throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`U.S. Patent of Glenn Clarke et al.
`
`In Re:
`
`Patent No.:
`
`7,068,430
`
`Application No.:
`
`10/840,134
`
`Title:
`
`METHOD OF MAKING HIGHLY
`DISCRIMINATING OPTICAL EDGE FILTERS AND
`RESULTING PRODUCTS
`
`Issue Date:
`
`Filing Date:
`
`June 27, 2006
`
`May 6, 2004
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Declaration of Mr. Uwe Schallenberg in Support of Petition
`for Inter Partes Review of U.S. Patent No. 7,068,430
`
`
`I, Uwe Schallenberg, declare as follows:
`
`
`1.
`
`I have been retained by the firm of Ballard Spahr LLP, who
`
`represents Petitioner Edmund Optics, Inc. (“Edmund”), to provide expert
`
`testimony in support of Edmund’s Petition for Inter Partes Review of claims 1,
`
`18, 21, 26-27, 30, and 34-41 of U.S. Patent No. 7,068,430 (the “Petition”).
`
`
`
`Edmund Optics(cid:15)(cid:3)(cid:44)(cid:81)(cid:70)(cid:17)(cid:3)
`(cid:40)(cid:91)(cid:75)(cid:76)(cid:69)(cid:76)(cid:87)(cid:3)(cid:20)(cid:19)18
`
`0001
`
`

`
`
`
`2.
`
`I understand that this proceeding involves U.S. Patent No.
`
`7,068,430 (“the ‘430 Patent”) entitled “METHOD OF MAKING HIGHLY
`
`DISCRIMINATING OPTICAL EDGE FILTERS AND RESULTING
`
`PRODUCTS.” I also understand that the ‘430 Patent issued on June 27, 2006
`
`from U.S. Application No. 10/840,134, filed May 6, 2004. The ‘430 Patent
`
`claims the benefit of U.S. Provisional Application No. 60/468,245, filed May 6,
`
`2003 (“Earliest Filing Date”).
`
`3.
`
`I have been asked to provide my opinion regarding whether one of
`
`ordinary skill in the art at the time of the Earliest Filing Date would understand
`
`that certain prior art references, alone or in combination, disclose or teach each
`
`of the elements and limitations recited in claims 1, 18, 21, 26-27, 30, and 34-41
`
`of the ‘430 Patent. I have also been asked to provide my opinion regarding
`
`whether one of ordinary skill in the art would have had a rationale to modify or
`
`combine certain prior art references.
`
`4.
`
`In forming my opinion, I have relied on my own experience and
`
`knowledge and my review of the ‘430 Patent and the prior art references
`
`identified in this declaration.
`
`
`
`2
`
`0002
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`

`
`
`
`QUALIFICATIONS AND COMPENSATION
`
`5.
`
`I am currently employed at SCHALLENBERG OPTICS,
`
`Consulting and Training in Thin-Film Optics, under the German Tax ID
`
`number DE 283193744.
`
`6.
`
`I received a diploma in physics from the Friedrich Schiller
`
`University Jena (equiv. to M.Sc.).
`
`7.
`
`I have held the following professional appointments at the
`
`following places:
`
`(i)
`
`2010 – 2012 : Optics Balzers Jena GmbH (former mso jena), Head
`
`R&D
`
`(ii)
`
`1998 – 2010: mso jena Mikroschichtoptik GmbH, Founder and
`
`one of the managing directors
`
`(iii) 1992 – 1998: Fraunhofer Institute IOF Jena, Scientific assistant at
`
`the thin-film department
`
`(iv) 1989 – 1991 : Commercial College Jena, Tutor in computer
`
`science and accounting
`
`(v)
`
`1977 – 1988 : Carl Zeiss Jena, Scientific assistant at the thin-film
`
`laboratory
`
`
`
`3
`
`0003
`
`

