Ex Parte Chen et al

Patent Trial and Appeal Board

Sep 17, 2018

14251869 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/251,869 04/14/2014
22928 7590 09/19/2018
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
XinChen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SP13-178 8891
EXAMINER
AHMED, JAMIL
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
09/19/2018 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIN CHEN, JASON EDWARD HURLEY,
MING-JUN LI, and RICHARD STEPHEN VODHANEL
Appeal2018-000894 1
Application 14/251,869
Technology Center 2800
Before JEFFREY T. SMITH, CHRISTOPHER L. CRUMBLEY, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is identified as Coming Incorporated. Appeal
Brief (of June 12, 2017 ("App. Br.")), 2.
Appeal2018-000894
Application 14/251,869
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
12, 14, 15, 17-19, 26, and 27. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The Specification provides that Appellants' invention "generally
relates to measuring the bandwidth of optical multimode and few-mode
fibers (MMFs and FMFs) and, more particularly, relates to methods and
configurations for testing MMFs and FMFs by light transmission through
the fiber." Spec. ,r 2. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A differential mode delay measurement system for an
optical fiber, comprising:
an optical test fiber with a plurality of modes;
a tunable laser that provides a plurality of continuous light
wave signals to a modulator at wavelengths from about 600 nm
to 1700 nm at a linewidth of 0.2 nm or less; and
a pulse generator that provides an electrical pulse train
signal to the modulator and a triggering signal to a receiver,
wherein the modulator is configured to generate an
intensity-modulated optical test signal through the optical fiber
based at least in part on the received light wave and pulse train
signals, and
the receiver is configured to receive the test signal
transmitted through the fiber and evaluate the test signal based at
least in part on the triggering signal to determine differential
mode delay information associated with the optical fiber at a
plurality of wavelengths.
2 Final Office Action of January 10, 2017 ("Final Act."). In this opinion,
we also refer to the Examiner's Answer of September 7, 2017 ("Ans.") and
the Reply Brief of November 7, 2017 ("Reply Br.").
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Application 14/251,869
App. Br. 23 (Claims Appendix).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Golowich et al. US 6,400,450 June 4, 2002
(hereinafter "Golowich")
Deladurantaye et al. US 2010/0128744 Al May 27, 2010
(hereinafter "Deladurantaye")
Donlagic US 2011/0249973 Al Oct. 13, 2011
REJECTIONS
Claims 1, 3-7, 9-12, 14, 15, and 17-18 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Golowich in view of Deladurantaye, and in
further view of Donlagic. Final Act. 2. 3
3 Dependent claims 2, 8, 19, 26, and 27 have been rejected under 35 U.S.C.
§ 103 over Golowich, in view of Deladurantaye, in further view of Donlagic,
and in further view of additional respective references. Final Act. 17, 18,
and 19. Dependent claims 23-25 have been allowed but objected to, as
being dependent from a rejected claim. Id. at 21. Appellants do not present
arguments separate from those for independent claims 1, 7, and 12. These
dependent claims therefore stand or fall with their respective independent
claim. See App. Br. 20--22; see also 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
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Application 14/251,869
OPINION
Claim 14
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an [A]pplicant
to identify the alleged error in the [E]xaminer's rejections.")). After having
considered the evidence presented in this Appeal and each of Appellants'
contentions, we are not persuaded that Appellants identify reversible error,
and we affirm the Examiner's 35 U.S.C. § 103 rejections for the reasons
expressed in the Final Office Action and the Answer. We add the following
primarily for emphasis.
The Examiner finds that Golowich describes a "differential mode
delay measurement system for an optical fiber" as recited in claim 1 but
without "a tunable laser that provides a plurality of continuous light wave
signals to a modulator at wavelengths from about 600 nm to 1700 nm at a
linewidth of O .2 nm or less." Final Act. 3. The Examiner finds that
Golowich "combines a known modal power distribution (MPD) excited by a
laser source of optical power with the differential mode delay (DMD)
4 Appellants do not present separate arguments for claims 3-6. App. Br. 5-
10. Although the arguments for independent claims 7 and 12, as well as
dependent claims 9-11, 14, 15 and 17-18 appear under respective headings,
the arguments track those for claim 1. Compare id. with, App. Br. 10--20;
compare Ans. 25-32 (responding to arguments for claims 7 and 12 by
referring to responses for claim 1), with Reply Br. 2--4. Claims 3-7, 9-12,
14, 15, and 17-18 therefore stand or fall with claim 1. See App. Br. 5-20;
see also 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
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Application 14/251,869
characteristic of a multimode optical fiber in order to determine its effective
bandwidth when sued with the laser source." Ans. 6 ( citing Golowich 2: 17-
21 ). The Examiner finds that Golowich teaches that "multimode fiber is
generally used at one of two operating wavelengths, A.=850 nanometers
(nm) or 1300 nm." Id (citing Golowich 4:44--45).
