Ex Parte LI

Board of Patent Appeals and Interferences

Apr 30, 2012

11475375 (B.P.A.I. Apr. 30, 2012)

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).
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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.”)
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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
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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
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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.”
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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
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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
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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
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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.
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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
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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.

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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.
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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