Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 9
`Entered: September 19, 2014
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EDMUND OPTICS, INC.,
`Petitioner,
`
`v.
`
`SEMROCK, INC.,
`Patent Owner.
`
`____________
`
`Case IPR2014-00583
`Patent 7,068,430 C1
`__________
`
`
`Before WILLIAM A. CAPP, TRENTON A. WARD, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
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`IPR2014-00583
`Patent 7,068,430 C1
`
`
`Edmund Optics, Inc. (“Edmund”) filed a Petition (Paper 1, “Pet.”)
`
`requesting inter partes review of claims 1, 18, 21, 26, 27, 30, and 34–41 of
`
`U.S. Patent No. 7,068,430 C1 (Ex. 1001, the “’430 patent”). Semrock, Inc.
`
`(“Semrock”) filed a Patent Owner Preliminary Response (Paper 7, “Prelim.
`
`Resp.”). We have jurisdiction under 35 U.S.C. § 314(a). We conclude that
`
`Edmund has shown a reasonable likelihood of prevailing in challenging
`
`claim 1 and we institute an inter partes review as to such claim.
`
`I. BACKGROUND
`
`A. The ’430 Patent (Ex. 1001)
`
`The ’430 patent, titled Method of Making Highly Discriminating
`
`Optical Edge Filters And Resulting Products, relates to making optical filters
`
`that block unwanted light and are used in Raman spectroscopy and
`
`fluorescence microscopy. Ex. 1001, 1:22–28. The patent discloses optical
`
`edge filters with alternating layers of materials disposed over a transparent
`
`substrate and where the thickness of the various layers affects the
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`performance of the filter. Id. at claim 18; 3:14–28. The patent also claims a
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`method of manufacturing optical filters and claims applications for the
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`optical filters made in accordance with the method of claim 1. Id. at
`
`claims 1, 18.
`
`In the claimed method, a data processor receives deposition rate data
`
`as an input. Id. at 8:24–25. The data processor calculates a theoretical
`
`transmission of light through a layer of the filter. Id. at claim 1. For at least
`
`some layers, the data processor calculates an expected time for deposition of
`
`material to achieve the desired thickness related to the desired optical
`
`properties of a layer. Id. at 9:24–26. For these layers, their deposition
`
`
`
`
`2
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`IPR2014-00583
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`durations are controlled using an expected deposition time based on a
`
`designed thickness and deposition rate. Id. For other layers, deposition
`
`duration is controlled by optically monitoring transmission levels through
`
`the layer. Id. at 9:19–23. The data processor determines which layers are
`
`optically monitored and which layers are timed using an expected deposition
`
`time. Id. at 9:26–29.
`
`According to the Specification, the invention achieves edge steepness
`
`in optical filters of less than about 0.8%. Id. at 14:23–27. The Specification
`
`states that the steepness of edge slope achieved by the invention permits
`
`return of response wavelengths closer to excitation wavelength providing an
`
`increase in the information content of the returned response, and that the
`
`reduction in transmission loss means that the enhanced information return
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`response will be at higher brightness. Id. at 16:46–51. Furthermore, the
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`Specification describes that the greater hardness and durability of the filters
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`purportedly permits a more robust and versatile optical analytical
`
`instrument. Id. at 16:51–54.
`
`B. Illustrative Claims
`
`Edmund challenges claims 1, 18, 21, 26, 27, 30, and 34–41. Claims 1
`
`and 30 are independent claims. Claims 1 and 30 (with paragraph indentation
`
`added to claim 30) are reproduced below:
`
`1. A method of manufacturing an optical filter by
`determining when deposition of a layer of the optical filter is to
`terminate, the method comprising:
`
`calculating, with a data processor, a theoretical transmission Ti
`of light through the layer;
`
`calculating, with the data processor, an expected deposition
`time ti of the layer,
`
`
`
`
`3
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`IPR2014-00583
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`measuring, during deposition of the layer for a period less than
`ti, a measured transmission Tm of light through the layer;
`
`determining, with the data processor, when deposition of the
`layer is to terminate based upon the theoretical transmission
`Ti and the measured transmission Tm.
