Ex Parte B. Hansen et al

Patent Trial and Appeal Board

Nov 29, 2016

13517736 (P.T.A.B. Nov. 29, 2016)

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.
13/517,736 06/14/2012 Ulrich Vestergaard B. Hansen 2011P07810US 8048
22116 7590 12/01/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
SANCHEZ, DIBSONJ
Orlando, EL 32817 ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
12/01/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ULRICH VESTERGAARD B. HANSEN
and JANNIK HOEJGAARD
Appeal 2016-002191
Application 13/517,73b1
Technology Center 2600
Before CARLA M. KRIVAK, DANIEL J. GALLIGAN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1—9, 11, 12, and 14—20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 The Appeal Brief identifies Siemens Aktiengesellschaft as the real party in
interest. App. Br. 3.
2 Our Decision refers to Appellants’ Appeal Brief, filed July 17, 2015 (“App.
Br.”); Appellants’ Reply Brief, filed December 8, 2015 (“Reply Br.”);
Examiner’s Answer, mailed October 29, 2015 (“Ans.”); and Final Office
Action, mailed February 24, 2015 (“Final Act.”).
Appeal 2016-002191
Application 13/517,736
STATEMENT OF THE CASE
Claims on Appeal
Claims 1 and 18 are independent claims. Claim 1 is reproduced
below:
1. An Ethernet switch, comprising:
an input terminal and an output terminal configured to
couple the Ethernet switch to a communication network;
a power terminal configured to couple the Ethernet switch
to a power supply, and
a control unit being adapted to control an optical path of
optical signals within the Ethernet switch,
wherein, in a first operation mode, the control unit is
adapted to direct signals received via the input terminal to an
internal input terminal of the Ethernet switch, and to direct
signals received via an internal output terminal of the Ethernet
switch to the output terminal,
wherein, in a second operation mode, the control unit is
adapted to direct signals received via the input terminal to the
output terminal, and
wherein the control unit is adapted to switch from the first
operation mode into the second operation mode in response to a
predefined trigger event,
wherein the control unit shifts out of the optical path of the
optical signals via gravity and in response to the predefined
trigger, and the optical signals bypass the control unit in the
second operating mode.
References
Sucharczuk et al. US 2003/0035641 A1 Feb. 20, 2003
Liao et al. US 2003/0048981 Al Mar. 13, 2003
Zimheld et al. US 2006/0115268 Al June 1, 2006
M. Nunoshita and Y. Nomura, “Optical bypass switch for fiber-optic data
bus systems,” Applied Optics, Aug. 1980.
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Appeal 2016-002191
Application 13/517,736
Examiner’s Rejections
Claims 1—7 and 14—18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zimheld and Nunoshita. Final Act. 5—11.
Claims 8, 9, and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zimheld, Nunoshita, and Liao. Final Act. 11—12.
Claims 11, 12, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zimheld, Nunoshita, and Sucharczuk.
Final Act. 12—14.
ANALYSIS
Issue 1: Did the Examiner err in finding the combination of Zimheld
and Nunoshita teaches or suggests that “the control unit shifts out of the
optical path of the optical signals via gravity and in response to the
predefined trigger, and the optical signals bypass the control unit in the
second operating mode,” as recited in claim 1 and similarly recited in
claim 18? (Emphasis added).
Appellants contend that the prior art teaches shifting using a spring,
not “via gravity.” App. Br. 10-12; Reply Br. 5—7. For example, Appellants
argue:
Applicant agrees that gravitation forces exist all around us, i.e.,
on earth, as the Examiner so eloquently represented. However,
what the Examiner fails to appreciate is that the claims do not
recite that gravity exists on earth. Instead, the claimed invention
requires that a pre-defmed trigger causes the unit to shifts [sic]
out of the path without the assistance of, e.g., a spring.
App. Br. 11. Appellants further argue that “[t]he Examiner’s suggestion of
removing the spring S from the Nuno[shita] device is also impermissible, as
removing the spring S would effectively change the function of the device,
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Application 13/517,736
and render it inoperable for its intended purpose, which is to use the spring S
to swing the ‘control unit’ back.” App. Br. 12 (emphases removed).
Appellants’ arguments are not persuasive because they are not
commensurate in scope with the claims as they are presented on appeal and
because they are not responsive to the Examiner’s findings. First,
Appellants are incorrect that “the claimed invention requires that a pre­
defined trigger causes the unit to shifts [sic] out of the path without the
