Ex Parte 7142347 et al

Board of Patent Appeals and Interferences

Mar 30, 2012

95000239 (B.P.A.I. Mar. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
95/000,239 05/30/2007 7142347 2282
7590 03/30/2012
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/30/2012 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
____________

INFINERA CORP.
Third Party Requester, Appellant

v.

CHEETAH OMNI, LLC
Patent Owner, Respondent
________

Appeal 2011-007232
Inter partes Reexamination Control 95/000,239
United States Patent 7,142,347 B2
Technology Center 3900
____________

Before RICHARD TORCZON, SALLY C. MEDLEY, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
Third Party Requester Infinera Corp. (hereinafter “Appellant”)
appeals1 under 35 U.S.C. §§ 134(b) and 315(b)(1) the Examiner’s decision

1 See Appeal Brief filed July 21, 2010, hereinafter “App. Br.,” at 2; see also
Rebuttal Brief filed December 3, 2010, hereinafter “Rebut. Br.”
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to not adopt Appellant’s proposed rejections and confirm claims 1-20.2,3
Patent Owner Cheetah Omni, LLC, (hereinafter “Respondent”) is a party to
the appeal under 35 U.S.C. § 315(a)(2) and disputes the Appellant’s
contentions.4
We have jurisdiction under 35 U.S.C. §§ 6, 134 and 315. We
AFFIRM.

STATEMENT OF THE CASE
This proceeding arose from a corrected request for inter partes
reexamination (“Request”) filed on behalf of Appellant, on May 30, 2007, of
United States Patent 7,142,347 B2 (“the '347 Patent”), issued to Mohammed
N. Islam on November 28, 2006, based on United States Application
11/199,513, filed August 8, 2005. That application claimed benefit to the
following applications:
Relationship Serial No. Filing Date Patent No.
Continuation of 10/994,061 Nov. 19, 2004 6,950,225
Continuation of 10/849,346 May 19, 2004 6,859,301
Continuation of 10/644,721 Aug. 20, 2003 6,795,605
Continuation of 10/227,055 Aug. 22, 2002 6,654,157
Division of 10/131,744 Apr. 22, 2002 6,611,366
Continuation of 09/631,276 Aug. 1, 2000 6,407,851
This appeal is related to another pending appeal, Appeal No. 2011-
009809, in inter partes reexamination proceeding control no. 95/000,240, for

2 See Right of Appeal Notice, mailed April 8, 2010, hereinafter “RAN;” see
also Examiner’s Answer, mailed November 3, 2010, hereinafter “Ans” and
Action Closing Prosecution, mailed December 4, 2009, hereinafter “ACP.”
3 Claims 21-33 have also been rejected (RAN 1); Respondent has not sought
to have their rejection reviewed (Resp. Br. 2).
4 See Respondent Brief filed August 20, 2010, hereinafter “Resp. Br.”
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United States Patent 6,795,605 B1, where the '347 Patent claims benefit to
the '605 Patent, as indicated above.
The '347 patent is the subject of pending litigation styled Cheetah
Omni, LCC v. Level 3 Communications, Inc. and Infinera Corp., Civ. A. No.
5:06-cv-101 (E.D. Tex.). (See App. Br. 2). The action was stayed pending
the outcome of this and the related reexamination (id.).
We heard oral arguments from the representatives of both the
Appellant and the Respondent, on September 21, 2011, a transcript5 of
which is part of the record.

THE INVENTION
The invention of the subject patent relates to an optical switch
element, and to methods of forming and using that element (Spec. Col. 1, ll.
32-35).
Exemplary claim 1 on appeal reads as follows:
1. An optical processing system, comprising:
an optical amplifier operable to receive an input optical signal
from an optical communication link and to at least partially
compensate for losses in the input optical signal;
a receiving device coupled to the optical amplifier and operable
to receive the input optical signal, the receiving device comprising:
a first wave-guide based router operable to separate the input
optical signal into a first plurality of optical signal wavelengths; and
a linear array of wavelength detectors operable to receive at
least a portion of at least some of the first plurality of optical signal
wavelengths and to convert the at least some of the first plurality of
optical signal wavelengths into one or more electrical signals, wherein

5 Record of Oral Hearing (hereinafter Oral Hr’g Tr.)
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the first wave-guide based router and the linear array of wavelength
detectors are co-located on a first semiconductor substrate;
an electronic processor operable to receive at least a portion of
the one or more electrical signals and to perform an electronic
processing operation on at least one of the one or more electrical
signals and to generate, based at least in part on the at least one
processed electrical signal, a second plurality of optical signal
wavelengths;
a transmitting device coupled to the electronic processor and
operable to receive at least a portion of the second plurality of optical
signal wavelengths, the transmitting device comprising:
an optical switching array comprising a linear array of
modulators and operable to receive at least some of the second
plurality of optical signal wavelengths, at least some of the
modulators operable to perform an optical switching operation on at
least some of the second plurality of optical signal wavelengths; and
a second wave-guide based router operable to receive the at
least some of the second plurality of optical signal wavelengths and to
combine at least the at least some of the second plurality of optical
signal wavelengths into an output optical signal, wherein the linear
array of modulators and the second wave-guide based router are co-
located on a second semiconductor substrate.
(App. Br. 35-36, Claims App’x.).

