Ex Parte Ho et al

Board of Patent Appeals and Interferences

Aug 8, 2007

10408598 (B.P.A.I. Aug. 8, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte YEN-PING HO and YI DING
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Appeal 2007-1059
Application 10/408,598
Technology Center 2800
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Decided: August 8, 2007
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Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP and
JEAN R. HOMERE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 1 through 16. We have jurisdiction under 35 U.S.C.
§ 6(b) to decide this appeal.

Appeal 2007-1059
Application 10/408,598

Appellants invented a method and an optical network for monitoring
the power in a multiple channel signal having a plurality of multiplexed
wavelengths. Particularly, the signal is passed through an arrayed
waveguide to remove a diffraction order for the signal, which is
subsequently monitored in a power monitor. (Specification 2 and 3).
An understanding of the invention can be derived from exemplary
independent claim 1, which reads as follows:
1. A method comprising:

receiving at least two light signals;

passing said signals through an arrayed waveguide to remove two
different diffraction orders for each signal; and

directing one of said orders for each signal to a power monitor.

In rejecting the claims on appeal, the Examiner relies upon the
following prior art:
Urino (Urino US '201) US 6,389,201 B1 May 14, 2002
Urino (Urino JP '938) JP 2001-116938 Apr. 27, 2001

Merriam-Webster’s Collegiate Dictionary, 10th edition, Merriam-
Webster, Inc., Springfield, MA, 1993, page 875.

Meyer-Arendt, J.R., “Introduction to Classical and Modern Optics”,
Fourth Edition, Prentice Hall, Englewood Cliffs, New Jersey, 1995,
pages 354-355.

The Examiner rejects the claims on appeal as follows:
Claims 1 through 16 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Urino JP '938. The Examiner refers to Urino US '201 for an
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English translation of the Japanese-language reference. In this opinion we
will refer to Urino JP '938 as “Urino,” but our citations refer to the
translation (i.e., Urino US '201).
Appellants contend1 that Urino does not fairly teach or suggest a
power monitor for monitoring the power in the wavelengths of a signal. (Br.
11, Reply Br. 2.) In response, the Examiner contends that Urino’s disclosure
of monitoring waveguides for monitoring wavelengths in an optical signal or
Urino’s disclosure of a photo-detector teaches the claimed power monitor.
(Answer 7 and 8.)
We affirm.
ISSUES
The pivotal issue in the appeal before us is as follows:
(1) Have Appellants shown2 that the Examiner failed to establish that the
disclosure of Urino anticipates the claimed invention under 35 U.S.C.

1 This decision considers only those arguments that Appellants
submitted in the Appeal and Reply Briefs. Arguments that Appellants could
have made but chose not to make in the Briefs are deemed to have been
waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2005). See also In re Watts, 354
F.3d 1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004).
Appellants did not provide separate arguments with respect to the
rejection of 1 through 16 as being anticipated by Urino. Therefore, we select
independent claim 1 as being representative of the claimed invention.
Claims 2 through 16 consequently fall together with representative claim 1.
See In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991). See also 37 C.F.R. § 41.37(c)(1)(vii).
We rely on and refer to the Examiner’s Answer mailed on June 16,
2006.

2 In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. In re
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Application 10/408,598

§ 102(b). Particularly, does Urino’s disclosure of a monitoring waveguide
for monitoring wavelengths in an optical signal or Urino’s disclosure of a
photo-detector teach Appellants’ power monitor?
FINDINGS OF FACT
The following findings of fact are supported by a preponderance
of the evidence.
The Invention
1. Appellants invented an arrayed waveguide based optical system (10)
that receives a wavelength division multiplexed signal (12) having
wavelengths 1 through N. (Specification 2.)
2. As depicted in Figure 1, an input optical beam of the multiplexed
signal (12) passes through an optical de-multiplexer, which comprises a star
coupler (14a) adjoining an arrayed waveguide region (15) juxtaposing
another star coupler (14b). Various wavelengths are coupled to different
output waveguides (16, 18) due to constructive and destructive interference
in the region 15. Waveguide 16 operates on one diffraction order while
Piasecki 745 F.2d 1468, 1472, 223 USPQ 785, 788. When that burden is
met, the burden then shifts to the applicant to rebut. Id.; see also In re
Harris, 409 F.3d 1339, 1343-44, 74 USPQ2d 1951, 1954-55 (Fed. Cir.
2005) (finding rebuttal evidence unpersuasive). If the applicant produces
rebuttal evidence of adequate weight, the prima facie case of unpatentability
is dissipated. In re Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
Thereafter, patentability is determined in view of the entire record. Id.
However, on appeal to the Board it is an appellant's burden to establish that
the Examiner did not sustain the necessary burden and to show that the
Examiner erred -- on appeal we will not start with a presumption that the
Examiner is wrong.

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waveguide 18 operates on the next highest power order, such as the M-1 or
M+1 order. (Id. 2 and 3.)
3. Waveguide 18 is coupled to the detector array 20, which measures the
power of every channel. (Id. 3 and 4.)

