Ex Parte Stone

Board of Patent Appeals and Interferences

Nov 3, 2009

10700828 (B.P.A.I. Nov. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte THOMAS W. STONE
________________

Appeal 2009-003,186
Application 10/700,828
Technology Center 2600
________________

Decided: November 3, 2009
________________

Before ROBERT E. NAPPI, MARC S. HOFF, and
KARL EASTHOM, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-003,186
Application 10/700,828

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-5 and 7-17.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed to an optical switching/routing system that
uses routing components and selectable switching in order to overcome
problems associated with current optical switching systems. See Spec. 1-6.
Claim 1 is representative of the invention and reproduced below:
1. A method for optically switching/routing comprising the
steps of:
separating input optical radiation into distinct input
channels;
selecting desired distinct output channels;
propagating said distinct input channels through a selectable
grating based switching/routing sub-system, the selectable
grating based switching/routing sub-system comprising at least
one pixellated switchable component, in order to direct said
distinct input channels to desired distinct output channels;
recombining said desired distinct output channels.

REFERENCES
Doerr US 6,956,987 B2 Oct. 18, 2005
(filed Aug. 26, 2004)

1 Claim 6 was cancelled in an Amendment after Non-Final, filed January
17, 2007. Claim 18 was cancelled in an Amendment after Final filed June
18, 2007. Claims 19-21 were indicated as allowable in the Final Rejection
mailed April 18, 2007.
2
Appeal 2009-003,186
Application 10/700,828

Volodin US 7,031,573 B2 April 18, 2006
(filed Jul. 1, 2005)

REJECTIONS AT ISSUE
The Examiner rejected claims 1-5 and 7-17 under 35 U.S.C. § 103(a)
as being unpatentable over Doerr in view of Volodin. Ans. 3-6.

ISSUE
Rejection of claims 1-5 and 7-17 under 35 U.S.C. § 103(a) as being
unpatentable over Doerr in view of Volodin

Appellant argues on pages 9-34 of the Appeal Brief that the
Examiner’s rejection of claims 1-5 and 7-17 is in error. Appellant argues
that there is no motivation to combine Doerr with Volodin. App. Br. 9-34.
Thus, with respect to claims 1-5 and 7-17, Appellant’s contentions
provide us with the issue: Has Appellant shown that the Examiner erred in
combining Doerr with Volodin?

FINDINGS OF FACT (FF)
Doerr
1. Doerr discloses a method and apparatus wherein optical signals are
selectively blocked or passed by selectively positioning an opaque
or reflective shutter in or out of the light path. Col. 2, ll. 25-28.
2. The opaque shutters can also be replaced by mirrors as embodied
in a micromachine mirror array 750. Col. 5, ll. 1-11 and Fig. 7.
3
Appeal 2009-003,186
Application 10/700,828

Volodin
3. Volodin discloses a free-space optical add-drop multiplexer
(OADM) 1000 that includes a transmissive volume Bragg grating
(VBG) element. Col. 2, ll. 37-39, col. 8, ll. 61-67, and Fig. 10.
4. The VBG element reflects, i.e., routes, light having a particular
wavelength to an optical receiver (fiber) and is transparent to light
with other wavelengths which allows the light to be routed to a
different optical receiver (fiber). Col. 8, l. 66 through col. 9, l. 21.

PRINCIPLES OF LAW

On the issue of obviousness, the Supreme Court has stated that “[t]he
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., 550 U.S. 398, 416 (2007).
“[W]hen the question is whether a patent claiming the combination of
elements of prior art is obvious,” the answer depends on “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417.

The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellant has the burden of presenting a rebuttal to the
prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellant has the burden, on appeal to the Board, to demonstrate error in the
Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006).
4
Appeal 2009-003,186
Application 10/700,828

ANALYSIS
Rejection of claims 1-5 and 7-17 under 35 U.S.C. § 103(a) as being
unpatentable over Doerr in view of Volodin

Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 1-5 and 7-17. Appellant argues that there is
no motivation to combine Doerr with Volodin because the Examiner’s
motivation to combine the references is nothing more than an unsupported
statement. App. Br. 14. However, as stated by the Supreme Court, a
motivation to combine the references is seen as “helpful insight,” KSR, 550
U.S. at 418, but is not required as long as the combination of the elements of
the references yield predictable results. Id. at 416-419.
Doerr discloses a planar lightwave wavelength blocker that uses
micromachine mirror arrays to route multi-wavelength optical signals. FF 1-
2. Volodin discloses a volume Bragg grating (VBG) that is used to reflect,
i.e., or route, a particular wavelength of light to one optical receiver and be
transparent to other wavelengths of light in order to route the light to a
different optical receiver. FF 3-4. Both devices thus route wavelengths of
light; Doerr’s device uses mirrors, and Volodin’s device uses a grating.
Therefore, we consider using Volodin’s VGB element in place of Doerr’s
micro-machine mirror array as nothing more than using a known device to
perform its known function of routing light signals. As such, we find that
the combination of Doerr with Volodin yields the predictable result of the
different wavelengths of light being routed to different optical receivers and
we are not persuaded by Appellant’s arguments.
Further, even if a motivation identified by the references were
required, the Examiner has provided a motivation to combine the references.
5
Appeal 2009-003,186
Application 10/700,828

Ans. 4. The Examiner stated that the combination of Doerr with Volodin
would “provide optical transparency for a wide range of wavelengths,
provide excellent longevity, outstanding thermal stability, good dynamic
range, excellent optical quality, low cost, a variety of shapes, and refractive
index isotropy.” Ans. 4 (quoting Volodin col. 4, ll. 59-67). Appellant
argues that the Examiner’s motivation is an unsupported statement based on
hindsight and Examiner’s own personal opinion and is not found within any
of the references. App. Br. 14-15. However, the Examiner has pointed to a
specific portion of the Volodin reference where the motivation to combine
the references is found. Ans. 4. Therefore, we find that the Examiner has
established a prima facie case of obviousness. The burden shifts to
Appellant to rebut the prima facie case of obviousness by demonstrating
error. In re Oetiker, 977 F.2d at 1445; In re Kahn, 441 F.3d at 985-86.
Appellant does not provide any further evidence to prove that the
Examiner’s motivation to combine the references is in error. As a result,
Appellant’s arguments are not found to be persuasive.
As such, for the reasons stated above, we sustain the Examiner’s
rejection of claims 1-5 and 7-17.

CONCLUSIONS OF LAW
Appellant has not shown that the Examiner erred in combining Doerr
with Volodin.
SUMMARY
The Examiner’s rejection of claims 1-5 and 7-17 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).
6
Appeal 2009-003,186
Application 10/700,828

AFFIRMED

ELD

KATHY MANKE
AVAGO TECHNOLOGIES LIMITED
4380 ZIEGLER ROAD
FORT COLLINS, CO 80525

7