POTENTIAL PRIOR ART REJECTIONS
The prior art references relied upon by Appellant in the proposed
rejections, upon which the non-adoption is appealed, are:
Stegmeier 5,130,835 Jul. 14, 1992
Lang 5,355,237 Oct. 11, 1994
Tachikawa 5,414,548 May 9, 1995
Knox 5,526,155 Jun. 11, 1996
Glance 5,764,821 Jun, 9, 1998
Boord 5,793,912 Aug. 11, 1998
Ford 5,912,751 Jun. 15, 1999
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Thompson 6,282,005 Aug. 28, 2001
Chang 6,580,537 Jun. 17, 2003
Deliawala 6,823,112 Nov. 23, 2004

Appellant proposed rejections of the claims on numerous bases,6
where those rejections over prior art were not adopted (ACP 11-51).

ISSUES
We have considered in this decision only those arguments that
Appellant actually raised in the Briefs. Arguments which Appellant could
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).
The issues arising from the respective positions of Appellant,
Respondent, and the Examiner, which we consider herein, are:7
1. whether the Examiner erred in not adopting the rejection of claims
1, 7, 13, and 18 under 35 U.S.C. § 102(b) as being anticipated by
Tachikawa?
2. whether the Examiner erred in not adopting the rejection of claims
1, 7, 13, and 18 under 35 U.S.C. § 102(b) as being anticipated by
Lang?
3. whether the Examiner erred in not adopting the rejection of claims
1, 7, 13, and 18 under 35 U.S.C. § 102(b) as being anticipated by
Glance?

6 See ACP 4-6.
7 Appellant cites many issues to be reviewed, designated Ground (A)
through Ground (DD) (App. Br. 5-7), but we need only consider the eight
cited issues, involving the independent claims, unless we determine that the
Examiner erred in not adopting one of the discussed rejections.
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4. whether the Examiner erred in not adopting the rejection of claim
18 under 35 U.S.C. § 102(e) as being anticipated by Thompson?8
5. whether the Examiner erred in not adopting the rejection of claims
1, 7, 13, and 18 under 35 U.S.C. § 103(a) as being unpatentable
over Chang and Tachikawa?
6. whether the Examiner erred in not adopting the rejection of claims
1, 7, 13, and 18 under 35 U.S.C. § 102(b) as being anticipated by
Knox?
7. whether the Examiner erred in not adopting the rejection of claims
1, 7, 13, and 18 under 35 U.S.C. § 103(a) as being unpatentable
over Ford and Tachikawa? and
8. whether the Examiner erred in not adopting the rejection of claims
1, 7, 13, and 18 under 35 U.S.C. § 103(a) as being unpatentable
over Boord and Tachikawa?

8 Appellant also argues that the Examiner should have adopted the rejection
of claims 1-4, 7-11, and 13-17 as being obvious over Thompson and Chang,
i.e., “Ground (O)” (App. Br. 22-23), but as Respondent points out (Resp. Br.
11), this rejection was not proffered in the Request, only the obviousness of
claims 1-5, 7-11, and 13-17 in view of Thompson and Tachikawa (Request
26). Appellant has provided no rationale why this new ground of rejection
should now be considered. As such, we do not consider the non-adoption of
such a ground to be an issue in the instant appeal.
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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Tachikawa
FF1. Tachikawa is directed to an optical device that uses a
plurality of loop-back optical paths which allow for optical
transmission and switching (Abs.). In a first embodiment, an arrayed
waveguide grating (AWGMD) (41) separates signals by wavelength
and shunts those signals to different signal processors (52) (col. 5, ll.
30-40; Fig. 1). The signal processors (52) obtain transmitted
information from the optical signals and generate optical signals of the
correct wavelength so that information to be forwarded is
superimposed on the optical signal (col. 6, ll. 1-8).
FF2. In alternate embodiments, Tachikawa provides that the
signal processors (52) are composed of: an optical/electrical (O/E)
converter (53, 103; Figs. 2(a) and 13) and an electrical/optical (E/O)
converter (54, 104; Figs. 2(a) and 13); an optical amplifier (57; Fig.
2(b)); an optical switch (58; Fig. 2(c)); and an optical filter (65; Fig.
2(d)) (col. 6, l. 42 – col. 7, l. 26).

Lang
FF3. Lang is directed to a semiconductor optical integrated
circuit for wave division multiplexing (Abs.), which separate an input
optical signal into a plurality of optical signal wavelengths using
diffraction gratings (92, 96; Fig. 11), and recombines them using
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vertical diffraction gratings (108, 110; Fig. 11). The system also
provides lasers (24a-24h; Fig. 10), and photodetector diodes (98, 98’;
Fig. 11) (Col. 11 l. 15- Col. 12 l. 53). Lang provides that: “the
multiplexer integrated circuit 20'' includes conventional MESFET or
MOSFET driver circuitry 80 controlling the lasers 24a through 24h in
response to input data (DATA IN)” (col. 11, ll. 20-23).

Glance
FF4. Glance is directed to a large capacity local access network
built along a single optical fiber ring (Abs.; Fig. 1), with each node
having a channel dropping filter (30) (col. 2, ll. 26-34). Each filter
has an active section (50) and a circuit (70), with the active sections
acting as demodulators or modulators, depending on how they are
biased (col. 3, ll. 28-46; Figs. 2-3).

