Ex Parte 6542673 et al

Board of Patent Appeals and Interferences

Mar 16, 2012

95000463 (B.P.A.I. Mar. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,463 04/27/2009 6542673 14770-1 3503
20786 7590 03/16/2012
KING & SPALDING
1180 PEACHTREE STREET , NE
ATLANTA, GA 30309-3521
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/16/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

CIENA CORP.
Requester and Appellant
v.

CIRRIX SYSTEMS LLC
Patent Owner and Respondent
____

Appeal 2011-013123
Inter partes Reexamination Control No. 95/000,463
United States Patent 6,542,673 B1
Technology Center 3900
____________

Before KEVIN F. TURNER, STEPHEN C. SIU, and JONI Y. CHANG,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. §§ 134(b) and 315(b) from a Right
of Appeal Notice confirming claims 9-12, 14, 24, 52-60, 68-71, 73-103, and
105. (App. Br. 3.) We have jurisdiction under 35 U.S.C. §§ 134(b) and
315(b).
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STATEMENT OF THE CASE
This proceeding arose from a request by Richard W. Ward for an inter
partes reexamination of U. S. Patent 6,542,673 B1 (‘673 patent), titled
“Identifier System and Components for Optical Assemblies,” and issued to
Dwight J. Holter and Michael L. Wach (April 1, 2003). An oral hearing of
this appeal transpired before the BPAI on February 15, 2012.
The ‘673 patent describes “an identifying mechanism . . . on or in a
high-performance waveguide” (col. 4, ll. 51-52). Claim 12 on appeal reads
as follows:
12. An optical waveguide identification system, comprising:
an optical waveguide, comprising a core, and a cladding disposed
around said core, said cladding having a peripheral edge area; and
a machine-readable identifier disposed within the peripheral edge area
of said cladding, said machine-readable identifier comprising information
about said optical waveguide.
(App. Br., Claims App.)

The relevant prior art references are:

Fischer US 4,598,039 Jul. 1, 1986
Blyler US 4,974,930 Dec. 4, 1990
Cina US 5,042,709 Aug. 27, 1991
Bartschat US 4,980,971 Jan. 1, 1991
Hibbs-Brenner WO 98/29772 Jul. 9, 1998
Fujikura JP10-246843A Mar. 4, 1997

Tsuji, Shinji, et al., “Passive Coupling of a single Mode Optical Waveguide
and a Laser Diode/Waveguide Photodiode for a WDM Transceiver
Module,” IEICE Trans. Commun., Vol. E79-B, No. 7, July 1996
(“Tsuji”).
Lu, Shin-yee, et al., “Flexible Manufacturing for Photonics Device
Assembly,” Prepared for Submittal to SPIE, July 24-29, 1994 (“Lu”).
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Lowry, Mark, et al., “Low-Cost Packaging of High-Performance
Optoelectronic Components,” Prepared for Submittal to SPIE, July
24-29, 1994 (“Lowry”).
Chalsen, Michael J., “Automatic Chip Placement: One solution, User-
Benefits, and Future Development,” IEEE 1991 (“Chalsen”).
UTP Catalog of Integrated Optical Circuits, Uniphase Telecommunications
Products, 1997 (“UTP”).

Appellant appeals the Examiner’s confirmation of the following
claims over the following proposed rejections:
Claims 9, 11, and 12 as anticipated by Hibbs-Brenner (WO ‘772).
Claim 12 as anticipated by Fujikura.
Claims 9-12 and 14 as anticipated by Blyler.
Claim 24 as unpatentable over the combination of Chalsen and Tsuji.
Claims 24, 68-71, 91-93, 101, and 102 as anticipated by Lowry.
Claims 24, 68, 69, 71, and 91-93 as anticipated by Lu.
Claims 12, 14, 53, 55, 57, and 59 as anticipated by Fischer.
Claims 12 and 52-60 as anticipated by UTP.
Claims 68-71, 73-76, 85, and 86 as unpatentable over Chalsen.
Claims 73-89, 94-100, and 103 as anticipated by Cina.
Claims 24, 68-71, 90-93, 101, 102, and 105 as unpatentable over
Cina, Bartschat, and Chalsen.