`
`
`
`30. An optical edge filter comprising a transparent
`substrate having a surface and alternating thin layer of materials
`having respectively different indices of refraction disposed
`overlying the surface, the materials comprising
`
`hard coating materials, and
`
`the thicknesses of the layers chosen to produce a filter edge
`steepness less than about 0.8%, wherein edge steepness is
`defined as (a) an edge width from a 50% transmission
`wavelength to an optical density 6 (“OD6”) wavelength divided
`by (b) the 50% transmission wavelength.
`
`
`
`C. The Asserted Grounds of Unpatentability
`
`Edmund challenges claims 1, 18, 21, 26, 27, 30, and 34–41 of the
`
`’430 patent based on the alleged grounds of unpatentability set forth in the
`
`table below, as further supported by the Declaration of H. Angus Macleod
`
`(Ex. 1017) and the Declaration of Uwe Schallenberg. (Ex. 1018).
`
`Reference(s)
`Schwiecker1 (Ex. 1002)
`Starke2 (Ex. 1003)
`
`Basis Claims challenged
`
`§ 102
`
`§ 102
`
`1
`
`1
`
`
`1 Schwiecker et al., US 4,207,835, patented June 17, 1980.
`2 Starke et al., Rapid Prototyping of Optical Thin Film Filters, 4094 PROC.
`OF SPIE 83–92 (2000).
`
`
`
`
`4
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`IPR2014-00583
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`
`Reference(s)
`Schwiecker and Sullivan3 (Ex. 1007) and/or
`Vidal I4 (Ex 1008) and/or Vidal II5 (Ex. 1009),
`and/or Banning6 (Ex. 1015)
`
`Starke and Sullivan and/or Vidal I and/or
`Vidal II, and/or Banning
`Schwiecker, Sullivan, Reichman7 (Ex. 1013),
`and/or Carrabba8 (Ex. 1014)
`
`Starke, Sullivan, Reichman, and/or Carrabba
`Jensen9 (Ex. 1004), Macleod10 (Ex. 1006),
`Pulker11 (Ex. 1010), Willey I12 (Ex. 1011),
`Willey II13 (1012), and/or Verly14 (Ex. 1016),
`Reichman, and/or Carrabba
`
`Basis Claims challenged
`
`§ 103
`
`1, 26, and 27
`
`§ 103
`
`1, 26, and 27
`
`§ 103
`
`18 and 21
`
`§ 103
`
`§ 103
`
`18 and 21
`
`30 and 34–41
`
`
`3 Brian T. Sullivan & J.A. Dobrowolski, Deposition Error Compensation for
`Optical Multilayer Coatings. I. Theoretical Description, 31 APPLIED OPTICS
`3821–3835 (1992).
`4 B. Vidal et al., Optical Monitoring of Nonquarterwave Multilayer Filters,
`17 APPLIED OPTICS 1038–1047 (1978).
`5 B. Vidal et al., Wideband Optical Monitoring of Nonquarterwave
`Multilayer Filters, 18 APPLIED OPTICS 3851–3856 (1979).
`6 Mary Banning, Practical Methods of Making and Using Multilayer Filters,
`37 J. OPT. SOC. AM. 792–797 (1947).
`7 Jay Reichman, Chroma Handbook of Optical Filters for Fluorescence
`Microscopy, 1–30 and G-1 – G-5 (June 1998).
`8 Carrabba et al., US 5,112,127, patented May 12, 1992.
`9 Traci R. Jensen et al., Advances in Filter Technology for Multiphoton
`Microscopy, 4262 PROC. OF SPIE 48–51 (2001).
`10 H. A. Macleod, THIN-FILM OPTICAL FILTERS 210–388 (Taylor & Francis
`Group, 3rd ed.) (2001).
`11 H.K. Pulker, COATINGS ON GLASS 428–437 (Elsevier Science B.V.)
`(1984).
`
`
`
`
`5
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`IPR2014-00583
`Patent 7,068,430 C1
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`
`Reference(s)
`BARR15 (Ex. 1005), Jensen, Macleod, Pulker,
`Willey I, Willey II, and/or Verly, Reichman,
`and/or Carrabba
`
`Basis Claims challenged
`
`§ 103
`
`30 and 34–41
`
`D. Claim Interpretation
`
`Neither party has raised an issue of claim construction that is material
`
`to this decision. We do not independently discern an issue of claim
`
`construction that is material to this decision.16 Accordingly, we do not
`
`construe expressly any claim terms for purposes of this decision.
