Ex Parte Cai

Patent Trial and Appeal BoardMar 27, 2013

10210989 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/210,989 08/02/2002 Juliet Z. Cai 118059-157697 7591 25943 7590 03/28/2013 Schwabe Williamson & Wyatt PACWEST CENTER, SUITE 1900 1211 SW FIFTH AVENUE PORTLAND, OR 97204 EXAMINER IBRAHIM, MOHAMED ART UNIT PAPER NUMBER 2444 MAIL DATE DELIVERY MODE 03/28/2013 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 ____________ Ex parte JULIET Z. CAI ____________ Appeal 2010-006836 Application 10/210,989 Technology Center 2400 ____________ Before JOSEPH F. RUGGIERO, MARC S. HOFF, and JOHN A. EVANS, Administrative Patent Judges. RUGGIERO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-65, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-006836 Application 10/210,989 2 Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed Sep. 17, 2007), the Answer (supplemental, mailed Jan. 25, 2010), and the Reply Brief (filed Mar. 22, 2010). We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant’s Invention Appellant’s invention relates to optical networks and the facilitation of uniform access, control, or interaction with the multi-protocol optical networking modules (MPONM) of the optical networks. See generally Abstract. Claim 1 is illustrative of the invention and reads as follows: 1. In an optical networking apparatus having a plurality of multiprotocol optical networking modules (MPONM), at least one MPONM including a plurality of programmable insertion resources and a plurality of programmable capture resources, a method of operation comprising: a networking application requesting an externalized function of a MPONM application programming interface (API) to enable a first insertion operation to be performed by one of a plurality of programmable insertion resources of the first MPONM, including with the operation request a first handle of a first data structure implicitly identifying the first MPONM; and the API determining a first programmable insertion resource to perform the first insertion operation, generating a second handle implicitly identifying the first programmable insertion resource, and returning the second handle to the requesting networking application. Appeal 2010-006836 Application 10/210,989 3 The Examiner’s Rejections The Examiner’s Answer cites the following prior art references: Szymanski US 5,574,903 Nov. 12, 1996 Hannigan US 2002/0049930 A1 Apr. 25, 2002 Claims 1-65, all of the appealed claims, stand provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatenable over the claims of Application No.10/211,158 (U.S. 2004/0022259).1 Claims 1-4, 10-22, 26-28, 34, 35, 37-42, 44-46, 48-53, 55, 56, 58-61, and 63-65 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hannigan in view of Szymanski. ANALYSIS I. Nonstatutory Obviousness-type Double Patenting Rejection Appellant acknowledges (Reply Br. 2) the Examiner’s obviousness- type double patenting-rejection of claims 1-65, but has presented no arguments in response to the rejection. Accordingly, we are constrained to pro forma sustain the Examiner’s rejection of claims 1-65. II. 35 U.S.C. § 103(a) Rejection Appellant contends, with respect to appealed independent claims 1, 19, 34, 41, 45, 52, 56, and 61, that neither Hannigan nor Szymanski, alone or 1 Although the Examiner’s stated rejection (Ans. 4) is a provisional nonstatutory obviousness-type double patenting rejection, Application No. 10/211,158 was issued as U.S. 7,451,458 on November 11, 2008. Appeal 2010-006836 Application 10/210,989 4 in combination, teaches or suggests the claimed particular programmable resources and the corresponding operations performed by the particular programmable resources. In particular, Appellant argues that Hannigan, relied upon by the Examiner for the programmable resource feature, has no teaching or suggestion of a programmable insertion resource and corresponding performance of an insertion operation (claims 1, 34, 45, and 56), a capture resource/operation (claims 19, 41, and 52), and an extraction resource/operation (claim 61). According to Appellant (App. Br. 8-10; Reply Br. 4-6), the Examiner has improperly construed the claims as merely requiring the performance of an unspecified operation by a plurality of resources, such as the DLL modules of Hannigan. We agree with Appellant. We find that the claims, when properly read in light of Appellant’s disclosure, require the specifically recited “insertion,” “capture,” and “extraction” resources and operations which are described in detail at pages 20-29 of the Specification. The Examiner has simply not explained, nor provided any support, for the stated position that the particularly claimed resources and operations do not further limit the claimed invention beyond the mere inclusion of resources which perform unspecified functions such as in Hannigan. We further agree with Appellant that there is nothing in Szymanski which overcomes the deficiencies of Hannigan. In view of the above discussion, since we are of the opinion that the proposed combination of references set forth by the Examiner does not support the obviousness rejection, we do not sustain the rejection of independent claims 1, 19, 34, 41, 45, 52, 56, and 61, nor the rejection of Appeal 2010-006836 Application 10/210,989 5 claims 2-4, 10-18, 21, 22, 26-28, 35, 37-40, 42, 44, 46, 48-51, 53, 55, 58-60, and 63-65 dependent thereon. CONCLUSION Based on the analysis above, we conclude that the Examiner erred in rejecting claims 1-4, 10-22, 26-28, 34, 35, 37-42, 44-46, 48-53, 55, 56, 58- 61, and 63-65 for obviousness under 35 U.S.C. § 103(a). We have, however, pro forma sustained the Examiner’s nonstatutory obviousness-type double-patenting rejection of claims 1-65. DECISION Since we have affirmed, at least one rejection of all of the claims 1- 65, the Examiner’s decision rejecting claims 1-65 is affirmed. 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 gvw