assistance of, e.g., a spring.” See App. Br. 11. Neither claim 1 nor claim 18
recites that the shifting occurs without the assistance of a spring. Notably,
the applicants amended claims 1 and 18 to remove that explicit recitation,
which appeared in an earlier set of claims. See Response to Office Action,
filed Nov. 5, 2014. Prior to that amendment, claim 1 recited that “the
control unit falls due to gravity, and without the assistance of a spring
element, in response to the predefined trigger, such that the control unit is
not in the optical path of the optical signals.” See id. Appellants’ arguments
for patentability based on limitations that are not recited in the claims are not
persuasive of Examiner error.
Second, Appellants’ arguments regarding the Examiner’s alleged
“suggestion of removing the spring” (see App. Br. 12) are not responsive to
the Examiner’s findings in the action from which this appeal is taken
because the Examiner does not propose to remove the spring. See Final Act.
7—8; Ans. 10 (“[T]he spring S is not being removed and consequently, the
switch is kept operable for its intended purpose.”). Rather, Appellants’
arguments appear to be directed to the Examiner’s rejection of an earlier
version of Appellants’ claims, which explicitly recited “without the
assistance of a spring element.” See Non-Final Action, mailed Aug. 5, 2014.
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Application 13/517,736
In that rejection, the Examiner relied on a third reference, Morgan (US
3,120,631), to explain that it would have been obvious remove the spring
such that the weight of the mirrors would make them fall when power to the
magnet was cut off. See id. at 6—7.
Appellants’ remaining arguments regarding an alleged failure of the
prior art to teach shifting the control unit “via gravity and in response to the
predefined trigger” are unavailing. See App. Br. 11; Reply Br. 5—6.
Appellants argue Nunoshita “does not remotely disclose any orientation for
its device, and persons of ordinary skill in the art would not take for granted
that it is gravity that causes the iron piece to shift since Nuno[shita] teaches
the use of the spring S.” App. Br. 11. Although a spring force acts on the
mirrors, we agree with the Examiner that gravity acts on the mirrors in
Nunoshita as well. See Ans. 6—10. The claims do not prohibit additional
forces from acting on the control unit, and as discussed above, the restriction
“without the assistance of a spring element” was removed from the claim
language and, thus, is not a limitation. As the Examiner correctly notes,
“gravity is an unavoidable force experienced at all times and by all objects
on Earth” (Ans. 9), and, therefore, the shifting of a component “via gravity”
does not patentably distinguish over the prior art.
Issue 2: Did the Examiner err in finding the combination of Zimheld
and Nunoshita teaches or suggests, “wherein, in a first operation mode, the
control unit is adapted to direct signals received via the input terminal to an
internal input terminal of the Ethernet switch, and to direct signals received
via an internal output terminal of the Ethernet switch to the output terminal,”
as recited in claim 1 and similarly recited in claim 18?
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The Examiner maps ports 308 and 306 in Zimheld to the claimed
“internal input terminal” and “internal output terminal,” respectively. Final
Act. 6 (citing Zimheld 122, Fig. 3a). Appellants argue the Examiner erred
because Zimheld labels port 308 an “output port” and port 306 an “input
port.” App. Br. 12—13; Reply Br. 7. We are not persuaded of error because
the Examiner has shown Zimheld teaches directing signals between the
various terminals as required by the claims, regardless of what Zimheld
labels any particular terminal. See Final Act. 6. Zimheld describes signals
going from input port 312 to port 308 and from port 306 to output port 318
in one mode and, in a bypass mode, going straight from input port 312 to
output port 318, which is the flow of signals required by the claims.
Zimheld 22—23, Figs. 3a and 3b. Determining whether a reference
discloses particular subject matter is not an ipsissimis verbis test, i.e.,
identity of terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed.
Cir. 1990).
We are not persuaded the Examiner erred in concluding the subject
matter of claims 1 and 18 would have been obvious over the combination of
Zimheld and Nunoshita. Therefore, we sustain the rejection of these claims
under 35 U.S.C. § 103(a), as well as the rejections of claims 2—17, 19, and
20, for which Appellants present no additional persuasive arguments for
patentability.
DECISION
We affirm the Examiner’s decision rejecting claims 1—9, 11, 12, and
14—20 under 35 U.S.C. § 103(a).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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