`
`
`
`8.
`
`For my work related to this Inter Partes Review, I am being
`
`compensated at the rate of $170 per hour.
`
`9.
`
`I have no financial interest in this proceeding, and my
`
`compensation is unaffected by the content of my testimony or the outcome of
`
`this proceeding.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`10.
`
`I understand that “one of ordinary skill in the art” is not a specific,
`
`real individual, but rather a hypothetical individual who is presumed to have
`
`known the relevant art at the time of the invention. In defining “one of ordinary
`
`skill in the art,” I have been advised to consider factors such as the educational
`
`level and years of experience not only of the person or persons who have
`
`developed the invention that is the subject of the case, but also others working
`
`in the pertinent art at the time of the invention; the types of problems
`
`encountered in the art; the teachings of the prior art; patents and publications of
`
`other persons or companies; and the sophistication of the technology.
`
`11.
`
`I have assessed the level of ordinary skill in the art based upon my
`
`review of the prior art. Such a level would comprise a sufficient knowledge of
`
`
`
`4
`
`0004
`
`

`
`
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`basic physics and interference optics to appreciate and understand the principles
`
`of optical coatings.
`
`12.
`
`In my opinion, the relevant prior art to the ‘430 Patent can be
`
`found in the fields of thin-film optics and their application for Raman
`
`spectroscopy and fluorescence microscopy. As of the ‘430 Patent’s Earliest
`
`Filing Date, one of ordinary skill in the art would have typically been a graduate
`
`with a bachelor degree in physics, optical engineering, or electrical engineering
`
`with experience in thin-film optics.
`
`PRIOR ART REFERENCES CONSIDERED IN THIS DECLARATION
`
`13.
`
`I have reviewed and I understand at least the following:
`
`- Horst Schwiecker et al., U.S. Pat. No. 4,207,835 (June 17, 1980)
`
`(“Schwiecker,” Exhibit 1002);
`
`- K. Starke et al., “Rapid Prototyping of Optical Thin Film Filters,” OPTICAL
`
`AND INFRARED THIN FILMS, Proceedings of SPIE Vol. 4094, 83-92 (2000)
`
`(“Starke,” Exhibit 1003);
`
`- Traci R. Jensen et al., “Advances in Filter Technology for Multiphoton
`
`Microscopy,” MULTIPHOTON MICROSCOPY IN THE BIOMEDICAL SCIENCES,
`
`Proceedings of SPIE Vol. 4262, 48-51 (“Jensen,” Exhibit 1004);
`
`
`
`5
`
`0005
`
`

`
`
`
`- BARR Associates, Inc., “Innovators In Optical Filter Technology,” First
`
`Spring Optical Filters Seminar (May 12, 1995) (“BARR,” Exhibit 1005);
`
`- H. A. Macleod, THIN-FILM OPTICAL FILTERS, Chapter 6: “Edge Filters,”
`
`210-388 (Taylor & Francis Group, 3rd ed. 2001) (“Macleod,” Exhibit 1006);
`
`- Brian T. Sullivan et al., “Deposition Error Compensation for Optical
`
`Multilayer Coatings,” 31 APPLIED OPTICS No. 19, 3821-35 (July 1992)
`
`(“Sullivan,” Exhibit 1007);
`
`- B. Vidal et al., “Optical Monitoring of Nonquarterwave Multilayer Filters,”
`
`17 APPLIED OPTICS No. 7, 1038-47 (April 1978) (“Vidal I,” Exhibit 1008);
`
`- B. Vidal et al., “Wideband Optical Monitoring of Nonquarterwave
`
`Multilayer Filters,” 18 APPLIED OPTICS No. 22, 3851-56 (April 1979)
`
`(“Vidal II,” Exhibit 1009);
`
`- H H. K. Pulker, COATINGS ON GLASS (Thin Film Science and Technology),
`
`Vol. 6, pp. 428-437 (Elsevier, Amsterdam – Oxford – New York – Tokyo
`
`1984) (“Pulker,” Exhibit 1010);
`
`- Ronald R. Willey, PRACTICAL DESIGN AND PRODUCTION OF OPTICAL THIN
`
`FILMS, Chapter 2.4: “Dichroic Reflection Coatings,” 121-122 (Marcel
`
`Dekker, Inc., New York, Basel, 2nd ed. 2002) (“Willey I,” Exhibit 1011)
`
`
`
`6
`
`0006
`
`

