Ex Parte Mikes et al

Board of Patent Appeals and Interferences

Feb 1, 2007

10685270 (B.P.A.I. Feb. 1, 2007)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex Parte THOMAS L. MIKES and LIAN XING
_______________

Appeal No. 2006- 2172
Application No. 10/685,270
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ON BRIEF
_______________

Before RUGGIERO, BARRY, and HOMERE, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal from the final rejection of claims 1-9, which are all of
the claims pending in this application.
The claimed invention relates to the multiplexing or demultiplexing of optical signals
in which an optical fiber interface is coupled to a concentric spectrometer. According to
Appellants (specification, pages 2 and 3), the use of a concentric speedometer subjects the
optical signals to a relatively low amount of optical aberration which aids in the reduction of
the spreading of the channels within an optical network.

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Claim 1 is illustrative of the invention and reads as follows:
1. A system for multiplexing or demultiplexing optical signals, comprising:
an optical fiber interface; and
a concentric spectrometer coupled to the optical fiber interface.
The Examiner relies on the following prior art:
Dragone et al. (Dragone) 6,263,127 Jul. 17, 2001
Xiang et al. (Xiang) 6,266,140 Jul. 24, 2001

Claims 1-9, all of the appealed claims, stand finally rejected under 35 U.S.C. § 103(a)
as being unpatentable over Dragone in view of Xiang.
Rather than reiterate the arguments of Appellants and the Examiner, reference is
made to the Briefs1 and Answer for the respective details.
OPINION
We have carefully considered the subject matter on appeal, the rejection advanced by
the Examiner and the evidence of obviousness relied upon by the Examiner as support for the
rejection. We have, likewise, reviewed and taken into consideration, in reaching our
decision, Appellants’ arguments set forth in the Briefs along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth in the Examiner’s Answer.

1 The Appeal Brief was filed November 28, 2005. In response to the Examiner’s
Answer mailed February 22, 2006, a Reply Brief was filed April 18, 2006, which was
acknowledged and entered by the Examiner as indicated in the communication dated May
15, 2006.
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It is our view, after consideration of the record before us, that the evidence relied
upon and the level of skill in the particular art would not have suggested to one of ordinary
skill in the art the invention as set forth in claims 1-9. Accordingly, we reverse.
We also use our authority under 37 CFR § 41.50(b) to enter a new ground of rejection
of claims 6 and 7. The basis for these conclusions will be set forth in detail below.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to
establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner is
expected to make the factual determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966). The Examiner must articulate reasons for the Examiner’s
decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002). The
Examiner cannot simply reach conclusions based on the examiner’s own understanding or
experience – or on his or her assessment of what would be basic knowledge or common
sense. Rather, the Examiner must point to some concrete evidence in the record in support of
these findings. In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001).
Thus the Examiner must not only assure that the requisite findings are made, based on
evidence of record, but must also explain the reasoning by which the findings are deemed to
support the Examiner’s conclusion. These showings by the Examiner are an essential part of
complying with the burden of presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is
met, the burden then shifts to the applicant to overcome the prima facie case with argument
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and/or evidence. Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA
1976).
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of appealed independent
claims 1, 6, and 8 based on the combination of Dragone and Xiang, Appellants assert (Brief,
pages 5-9; Reply Brief, pages 2-5) that the Examiner has failed to set forth a prima facie case
of obviousness since proper motivation for the proposed combination of references has not
been established. After reviewing the arguments of record from Appellants and the
Examiner, we are in general agreement with Appellants’ position as stated in the Briefs.
The Examiner proposes (Answer, pages 3 and 4) to modify the device of Dragone by
substituting the diffraction grating concentric spectrometer structure taught by Xiang for the
diffraction grating spectrometer structure disclosed by Dragone. In our view, however, the
system described by Xiang has little relevance to the optical data transmission system of
Dragone and, at best, provides only a disclosure that concentric spectrometers may be known
in the art. The mere fact that the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-
84 (Fed. Cir. 1992).

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Our review of the disclosure of Xiang reveals that, while Xiang may use a concentric
spectrometer, the disclosure of Xiang is directed to the dispersing of spectra from an image
of a scene. The problem addressed by Xiang, however, i.e., the need to prevent the
overlapping of adjacent spectral images, referred to by Xiang as a “keystoning” effect
resulting in a loss of resolution, does not exist in the optical communication system of
Dragone. While the Examiner attempts (Answer, page 4) to equate the “crosstalk” reduction
problem addressed by Dragone with the “keystoning” problem addressed by Xiang, we find
no evidence forthcoming from the Examiner that would support the conclusion that the
ordinarily skilled artisan would recognize and appreciate the correspondence between
“crosstalk” reduction and “keystoning effect” reduction.
The Examiner must not only make requisite findings, based on the evidence of
record, but must also explain the reasoning by which the findings are deemed to support the
asserted conclusion. See In re Lee, 277 F.3d at 1344, 61 USPQ2d at 1434. In our view,
given the disparity of problems addressed by the applied prior art references, and the
differing solutions proposed by them, any attempt to combine them in the manner proposed
by the Examiner could only come from Appellants’ own disclosure and not from any
teaching or suggestion in the references themselves.
In view of the above discussion, since we are of the opinion that the proposed
combination of the Dragone and Xiang references set forth by the Examiner does not support
the obviousness rejection, we do not sustain the rejection of independent claims 1, 6, and 8,
nor of claims 2-5, 7, and 9 dependent thereon.
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Rejection under 37 CFR § 41.50(b)

We make the following new ground of rejection using our authority under 37 CFR
§ 41.50(b). Claims 6 and 7 are rejected under 35 U.S.C. § 102(b) as being anticipated by
Xiang. Xiang discloses the demultiplexing of optical signals in which a concentric
spectrometer 110 including an aberration-corrected diffraction grating 100 receives a multi-
wavelength optical signal (12, 20, 30, Figure 5). This multi-wavelength optical signal is
separated into its constituent parts using the concentric spectrometer 110 (Xiang, column 3,
lines 15-33) with the dispersed spectra signals being applied to CCD detector 50.
We further note that, although the Xiang reference has been applied only against
appealed claims 6 and 7, this is not to be taken as an indication of the patentability of claims
1-5, 8, and 9. In any resumption of the prosecution of this application before the Examiner,
the Examiner should consider the applicability of the applied prior art as well as the other
prior art of record and any other discovered prior art, to claims 1-5, 8, and 9.

CONCLUSION
The Examiner’s rejection of claims 1-9 under 35 U.S.C. § 103(a) is reversed. A new
rejection of claims 6 and 7 under 35 U.S.C. § 102(b) is set forth herein.
This decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat.
Office 21 (September 7, 2004)). 37 CFR § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
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37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims so
rejected or new evidence relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which event the proceeding will
be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard under § 41.52
by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a). See 37 CFR § 1.136(a)(1)(iv).
REVERSED – 37 CFR § 41.50(b)

JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEAN R. HOMERE )
Administrative Patent Judge )

AGILENT TECHNOLOGIES, INC.
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Application No. 10/685,270

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