Ex Parte Casterline et al

Patent Trial and Appeal Board

Dec 22, 2017

14172240 (P.T.A.B. Dec. 22, 2017)

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.
14/172,240 02/04/2014 Raymond Allen Casterline HI09-080A 1085
21495 7590 12/27/2017
CORNING INCORPORATED
INTELLECTUAL PROPERTY DEPARTMENT, SP-TI-3-1
CORNING, NY 14831
EXAMINER
LIU, LI
ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
12/27/2017 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):
u sdocket @ corning .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND ALLEN CASTERLINE, STEVEN CASEY
KAPP, RAJESHANNAN PALANISAMY, ERIC MICHAEL
SADOWSKI, DALE ALAN WEBB, and MICHAEL BRIAN WEBB
Appeal 2017-003032
Application 14/172,240
Technology Center 2600
Before JAMES R. HUGHES, THU A. DANG, and
CARL L. SILVERMAN, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1—20, which constitute all the
claims pending in this application. Final Act. I.1 We have jurisdiction
under 35 U.S.C. § 6(b).
1 We refer to Appellants’ Specification (“Spec.”) filed Feb. 4, 2014
(claiming benefit of PCT/US2010/022847 filed Feb. 2, 2010; US 61/230,472
filed July 31, 2009; and US 61/149,553 filed Feb. 3, 2009) and Appeal Brief
(“Br.”) filed Mar. 7, 2016. We also refer to the Examiner’s Answer (“Ans.”)
Appeal 2017-003032
Application 14/172,240
We affirm-in-part.
Appellants ’ Invention
The invention generally relates to optical fiber network control
systems utilizing a controller configured to predict the failure of a
communication component based on data (alarm information) received from
the communication components, where the received data indicates an
impending (predictive) failure in one of the communication components.
The controller is further configured to calculate an alarm for the failing
communication component. Spec. Tflf 3, 6—13; Abstract.
Representative Claim
Independent claim 1, reproduced below with key disputed limitations
emphasized, further illustrates the invention:
1. A wireless communication system, comprising:
communication components, comprising:
a downlink base transceiver station (BTS) interface
configured to receive downlink electrical radio frequency (RF)
signals from at least one BTS on at least one communication
downlink;
at least one optical interface module (OIM) configured
to:
receive and convert the downlink electrical RF
signals from the downlink BTS interface into downlink Radio-
over-Fiber (RoF) signals on the at least one communication
downlink; and
receive and convert uplink RoF signals from at least
one remote antenna unit (RAU) into uplink electrical RF signals
on at least one communication uplink;
mailed July 1, 2016, and Final Office Action (Final Rejection) (“Final Act.”)
mailed Oct. 9, 2015.
2
Appeal 2017-003032
Application 14/172,240
an uplink BTS interface configured to receive and
communicate the uplink electrical RF signals from the at least
one communication uplink to the at least one BTS; and
a controller configured to predict the failure of at least one
of the communications components based on receiving alarm
information from at least one of the communication components
defining at least one condition indicative of a predictive failure
in the at least one of the communication components, and to
calculate the alarm for the at least one of the communication
components.
Rejections on Appeal2
1. The Examiner rejects claims 1—3, 5—12, 14, 15, and 20 on the
ground of non-statutory obviousness-type double patenting over
corresponding claims 1—28 of US Patent No. 8,649,684 B2 (“’684 Patent”).
2. The Examiner rejects claims 1, 5, 8, 9, 12, 14, and 16—19 under
35 U.S.C. § 103(a) as being unpatentable over George et al. (US
2008/0070502 Al, published Mar. 20, 2008) (“George”) and Parsay et al.
(US 5,694,232, issued Dec. 2, 1997) (“Parsay”).
2 Neither the Examiner, nor Appellants address dependent claims 4 and 13 in
their respective briefs (Final Action, Answer, and Appeal Brief). Claims 4
and 13 are pending (see, e.g., Final Act. 1). Claims 4 and 13 were
previously rejected under 35 U.S.C. § 112, second paragraph. See Non-
Final Office Action mailed June 5, 2015 (Non-Final Act. 4) and Appellants’
Reply dated Sept. 8, 2015 (Reply 6—7). The Examiner did not renew or
withdraw the indefmiteness rejection in the Final Action. We view the
omission of the indefmiteness rejection (and claims 4 and 13) as harmless
typographical error in that the Examiner explains Appellants’ Specification
does not explicitly describe an alarm configuration. See Final Act. 2—3.
Accordingly, we include the indefmiteness rejection in the rejections on
appeal and decide the issue based on the arguments in the Non-Final Action,
the Final Action, and Appellants’ Reply to the Non-Final Action.
3
Appeal 2017-003032
Application 14/172,240
3. The Examiner rejects claims 2, 3, 6, 7, 10, 11, and 15 under 35
U.S.C. § 103(a) as being unpatentable over George, Parsay, and Sone et al.
(US 2007/0264011 Al, published Nov. 15, 2007) (“Sone”).
4. The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as
being unpatentable over George, Parsay, and Aronson et al. (US
2005/0058455 Al, published Mar. 17, 2005) (“Aronson”).
5. The Examiner rejects claims 4 and 13 under 35 U.S.C. § 112,
second paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventors regard as the
invention. See Non-Final Act. 4.
ISSUES
Based upon our review of the record, Appellants’ contentions, and the
Examiner’s findings and conclusions, the issues before us follow:
1. Did the Examiner err in finding that the combination of George
and Parsay collectively would have taught or suggested “a controller
