Ex Parte 7369772 et alDownload PDFPatent Trial and Appeal BoardJan 8, 201395000485 (P.T.A.B. Jan. 8, 2013) Copy Citation 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. 95/000,485 07/06/2009 7369772 02495.000001.36 7173 5514 7590 01/09/2013 FITZPATRICK CELLA HARPER & SCINTO 1290 Avenue of the Americas NEW YORK, NY 10104-3800 EXAMINER HUGHES, DEANDRA M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 01/09/2013 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 ____________ Inter Partes TELLABS OPERATIONS, INC. Patent Owner, Appellant v. FUJITSU LIMITED Requestor, Respondent _____ Appeal 2013-000728 Reexamination Control No. 95/000,485 United States Patent 7,369,722 B2 Technology Center 3900 ____________ Before SALLEY C. MEDLEY, ALLEN R. MacDONALD, and KARL D. EASTHOM, Administrative Patent Judges. EASTHOM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-000728 Reexamination Control 95/000,485 Patent 7,369,722 B2 This proceeding arose from a request by third-party Requester Fujitsu for an inter partes reexamination of U.S. 7,369,772 B2 to Gerstel et al., Optical Line Terminal Arrangement, Apparatus and Methods (May 6, 2008) assigned to Tellabs Operations, Inc. Prior to this appeal, third-party Requestor Fujitsu appealed under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s Right of Appeal Notice (RAN) which confirmed claims 2 and 6-24 of the ‘772 patent. Pursuant to that appeal, the Board reversed the Examiner’s decision not to maintain Fujitsu’s proposed rejections of claims 2 and 6-24 then at issue. (See (first) Decision on Appeal (Dec. 12, 2011) (BPAI App. No. 2011-008698) 2, 24 (citing 37 C.F.R. § 41.77(a, b) - reversal of examiner’s determination not to reject claims is denominated a new ground of rejection).) Subsequent to the ‘8698 Board decision, in an Amendment Under 37 C.F.R. 41.77(b) (Jan. 17, 2012) [hereinafter Amendment], Patent Owner amended or canceled the claims found unpatentable by the Board and presented new claims 2, 6, 8-13, 17, 18, 21-41 before the Examiner with accompanying arguments for patentability. (See Amendment at 16-36.) After considering Patent Owner’s Amendment and subsequent newly proposed rejections and arguments by Requester in 3 rd Party Requester’s Response to Patent Owner’s Submissions Pursuant to 37 C.F.F. 41.77(c) (Feb. 13, 2012) [hereinafter 1 st Response], the Examiner, adopting and incorporating Requester’s 1 st Response, decided, in the Determination Under 37 C.F.R. 41.77(d) (March 26, 2012), to maintain Requester’s proposed rejections to the amended claims. In response to the Examiner’s Determination, Patent Owner Tellabs, now Appellant, filed Patent Owner Comments Under 37 C.F.R. 41.77(e) Appeal 2013-000728 Reexamination Control 95/000,485 Patent 7,639,722 B2 3 (May 1, 2012) [hereinafter Comments], and in response thereto, Requester Fujitsu, now Respondent, filed 3 rd Party Requester’s Response to Patent Owner’s Submission Pursuant To 37 C.F.R. 41.77 (e) (May 29, 2012) [hereinafter 2 nd Response]. We AFFIRM. STATEMENT OF THE CASE The ‘8698 Board decision and the underlying record constitute part and parcel of this Decision. Respondent, Requester Fujitsu, provides detailed claim charts and rationale including annotated circuit diagrams to show how the newly amended claims read on the prior art. Respondent also characterizes the new amendments as essentially adding known prior art elements to known optical systems, or as modifying known optical systems to include such elements – i.e., adding to or modifying optical systems embraced in claims which the Board found to be unpatentable in the ‘8698 Board decision. 1 Appellant, Patent Owner Tellabs, maintains that the amended claims represent unobvious modifications to the claims previously determined by the Board to be unpatentable in the ‘8698 Board decision. The respective contentions raise the issues of whether the Examiner erred in determining that the prior art proposed by Requester renders obvious 1) modifying Cao-1‘s 2 preferred two loop optical system to include three loops with a three-way switch to handle such optical loops; 2) modifying Cao-1’s local 1 The Board adopts and incorporates by reference the 2 nd Response and the 1 st Response at 16-38 and the attached claim charts CC-A, CC-B, CC-C, and CC-D which collectively describe the prior art and rejections. 