Chang
FF5. Chang is directed to optical networks which use high-
speed optical header generation, detection, and reinsertion to achieve
switching (Abs.). In operation, module (410) taps a small fraction of
the optical signals appearing on paths (401-403) in order to detect
information in each header, and determine the appropriate commands
for switching device (430) after looking up the connection table stored
in module (410) and the circuit switch controller (420) (col. 11, ll. 13-
20; Fig. 4).
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FF6. Chang provides more detailed embodiments for that
illustrated in Fig. 4, with Fig. 10 illustrating a label-switch controller
with interposed demultiplexers, header detectors, and fast memory,
and Fig. 9 illustrating the circuitry of the demultiplexers (col. 18, 21-
65). In turn, more detailed embodiments encompassed by Figs. 9 and
10, are provided in Figs. 12-14 (col. 19, ll. 50-53).
FF7. Fig. 10 of Chang illustrates a label-switch controller,
where an input signal (1001) is demultiplexed (1005) and applied to
header detectors (1010) on a per wavelength basis. Signals of
particular wavelengths are grouped through a fast memory (1021) and
sent to a label switch controller (1031), which is connected to and
controlled by the circuit switch controller (420). The label switch
controller (1031) chooses between control signals from the circuit
switch controller (420) and information from the fast memory (1021)
to supply appropriate control signals to the switching device (430)
(col. 18, 44-65).
FF8. The embodiments illustrated in Figs. 12-14 are: 1) Fig. 12
illustrating circuitry for detecting a header signal and inserting a new
header signal without local injection of light; 2) Fig. 13 illustrating
circuitry for deleting a header signal and inserting a new, original
header signal; and 3) Fig. 14 illustrating circuitry for detecting a
header signal and inserting a new header signal with local injection of
light.
FF9. Fig. 12 illustrates circuitry for detecting a header signal
where the logic circuit (1250) and the optical/electrical (O/E)
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converter (1210) are parts of the header detector (1010), and the
modulator (1296) is separate from the optical switch/add-drop
multiplexer (1207), where the latter operates as switching device
(430) of Fig. 4 (col. 19, l. 53 – col. 21, l. 48).
FF10. Fig. 14 illustrates circuitry for detecting a header signal
where an erbium-doped fiber amplifier (EFDA) 1432 amplifies light
(col. 23, ll. 54-55), a light modulator (1450) that receives a CW burst
(1451) and an electrical signal (1284) to produce a modulated light
signal (1452) (col. 21, ll. 36-39; col. 24, ll. 3-11), and a modulator
(1296) modulates the incoming modulated light by a new sub-carrier
header signal (col. 22, ll. 60-62).
FF11. Chang also discloses that Micromachined Electro
Mechanical Switches (MEMS) are fast optical switches (col. 25, ll.
10-18), but Chang does not disclose where they are used in the
embodiments disclosed therein.

Knox
FF12. Knox is directed to processes for high-density optical
wavelength division multiplexing (WDM) using a single optical
source (Abs.). Knox discloses alternate embodiments where
modulators (27) modulate the WDM signal based on data signals
received from an electronic circuit (28) (col. 7, ll. 1-25; Fig. 2), or a
detector array (44) receives and demodulates signals and provides
them as data input signals to a second circuit (46) (col. 8, ll. 10-46;
Fig. 3). Knox also indicates that modulators and detectors for each
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channel could be included on each circuit (col. 8, l. 66- col. 9, l. 3).
Knox also provides that the nodes may be arranged in ring
configuration (col. 9, ll. 16-18; Fig. 4(a)), with each node (54) acting
to detect or modulate the received WDM signal (col. 9, ll. 51 – col.
10, l. 14).

Ford
FF13. Ford is directed to a fiber optic network where each bit of
a word is carried on a different wavelength, and the wavelengths
multiplexed onto a single optical fiber (Abs.). The differentiation of
the wavelengths is accomplished through free space optics 202 which
includes a diffraction grating and thereafter modulated to apply the
data signals (col. 4, ll. 46-50; Fig. 2).
FF14. Ford discloses that its interconnection switch provides a
parallel network of N optical network interfaces 503, utilizing a single
chip with optoelectronic input and output channels, which can receive
power centrally, be optically passive, or each have integrated light
sources (col. 5, l. 28 – col. 6, l. 27; Figs. 5A-5C).

Boord
FF15. Boord is directed to a tunable receiver for a wavelength
division multiplexing optical apparatus (Abs.), which includes a
grating (27) to spatially separate light of different wavelengths (col. 6,
ll. 43-49), and controller functional blocks (24, 25) used to generate
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signals to modulate the light, using modulator chips (31) to impose the
desired information (col. 8, l. 66 - col. 9, l. 6).

PRINCIPLES OF LAW
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999).
“To render a later invention unpatentable for obviousness, the prior
art must enable a person of ordinary skill in the field to make and use the
later invention.” In re Kumar, 418 F.3d 1361, 1369 (Fed. Cir. 2005) (citing
Beckman Instruments, Inc., v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed.
Cir. 1989) and In re Payne, 606 F.2d 303, 314-15 (CCPA 1979)).
“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
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., 550 U.S. 398, 406
(2007).

