Ex Parte Jenkins et al

Board of Patent Appeals and Interferences

Jul 30, 2010

10548665 (B.P.A.I. Jul. 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.
10/548,665 09/09/2005 Richard M Jenkins 124-1133 6496
23117 7590 07/30/2010
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
WONG, TINA MEI SENG
ART UNIT PAPER NUMBER
2874
MAIL DATE DELIVERY MODE
07/30/2010 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 RICHARD M. JENKINS, MARK E. MCNIE,
DAVID J. COMBES, and JAMES MCQUILLAN
_____________

Appeal 2009-011766
Application 10/548,665
Technology Center 2800

____________

Before MARC S. HOFF, CARLA M. KRIVAK,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL1

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 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 2009-011766
Application 10/548,665

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-18, 20, and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
Appellants’ claimed invention is directed to an optical routing device
having a semiconductor substrate (52) with at least one optical input (4), a
plurality of optical outputs (6, 8) and an array of micro-electromechanical
system (MEMS) moveable reflective elements (58). The array of moveable
reflective elements (58) are configured such that light can be selectively
routed from any one optical input (4) to any one of two or more of the
plurality of optical outputs (6, 8). Light selectively routed from any one
optical input to any one of two or more of the plurality of optical outputs (6,
8) is guided within a hollow core waveguide (54). See Abstract; Fig. 2.
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. An in-plane optical routing device comprising:
a semiconductor substrate having at least one optical input,
a plurality of optical outputs, said at least one optical input and said
plurality of optical outputs lie in a single plane; and
an array of micro-electromechanical system (MEMS) moveable
reflective elements, said array of moveable reflective elements being
configurable such that light can be selectively routed from any one optical
input to any one of at least two of said plurality of optical outputs, wherein
light selectively routed from any one optical input to said any one of at least
two of said plurality of optical outputs is guided within a hollow core
waveguide.

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Application 10/548,665

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THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Wan US 6,477,290 B1 Nov. 5, 2002

Huber US 6,839,478 B2 Jan. 4, 2005
(effectively filed
May 1, 2001)
The following rejection is before us for review:
The Examiner rejected claims 1-18, 20, and 21 under 35 U.S.C.
§ 103(a) as being unpatentable over Wan in view of Huber.

ISSUE
The pivotal issue is whether the combination of Wan in view of Huber
teaches “an array of micro-electromechanical system (MEMS) moveable
reflective elements . . . within a hollow core waveguide” as recited in
representative claim 1.

FINDINGS OF FACT (FF)
The following Findings of Fact are supported by a preponderance of
the evidence:
1. Huber expressly teaches that hollow waveguides can carry high
energy signals and reduce losses at interfaces with external fibers and
similar elements (col. 2, ll. 50-55). Huber also discloses that hollow
waveguides can integrate moving or non-moving switching elements
inside them (col. 2, ll. 55-58).
2. Wan teaches an in-plane optical routing device (Fig. 1) having at least
one optical input (12a-d) which can be selectively coupled to any one
of a plurality of optical outputs (13a-d) by using an array of micro-
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Application 10/548,665

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electromechanical system (MEMS) moveable reflective elements to
selectively route from any one optical input to any one of the plurality
outputs (13a-d) (Fig. 1; col. 2, ll. 20-64).

PRINCIPLES OF LAW
It is not necessary that the prior art suggest the combination to achieve
the same advantage or result discovered by applicant. See In re Kahn, 441
F.3d 977, 987 (Fed. Cir. 2006) (motivation question arises in the context of
the general problem confronting the inventor rather than the specific
problem solved by the invention).
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Supreme Court stated that
“‘rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, 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) (quoting Kahn, 441 F.3d
at 988).
The test for obviousness is what the combined teachings of the
references would have suggested to the artisan. Accordingly, one can not
show nonobviousness by attacking references individually where the
rejection is based on a combination of references. In re Keller, 642 F.2d
413, 426 (CCPA 1981).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference …. Rather, the test is what the combined teachings of those
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references would have suggested to those of ordinary skill in the art.” Id. at
425.

ANALYSIS
Appellants first argue that the Examiner has provided no evidence of
the prior art difficulties recognized by Appellants (App. Br. 7). At the outset,
we note that the reason or motivation to modify the reference may often
suggest what the inventor has done, but for a different purpose or to solve a
different problem. See generally MPEP 2144 IV. Accordingly, we are not
persuaded by Appellants’ argument that the Examiner has provided no
evidence of the prior art difficulties recognized by Appellants (App. Br. 7)
because the motivation to combine the references may stem from a different
purpose or to solve a different problem. See Kahn, 441 F.3d at 987.
Appellants also argue that Wan’s optical light beam is reflected to only
a single optical output and not to “one of two of the plurality of optical
outputs” (App. Br. 8). Appellants further argue that the Examiner’s
articulated rationale is conclusory (App. Br. 9-10).
The Examiner articulated two reasons as to why a skilled artisan
would be motivated to use hollow waveguides as taught by Huber (Ans. 3-
4). In particular, the Examiner finds that Huber expressly teaches that
hollow waveguides can carry high energy signals and reduce losses at
interfaces with external fibers and similar elements, and also that hollow
waveguides can integrate moving or non-moving switching elements inside
them (FF 1).
Wan teaches an in-plane optical routing device having at least one
optical input (12a-d) which can be selectively coupled to any one of a
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6
plurality of optical outputs (13a-d) by using an array of micro-
electromechanical system (MEMS) moveable reflective elements to
selectively route from any one optical input to any one of the plurality of
outputs (13a-d), thereby meeting the claim limitation of “one of at least two
of said plurality of optical outputs” (FF 2). Thus, we are not persuaded by
Appellants’ argument that Wan’s optical light beam is reflected to only a
single optical output and not to “one of two of the plurality of optical
outputs” (App. Br. 8) because Wan’s MEMS can selectively route one
optical input to any one of the four plurality of outputs 13a-d thereby
including routing to any one of two of those outputs.
Furthermore, the Examiner’s articulated rationale (Ans. 2-3) for
modifying Wan with Huber’s teaching (FF1), including the MEMS inside
the hollow waveguide and reducing signal losses at interfaces to increase
efficiency, supports the legal conclusion of obviousness. See KSR, 550 U.S.
at 418.
We are also not persuaded by Appellants’ arguments that Wan’s
MEMS are in a free-space environment and not “within a hollow core
waveguide” as claimed (App. Br. 8) and that both references teach away
from the combination (App. Br. 10-13). One cannot show nonobviousness
by attacking references individually (i.e., Wan not teaching the MEMS being
integrated in a hollow waveguide) where the rejection is based on a
combination of references (i.e., Huber teaching moving switching elements
integrated inside waveguides). See Keller, 642 F.2d at 426. Furthermore,
the test for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary reference but
rather what the combined teachings of those references would have
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suggested to those of ordinary skill in the art (i.e., hollow waveguides for
integrating MEMS and replacing the optical fibers (12a-d and 13a-d)
resulting in reduction of signal loss (FF 1)). Id. at 425.
Accordingly, we will affirm the Examiner’s rejection of claim 1, and
for similar reasons the rejections of claims 2-18, 20, and 21.

CONCLUSION
The combination of Wan in view of Huber teaches “an array of micro-
electromechanical system (MEMS) moveable reflective elements . . . within
a hollow core waveguide.”

ORDER
The decision of the Examiner to reject claims 1-18, 20, and 21 is
affirmed.
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

ELD

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