2 Cao, U.S. 6,169,616 B1 (Jan. 2001). Appeal 2013-000728 Reexamination Control 95/000,485 Patent 7,639,722 B2 4 drop O-E (optical to electrical) receivers or transmitters to include O-E-O (optical-electrical-optical) transponders; and 3) replacing Cao’1’s multiple stage optical demultiplexer with a one stage demultiplexer. Exemplary amended claims 2 and 6 in dispute follow: 3 2. (as amended after the ‘8698 Board decision) [The] A wavelength division multiplexed optical communication system [of claim 1,] comprising: a first optical line interface optically coupled to an input of a first transponder; a first local optical port optically coupled to an output of the first transponder; an optical demultiplexer through which the first optical line interface is not optically coupled to the first transponder; a second optical line interface; a third optical line interface; a second local port optically coupled to a second transponder; and at least one switch operable to optically couple the second optical line interface to (a) the first optical line interface through at least the optical demultiplexer, alternatively (b) the second transponder, and (c) alternatively the third optical line interface, wherein the first, second, and third optical line interfaces are each operable to both transmit a WDM signal from the system, and receive a WDM signal into the system, wherein the optical switch is an Nx1 optical switch. 3 In amendments, changes relative to the patent are marked by brackets indicating matter omitted and underlining indicating matter added. 37 C.F.R. § 1.530(f). Appeal 2013-000728 Reexamination Control 95/000,485 Patent 7,639,722 B2 5 6. (as amended after ‘8698 Board decision) An optical add/drop multiplexing system for a wavelength division multiplexed (WDM) optical network environment having a series of optical WDM transmission lines that together connect a source optical node to a sink optical node through at least one intermediate optical node, comprising: a first optical line interface operable to receive from a WDM network an optical signal comprising a plurality of wavelengths multiplexed therein and also operable to transmit to a WDM network an optical signal comprising a plurality of wavelengths multiplexed therein; a first transponder optically coupled to the first optical line interface, wherein the system is operable to communicate a wavelength from the first optical line interface to the first transponder to drop the wavelength, and the first transponder is an electro-optical conversion (OEO) device adapted to receive a network-side optical signal and in response output a client-side optical signal; an optical demultiplexer through which the first line interface is not optically coupled to the first transponder; a second transponder, wherein the second transponder is an electro- optical conversion (OEO) device adapted to receive a client-side optical signal and in response output a network-side optical signal; a second optical line interface operable to transmit to a WDM network an optical signal comprising a plurality of wavelengths multiplexed therein and also operable to receive from a WDM network an optical signal comprising a plurality of wavelengths multiplexed therein; an optical switch operable in a first state of the system to optically couple the first optical line interface to the second optical line interface through at least the optical demultiplexer, and alternatively operable in a second state of the system to optically couple the second transponder to the second optical line interface; and a third optical line interface operable to receive from a WDM network another optical signal comprising a plurality of wavelengths multiplexed Appeal 2013-000728 Reexamination Control 95/000,485 Patent 7,639,722 B2 6 therein and also operable to transmit to a WDM network another optical signal comprising a plurality of wavelengths multiplexed therein; wherein in the first state the system is operable to communicate a wavelength from the first optical line interface to the second line optical interface without any intermediate electro-optical conversion (OEO) to pass the wavelength as a pass-through wavelength from one optical WDM transmission line to a sequentially next optical WDM transmission line in the series, and the optical demultiplexer receives the pass-through wavelength along with a plurality of additional wavelengths with which the pass-through wavelength is multiplexed and in one stage demultiplexes the pass-through wavelength into an individual wavelength and each of the additional wavelengths into an individual wavelength, and wherein in the second state the system is operable to communicate a