10953043 (B.P.A.I. Oct. 21, 2009)

Ex Parte Flanders et al

Board of Patent Appeals and InterferencesOct 21, 2009

10953043 (B.P.A.I. Oct. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DALE C. FLANDERS, WALID A. ATIA, and MARK E. KUZNETSOV ____________ Appeal 2009-012686 Application 10/953,043 Technology Center 2800 ____________ Decided: October 21, 2009 ____________ Before JEFFREY T. SMITH, KAREN M. HASTINGS, and, JEFFREY B. ROBERTSON, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1, 3-7 and 10-14. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND Appeal 2009-012686 Application 10/953,043 2 Claim 1 is illustrative of Appellants’ invention: 1. A tunable laser comprising: an [sic] semiconductor optical amplifier in a laser cavity; and a tilt isolated microelectromechanical system Fabry-Perot tunable filter in which an angle between an optical axis of the cavity and the Fabry-Perot tunable filter is between 1 and 2 degrees. Appellants appeal the following rejection: Claims 1, 3-7, and 10-14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combined prior art of Yokoyama1, Tayebati2, and Scobey3. DISPOSITIVE ISSUE The dispositive issue on appeal is as follows: have Appellants shown the Examiner reversibly erred in determining that optimizing the claimed angle to “between 1 and 2 degrees” as recited in independent claim 1, or “between 1 and 3 degrees” as recited in independent claim 10, would have been prima facie obvious? We answer this question in the negative. PRINCIPLE OF LAW The discovery of an optimum value of a variable in a known process or product is usually a matter of obviousness for one of ordinary skill in the art. Cf. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368-69 (Fed. Cir. 2007). This is the kind of situation that requires an Appellant to show secondary considerations such as unexpected results or criticality to overcome the 1 US 6,698,941 B2, issued March 2, 2004 2 US 6,301,274 B1, issued October 9, 2001 3 US 6,115,401, issued September 5, 2000 Appeal 2009-012686 Application 10/953,043 3 prima facie case. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980); see also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Appellants’ attorney’s arguments do not take the place of evidence in the record. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). FACTUAL FINDINGS We rely on and adopt the Examiner’s factual findings stated in the Answer (Ans. 3-4) and Final Office Action (2-4), as well as the Examiner’s detailed findings of fact in response to the Appeal Brief as set out on pages 4-6 of the Answer in the “Response to Argument” section, as our own. No Reply Brief has been filed. ANALYSIS The Examiner’s findings, which we adopt as our own, reasonably establishes that the combined prior art suggests the obviousness of the claimed angle range. Indeed, Appellants agree that the combination of Yokoyama and Tayebati renders obvious the use of a microelectrical mechanical (MEMS) tunable filter, tilted at an angle to the optical axis (Br. 3, 4). Appellants also agree that Tayebati teaches tilting the filter at an angle, which is depicted as about 20 degrees in Fig. 1, according to Appellants (Br. 4). Appellants further agree that Scobey’s teaches thin film filter angles at between 1 and 5 degrees (Ans. 5). Appellants’ main contention is that these combined teachings do not establish the obviousness of the claimed ranges of “between 1 and 2 degrees” for claim 1, and “between 1 and 3 degrees” for claim 10. Specifically, Appellants argue that the Examiner’s position that the claimed range would have been “optimization” of the angle of the combined prior art teachings is insufficient to establish obviousness (Br. 5). Appellants also Appeal 2009-012686 Application 10/953,043 4 contend the teachings of Scobey are in the context of “a thin film filter” (Br. 5), rather than in the context of a MEMS Fabrey-Perot filter. We disagree that these contentions are persuasive of reversible error for the reasons well stated by the Examiner in the Answer (Ans. 3-6). Furthermore, it is well established that the discovery of an optimum value of a variable in a known process or product is usually a matter of obviousness for one of ordinary skill in the art. Cf. Pfizer, Inc. v. Apotex, Inc., 480 F.3d at 1368-69. Where the Examiner establishes a reasonable basis to conclude that the claimed invention would have been obvious, as here, (that is, based on optimizing the filter angle) the burden shifts to the Appellants to rebut the prima facie case by providing evidence of unexpected results or a showing that the prior art teaches away from the claimed invention in any material respect. See In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Appellants have not directed us to any credible technical reasoning or evidence sufficient to refute the Examiner’s reasonable position of obviousness for the claimed angle range. Furthermore, Appellants have not contended that the claimed range provides unexpected results (see generally Br.). Accordingly, Appellants have not shown reversible error in the Examiner’s determination that it would have been obvious to optimize the angle as claimed in either independent claim 1 or 10. Appellants make no additional arguments regarding the rejection of the dependent claims except for their contention that the prior art does not Appeal 2009-012686 Application 10/953,043 5 show a fiber lens as recited in claims 5 and 12 (Br. 6)4. However, as the Examiner points out, Yokoyama teaches such a lens (Ans. 6). The Appellants have not refuted this finding. Accordingly, Appellants have not shown error in the Examiner’s factual findings and obviousness analysis of any of the claims on appeal. CONCLUSION We affirm the Examiner’s § 103(a) rejection of all the claims on appeal. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). ORDER AFFIRMED PL Initial: sld HOUSTON ELISEEVA LLP 4 MILITIA DRIVE SUITE 4 LEXINGTON, MA 02421 4 As pointed out by the Examiner, claims 9 and 16 are not on appeal (see Br. 2).