`
`
`
`- Ronald R. Willey, “Estimating the number of layers required and other
`
`properties of blocker and dichroic optical thin films.” 35 APP. OPT. No. 25,
`
`4982-86 (September 1996) (“Willey II,” Exhibit 1012);
`
`- Jay Reichman, “Handbook of Optical Filters for Fluorescence Microscopy,”
`
`Chroma Technology Corp. (1998) (“Reichmann,” Exhibit 1013);
`
`- Carrabba et al., U.S. Pat. No. 5,112,127 (May 12, 1992) (“Carrabba,”
`
`Exhibit 1014);
`
`- Mary Banning, “Practical Methods of Making and Using Multilayer Filters,”
`
`37 J. OPT. SOC. AM. No. 10, 792-97 (“Banning,” Exhibit 1015); and
`
`- Pierre Verly, “Fourier transform approach for the estimation of optical thin
`
`film thickness.” Conference Paper, OPTICAL SOCIETY OF AMERICA/OPTICAL
`
`INTERFERENCE COATINGS, TuA9 (2001) (“Verly,” Exhibit 1016).
`
`COMPARISON OF CLAIMS 1, 18, 21, 26-27
`OF THE ‘430 PATENT TO THE PRIOR ART
`
`Overview
`
`14.
`
`I have read and understand the ‘430 Patent and the provisional
`
`Application Ser. No. 60/468,245, from which the ‘430 Patent claims priority.
`
`15. Claims 1, 18, 21, 26-27 of the ‘430 Patent require a method of
`
`making filters including i) calculating a theoretical transmission Ti of light
`
`
`
`7
`
`0007
`
`

`
`
`
`through a layer; ii) calculating an expected deposition time ti of the layer;
`
`iii) measuring, during deposition of the layer for a period less than ti, a
`
`measured transmission Tm of light through the layer; and iv) determining when
`
`deposition of the layer is to terminate based upon the theoretical transmission Ti
`
`and the measured transmission Tm. See ‘430 Patent at claim 1.
`
`Calculating a Theoretical Transmission of Light
`
`16. The '430 Patent admits that prior art optical monitoring techniques
`
`include calculating a theoretical transmission of light through the layer. See '430
`
`Patent at Background, col. 4:18-60.
`
`17. Prior to the Earliest Filing Date, it was known how to calculate a
`
`theoretical transmission Ti of light through the layer. For example, Schwiecker
`
`generally discloses calculating a desired intensity value of a transmission
`
`through a layer of an optical filter. See Schwiecker at col. 6, ll. 49-68.
`
`18. Vidal I and Vidal II (collectively “The Vidal References”) also
`
`each describe calculating a spectral profile Ti(λ,ei) representing transmission
`
`through a layer of an optical filter. See Vidal I at p. 1040 and Vidal II at p.
`
`3851.
`
`
`
`8
`
`0008
`
`

`
`
`
`19. Starke additionally teaches computing transmittance curves that
`
`are used to simulate increasing layer thicknesses in an optical filter. See Starke,
`
`pp. 83-86.
`
`20. Finally, Banning teaches that calculating the transmission of light
`
`through an optical filter has been known for decades. See Banning, p. 792-795.
`
`Expected Deposition Time of a Layer
`
`21. The '430 Patent admits that prior art optical monitoring techniques
`
`included calculating an expected deposition time of a layer. See '430 Patent,
`
`Background, col. 4:18-60.
`
`22. Further, Sullivan teaches using optical measurements to
`
`complement the monitoring of sputter deposition based on time or a quartz-
`
`crystal monitor, by determining the deposition rate based on the current
`
`deposition conditions. See Sullivan, p. 3824. Sullivan also teaches combined
`
`monitoring techniques that allow a more accurate termination than either one
`
`alone. See id.
`
`23. Schwiecker generally discloses using an encoding member for the
`
`change in the time constant in the differentiation process as a function of the
`
`coating duration. See Schwiecker at col. 4, ll. 5-14.
`
`
`
`9
`
`0009
`
`

`
`
`
`24.
`
`It was well known prior to the Earliest Filing Date that the
`
`fundamental relationship of deposition rate is thickness deposited over a certain
`
`time period. Accordingly, when a certain thickness is divided by the deposition
`
`rate, this will result in a calculated time of deposition.
`
`Measuring Actual Transmission of Light Through a Layer
`
`25. The '430 Patent admits that prior art optical monitoring techniques
`
`include measuring actual transmission of light through the layer. See the ‘430
`
`Patent, Background, col. 4:18-60.
`
`26. Further, Schwiecker generally discloses using an arrangement to
`
`measure and control the thickness of optically active thin layers during their
`
`formation in vacuum coating installations, by detecting the transmission
`
`behavior of layer thicknesses. See Schwiecker at col. 6:49-7:35 and claim 1.
`
`27. Sullivan teaches using optical measurements to determine the layer
`
`thickness deposited up to a specific point. See Sullivan, p. 3824.
`
`28. The Vidal References describe measuring the actual spectral
`
`profile of the assembly Ti(λ,ei) during the formation of the ith (or nth) layer. See
`
`Vidal I, p. 1040; Vidal II, p. 3851.
`
`
`
`10
`
`0010
`
`

