Ex Parte 5225925 et al

Board of Patent Appeals and Interferences

Jan 26, 2009

90007524 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SCIENTIFIC-ATLANTA, INC.
____________

Appeal 2008-6176
Reexamination Control 90/007,524
Patent 5,225,925
Technology Center 3900
____________

Decided: January 26, 2009
____________

Before CAROL A. SPIEGEL, ROMULO H. DELMENDO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Scientific-Atlanta, Inc. (hereinafter Appellant) appeals under 35
U.S.C. §§ 134(b) and 306 from a final rejection of claims 1-7, 9-21, 23-26,
30-40, 46-48, 58-62, 68, and 69 (Appeal Brief filed February 5, 2008,
hereinafter “App. Br.,” 1; Final Office Action mailed September 5, 2007;
Examiner’s Answer mailed March 28, 2008, hereinafter “Ans.,” 4). We
have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
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We REVERSE.

STATEMENT OF THE CASE
This reexamination proceeding arose from a request for ex parte
reexamination filed by Scientific-Atlanta, Inc. (Scientific-Atlanta) of
Lawrenceville, Georgia, on April 27, 2005, of United States Patent
5,225,925 (hereinafter the “‘925 Patent”), entitled “SENSITIZED ERBIUM
FIBER OPTICAL AMPLIFIER AND SOURCE” and issued to Stephen G.
Grubbs, Douglas W. Anthon, William I. Barnes, and Janet E. Townsend on
July 6, 1993.1 The ‘925 Patent was involved in a patent infringement action
captioned Scientific-Atlanta, Inc. v. IPG Photonics Corp.,
Case No. 1:05cv10850 (D. Mass., filed April 26, 2005) (Litigation Status
Report entered April 4, 2006). This action was stayed on July 27, 2005
pending this reexamination, but the parties filed a Stipulation of Dismissal
with Prejudice on October 12, 2007 (id.; App. Br. 14). Oral arguments
concerning the present appeal were heard on January 7, 2008.
The invention of the '925 patent relates to a silicic optical fiber for use
in optical amplifiers and sources (independent claims 1, 30, 35, 39, 68, and
69; Specification, hereinafter “Spec.,” col. 3, l. 17 to col. 4, l. 61).
Claim 1, which is illustrative of the claims on appeal, reads as
follows:

1 Scientific-Atlanta is the owner of the entire right, title, and interest in and
to the ‘925 Patent as recorded in Reel 015991, Frame 00215 and Reel
016004, Frame 0887 on April 1, 2005 and April 4, 2005 (Request for Ex
Parte Reexamination filed on April 27, 2005; Patent Assignment Abstract of
Title entered May 16, 2005). We are also told that Scientific-Atlanta is a
subsidiary of Cisco Systems (Letter entered December 30, 2008).
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1. A silicic optical fiber for use in optical amplifiers and
sources, comprising:
a concentration of erbium ions for providing radiation
when the quantum energy level of said erbium ions decays from
4I13/2 metastable state to the 4I15/2 ground level state;
a concentration of ytterbium ions for absorbing radiation
as the quantum energy level of said ytterbium ions is excited
from a thermally excited sub-level of the 2F7/2 state to the 2F5/2
metastable state and for exciting the quantum energy level of
said erbium ions from the 4I15/2 ground level state to the 4I11/2
state when the quantum energy level of said ytterbium ions
decays from the 2F5/2 state back to the 2F7/2 state; and
a concentration of phosphate for reducing the decay time
of the erbium ion quantum energy level from the 4I11/2 state to
the 4I13/2 state to reduce back transfer of energy from said
erbium ions to said ytterbium ions, wherein said phosphate
concentration is in the range of approximately 10 mole percent
to 25 mole percent.
(App. Br. 16, Claims Appendix.)