`
`
`12 Ronald R. Willey, PRACTICAL DESIGN AND PRODUCTION OF OPTICAL THIN
`FILMS 121–122 (CRC Press Taylor & Francis Group, 2nd ed.) (2002).
`13 Ronald R. Willey, Estimating the Number of Layers Required and Other
`Properties of Blocker and Dichroic Optical Thin Films, 35 APPLIED OPTICS
`4982–4986 (1996).
`14 P.G. Verly, Fourier Transform Approach for the Estimation of Optical
`Thin Film Thickness, OPT. SOC. AM. 0001–0003 (2001).
`15 BARR Associates, Inc. INNOVATORS IN OPTICAL FILTER TECHNOLOGY
`0001–0172 (1995).
`16 The Petition and the Preliminary Response contain lengthy discussions of
`various statements concerning the state of the prior art discussed in the
`Background of the Invention section of the Specification. See, e.g., Pet. 9,
`13, 14, 15, 16, 18, 28; Prelim. Resp. 4–8. Edmund refers to these statements
`as “admissions” (Pet. 10), but does not include them in any of its stated
`grounds of invalidity or claim charts. Semrock discusses Edmund’s reliance
`on these statements in the context of claim construction. Prelim. Resp. 4.
`We do not view this situation as a claim construction issue. Furthermore, it
`is well settled that:
`
`A patent composed of several elements is not proved obvious
`merely by demonstrating that each element was, independently,
`known in the prior art. . . . Inventions usually rely upon
`building blocks long since uncovered, and claimed discoveries
`
`
`
`
`6
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`II. ANALYSIS
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`A. Anticipation Grounds
`
`Edmund raises two grounds of anticipation. Both grounds are limited
`
`to claim 1. The first ground is over Schwiecker and the second ground is
`
`over Starke.
`
`1. Alleged Anticipation of Claim 1 by Schwiecker
`
`Schwiecker discloses an arrangement and photometer for measuring
`
`and controlling the thickness of optically active thin layers during formation
`
`in vacuum coating installations. Ex. 1002, 1:7–10. Edmund provides a
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`claim chart that purports to read each limitation of claim 1 onto Schwiecker.
`
`Pet. 22–23. Edmund supports its assertions with declarations by Messrs.
`
`Macleod (Ex. 1017) and Schallenberg (Ex. 1018). For each element in
`
`claim 1, Edmund’s claim chart alleges that Schwiecker “generally discloses”
`
`the element. Pet. 22–23. Edmund then states that, to the extent that the
`
`Board finds that Schwiecker does not explicitly teach a limitation recited in
`
`claim 1, someone of ordinary skill in the art “would understand the inherent
`
`teachings of Schwiecker.” Pet. 23–24 (citing Ex. 1017 ¶ 40, Ex. 1018 ¶ 38).
`
`
`almost necessarily will be combinations of what, in some sense,
`is already known.
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Inasmuch as
`Edmund did not recite expressly any admitted prior art in any of its asserted
`grounds of invalidity or claim charts, we accord these statements weight
`only with respect to ascertaining the background knowledge possessed by a
`person of ordinary skill in the art. See Randall Mfg. v. Rea, 733 F.3d 1355,
`1362–63 (Fed. Cir. 2013) (non-applied art nevertheless useful in determining
`the background knowledge possessed by a person of ordinary skill in the
`art).
`
`
`
`
`7
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`Semrock argues that Edmund fails to identify adequately where
`
`claim 1’s recitation of “calculating, with a data processor, a theoretical
`
`transmission Ti of light through the layer” is found in Schwiecker. Prelim.
`
`Resp. 11 (quoting claim 1). Semrock also argues that Schwiecker fails to
`
`disclose the use of a data processor to calculate a deposition time, as
`
`required by claim 1. Id. Semrock also contends that Edmund fails to
`
`identify where Schwiecker discloses measuring the transmission of light
`
`through a layer. Id.
`
`Edmund relies on a passage in Schwiecker at column 6, lines 49–68 as
`
`disclosing a data processor that calculates a theoretical transmission of light
`
`through the layer of a filter. Pet. 22. The recited passage of Schwiecker
`
`discloses a comparator 53 that compares an output value from the
`
`photometer amplifier with a predetermined analogue intensity value and then
`
`passes a signal to a logic circuit. Ex. 1002, 6:49-69. The logic circuit, in
`
`turn, can act as an AND-operator or OR-operator. Id. We agree with
`
`Semrock that the recited passage does not appear to disclose the use of a
`
`data processor as claimed. Thus, Edmund has failed to establish a
`
`reasonable likelihood that this limitation is met by Schwiecker and,
`
`therefore, that Schwiecker anticipates claim 1. See Kyocera Wireless Corp.
