Ex Parte Lund et al

Patent Trial and Appeal Board

Sep 27, 2012

11065323 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT M. LUND, CHRIS D. KOCH, MILTON J. JOHNSON,
JOEL K. LAGERQUIST, DANIEL R. OELKE, JEFFREY T. KAYS,
JOSEPH J. KNUDSEN, and STEVEN J. TALUS
___________

Appeal 2010-000985
Application 11/065,323
Technology Center 2600
____________

Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and
STANLEY M. WEINBERG, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the non-final
rejection of claims 5-11, 13, 14, 16-23, 25, 26, 28-43, and 47-55.1 Claims 1-
4, 12, 15, 24, 27, and 44-46 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
Appellants’ invention relates to a system for correlating a subscriber
unit to a physical port. An installer is prompted to manually input a location
code associated with the subscriber. The location code in the subscriber unit
is received and transmitted via the network to a central repository. The
location code is stored in the central repository toward associating the
location code with the physical port. (Abstract.)
Claims 5 and 17 are exemplary, with disputed limitations in italics:
5. A method comprising:
receiving a location code associated with a subscriber in a
subscriber unit in a passive optical network, wherein the location code
permits identification of a geographic location of the subscriber; and
transmitting the location code and a subscriber unit identifier
for the subscriber unit from the subscriber unit to a repository via the

1 Appellants allege that “[c]laim 52 is not on appeal per Appellant’s
discretion.” (App. Br. 3.) However, page 1 of the Notice of Appeal filed
November 18, 2008 alternatively indicates that appeal is taken “from the
final rejection of claims 5-11, 13, 14, 16-23, 25, 26, 28-43 and 47-55.”
Accordingly, we understand Appellants to be appealing all of the rejected
claims, specifically including claim 52, but to be not presenting separate
arguments for claim 52 thereby effectively waiving any arguments that
could have been made on appeal supporting reversal. See generally Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). If we were to
alternatively interpret Appellants’ statements as indicating that claim 52 is
not being appealed, we would be required to direct the Examiner to enter an
amendment canceling that claim. See Ex parte Ghuman, 88 USPQ2d 1478,
1480 (BPAI 2008) (precedential).
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passive optical network for correlation of the subscriber unit with the
geographic location of the subscriber.

17. A passive optical network comprising:
a remote device;
an optical line terminator; and
a subscriber unit coupled to the optical line terminator via an
optical fiber link,
wherein the subscriber unit receives a location code associated
with a subscriber, wherein the location code permits identification of a
geographic location of the subscriber, and transmits the location code
to the remote device via the optical line terminator,
wherein the remote device correlates the subscriber unit with
the geographic location using the location code received from the
subscriber unit.

Claims 17-23, 25, 26, 28, 38, 43, 47, and 49-55 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Claims 5-7, 11, 16-19, 23, 28-31, 35, 48, 50, 52, 54, and 55 stand
rejected under 35 U.S.C. § 103(a) as being obvious over Harada (Hideaki
Harada & Takashi Nakashima, Implementing TMN Based Operation System
for FTTH Optical Access Networks, IEEE GLOBAL TELECOMM. CONF. 191-
96 (1997)) and Donlan (U.S. Patent No. 6,952,836 B1; Oct. 4, 2005).
Claims 8, 20 and 32 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Harada, Donlan, and Zellner (U.S. Patent No. 6,539,384 B1;
Mar. 25, 2003).
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Claims 9, 10, 13, 14, 21, 22, 25, 26, 33, 34, 36-43, 47, 49, 51, and 53
stand rejected under 35 U.S.C. § 103(a) as being obvious over Harada,
Donlan, and Ethridge (U.S. Patent No. 6,353,609 B1; Mar. 5, 2002).