configured ... to calculate the alarm for the at least one of the
communication components” within the meaning of Appellants’ claim 1 and
the commensurate limitations of Appellants’ claim 9?
2. Did the Examiner err in finding Appellants’ claims 4 and 13
indefinite?
ANALYSIS
The Double Patenting Rejection
Appellants do not provide specific arguments showing error in the
Examiner’s double patenting rejection. Appellants previously filed a
4
Appeal 2017-003032
Application 14/172,240
terminal disclaimer (dated Sept. 8, 2015), but the Examiner did not approve
the Terminal Disclaimer (see Final Act. 2). Appellants merely state that the
double patenting rejection is premature (Br. 15), and do not mention the
Terminal Disclaimer or the Examiner’s disapproval of the Terminal
Disclaimer in their Appeal Brief. Accordingly, we pro forma affirm the
double patenting rejection of claims 1—3, 5—12, 14, 15, and 20.
The 35 U.S.C. § 103 Rejections
The Examiner rejects independent claim 1 as obvious over George
and Parsay. See Final Act. 7—11; Ans. 17—29. Appellants contend that claim
1 recites the “‘controller’ is ‘configured’ ... ‘to calculate the alarm for the at
least one of the communication components’” (Br. 9 (quoting claim 1)) and
that Parsay does not teach calculating an alarm (with respect to claim 20 —
see Br. 14). Appellants also generally contend that Parsay does not predict a
failure or calculate an alarm (see Br. 9—13). Appellants and the Examiner
focus their discussion almost entirely on whether George and Parsay suggest
predicting a failure and, to a lesser extent the predictive nature of the
received data. See Final Act. 7—11; Ans. 17—29; Br. 9—13.
We find that Parsay, cited by the Examiner as teaching calculating an
alarm (Final Act. 10), does not explicitly or inherently teach or suggest
calculating an alarm. Instead, Parsay merely describes receiving test signals
indicative of a malfunction and/or alarm signals (the recited alarm
information) from remote components. See Parsay, col. 1,1. 59—col. 2,1. 3.
Parsay does not describe calculating any value or performing any action
based on the received data (alarm information). Accordingly, we disagree
with the Examiner that Parsay impliedly or inherently calculates an alarm —
in other words, we disagree that
5
Appeal 2017-003032
Application 14/172,240
the purpose of the alarm is ... to calculate the alarm for the at
least one of the communication components (since “alarm” is
used, it is either inherent or obvious that a “threshold” or a
criteria is used to judge or calculate the current value to generate
“alarm”)
(Final Act. 10).
Because we find at least one error with respect to the Examiner’s
rejection, we need not and do not make any findings with respect to the
predicting features. Rather, we confine our findings to the calculating
feature, which is dispositive.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding George and Parsay teach the calculating
feature of Appellants’ claim 1. Independent claim 9 includes limitations of
commensurate scope. Dependent claims 5, 8, 12, 14, and 16—19 depend on
claims 1 and 9, respectively, and stand with their respective independent
claims. Accordingly, we do not sustain the Examiner’s obviousness
rejection of claims 1, 5, 8, 9, 12, 14, and 16—19.
With respect to the obviousness rejections of dependent claims 2, 3, 6,
7, 10, 11, 15, and 20, the Examiner has not established on this record that the
additionally cited Sone or Aronson references overcome or cure the
aforementioned deficiency of George and Parsay. Dependent claims 2, 3, 6,
7, 10, 11, 15, and 20 depend on claims 1 and 9, respectively. Accordingly,
we do not sustain the Examiner’s obviousness rejections of claims 2, 3, 6, 7,
10, 11, 15, and 20.
The 35 U.S.C. § 112 Rejection
The Examiner previously rejected dependent claims 4 and 13 under 35
U.S.C. § 112, second paragraph. See Non-Final Office Act. 4. Appellants
6
Appeal 2017-003032
Application 14/172,240
previously contended that the disputed “alarm configuration” terminology
was not indefinite in view of the support provided in the Specification. See
Appellants’ Reply 6—7. While the portions of the Specification cited by
Appellants do not explicitly describe an alarm configuration, the
Specification does describe configuring a scheduler and external
communications, as well as threshold configurations utilizing alarm
information, which lends clarity to the claims by showing that the plain
meaning of the alarm configuration language in the claims is in fact what
Appellants intended to claim. See Spec. Tflf 204—207, 212—214. We find that
the Examiner has not made sufficient findings showing that what is being
claimed would not have been clear to a skilled artisan. In re McAward,
Appeal 2015-006416, 2017 WL 3669566, *5 (PTAB Aug. 25, 2017)
(precedential). We are, therefore, constrained by the record to find the
Examiner erred in rejecting claims 4 and 13 as indefinite.
CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
1—3, 5—12, 14, 15, and 20 on the non-statutory ground of obviousness-type
double patenting.
Appellants have shown that the Examiner erred in rejecting claims 1—
3, 5-12, and 14—20 under 35 U.S.C. § 103(a).
Appellants have shown that the Examiner erred in rejecting claims 4
and 13 as being indefinite under 35 U.S.C. § 112, second paragraph.
DECISION
We affirm the Examiner’s rejection of claims 1—3, 5—12, 14, 15, and
20. We reverse the Examiners rejection of claims 4, 13, and 16—19.
7
Appeal 2017-003032
Application 14/172,240
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-IN-PART
8