Ex Parte LIDownload PDFBoard of Patent Appeals and InterferencesApr 30, 201211475375 (B.P.A.I. Apr. 30, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte KENNETH K. LI ____________________ Appeal 2010-003117 Application 11/475,375 Technology Center 2800 ____________________ Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and JUSTIN T. ARBES, Administrative Patent Judges. ARBES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003117 Application 11/475,375 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 1-9, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 We affirm. The claims are directed to a waveguide. Claims 1 and 9 are representative: 1. A waveguide comprising: first, second and third waveguide sections; and a light coupling element between the waveguide sections; an air gap or low index epoxy between said light coupling element and the waveguide sections; the waveguide sections each having an entrance aperture, an exit aperture and at least first and second waveguide walls defining a light guide direction; the light coupling element being composed of an optically transparent material having at least one entrance face with a TIR surface, an exit face with a TIR surface, and a reflecting face; the light coupling element also having an internal polarizing surface for reflecting light of a predetermined polarization state. 9. The waveguide of claim 1, where one of the waveguide guide sections is a triangular prism. 1 Our decision will make reference to Appellant‟s Appeal Brief (“App. Br.,” filed April 13, 2009, and supplemented May 21, 2009), and the Examiner‟s Answer (“Ans.,” mailed September 17, 2009) and Final Rejection (“Final Rej.,” mailed November 12, 2008). Appeal 2010-003117 Application 11/475,375 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Teng Janssen US 6,411,749 B2 US 7,006,735 B2 June 25, 2002 Feb. 28, 2006 REJECTIONS Claims 1-9 stand rejected under 35 U.S.C § 102(e) as being anticipated by Janssen. Ans. 8-9. Claim 9 stands rejected under 35 U.S.C § 112, second paragraph, as failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. Ans. 5-6. Claims 1, 3, 4, 6, and 9 stand rejected under 35 U.S.C § 102(e) as being anticipated by Teng. Ans. 7-8. Claims 2, 5, 7, and 8 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Teng. Ans. 9-11. 2 2 The Examiner has also withdrawn the previously submitted double patenting rejection and objected to Appellant‟s priority claim, and did not separately address the objections to the Specification and Drawings in the Examiner‟s Answer. See Ans. 2-5; Final Rej. 5-8. To the extent the objections turn on the same issues as the rejection under 35 U.S.C. § 102(e) based on Janssen and rejection under 35 U.S.C. § 112, second paragraph, our decision with respect to the rejections is dispositive as to the corresponding objections. See Ex Parte Popp, Appeal 2009-009350, 2011 WL 585805, at *4 (BPAI Feb. 17, 2011) (“Ordinarily an objection is reviewable by petition under 37 C.F.R. § 1.181, and a rejection is appealable to the Board of Patent Appeals and Interferences. When the issue of new matter presented is the subject of both an objection and a rejection, the issue is appealable.”) Appeal 2010-003117 Application 11/475,375 4 ISSUES Appellant argues on pages 12-23 of the Appeal Brief that the Examiner‟s rejections of independent claim 1 and dependent claim 9 are in error. These arguments present us with the following issues: (1) did the Examiner err in interpreting the term “waveguide section” in claim 1 to not include the prism disclosed in Appellant‟s Specification, (2) did the Examiner err in finding that Teng discloses a waveguide comprising three “waveguide sections,” a “light coupling element between the waveguide sections,” and an “air gap or low index epoxy between said light coupling element and the waveguide sections,” as recited in claim 1, and (3) did the Examiner err in determining that Teng would have rendered obvious the subject matter of dependent claims 2, 5, 7, and 8? ANALYSIS I. Interpretation of “Waveguide Section” The issue with respect to both the anticipation rejection of claims 1-9 based on Janssen and the indefiniteness rejection of claim 9 is whether the prism disclosed in the Specification may be considered a “waveguide section” given the term‟s broadest reasonable interpretation. If not, claim 9, which recites that “one of the waveguide guide sections is a triangular prism,” is indefinite. Likewise, if the prism is not a “waveguide section,” Appellant is not entitled to earlier priority and Janssen is prior art under 35 U.S.C. § 102(e). We agree with the Examiner that the prism is not a “waveguide section.” As the term “waveguide section” is not explicitly defined in the Specification, the Examiner interpreted the term according to its ordinary Appeal 2010-003117 Application 11/475,375 5 meaning to encompass “any structure having the ability to guide the flow of radiant energy along a path parallel to its axis and to contain the energy within or adjacent to its surface.” Ans. 6, 18. The Examiner cited a technical dictionary (The Photonics Dictionary) definition of “optical waveguide” and the U.S. Patent Classification System as support for this ordinary meaning. Ans. 6, 18-19. Specifically, Class 385 for “Optical Waveguides” includes an element or “grouping thereof