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ISSUES
1) Does the Board have jurisdiction to decide if the Examiner
erred in determining the lack of a substantial question of patentability over
whether claims 9, 11, and 12 are anticipated by Hibbs-Brenner (WO ‘772);
whether claim 12 is anticipated by Fujikura; whether claims 9-12 and 14 are
anticipated by Blyler; and whether claim 24 is unpatentable over the
combination of Chalsen and Tsuji?
2) Did the Examiner err in finding that Lowry does not anticipate
claims 24, 68-71, 91-93, 101, and 102 and that Lu does not anticipate claims
24, 68, 69, 71, and 91-93?
3) Did the Examiner err in finding that Fischer does not anticipate
claims 12, 14, 53, 55, 57, and 59?
4) Did the Examiner err in finding that UTP does not anticipate
claims 12 and 52-60?
5) Did the Examiner err in finding that claims 68-71, 73-76, 85,
and 86 are not unpatentable over Chalsen?
6) Did the Examiner err in finding that Cina does not anticipate
claims 73-89, 94-100, and 103?
7) Did the Examiner err in finding that claims 24, 68-71, 90-93,
101, 102, and 105 are not unpatentable over the combination of Cina,
Bartschat, and Chalsen?

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
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claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co. of Kansas, 383
U.S. 1, 17-18 (1966).
“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., 550 U.S. 398, 416 (2007).

ANALYSIS
Hibbs-Brenner (WO ‘772), Fujikura, Blyler, and/or the combination of
Chalsen and Tsuji

The Examiner finds no substantial new questions of patentability
(SNQ) of the following:
1) Claims 9, 11, or 12 as anticipated by Hibbs-Brenner (Action
Closing Prosecution (ACP) 11),
2) Claim 12 as anticipated by Fujikura (ACP 11-12),
3) Claims 9-12 and 14 as anticipated by Blyler (ACP 12), and
4) Claim 24 as unpatentable over the combination of Chalsen and
Tsuji (ACP 13).

Appellant presents arguments pertaining to the alleged unpatentability
of the above listed claims over the respective references (App. Br. 13-20, 30-
33, and 36-39). However, under 35 U.S.C. § 312, none of Hibbs-Brenner,
Fujikura, Blyler, or the combination of Chalsen and Tsuji was determined by
the Director to present a substantial new question of patentability (SNQ). As
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such, no order for inter partes reexamination was ordered by the Director of
the above listed claims over the corresponding references pursuant to 35
U.S.C. § 313 (and therefore no corresponding inter partes reexamination
was performed). Appellant also does not demonstrate that a petition was
timely filed pursuant to 37 C.F.R. § 1.927 seeking review of the
determination that a substantial new question of patentability (SNQ) does
not exist. The Director’s determination that a substantial new question of
patentability (SNQ) does not exist for the above listed claims over the above
listed corresponding references is final and non-appealable (35 U.S.C. §
312(c)).
Given that inter partes reexamination was not previously ordered or
performed for the disputed claims with respect to the disputed references, we
lack jurisdiction to consider Appellant’s arguments pertaining to Hibbs-
Brenner, Fujikura, Blyler, or the combination of Chalsen and Tsuji. Belkin
International, Inc. v. Optimumpath, LLC, Appeal 2011-003697, 2011 WL
1197564 (Bd. Pat. App. & Interf.) (March 29, 2011) (informative decision)
and Abbott Diabetes Care, Inc. v. Patent of Dexcom, Inc., Appeal 2011-
003298, 2011 WL 1730470 (Bd. Pat. App. & Interf.) (May 3, 2011).