`
`
`
`29. Additionally, Starke teaches monitoring transmission curves
`
`during deposition. See Starke pp. 83-86.
`
`30. Finally, Banning teaches that measuring the transmission of light
`
`through an optical filter has been known for decades. See Banning, p. 792-795.
`
`Terminating Deposition Based on a Theoretical and Measured Transmission
`
`31. The '430 Patent admits that prior art optical monitoring techniques
`
`included terminating a deposition based on a theoretical and measured
`
`transmission. See '430 Patent, Background, col. 4:18-60.
`
`32. Further, Schwiecker generally discloses detecting the transmission
`
`behavior of layer thicknesses and interrupting the coating process when a
`
`predetermined layer thickness has been obtained. See Schwiecker at col. 6:49-
`
`7:35 and claim 1.
`
`33. The Vidal References describe evaluating the distance between
`
`theoretical transmission and measured transmission, calculating such distance
`
`continuously during the formation of the layer, and terminating the deposition
`
`when the distance reaches a null value. See Vidal I, p. 1040; Vidal II, p. 3851.
`
`
`
`11
`
`0011
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`

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`
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`34. Also, Starke teaches computing the thickness of a layer based on a
`
`calculated transmission curve and measured transmission curve and
`
`determining when to terminate deposition based on computed thickness. See
`
`Starke at pp. 83-86 and Figure 2.
`
`35. Finally, Banning teaches terminating the deposition of a layer
`
`based on theoretical and measured transmission properties. See Banning, pp.
`
`792-795.
`
`Detailed Review of Prior Art References for Claims 1, 18, 21, and 26-27
`
`Schwiecker Discloses the Elements of Claim 1
`
`36. Schwiecker teaches calculating a desired or theoretical intensity
`
`value of a transmission through a layer of an optical filter, determining a time of
`
`deposition, detecting the actual transmission behavior of layer thicknesses
`
`during deposition, and interrupting the coating process when a predetermined
`
`layer thickness has been obtained. See Schwiecker claim 1; col. 4:5-14, col.
`
`6:49-7:35, and col. 6:49-68.
`
`37.
`
`I understand that the express, implicit, and inherent disclosures of a
`
`prior art reference may be relied upon in the rejection of claims under 35 U.S.C.
`
`§§102 or 103.
`
`
`
`12
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`0012
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`

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`
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`38.
`
`If the Board finds that Schwiecker does not explicitly teach a
`
`limitation recited in claim 1 of the ‘430 Patent, one skilled in the art of optical
`
`monitoring would understand that the inherent teachings of Schwiecker cover
`
`the elements in claim 1.
`
`39. As an example, during any deposition of a layer, the thickness of
`
`the layer grows versus time. If there is a thickness d deposited during the time t,
`
`a deposition rate r is defined by the formula r = d/t. Accordingly, if the
`
`deposition rate is known, it is given simply by the formula after which time the
`
`deposition of the layer has to be terminated to get a desired thickness. The
`
`thickness of the layer is given by the design and the deposition rate of the
`
`deposition method.
`
`40. Accordingly, a determination of deposition time, deposition rate,
`
`or thickness is either literally or inherently disclosed by Schwiecker. For
`
`example, Schwiecker discloses a function of adjusting a differentiation process
`
`as a function of coating duration. See Schwiecker col. 4:5-14. Accordingly, the
`
`coating duration is calculated and can be adjusted based on the material being
`
`deposited (e.g., low-index or high-index material). See id.
`
`
`
`13
`
`0013
`
`

