Ex Parte Hsieh et al

Board of Patent Appeals and Interferences

Sep 6, 2007

10338465 (B.P.A.I. Sep. 6, 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The opinion in support of the decision being entered today is not binding
precedent of the Board.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
____________

Ex parte YUNG-CHIEH HSIEH and CHIAYU AI
____________

Appeal 2007-1493
Application 10/338,465
Technology Center 2800
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Decided: September 6, 2007
____________

Before JOSEPH F. RUGGIERO, JEAN R. HOMERE, and JOHN A.
JEFFERY, 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 10, 17 and 18. Claims 12 through 16 have
been cancelled. Claims 11, 19 and 20 have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b) to decide this
appeal. We affirm in part.
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Application 10/338,465

Appellants invented a device, a structure and a method for reducing a
phase error resulting from reflections produced by an emergent antireflective
(AR) surface in a mirror arm of an interferometric optical interleaver.
Particularly, the reduction of phase error is achieved by replacing the cavity
in the mirror arm of the interleaver with an optical wedge such that the
emergent AR surface in the interleaver is disposed at a non-zero angle of
incidence to produce an off axis reflected beam. (Specification 12.)

An understanding of the invention can be derived from exemplary
independent claims 1 and 4, which read as follows:
1. A device for reducing a phase error resulting from reflections
produced by an emergent antireflective surface in a mirror arm of an
interferometric optical interleaver, comprising:

an optical wedge including said emergent antireflective surface
disposed at a non-zero angle of incidence with respect to a beam traveling
along an optical axis of said mirror arm; and

a reflective surface disposed at a predetermined distance from said
emergent antireflective surface, said reflective surface being positioned
substantially normal to an incident beam propagated from said emergent
antireflective surface along said optical axis of the mirror arm.

4. A device for reducing a phase error resulting from reflections
produced by antireflective surfaces in a mirror arm of an interfereometric
optical interleaver, comprising:

a first optical wedge with a first antireflective surface disposed at a non-
zero angle of incidence with respect to a beam traveling along an optical axis
of said mirror arm; and

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a second optical wedge with a second antireflective surface and said
reflective surface is disposed at a predetermined optical-path distance from
the first antireflective surface and substantially normal to an incident beam
propagated from said second antireflective surface along said optical axis of
the mirror arm.

In rejecting the claims on appeal, the Examiner relies upon the
following prior art:
Bluege US 4,411,492 Oct. 25, 1983
Monchalin US 4,426,155 Jan. 17, 1984
Wagner US 5,157,458 Oct. 20, 1992
Marron US 5,907,404 May 25, 1999
Scobey US 6,115,401 Sep. 5, 2000

The Examiner rejects the claims on appeal as follows:
A. Claims 1 through 3 and 17 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Marron.
B. Claims 4 through 10 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Marron and Monchalin.
C. Claims 4 through 8 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Wagner and Bluege.
D. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Wagner, Bluege and Scobey.

ISSUES
First, regarding the rejection of claims 1 through 3 and 17, Appellants
contend1 that Marron does not anticipate the cited claims since Marron does

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
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not fairly teach or suggest a device for reducing the phase error produced by
the reflections in the mirror arm of an interleaver. (Br. 21, Reply Br. 7.) In
response, the Examiner contends that the rejection is proper since Marron’s
disclosure of an interferometer teaches the claimed device. (Answer 12-15.)
We affirm this rejection.
Second, Appellants contend that the combination of Marron and
Monchalin does not render claims 4 through 10 and 18 obvious.
Particularly, Appellants contend that the cited combination does not teach or
suggest a device for reducing the phase error produced by the reflections in
the mirror arm of an interleaver. Further, Appellants contend that the
combination fails to teach a second optical wedge with a second anti-
reflective surface and a reflective surface. (Br. 25, Reply Br. 13-14.) In
response, the Examiner contends that the combined teachings of Marron and
Monchalin yield an interferometer with two wedges, and thereby render the
cited claims unpatentable. (Answer 5-8 and 15-16). We reverse this
rejection.
Last, Appellants contend that the combination of Wagner and Bluege
does not render claims 4 through 8 and 18 obvious. Particularly, Appellants
contend that the cited combination does not teach or suggest a device for
reducing the phase error produced by the reflections in the mirror arm of an
interleaver. Further, Appellants contend that the combination fails to teach a
second optical wedge with a second anti-reflective surface and a reflective
surface. (Br. 28-31.) Appellants reiterate these same arguments against the
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).

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rejection of claims 9 through 10 over the combination of Wagner, Bluege
and Scobey. (Br. 32-33.) In response, the Examiner contends that the
combined teachings of Wagner and Bluege yield an interferometer with two
optical wedges, and thereby render the cited claims unpatentable. (Answer
8-11 and 17-22.) We reverse these rejections.