ANALYSIS
Appellant provides several arguments and comments under the
heading of “Preliminary Remarks” in the Appeal Brief (App. Br. 8-11),
which we address here. With respect to the Examiner’s consideration of
Appellant’s remarks (App. Br. 8-10), we find that to be immaterial in the
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instant context because we consider Appellant’s remarks herein.
Additionally, with respect to differences in the Examiner’s and
Respondent’s reasons for non-adoption (App. Br. 10-11), we find that to be
inconsequential, since we review the Examiner’s findings herein, as
discussed below. If we indicate that one of the Examiner’s reasons for non-
adoption is correct, we need not consider other rationales provided by the
Examiner or Respondent. In other words, one legitimate reason to not adopt
a rejection, e.g., less than a prima facie case of anticipation or obviousness,
is sufficient.
At Oral Hearing, Respondent pointed to Vanguard Identification Sys.,
Inc. v. Patent of Bank of America Corporation, 2010 WL 1064484 (BPAI
2010) (Oral Hr’g Tr. 17-18), for the proposition that “the appeal stage of the
inter partes reexamination proceeding is not the appropriate time to raise
issues pertaining to rejections that were not proposed or otherwise separately
made by the Examiner” Vanguard at *6. While we acknowledge the
precedent, we have examined all of the assertions made by Appellant about
support in the cited references for the proffered rejections in our
consideration of those rejections below, even when it was apparent that
Appellant’s “point of view” had shifted from the Request to the filed Briefs.
We do this, in part, to respond to Appellant’s assertions that the record is not
“sufficiently clear,” (App. Br. 10), even where Appellant has assumed a
myriad of positions, as discussed below.
Lastly, Appellant repeatedly alleges that if the Examiner found certain
limitations of the claims not taught or suggested, the Examiner was
“acquiescing that [the prior art reference] at least discloses all other
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limitations of the claims” (App. Br. 11). We find such a negative inference
to be incorrect.

ISSUE 1
Tachikawa, Independent Claims 1, 7, 13, and 18
The Examiner supplied several reasons for not adopting this ground of
rejection (ACP 11-13), which Appellant disputes (App. Br. 11-15). The
Examiner did not adopt the anticipation rejection of claims 1, 7, 13, and 18
by Tachikawa because Appellant supplied no “explanation as to how
Tachikawa’s signal processor [52] can simultaneously be: (1) the electronic
processor; (2) the linear array of wavelength detectors; (3) the linear array of
modulators; and (4) the optical amplifiers” (ACP 12). We agree with the
Examiner’s decision.
First, Appellant argues that the signal processors 52 “are compound
elements” (App. Br. 13), which includes “sub-parts, such as O/E converters
53, E/O converters 54, or amplifiers 57” (id.), and thus constitute both a
photodetector and an amplifier. However, as Respondent points out (Resp.
Br. 4), these sub-parts of signal processor 52 are from separate and distinct
embodiments (FF2). In reply, Appellant now appears to suggest that some
elements are there inherently, i.e. “an electronic processor (electronics
within processor 52 performing wavelength conversion)” (Rebut. Br. 3),
whereas in the Request and Appeal Brief, Appellant alleged that the optical
signal processor 85 or the optical amplifier 57 taught the same element
(Request 16, App. Br. 13). Appellant’s position is both inconsistent and
unpersuasive.
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Looking to the independent claims, the following list of disputed
elements is provided in the table below:
Claim “array of wavelength
detectors”
“array of
modulators”
“electronic
processor”
“optical
amplifier”
1    
7   
13   
18  
The above listed, disputed elements are recited in the claims as
discrete and separate elements. Appellant is correct that signal processor 52
can perform the functions of all of the disputed elements (FF2), but no single
embodiment in Tachikawa includes sufficient sub-parts of that signal
processor that satisfy all of the disputed elements of the independent claims.
For example, Fig. 13 of Tachikawa presents signal processors 52 with O/E
and E/O converters (103, 104), but no other part that would be equivalent to
an “optical amplifier” of claims 1 and 7, other than parts already specified.
Similarly, while there no doubt could be “electronics within processor 52
performing wavelength conversion” (Rebut. Br. 3), Appellant has failed to
concretely point to such an element in Tachikawa. While signal processor
52 can be “multi-part” in some embodiments, it does not have sufficient
“parts” to meet all of the elements noted in the above table for the various
independent claims. Tachikawa cannot anticipate the instant independent
claims unless a single embodiment discloses all of the elements therein.
Where a claim provides for two separate elements, those two elements
“logically cannot be one and the same.” Gaus v. Conair Corp., 363 F.3d
1284, 1288 (Fed.Cir.2004). See also Unique Concepts, Inc. v. Brown, 939
F.2d 1558, 1562 (Fed. Cir. 1991)( there can be no literal infringement where
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the patent in suit claims two elements and the accused device has only one
element performing both functions). It is not enough that the prior art
reference discloses part of the claimed invention, which an ordinary artisan
might supplement to make the whole, or that it includes multiple, distinct
teachings that the artisan might somehow combine to achieve the claimed
invention. Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed.
Cir. 2008). We find this analysis to be commensurate with the Examiner’s
rationale for not adopting the rejection over Tachikawa (ACP 12).
Thus, with respect to the Examiner’s decision to not adopt the
rejection of claims 1, 7, 13, and 18 as anticipated by Tachikawa, the
Examiner did not err in that non-adoption.

