Ex Parte Gill et al

Patent Trial and Appeal Board

Jul 24, 2014

11376491 (P.T.A.B. Jul. 24, 2014)

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.
11/376,491 03/15/2006 Douglas M. Gill LUCW:0027/Gill 20-4-6 3578
48671 7590 07/24/2014
FLETCHER YODER (LUCENT)
P.O. BOX 692289
HOUSTON, TX 77069
EXAMINER
TRAN, HOANG Q
ART UNIT PAPER NUMBER
2874
MAIL DATE DELIVERY MODE
07/24/2014 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 DOUGLAS M. GILL, MAHMOUD RASRAS,
and KUN-YII TU
____________

Appeal 2012-003378
Application 11/376,4911
Technology Center 2800
____________

Before CHUNG K. PAK, ROMULO H. DELMENDO, and
KAREN M. HASTINGS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-6 and 8-10. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 According to the Appellants, the real party in interest is Alcatel-Lucent
USA Inc., the successor in interest to Lucent Technologies Inc., the assignee
of the subject application. Appeal Brief filed June 9, 2011 (“App. Br.”) 2.
In addition, the Specification (hereinafter “Spec.”) states that the United
States Government has a paid-up license in the invention and the right, in
limited circumstances, to require the Patent Owner to license others on
reasonable terms as provided by the terms of Grant No. HR0011-05-C-0027
awarded by the Defense Advanced Research Projects Agency’s
Microsystems Technology Office (Spec. 1, ll. 7-10).
Appeal 2012-003378
Application 11/376,491

2
BACKGROUND
The invention relates to an apparatus for optically filtering a
communication signal (Spec. 4, l. 20). Representative claims 1-3 and 6 are
reproduced below:
1. An apparatus comprising:
an optical filter having first and second input ports and
first and second output ports, the optical filter being configured
to transmit light in a target frequency range in a first direction
through a waveguide to the first output port in response to
receiving light at the first input port and being configured to
transmit light in the target frequency range through the
waveguide in a direction opposite to the first direction into the
second input port in response to receiving light at the second
output port; and
first and second photodiodes, the first photodiode being
located to be illuminated by light from the first output port and
the second photodiode being located to be illuminated by light
from the second input port.
2. The apparatus of claim 1, wherein the photodiodes are
electrically connected to produce a combined electrical signal
representative of a difference between a light intensity received
by the first photodiode and a light intensity received by the
second photodiode.
3. The apparatus of claim 2, wherein the photodiodes
comprise a substantially balanced pair of photodiodes.
6. The apparatus of claim 1, further comprising a tunable
interferometer configured to direct the light to the first input
port and the second output port.
(App. Br. 13, Claims App’x).

Appeal 2012-003378
Application 11/376,491

3
The Examiner rejected the claims as follows:
I. Claims 1 and 3 under 35 U.S.C. § 102(b) as anticipated by
Greenberg;2
II. Claims 2, 6, 8, and 10 under 35 U.S.C. § 103(a) over Greenberg
in view of Ikeuchi;3
III. Claim 4 under 35 U.S.C. § 103(a) over Greenberg in view of
Hwang;4 and
IV. Claims 5 and 9 under 35 U.S.C. § 103(a) over Greenberg in
view of Miller.5
Examiner’s Answer entered October 11, 2011 (hereinafter “Ans.”), as
corrected on October 28, 2011, at 5-9.

DISCUSSION
We address Rejections I – IV in order below.

I.
A. Claim 1:
The Examiner found that Greenberg describes, either explicitly or
inherently, every limitation of claim 1 (Ans. 5-6). In support, the Examiner
relied primarily on Greenberg’s Figure 1, column 1, lines 50-60, column 3,
lines 1-40, and column 4, lines 10-30 (id.).

