Ex Parte PaslaskiDownload PDFPatent Trial and Appeal BoardMar 30, 201714474174 (P.T.A.B. Mar. 30, 2017) Copy Citation 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. 14/474,174 08/31/2014 Joel S. Paslaski 84701316US06 2709 97291 7590 04/03/2017 Huawei Technologies Co., Ltd. c/o Wenjun Gu (Huawei ID 00229515) Building Gl-2, Huawei Industrial Base, Bantian, Longgang District, Shenzhen, 518129 CHINA EXAMINER WOLDEKIDAN, HIBRET ASNAKE ART UNIT PAPER NUMBER 2637 NOTIFICATION DATE DELIVERY MODE 04/03/2017 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): uspatent@huawei.com shiming. wu @huawei.com ltian @ huawei. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOEL S. PASLASKI Appeal 2016-0049491 Application 14/474,174 Technology Center 2600 Before JEAN R. HOMERE, DEBRA K. STEPHENS, and JOHN A. EVANS, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge JEAN R. HOMERE. Opinion Dissenting filed by Administrative Patent Judge JOHN A. EVANS. EVANS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a Non-Final Rejection of claims 170—196. Br. 3. Claims 1—169 have been canceled. Claims App’x. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies the real party in interest as HOYA Corporation USA. Br. 2. Appeal 2016-004949 Application 14/474,174 Appellant’s Invention Appellant invented a bidirectional optoelectronic device and method with reduced crosstalk. Spec. 110. In particular, the bidirectional optoelectronic device includes a photodetector (114), a light source (116) generating an output optical signal (16), and a drive circuit (250) for the light source (116), where the photodetector (114) receives an input optical signal (14) modulated to encode first transmitted information and generate an output electrical signal (24) modulated to encode the first transmitted information. Spec. 1 52, Fig. 7. When the light source (116) and the photodetector (114) are positioned sufficiently close (within 2mm to 5mm apart) on a common substrate, the drive circuit (250) is arranged to reduce crosstalk (3dB or less) by applying a first portion (27b) of an input electrical signal (26) to a first electrical lead (126b) of the light source (116), and by applying a second portion (27a) of the input electrical signal (26) to the second lead (126a) of the light source (116), wherein the second portion (27a) is a scaled, inverted substantial replica of the first portion (27b). Spec. 11 56—58, Fig. 7. Illustrative Claim Claim 170, reproduced below, is illustrative of the claimed subject matter: 170. A bidirectional optoelectronic device comprising: (a) a photodetector arranged (i) to receive an input optical signal modulated to encode first transmitted information and (ii) to generate in response to the input optical signal an output electrical signal modulated to encode the first transmitted information; 2 Appeal 2016-004949 Application 14/474,174 (b) a light source arranged (i) to receive an input electrical signal modulated to encode second transmitted information and (ii) to generate in response to the input electrical signal an output optical signal modulated to encode the second transmitted information, which light source has first and second electrical leads for receiving the input electrical signal; and (c) a drive circuit arranged to apply a first portion of the input electrical signal to the first electrical lead of the light source and to apply a second portion of the input electrical signal to the second lead of the light source, wherein the second portion of the input electrical signal is a scaled, inverted substantial replica of the first portion of the input electrical signal, wherein: (d) the photodetector exhibits a cross-talk penalty less than about 3 dB; (e) the light source and the photodetector are positioned on a common substrate; and (f) (i) edge dimensions of the substrate are less than about 10 mm or (ii) the light source and the photodetector are positioned within about 2 mm of each other. Prior Art Relied Upon The prior art relied upon by the Examiner in rejecting the claims on appeal is: Goutzoulis et al. Oda et al. Tanaka et al. Costello et al. US 4,950,882 US 5,677,779 US 2007/0047602 Al US 2011/0121181 Al Aug. 21, 1990 Oct. 14, 1997 Mar. 1,2007 May 26, 2011 Xiaomin Jin et al., Electromagnetic Crosstalk Penalty in 2.5 GB/s and 10 GB/s Serial Optical Modules, 2006.2 2 Appellant and the Examiner identify this reference as “Xiaomin”; however, we use the author’s last name to identify this reference. 3 Appeal 2016-004949 Application 14/474,174 Rejections on Appeal3 Appellant requests review of the following Examiner’s rejections: Claims 170-173, 176-179, 181-186, 189-193, 195, and 196 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Oda, Tanaka, Jin, and Costello. Non-Final Act. 10-16. Claims 174, 175, 187, and 188 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Oda, Tanaka, Jin, Costello, and Applicant Admitted Prior Art (AAPA). Non-Final Act. 16—18. Claims 180 and 194 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Oda, Tanaka, Jin, Costello, and Goutzoulis. Non-Final Act. 18—19. ANAFYSIS We consider Appellant’s arguments seriatim, as they are presented in the Appeal Brief, pages 4—8.4 Appellant argues the proposed combination of Oda, Tanaka, Jin, and Costello does not teach or suggest the bidirectional optoelectronic device 3 The Examiner has withdrawn the non-statutory obviousness-type double patenting rejections previously entered against claims 171, 173—184, and 186—196 on appeal. Ans. 11. 