Ex Parte Abe et al

Patent Trial and Appeal BoardAug 1, 2013

11632314 (P.T.A.B. Aug. 1, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JUN'ICHI ABE, KATSUHIRO SHIMIZU, TOSHIO HASEGAWA, TSUYOSHI NISHIOKA, and HIROKAZU ISHIZUKA ____________________ Appeal 2011-004518 Application 11/632,314 Technology Center 2400 ____________________ Before KALYAN K. DESHPANDE, DAVID M. KOHUT, and MICHAEL J. STRAUSS, Administrative Patent Judges. DESHPANDE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004518 Application 11/632,314 2 STATEMENT OF CASE1 The Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 8-14, 17 and 18, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. The Appellants invented an optical communication system including a photon detecting device that can detect a photon at a high speed in a single- photon level and the photon detecting device. Specification 1:10-13. An understanding of the invention can be derived from a reading of exemplary claim 8, which is reproduced below [bracketed matter and some paragraphing added]: 8. A photon detecting device comprising: a wavelength demultiplexer that demultiplexes a wavelength multiplexed incident photon pulse string based on wavelengths of the photons in the photon pulse string; a plurality of photon detectors each of which detects a photon that is demultiplexed by the wavelength demultiplexer and outputs a signal based on detected photon; a bias applying unit that applies a gate pulse as a bias voltage to at least some of the photon detectors to match an incidence timing of an output light of the wavelength demultiplexer to the photon detectors; and a data processor that converts the signals from the photon detectors into time series signals, wherein 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Oct. 1, 2010) and Reply Brief (“Reply Br.,” filed Jan. 3, 2011), and the Examiner’s Answer (“Ans.,” mailed Nov. 4, 2010), and Final Rejection (“Final Rej.,” mailed May 5, 2010). Appeal 2011-004518 Application 11/632,314 3 [t]he bias applying unit applies the gate pulse at a cycle based on a synchronous signal, and the bias applying unit applies the gate pulse at a cycle nT, n being a number of the plurality of photon detectors and T being a time interval of the wavelength multiplexed photon pulse string. REFERENCES The Examiner relies on the following prior art: Koishi Suzuki US 5,591,962 US 5,892,608 Jan. 7, 1997 Apr. 6, 1999 Kato Flusberg US 2003/0231885 A1 US 2004/0250111 A1 Dec. 18, 2003 Dec. 9, 2004 Sunx JP 04-048737 Apr. 24, 1992 REJECTIONS Claims 8-10 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Kato, Sunx, Koishi, and Official Notice. Claims 11-14, 17 and 18 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Kato, Sunx, Koishi, Official Notice, and Flusberg. ISSUES The issue of whether the Examiner erred turns on whether the combination of the cited prior art teaches or suggests “the bias applying unit applies the gate pulse at a cycle nT, n being a number of the plurality of photon detectors and T being a time interval of the wavelength multiplexed photon pulse string.” Appeal 2011-004518 Application 11/632,314 4 ANALYSIS We have reviewed the Examiner’s rejections in light of the Appellants’ contentions that the Examiner has erred. We disagree with the Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to the Appellants’ Appeal Brief. We concur with the conclusion reached by the Examiner. We highlight the following arguments for emphasis. Claims 8-10 Rejected under 35 U.S.C. §103(a) As Being Unpatentable over Kato, Sunx, Koishi, and Official Notice The Appellants contend that the combination of the cited prior art fails to teach or suggest “[a] photon detecting device…wherein…the bias applying unit applies the gate pulse at a cycle based on a synchronous signal, and the bias applying unit applies the gate pulse at a cycle nT, n being a number of the plurality of photon detectors and T being a time interval of the wavelength multiplexed photon pulse string.” App. Br. 5-8 and Reply Br. 2- 7. The Appellants specifically argue that Kato fails to describe applying a gate pulse at cycle nT and Koishi fails to describe applying the gate plus as a function of a plurality of photon detectors. App. Br. 5-7. We disagree with the Appellants. The Examiner’s rejection is based on the combination of the references. The Examiner has relied on Kato to describe multiplexing based on wavelength and Koishi to describe generating a sine wave signal, where the frequency or wavelength of the Appeal 2011-004518 Application 11/632,314 5 signal changes based on its destination. Ans. 10-13. The Examiner has further relied on Official Notice that it is old and well-known in the art to apply a gate pulse at a cycle nT, where n is the number of photon detectors and T is the time interval of the wavelength. Id. As such, the Appellants’ argument that Kato and Koishi fail to describe features that the Examiner has relied on Official Notice is tantamount to an attack on the references individual. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Appellants further traverse the Examiner’s Official Notice2 and present arguments that the reference provided by the Examiner to bolster the Examiner’s Official Notice is deficient. Reply Br. 5-6. The Appellants contend that Suzuki describes “demultiplexing a time-division lightwave and applying the demultiplexed signals to optical detectors. However, nowhere in Suzuki is there a disclosure or suggestion of a bias applying unit [that] 2 The Appellants also present arguments that the Examiner has not taken Official Notice and cite to the Suzuki reference requires the rejection of the claims to be designated as a new ground of rejection. Reply Br. 4-5. We remind the Appellants that we are limited to the record before us. The Examiner has presented a rejection that includes OfficialNotice. Further, the Appellants’ argument that this rejection should be designated as new ground is a petitionable matter and not an appealable matter. See In re Schneider, 481 F.2d 1350, 1356-57, 179 USPQ 46, 51 (CCPA 1973) and In re Mindick, 371 F.2d 892, 894, 152 USPQ 566, 568 (CCPA 1967). See also the MPEP § 1002.02(c), item 3(a) and § 1201. Thus, the relief sought by the Appellants would have been properly presented by a petition to the Commissioner under 37 C.F.R. § 1.181 instead of by appeal to this Board. Accordingly, we will not further consider this issue. Appeal 2011-004518 Application 11/632,314 6 applies the gate pulse at a cycle nT.” Id. However, we are not persuaded by this argument. The Appellants’ argument fails to rebut the finding by the Examiner. The Examiner found that Suzuki describes a time-division multiplexed 20-Gb/s lightwave that is demultiplexed into four 5-Gb/s lightwaves across four optical detectors. Ans. 11 (citing Suzuki Fig. 7 and 7:46-66). While the Appellants argue that such a description is not the same as the limitations being claimed, the Appellants do not provide any evidence or rationale to illustrate how the claimed invention is distinguished from this teaching of Suzuki. Absent persuasive evidence or rationale, we sustain the Examiner’s Official Notice, as bolstered by Suzuki. Claims 11-14, 17 and 18 Rejected under 35 U.S.C. §103(a) As Being Unpatentable over Kato, Sunx, Koishi, Official Notice, and Flusberg The Appellants contend that the Examiner erred in rejecting claims 11-14, 17 and 18 for the same reasons asserted in support of claim 8. App. Br. 7-8. We disagree with the Appellants. The Appellants’ arguments were not found to be persuasive supra and are not persuasive here for the same reasons. CONCLUSION The Examiner did not err in rejecting claims 8-14, 17 and 18. DECISION To summarize, our decision is as follows.  The rejection of claims 8-14, 17 and 18 is sustained. Appeal 2011-004518 Application 11/632,314 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED tj