ISSUE 2
Lang, Independent Claims 1, 7, 13, and 18
The Examiner supplied several reasons for not adopting this ground of
rejection (ACP 16-18), which Appellant disputes (App. Br. 16-17). With
respect to the independent claims, the Examiner finds that Lang fails to teach
the claimed array of modulators, as Appellant has cited the FETs as meeting
that limitation, but the FETs only modulate the laser signals and do not
provide an optical switching operation (ACP 16-18).
Appellant avers that the Request relied upon both the FETs and the
laser they control to meet the limitation, and it is sufficient based on
positions taken by Respondent in litigation (App. Br. 17). However,
Appellant has not pointed out how the FETs and lasers in Lang receive at
least a portion of a second signal or perform an optical switching operation.
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Based on our review, they do not (FF3). In addition, we are not bound by
positions taken by Respondent in infringement litigation, as our standard for
claim interpretation is broadest reasonable interpretation commensurate with
the Specification, and we find that the claims at least require the functions
discussed above. Thus, we agree with the Examiner that the cited elements
of Lang do not teach the array of modulators recited in claims 1, 7, 13, and
18.
Thus, with respect to the Examiner’s decision to not adopt the
rejection of claims 1, 7, 13, and 18 as anticipated by Lang, the Examiner did
not err in that non-adoption.

ISSUE 3
Glance, Independent Claims 1, 13, and 18
The Examiner supplied several reasons for not adopting this ground of
rejection (ACP 20-24), which Appellant disputes (App. Br. 18-20). In the
original Request, Appellant found that Glance disclosed circuit 70 which
was equivalent to the “electronic processor” recited in claims 1, 13, and 18
(Request 23), but the Examiner found that Glance fails to disclose the same
because the circuit 70 does not provide the functions recited in the claims
(ACP 20-24). In claims 1 and 13, the “electronic processor” generates “a
second plurality of optical signal wavelengths,” and in claim 18 receives “at
least a portion of the second signal part,” which is an optical signal. Circuit
70 of Glance does not provide either of those functions (FF4).
Appellant argues that circuit 70 is “involved in both reception and
transmission of optical signals,” which is true, but it can only accomplish
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those functions through active connection 50 (FF4). The active connection
50 can receive and modulate light signals, and does so through the
coordination of circuit 70. However, based on Appellant’s rejection
(Request 22-23), the “linear array of modulators,” the “linear array of
wavelength detectors,” and now the “electronic processor,” all are alleged to
be anticipated by active section 50 of Glance, at least in part. In order to
anticipate claims 1, 13, and 18, Glance must teach, implicitly or inherently,
all of the elements of those claims. Where a claim provides for two separate
elements, those two elements “logically cannot be one and the same.” Gaus
v. Conair Corp., 363 F.3d at 1288. See also Unique Concepts, Inc., 939 at
1562 ( there can be no literal infringement where the patent in suit claims
two elements and the accused device has only one element performing both
functions). Given that a single element of Glance is alleged to teach
multiple elements of the claims, we do not find that Glance can properly
anticipate those claims. As such, there was no error in the Examiner’s
decision to not adopt an anticipation rejection of claims 1, 13, and 18 by
Glance.

Glance, Independent Claim 7
In the original Request, Appellant found support for the “optical
amplifier” of claim 7 in the amplifier filter 30 of Glance (Request 23).
However, as the Examiner points out (ACP 21-22), the filter 30 of Glance
also includes the rest of the elements thereof that are said to be
corresponding to the other limitations of claim 7 (Request 22-23). In other
words, the entire filter cannot be one and all of the elements of claim 7. In
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their Brief, Appellant now avers that the active section 50 of Glance can act
as an amplifier with a gain varied by a biasing current (App. Br. 18). We
confirm that element 50 in Glance can provide amplification of light (FF4),
but that raises a different issue from Appellant’s proffered rejection.
Based on Appellant’s rejection (Request 22-23), the “linear array of
modulators,” the “linear array of wavelength detectors,” and now the
“optical amplifier,” all recited in claim 7, are all alleged to be anticipated by
active section 50 of Glance. While Appellant is correct that nothing in claim
7 requires the wavelength detectors and the modulators to operate at the
same time (App. Br. 19), it is difficult to see how Glance can teach an
“optical processing system,” per claim 7, without disclosing all of the
separate elements of that claim. As such, there was no error in the
Examiner’s decision to not adopt an anticipation rejection of claim 7 by
Glance.
Thus, with respect to the Examiner’s decision to not adopt the
rejection of claims 1, 7, 13, and 18 as anticipated by Glance, the Examiner
did not err in that non-adoption.