The Examiner relied upon the following as evidence of
unpatentability:
Snitzer 4,815,079 Mar. 21, 1989
M.E. Fermann, D.C Hanna, S.P. Shepherd, P.J. Suni, and J.E. Townsend,
Efficient Operation of an Yb-Sensitized Er Fibre Laser at 1·56 µm, 24
ELECTRONICS LETTERS, no. 18, 1135-36 (September 1, 1988) (hereinafter
“Fermann”).
S.B. Poole, Fabrication of Al2O3 Co-doped Optical Fibres by a Solution
Technique, 1 OPTICAL COMMUNICATION 433-36 (September 11-15,
1988) (hereinafter “Poole”).
W.L. Barnes, S.B. Poole, J.E. Townsend, L. Reekie, D.J. Taylor, and D.N.
Payne, Er3+–Yb3+ and Er3+ Doped Fiber Lasers, 7 JOURNAL OF
LIGHTWAVE TECHNOLOGY, no. 10, 1461-65 (October 10, 1989)
(hereinafter “Barnes”).
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Martin Emanuel Fermann, Characterisation Techniques for Special Optical
Fibres (September 1988) (Ph.D. thesis, University of Southampton, United
Kingdom) (on file with The British Library, West Yorkshire, United
Kingdom) (hereinafter “Fermann Thesis”).
Stephen Grubb and Doug Anthon, Co-doped Erbium Fibers for Optical
Amplifiers (with attached Figures 1-3 dated “DISCLOSURE REC’D” May
21, 1990 and undated Figure 4) (unpublished internal company document,
Amoco Corporation) (hereinafter “Grubb”).

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows: (i) claims 68 and 69 as unpatentable over Fermann in view of
Barnes, Poole, Fermann Thesis, and Grubb; (ii) claims 1-3, 5, 6, 9-11, 14-21,
23-26, 30-34, 46-48, 58, and 59 as unpatentable over Fermann in view of
Grubb; (iii) claims 12 and 13 as unpatentable over Fermann in view of
Grubb and, in the alternative, further in view of Barnes; (iv) claims 4, 7, and
35-40 as unpatentable over Fermann in view of Grubb and further in view of
Barnes or Snitzer; and (v) claims 60-62 as unpatentable over Fermann in
view of Grubb and further in view of Barnes, Poole, and Fermann Thesis
(Examiner’s Answer mailed March 28, 2008, hereinafter “Ans.,” 5-20).
The Examiner found that Fermann describes “a phosphate- and
aluminum-doped silica based optical fiber for use in a laser, comprising a
concentration of erbium and ytterbium ions which provide and absorb
radiation and decay in the manner set forth in the instant claims to reduce
back transfer of energy from the erbium ions to the ytterbium ions” (Ans. 6).
The Examiner acknowledged, however, that Fermann’s disclosure is limited
to an exemplary phosphate concentration of 5 mole percent whereas
appealed claim 1 recites a phosphate concentration “in the range of
approximately 10 mole percent to 25 mole percent” (Ans. 11-12). To
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account for this difference, the Examiner relied on Grubb, which is said to
teach a phosphate concentration of 14 mole percent for phosphate-doped
silica-based fibers, thus rendering the claimed subject matter obvious (Ans.
12). According to the Examiner, “Patent Owner acquiesced [to the
determination of the Examiner and the Board] that Grubb was prior art to
them [sic]” during the prosecution of Application 07/644,460 (of which the
application that matured into the ‘925 Patent is a continuation-in-part) and
that “[s]ince Grubb was prior art in the parent (07/644,460), it is also prior
art as to the ‘925 [P]atent” (Ans. 21). Specifically, it is the Examiner’s
position that collateral estoppel (as distinguished from res judicata) bars
Patent Owner from now asserting that Grubb is not prior art against the
appealed claims (Ans. 28-29). The Examiner further argues that even if
collateral estoppel does not apply, Patent Owner did not “provide what
mechanisms/safeguards were in place to keep Grubb an ‘internal document’”
(Ans. 24).
Appellant, on the other hand, asserts that without the teachings of
Grubb as prior art, the Examiner’s rejections fail because “there is no basis
for concluding that the invention as claimed would have been obvious” to a
person having ordinary skill in the art (App. Br. 11). According to
Appellant, the Examiner failed to carry the burden of proving unpatentability
because, among other reasons, “there is no basis for asserting that the Patent
Owner is now estopped from challenging the use of the Grubb [r]eference as
prior art based on the earlier Board decision [in Application 07/644,460]”
(App. Br. 5 and 11). In particular, Appellant urges that collateral estoppel is
inapplicable here because: (1) no prior court decision or an inter partes
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adjudication of the prior art status of Grubb has taken place; (2) the
prosecution of 07/644,460 was not litigation; (3) “the status of the Grubb
[r]eference as prior art was not necessary for the resulting decision”; and (4)
the applicants in 07/644,460 had a “statutory right to file continuing
applications and present new evidence of patentability” (Reply Brief filed on
May 22, 2008, hereinafter “Reply Br.,” 10-13).