The Prior Art Relied upon
4. Urino teaches an optical network including a plurality of monitoring
waveguides for monitoring the wavelengths in a signal. (Col. 6, lines 50-
56.)
5. As depicted in Figure 1, the disclosed optical network includes a de-
multiplexer, which comprises an input waveguide (11) coupled to an input-
side slab waveguide (12) adjoining an arrayed waveguide (13), which
juxtaposes an output-side slab waveguide (14) for dividing a wavelength-
division multiplexed optical signal into signals that have different
wavelengths and for extracting the diffraction orders for the signal. (Col. 5,
ll. 36-47; col. 6, ll. 8-27.)
6. The extracted diffraction orders (m+1 or m-1) are then forwarded to
output waveguides (15, 16), which are coupled to the de-multiplexer,
permitting one of said output waveguides (16) to monitor received signal
wavelengths. (Col. 6, ll. 49-62.)
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7. Alternatively, Urino teaches that a photodetection array3 (22) can be
used in lieu of the monitoring waveguide (16) to directly receive monitored
signals of each wavelength. (Col. 7, l. 63- col. 8, l. 5.)

PRINCIPLES OF LAW
1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found

only if the prior art reference discloses every element of the claim. See In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730
F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005),
citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc.,
976 F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992). Anticipation
of a patent claim requires a finding that the claim at issue “reads on” a prior

3 The Examiner relies upon a dictionary definition for photodetector
and a textbook definition for radiant intensity. Particularly, at pages 8 and 9
of the Answer, the Examiner provided the following definitions:

“A photodetector (Optical detector) is a device that detects and
measures the intensity of radiant energy through photoelectric
action.” Merriam-Webster’s Collegiate Dictionary.

“Radiant intensity (intensity of an optical signal) is the radiant power
per solid angle.” Meyer-Arendt.
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art reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346, 51
USPQ2d 1943, 1945 (Fed. Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).
ANALYSIS
A. CLAIM CONSTRUCTION
As set forth above, representative claim 1 requires directing an extracted
diffraction order for each signal to a power monitor. Our reviewing court
states in In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989) that “claims must be interpreted as broadly as their terms reasonably
allow.” Our reviewing court further states that "the words of a claim 'are
generally given their ordinary and customary meaning.'" Phillips v. AWH
Corp., 415 F.3d 1303, 1312, 75 USPQ2d 1321, 1326 (Fed. Cir. 2005)
(en banc) (internal citations omitted). The "ordinary and customary meaning
of a claim term is the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the invention, i.e., as of the
effective filing date of the patent application." Id. at 1313, 75 USPQ2d at
1326.
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Upon our review of Appellants’ Specification, we find no express
definition of the term “power monitor.” Nor do we find any implicit
definition that is different from its ordinary and customary meaning. We
find the ordinary meaning of the term “monitor” is best found in the
dictionary. We note that a representative definition for “monitor” is “a
device for recording and controlling a process or activity”.4 Giving the term
“power monitor” its ordinary and customary meaning in the relevant art, we
find that representative claim 1 requires a device for recording or controlling
the power of a signal.
B. 35 U.S.C. § 102(b) REJECTION
In view of the claim interpretation above, we find that Urino
reasonably teaches the limitation of directing one of the extracted diffraction
orders to a power monitor. As detailed in the Findings of Fact section
above, we have found that Urino teaches a monitoring waveguide that
monitors the diffraction orders of the wavelengths of an input signal.
(Finding of Fact 6.) We find that Urino’s monitoring waveguide, by
monitoring the wavelengths of signals, monitors (controls or records) the
power of such signals. Alternatively, we find that Urino’s disclosure of a
photodetection array teaches a device for detecting the power of

4 WEBSTER’S II, New Riverside University Dictionary, 1984, page 765.

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wavelengths.5 (Finding of Fact 7.) We find that the Examiner has provided
ample corroborating evidence to support that a photodetector has the ability
to detect and monitor the power in a wavelength of a signal. Further, we are
not persuaded by Appellants’ argument that a photodetector is not equivalent
to a power monitor. (Reply Br. 2.) Appellants’ submission of alleged
supporting evidence6 in the Reply Brief is deemed to have been untimely
filed. Therefore, we have not considered the submitted evidence in deciding
the current issue before us. See 37 CFR § 41.41(a)(2).
In light of these findings, it is our reasoned conclusion that Urino
teaches the limitation of directing an extracted diffraction order of a signal to
a power monitor. It follows that the Examiner did not err in rejecting
independent claim 1 and claims 2 through 16 grouped therewith by
Appellants, as being anticipated by Urino.
CONCLUSION OF LAW
On the record before us, Appellants have not shown that the Examiner
has failed to establish that Urino anticipates claims 1 through 16 under 35
U.S.C. § 102(b).
DECISION
We have affirmed the Examiner’s decision rejecting claims 1 through
16.

5 Cf. Specification 4: 10-12, describing a detector array 20 that measures
power; instant claim 16, reciting a detector array to detect power.
6 We note in passing that even if the submitted evidence were
considered, Appellants’ arguments would still be unpersuasive. The
submitted evidence provides a definition for “power meter” whereas the
claims at issue call for a “power monitor”. The evidence therefore fails to
establish that a “power meter” is the same as the claimed “power monitor”,
and that said monitor is different from a photodetector.
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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)(1)(iv).

AFFIRMED

pgc

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