`
`
`
`Claims 1, 18, 21, and 26-27 are Obvious Based on Schwiecker, Sullivan,
`Vidal I, or Vidal II in Combination with Banning, Reichmann, or
`Carrabba
`41. One skilled in the art would understand that the steps of calculating
`
`a theoretical transmission of light through the layer, measuring the transmission
`
`of light through the layer during deposition, and terminating the layer
`
`deposition at a predetermined transmission level based on a calculated
`
`prediction of transmission vs. time (as described in the background of the ‘430
`
`Patent), are each part of the three basic and well-known types of optical
`
`monitoring algorithms. See Banning pp. 792-795.
`
`42. Furthermore, one skilled in the art would understand that during
`
`any deposition of a layer, the thickness of the layer grows versus time.
`
`43. One skilled in the art understands that deposition based on time is
`
`well known.
`
`44. Furthermore, one skilled in the art would have been motivated to
`
`combine complementary deposition and monitoring techniques. See Macleod
`
`page 518. For example, optical measurements can complement the monitoring
`
`of sputter deposition based on time or a quartz-crystal monitor, by determining
`
`
`
`14
`
`0014
`
`

`
`
`
`the deposition rate based on the current deposition conditions. See Sullivan p.
`
`3824.
`
`45. One skilled in the art would consider the Vidal References, as well
`
`as Schwiecker discussed above. The Vidal References generally disclose optical
`
`monitoring of multilayer filters. See Vidal I, p. 1040 and Vidal II, p. 3851.
`
`46.
`
` The Vidal References teach one method that includes comparing
`
`the actual spectral profile of the assembly Ti (λ,e) during the formation of the
`
`ith layer with the desired spectral profile Ti(λ,ei). See id. The operation of a
`
`method based on this principle evaluates the distance between the two functions
`
`Ti(λ,ei) and Ti (λ,e). See id. The function can be calculated continuously during
`
`the formation of the layer and can terminate deposition when it reaches a null
`
`value. See id.
`
`47. Such theoretical and actual spectral profiles of the Vidal
`
`References are analogous to the theoretical and actual transmission intensities
`
`relied upon by Schwiecker.
`
`48. Moreover, the theoretical and actual spectral profiles of the Vidal
`
`References can be complementary or independent of methods relied upon by
`
`Schwiecker. One of skill in the art would have had a reasonable expectation of
`
`
`
`15
`
`0015
`
`

`
`
`
`success in applying the functions of the Vidal references with the teachings of
`
`Schweicker. One skilled in the art would appreciate that the collective teaching
`
`of the prior art presents a method that discloses all of the limitations of claim 1,
`
`or renders them obvious.
`
`49. Claim 18 of the ‘430 Patent characterizes the application of a filter
`
`in a typical optical analysis system for Raman spectroscopy and fluorescence
`
`microscopy, if there is only a single filter in such a system. Claim 21
`
`characterizes such applications if there are two filters in the system. The
`
`applications of SWP filters and/or LWP filters in such optical systems described
`
`and claimed in the above mentioned claims are described in the Background of
`
`the ‘430 Patent (see the ‘430 Patent Col. 1:21-3:12). The application of filters in
`
`fluorescence microscopy is not an invention, it was well known in the prior art
`
`and one of skill in the art would have had a reasonable expectation of success in
`
`applying such filters in fluorescence microscopy. For example, Reichmann
`
`generally discloses the use of optical filters for fluorescence microscopy. See
`
`Reichmann pp. 6 and 26; Figures 3 and 27 and Carrabba col.4:10-61, Figures 2-
`
`3.
`
`
`
`16
`
`0016
`
`

`
`
`
`50. With regard to claims 26-27, it was well known in the art to have a
`
`transparent substrate with one or more layers of materials disposed thereon,
`
`wherein the layers can have different indices of refraction. See Vidal I, p. 1038;
`
`Banning Abstract; Sullivan p. 3824; and Jensen pp. 48-50.
`
`Starke Discloses the Elements of Claim 1
`
`51. Starke discloses that “an ion beam sputtering (IBS) coating process
`
`is described for the completely automated fabrication of optical coatings….”
`
`See Starke p. 83 and FIG. 2.
`
`52. Starke discloses calculating a theoretical transmission of light. As
`
`an example, “[t]he theoretical transmittance curve, according to the given
`
`design utilizing the well-known matrices formalism, is produced for the former
`
`layers plus the optimized thickness of the actual layer.” See Starke p. 86.
`
`53. Starke discloses determining an expected deposition time. For
`
`example, “[a]fter plotting the actual thickness against the measurement time,
`
`the actual coating rate is computed for the estimation of the remaining coating
`
`duration.” See Starke p. 86.
`
`
`
`17
`
`0017
`
`