ISSUES
Thus, the issues arising from the contentions of the Examiner and
Appellant are:
Has Appellant shown that the Examiner reversibly erred by failing to
establish in the first instance that collateral estoppel applies and bars
Appellant from asserting that Grubb is not prior art?
Has Appellant shown that the Examiner reversibly erred in concluding
that Grubb is prior art because Appellant did not identify the mechanisms
and safeguards to maintain Grubb as an internal company document?

FINDINGS OF FACT
1. Fermann describes a silica-based fiber doped with 5 mole
percent Al2O3 and 5 mole percent P2O5 and having Yb and Er
concentrations of approximately 1.7% and 0.080%, respectively
(1135, 2nd col., “Experimental details”).
2. Fermann does not disclose any other amounts for the phosphate
(P2O5).
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3. Grubb is the only document that has been cited to show that a
person having ordinary skill in the art would have been led to
modify Fermann by increasing the amount of phosphate to the
levels recited in the appealed claims (Ans. 5-20).
4. United States Patent and Trademark Office records reveal that
the inventors named in Application 07/644,460 are Stephen G.
Grubb and Douglas W. Anthon.
5. Grubb and Anthon are the named authors of the Grubb
reference.
6. Grubb and Anthon both declare that the Grubb reference was
never published and was used only as an internal document
within Amoco Corporation, the assignee of Application
07/644,460 at the time of its prosecution (DECLARATION
UNDER 37 C.F.R. § 1.132 of Stephen G. Grubb dated April 18,
2007, ¶2; DECLARATION UNDER 37 C.F.R. § 1.132 of
Douglas W. Anthon dated April 18, 2007, ¶2).
7. In Application 07/644,460, the claims were finally rejected
under 35 U.S.C. § 103 as unpatentable over “any one of Grubb,
Hanna and Maker in combination with either the Barnes paper
or the Barnes article and any one of Digonnet, Woodcock 757
and Woodcock 004 as to claims 1 through 6, 9 and 18 through
20 and . . . Snitzer as to all the claims” (Ex parte Grubb,
Appeal No. 93-2951, slip op. 2 (B.P.A.I. August 12, 1993)).
8. Appealed claim 1 in Application 07/644,460 differs
significantly from appealed claim 1 of the present appeal in
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terms of subject matter (Ex parte Grubb, Appeal No. 93-2951,
slip op. 2).
9. With respect to whether the Grubb reference was available as
prior art against the claims of Application 07/644,460, the
Board in Ex parte Grubb included a footnote as follows:
“Since the paper was presented to the PTO as part of the
appellants’ information disclosure statement (Paper No. 3), we
will assume that it is prior art as to them” (Ex parte Grubb,
Appeal No. 93-2951, slip op. 3, n. 1).
10. The Board in Ex parte Grubb affirmed the rejection of all the
claims of Application 07/644,460 (Ex parte Grubb, Appeal No.
93-2951, slip op. 2-7).
11. The Grubb reference was not applied in the same way in
Application 07/644,460 as applied in the present reexamination
Ex parte Grubb, Appeal No. 93-2951, slip op. 2-7).
12. Application 07/644,460 was abandoned in favor of
continuation-in-part Application 07/735,387 filed on July 24,
1991, which matured into the ‘925 Patent.
13. The inventors named in the ‘925 Patent are Stephen G. Grubbs,
Douglas W. Anthon, William I. Barnes, and Janet E. Townsend
(‘925 Patent).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1734 (2007).
Where no facts are in dispute, the question of whether a document is a
printed publication (i.e., prior art) is a legal question that is reviewed de
novo. In re Klopfenstein, 380 F.3d 1345, 1347 (Fed. Cir. 2004).
Collateral estoppel (also called issue preclusion) “precludes
relitigation in a second suit of issues actually litigated and determined in the
first suit.” In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994). This
doctrine applies only if: (1) the issue is identical to one decided in the first
action; (2) the issue was actually litigated in the first action; (3) resolution of
the issue was essential to a final judgment in the first action; and (4) plaintiff
had a full and fair opportunity to litigate the issue in the first action. Id.

