Ex Parte Odhner et al

Board of Patent Appeals and Interferences

Apr 13, 2009

09836685 (B.P.A.I. Apr. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFERSON E. ODHNER,
ELLIOTT S. LUCKOFF,
DONALD L. CULLEN, and
KEN G. WASSON
____________

Appeal 2009-0194
Application 09/836,685
Technology Center 2800
____________

Decided:1 April 13, 2009
____________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0194
Application 09/836,685

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 3, 17, and 32. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM for the reasons expressed in the Answer and below.
STATEMENT OF THE CASE
Appellants claim a method and system for treating optical signals
wherein a rotatable diffractive optical element (RDOE) 12 having a
holographic diffraction grating is positioned (i.e., rotated) to intercept input
optical signals from a source 10 for generating output optical signals 20, 22
and distributing any output optical signals to any output optical stations 14,
16, 18 (claim 17; Figs. 1-2).
Representative independent claim 17 reads as follows:
17. A system for treating optical signals from a source thereof, which
comprises:

a source, a rotatable diffractive optical element (RDOE), and output
station(s), wherein

(a) said source carries input optical signal(s), each of said signal(s)
being associated with a particular wavelength;

(b) said rotatable diffractive optical element (RDOE) has a surface
carrying a holographic diffraction grating including an array of
superimposed facets, each of said facets carrying a diffraction grating(s)
which are superimposed, each diffraction grating being angularly offset with
respect to each other, said RDOE being positioned to intercept said input
optical signal(s) for generating output optical signal(s) and distributing any
said output optical signal(s), to any said output optical station(s) and;

(c) said output station(s) being positioned to receive said output
optical signal(s) from said RDOE.

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The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Mey US 5,608,278 Mar. 4, 1997
Doggett US 4,528,448 Jul. 9, 1985
Asakura US 5,450,512 Sep. 12, 1995

The Examiner rejects independent claims 1, 17, and 32 under
35 U.S.C. § 103(a) as being unpatentable over Asakura in view of Doggett
and correspondingly rejects dependent claim 3 over these references and
further in view of Mey.
ISSUES
Have Appellants shown error in the Examiner's legal determination
that the claim 17 function "distributing any said output optical signal(s), to
any said output optical station(s)" encompasses (and therefore is satisfied
by) the distributing capability of Asakura's system?
Have Appellants shown error in the Examiner's conclusion that it
would have been obvious "to have the rotatable diffractive optical element
of the system and method of Asakura further be holographic and include an
array of superimposed facets, each of the facets carrying a diffraction
grating(s) which are superimposed, each diffraction grating being angularly
offset with respect to each other, as taught by Doggett, for the purpose of
increasing the duty cycle and multiplexing and demultiplexing capability of
the system, since a large number of input signals may be input and
multiplexed/demultiplexed by the diffraction gratings, while preventing
degradation of the diffracted output signals" (Ans. 4)?
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Application 09/836,685

FINDINGS OF FACT
The Examiner makes the findings set forth below regarding Asakura:
Asakura discloses a system and method for
treating optical signals from a source (See for
example Figures 7-8), comprising a source
(inherently, a source of light is required to generate
the signals having wavelengths of λ1, λ2, λ3, λ4), a
rotatable diffractive optical element (See 92 in Figure
8, col. 4, line 57-col. 5, line 2), and output stations
(See 98, 99 in Figure 8), wherein the source carries
input optical signals (See 90 in Figure 8), each of said
signals being associated with a particular wavelength,
the rotatable diffractive optical element (See 92 in
Figure 8; col. 4, line 57-col. 5, line 2) has a surface
(i.e., a signal facet) carrying a diffraction grating and
positioned to intercept said input optical signals for
generating output optical signals and distributing any
optical signals to any output station (See col. 1,
line[s] 30-54; col. 2, line 40-col. 3, line 18); and the
output stations positioned to receive said output
optical signals from the rotatable diffractive optical
element (See 98, 99 in Figure 8).

(Ans. 3).
Appellants make a similar finding regarding Asakura:
Asakura discloses an improved optical tap for use in
wavelength division multiplexing applications where
multi-channel signals are transmitted over a single
fiber. An optical tap acts somewhat as a filter to
select, or pick off, a particular signal with all other
signals being passed. An input fiber is provided
which carries a signal composed of a plurality
wavelengths. That signal is dispersed by a diffraction

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Application 09/836,685

grating, each wavelength being dispersed at a
different angle. The desired wavelength then is
directed to a first output fiber. All remaining
wavelengths are directed to a second output fiber.

(Br. 11).