ISSUE 4
Thompson, Independent Claim 18
The Examiner supplied several reasons for not adopting this ground of
rejection (ACP 29), which Appellant disputes (App. Br. 21-22). The
Examiner did not adopt this rejection because the Examiner found that the
laser transmitter (98, Fig. 3), relied upon by Appellant, does not teach the
claimed “electronic processor” because the laser transmitter “does not
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receive any signals at all” (ACP 29). In response, Appellant argues that the
system in Thompson is disclosed as being used in a SONET ring, where the
nodes on that ring necessarily receive and transmit information (App. Br.
21). Based on that, Appellant finds that Thompson inherently discloses
modulation circuitry which is operable to receive signals from other nodes
on the SONET ring. We do not agree.
As argued by Respondent, inherent features must necessarily flow
from the disclosure, and it is not clear how this would be achieved (Resp. Br.
10). Appellant’s argument addresses the multiple SPW modulators in
Thompson, Figs. 1-6, and how those modulators all receive
INFORMATION 1-N to drive those modulators (Rebut. Br. 7), but we are
left to try and make the pieces fit. All of those embodiments show at least a
light source, modulators and information inputs, but the “electronic
processor” of claim 18 needs to receive “at least a portion of the second
signal part” and a “control signal voltage.” Appellant may be correct that
receipt and modulated transmission would occur in the SONET ring
embodiment, but Thompson does not make it clear that any “electronic
processor,” providing that functionality, would do so as specified for that
element in claim 18. While arguably it would be obvious to provide such
functionality in a system of Thompson, Thompson is proposed to be applied
under § 102, such that obvious variations are not considered.
Thus, with respect to the Examiner’s decision to not adopt the
rejection of claim 18 as anticipated by Thompson, the Examiner did not err
in that non-adoption.

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ISSUE 5
Chang and Tachikawa, Independent Claims 1 and 13
The Examiner supplied several reasons for not adopting this ground of
rejection (ACP 33-38), which Appellant disputes (App. Br. 23-25).
Appellant argues that Chang should be “viewed in its entirety” (App. Br.
24), and Appellant now finds support for the “linear array of wavelength
detectors,” recited in claim 1 and 13, in Figs. 10 and 12 of Chang (id.). We
note, however, that Chang also makes clear that embodiments illustrated in
Figs. 10 and 12 are separate embodiments (FF5-6), and not merely a
“higher-level system diagram,” as argued by Appellant (App. Br. 24).
Nonetheless, Appellant now argues that the optical header detectors, from
Fig. 10 of Chang, are equivalent to the claimed “linear array of wavelength
detectors,” and includes a photodetector (id.). While we concur that the
optical header detectors would necessarily have photodetectors in both
embodiments illustrated in Figs. 10 and 12, they do not fulfill the
requirements of the “linear array of wavelength detectors” recited in claims
1 and 13.
Claim 1 recites, in part, that the “linear array of wavelength detectors
. . . convert the at least some of the first plurality of optical signal
wavelengths into one or more electrical signals,” with claim 13 reciting a
similar limitation. In turn, in both claims, the “electronic processor [is]
operable to receive at least a portion of the one or more electrical signals.”
In other words, any element in Chang that teaches the “electronic processor”
must receive electrical signals from some element in Chang equivalent to the
“linear array of wavelength detectors.” As Respondent argues (Resp. Br.
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14), no element of Chang meets the requirements of claims 1 and 13. We
agree.
Appellant argues that the “electronic processor” of claims 1 and 13 is
taught in Chang through its disclosure of the circuit switch controller (420)
or logic circuit (1250) (Rebut. Br. 7-8). However, the circuit switch
controller (420) does not receive signals from the optical header detectors
(FF 5). As well, logic circuit (1250) is part of the header detector (1010)
(FF9), such that it cannot receive signals from the header detector. As such,
Chang cannot teach the above-cited elements of claims 1 and 13. We find
that Tachikawa does not cure this deficiency, and thus the Examiner did not
err in not adopting the rejection of claim 1 and 13 over Chang and
Tachikawa.

Chang and Tachikawa, Independent Claim 7
Claim 7 provides, in part, “an optical amplifier operable to receive the
optical signal from an optical communication link,” and Appellant provides,
in the Request, that the element is taught by an erbium-doped fiber amplifier
(EFDA) 1432 in Chang (Request, App’x H, p. 11). Based on this, all of the
elements of claim 7 must be found in Chang’s embodiment disclosed in Fig.
14 (FF10). Chang also makes clear that embodiments illustrated in Figs. 4,
10, and 12-14 are all separate embodiments (FF5-6), and not merely a
“higher-level system diagram,” as argued by Appellant (App. Br. 24).
Claim 7 recites, in part, “an optical switching array comprising a
linear array of modulators . . ., at least some of the modulators operable to
perform an optical switching operation on at least some of the plurality of
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optical signal wavelengths.” Appellant’s request relies upon modulators
(1296), which the Examiner finds receive electrical and not optical signals
(ACP 35). We find the Examiner’s specific finding to be incorrect (FF10),
but still find that the modulators (1296) are not part of the optical switching
device disclosed by Chang. As Respondent points out (Resp. Br. 15), the
modulators (1296) are not part of the optical switch (1207) or switching
device (430) (FF5, 9, 10), which accomplish the optical switching. As such,
the modulators (1296) cannot perform the function prescribed in claim 7. In
addition, the MEMS in Chang, also relied upon, in the alternative, to teach
the linear array of modulators (Request, App’x H, p. 9), are not disclosed to
be specifically used in any embodiment disclosed therein (FF11). As such,
Chang cannot teach the above-cited element of claim 7. We find that
Tachikawa does not cure this deficiency, and thus the Examiner did not err
in not adopting the rejection of claim 7 over Chang and Tachikawa.