wavelength from the second transponder to the second optical line interface to add the wavelength, and wherein the optical switch is alternatively operable in a third state of the system to optically couple the third optical line interface to the second optical line interface, wherein in the third state of the system the system is operable to communicate a wavelength from the third optical line interface to the second optical line interface without any intermediate electro-optical conversion (OEO) to pass the wavelength. (Amendment 3-4 (emphasis showing amended claim portions – see supra note 3).) Patent Owner appeals from the Examiner’s decision to adopt the following proposed rejections: Claims 2, 6, 9-13, 17, 18, 22, 23, 25-36 as obvious based on Cao-1and Ramaswami. 4 4 Rajiv Ramaswami & Kumar N. Sivarajan, Optical Networks: A Practical Perspective (1998). Appeal 2013-000728 Reexamination Control 95/000,485 Patent 7,639,722 B2 7 Claims 8 and 21 as obvious based on Cao-1, Ramaswami, and Wu. 5 Claims 24 and 37-41 as obvious based on Cao-1, Ramaswami, and Brorson. 6 (See 1 st Response 20-36.) Additionally referring to what amounts to cumulatively proposed rejections addressed in the ‘8698 Board decision, Respondent also generally relies on prior art references to Chang, 7 Koehler, 8 Flood, 9 and Green 10 to assert the unpatentability of the newly amended claims. (See 1 st Response 36-37.) As Patent Owner maintains (see Comments 32-36), Respondent’s showing with respect to that prior art is insufficient as devoid of specifics and fails to support the generally proposed rejections of the amended claims now before the Board. Based on the affirmance, the Board accepts Respondent’s invitation to decline to consider Respondent’s remaining arguments related to Patent Owner’s allegedly “improper amendments and improper dependent claims.†(See 2 nd Response 15.) ANALYSIS Appellant, Patent Owner Tellabs, does not direct separate patentability arguments to independent claims 2, 6, 17, and 24 or the dependent claims. 5 Wu et al., U.S. 6,545,783 B1 (Apr. 2003). 6 Brorson et al., U.S. 5,930,016 (July 1999). 7 Gee-Kung Chang et al., Multiwavelength Reconfigurable Network Testbed, 14 J. Lightwave Tech. 6, 1320-1340 (June 1996). 8 Koehler, U.S. 6,426,815 B1 (July 2002). 9 Flood et al., U.S. 6,134,047 (Oct. 2000). 10 Paul E. Green, Jr., Fiber Optic Networks (1993). Appeal 2013-000728 Reexamination Control 95/000,485 Patent 7,639,722 B2 8 Accordingly, claims 2 and 6 are selected to represent the claims on appeal. Claims 2 and 6 raise the common issues involving the third optical interface and optical to optical conversion and are treated together with respect to those limitations. (See Comments 11-21.) Appellant argues that it would not have been obvious to add a third optical interface to Cao-1’s system. (See Comments 11-19.) As part of the proposed rejection, Respondent supplies several modified figures aggregated from related figures in Cao-1 in Appendices CC-A and CC-B (attached to the 1 st Response), and includes similar modified figures in the 2 nd Response, e.g., including the following modified version of Cao-1’s Fig. 3A, all to show how such a third optical line interface would have been obvious and implemented in Cao-1’s optical system: Appeal 2013-000728 Reexamination Control 95/000,485 Patent 7,639,722 B2 9 Respondent’s Figure 8 represents a modified version of Cao-1’s Figures 3A and 3B combined to show three optical line interfaces. (See 1 st Response 23.) As indicated and as Appellant argues, Figure 3A of Cao-1 only shows two optical line interfaces. However, Cao-1 specifically discloses exchange points at “two or more loops,†as follows: A crucial feature of a fiber optic network is the exchange of wavelengths between signals on “loops†within networks. The exchange occurs at connector points, or points where two or more loops intersect for the purpose of exchanging wavelengths. (Cao-1, col. 1, ll. 14-19 (emphasis added).) Respondent quotes and relies, inter alia, on this Cao-1 teaching in support of the above figure (see 1 st Response 23; 2 nd Response 5), and also modifies prior art Figure 1 of Cao-1 to further show why the third optical interface at a single exchange point would have been obvious. (See 2 nd Response 5 (citing Appellant’s expert Leaird Decl. at ¶ 16 (level of skill) and Respondent’s expert Willner Decl. at ¶ 26 (citing Cao-1’s disclosure of two or more loops at an exchange point to support an obviousness conclusion).) Respondent’s expert Willner