`
`v. Int’l Trade Comm’n, 545 F.3d 1340, 1351 (Fed. Cir. 2008) (in order to
`
`anticipate a claim a single prior art reference must expressly or inherently
`
`disclose each claim limitation).
`
`Nor are we persuaded that Edmund has shown a reasonable likelihood
`
`that this limitation is met inherently. Inherency requires that one of ordinary
`
`skill in the art would recognize that a reference necessarily teaches the
`
`limitation in question. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).
`
`
`
`
`8
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`Edmund merely states that: “To the extent the Board finds Schwiecker does
`
`not explicitly teach a limitation recited in claim 1 of the ‘430 Patent, one of
`
`skill in the art would understand the inherent teachings of Schwiecker.” Pet.
`
`22-23. Such a conclusory statement in the Petition and echoed in Edmund’s
`
`declarations falls short of establishing a reasonable likelihood that a data
`
`processor is necessarily used by Schwiecker to calculate a theoretical
`
`transmission of light. Pet. 23–24; Ex. 1017 ¶ 40; Ex. 1018 ¶ 38.
`
`In sum, Edmund has failed to establish a reasonable likelihood that it
`
`would prevail in establishing that claim 1 is anticipated by Schwiecker.
`
`2. Alleged Anticipation of Claim 1 by Starke
`
`Starke describes an ion beam sputtering coating process for the
`
`automated fabrication of optical coatings. Ex. 1003, 83. Edmund provides a
`
`claim chart that purports to read each limitation of claim 1 onto Starke.
`
`Pet. 32–33. Edmund supports its assertions with the declarations of Messrs.
`
`Macleod and Schallenberg (Exs. 1017 and 1018, respectively).
`
`Semrock argues that Edmund fails to identify where Starke discloses
`
`measuring the transmission of light through a layer, as required by claim 1.
`
`Prelim. Resp. 12. Semrock also contends that Edmund fails to identify
`
`adequately where Starke discloses the use of a data processor to calculate a
`
`deposition time, as required by claim 1. Id.
`
`Edmund relies on a passage in Starke at pages 85–86 as disclosing a
`
`data processor that calculates a theoretical transmission of light through the
`
`layer of a filter. Pet. 33. Under a sub-section labeled “Data Processing,”
`
`Starke discloses that, during deposition, the LabVIEW program triggers a
`
`spectrophotometer to perform transmittance measurements. Ex. 1003, 86.
`
`Starke later discloses that, after plotting the actual thickness against the
`
`
`
`
`9
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`measurement of time, the actual coating rate is computed for the estimation
`
`of the remaining coating duration. Id.
`
`In addition to asserting literal anticipation, Edmund states that claim 1
`
`does not recite any limitation that is not covered by the inherent teachings of
`
`Starke. Pet. 35. However, Edmund does not specify which, if any,
`
`limitations are met inherently. Inherency requires that one of ordinary skill
`
`in the art would recognize that a reference necessarily teaches the property
`
`in question. Oelrich, at 581. Edmund has not made out a case for
`
`anticipation under principles of inherency.
`
`On the present record, we find that Edmund has established a
`
`reasonable likelihood that Starke anticipates claim 1. However, in
`
`instituting a trial, we restrict Edmund to presenting a case based on literal
`
`anticipation only. In view of the lack of evidence presented in the Petition,
`
`Edmund may not go to trial on a theory of inherent anticipation.
`
`B. Obviousness Grounds
`
`A petition for inter partes review must identify, “in writing and with
`
`particularity, each claim challenged, the grounds on which the challenge to
`
`each claim is based, and the evidence that supports the grounds for the
`
`challenge to each claim.” 35 U.S.C. § 312(a)(3). A petition must include
`
`“[a] full statement of the reasons for the relief requested, including a detailed
`
`explanation of the significance of the evidence” and “where each element of
`
`[each challenged] claim is found in the prior art patents or printed
`
`publications relied upon [and] the relevance of the evidence to the challenge
`
`raised.” 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4), (5).
