES4
Appellants’ responses to the Examiner’s positions present the
following issues:
1. Does the claim limitation “detachably connectable . . . in a plug-in-
manner” as recited in claim 11 comply with the enablement and written
description requirements and does the limitation “detachably connectable”
as recited in claim 6 comply with the written description requirement?
2. Did the Examiner err in combining Savage and Waska, Savage and
Jewell, Jewell and Scavannec, or, Savage and Tatoh?

FINDINGS OF FACT (FF)
Savage
1. Savage discloses a system for transmitting optical signals
comprising a transmitting element (i.e., a light emitting diode 11e) having a
transmitting surface 41, and a receiving element 12 having an acceptance
surface 12a. (Col. 3, ll. 8-16; col. 4, ll. 8-21; Figs. 1, 31 and 32.) The
transmitting and receiving elements are separable. (Figs. 1, 4, and 9.) The
acceptance surface 12a is depicted as larger than the transmitting surface 41.
(Figs. 31 and 32.)
Waska
2. Waska discloses an optical light transmitting device comprising a
transmitting surface (i.e., the endface of core portion of optical fiber 119)
and an acceptance surface (i.e., the endface of the core portion of optical

4 Appellant also requests withdrawal of the Examiner’s objection to the
drawings under 35 U.S.C. 1.83(a) (App. Br. 7), but this matter relates to
petitionable subject matter which is not appealable to the Board rather. See
37 CFR 1.181.
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Application 10/399,938

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fiber 120). (Fig. 3a.) The acceptance surface is larger than the transmitting
surface. (Col. 14, ll. 35-37 and 62-63.) Waska generally discusses fiber
optic transmission and reception in fibers in terms of the angle of
acceptance, refractive indices, etc. (Col. 2, ll. 46-64.)
Jewell
3. Jewell discloses an electro-optical assembly comprising a
transmitting element (i.e., a waveguide coupled to VCSEL) and a receiving
element (i.e., a photodiode). (Col. 4, ll. 12-15 and 28-31.) It is an object of
the embodiments to “provide an opto-mechanical assembly that has a small
number of components and high endurance against a
connecting/disconnecting operation and which can be aligned easily.”
(Col. 4, ll. 28-31.)
Scavennec
4. Scavennec discloses a “photodiode structure of the metal-
semiconductor-metal type that makes it possible to operate with low bias
voltages.” (Col. 2, ll. 59-61.)
Tatoh
5. Tatoh discloses an optically molded device comprising two lenses
(i.e., a ball lens 8 and a convex lens 4c.) (Fig. 11; col. 10, ll. 57-63.) The
device “can be easily coupled with optical fibers, etc. with a required
coupling precision, and has a simple structure and high condensation.”
(Col. 2, ll. 43-45.)
PRINCIPLES OF LAW
The Examiner bears an initial burden of factually supporting an
articulated rejection. In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992). For
written description support, specific terms need not be recited in the
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Application 10/399,938

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supporting disclosure. In re Anderson, 471 F.2d 1237, 1244 (CCPA 1973)
(“The question, as we view it, is not whether ‘carrying’ was a word used in
the specification as filed but whether there is support in the specification for
employment of a term in a claim; is the concept of carrying present in the
original disclosure?”) To support an enablement rejection, the Examiner
must show that undue experimentation would have been required to arrive at
the claimed invention. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)
(listing the factual findings required to show undue experimentation and lack
of enablement); MPEP 2164.04 (“[T]he examiner should specifically
identify what information is missing and why one skilled in the art could not
supply the information without undue experimentation.”) To support an
obviousness rejection, “‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.’” KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citation omitted).
On appeal, Appellant may rebut the Examiner’s findings and
reasoning with opposing evidence or argument. Failure to do so may
constitute a waiver of potential arguments. See Ex parte Frye, 94 USPQ2d
1072, 1075 (precedential) (BPAI 2010) (“If an appellant fails to present
arguments on a particular issue — or, more broadly, on a particular rejection
— the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.”); Hyatt v. Dudas, 551 F.3d 1307,
1313-14 (Fed. Cir. 2008) (The Board may treat arguments appellant failed to
make for a given ground of rejection as waived); 37 C.F.R.
§ 41.37(c)(1)(vii).