which conveys light from one point to another through an optically transparent elongated structure by modal transmission, total internal reflection, or total reflection,” whereas a different class, Class 359 for “Optical: Systems and Elements,” includes prisms. Ans. 18-19 (emphasis added). The Examiner further found that the Specification does not show any intent to use the term “waveguide section” contrary to its ordinary meaning. Ans. 6, 15-18. The Specification describes two “waveguides”: (1) input waveguide 20 through which unpolarized light enters, and (2) output waveguide 50 through which either p-polarized or s-polarized light exits. Spec. ¶¶ 12-13, 16, Figs. 1-4, 6-10. These waveguides “may be, for example, single core optic fibers[,] fused bundles of optic fibers, fiber bundles, solid or hollow square or rectangular light pipes, or homogenizers, which can be tapered or un-tapered.” Spec. ¶ 16. The input and output waveguides, and the specific examples given in the Specification, are consistent with the ordinary meaning above, as they guide light along a path parallel to the axis and contain the light within or adjacent to their surfaces. The Specification describes a prism much differently, however. After describing the input and output waveguides, the Specification walks through every other component of the system, including mirror 60, which is “capable Appeal 2010-003117 Application 11/475,375 6 of reflecting or redirecting light energy.” Spec. ¶ 20, Figs. 1-4, 6-10. And in reference to the embodiments shown in Figures 9 and 10, the Specification states that mirror 60 “may be [a] prism that use[s] the angle of incidence to capture and redirect light energy.” Spec. ¶ 20. Therefore, according to the Examiner, the Specification refers to input and output waveguides (with examples) in one section, and mirrors (or prisms acting as mirrors) separately in a different section. See Ans. 15-18; Spec. ¶¶ 16, 20- 22 (“the prism 60‟ that serves as a mirror”). The Specification never refers to a prism as a “waveguide” or “waveguide section,” and, to the contrary, indicates that the disclosed prism functions like a mirror, not a waveguide. See Ans. 15-18. 3 Finally, the Examiner found the ordinary meaning of “waveguide section” consistent with the remainder of claim 1, which requires that each waveguide section have “an entrance aperture, an exit aperture and at least first and second waveguide walls defining a light guide direction.” Ans. 5 (emphasis added). This light guide direction is the path parallel to the waveguide‟s axis, and the prism disclosed in the Specification does not define a light guide direction in that manner according to the Examiner. Ans. 5. We agree with the Examiner that applying the broadest reasonable interpretation of the claim in light of the Specification, as we must, see In re 3 The functional equivalency of the mirror and prism is further demonstrated by the claims of U.S. Patent No. 6,587,269, which issued from one of Appellant‟s parent applications. Claim 8, for example, recites a “mirror [that] redirects the transmitted light energy by 90° toward the output waveguide,” and claim 9 recites that “the mirror comprises a prism.” Appeal 2010-003117 Application 11/475,375 7 ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007), the term “waveguide section” encompasses “any structure having the ability to guide the flow of radiant energy along a path parallel to its axis and to contain the energy within or adjacent to its surface,” which does not encompass the prism of Appellant‟s Specification. Appellant has not provided any evidence to contradict the ordinary meaning of “waveguide section” from the Examiner‟s technical dictionary and U.S. Patent Classification System definitions, or to indicate that “waveguide” and “prism” are used interchangeably by persons of ordinary skill in the art. Moreover, the specification is “always highly relevant to the claim construction analysis” and is the “single best guide to the meaning of a disputed term.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (citations and quotation marks omitted). The Examiner‟s interpretation is fully consistent with the Specification, and the different uses of the terms “waveguide” and “mirror”/“prism” in the Specification show that Appellant did not intend to deviate from the ordinary meaning of “waveguide section.” See Ans. 6, 18-19; Spec. ¶¶ 12-13, 16, 20-22; Phillips, 415 F.3d at 1316 (“the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess”). The Examiner‟s interpretation is also consistent with the remainder of claim 1. See Phillips, 415 F.3d at 1314 (“the context in which a term is used in the asserted claim can be highly instructive”). Appellant does not propose an alternative interpretation of “waveguide section,” but makes a number of arguments that the particular type of prism disclosed in the Specification is a waveguide section. First, Appellant argues that because claim 1 is directed to a “waveguide,” by Appeal 2010-003117 Application 11/475,375 8 definition all of the components of the apparatus must act as a waveguide and “be able to capture, confine and redirect light by total internal reflection.” App. Br. 13-14. Otherwise, according to Appellant, the collective device is not a “waveguide.” As the Examiner recognized, however, many of