ANALYSIS
§ 112, First Paragraph, Rejection
With respect to independent claim 17, we are persuaded by
Appellants’ arguments (App. Br. 12, 14-15; see also Reply Br. 2-5) that the
claim limitation “a remote device . . . the remote device correlates the
subscriber unit with the geographic location using the location code received
from the subscriber unit” complies with the written description requirement
under 35 U.S.C. § 112, first paragraph.
The Examiner found that the claimed “remote device” is a broad term
that includes, for example “the passive optical splitters, ONUs, testing
device, butt set device as well as OLT, central office and EMS.” (Ans. 12.)
Accordingly, the Examiner reasoned that a person skilled in the art at the
time the application was filed would not have recognized that the inventor
was in possession of the invention, including the limitation “the remote
device correlates the subscriber unit with the geographic location using the
location code received from the subscriber unit.” (Ans. 12-13.) We do not
agree.
Claim 17 recites “a remote device . . . wherein the subscriber unit . . .
transmits the location code to the remote device via the optical line
terminator.” In other words, claim 17 requires the “remote device” to
transmit a location code via an optical line terminator. Appellants’
Specification states that “the [optical line termination] OLT 52 passes the
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location key and ONU identifier information to the Element Management
System (EMS) 80.” (Spec. 7:13-14.) Accordingly, when claim 17 is read in
view of the Specification, the EMS 80 corresponds to the claimed “remote
device” that receives the location key (also referred to as a “location code”
(see, e.g., Spec. 7:3)) via the OLT 52.
Furthermore, Appellants’ Specification states that “[t]he location code
in the subscriber unit is received, and is transmitted via the network to a
central repository.” (Abstract.) “[T]he location code/key is any identifier
that can be input via the mechanism provided to the installer that identifies
geographic location of the customer.” (Spec. 7:3-4.) Accordingly, because
the Specification explains that the location code associated with a subscriber
unit also identifies the geographic location, the Specification provides
support for the claim limitation “the remote device correlates the subscriber
unit with the geographic location using the location code received from the
subscriber unit.”
Thus, we disagree with the Examiner that the Specification does not
provide written description support for “a remote device . . . the remote
device correlates the subscriber unit with the geographic location using the
location code received from the subscriber unit.”
Should the Examiner’s rationale for the written description rejection
alternatively be that the amended claim term “a remote device” is broad,
reading not only on the structures originally disclosed (e.g., a testing device
or a butt set device), but also reading on additional structures that are not
contained in the originally filed Specification (see e.g., Ans. 12), we would
still be unpersuaded. The recitation “a remote device” does affirmatively
require that the device be remotely located, but the “remote” aspect of the
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remote device is not the apparent basis of the rejection. Rather, the basis of
the rejection focuses on the breadth of the term “device.” However, in the
present context, the term “device” appears to simply be a nonce word, or an
artificial generic term, that substitutes only for those structures that are
supported by the Specification. The Examiner has not demonstrated that
Appellants intend for the term “device” to affirmatively denote any
additional structure that is not contained within the originally filed
Specification.
Accordingly, we do not sustain the rejection of independent claim 17
under 35 U.S.C. § 112, first paragraph. Claims 18-26, 28, 49, and 50 depend
from claim 17. Therefore, we do not sustain the rejection of claims 18-26,
28, 49, and 50 under 35 U.S.C. § 112, first paragraph, for the same reasons
discussed with respect to independent claim 17.
Claims 38, 43, 47, and 54 recite limitations similar to those discussed
with respect to independent claim 17. We do not sustain the rejection of
claims 38, 43, 47, and 54, as well as claims 51, 53, and 55, which depend
from claims 38, 43, and 54, for the same reasons discussed with respect to
claim 17.