`
`In the instant case, Edmund asserts numerous grounds of obviousness
`
`over various combinations of 15 prior art references, and such grounds are
`
`
`
`
`10
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`characterized by multiple conjunctive and disjunctive “and/or” connectors
`
`that greatly multiply the total number of asserted grounds. The multiple
`
`conjunctive and disjunctive connectors significantly increases the total
`
`number of proposed obviousness challenges, while at the same time
`
`providing little supporting evidence and analysis for each of the proposed
`
`alternative obviousness challenges. In total, we estimate that Petitioner’s
`
`alternative grounds result in 64 total proposed obviousness challenges.
`
`To illustrate the scope of the problem, with respect to just the asserted
`
`grounds of obviousness of claims 30 and 34–41 over combinations that rely
`
`on BARR as the base reference, we count at least 21 proposed grounds of
`
`the applied art.17 In view of the foregoing and for the additional reasons
`
`
`17 Namely:
`BARR, Jensen, Macleod, Pulker, Willey I, Willey II, Verly, Reichman, and
`Carrabba.
`BARR, Jensen, Macleod, Pulker, Willey I, Verly, Reichman, and Carrabba.
`BARR, Jensen, Macleod, Pulker, Willey II, Verly, Reichman, and Carrabba.
`BARR, Jensen, Macleod, Pulker, Willey I, Willey II, Verly, and Reichman.
`BARR, Jensen, Macleod, Pulker, Willey I, Verly, and Reichman
`BARR, Jensen, Macleod, Pulker, Willey II, Verly, and Reichman.
`BARR, Jensen, Macleod, Pulker, Willey I, Willey II, Verly, and Carrabba.
`BARR, Jensen, Macleod, Pulker, Willey I, Verly, and Carrabba.
`BARR, Jensen, Macleod, Pulker, Willey II, Verly, and Carrabba.
`BARR, Jensen, Macleod, Pulker, Willey I, Willey II, Reichman, and
`Carrabba.
`BARR, Jensen, Macleod, Pulker, Willey I, Reichman, and Carrabba.
`BARR, Jensen, Macleod, Pulker, Willey II, Reichman, and Carrabba.
`BARR, Jensen, Macleod, Pulker, Willey I, Willey II, and Reichman.
`BARR, Jensen, Macleod, Pulker, Willey I, and Reichman.
`BARR, Jensen, Macleod, Pulker, Willey II, and Reichman.
`BARR, Jensen, Macleod, Pulker, Willey I, Willey II & Carrabba.
`BARR, Jensen, Macleod, Pulker, Willey I, and Carrabba.
`BARR, Jensen, Macleod, Pulker, Willey II, and Carrabba.
`BARR, Jensen, Macleod, Pulker, Verly, Reichman & Carrabba.
`
`
`
`
`11
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`stated below, we decline to institute a trial on any of the asserted grounds of
`
`obviousness.
`
`1. Obviousness Over Schwiecker, Sullivan, and/or Vidal I and
`Vidal II, and/or Banning.
`
`Edmund furnishes claim charts that purport to read claim 1 on various
`
`combinations of Schwiecker, Sullivan, Vidal I, Vidal II, and Banning.
`
`Pet. 26–28. With respect to claims 26 and 27, which depend directly or
`
`indirectly from claim 1, Edmund asserts that it is well known to have a
`
`transparent substrate with multiple layers having different indices of
`
`refraction. Pet. 32.
`
`Semrock challenges the sufficiency of Edmund’s obviousness case by
`
`contending that the Petition fails to explain how the teachings of the
`
`references would be arranged or combined or why a person would have
`
`made each or any of the plethora of proposed combinations. We agree with
`
`Semrock.
`
`Obviousness is a question of law based on underlying factual findings,
`
`including the differences between the claims and the prior art. See Graham
`
`v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966). A petitioner
`
`who does not state the differences between a challenged claim and the prior
`
`art, and relies instead on the Patent Owner and the Board to determine those
`
`differences risks having the corresponding ground of obviousness not
`
`included for trial for failing to adequately state a claim for relief.
`
`See Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-
`
`00003, 2012 WL 9494791, at *3 (PTAB Oct. 25, 2012) (Paper 7).
`
`
`BARR, Jensen, Macleod, Pulker, Verly, and Reichman.
`BARR, Jensen, Macleod, Pulker, Verly, and Carrabba.