2 U.S. Patent No. 4,399,563 (issued August 16, 1983).
3 U.S. Patent Application Publication No. 2007/0047972 A1 (published
March 1, 2007).
4 U.S. Patent No. 6,694,082 B2 (issued February 17, 2004).
5 U.S. Patent No. 5,351,325 (issued September 27, 1994).
Appeal 2012-003378
Application 11/376,491

4
The Appellants contend that Greenberg’s apparatus as shown in
Figure 1 is not “an optical filter,” as recited in the claim (App. Br. 5). The
Appellants further contend that Greenberg does not disclose “first and
second input ports” and “first and second output ports,” as specified and
arranged in the claim (id. at 5-6). According to the Appellants, the
Examiner’s “reading [of the claim elements relative to Greenberg’s
disclosure] contradicts the actual teachings of the operation of Greenberg[‘s
apparatus],” “would destroy the functionality of [Greenberg’s] system,” and
constitutes “impermissible hindsight” (id. at 6-7). Furthermore, the
Appellants argue that, in Greenberg’s Figure 1, “the light received by
receiver 22 is transmitted by transmitter 30, and not in response to receiving
light at transmitter 30” and “the light received by receiver 32 is transmitted
by transmitter 20, and not in response to receiving light at transmitter 20”
(id. at 7-8; underlining omitted).
We do not find the Appellants’ arguments persuasive of any reversible
error on the part of the Examiner. In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (explaining that even if the examiner had failed to make a prima
facie case, the Board would not have erred in framing the issue as one of
reversible error because it has long been the Board’s practice to require an
appellant to identify the alleged error in the examiner’s rejections).
As explained by the Examiner (Ans. 11), Greenberg discloses filtering
signals through the use of logic gates to disable reflections or cross talk from
occurring due to the bi-directional signals within the system (col. 3, ll. 11-
20; col. 5, l. 40 – col. 6, l. 50). Greenberg accomplishes this by turning off
the receiver, resulting in a drop signal (col. 6, ll. 29-32). Because Greenberg
Appeal 2012-003378
Application 11/376,491

5
filters the signals, which are light signals, we agree with the Examiner’s
finding that Greenberg discloses an “optical filter,” as required by claim 1.
With respect to the Appellants’ argument that Greenberg’s
transmitters and receivers are not input ports and output ports, the Examiner
explained that the rejection is not based on findings that the transmitters and
receivers are ports. Ans. 10, 11, 13. Rather, the Examiner found that paths
2, 4, 16, and 18 as shown in Figure 1 are the ports. Id. at 11. That is, the
Examiner found that Greenberg’s path 16 is the first input port, path 18 is
the second input port, path 4 is the first output port, and path 2 is the second
output port. Id. The Examiner further explained that “[s]ince the branches
2, 4, 16, and 18) contain both an input / output side the actually [sic] naming
of the paths are for design purposes wherein the designer can designate the
ports to be an output or input due to designer choice selection.” Id. at 12.
The Examiner found that this is not inconsistent because the Appellants have
a similar naming convention. Id. at 13-15. These reasonable findings have
not been shown to be in error. Nor have we been provided with any
reasonably specific explanation as to why the broadest reasonable
interpretation of the disputed claim terms would not include Greenberg’s
paths as input or output ports when they are designed to receive and transmit
light. Because the input and output ports as specified in claim 1 have not
been shown to differ structurally from Greenberg’s paths, we find no merit
in the Appellants’ contention.
Finally, we address the Appellants’ argument that their optical filter is
configured to transmit light in a first direction to the first output port in
response to receiving light at the first input port and is configured to transmit
light in a direction opposite to the first direction into the second input port in
Appeal 2012-003378
Application 11/376,491

6
response to receiving light at the second output port. The Examiner
explained that the optical filter shown in Figure 1 is configured to: (1)
transmit light in a first direction (by way of waveguide 10 – see arrow in
Greenberg Figure 1) to the first output port or path 4 in response to receiving
light at the first input port or path 16; and (2) to transmit light in a direction
opposite to the first direction (by way of waveguide 10 – see arrow in the
opposite direction) into the second input port or path 18 in response to
receiving light at the second output port or path 2. Ans. 16-17. Again, the
Appellants have not provided us with the benefit of any reasonably specific
discussion on why the Examiner’s findings are in error.
For these reasons, the rejection of claim 1 is affirmed.