the device components described in the Specification (e.g., mirror, air gap, low index epoxy) are not waveguides when considered individually. See Ans. 20-21. Thus, we are not persuaded by this argument. Second, Appellant argues that the Specification shows that the prism is a waveguide section because the prism “capture[s] and redirect[s] light energy,” uses “total internal reflection,” and includes multiple walls in three dimensions. App. Br. 14-16. We are not persuaded by these arguments either because they do not contradict the ordinary understanding of “waveguide section” by a person of ordinary skill in the art or overcome the dichotomy in the Specification between waveguides on one hand and mirrors/prisms on the other. Further, the mere fact that the prism disclosed in the Specification relies on total internal reflection to reflect light does not mean that it guides light along a path parallel to its axis and contains light within or adjacent to its surface, under the Examiner‟s interpretation. See Ans. 6, 15-16. And although Appellant identifies “two of the following: the two triangular faces/surfaces and second rectangular face/surface of the prism 60‟” as the “at least first and second waveguide walls” in claim 1, Appellant does not explain how they define a particular light guide direction, as required by the claim. Third, Appellant cites an inventor declaration making similar points and arguing that air gaps at the rectangular faces and polished surfaces on the triangular faces of the prism promote total internal reflection, guiding Appeal 2010-003117 Application 11/475,375 9 light to the output face. See App. Br., Evidence Appendix, Decl. of Dr. Kenneth K. Li Under 37 C.F.R. § 1.132 ¶¶ 9-12, Diag. B. Having reviewed the record before us, it is clear that the Examiner considered and weighed the declaration in her analysis, but found that it was not supported by the ordinary meaning of “waveguide section” or how the term is used in the Specification. See Ans. 19-20. Because the Examiner‟s interpretation is consistent with the ordinary meaning of the term, the Specification, and the remainder of the claim, while the declaration is not, we cannot say that the Examiner erred in not finding the declaration dispositive. We agree with the Examiner that the broadest reasonable interpretation of “waveguide section” encompasses “any structure having the ability to guide the flow of radiant energy along a path parallel to its axis and to contain the energy within or adjacent to its surface,” which does not include the prism disclosed in the Specification. A. Rejections Under 35 U.S.C. § 102(e) Based on Janssen Turning now to the specific rejections at issue, the Examiner rejected claims 1-9 under 35 U.S.C § 102(e) as being anticipated by Janssen. Ans. 8- 9. Appellant argues that Janssen is not prior art under 35 U.S.C. § 102(e) because the instant application claims priority to U.S. Patent Application No. 09/814,970, filed March 23, 2001 (as well as earlier provisional applications), whereas Janssen‟s filing date is June 4, 2002. App. Br. 21. For the reasons stated above, we agree with the Examiner that the prism disclosed in the Specification cannot be considered a “waveguide section” as recited in claim 1. Appellant‟s earlier applications therefore disclosed only two “waveguide sections” (while the claims first filed in the Appeal 2010-003117 Application 11/475,375 10 instant application recited three “waveguide sections”), and claims 1-9 are only entitled to priority to June 26, 2006, the filing date of the instant application. Janssen therefore is prior art. As Appellant makes no arguments regarding the substantive disclosure of Janssen, we sustain the rejection of claims 1-9 4 under 35 U.S.C. § 102(e). B. Rejection Under 35 U.S.C. § 112, Second Paragraph The Examiner also rejected claim 9 under 35 U.S.C § 112, second paragraph, as failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. Ans. 5-6. Again, we concur with the Examiner. The test for definiteness under 35 U.S.C. § 112, second paragraph, is “whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Claims must “particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2. Claims “not amenable to construction or insolubly ambiguous are indefinite.” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008) (citations and quotation marks omitted). 4 For purposes of examination, the Examiner considered the claimed “waveguide section” in claim 9 to be “either a single core optic fiber, a fused bundle of optical fibers, a fiber bundle, or a solid or hollow square or rectangular light pipe or homogenizer,” in accordance with the Specification. Ans. 6. Appellant does not separately challenge the prior art rejections of claim 9, which is rejected for indefiniteness. Thus, we sustain the prior art rejections as well. Appeal 2010-003117 Application 11/475,375 11 For the reasons stated above, we agree with the Examiner that the “triangular prism” disclosed in the Specification and recited in claim 9 cannot be considered a “waveguide section.” The Specification does not redefine the term “waveguide section” contrary to its ordinary meaning, which does not include the prism. See Ans. 5-6. Accordingly, claim 9‟s requirement that “one of the waveguide guide sections is a triangular prism” is vague and indefinite