§ 103 Rejection – Harada and Donlan
We are unpersuaded by Appellants’ arguments (App. Br. 22-27; see
also Reply Br. 11-14) that the combination of Harada and Donlan would not
have rendered obvious independent claim 5, which includes the limitation
“transmitting the location code and a subscriber unit identifier for the
subscriber unit from the subscriber unit . . . via the passive optical network
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for correlation of the subscriber unit with the geographic location of the
subscriber.”
The Examiner acknowledged that Harada does not disclose the
limitation “transmitting the location code and a subscriber unit identifier for
the subscriber unit from the subscriber unit . . . via the passive optical
network for correlation of the subscriber unit with the geographic location of
the subscriber” and therefore, relied on Donlan for teaching an ITV client
device in which an installation technician enters a registration code.
(Ans. 5.) The Examiner concluded that “it would have been obvious . . . to
use [the] provisioning method of Donlan et al. in the optical access network
of Harada et al.” (Ans. 5.) We agree with the Examiner.
Figure 1 of Harada illustrates a Fiber-to-the-Home (FTTH) system
configuration which includes Customer Premises and a Central Office.
(P. 191.) Donlan relates to “managing the provisioning of an interactive
television (ITV) network and the associated ITV client devices.” (Col. 1,
ll. 10-13.) Figure 1 of Donlan illustrates an ITV Network 100 that includes
an ITV Provisioning Manager 104 interconnected with communication
links 108 to an IP provisioning system 110, a subscriber management billing
system 114, a service server infrastructure 118a-c, a customer service
center 122, a head end in the sky (HITS) 126, head ends 130a-c, and
network operations 134. (Col. 4, ll. 60-67; Fig. 1.) In one example, “the
ITV Provisioning Manager 104 . . . may be located in . . . a telephone central
office.” (Col. 6, ll. 20-22.) In addition, the ITV Provisioning Manager 104
contains subscriber information that includes “the registration code, the
subscriber key, name, home phone, business phone, the identity of the
service(s) or package(s) selected, and address” (i.e., the claimed “location
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code” and “subscriber unit identifier”). (Col. 7, ll. 40-44.) Donlan also
explains that an ITV client device (e.g., a set-top box) is installed by an
installation technician (col. 8, ll. 14-17) such that the technician is presented
with a login/registration page for entry of a temporary registration code
(col. 9, ll. 50-53). Thus, Donlan teaches “transmitting the location code and
a subscriber unit identifier for the subscriber unit from the subscriber unit
. . . via the passive optical network for correlation of the subscriber unit with
the geographic location of the subscriber.”
The combination of Harada with Donlan is nothing more than
combining the known registration code of Donlan for an ITV network with
the known FTTH system of Harada, with no unexpected results. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Therefore, we agree
with the Examiner (Ans. 5) that combining the registration code of Donlan
with the FTTH system of Harada would have been obvious.
Appellants argue that “Donlan et al. fails to disclose transmitting the
location code and a subscriber unit identifier for a subscriber unit in a
network from the subscriber unit to a repository via the network for
correlation of the subscriber unit with the geographic location of the
subscriber” because “Donlan et al. teaches that a set-top box’s unit address is
correlated with a customer’s information manually, via a telephone call over
a separate telephone network.” (App. Br. 22; see also Reply Br. 11-12.)
However, this argument is not commensurate in scope with claim 5 because
the claim does not exclude the use of a telephone network for correlation of
the claimed subscriber unit with a geographic location. Furthermore,
because the ITV Provisioning Manager 104 of Donlan can be located in a
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telephone central office (col. 6, ll. 20-22), telephonic communication can be
considered a portion of the interactive television network (ITV) of Donlan.
Appellants also argue that “Donlan et al. further discloses that if an
incorrect registration code is entered, the IP Provisioning System presents
the technician with a new login/registration page requesting reentry of the
code.” (App. Br. 25; see also Reply Br. 13-14.) Thus, Appellants argue,
“Donlan et al. clearly illustrates that the registration code is already
correlated with the unit address before the technician enters the registration
code during the registration process of the computer function.” (App. Br.
25.) However, this argument is also not commensurate in scope with
claim 5 because the claim does not require the geographic location of the
subscriber to be determined only after the location code is transmitted.
Thus, we agree with the Examiner that the combination of Harada and
Donlan would have rendered obvious independent claim 5, which includes
the limitation “transmitting the location code and a subscriber unit identifier
for the subscriber unit from the subscriber unit . . . via the passive optical
network for correlation of the subscriber unit with the geographic location of
the subscriber.”
Accordingly, we sustain the rejection of independent claim 5 under
35 U.S.C. § 103(a). Claims 6, 7, 11, 16, and 48 depend from claim 5, and
Appellants have not presented any additional substantive arguments with
respect to these claims. Therefore, we sustain the rejection of claims 6, 7,
11, 16, and 48 under 35 U.S.C. § 103(a), for the same reasons discussed with
respect to independent claim 5.
Independent claims 17, 29, and 54 recite limitations similar to those
discussed with respect to independent claim 5, and Appellants have not
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presented any additional substantive arguments with respect to these claims.
We therefore sustain the rejection of claims 17, 29, and 54, as well as claims
18, 19, 23, 28, 30, 31, 35, 50, and 55, which depend from claims 17, 29, and
54, for the same reasons discussed with respect to claim 5.