Lowry and Lu references

Respondent argues that “Appellant has not established that Lu
qualifies as prior art . . .” because Lu, according to Respondent, “is a
preprint of a paper intended for publication and is subject to change before
publication” and that “Appellant has not established whether or when such
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publication ever took place” (Respondent Br. 12). Respondent provides a
similar argument with respect to the Lowry reference (Respondent Br. 11).
Both the Lu and Lowry references indicate that the references were
“Prepared for Submittal to SPIE” on the respective cover sheets. A
reference prepared for a conference is considered a prior art reference if
actually disseminated at a conference without restriction. See, e.g.,
Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104, 1109
(Fed. Cir. 1985). Appellant argues that “papers distributed in conjunction
with a public conference qualify as ‘printed publications’” and that the
references “were ‘made available’ in conjunction with public conferences”
(Rebuttal Br. 22). However, Appellant does not sufficiently demonstrate or
even assert that a reference that is “made available” is also actually
distributed without restriction to individuals or even the extent of such a
“distribution” assuming that a “distribution” actually took place. Even
assuming that the conference was held and that Lu and Lowry references
were “distributed” at the conference (which Appellant has not shown or even
asserted), Appellant does not demonstrate that the Lu and/or Lowry
references were actually distributed “without restriction.”
Since Appellant has not sufficiently demonstrated that the Lowry and
Lu references constitute prior art references applicable under 35 U.S.C. §
102, the Examiner did not err in confirming claims 24, 68-71, 91-93, 101,
and 102 over the Lowry reference and claims 24, 68, 69, 71, and 91-93 over
the Lu reference.

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Fischer reference (claims 12, 14, 53, 55, 57, and 59)

Claim 12 recites a waveguide, comprising a core, and a cladding
disposed around the core and a machine-readable identifier disposed within
the peripheral edge area of the cladding. As Appellant points out, Fischer
discloses “waveguides 43 and 44” (col. 4, ll. 46-47; Fig. 4) embedded in “the
substrate 40” (col. 4, l. 41).
The Examiner confirms claim 12 over Fischer because, according to
the Examiner, “element #43 (fig 4) [of Fischer] is a waveguide and not a
waveguide core” (ACP 21) and that “the lithium niobate structure” of
Fischer is not cladding (see, e.g., ACP 21-22). We do not agree with the
Examiner for essentially the same reasons set forth by Appellant (App. Br.
28-30). For example, claim 12 recites that cladding is disposed around the
waveguide core while Fischer discloses Lithium Niobate disposed around
the “waveguide.” Other than Fischer’s use of the term “waveguide” as
opposed to the term “core” as recited in claim 12, the Examiner does not
demonstrate other differences between Fischer’s “waveguide” and the
“core” as recited in claim 12 or between Fischer’s Lithium Niobate
“substrate” and the cladding, as recited in claim 12. The mere use of a
different term to refer to the “waveguide” (or “core”) is insufficient to
demonstrate a patentable difference between the two elements. While “the
identical invention must be shown in as complete detail as is contained in the
. . . claim,” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir.
1989), this is not an ipsissimis verbis test, i.e., identity of terminology is not
required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990).
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Respondent concedes that “the substrate 40 [of Fischer] provides the
cladding for those optical paths [i.e., waveguides 43 and 44]” (Oral Hearing
Transcript, p. 21, ll. 11-12) but argues that the cladding in Fischer is “in and
around that area [of waveguides 43 and 44] . . . [and not] out on the edge of
the component” (Oral Hearing Transcript, p. 22, ll. 21-22). Hence,
Respondent appears to argue that only the portion of the substrate within a
certain distance from the waveguide core constitutes “cladding” while the
portion of the substrate farther from the waveguide core that that “certain
distance” does not constitute “cladding.”
Claim 12 does not recite a specific restriction on the distance at which
the cladding extends from the core and Respondent has not indicated how
one of ordinary skill in the art would have understood any specific
limitations on the distance the cladding may extend from the core in view of
the Specification. We disagree with Respondent’s assertion that the
cladding ceases to be cladding merely by extending beyond a certain
unspecified distance from the core. In any event, as Respondent indicates,
Fischer discloses both a waveguide core (i.e., waveguides 43 and 44) and
cladding around the core (i.e., substrate 40) as recited in claim 12.
Respondent also argues that “Fischer also fails to disclose that the
alignment feature 42 is ‘machine-readable’” (Respondent Br. 7) but
concedes that “the plus sign” is, in fact, “machine-readable” (see, e.g., Oral
Hearing Transcript, p. 24, ll. 4-5). We agree that the plus sign in Fischer is
“machine-readable” since a machine designed to identify an identifier (e.g.,
a camera) would be capable of reading the identifier. Respondent has not
sufficiently demonstrated otherwise.
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In addition, the grooves 42 of Fischer (see, e.g., col. 4, ll. 37-38; Fig.
4) are disposed on a peripheral edge of the cladding (i.e., substrate 40) as
recited in claim 12. Given the fact that the “alignment feature 42” of Fischer
is “machine-readable,” we find no difference between the “machine-
readable” identifier recited in claim 12 and the machine-readable alignment
feature of Fischer.
In addition, the feature “machine-readable” as recited in claim 12 is
non-functional descriptive material and is not entitled to patentable weight
absent a showing of a new and unobvious functional relationship between
the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579,
1582-83 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004).
While claim 12 recites that the “identifier” is a “machine-readable”
identifier, claim 12 does not further recite any specific function of the
identifier based on the recited “machine-readability” of the identifier. In
other words, there is no functional difference of the identification system as
recited in claim 12 whether the identifier is “machine-readable” or not and
therefore no new or unobvious functional relationship exists between the
system and the identifier (whether machine-readable or not).
Claims 14, 53, 55, 57, and 59 depend from claim 12 and no additional
arguments are presented with respect to Fischer.
We therefore find the Examiner erred in refusing to adopt the
proposed rejection of claims 12, 14, 53, 55, 57, and 59 as anticipated by
Fischer.