`
`
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`54. Starke discloses that during deposition, the program triggers the
`
`spectrophotometer to perform transmittance measurements. See Starke p. 86.
`
`Starke discloses determining, with the data processor, when deposition of the
`
`layer is to terminate based upon the theoretical transmission Ti and the
`
`measured transmission Tm. In particular, “[a]fter plotting the actual thickness
`
`against the measurement time, the actual coating rate is computed for the
`
`estimation of the remaining coating duration. If this remaining time is shorter
`
`than 15 seconds, the program waits until it terminates the actual layer and
`
`changes the coating material if needed. Otherwise, the cycle restarts with the
`
`transmittance measurement.” See Starke p. 86.
`
`Claims 1, 18, 21, and 26-27 are Obvious Based on Starke in Combination
`with Sullivan, Vidal I, or Vidal II and Banning, Reichmann, or Carrabba
`
`55. Further to the discussion above in paragraphs 41-55, the theoretical
`
`and actual spectral profiles of the Vidal References are analogous to the
`
`theoretical and measured transmittance curves relied upon by Starke. Moreover,
`
`the theoretical and actual spectral profiles of the Vidal References can be
`
`complementary or independent of methods relied upon by Starke. However, one
`
`skilled in the art would appreciate the collective teaching of the prior art to
`
`present a method that anticipates and/or renders obvious all elements of claims
`
`
`
`18
`
`0018
`
`

`
`
`
`1, 18, 21, and 26-27.
`
`COMPARISON OF CLAIMS 30, AND 34-41
`OF THE ‘430 PATENT TO THE PRIOR ART
`
`Overview
`
`56. Claims 30, and 34-41 of the ‘430 Patent are generally directed to
`
`an optical edge filter comprising i) a transparent substrate having a surface and
`
`alternating thin layer of hard coating materials having respectively different
`
`indices of refraction disposed overlying the surface, and ii) the thicknesses of
`
`the layers chosen to produce a filter edge steepness less than about 0.8% from
`
`50% transmission to OD6. See the ‘430 Patent at claim 30.
`
`57. The ‘430 Patent admits that hard-coated edge filters were known to
`
`have transparent substrates and alternating hard coating materials. See the ‘430
`
`Patent at Background, col. 3:13-4:17.
`
`58. Further, Jensen discloses that “traditionally, optical filters are
`
`based on a quarter wave stack design, in which alternating layers of high and
`
`low refractive index materials are deposited on a glass substrate….” See Jensen
`
`p. 48.
`
`
`
`19
`
`0019
`
`

`
`
`
`59. Additionally, Macleod teaches optical filter design with a substrate
`
`and alternating hard coatings. See Macleod p. 210-255.
`
`60. Finally, the Willey References both generally disclose practical
`
`design and production of optical thin films including a transparent substrate and
`
`alternating hard coatings. See Willey I, p. 121; Willey II, p. 4985.
`
`61. The ‘430 Patent admits that hard-coated edge filters were known to
`
`achieve 0.926% edge steepness from 50% transmission to OD6. See the ‘430
`
`Patent at col. 15:55-15:11.
`
`62. Further, Jensen generally discloses using optical filter technology
`
`for multiphoton microscopy, which includes using edge filters with an edge
`
`steepness from 50% transmission to OD6 or higher. See Jensen, p. 48.
`
`63.
`
`Jensen illustrates using TFCalc3.4 (Software Spectra, Inc.) to
`
`calculate experiment edge filters with blocking to OD 9.3. See Jensen, p. 49.
`
`64. Verly generally discloses using a Fourier transform approach to
`
`estimate optical thin film thickness. See Verly, pp. 1-3. Verly further describes
`
`a parallel procedure to estimate the number of layers required for steepness and
`
`
`
`20
`
`0020
`
`

`
`
`
`blocking thin films, and describes results derived from the Fourier transform
`
`approach. See id.
`
`65. The Wiley References both describe the direct correlation between
`
`the number of layers and steepness - or slope - of the edge, including a
`
`formulaic correlation. See Willey I, p. 121; Willey II, p. 4985.
`
`66. Additionally, Pulker discloses when an exceptionally high degree
`
`of edge steepness is required, the easiest way of improving edge steepness is to
`
`use more layers. See Pulker p. 433.
`
`67. Macleod also generally discloses the steepness of an edge filter is
`
`dependent on the number of layers. See Macleod p. 255.
`
`68. Reichmann generally discloses using one or more optical filters for
`
`fluorescence microscopy. See Reichmann pp. 6 and 26; Figures 3 and 27.
`
`69. Carrabba generally discloses the use of optical filters for Raman
`
`spectroscopy. See Carrabba col. 4:10-61, Figures 2-3.
`
`
`
`21
`
`0021
`
`