Based on Deladurantaye 's teaching that either a "pulsed seed source"
or a "continuous light source" "may be tunable in wavelength, according to
techniques known in the art" (Deladurantaye ,r,r 79-81 ( cited in Final Act.
4)), the Examiner determines that it would have been obvious for a skilled
artisan to substitute the laser in Golowich with the tunable laser light source
in Deladurantaye "for the purpose of increasing measurement range so that
average error can be reduced for the advantage of accuracy." Final Act. 5.
Based on Donlagic' s teaching of a range of wavelength adjustment
between about 0.15 nm to 1 nm, the Examiner further determines that a
skilled artisan would have found obvious "a linewidth of 0.2 nm or less" as
recited "for the advantage of accuracy." Id. at 5---6 ( citing Donlagic ,r 39).
Appellants raise four arguments on appeal. We address each in tum.
Appellants first argue that the Examiner reversibly erred because
Deladurantaye "strongly suggest[ s] that the seed sources of the
spectrally-tailored laser oscillator system operate within a range of no more
than ± 10 nm, as centered at a wavelength of about 1064 nm" - which
according to Appellants, does not teach or suggest "a tunable laser that
provides a plurality of continuous light wave signals to a modulator at
wavelengths from about 600 nm to 1700 nm" as recited in claim 1. App. Br.
6.
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Application 14/251,869
As noted earlier, the Examiner finds that Golowich teaches using
multimode fibers in local area network applications and the "multimode
fiber is generally used at one of two operating wavelengths, 11,=850
nanometers (nm) or 1300 nm." Ans. 7 (citing Golowich 4:44--45); see also
Reply Br. 2 ( citing Golowich 4:44--45). The Examiner determined that the
operating wavelengths in Golowich overlap with those recited in claim 1 and
"[ s ]election of the wavelength based on its suitability for a given purpose"
- for example, testing- "involves only routine skill in the art." Id. at 7-9
( explaining that "selecting the number of modes based on its suitability for a
given purpose (test), involves only routine skill in the art" and that selecting
"the detector based on its suitability for a given purpose (test), involves only
routine skill in the art"). That is, according to the Examiner, discovering the
optimum or working ranges of the recited wavelength involves only routine
skill in the art. Id. at 7.
"In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003). "[I]tis not inventive to discover the optimum or workable ranges by
routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955).
In this case, Appellants do not dispute that the prior art wavelengths
overlap with those recited (see App. Br. 6), nor do Appellants respond to the
Examiner's determination that given the prior art teachings, a skilled artisan
would have arrived at the recited wavelengths through routine
experimentation. Compare Ans. 7, with Reply Br. 2. No reversible error
therefore has been identified in this aspect of the obviousness analysis.
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Application 14/251,869
With regard to the claim limitation "a tunable laser that provides a
plurality of continuous light wave signals to a modulator at wavelengths ...
at a linewidth of 0.2 nm or less," Appellants acknowledge that Donlagic
"teaches a 'wavelength adjustment between about 0.15nm and 1 nm."' App.
Br. 6. Appellants do not dispute that the prior wavelength adjustment
overlaps with the recited linewidth. Id. Appellants likewise do not respond
to the Examiner's determination that given the prior art teachings, a skilled
artisan would have arrived at the recited linewidth through routine
experimentation. Compare Ans. 7, with Reply Br. 2. No reversible error
therefore has been identified in this aspect of the obviousness analysis.