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UTP reference (claims 12 and 52-60)

Claim 12 recites a waveguide, comprising a core, and a cladding
disposed around the core and a machine-readable identifier disposed within
the peripheral edge area of the cladding. UTP discloses a “waveguide”
embedded in a “LiNbO3” substrate (p. 2).
The Examiner confirms claim 12 over the UTP reference because
UTP supposedly fails to disclose a “machine-readable identifier” based on
the fact that “the fiducial marks are visually aligned by the eyes of the
assemblers” (ACP 25) rather than being aligned by a machine.
Similarly, Respondent argues that “the fiducial marks in UTP are
visually observed by a person” and that “UTP does not disclose any reading
of these fiducial marks or any other potential identifier by a machine”
(Respondent Br. 6) (emphasis omitted). We disagree with the Examiner’s
findings and Respondent’s arguments for at least the reasons set forth by
Appellant (App. Br. 24-26 and Rebuttal Br. 3-5). For example, the
Examiner and the Respondent have not adequately demonstrated that the
fiducial marks in UTP, even if read by “eyes of the assemblers” are not
capable of being read by a machine (i.e., not “machine-readable”). One of
skill in the art would have understood that fiducial marks that contain
patterns distinguishable by “eyes of the assemblers” would also be
distinguishable by a machine designed to identify such patterns (e.g.,
camera).
In addition, as explained above, the feature of “machine-readable” as
recited in claim 12 is non-functional descriptive material and is not entitled
to patentable weight.
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Similarly, claim 56 recites that the identifier “comprises a metallic
material” and Respondent argues “that the UTP document is wholly silent
with respect to this matter” (Respondent Br. 5). Claim 56 does not recite
any functional relationship between the material being “metallic” (or non-
metallic, for that matter) and the identifier or use thereof. As such, the
recited “metallic” feature is non-functional descriptive material that is not
entitled to patentable weight.
Respondent argues that the declaration of Dr. Karl Kissa “should be
accorded little weight” because “Dr. Kissa is an employee of JDSU,” and
because “Dr. Kissa fails to define what level of ordinary skill in the art he
employed in developing his ‘opinions’” (Respondent Br. 5). In assessing the
probative value of an expert opinion, the nature of the matter sought to be
established, the strength of any opposing evidence, the interest of the expert
in the outcome of the case, and the presence or absence of factual support for
the expert’s opinion must be considered. Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 227 (Fed. Cir. 1985).
In the present case, Respondent does not provide any opposing
evidence. Also, the matter sought to be established in the declaration are
factual matters concerning UTP’s disclosure of waveguides or waveguide
cores with cladding. Given the factual nature of the matter to be established
and the fact that the relevant statements of Dr. Kissa are factually supported
by the evidence (e.g., UTP illustrates LiNbO3 “cladding” around a
“waveguide” (pg. 2) as Dr. Karl Kissa indicates (Declaration of Karl M.
Kissa, § 5)), we agree with Appellant that UTP discloses, for example,
cladding around a waveguide core as recited in claim 12.
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Claims 52-60 depend from claim 12 and no additional arguments are
presented with respect to UTP.
We therefore find the Examiner erred in refusing to adopt the
proposed rejection of claims 12 and 52-60 as anticipated by UTP.