also cites to Green and Ramaswami to show that optical cross-connects serving two or more loops (i.e., having two or more optical interfaces) were well-known and would have been obvious. (See Willner Decl. at ¶¶ 20, 24-27.) Appellant responds, in reliance on the Leaird Declaration, to the effect that Cao-1’s specifically disclosed figures and other disclosures relate only to two loop systems, but Appellant does not persuasively rebut the above- quoted specific teaching in Cao-1 which discusses “two or more loops†at a Appeal 2013-000728 Reexamination Control 95/000,485 Patent 7,639,722 B2 10 connector point for exchanging wavelengths between the three loops. (See Comments 15-16 (citing Leaird Decl. at ¶ 26).) 11 Appellant also does not rebut Respondent’s assertion that Green and Ramaswami disclose optical cross-connects for exchanging wavelengths between two or more loops. Based on the foregoing and following discussion, Appellant has not shown error in the Examiner’s determination. Appellant also argues that Respondent does not show how to combine the teachings. (See Comments 16-18.) But Respondent does show how a skilled artisan would accommodate the third optical interface by modifying Cao-1’s 4x1 switch and replacing it with a 5x1 switch. Respondent also persuasively provides several modified circuit diagrams to show how this modification and others would be accomplished and supports the rationale by further reliance on the Willner Declaration and Ramaswami at 341. (See, e.g., 1 st Response 24-26.) Respondent also notes that Ramaswami teaches that M loops (for example, three – i.e., more than two as Cao-1 teaches) would have M x M cross-connects with each of the M fiber links carrying W wavelengths to “‘allow[] a wavelength on an incoming link to be switched to any outgoing link, independent of the other wavelengths.’†(See 1 st Response 24 (quoting Ramaswami at 341).) Each wavelength and respective link corresponds to a separate optical line interface for a communication channel. (See 1 st Response 17-18, 24; Cao-1, col. 1, ll. 24-25.) Respondent further explains that these prior art cross-connect switches serve the same or similar purpose 11 The cited Leaird paragraph (26) does not address the noted Cao-1 teaching and Appellant does not direct attention to whether the Leaird Declaration otherwise addresses it. Appeal 2013-000728 Reexamination Control 95/000,485 Patent 7,639,722 B2 11 of wavelength transfer between links as Cao-1’s system which includes add/drop modules and 4x1 switches. (See 1 st Response 24-25; Cao-1, Fig. 7.) Appellant’s counter arguments that such a modification would have been costly and would have taught away from Cao-1’s modular design are not persuasive. (See Comments 18.) As Respondent notes, Cao-1 teaches that a connection between two or more loops is “‘crucial.’†(2 nd Response 5 (quoting Cao-1).) High cost, without more, generally fails to show unobviousness. Appellant also does not explain why using a 5x1 switch in place of a 4x1 switch defeats any modularity exemplified by Cao-1 or adds extraneous hardware which would have taught away from Cao-1’s system. Such a switch replacement simply accommodates the extra (third) loop disclosed or suggested by Cao-1 as Respondent explains. Appellant also argues that adding an O-E-O transponder or optical coupling switch to Cao-1’s system would not have been obvious because Cao-1 teaches against such transponders. (See Comments 19-21.) Respondent relies on the Willner Declaration and Ramaswami. Ramaswami teaches that “optoelectronic wavelength conversion is ‘perhaps the simplest, most obvious, and most practical method today to realize wavelength conversion.’†(1 st Response 26 (quoting Ramaswami at 162).) Respondent also points out that Cao-1 and Ramaswami also discuss the ability of add/drop multiplexers to add and drop local traffic. (See 1 st Response 27.) As Respondent explains, it would have been obvious to employ such an O- E-O converter to handle local two-way WDM traffic “when data ‘enters[s] Appeal 2013-000728 Reexamination Control 95/000,485 Patent 7,639,722 B2 12 the network at a wavelength that is not suitable for use within the network’†as Ramaswami suggests. (See 1 st Response 27 (quoting Ramaswami).) According to Respondent, Appellant’s teaching away arguments are directed to O-E-O conversions that occur in Cao-1’s pass-through switch points in an optical cross-connect, and are not relevant to the modification or teaching involving local traffic to client equipment. (See 