Appellants next argue that the Examiner's proposed modification
requires four steps which is tantamount to "a substantial reconstruction of
the Golowich DMD system." App. Br. 7. 5 Appellants assert that the
proposed modification would require the replacement of the laser in
Golowich with the one in Deladurantaye, the addition of an intensity
modulator from Deladurantaye, the rearrangement of the pulser in Golowich,
and the replacement of the detector in Golowich. Id. Even if these
assertions were supported by evidence in the record ( as opposed to
attorneys' argument presented in the Appeal Brief as is the case here), we
are not persuaded that the Examiner reversibly erred in determining that "a
person of ordinary skill can implement a predictable variation [ of a known
work]" and thus "[35 U.S.C.] § 103 likely bars its patentability." See KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398,417 (2007); see also Ans. 15 (finding
5 Appellants also argue that the Examiner's analysis is not responsive to
arguments previously raised by Appellants. See App. Br. 7-8. We note that
the Examiner explains that the argument has been addressed in the Final
Rejection and the Answer. Ans. 17-18.
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that components recited in claim 1 "are common and well-known in the art"
and the proposed modification and/or substitution is a predictable
implementation.).
With regard to the Examiner's reasoning that a skilled artisan "would
apply the tunable laser of Deladurantaye 'for the purpose of increasing
measurement range so that average error can be reduced for the advantage of
accuracy' and the pulse generator and modulator of Deladurantaye 'for the
purpose of capturing the appropriate signal and thus accuracy is improved,"'
Appellants argue that the Examiner's reasoning is conclusory. App. Br. 8.
Appellants' assertion, however, that "Deladurantaye contains no such
motivation,"' (id. at 9) and that Golowich "does not teach a DMD
measurement system with a tunable source coupled to a modulator" (id.)
attacks each reference individually which cannot establish non-obviousness.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Moreover, the Examiner explains that Golowich teaches "selecting the
higher order modes ... gives more accurate result for the measurement of
the DMD of the fiber in order to determine its effective bandwidth." Ans. 9
(citing Golowich 4:52-69, 6: 15). The Examiner's articulated reasoning
regarding the possible improvements of test accuracy and system robustness
is therefore supported by rational underpinning. See Ans. 19; see also KSR,
550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006))
(holding that an obviousness rejection must be supported by "some
articulated reasoning with some rational underpinning").
Lastly, Appellants argue that Golowich teaches away from using the
tunable laser recited in claim 1. App. Br. 9. Specifically, Appellants argue
that "the DMD system of Golowich is specifically tailored to generate DMD
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Application 14/251,869
information for a given fiber with a particular operating wavelength ( e.g.,
850 nm) coupled to a particular laser source" and therefore teaches away
from "a DMD system that is configured to test an optical fiber at various
wavelengths by employing a tunable laser and a modulator[.]" Id.
( emphases omitted).
"Under the proper legal standard, a reference will teach away when it
suggests that the developments flowing from its disclosures are unlikely to
produce the objective of the applicant's invention. A statement that a
particular combination is not a preferred embodiment does not teach away
absent clear discouragement of that combination." Syntex (US.A.) LLC v.
Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citations omitted).
In this case, Golowich's teaching that "[l]aser sources excite only
some of the modes, and the resulting bandwidth of the fiber depends
strongly on which modes are excited by a particular source" does not
expressly discuss the tunable laser recited in claim 1. Golowich 2:4--2:6
( cited in App. Br. 9). Appellants do not sufficiently explain why this
statement in Golowich suggests that the developments flowing from the
prior art disclosures are unlikely to produce the system recited in claim 1
which includes a tunable laser. See Syntex (US.A.) LLC, 407 F.3d at 1380.
We further note that immediately following the statement quoted by
Appellants, Golowich states:
The effective bandwidth of a fiber, when used with a particular
source, can be much higher or lower than that obtained with the
OFL. In order to develop fast, reliable, low-cost systems, it is
crucial to understand the behavior and predict the bandwidth of
multimode fiber under restricted launch conditions.
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Golowich 2:7-12. The Examiner points to this teaching of Golowich, in
part, to explain that Golowich does not teach away from the system recited
in claim 1 and Appellants do not respond to this finding. Compare Ans. 22
(citing Golowich 2:7-12), with Reply Br. 2-5. We are not persuaded that
Appellants have identified reversible error in the Examiner's finding that the
prior art teaching as a whole does not teach away from the recited system.
For the foregoing reasons and those presented by the Examiner, we
sustain the appealed rejections.
DECISION
The Examiner's decision 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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