Chalsen reference (claims 68-71, 73-76, 85, and 86)

The Examiner states that Chalsen “does not teach or suggest
identifiers on an optical waveguide” (ACP 34). Claim 68 recites a first and
second reading device that each reads information from an identifier on an
optical waveguide. We disagree with the Examiner for essentially the
reasons set forth by Appellant (App. Br. 33-36).
Chalsen discloses placement and alignment of components that
includes the alignment of “optical detector assemblies” (pg. 427, col. 1) such
as “[l]aser diodes” (id.) by reading “fiduciary marks on the PCB or
substrates to compensate for any misalignments” (p. 424, col. 2). The
Examiner has not sufficiently identified a difference between devices, such
as the “MR-03 cylindrical robot” (pg. 424, col. 1) of Chalsen reading
fiduciary marks (i.e., “information from an identifier”) for aligning optical
devices such as laser diodes (i.e., “optical waveguide”), and devices that
read information from an identifier on an optical waveguide as recited in
claim 68. In both cases, a device reads information from marks or
“identifiers” on an optical waveguide (or “laser diode”).
Respondent argues that “Chalsen does not teach or suggest using the
systems to align optical components with respect to one another”
(Respondent Br. 9). We note that Chalsen discloses aligning “laser diodes”
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(i.e., optical waveguides) (p. 427, col. 1) on a chip or die (p. 422, col. 1) in a
multi-chip module (id.) that may contain “from one to over 200 die with a
significant number of different components” (p. 422, col. 2). Since each
chip or die of Chalsen may contain a “laser diode” and each chip or die
(containing a “laser diode”) is aligned within the multi-chip module with
respect to each of the other chips or dies in the module, one of ordinary skill
in the art would have understood that each laser diode on each chip or die in
the multi-chip module is aligned with respect to each other laser diode on
other chips or dies in the module.
We agree that it would at least have been obvious to one of ordinary
skill in the art, given Chalsen’s disclosure of aligning multiple chips within a
multi-chip module, to have aligned components within each of the chips in
the module with respect to components on other chips in the module. This is
especially true since aligning one chip with another chip would necessarily
align the components housed within each of the respective chips.
Claims 69 and 70 depend from claim 68 and claims 71 and 73-76
recite similar features as claim 68.
We therefore find the Examiner erred in refusing to adopt the
proposed rejection of claims 68-71, 73-76, 85, and 86 as unpatentable over
Chalsen.

Cina reference (claims 73-89, 94-100, and 103)