The pivotal issues in the appeal before us are as follows:
(1) Have Appellants shown2 that the Examiner failed to establish that the
disclosure of Marron anticipates the claimed invention under 35 U.S.C.
§ 102(b)? Particularly, does Marron’s disclosed interferometer teach
Appellants’ claimed device [for reducing the phase error resulting from
reflections produced by an AR surface in a mirror arm of an
interferometric optical interleaver]?
(2) Have Appellants shown that the Examiner failed to establish that one of
ordinary skill in the art, at the time of the invention, would have found
that the combined disclosures of Marron and Monchalin render the

2 In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). 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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claimed invention unpatentable under 35 U.S.C. § 103(a)? Particularly,
does the interferometer with the two optical wedges disclosed by the
combined references teach Appellants’ claimed device with the two
optical wedges to include both an AR surface and a reflective surface?
(3) Have Appellants shown that the Examiner failed to establish that one of
ordinary skill in the art, at the time of the invention, would have found
that the combined disclosures of Wagner and Bluege render the claimed
invention unpatentable under 35 U.S.C. § 103(a)? Particularly, does the
interferometer with the two optical wedges disclosed by the combined
references teach Appellants’ claimed device with the two optical
wedges to include both an AR surface and a reflective surface?

FINDINGS OF FACT
The following findings of fact are supported by a preponderance
of the evidence.
The Invention
1. Appellants invented a device for reducing phase error resulting from
reflections produced by an emergent antireflective (AR) surface (46) in a
mirror arm of an interferometric optical interleaver (40). (Specification 19.)
2. As depicted in Figure 7, the reduction of the phase error is achieved
by replacing the cavity in the mirror arm of the interleaver (40) with an
optical wedge (42) such that the emergent AR surface in the interleaver is
disposed at a non-zero angle of incidence to produce an off axis reflected
beam. (Id.)
3. Alternatively, as depicted in Figure 9, the reduction of the phase error
is achieved by replacing the cavity in the mirror arm of the interleaver (50)
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with a first and a second optical wedges (42, 52), each having an AR surface
(46, 54) disposed at a non-zero angle of incidence with respect to an incident
beam, and the first AR surface (46) facing the second AR surface (54). (Id.
21.)
4. The second optical wedge further includes a reflective surface (M2) in
addition to the AR surface (54)). (Id.)
5. Appellants admit that treating the surface of a wedge with AR coating
is a known practice in the art to minimize reflection and to optimize
efficiency of operation. (Id. 19.)
6. Appellants further admit that the claims are not drawn to an
interleaver. Rather they are all drawn to a device (or structure or method)
for reducing phase error in an interleaver (or other optical device.) (Br. 13.)
7. Appellants define phase error as any variation from 180-degrees in the
phase difference between two interfering beams. (Specification 6 and 7.)

The Prior Art Relied upon
8. Appellants admit that Marron anticipates claim 11, (now withdrawn
from consideration). (Reply Br. 4.) That is, Appellants admit that Marron
teaches the following:
11. An optical structure for reducing effects of reflections produced by
an emergent antireflective surface in a mirror arm of a device:

a light beam propagating along an optical axis of said device;

an optical wedge with said emergent antireflective surface disposed at
a non-zero angle of incidence with respect to said light beam; and

a reflective surface disposed at a predetermined optical-path distance
from said emergent antireflective surface;
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wherein said reflective surface is positioned substantially normal to an
incident beam propagated from said emergent antireflective surface along
said optical axis of the device.

9. Marron further teaches the use of a plate (40) that serves as an
attenuator positioned across the wedge-shaped beam splitter (28) for
providing selective attenuation of a reference beam (31) and for reducing
spurious reflection in a device. The attenuator (40) is followed by a
reference mirror (42) positioned away from the attenuator. (Col. 5, ll.
27-42.)
10. Monchalin teaches an apparatus for measuring interferometric
wavelength of tunable lasers.
11. As depicted in Figure 5, Monchalin teaches beam splitters (10’ and
12’) that are dissected into wedge-shaped elements (10a’, 10b’, 12a’ and
12b’) consisting of wedge-shaped beam splitters (10a’ and 12a’) and
compensators (10b’ and 12b’). (Col. 10, ll. 35-40.)
12. The beam splitters (10a’ and 12a’), each having respectively a planar
partially reflective surface (52’ and 56’), and each is provided with a single
partially reflective coating. (Col. 10, ll. 41-48.)
13. Monchalin indicates that because of the single reflective coating used
on the reflective surfaces, no antireflective coating is needed. (Col. 10, ll.
46-56.)
14. Monchalin further teaches the use of compensators (10b’ and 12b’)
with respective surfaces (54b’ and 58b’) associated with the beam splitters
(10a’ and 12a’). That is, the surfaces (54b’ and 58b’) of compensators (10b’
and 12b’) face the surfaces (52a’ and 56a’) of beam splitters (10a’ and 12a’)
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to compensate for prismatic dispersion. (Col. 10, ll. 57-68.)
15. As depicted in Figure 2, Wagner teaches a polarization interferometer
having two complementary wedges (5 and 6) and a mirror (14) located away
from the wedges. (Col. 4, ll. 42-46.)
16. Bluege teaches a beam splitter having two complementary wedges
(102, 104) connected by an antireflective coating. (Col. 2, ll. 10-17.)
17. Scobey teaches an external cavity with a monolithic prism assembly
having two optical wedges (42, 44) separated by an interference filter (38).
(Col. 8, ll. 9-27.)