Chang and Tachikawa, Independent Claim 18
As opposed to claim 7, claim 18 need not be taught by a single
embodiment of Chang. Nonetheless, claim 18 also recites the “optical
switching array” limitation discussed above. As discussed above, we do not
find that the modulators (1296), again relied upon to teach this element,
perform the switching function specified in claim 18. In addition, the
MEMS in Chang, also relied upon to teach this element (Request, App’x H,
p. 22), are not disclosed to be used in any specific embodiment disclosed
therein (FF11). As such, Chang cannot teach the above-cited element of
claim 18. We find that Tachikawa does not cure this deficiency, and thus
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the Examiner did not err in not adopting the rejection of claim 18 over
Chang and Tachikawa.
Thus, with respect to the Examiner’s decision to not adopt the
rejection of claims 1, 7, 13, and 18 as being obvious over Chang and
Tachikawa, the Examiner did not err in that non-adoption.

ISSUE 6
Knox, Independent Claims 1, 13, and 18
The Examiner supplied several reasons for not adopting this ground of
rejection (ACP 39-42), which Appellant disputes (App. Br. 26-27). In part,
the Examiner found that Appellant sought to rely on circuit 28, from Fig. 2
of Knox, to teach the “electronic processor” recited in the independent
claims 1, 13, and 18, but that the circuit 28 “receives nothing at all,” and
instead supplies the data signals (ACP 41). In a shift from the position
assumed in the Request (Request 33), Appellant argues that “the Examiner
failed to consider Knox in its entirety” (App. Br. 26).
Appellant now specifies, per Fig. 5(a) of Knox, that each node can
detect or modulate the separated signals, and each of the modulators/
detectors “is in the same signaling loop” (App. Br. 26-27). Appellant
continues that “photodetectors necessarily pass the received electrical
information to the controller, such as controller 28, which controls the
modulators” (App. Br. 27). Respondent finds this explanation to be
“convoluted” (Resp. Br. 16), but we find it to be understandable, but
unpersuasive.
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Knox clearly contemplates having nodes with both modulators and
detectors (FF12), but makes no mention of somehow combining circuits 28
and 46. There is disclosure that one circuit could receive, while the other
sends, and vice versa, but there is nothing to explicitly suggest that any node
containing both modulators and detectors would not have both circuits as
well. In order to meet the requirements of the “electronic processor” of
claims 1, 13, and 18, only a combination of those circuits could receive a
first signal and produce another based on the first. While combining the
circuits could be obvious, Knox is proposed to be applied under § 102, such
that obvious variations are not considered. As such, we generally agree with
the Examiner that the only way to meet the “electronic processor”
limitations of the claims is to combine embodiments (ACP 41).

Knox, Independent Claim 7
Appellant’s Briefs do not explicitly address the Examiner’s reasons
for not adopting the anticipation rejection of claim 7 by Knox (ACP 40-41),
except to argue that Knox’s alleged lack of disclosure of the claimed “linear
array of modulators” was addressed in Appellant’s Comments (filed Oct. 4,
2007) and the original Request (App. Br. 27, Rebut. Br. 8-9). While
Appellant addressed the “linear array of modulators” limitation of claim 7 in
the Request, and made no mention of the same in their Comments, we do not
find either responsive to the deficiencies of Knox found by the Examiner
(ACP 40-41), as applied to claim 7. Thus, we find Appellant has waived any
arguments traversing the Examiner’s non-adoption per 37 C.F.R. §
41.37(c)(1)(vii).
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Thus, with respect to the Examiner’s decision to not adopt the
rejection of claims 1, 7, 13, and 18 as anticipated by Knox, the Examiner did
not err in that non-adoption.