§ 103 Rejection – Harada, Donlan, and Zellner
We are unpersuaded by Appellants’ arguments (App. Br. 30-31) that
the combination of Harada, Donlan, and Zellner would not have rendered
obvious dependent claim 8, which includes the limitation “receiving the
location code via a butt set device coupled to the subscriber unit.”
The Examiner acknowledged that the combination of Harada and
Donlan does not disclose the limitation “receiving the location code via a
butt set device coupled to the subscriber unit” and therefore, relied on
Figure 2 of Zellner for teaching a butt set. (Ans. 7.) The Examiner
concluded that “it would have been obvious . . . to use a butt set device [of
Zellner] . . . in the modified optical network of Harada et al. and Donlan et
al. because hand-held butt set devices have become standard devices for
technicians for use in installation and troubleshooting in the field.” (Id.) We
agree with the Examiner.
Zellner relates to “[a] portable telecommunication test set, such as a
telephone line butt set, with a web browser.” (Abstract.) Therefore, Zellner
teaches the claimed “butt set.”
The combination of Zellner with Harada and Donlan is nothing more
than combining the known butt set of Zellner with the known FTTH system
of Harada, as modified with the known registration code of Donlan, with no
unexpected results. See KSR, 550 U.S. at 416. Therefore, we agree with the
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Examiner (Ans. 7) that combining the butt set of Zellner with the FTTH
system of Harada, as modified by Donlan, would have been obvious.
Appellants argue that “communication for a butt set would require the
addition of a jack to plug-in the butt set and circuitry or programming to
recognize inputs from the butt set in the set-top box disclosed by Donlan et
al.” and thus, “would add complexity and cost to the set-top box disclosed
by Donlan et al. with no apparent benefit.” (App. Br. 31.) Even if
Appellants are correct that the combination of Zellner with Harada and
Donlan would result in additional complexity, this does not mean that
persons skilled in the art would not make the combination. See In re
Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983).
Appellants also argue that
the registration process disclosed by Donlan et al. cited by the
Examiner in the rejection involves the computer function of the
set-top box, which presumably necessitates a more complex
user interface than a butt set. Since such a user interface (e.g., a
keyboard) would already be available, one of ordinary skill in
the art at the time of Appellant’s invention would not have had
a rational reason to modify the set-top box disclosed by Donlan
et al. to include the capability of communication via a butt set.
(App. Br. 31.) However, as discussed previously, the combination of
Harada, Donlan, and Zellner is based by combining known elements to
achieve predictable results.
Thus, we agree with the Examiner that the combination of Harada,
Donlan, and Zellner would have rendered obvious dependent claim 8, which
includes the limitation “receiving the location code via a butt set device
coupled to the subscriber unit.”
Accordingly, we sustain the rejection of dependent claim 8 under 35
U.S.C. § 103(a).
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Dependent claims 20 and 32 recite limitations similar to those
discussed with respect to dependent claim 8, and Appellants have not
presented any additional substantive arguments with respect to these claims.
We therefore sustain the rejection of claims 20 and 32 for the same reasons
discussed with respect to claim 8.

§ 103 Rejection – Harada, Donlan, and Ethridge
Although Appellants nominally argue the rejection of claims 9, 10,
13, 14, 21, 22, 25, 26, 33, 34, 36-43, 47, 49, 51, and 53 separately (App.
Br. 34-39), the arguments presented do not point out with particularity or
explain why the limitations of the claims are separately patentable. Instead,
Appellants argue that Ethridge is “duplicative relative to [the] disclosure of
Donlan et al.” (App. Br. 34, 36, 39) and that “Ethridge et al. fails to
overcome the deficiencies of Harada et al. in view of Donlan et al.” (App.
Br. 35-37). Furthermore, Appellants have not presented any substantive
arguments with respect to these claims. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”). Claims 9, 10, 13, 14, 21, 22, 25, 26, 33,
34, 36-42, 47, 49, 51, and 53 depend from claims 5, 17, and 29 and
independent claim 43 recites limitations similar to claims 5, 17, and 29. We
are also not persuaded by these arguments for the reasons discussed with
respect to claims 5, 17, and 29. Accordingly, we sustain these rejections.
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DECISION
The Examiner’s decision to reject claims 5-11, 13, 14, 16-23, 25, 26,
28-43, and 47-55 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

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