Appellants contend that "Asakura does not teach rotating a diffractive
element to distribute any output optical signal to any output station as
required by the claims" (Br. 13). However, this contention is based on
disagreement between Appellants and the Examiner as to whether the
function "distributing any said output optical signal(s), to any said output
optical station(s)" of system claim 17 encompasses (and therefore is satisfied
by) the distributing capability of Asakura's system.
The Examiner acknowledges that "Asakura lacks the rotatable
diffractive optical element being holographic . . . " (Ans., sentence bridging
3-4) as required by the appealed claims but finds that Doggett evinces that
such holographic diffractive elements and their attendant advantages are
known in this art (Ans. 4).
Appellants do not dispute the Examiner's finding regarding Doggett
and indeed admit that "[s]uch holographic elements are well-known in the
art" (Br. 14, first full para.).
PRINCIPLES OF LAW
During examination, a claim should be given its broadest reasonable
interpretation consistent with the specification and should be read in light of
the specification as it would be interpreted by a person of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
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Limitations are not to be read into the claims from the specification.
In re Van Geuns, 988 F.2d 1181, 1184-85 (Fed. Cir. 1993).
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007). The question to
be asked is whether the improvement is more than the predictable use of
prior art elements according to their established functions. Id. at 1740.
ANALYSIS
Appellants do not separately argue any of the rejected claims
including separately rejected claim 3 (Br. 14-16). Accordingly, we select
independent system claim 17 as representative of the claims rejected over
Asakura and Doggett, see 37 C.F.R. § 41.37(c)(1)(vii)(2007), with the
rejection of claim 3, additionally relying upon Mey as evidence of
obviousness, standing or falling on the basis of our decision as to claim 17.
As previously indicated, Appellants contend that "Asakura does not
teach rotating a diffractive element to distribute any output optical signal to
any output station as required by the claims" (Br. 13). This quoted position
regarding Asakura forms the basis for Appellants' ultimate position that
"creating output optical signals from the input signals and distributing any
output optical signal to any output station is not taught or suggested by the
combination [of Asakura and Doggett]" (Br. 16, first full sentence). For the
reasons stated in the Answer and below, Appellants' contention does not
persuade us of error in the Examiner's determination that the claim 17
function "distributing any said output optical signal(s), to any said output
optical station(s)" encompasses the distributing capability of Asakura's
system.
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In this latter regard, we emphasize the agreement between Appellants
and the Examiner that Asakura discloses distributing a desired wavelength to
a first output fiber (i.e., station) with all remaining wavelengths being
distributed to a second output fiber (i.e., station). This disclosure is
exemplified by the embodiment shown in Figure 8 (as well as in Figs. 6-7)
of Asakura wherein appropriate rotation of diffraction grating 92 distributes
a desired wavelength such as λ2 to output fiber 98 with the remaining
wavelengths such as λ1, λ3, and λ4 being distributed to output fiber 99 (col. 4,
l. 10-col. 5, l. 2, especially the sentence bridging cols. 4-5). The so-
disclosed distributing capability of Asakura's Figure 8 embodiment is
encompassed by (and therefore satisfies) the system claim 17 function under
consideration.
This is most clearly revealed by the circumstance wherein Asakura's
Figure 8 system processes input optical signals consisting of only two
wavelengths λ1 and λ2 (i.e., rather than the four wavelengths λ1-4 illustrated
in Figure 8). In this circumstance, appropriate rotation of diffraction grating
92 renders the Figure 8 system capable of distributing either wavelength λ1
or wavelength λ2 to output fiber 98 with the remaining wavelength being
distributed to output fiber 99. The system claim 17 function "distributing
any output optical signal(s), to any said output optical station(s)" appears to
indisputably encompass this two-wavelengths distributing capability of
Asakura's Figure 8 system.
We acknowledge Appellants' statement that, "[u]nlike Asakura, the
present invention is concerned with more than just picking off a single signal
[and addresses] more complex systems than that presented in Asakura" (Br.
12). However, this statement and the contention discussed above indicate
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that Appellants are inappropriately reading limitations into the appealed
claims from their specification. As revealed by the previously mentioned
two-wavelengths example applied to Asakura's Figure 8 system, appealed
claim 17 encompasses the distributing capability of this prior art system and
therefore is not limited to "more complex systems than that presented in
Asakura" (Br. 12).
For these reasons and the reasons expressed in the Answer, we are
convinced that the Examiner has properly given to claim 17 its broadest
reasonable interpretation consistent with the Specification as it would be
interpreted by a person of ordinary skill in this art.
Appellants also argue that "there is simply no suggestion or
motivation to combine . . . [the Asakura and Doggett] references" (Br. 14).
This argument does not show error in the Examiner's obviousness
conclusion for the reasons discussed below and given in the Answer.
In an attempt to reinforce this argument, Appellants state that the
Examiner's proposed combination of Asakura and Doggett would yield "[n]o
change in function or result" (Br. 15). In our view, Appellants' statement
militates against their argument and militates for the Examiner's obviousness
conclusion. This is because the statement reveals that the Examiner's
proposed combination of the familiar prior art elements taught by Asakura
and Doggett does no more than yield predictable results. In this regard, we
remind Appellants of the established legal principle that the combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.
Under these circumstances, Appellants have failed to reveal error in
the Examiner's obviousness conclusion.
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CONCLUSIONS OF LAW
Appellants have not shown error in the Examiner's legal determination
that the claim 17 function "distributing any said output optical signal(s), to
any said output optical station(s)" encompasses (and therefore is satisfied
by) the distributing capability of Asakura's system.
Appellants have not shown error in the Examiner's conclusion that it
would have been obvious "to have the rotatable diffractive optical element
of the system and method of Asakura further be holographic and include an
array of superimposed facets, each of the facets carrying a diffraction
grating(s) which are superimposed, each diffraction grating being angularly
offset with respect to each other, as taught by Doggett, for the purpose of
increasing the duty cycle and multiplexing and demultiplexing capability of
the system, since a large number of input signals may be input and
multiplexed/demultiplexed by the diffraction gratings, while preventing
degradation of the diffracted output signals" (Ans. 4).
As a consequence, we sustain the Examiner's § 103 rejections of
independent claims 1, 17, and 32 over Asakura in view of Doggett and of
dependent claim 3 over Asakura, Doggett, and Mey.
ORDER
The decision of the Examiner 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)(v)(2008).
AFFIRMED

cam
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DIANE E. BURKE
MUELLER AND SMITH, LPA
MUELLER-SMITH BLDG.
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