Ex Parte Bethea et al

Patent Trial and Appeal BoardNov 30, 2012

10180173 (P.T.A.B. Nov. 30, 2012)

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. 10/180,173 06/26/2002 Clyde George Bethea 100.2435 1708 27997 7590 12/03/2012 LAW OFFICES OF PETER H. PRIEST, PLLC 5015 SOUTHPARK DRIVE SUITE 230 DURHAM, NC 27713-7736 EXAMINER CURS, NATHAN M ART UNIT PAPER NUMBER 2636 MAIL DATE DELIVERY MODE 12/03/2012 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 ____________ Ex parte CLYDE GEORGE BETHEA, JOHN PHILIP FRANEY, and JORGE LUIS VALDES ____________ Appeal 2010-000042 Application 10/180,1731 Technology Center 2600 ____________ Before JEAN R. HOMERE, CAROLYN D. THOMAS, and JAMES R. HUGHES, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is Lucent Technologies, Inc. Appeal 2010-000042 Application 10/180,173 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-9 and 13-23, which are all the claims remaining in the application. Claims 10-12 are cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The present invention relates generally to optical signal transmission and reception. See Spec. 1:5. Claim 1 is illustrative: 1. An optical transmitter for optical communication employing a monitor for monitoring an optical communication signal transmitted by the transmitter, comprising: a laser amplifier having an information signal input for receiving an information signal, the laser amplifier producing the optical communication signal at an output; a sensor for sensing dissipation of optical power of the optical communication signal by sensing a return optical signal, and for producing a sensing signal corresponding with the sensed dissipation; and a control system for adjusting the optical transmitter in response to the sensing signal, said control system further comprising a memory storing predetermined criteria against which to compare the sensing signal and a processor for comparing the sensing signal and one or more of said predetermined criteria, and controlling adjustment of the optical transmitter based upon the comparison. Appellants appeal the following seven (7) rejections: R1. Claim 4 is rejected under 35 U.S.C. § 112, 1st paragraph as failing Appeal 2010-000042 Application 10/180,173 3 to comply with the written description requirement; R2. Claims 1-3, 5, 9, and 13-16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Levinson (US 5,019,769, May 28, 1991) and Husbands (US 4,449,043, May 15, 1984); R3. Claim 4 is rejected is rejected under 35 U.S.C. § 103(a) as being unpatentable over Levinson, Husbands, and Tammela (US 6,111,687, Aug. 29, 2000); R4. Claims 6, 7, and 21-23 rejected under 35 U.S.C. § 103(a) as being unpatentable over Levinson, Husbands, and Shirai (US 5,861,974, Jan. 19, 1999); R5. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Levinson, Husbands, Shirai, and Tilly (US 4,553,268, Nov. 12, 1985); R6. Claims 17-19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Levinson, Husbands, and Tilly; and R7. Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Levinson, Husbands, Tilly, and Roberts (US 6,483,617 B1, Nov. 19, 2002). Claim Groupings Based on Appellants’ arguments in the Appeal Brief, we will decide the appeal on the basis of claims as set forth below. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2010-000042 Application 10/180,173 4 ANALYSIS Rejection Under §112, 1st paragraph Issue 1: Did the Examiner err in finding that claim 4 does not comply with the written description requirement? Appellants contend that “claim 4 specifically addresses a ‘remotely programmable comparison table’ not comparison table 221. The signal comparison table 414 of Fig. 4 is one example of a ‘remotely programmable comparison table.’” (App. Br. 7.) The Examiner found “that Appellant discloses that ‘the comparison table 221 may be programmed remotely at any time’ (page 11 of the specification, line 15), but Examiner respectfully submits that the specification does not specifically support remotely programming comparison table 221 by ‘sending programming signals along the optical cable.’” (Ans. 4.) The Examiner further found that “signal comparison table 414 is located in the optical receiver (see Figure 4), not the optical transmitter, and therefore does not correspond to the table recited in claim 4.” (Ans. 16.) In order to satisfy the written description requirement, “the [original] specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)(en banc). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (citations omitted). One shows possession “by such descriptive means as Appeal 2010-000042 Application 10/180,173 5 words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Here, the Examiner found that the claimed “comparison table” is located in the transmitter and Appellants’ Specification (i.e., words, structure, figures, diagrams, formulas, etc.) does not disclose remotely programming the same by sending programming signals along the optical cable (see Ans. 15-17). We agree. For example, claim 4 refers to “the remotely programmable comparison table” which is first recited in dependent claim 3. Specifically, claim 3 requires that “the predetermined criteria are stored in a remotely programmable comparison table.” The “predetermined criteria” is first recited in claim 1. Such “predetermined criteria” are stored in a memory in the control system of the optical transmitter (see claim 1). Therefore the Examiner reasoned, and we agree, that if the control system (with memory) is located in the transmitter, and the memory stores the predetermined criteria (i.e., stored in a comparison table), the “comparison table’ must be located in the transmitter. Appellants contend that comparison table 414 of Fig. 4 is one example of a remotely programmable comparison table (App. Br. 7). While we agree that Appellants’ table 414 may also be a “comparison table,” we note that table 414 is not the comparison table claimed in claims 3 and 4, for claims 3 and 4 require that the comparison table be located in the transmitter and table 414 is expressly disclosed as being located in the receiver (see Spec., 15:13 and 16:3-6). Appellants’ Specification discloses that table 414 may be remotely programmed by sending signals along the optical cable 106 (Spec., Appeal 2010-000042 Application 10/180,173 6 16:4-5). However, Appellants’ Specification fails to disclose the same for table 221 (see Fig. 2) which is located in the transmitter. As Appellants’ Specification has not identified any “comparison table[s]” located in the transmitter which are remotely programmed by sending programming signals along the optical cable, we find Appellants’ arguments unpersuasive. Based on the record before us, we find no error in the Examiner’s rejection of claim 4 under §112, first paragraph, essentially for the reasons indicated by the Examiner. Grouping of Claims under §103(a) rejection Appellants argue claims 1-9, 13, 14, and 16-23 as a group (App. Br. 8- 18). For claims 2-9 and 13-23, Appellants essentially repeat the same argument made for claim 1. We will, therefore, treat claims 2-9 and 13-23 as standing or falling with claim 1. Appellants separately argue claim 15 (App. Br. 13). See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991). Rejection Under §103(a) 1-9, 13, 14, and 16-23 Issue 2: Did the Examiner err in finding that the combined teachings of the cited art, particularly Husbands, teach and/or suggest sensing dissipation of optical power by sensing a return optical signal and comparing the sensing signal to a predetermined criteria, as claimed? Appellants contend that Husbands “compares two signals to determine whether a connection is made or not made” and “a second comparison of output 59 of the differential comparator 58 with a threshold signal 61.” Appeal 2010-000042 Application 10/180,173 7 (App. Br. 11.) Appellants further contend that “Husbands does not teach and does not make obvious ‘a sensing signal corresponding to the sensed dissipation’ nor ‘comparing the sensing signal and one or more of said predetermined criteria’ as claimed in claim 1.” (Id.) We disagree. We initially note that the disputed limitations, “for sensing dissipation of optical power . . . for producing a sensing signal . . . for comparing the sensing signal” (claim 1), are essentially statements of intended use or purpose of the recited optical transmitter. However, the intended use does not change the structure of the optical transmitter and, in this instance, does not further limit the scope of the claims. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (A statement of intended use “usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.”). Even if we, arguendo, ascribe some patentable weight to these limitations, we refer to, rely on, and adopt the Examiner's persuasive findings and conclusions set forth in the Answer. Our discussions here will be limited to the following points of emphasis. The recited “sensing dissipation of optical power . . . by sensing a return optical signal” is strikingly similar to Husbands’ teachings, and the Examiner’s reliance on these functionalities is therefore persuasive. Specifically, “[a]s clearly illustrated by arrow A in the drawing [of Husbands] detector 38 receives optical energy reflected from the unmated glass/air and mated air/glass interface