Appeal 2009-011850
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ANALYSIS
Issue 1
The Examiner argues that Claim 11 fails to comply with the
enablement requirement of the first paragraph of 35 U.S.C. § 112 because
the Specification does not enable one of ordinary skill in the art to make
elements that are “connectable with each other in a plug-in manner.”
(Ans. 4.) In support of this position, the Examiner asserts that “Appellant
simply mentioned the plug-in connection in the prior art in ¶ [0008] of
Appellant’s specification.” (Id.) That assertion, however, is incorrect
because that paragraph describes the present invention and states that “[i]t is
particularly suitable for easily detachable plug-in connections.” (FF 0 (see
supra note 3).) In addition, as noted by Appellants, plug-in connections are
also mentioned in paragraph 0003 of the Specification. (App. Br. 5.)
Further, original claim 1 recites “at least one separation point at which an
optical imaging system for an easily detachable connection is situated.”
In any event, the Examiner does not allege, much less show, the
amount of experimentation that would have been undue in implementing
these well-known and disclosed plug-in connections. See Wands, 858 F.2d
at 737. As such, and based on the foregoing discussion, the Examiner has
failed to show a lack of enablement in claim 11.
The Examiner also argues that claim 6 fails to comply with the written
description requirement of the first paragraph of 35 U.S.C. § 112 because the
claim limitation “detachably connectable” is not “described in the
specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventor(s), at the time the application was filed, had
possession of the claimed invention.” (Ans. 4.) In support of this position,
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the Examiner notes “that something can be detachable or connected but may
not necessarily be re-connectable.” (Ans. 5.) This assertion is not
commensurate in scope with claim 6 because claim 6 does not require any
such ability for re-connection. In any event, as noted supra, original claim 1
recites a “detachable connection,” and paragraph 0008 of the Specification
describes the optical transmission system of the present invention as
“particularly suitable for easily detachable plug-in connections” (App. Br. 6-
7; accord FF 0). Given this support for the concept of detachable
connections, the fact that the claim 6 limitation “detachably connectable”
does not appear verbatim in the Specification is not significant. See
Anderson, 471 F.2d at 1244.
The Examiner also argues that claim 11 fails to comply with the
written description requirement of the first paragraph of 35 U.S.C. § 112
because the claim limitation requiring that the “transmitting and receiving
elements are configured to be detachably connectable with each other in a
plug-in manner” is not described in the specification. (Ans. 5.) The
Examiner argues that “Appellant simply mentioned the plug-in connection in
the prior art in ¶ [0008] of Appellant’s specification, but fails to show or
disclose the transmitting and receiving elements being detachably
connectable with each other in a plug-in manner.” (Id.) However, as
explained supra, the discussion of the plug-in connection in paragraph
[0008] of the Specification pertains to Appellants’ invention, not the prior
art. (FF 0.) Moreover, that same paragraph specifies that the optical
transmission system of the present invention “is particularly suitable for
easily detachable plug-in connection.” (FF 0). Given this support for the
concept of easily detachable plug-in connections, the fact that the phrase
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Application 10/399,938

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“transmitting and receiving elements are configured to be detachably
connectable with each other in a plug-in manner” does not appear verbatim
in the Specification is not significant. See Anderson, 471 F.2d at 1244.
Issue 2
With respect to claims 6 and 11, Appellants argue that it is improper
for the Examiner to combine Waska with Savage because they are in
different fields. (App. Br. 8.) In particular, Appellants argue that Waska
teaches capillary electrophoreses, which is “mainly used in the completely
different field of biology to which an electrooptical engineer would not turn
in order to solve the problem of the invention.” (Id.) As found by the
Examiner, however, Waska is pertinent to Appellants’ invention because it
“clearly shows the general teaching of an acceptance surface which is larger
than the transmitting surface in [sic] optical light transmitting device.”
(Ans. 13; accord FF 2.)
Appellants do not rebut the Examiner’s finding with more than a
conclusory statement asserting that the two references “have nothing to do
with [each other].” (Reply Br. 4.) As the Examiner’s Answer implies, the
references also both relate to the general field of fiber optical transmission
and reception. (FF 1, 2.) The breadth of claim 6 generally embraces a broad
field involving optical transmission and reception. See Wyers v. Master
Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (holding that references in a
patent specification to prior art padlocks and the broad scope of locking
device claims indicated that padlocks were analogous art to trailer hitch lock
devices, reasoning inter alia that KSR requires “us to construe the scope of
analogous art broadly”) (citing and quoting KSR, 550 U.S. at 402).
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Appellants also argue that “there is no reasoning given for combining
the two references.” (App. Br. 8.) But the Examiner does provide a reason,
stating that one of ordinary skill in the art would have combined Waska with
Savage at the time of the invention “for the purpose of easier and higher
coupling between the acceptance surface and the transmitting surface.”
(Ans. 8.) Appellants do not address, much less explain why, the stated
reason to combine is insufficient. (App. Br. 7-9; Reply Br. 3-4.)
With respect to claims 7 and 10, Appellants argue that it is improper
for the Examiner to combine Jewell with Savage because there “is no
indication that such a coupling for Savage has applicability with the laser of
Jewell.” (App. Br. 9.) With respect to claim 8, Appellants argue that there
“appears to be no reason or need to incorporate the photodiode [of Jewell] in
the Savage device.” (Id.) As found by the Examiner, however, one of
ordinary skill in the art would have combined Jewell with Savage at the time
of the invention “to include the electro-optic assembly having [sic a]
waveguide coupled to a photodiode as a light receiver … the purpose of high
endurance against a connecting/disconnecting operation.” (Ans. 9 (citing
Jewell, col. 4, ll. 28-31); accord FF 1 and 3.) The cited passage of Jewell
also indicates that “assembly . . . can be aligned easily.” (FF 3.) In other
words, Jewell indicates that a photodiode would have provided beneficial
light reception (e.g., for measurement) in the similar laser system of Savage
while beneficially providing for easy connection, disconnection and
alignment of the modified system. Thus, contrary to Appellants’ argument
supra, the Examiner provided a sufficient rationale for the combination.
With further respect to claim 7, Appellants argue that Savage relates
to an LED coupling and “one of skill in the art would not have included a
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Application 10/399,938