`
`
`
`Detailed Review of Prior Art References for Claims 30 and 34-41
`
`Claims 30, and 34-41 are Obvious Based on Jensen or Barr in Combination
`with Macleod, Pulker, Willey I, Willey II, Verly, Reichmann and/or
`Carrabba
`
`70. Claims 30 and 34-41 of the ‘430 Patent require the thicknesses of
`
`the layers is chosen to produce a filter edge steepness less than about 0.8% from
`
`50% transmission to OD6.
`
`71. The ‘430 Patent admits that hard-coated edge filters were known to
`
`achieve 0.926% edge steepness from 50% transmission to OD6.
`
`72. A design of an optical long-wave pass (LWP) filter is a so-called
`
`quarter-wave stack of the form (0.5H L 0.5H)N and the design of a short-wave
`
`pass SWP filter is (0.5L H 0.5L)N.
`
`73. One skilled in the art would appreciate that if nL and nH are the
`
`refractive indices of materials having the abbreviations L and H, than the
`
`steepness of the edge filter, as defined in claim 30, is determined exclusively by
`
`these refractive indices nL and nH and by the number of periods N of the
`
`quarter-wave stack. Once the materials are chosen then increasing the edge
`
`
`
`22
`
`0022
`
`

`
`
`
`steepness is simply a matter of increasing the number of layers. See Macleod
`
`210-255.
`
`74. Filters having greater than 100 layers were known prior to the
`
`Earliest Filing Date. As an example, using standard commercial thin-film
`
`design software packages in their versions available in or before the year 2003,
`
`anyone skilled could have numerically determined how many periods N (and
`
`finally how many layers) the design should include to achieve the desired edge
`
`steepness. For example, with nL= 1.487 an nH=2.13, about 60 periods are
`
`required to achieve an edge steepness of less than 0.8 % and 80 periods for
`
`0.463 % (as claimed in claims 30 and 31 and similar to the exemplary LWP
`
`filter design given in Appendix A). See Appendix A of the ‘430 Patent. To
`
`demonstrate this, I devised Table 1 and created Figure 1 using FilmStar Optical
`
`Thin-Film Software from FTG Software Associates. Figure 1 provides an
`
`illustration of a plot that a person of ordinary skill in the art could have
`
`generated as of the Earliest Priority Date using then available software. Figure 1
`
`and Table 1 are presented and explained further in the Petition at pages 43-45.
`
`75. As seen in Table 1, pair number N of a QW-stack can be
`
`configured to achieve a desired edge steepness ES. One skilled in the art would
`
`
`
`23
`
`0023
`
`

`
`
`
`understand that an long wave pass filter having edge steepness less than 0.8 %
`
`or 0.463 %, its layer sequence has to be nearly like a quarter-wave stack of a
`
`little more than 60 or a little more than 80 periods, respectively, depending, of
`
`course, on the contrast in index between the two materials.
`
`76. The way to achieve steeper edges of SWP filters or LWP filters has
`
`been known in principle, for example: “Generally, in many types of long- and
`
`shortwave-pass filters, the steepness of the edge is not of critical importance. It
`
`is important, however, with filters applied in fluorescence microscopy where
`
`the excitation and emission bands of special fluorescent tracers may have such a
`
`small spectral distance, that they do overlap to a certain degree.… When such
`
`an exceptional high degree of edge steepness is required, then the easiest way of
`
`improving it is to use more layers.” See Pulker page 433.
`
`77. The complete edge filter design procedure is described in most of
`
`the books for thin-film optics. See Macleod pp. 210-255.
`
`78. The direct correlation between number of layers and steepness - or
`
`slope - of the edge has been described in the prior at: “It is of great interest to
`
`know how many layers are needed to achieve a certain edge slope between the
`
`pass and block bands.…The steepness of the side of an edge filter is in inverse
`
`
`
`24
`
`0024
`
`