of connectors 16 and 22.” (Husbands, col. 3, ll. 42-46.) In other words, a sensor/detector in Husbands detects a Appeal 2010-000042 Application 10/180,173 8 return optical energy signal reflected from connectors 16 and 22. Furthermore, in Husbands’ circuitry: This backscattered energy (arrow A) will be output at port 30 of coupler 26. Optical receiver circuit 36 receives the energy emitted at ports 30 and 32, and provides output signals 50 and 52, respectively. . . . the resulting signals 50 and 52 applied to differential comparator 58 . . . . This output 59 of comparator 58 is applied as the input of threshold comparator 60 . . . . This signal 62 from threshold comparator 60 is applied to transistor switch 64 which is used to control the DC power 68 applied to optical power source 12. (Husbands, col. 4, ll. 9-45.) Stated differently, Husbands detects a reflected (i.e., returned) optical signal and provides output signals. These output signals are applied as input to a differential comparator, the output of which is applied as the input to a threshold comparator. The signal outputted from the threshold comparator is used to control the optical power source. We find that the claimed “sensing dissipation of optical power” and comparing the sensing signal to a predetermined criteria reads on at least the teachings of Husbands noted above. For a prima facie case of obviousness to be established, the reference need not recognize the problem solved by the Appellants. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.”) There is no requirement that the problem solved by the secondary reference be discussed by the primary reference to apply the Appeal 2010-000042 Application 10/180,173 9 teachings of the secondary reference in a rejection under 35 U.S.C. § 103. The Supreme Court has held that in analyzing the obviousness of combining elements, a court need not find specific teachings, but rather may consider “the background knowledge possessed by a person having ordinary skill in the art” and “the inferences and creative steps that a person of ordinary skill in the art would employ.” See KSR Int'l Co. v. Teleflex, Inc., 550 U.S 398, 418 (2007). To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions,” and the basis for an obviousness rejection must include an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. The Examiner has found actual teachings in the prior art and has provided a rationale for the combination. Further, the teachings suggest that the combination involves the predictable use of prior art elements according to their established functions. Accordingly, we find that the Examiner has provided sufficient motivation for modifying Levinson with the teachings of Husbands, and we will sustain the obviousness rejection of claims 1-9 and 13-23. In view of the above discussion, Appellants do not persuade us of error in the Examiner’s obviousness rejection of representative claim 1, independent claim 13, which includes commensurate limitations, or dependent claims 2-9, 13, 14, and 16-23 which are not separately argued with particularity (App. Br. 8-18). Accordingly, we affirm the Examiner’s obviousness rejections R2-R7. Appeal 2010-000042 Application 10/180,173 10 Claim 15 Issue 3: Did the Examiner err in finding that Levinson teaches and/or suggests a remotely programmable comparison table, as claimed? Appellants contend that “Levinson’s programming appears to be by a terminal or desktop computer 202 connected to an RS 232 port and local to the transmitter rather than ‘remotely programmable’ as claimed.” (App. Br. 13.) The Examiner found that “the computer explicitly disclosed by Levinson is separately (‘remotely’) connected to the optical communications system via ports” (Ans. 19). We agree with the Examiner. Claim 15 require “a remotely programmable comparison table” (claim 15). Here, the Examiner found that in Levinson “the controller’s software includes a user interface routine 392 which allows the user to access status information in the controller via a host computer 202, to view the data stored in the controller’s nonvolatile memory 166, and to set and/or reset various parameters such as the optical output power . . . .” (Levinson, col. 15, ll. 26- 31). In other words, Levinson can remotely program various parameters via a host computer 202 which is separate (i.e., remote) from the digital controller 160 (see Figs. 3 & 4). Accordingly, we affirm the Examiner’s obviousness rejection of claim 15. DECISION We affirm the Examiner’s § 112, 1st paragraph and § 103(a) rejections. Appeal 2010-000042 Application 10/180,173 11 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED gvw