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
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
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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).

2. OBVIOUSNESS (Prima Facie)
The Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17-18,
148 USPQ 459, 467 (1966), stated that three factual inquiries underpin any
determination of obviousness:
Under § 103, [1] the scope and content of the prior art are to be
determined; [2] differences between the prior art and the claims
at issue are to be ascertained; and [3] the level of ordinary skill
in the pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented. As
indicia of obviousness or nonobviousness, these inquiries may
have relevancy.
Where the claimed subject matter involves more than the simple
substitution one known element for another or the mere application of a
known technique to a piece of prior art ready for the improvement, a holding
of obviousness must be based on “an apparent reason to combine the known
elements in the fashion claimed.” KSR Int’l v. Teleflex, Inc., 127 S. Ct.
1727, 1740-41, 82 USPQ2d 1385, 1396 (2007). That is, “there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” Id., 127 S. Ct. at 1741, 82 USPQ2d at
1396 (quoting In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.
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Cir. 2006)). Such reasoning can be based on interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art. KSR, 127 S. Ct. at 1740-41, 82
USPQ2d at 1396.

ANALYSIS
A. CLAIM INTERPRETATION
We begin our analysis by first determining exactly what the claims
define.” In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970).
“Analysis begins with a key legal question-- what is the invention
claimed?”...Claim interpretation...will normally control the remainder of the
decisional process.” Panduit Corp. v. Dennison Mfg., 810 F.2d 1561, 1567-
68, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987). Hence, we need to first
determine whether the intended use of the claimed device/method (for
reducing phase error resulting from reflections produced by an emergent
antireflective surface in a mirror arm of an interferometric optical
interleaver), as recited in the preamble of independent claims 1, 4, 17 and 18
should be given patentable weight.
The determination of whether preamble recitations are structural
limitations or mere statements of purpose or use “can be resolved only on
review of the entirety of the [record] to gain an understanding of what the
inventors actually invented and intended to encompass by the claim.”
Corning Glass Works, 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed.
Cir. 1989). Here, the record indicates that the inventors intended the cited
claims to be drawn to a device or method for reducing phase error in an
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interleaver or other optical device. (Finding 6.) Therefore, we conclude that
the claimed device or method need not be particularly used in an interleaver.

B. 35 U.S.C. § 102(b) REJECTION
As set forth above, independent claims 1 and 17 require a device or
method for reducing a phase error resulting from reflections produced by an
emergent antireflective surface in a mirror arm of an interferrometric optical
interleaver or another optical device. We find that Marron reasonably
teaches that limitation. As detailed in the Findings of Fact section above, we
found that Marron teaches an interferometer for reducing the effects of
reflections produced by an emergent antireflective surface in a mirror arm of
a device. (Finding 8.) We also found that Marron teaches adjusting an
angle to reduce spurious reflections in the device. (Finding 9.) We note that
Marron’s angle adjustment has the same effects as the claimed reduction in
phase error since they both result in no lead or lag between an object beam
and a reference beam. (Compare Figure 1 of Marron (30, 31) with Figure 8
of the invention ((48, w0, w1 and w2.) Therefore, we conclude that Marron’s
teachings amount to the claimed interferometer for reducing the phase error
resulting from reflections produced by AR surfaces in a mirror arm of an
interferometric device.
Further, the Court of Appeals for the Federal Circuit has determined
that the absence of a disclosure relating to function does not defeat a finding
of anticipation if all the claimed structural limitations are found in the
reference. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431
(Fed. Cir. 1997). In Schreiber, the court held that a funnel-shaped oil
dispenser spout anticipated a claimed conical-shaped popcorn dispensing
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top, even though the function of popcorn dispensing was not taught by the
reference, because the reference met all the structural limitations of the
claim. In re Schreiber, 128 F.3d at 1479, 44 USPQ2d at 1433. In the instant
case, we find that Marron teaches an interferometer or method of using the
interferometer that is equivalent to the device or method called for in claims
1 and 17 respectively. Further, we found and Appellants do not dispute that
Marron teaches all the structural limitations recited in the body of these
claims. In light of these findings, we conclude that Marron teaches the
limitation of a device for reducing the phase error resulting from reflections
produced by an emergent AR surface in a mirror arm of a device. It follows
that the Examiner did not err in rejecting claims 1 through 3 and 17 as being
anticipated by Marron. We affirm this rejection.

