Ex Parte 7369772 et al

Patent Trial and Appeal Board

Jan 8, 2013

95000485 (P.T.A.B. Jan. 8, 2013)

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)
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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).
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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).

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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
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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).
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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).
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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:

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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
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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.
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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]
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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)
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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.)
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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