Claim 73 recites a reading device that reads information from an
identifier on an optical waveguide. Claim 74 recites a similar feature. The
Examiner finds that Cina fails to disclose this feature because the fiducial
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marks of Cina “are disposed on the chip #201 and not the optical
waveguide” (ACP 27). As Appellant points out, however, Cina discloses
“methods and apparatus for precisely aligning objects, such as solid state
laser and optical fibers” (col. 1, ll. 7-9) through the use of “fiducial marks to
align objects in a precise manner” (col. 1, ll. 13-14), the fiducial marks “on
each part to be aligned” (col. 6, ll. 33-34). Since Cina discloses that each
part to be aligned contains fiducial marks and that optical fibers are aligned,
the optical fibers (being aligned) contain fiducial marks. The Examiner does
not indicate any difference between an optical fiber (Cina) and an optical
waveguide as recited in claim 73. Thus, the Examiner does not establish a
difference between fiducial marks on an optical fiber (Cina) and a fiducial
mark or “identifier” on an optical waveguide (or “fiber”) as recited in claim
73.
The Specification discloses that “any known waveguide, for example,
an optical fiber . . .” (col. 5, ll. 17-18) that contains a “[c]ore 102” (col. 5, l.
20) and “[c]ladding 104” (col. 5, l. 21-22). One of ordinary skill in the art
would have understood, given this disclosure, that an optical waveguide as
recited in claim 73 is an optical fiber that contains a core and cladding. As
described above, Cina discloses alignment of optical fibers (or waveguides)
with fiducial marks on every part to be aligned.
To the extent that the embodiment illustrated in Fig. 2 of Cina shows a
plus sign on “chip 201” (as the Examiner states), the Examiner has not
demonstrated that the “chip 201” of Cina does not constitute part of the
optical fiber to be aligned (e.g., part of the “cladding”). We do not
independently find any difference between the “chip 201” (or substrate) of
Cina and cladding of an optical fiber (or waveguide).
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Claim 75 recites that the identifier comprises a metallic material. The
Examiner finds that Cina fails to disclose this feature (ACP 28). Likewise,
Respondent argues that Cina fails to disclose a device “that reads
information from an identifier . . . the identifier comprising a metallic
material” (Respondent Br. 13). Appellant points out that Cina discloses that
“that fiducial marks ‘can be delineated in the chromium film . . . .’” (App.
Br. 46). Since chromium appears to constitute “metallic material” and
neither the Examiner nor Respondent have indicated otherwise, we do not
agree with the Examiner’s and Respondent’s assertions that Cina fails to
disclose “metallic material.” In any event, for at least the reasons explained
above, the recited feature of “metallic material” constitutes non-functional
descriptive material and is not entitled to patentable weight.
The Examiner finds that Cina fails to disclose a fiber bundle, as
recited in claim 80. The Examiner does not indicate an explicit definition of
the term “fiber bundle” in the Specification. Thus, we utilize a plain and
customary meaning to construe the terms in light of the Specification (under
a broad but reasonable construction) to include any collection (i.e.,
“bundle”) of fibers. As Appellant points out, Cina appears to disclose such a
collection of fibers (see, e.g., Fig. 2).
Claims 85 and 94 recite that the identifier comprises alphanumeric
information. The Examiner finds that Cina fails to disclose this feature.
Likewise, Respondent argues that the plus signs of Cina “is not
alphanumeric” (Respondent Br. 14). However, neither the Examiner nor
Respondent sufficiently demonstrates how a “+” does not constitute
“alphanumeric information.” For example, as Appellant points out, “T” or
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“X” would be indistinguishable under at least some circumstances from “+”
(App. Br. 24).
Even assuming that a “+” symbol is not “alphanumeric information”
as the Examiner and Respondent state, claim 85 recites “the identifier
comprising alphanumeric information” but does not further recite any
specific function of the identifier based on the “alphanumeric information.”
In other words, no new or unobvious functional relationship between the
system and the descriptive material of “alphanumeric information” has been
shown. Indeed, any information, whether alphanumeric or otherwise, may
be utilized in the identifier as claimed with no change in function of the
system. As such, “alphanumeric information” is non-functional descriptive
material and is not entitled to patentable weight. See In re Lowry, 32 F.3d
1579, 1582-83 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir.
2004).
We therefore find the Examiner erred in refusing to adopt the
proposed rejection of claims 73-89, 94-100, and 103 as anticipated by Cina.

Cina, Bartschat and Chalsen references (claims 24, 68-71, 90-93, 101, 102,
and 105)

Claim 68 recites an identifier on an optical waveguide. The Examiner
finds that the combination of Cina, Bartschat and Chalsen fails to disclose or
suggest an optical waveguide because the “PCB and substrate of Chalsen
are not optical waveguides” (ACP 29). For reasons previously provided
above, we disagree with the Examiner. For example, Cina discloses an
optical waveguide (or optical fiber) and Chalsen discloses a substrate
(cladding) and a laser diode (optical waveguide).
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Claims 69 and 70 depend from claim 68 and claims 24, 71, 90-93,
101, 102, and 105 recite similar features.
Claim 105 recites fine tuning. The Examiner finds that the
combination of Cina, Bartschat, and Chalsen “does not disclose or suggest
fine tuning the alignment of the optical waveguide” with a second reading
device (ACP 29) because Bartschat and Chalsen disclose “chip alignment,
not waveguide alignment” (ACP 30). We disagree with the Examiner for
essentially the reasons set forth by Appellant (App. Br. 49).
First, as explained above, Cina discloses waveguide alignment (or
optical fiber alignment). Therefore, the Examiner’s statement that Barschat
and Chalsen supposedly fail to disclose or suggest waveguide alignment,
even if true, is not persuasive.
Second, given the disclosure of Cina of fine tuning an alignment of a
waveguide with a reading device (using multiple iterations) (Cina, Figs. 8A-
8B), it would have been obvious to one of ordinary skill in the art to have
performed tuning and fine tuning with multiple devices since doing so would
have entailed no more than the use of known components (reading devices
as disclosed by Cina) in known ways to achieve predictable results (i.e., fine
tuning of the alignment of the optical fibers or waveguides as disclosed by
Cina). “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., 550 U.S. 398, 416 (2007).
Third, as Appellant points out, Chalsen discloses multiple cameras,
“‘one with high and the other with low magnification’” for “‘provid[ing]
enough detail within a pattern to resolve and decipher orientations . . .’”
(Rebuttal Br. 24) and therefore discloses using a second device (i.e., a
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second camera) for “fine tuning” (i.e., higher magnification). Respondent
has not sufficiently demonstrated using a second camera for providing
higher resolution (and therefore finer detail) to be different from using a
second device for fine tuning.
We therefore find the Examiner erred in refusing to adopt the
proposed rejection of claims 24, 68-71, 90-93, 101, 102, and 105 as
unpatentable over the combination of Cina, Bartschat, and Chalsen.