because one skilled in the art would not understand what is claimed when claim 9 is read in light of the Specification. See Orthokinetics, 806 F.2d at 1576. We therefore sustain the Examiner‟s rejection of claim 9 under 35 U.S.C. § 112, second paragraph. II. 35 U.S.C. § 102(e) Rejections Based on Teng Appellant argues that Teng does not disclose a waveguide comprising three “waveguide sections,” a “light coupling element between the waveguide sections,” and an “air gap or low index epoxy between said light coupling element and the waveguide sections,” as recited in claim 1. App. Br. 18-21. According to Appellant, Teng is not directed to a waveguide at all, but rather to an “inline fiber optic polarization combiner/divider.” App. Br. 18-19 (citing Teng). Appellant further argues that Teng lacks waveguide sections with a light coupling element in between, and an air gap between the light coupling element and waveguide sections, because Teng‟s polarizing beam splitting cube 12 is between lenses 14/16, not waveguide sections. App. Br. 19-20. We agree with the Examiner that Teng discloses a waveguide having the necessary components. See Ans. 24-25. Just as claim 1 recites a waveguide device comprising various component parts (e.g., three Appeal 2010-003117 Application 11/475,375 12 waveguide sections, a light coupling element, and an air gap or low index epoxy), Figure 1 of Teng depicts a waveguide device comprising various parts (e.g., three optical fibers 20/22/24, polarizing beam splitting cube 12, and air gaps). See Teng, col. 2, ll. 59-67. Optical fibers are “waveguide sections,” and a polarizing beam splitter is a “light coupling element,” according to Appellant‟s Specification. See Spec. ¶¶ 11 (“polarizing beam splitter („PBS‟) 30”), 16 (“The input waveguide 20 and the output waveguide 50 may be, for example, single core optic fibers. . . .”), 18 (describing “PBS 30”). And, as shown in Figure 1 of Teng, polarizing beam splitting cube 12 is between optical fibers 20/22/24. The fact that polarizing beam splitting cube 12 is also between collimating lenses 14/16 (in addition to being between optical fibers 20/22/24) does not mean that it is not between the optical fibers, particularly because claim 1 recites a waveguide “comprising” various elements, which does not preclude the presence of additional elements. Appellant also argues that Teng does not disclose a “waveguide which increases the light output by recovering the optical energy of an unused polarization as taught by the present invention.” App. Br. 19-20. As the Examiner pointed out, however, this language does not appear in claim 1. Ans. 23. We are not persuaded that the Examiner erred in finding that Teng discloses a waveguide with all of the components recited in independent claim 1, and therefore sustain the Examiner‟s rejection of claim 1 and corresponding dependent claims 3, 4, 6, and 9, which are not separately argued. Appeal 2010-003117 Application 11/475,375 13 III. 35 U.S.C. § 103(a) Rejections Based on Teng Appellant argues that Teng would not have rendered obvious the subject matter of dependent claims 2, 5, 7, and 8 because Teng is “not directed to the problem solved by the present invention, providing a waveguide which increases the light output by recovering the optical energy of an unused polarization.” App. Br. 22. Rather, according to Appellant, “Teng confronted a totally different problem of reducing the number of collimating lens[es].” App. Br. 22. We do not find this argument persuasive. The claims do not set forth a specific problem to be solved by the invention or exclude solutions to any other problems. Ans. 25-26. Moreover, the Supreme Court in KSR held that, in analyzing obviousness, it is erroneous to “look only to the problem the patentee was trying to solve” or to assume “that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). “Common sense teaches . . . that familiar items may have obvious uses beyond their primary purposes,” and “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. Teng is directed to a waveguide device with a light coupling element and sections to guide light, just as in Appellant‟s claims. We fail to see why one of ordinary skill in the optical arts would ignore the teachings of Teng simply because it also includes lenses or is primarily directed to solving a different problem. Appeal 2010-003117 Application 11/475,375 14 Further, to the extent Appellant‟s argument relates to the sufficiency of the Examiner‟s obviousness determination, we note that the Examiner provided specific reasons for each of the dependent claims 2, 5, 7, and 8 why a person of ordinary skill in the art would have found it obvious to modify or extend the device disclosed in Teng, and Appellant does not challenge these specific reasons. See App. Br. 21-22; Ans. 10-11. The Examiner satisfied the requirement to provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” see KSR, 550 U.S. at 418, and did not err in concluding that Teng would have rendered obvious the subject matter of claims 2, 5, 7, and 8. CONCLUSION Appellant has not persuaded us of error in the Examiner‟s rejections of claims 1-9. DECISION For the above reasons, the Examiner‟s decision to reject claims 1-9 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 Copy with citationCopy as parenthetical citation