Ex Parte Gill et alDownload PDFPatent Trial and Appeal BoardJul 24, 201411376491 (P.T.A.B. Jul. 24, 2014) Copy Citation 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 Copy with citationCopy as parenthetical citation