CONCLUSION
We conclude that:
1) We lack jurisdiction to decide if the Examiner erred in
determining the lack of a substantial question of patentability over whether
claims 9, 11, and 12 are anticipated by Hibbs-Brenner (WO ‘772); whether
claim 1 is anticipated by Fujikura; whether claims 9-12 and 14 are
anticipated by Blyler; and whether claim 24 is unpatentable over the
combination of Chalsen and Tsuji.
2) The Examiner did not err in finding that Lowry does not
anticipate claims 24, 68-71, 91-93, 101, and 102 and that Lu does not
anticipate claims 24, 68, 69, 71, and 91-93.
3) The Examiner erred in finding that Fischer does not anticipate
claims 12, 14, 53, 55, 57, and 59.
4) The Examiner erred in finding that UTP does not anticipate
claims 12 and 52-60.
5) The Examiner erred in finding that claims 68-71, 73-76, 85, and
86 are not unpatentable over Chalsen.
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6) The Examiner erred in finding that Cina does not anticipate
claims 73-89, 94-100, and 103.
7) The Examiner erred in finding that claims 24, 68-71, 90-93,
101, 102, and 105 are not unpatentable over the combination of Cina,
Bartschat, and Chalsen.

DECISION
The Examiner’s refusal to adopt the proposed rejections of claims 24,
68-71, 91-93, 101, and 102 as anticipated by Lowry and claims 24, 68, 69,
71, and 91-93 as being anticipated by Lu is AFFIRMED.
The Examiner’s refusal to adopt the proposed rejections of claims 12,
14, 53, 55, 57, and 59 as anticipated by Fischer; claims
12 and 52-60 as anticipated by UTP; claims 68-71, 73-76, 85, and 86 as
unpatentable over Chalsen; claims 73-89, 94-100, and 103 as anticipated by
Cina; and claims 24, 68-71, 90-93, 101, 102, and 105 as unpatentable over
the combination of Cina, Bartschat, and Chalsen is REVERSED and
denominated as NEW GROUNDS OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.77(b).

Requests for rehearing in this inter partes reexamination proceeding
are governed by 37 C.F.R. § 41.79.
This decision also contains new grounds of rejection pursuant to 37
C.F.R. § 41.77(b) which provides “[a]ny decision which includes a new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.” 37 C.F.R. § 41.77(b) also provides that the Patent
Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION,
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21
must exercise one of the following two options with respect to the new
grounds of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner . . . .
(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the same
record . . . .
Should the Patent Owner elect to prosecute further before the
Examiner pursuant to 37 C.F.R. § 41.77(b)(1), in order to preserve the right
to seek review under 35 U.S.C. § 141 with respect to the affirmed rejections,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If the Patent Owner elects prosecution before the Examiner and this
does not result in patentable claims, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejections, including any timely request for
rehearing thereof.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED-IN-PART
37 C.F.R. § 41.77(b)

rvb
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Patent Owner

KING & SPALDING
1180 Peachtree Street, NE
Atlanta, GA 30309-3521

Third Party Requester

KENYON & KENYON LLP
1500 K Street, NW, Suite 700
Washington, DC 20005