11
laser in the LED device of Savage as the whole purpose of Savage is to deal
with light ray scattering of LEDs.” (App. Br. 9.) This argument fails to
explain why Jewell’s teachings would not apply to similar types of light
sources – i.e., it does not even allege that Savage’s laser diodes do not
scatter light. And even if Jewell’s laser diodes work better than Savage’s
LED sources by scattering less light or even no light as the argument may
imply, a “mere substitution” of similar light sources would have been
obvious. “[W]hen . . . the prior art . . . is altered by the mere substitution of
one element for another known in the field, the combination must do more
than yield a predictable result.” KSR , 550 U.S. at 416 (citation omitted).
Also, Jewell indicates that laser diode devices similarly scatter light
(see Fig. 4, col. 11, ll. 11-28), thereby suggesting that Savage’s design
purpose (assuming arguendo it is to handle light scattering), would also have
applied to Jewell’s similar light sources. Further, Jewell’s teachings also
apply to optical light sources in general. (See Jewell, col. 4, ll. 17-21).
With respect to claim 9, Appellants argue that it is improper for the
Examiner to combine Scavannec with Jewell because there appears to be no
need or desire to place the metal-semiconductor-metal (MSM) photodetector
of Scavannec “in the Jewell device.” (App. Br. 10.) As found by the
Examiner, however, one of ordinary skill in the art would have combined
Scavannec with Jewell at the time of the invention because the photodiode
structure of the metal-semiconductor-metal type makes it possible to operate
with low bias voltages. (Ans. 11; accord FF 4.) Appellants do not address
the stated reason for the combination, much less explain why it is
insufficient. (See App. Br. 10; Reply Br. 5.)
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Application 10/399,938

12
With respect to claim 12, Appellants argue that it is improper for the
Examiner to combine Tatoh with Savage because there “is no indication that
Savage needs a first lens element, or that the structure of Savage would nto
[sic] change if a lens element were incorporated.” (App. Br. 10.) But the
test of obviousness is not whether a feature of a secondary reference can be
incorporated into the structure of a primary reference; the test is what the
combined teachings of the references would have suggested to one of
ordinary skill in the art. See e.g., In re Keller, 642 F.2d 413 (CCPA 1981).
Moreover, as found by the Examiner, one of ordinary skill in the art would
have combined Tatoh with Savage and employed another lens “for the
purpose of easy coupling with optical fibers, with a required coupling
precision, and having a simple structure and high condensation.” (Ans. 11;
accord FF 5.) In other words, Tatoh shows that similar optical fiber systems
employ two lenses and provide easy coupling and required precision. Also,
the cable end 12a of Savage does not preclude another lens since it passes
light. In any event, Appellants’ arguments do not show why the combined
system would not work with another lens or why the Examiner’s finding is
deficient.
Appellants also present additional arguments for the first time in their
Reply brief. (Reply Br. 3-5 (presenting new arguments such as those in a
bold, italic font).) Because there is no showing of good cause for why these
new arguments could not have been presented in Appellants’ opening Brief,
they will not be considered. Ex parte Borden, 93 USPQ2d 1473
(informative) (BPAI Jan. 7, 2010) (new reply brief arguments untimely
absent a good cause showing); see also Frye, 94 USPQ2d at 1075) (waiver
for arguments generally); Hyatt, 551 F.3d at 14 (waiver generally).
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For all the reasons expressed above, we will sustain the Examiner’s
rejections of claims 6-12.
CONCLUSION
Based on the evidence and arguments of record, the Examiner did not
establish that the claim limitation “detachably connectable . . . in a plug-in-
manner” as recited in claim 11 fails to comply with the enablement and
written description requirements and that the limitation “detachably
connectable” as recited in claim 6 fails to comply with the written
description requirement. The Examiner did not err in combining Savage and
Waska, Savage and Jewell, Jewell and Scavannec, and Savage and Tatoh,
and therefore, did not err in finding that each of claims 6-12 is obvious under
35 U.S.C. 103.
DECISION
We affirm the Examiner's decision rejecting claims 6-12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R.
§ 1.136(a)(1)(v) (2010).
AFFIRMED

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