B. Claim 3:
The Examiner also found that Greenberg describes every limitation of
claim 3 (Ans. 6).
The Appellants argue that Greenberg does not disclose “a
substantially balanced pair of photodiodes,” as recited in the claim (App. Br.
9).
We discern no reversible error in the Examiner’s finding that
Greenberg discloses the disputed claim limitations. Greenberg describes the
transmitters as having infrared photodiodes and the receivers as having
avalanche photodiodes (col. 3, ll. 1-10; col. 4, ll. 20-45). The Examiner
found that because Greenberg describes two diodes (one of each type) on
each side, the diodes are in a balanced configuration and thus a
“substantially balanced pair of photodiodes,” as required by the claim (Ans.
18). The Appellants, on the other hand, do not direct us to any definition or
Appeal 2012-003378
Application 11/376,491

7
other description in the Specification that compels a different claim
construction of the disputed terms. Therefore, the Examiner’s anticipation
rejection has not been shown to be in error.6
For these reasons, we uphold the rejection of claim 3.

II.
With respect to Rejection II, the Appellants limit their arguments to
claim 6 (App. Br. 9-10). Therefore, we confine our discussion to claim 6,
which we select as representative pursuant to 37 C.F.R. § 41.37(c)(1)(vii).
Claims 2, 8, and 10 stand or fall with claim 6.
The Examiner acknowledged that Greenberg does not describe “a
tunable interferometer,” as specified in claim 6 (Ans. 7). The Examiner
found, however, that Ikeuchi teaches a tunable interferometer “configured to
modulate light responsive to a receive signal . . . wherein the interferometer
act as a phase shifter of which is connected to [a] waveguide” (id. at 7-8).
The Examiner then concluded (id. at 8):
It would have been obvious to one of ordinary skill in the art at
the time of the invention to use the teachings of Ikeuchi
wherein an interferometer is used to encode more data into one
light source for large scale application comprising of multiple

6 In their Reply Brief filed December 12, 2011 at page 4, the Appellants
contend that the Examiner “impermissibly cited a new portion of
Greenberg.” That argument relates to a petitionable matter that is outside
the scope of our jurisdiction. We also observe that the Appellants rely on a
new argument for the first time in the Reply Brief–that because claim 3
includes all the elements of claim 2, the photodiodes recited in claim 3 are
electrically connected. The Appellants, however, failed to offer a showing
of good cause for this belated argument, and therefore, we decline to
consider it. Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010)
(informative opinion).
Appeal 2012-003378
Application 11/376,491

8
channels employing DPSK modulation scheme wherein
narrowband application is needed.
The Appellants do not dispute the Examiner’s articulated reason for
combining Greenberg with Ikeuchi (App. Br. 10). Rather, the Appellants
argue that Ikeuchi “at best, teaches that elements 2 and 3 are tuned
interferometers and not a tunable interferometer” (id.).
We find no merit in the Appellants’ argument. As correctly found by
the Examiner (Ans. 18), Ikeuchi discloses that the interferometers are tuned
to receive various delays (3π/4, π/4, - π/4, -3π/4 delays) (Ikeuchi ¶ 7).
Because the Ikeuchi interferometers are tuned to multiple delays, the
interferometers are necessarily “tunable” (Ans. 18). Again, the Appellants’
skeletal argument fail to identify any error, let alone reversible error, in the
Examiner’s factual findings and conclusion of law.
Therefore, we also affirm Rejection II.

III. & IV.
With respect to Rejections III and IV, the Appellants rely on the same
arguments offered in support of claim 1 (App. Br 11). Therefore, we affirm
Rejections III and IV for the same reasons given in section I. A concerning
claim 1 above.
SUMMARY
Rejections I through IV of claims 1-6 and 8-10 are 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).
AFFIRMED

cam