`
`
`
`proportion to the number of layers or pairs.… If we call the spectral distance dg
`
`and the peak density at the QWOT wavelength ODP, the effect of steepness
`
`may be approximated by Eqn. 2.7.…” See Willey I page 121.
`
`79.
`
`In 2001, a parallel was established between the procedure for
`
`estimating the number of layers required for steepness and blocking thin films,
`
`and results derived from the Fourier transform approach. See Verly pp. 1-3.
`
`80. The ‘430 Patent admits that hard-coated edge filters were known to
`
`have transparent substrates and alternating hard coating materials.
`
`81.
`
`Jensen discloses “traditionally, optical filters are based on a quarter
`
`wave stack design, in which alternating layers of high and low refractive index
`
`materials are deposited on a glass substrate….” See Jensen p. 48.
`
`82. Macleod teaches optical filter design with a substrate and
`
`alternating hard coatings. See Macleod p. 210-255.
`
`83. Willey I and Willey II generally disclose practical design and
`
`production of optical thin films including a transparent substrate and alternating
`
`hard coatings. See Willey I, p. 121 and Willey II, p. 4985.
`
`
`
`25
`
`0025
`
`

`
`
`
`84.
`
`Jensen generally discloses optical filter technology for multiphoton
`
`microscopy including edge filters that have an edge from 50% transmission to
`
`OD6 or higher. See Jensen p. 48.
`
`85.
`
`Jensen illustrates the use of TFCalc3.4 (Software Spectra, Inc.) to
`
`calculate experiment edge filters with blocking to OD 9.3. See Jensen p. 49.
`
`86. One skilled in the art would apply widely known principles to
`
`modify the proposed designs of Jensen to achieve a wide range of edge
`
`steepness and blocking characteristics. In particular, one skilled in the art would
`
`have been motivated to modify the edge filter referenced in Figures 1 and 2 of
`
`Jensen to achieve an edge steepness of less than about 0.8% or even less than
`
`0.4%. See Jensen p. 49.
`
`87. Such motivation to modify Jensen is clearly addressed by the need
`
`for filters with higher levels of performance. Such modification is implemented
`
`by the addition of more layers to the already designed filter, a task that is
`
`clearly contemplated by the prior art and in particular Jensen. One of skill in the
`
`art would have had a reasonable expectation of success in adding additional
`
`layers to the filter designs of Jensen.
`
`
`
`26
`
`0026
`
`

`
`
`
`88. The prior art offers various complementary methods to determine
`
`the number of layers required for a desired edge steepness. Verly generally
`
`discloses a Fourier transform approach for the estimation of optical thin film
`
`thickness. See Verly pp. 1-3. Verly describes a parallel a procedure for
`
`estimation of the number of layers required for steepness and blocking thin
`
`films, and results derived from the Fourier transform approach. See id.
`
`89. Willey I and Willey II each describes the direct correlation
`
`between number of layers and steepness - or slope - of the edge including a
`
`formulaic correlation. See Willey I, p. 121 and Willey II, p. 4985.
`
`90. With regard to claims 34 and 37, the average transmission of above
`
`about 93% or 95% within the passband of the LWP filter or the SWP filter is
`
`solely the result of an “optimization routine known in the art. Exemplary
`
`optimization routines include the variable-metric or simplex methods
`
`implemented in standard commercial thin-film design software packages, such
`
`as TFCalc by Software Spectra, Inc., and The Essential Macleod by Thin Film
`
`Center Inc.” See ‘430 Patent col. 8:9-14.
`
`91.
`
`It was known in 2003 how to achieve a special smoothing within
`
`the passband. There is not any invitation to realize an average transmission
`
`
`
`27
`
`0027
`
`

`
`
`
`above 93 % (claim 34) or of 95 % (claim 37). These values are the result of the
`
`optimization process which can be performed by anyone skilled in the art who
`
`is able to handle the standard commercial thin-film design software packages.
`
`92. To achieve the properties recited in claim 34 and 37, known
`
`routines of thin-film design software packages could have been applied.
`
`93. Claims 35, 38, and 40 of the ‘430 Patent characterize the
`
`application of a filter in a typical optical analysis system for Raman
`
`spectroscopy and fluorescence microscopy, if there is only a single filter in such
`
`a system. Claims 36, 39, and 41 characterizes such applications, if there are two
`
`filters

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