Ex Parte 6415082 et al

Patent Trials and Appeals Board

Jan 16, 2019

95001175 - (D) (P.T.A.B. Jan. 16, 2019)

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.
95/001,175 04/24/2009 6415082 5145-CIRREX-RI175 1652
27571 7590 01/16/2019
Ascenda Law Group, PC
333 W San Carlos St.
Suite 200
San Jose, CA 95110
EXAMINER
MENEFEE, JAMES A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/16/2019 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 PATENT TRIAL AND APPEAL BOARD
____________

CISCO SYSTEMS INC.,
Requester,

v.

CIRREX SYSTEMS, LLC,
Patent Owner.
____________

Appeal 2018-007446
Reexamination Control 95/001,175
Patent 6,415,082 B1
Technology Center 3900
____________

Before KEVIN F. TURNER, JONI Y. CHANG, and
THOMAS L. GIANNETTI, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION
In an earlier Decision on Remand, Appeal No. 2012-006121, mailed
February 12, 2018 (“Decision”), we addressed the case on remand from the
United States Court of Appeals for the Federal Circuit (“Federal Circuit”).
See Cisco Systems, Inc. v. Cirrex Systems, LLC, 856 F.3d 997 (Fed. Cir.
2017). The Federal Circuit determined that all claims on appeal were
unpatentable for lack of proper written description support, affirming the
rejections of claims 38–41, 43–47, 49, 50, 58–61, 75, 84–87, 89–93, 95, 96,
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104–107, and 121, and reversing the patentability findings with respect to
claims 56, 57, 76, 102, and 103. Id. at 1011. In our Decision on Remand,
we determined that claims 56, 57, 76, 102, and 103 are unpatentable as
lacking proper written description support under 35 U.S.C. § 112, first
paragraph, consistent with the Federal Circuit’s directive, and denominated
that rejection as a new ground of rejection under 37 C.F.R. § 41.77(a).
Decision 8.
Thereafter, Patent Owner sought to reopen prosecution, filing a
Request to Reopen Prosecution (dated March 12, 2018) (“Request”) that
proposed amendments of the subject claims. We granted the Request, in
part, determining that proposed amendments to claims 56, 57, 76, 102, and
103, “appear to be responsive to the new ground of rejection,” but that
Patent Owner failed to present any support of arguments that the newly
proposed claims, i.e., claims 125–129, are necessary to overcome the new
ground of rejection. “Order Remanding Inter Partes Reexamination Under
37 C.F.R. § 41.77(d) to the Examiner,” dated May 25, 2018 (“Order”), 2–3.
Thereafter, we remanded to the Examiner to provide a determination
whether the new ground of rejection enumerated in the Decision dated
February 12, 2018, is maintained or has been overcome under 37 C.F.R.
§ 41.77(d), and whether any new grounds of rejection apply to the pending
claims (i.e., claims 56, 57, 76, 102, and 103). Order 3.
In accordance with 37 C.F.R. § 41.77(e), the Examiner determined
“that the rejection will be maintained.” “Examiner's Determination Under
37 C.F.R. § 41.77(d),” dated June 6, 2018 (“Examiner's Determination”), 3.
The Examiner determined that each amended claim requires “attenuation
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material within the optical paths of the PLC equalizing signal strength across
a spectral range of channels,” which is supported, generally, by the
disclosure of subject patent, but that the same disclosure does not support the
amended claim in combination with the features of their associated
independent claims. Id. at 3–4.
Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to
the Board so that we may reconsider the matter and issue a new decision.
Patent Owner argues that “[s]upport for the foregoing amendments . . .
is found, in particular, in Figure 13 and in Column 14, line 58 through
Column 15, line 28 of the specification.” Request 7. With respect to claim
56, Patent Owner argues, for example, that, as amended, the claim
recites a cross-connect waveguide system operative to equalize
signal strength across a spectral range of channels by applying
attenuation to each channel utilizing attenuation material within
optical paths of the planar lightguide circuit. This language finds
direct support in the specification of the ’082 patent, which, as
noted above, indicates that appropriate attenuation can be applied
to each channel to equalize the signal strength across a spectral
range of channels. Furthermore, the specification states the
attenuation material can be included within the zigzag-depicted
optical path within the planar lightguide circuit (PLC).
Id. at 9.
As the Examiner notes, however, each of independent claims 1, 26,
31, no longer pending, recites a planar lightguide circuit (PLC) having one
or more optical paths and a diverting element for feeding certain light
energies into or away from the PLC. Examiner's Determination 4. As such,
each independent claim is drawn to the diverting element embodiment in the
’082 patent, having a diverting element 1000, such as the embodiment
illustrated in Figure 10. Id. The Examiner contrasts this embodiment with
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the embodiment illustrated in Figure 13, which has no diverting element, and
upon which Patent Owner ascribes written description support. Id. at 5. The
Examiner also points out that the claimed diverting element for feeding
certain light energies into or away from the PLC is not illustrated or
described as being part of the Figure 13 embodiment, and the ’082 patent
provides for no embodiments “including both diverting elements such as
1000 and attenuation elements such as 1300 in a single system as the claims
require.” Id.
We are persuaded by the Examiner’s analysis that amended claims 56,
57, 76, 102, and 103 do not have written description support in the
disclosure of the ’082 patent. Although the embodiments of Figures 10 and
13 are recited in the same disclosure and could conceivably be combined,
per the amended claim’s recitations, written description support cannot be
derived from obvious variants of its disclosure.
The question is not whether a claimed invention is an obvious
variant of that which is disclosed in the specification. Rather, a
prior application itself must describe an invention, and do so in
sufficient detail that one skilled in the art can clearly conclude
that the inventor invented the claimed invention as of the filing
date sought.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Similarly, in Hyatt v. Dudas, the Federal Circuit explained that the examiner
had sufficiently established a prima facie case of lack of written description
by explicitly explaining that “while each element may be individually
described in the specification, the deficiency [is] the lack of adequate
description of their combination.” 492 F.3d 1365, 1371 (Fed. Cir. 2007).
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As such, we concur with the Examiner’s analysis and determine that
claims 56, 57, 76, 102, and 103 as amended do not overcome the new
grounds of rejection under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA),
first paragraph, as failing to comply with the written description
requirement. Pursuant to 37 C.F.R. § 41.77(f), this decision is deemed to
incorporate our earlier decisions, except as indicated.
DECISION
Claims 56, 57, 76, 102, and 103 remain rejected under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply
with the written description requirement.
In accordance with 37 C.F.R. § 41.79(a)(4), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he new decision of the Board under § 41.77(f).” A request
for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments
in opposition to the request and additional requests for rehearing must be in
accordance with 37 C.F.R. § 41.79(c)−(d), respectively. Under 37 C.F.R.
§ 41.79(e), the times for requesting rehearing under paragraph (a) of this
section, for requesting further rehearing under paragraph (c) of this section,
and for submitting comments under paragraph (b) of this section may not be
extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after
November 2, 2002 may not be taken “until all parties’ rights to request
rehearing have been exhausted, at which time the decision of the Board is
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final and appealable by any party to the appeal to the Board.” 37 C.F.R.
§ 41.81. See also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.304, 1.956, and 41.79(e). See 37
C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this Decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

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Reexamination Control 95/001,175
Patent 6,415,082 B1

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Patent Owner:
TAREK N. FAHMI
Ascenda Law Group, PC
333 W. San Carlos St.
Suite 200
San Jose, CA 95110

Third Party Requester:
DAVID L. MCCOMBS
Haynes and Boone, LLP, IP Section
2323 Victory Avenue, Suite 700
Dallas, TX 75219