2 nd Response 9- 10.) Cao-1 supports Respondent since Cao-1 states that the problem with prior art O-E-O transponders is that when an O-E-O conversion is required, it involves changing protocols, speed, and the number of wavelengths at each connection point in an optical system – thus involving a costly change since numerous connection points exist in typical systems. (See Cao-1, col. 2, ll. 31-40.) In contrast, Respondent’s proposed modification involves changing a relatively few number of local connections at the end-points of the system using an O-E-O wavelength conversion so that a local point wavelength can be converted to a wavelength as required by the transmitting optical interconnection system. In other words, a local computer in a neighborhood might require such an optical wavelength conversion to communicate with a new or existing optical system which happens to employ a different carrier wavelength(s) for its channels. Appellant also argues that modifying a portion of Cao-1’s demultiplexer into one stage would not have been obvious. (Comments 25- 32.) Respondent explains how Ramaswami’s single stage or one stage demultiplexer could be substituted for (a box drawn by Respondent around) one or more of Cao-1’s demultiplexers 450 or 460 (see 1 st Response at 30) Appeal 2013-000728 Reexamination Control 95/000,485 Patent 7,639,722 B2 13 and further explains that such a substitution would have been simple and easy to fabricate. (See 1 st Response 30-34; 2 nd Response 13.) 12 Respondent maintains that single stages were well-known and relies on Ramaswami’s Chapter 3.3 in general and further cites Ramaswami’s Figures 3.17 and 3.21 which respectively represent specific examples of a thin-film demultiplexer and an arrayed waveguide grating demultiplexer. (See 2 nd Response 13.) Respondent also persuasively explains that Cao-2 only teaches away from certain types of single stage devices, contrary to Appellant’s assertions, and does not teach away from the types disclosed in Ramaswami which do not have the insertion loss problem mentioned in Cao- 2. (See 2 nd Response 13-14.) Respondent also points out that the ‘722 patent only refers to one stage demultiplexing in a single sentence without describing the internal structure of such a one stage demultiplexer – i.e., the “‘722 Patent is drawn using ‘black boxes’.†(See 2 nd Response 12, n. 9 (citing ‘772 Patent at col. 2, ll. 1-4).) This black box approach and simple characterization in the ‘772 Patent that the demultiplexer “may include one or more stages†(’773 patent, col. 2, l. 2) signifies well-known structure and a ready substitution of one stage for many stages. Appellant’s arguments fail to show that the one stage limitation involves anything more than simple substitution of one type of 12 Appellant does not argue that claim 6 precludes a demultiplexer or demultiplexer stage upstream of the box drawn by Respondent in annotated Figure 11 (which corresponds to Cao-1’s Figure 4). (See 1 st Response 30.) Given Respondent’s substitution rationale which is discussed further below, the Board deems it unnecessary to consider Respondent’s alternative argument that the box drawn in annotated Figure 11 represents one stage. (See 1 st Response 29-30.) Appeal 2013-000728 Reexamination Control 95/000,485 Patent 7,639,722 B2 14 demultiplexer for another. Respondent also explains that even if Ramaswami only shows a 4x1 wavelength demultiplexer, Cao-1’s top and bottom demultiplexers each only handle four wavelengths – thereby further suggesting a ready substitution. (See 2 nd Response 13.) On this record, Respondent shows that the added limitations to claims the Board found unpatentable in the previous ‘8698 Board decision amount to mere substitutions or the predictable use of prior art components for their established functions. Respondent also persuasively sets forth rational underpinnings which support articulated reasons for making these mere substitutions or modifications upon which the Examiner relies. Based on the respective findings and arguments presented, Appellant has not demonstrated that the Examiner erred in maintaining the proposed rejections of claims 2, 6, 8-13, 17, 18, and 21-41 for obviousness. DECISION AFFIRMED ack For Patent Owner: Fitzpatrick Cella Harper & Scinto 1290 Avenue of the Americas New York, NY 10104-3800 For Third Party Requester: Orrick, Herrington & Sutcliffe, LLP IP Prosecution Department 4 Park Plaza Suite 1600 Irvine, CA 92614-2558 Copy with citationCopy as parenthetical citation