`
`
`
`
`12
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`In the instant case, Edmund’s purported ground of obviousness is an
`
`expression of multiple grounds of obviousness due to repetitious use of
`
`conjunctive and disjunctive “and/or” connectors.18 As in Liberty Mutual, the
`
`Petition makes no meaningful distinction among these various grounds.
`
`Id. at 3.
`
`We also agree with Semrock that Edmund’s Petition fails to explain
`
`adequately how or why a person of ordinary skill in the art would combine
`
`the various references in the myriad of proposed combinations to achieve the
`
`claimed invention. Whether there is a reason to combine prior art references
`
`is a question of fact, on which Edmund, as the patent challenger, bears the
`
`burden of proof. See Transocean Offshore Deepwater Drilling, Inc. v.
`
`Maersk Contractors USA, Inc., 617 F.3d 1296, 1303 (Fed. Cir. 2010).
`
`Obviousness requires more than a mere showing that the prior art includes
`
`separate references covering each separate limitation in a claim under
`
`examination; rather, it requires the additional showing that a person of
`
`ordinary skill at the time of the invention would have selected and combined
`
`those prior art elements in the normal course of research and development to
`
`yield the claimed invention. Unigene Labs, Inc. v. Apotex, Inc., 655 F.3d
`
`1352, 1360 (Fed. Cir. 2011). Thus, even if the references disclosed all of the
`
`limitations of the asserted claims, which Edmund has not persuasively
`
`
`18 We have counted as many as 7 separate grounds (or sub-grounds):
`
`Schwiecker, Sullivan, Vidal I, Vidal II, and Banning.
`Schwiecker, Sullivan, Vidal I, and Banning.
`Schwiecker, Sullivan, Vidal II, and Banning.
`Schwiecker, Sullivan, and Banning.
`Schwiecker, Vidal I, Vidal II, and Banning.
`Schwiecker, Vidal I, and Banning.
`Schwiecker, Vidal II, and Banning.
`
`
`
`
`13
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`shown, Edmund still needed to provide “some articulated reasoning with
`
`some rational underpinning to support the legal conclusion of obviousness.”
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`KSR, 550 U.S. at 418 (citations omitted); accord Innogenetics, N.V. v.
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`Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008) (some kind of reason
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`must be shown as to why a person of ordinary skill would have thought of
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`combining two or more references to achieve the patented invention).
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`Edmund supports its obviousness contentions with two declarations.
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`Ex. 1017 (Macleod); Ex. 1018 (Schallenberg). We have reviewed both
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`declarations and consider them too vague and conclusory to provide any
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`meaningful guidance to us as to whether the elements of the claims are
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`found in the prior art. Similarly, the declarations provide no sufficiently
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`meaningful discussion or analysis that would constitute articulated reasoning
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`with rational underpinning for combining the cited references in the myriad
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`of proposed combinations as required by prevailing law. See KSR, 550 U.S.
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`at 418; See also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). KSR
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`requires that such an analysis “be made explicit” but, in the case of
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`Edmund’s Petition and supporting declarations, it is not. KSR, 550 U.S.
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`at 418. Expert testimony that does not disclose the underlying facts or data
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`on which the opinion is based is entitled to little or no weight. See 37 C.F.R.
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`§ 42.65(a). In the instant case, the Macleod and Schallenberg declarations,
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`which are almost word-for-word identical, are vague, conclusory, and
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`generally unhelpful in analyzing the prior art or why a person of ordinary
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`skill in the art would be motivated to combine the references. Thus,
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`Edmund has failed to show a reasonable likelihood that it would prevail in
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`establishing that claims 1, 26, and 27 are obvious over combinations based
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`on Schwiecker.
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`2. Obviousness of Claims 1, 26, and 27 Over Starke, Sullivan,
`and/or Vidal I and Vidal II, and/or Banning
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`Edmund’s assertions of obviousness over a plurality of various
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`combinations based on Starke as the base reference suffer from essentially
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`the same infirmities that we have discussed above with respect to the
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`grounds of obviousness of claims 1, 26, and 27 over the numerous asserted
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`combinations based on Schwiecker. Edmund, again, fails to identify clearly
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`where each element of each challenged claim is found in the prior art patents
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`or printed publications relied upon and the relevance of the evidence to the
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`challenge raised. 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4), (5). Edmund also
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`fails to supply articulated reasoning with rational underpinning as to why a
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`person of ordinary skill in the art would have made any one, much less all,
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`of these numerous combinations of references to achieve the claimed
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`invention. Moreover, Edmund relies on declaration testimony that is vague,
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`conclusory, and generally unhelpful to our analysis.