ISSUE 7
Ford and Tachikawa, Independent Claims 1, 7, 13, and 18
The Examiner supplied several reasons for not adopting this ground of
rejection (ACP 44-47), which Appellant disputes (App. Br. 28-31). With
respect to claims 1, 7, and 13, the Examiner finds that Ford fails to teach or
suggest a “waveguide-based router” (ACP 44-46), because Ford only
discloses a diffraction grating, which can separate wavelengths but would
have not been understood by ordinary skilled artisans to be the same as a
“waveguide-based router.” Appellant argues that the Specification of the
'347 Patent only refers to a “wavelength grating router,” and that, under the
broadest reasonable interpretation, “any diffraction grating that splits the
incoming light beam into a plurality of wavelengths and routes these
wavelengths to wavelength detectors performs the ‘routing’ function” (App.
Br. 29). We do not agree.
Appellant has not persuasively shown that a “wavelength grating
router,” disclosed in the Specification, is the definition of the claim
limitation “waveguide-based router.” Additionally, even if we accept beam
splitting function of the “wavelength grating router” provided in the
Specification, it does not mean that the claim limitation “waveguide-based
router” would be limited to that function. The function of a “waveguide-
based router” recited in the claims may be greater than the function outlined
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in the Specification because ordinary skilled artisans would understand its
additional functions. We find that ordinary skilled artisans would require
more of a “waveguide-based router” than merely separating wavelengths and
delivering those to detectors. We do not find the possibly limited definition
of one element in the Specification should trump what one of ordinary skill
in the art would have considered to be covered by a different, claimed
element.
Additionally, as Respondent provides: “[t]he fact that gratings can be
implemented in a wave-guide based router does not support the proposition
that the free space grating disclosed by Ford is therefore a waveguide-based
router as claimed.” (Resp. Br. 17). We further agree with the Examiner that
one of ordinary skill in the art would not consider free space optics to be
waveguides (ACP 44; FF13).
We also do not find persuasive that an alternate Examiner, in a related
proceeding, found a grating to be sufficient to meet the limitation, because
that finding was withdrawn by the instant Examiner (Rebut. Br. 9). Our
evaluation in the instant case requires us to determine if the instant Examiner
erred in adopting the instant findings, rather than finding a consensus of
Examiners. We additionally agree with the Examiner that Tachikawa fails
to cure the deficiencies of Ford (ACP 44). As such, with respect to claims 1,
7, and 13, we agree with the Examiner.
With respect to claim 18, the Examiner found that Ford does not teach
an electronic processor operable to receive one or more electrical signals
because element 503 of Ford only receives optical signals (ACP 46-47).
Appellant argues that claim 18 does not require the processor to receive
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electrical signals, only “a second signal part,” and that Ford does disclose an
electrical processor that receives electrical signals (App. Br. 30). We do not
agree.
As Respondent points out, claim 18 also requires that the function of
the electronic processor be based at least in part on a control voltage (Resp.
Br. 18), where Ford does not disclose the same. Appellant argues that the
“control voltage” in claim 18 is not tied to any other claim element, and
given the breadth of the term, element 503 of Ford necessarily performs
processing operations based on a control voltage (Rebut. Br. 9). However,
we do not find that to be the case based on the disclosure of Ford. While the
Examiner may be incorrect that the “second signal part,” in claim 18, is an
electrical signal, the Examiner is correct that Ford only discloses as
connections to element 503 to be optical fibers (ACP 47). And while Ford
provides that the optical network interface (element 503) may comprise a
single chip with optoelectronic input and output channels (FF14), Appellant
has not pointed to any equivalent to the claimed “control signal voltage.”
While Appellant would apparently argue that such a control would be
inherent (Rebut. Br. 9), the differing embodiments disclosed do not confirm
the same (FF14). As such, with respect to claim 18, we agree with the
Examiner.
Thus, with respect to the Examiner’s decision to not adopt the
rejection of claims 1, 7, 13, and 18 as being obvious over Ford and
Tachikawa, the Examiner did not err in that non-adoption.

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ISSUE 8
Boord and Tachikawa, Independent Claims 1, 7, 13, and 18
The Examiner supplied several reasons for not adopting this ground of
rejection (ACP 48-51), which Appellant disputes (App. Br. 31-33). With
respect to claims 1, 7, and 13, the Examiner finds that Boord fails to teach or
suggest a “waveguide-based router” (ACP 48-50), because Boord only
discloses a diffraction grating (FF15), similar to the findings made for Ford,
discussed supra. Appellant similarly argues them to be equivalent (App. Br.
31-32), but we do not find this argument any more persuasive with respect to
Boord, for the reasons discussed supra.
Also similarly, with respect to claim 18, Appellant argues that broad
readings of an “electric processor” and “control voltage” allow for those
elements to be found in Boord (Rebut. Br. 10). However, the controller
functional blocks of Boord (FF15), argued as being equivalent to the
claimed “electronic processor” (Request 38), cannot be “operable to receive
at least a portion of the second signal,” electrical or not, per claim 18.
Thus, with respect to the Examiner’s decision to not adopt the
rejection of claims 1, 7, 13, and 18 as being obvious over Boord and
Tachikawa, the Examiner did not err in that non-adoption.

CONCLUSIONS
We conclude that the Examiner did not err in not adopting 1) he
rejection of claims 1-3, 7-9, 13-16, and 18-20 under 35 U.S.C. § 102(b) as
being anticipated by Tachikawa; 2) the rejection of claims 1-4, 7-10, and 13-
20 under 35 U.S.C. § 102(b) as being anticipated by Lang; 3) the rejection of
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claims 1, 2, 4, 7-10, and 13-20 under 35 U.S.C. § 102(b) as being anticipated
by Glance; 4) the rejection of claims 18-20 under 35 U.S.C. § 102(e) as
being anticipated by Thompson; 5) the rejection of claims 1-3, 5-9, 11-16,
and 18-20 under 35 U.S.C. § 103(a) as being unpatentable over Chang and
Tachikawa; 6) the rejection of claims 1, 2, 4, 7-10, and 13-20 under 35
U.S.C. § 102(b) as being anticipated by Knox; 7) the rejection of claims 1-4,
7-10, and 13-20 under 35 U.S.C. § 103(a) as being unpatentable over Ford
and Tachikawa; and 8) the rejection of claims 1-3, 5, 7-9, 11, 13-16, and 18-
20 under 35 U.S.C. § 103(a) as being unpatentable over Boord and
Tachikawa.

DECISION
The Examiner’s decision to not adopt the proffered rejections of
claims 1-20 is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED

ack

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BROOKS KUSHMAN P.C.
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