C. 35 U.S.C. § 103(a) REJECTION
Now, we turn to the rejection of claims 4 through 10 and 18 as being
unpatentable over the combination of Marron and Monchalin. In addition to
the claimed reduction of a phase error in a device, the cited claims also
require a first and a second optical wedges where the second optical wedge
includes an AR surface and a reflective surface. As set forth in the Findings
of Fact section above, we have found that the combination of Marron and
Monchalin at best discloses the use of two optical wedges in an
interferometer for reducing a phase error in a device. (Findings 9 through
14.) We find, however, that the suggested combination does not reasonably
teach the additional claim limitation noted above. Particularly, the proposed
combination is totally silent on including the mirror as part of the second
optical wedge. We find the integration of the mirror in the second optical
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wedge to be more than a mere design choice, as contended by the Examiner.
Further, it appears that one of ordinary skill in the art would not be
motivated to combine the cited references in light of the fact that Monchalin
explicitly indicates that such AR coating is not needed on surfaces of the
disclosed wedges. (Finding 13.) Thus, even though AR coating is known in
the art to reduce spurious reflection, we find that such application would not
be practical in the Marron-Monchalin combination in light of Monchalin’s
express rejection of such approach.
In light of these findings, it is our view that one of ordinary skill in
the art would not have found it obvious to combine the teachings of Marron
and Monchalin to yield the invention as claimed. It follows that the
Examiner erred in rejecting claims 4 through 10 and 18 as being
unpatentable over the combination of Marron and Monchalin. Therefore, we
reverse this rejection.
Now, we turn to the rejection of claims 4 through 8 and 18 as being
unpatentable over the combination of Wagner and Bluege. We find that the
combination of Wagner and Bluege does not reasonably teach the additional
claim limitation noted above. Similarly to the Marron-Monchalin
combination, Wagner and Bluege fail to teach or suggest including the
mirror as part of the second optical wedge. We also find the integration of
the mirror in the second optical wedge, as claimed, to be more than a mere
design choice, as contended by the Examiner.
In light of these findings, it is our view that one of ordinary skill in
the art would not have found it obvious to combine the teachings of Wagner
and Bluege to yield the invention as claimed. It follows that the Examiner
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erred in rejecting claims 4 through 8 and 18 as being unpatentable over the
combination of Wagner and Bluege. Therefore, we reverse this rejection.
Last, we turn to the rejection of dependent claims 9 and 10 over the
combination of Wagner, Bluege, and Scobey. The Examiner relied upon
Scobey for its teaching of an optical cavity interposed between the two
wedges. (Answer 10.) We find, however, no disclosure in Scobey capable
of curing the deficiencies of the Wagner-Bluege combination, as discussed
in the preceding paragraph. In light of these findings, it is our view that one
of ordinary skill in the art would not have found it obvious to combine the
teachings of Wagner, Bluege, and Scobey to yield the invention as claimed.
It follows that the Examiner erred in rejecting claims 9 and 10 as being
unpatentable over the combination of Wagner, Bluege, and Scobey.
Therefore, we reverse this rejection.

CONCLUSION OF LAW
On the record before us, Appellants have not shown that the Examiner
failed to establish that Marron anticipates claims 1 through 3 and 17 under
35 U.S.C. § 102(b). However, the Examiner failed to establish that claims 4
through 10 and 18 are unpatentable over the combination of Marron and
Monchalin under 35 U.S.C. § 103. Similarly, the Examiner failed to
establish that claims 4 through 8 and 18 are unpatentable over Wagner and
Bluege under 35 U.S.C. §103. Additionally, the Examiner failed to establish
that claims 9 and 10 are unpatentable over the combination of Wagner,
Bluege and Scobey under 35 U.S.C. § 103.

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DECISION
We have affirmed the Examiner’s decision rejecting claims 1 through
3 and 17. We have reversed the Examiner’s decision rejecting claims 4
through 10 and 18.
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-IN-PART

pgc

cc: ANTONIO R. DURANDO
6902 N. TABLE MOUNTAIN ROAD
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