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`Thus, Edmund has failed to show a reasonable likelihood that it would
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`prevail in establishing that claims 1, 26, and 27 are obvious over
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`combinations based on Starke.
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`3. Obviousness of Claims 18 and 21 Over Either Schwiecker or
`Starke in various combinations with Sullivan, Vidal I,
`Vidal II, and Banning
`
`Claims 18 and 21 depend from claim 1. Edmund asserts grounds of
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`obviousness of these claims over various combinations of either Schwiecker
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`or Starke as the base reference and then combined with various
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`combinations of numerous secondary references. Pet. 31–32, 40–41.
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`These obviousness grounds suffer from the same infirmities that we
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`have previously discussed with respect to the various obviousness grounds
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`
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`asserted as to claims 1, 26, and 27, namely: excessive proliferation of
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`grounds by using “and/or” connectors; failure to particularly point out where
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`the claim elements are found in the prior art and the relevance thereof to the
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`challenge raised; lack of supporting analysis as to why a person of ordinary
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`skill in the art would combine the references in myriad ways to achieve the
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`invention; and reliance on vague and conclusory expert testimony.
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`We find that Edmund has failed to show a reasonable likelihood that it
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`would prevail in establishing that claims 18 and 21 are obvious over
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`combinations based on either Schwiecker or Starke as the base reference.
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`4. Obviousness of Claims 30 and 34–41 Over Jensen in various
`combinations with Macleod, Pulker, Willey I, Willey II,
`Verly, Reichman, and Carrabba
`
`Claim 30 is an independent claim directed to an optical edge filter that
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`exhibits an edge steepness of less than about 0.8%. Claims 34–41 depend
`
`from claim 30. Edmund asserts two groups of multiple grounds over these
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`claims. One group uses Jensen as a base reference and the other group uses
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`BARR as a base reference. As with other grounds previously discussed, the
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`number of individual grounds has been great multiplied by the use of
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`“and/or” connectors among a plethora of secondary references.
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`In challenging these claims, Edmund contends, in essence, that the
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`underlying scientific principles of long-wave pass filters were understood at
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`the time of the invention. Pet. 41–42. According to Edmund, a person of
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`ordinary skill in the art, using known technology, would have been able to
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`determine numerically how many layers of deposited material are necessary
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`to achieve an edge steepness of less than 0.8%. Id. at 42. Edmund supports
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`this contention with figures and tables created by its declarant after the filing
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`date of the ’430 patent. Id. at 42–44.
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`Semrock disputes Edmund’s obviousness contentions by arguing that
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`Edmund has not made a sufficient showing that the recited prior art renders
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`the claimed invention obvious. We agree.
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`In order to render a claimed apparatus or method obvious, the cited
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`prior art as a whole must enable one skilled in the art to make and use the
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`apparatus or method. See Beckman Instruments, Inc. v. LKB Produkter AB,
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`892 F.2d 1547, 1551 (Fed. Cir. 1989). In its claim chart, Edmund relies on
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`Jensen, Macleod, Pulker, Willey I, Willey II, and Verly as purportedly
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`satisfying the element in claim 30 directed to filter edge steepness of less
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`than about 0.8%. Pet. 47. We have reviewed the passages cited in
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`Edmund’s claim chart. However, none of the passages actually discloses a
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`filter with an edge steepness of 0.8%; neither do they provide a practical,
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`enabling disclosure as to how to achieve the claimed parameter. Although
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`Edmund’s references discuss the underlying scientific principles related to
`
`developing filters with steep edges, they fall short of actually instructing a
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`person of ordinary skill in the art how to make and use an edge filter with an
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`edge steepness of 0.8%.
`
`Edmund’s obviousness case otherwise suffers from the same
`
`infirmities that we have previously discussed regarding excessive
`
`proliferation of grounds by using “and/or” connectors; failure to particularly
`
`point out where the claim elements are found in the prior art; lack of
`
`supporting analysis as to why a person of ordinary skill in the art would
`
`combine the references to achieve the invention; and reliance on vague and
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`conclusory expert testimony.
`
`
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`We find that Edmund has failed to show a reasonable likelihood that it
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`would prevail in establishing that claims 30 and 34–41 are obvious o