ANALYSIS
We agree with Appellant that Examiner’s rejection is not well
founded. Other than reasoning based on the teachings of Grubb, the
Examiner has not offered a different rationale for modifying the phosphate
content in Fermann to arrive at the claimed invention (Facts 1-3). Thus,
unless the Examiner can establish that Grubb is available as prior art, the
rejections fail.
The Examiner’s sole basis for holding that Grubb is prior art is that a
different examiner and the Board assumed that it was prior art in Application
07/644,460 and Patent Owner did not dispute this assumption in that
application (Ans. 21-22; Facts 9 and 10). Then, in a most conclusory
fashion, the Examiner alleged that all four requirements necessary to trigger
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collateral estoppel were satisfied in the facts of the present appeal (Ans. 22).
Conspicuously absent, however, is any detailed analysis or discussion on
how and why each of the four requirements is met.
With respect to the first requirement (identity of issues), the Examiner
failed to explain how the issue in the present case is identical to that in
Application 07/644,460 when Grubb was applied against a claim that was
directed to a completely different invention of a different inventive entity for
a different teaching (Facts 4, 5, 7, 8, 11, and 13). The Examiner also glossed
over the second requirement (“actually litigated” requirement) by failing to
provide a meaningful discussion on how an ex parte administrative
proceeding (in which applicants can continue prosecution in a continuing
application following an adverse decision in a parent application) can and
should be considered litigation in the context of collateral estoppel.2
Turning to the third requirement (“essential to a final judgment”), the
Examiner again did not explain how and why Grubb was necessary to the
judgment of the Board in 07/644,460 when it was only one of several
alternative references (Fact 7). With respect to the fourth requirement (“full
and fair opportunity to litigate”), the Examiner did not explain in any
meaningful way why the Patent Owner could not choose to “to litigate,” if
necessary, the issue of whether Grubb is available as prior art in
continuation-in-part Application 07/735,387 (i.e., the application that
matured into the ‘925 Patent) (Fact 12).3

2 Cf. Pound v. United States, 63 Fed.Appx. 499, 501-502 (Fed. Cir. 2003)
(unpublished).
3 The Examiner’s position appears to be at odds with policy. If, as the
Examiner asserts, collateral estoppel were to apply in a situation such as this,
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Finally, the Examiner argues that even if collateral estoppel does not
apply, Grubb is assumed to be prior art because no evidence established
“what mechanisms/safeguards were in place to keep Grubb an ‘internal
document’” (Ans. 23-24). The Examiner’s concern is misplaced. Here, both
Grubb and Anthon have declared that the Grubb reference was never
published and was an internal company document (Facts 5 and 6). The
Examiner, on the other hand, has offered no factual basis upon which to
doubt the confidential nature of the Grubb reference. Hence, the Examiner
has failed to present any evidence sufficient to prove that Grubb was a
printed publication that was publicly accessible.
For these reasons, the Examiner has failed to establish a prima facie
case of obviousness. Accordingly, we cannot uphold any of the Examiner’s
rejections.

CONCLUSION
On this record, we determine that Appellant has shown that the
Examiner reversibly erred by failing to establish in the first instance that
collateral estoppel applies and by concluding that Grubb is prior art because
Appellant did not identify the mechanisms and safeguards to maintain Grubb
as an internal company document.

an applicant would be forced to make every conceivable argument in a given
application for fear of collateral estoppel. Under the Examiner’s theory, an
applicant could never raise an argument in a continuing application if it was
not raised in the parent application. Such a position appears to be contrary
to current patent practice and procedure and will surely place an immense
burden on the examiners to ensure timeliness and quality of examination
despite the increased number of arguments to consider.
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DECISION
The Examiner’s decision to reject appealed claims 1-7, 9-21, 23-26,
30-40, 46-48, 58-62, 68, and 69 is reversed.
REVERSED

ack

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SCIENTIFIC-ATLANTA, INC.
INTELLECTUAL PROPERTY DEPARTMENT
5030 SUGARLOAF PARKWAY
LAWRENCEVILLE GA 3004