4 Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed July 24, 2015) (“Br.”), the Answer (mailed January 20, 2016) (“Ans.”), the Non-Final Office Action (mailed December 24, 2014) (“Non-Final Act.”), and the original Specification (filed August 31, 2014) (“Spec.”) for the respective details. We have considered in this Decision only those arguments Appellant actually raised in the Briefs. Any other arguments Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). 4 Appeal 2016-004949 Application 14/474,174 recited in claim 170. Br. 4. According to Appellant, the cited references do not recognize the problem of increasing crosstalk penalty with decreasing space between a light source and a photodetector. Br. 4—5 (citing Spec. Tflf 47, 56). Appellant asserts that the cited references do not teach the desire of achieving the recited the photodetector exhibits a cross-talk penalty less than about 3 dB, the light source and the photodetector are positioned on a common substrate and edge dimensions of the substrate are less than about 10 mm or the light source and the photodetector are positioned within about 2 mm of each other. Br. 5. These arguments are not persuasive. At the outset, we note Appellant’s arguments do not rebut the Examiner’s findings regarding the limitations the cited references are relied upon to teach. Br. 4—5. The Examiner finds Jin teaches a cross-talk penalty of less than 3 db. Ans. 12 (citing Jin Sec. 2). The Examiner additionally finds Costello teaches a light source and photodetector positioned about 2 mm of each other. Ans. 12 (citing Costello 122, Fig. 2). We disagree with Appellant that the cited references do not recognize the problem of increasing cross-talk with reduced dimensions. Br. 4—5. The Examiner finds Costello recognizes the urgency of the problem of reducing infrared signal crosstalk with smaller proximity sensor packages. Non-Final Act. 13—14 (citing Costello 5—6). Second, Appellant contends Costello is non-analogous art with respect to claim 170. Br. 5. In particular, Appellant states, “although the device of Costello includes both a light source and photodetector, it is in no way analogous to a bidirectional optoelectronic device wherein the optical end electrical signals encode information.” Br. 5. In response, the Examiner 5 Appeal 2016-004949 Application 14/474,174 finds the device of Costello is a bidirectional optoelectronic device with an optical signal transmitter and optical signal receiver. Ans. 13—14 (citing Costello 120, Fig. 3). We agree with the Examiner that the device of Costello is within the same field of endeavor as that of claim 170 which recites a bidirectional optoelectronic device.5 To be within the same field of endeavor as the present application, Costello need not detail every claimed limitation, nor does the disclosed bidirectional optoelectronic device need to be directed to a particular encoding scheme.6 It suffices that Costello discloses an optoelectronic device for communicating signals between the transmitter and a receiver. Moreover, as discussed above, we further agree 5 “Whether a reference in the prior art is ‘analogous’ is a fact question.” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 n.9 (Fed. Cir. 1987)). Two criteria have evolved for answering the question: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Id. at 658—59 (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)). “A reference is reasonably pertinent if... it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. at 659. “If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” Id. 6 Moreover, a reference need not disclose every limitation to fall within the same field of endeavor as the claimed invention. See In re Naren Chaganti, No. 2013-1372 (Fed Cir, 2014). The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field. Unwired Planet, LLC v. Google Inc., 120 USPQ2d 1593 (Fed. Cir. 2016). 6 Appeal 2016-004949 Application 14/474,174 with the Examiner that the device of Costello is reasonably pertinent to the particular problem of increasing crosstalk with decreasing dimensions, with which Appellant is concerned. Ans. 13—14; Non-Final Act. 13—14 (citing Costello 5—6). Accordingly, we agree with the Examiner that Costello is analogous art with respect to claim 170. Third, Appellant asserts that there is no teaching in the cited references of the link between polarity of the driver circuit of the light source and the reduction of crosstalk. Br. 5—7. In particular, Appellant argues nothing in the cited references that suggests or teaches that cross-talk penalty changes as the result of replacing a unipolar drive circuit for the light source with a bipolar drive circuit. Br. 6. We are not persuaded. We agree with the Examiner that the change in cross-talk penalty with replacement of unipolar drive circuit with a bipolar drive circuit is not recited in claim 170 and thus, Appellant is arguing limitations not recited in the claim. Ans. 14. Nevertheless, the Examiner finds Tanaka teaches a non-inverting output and inverting output of a driver, as a bipolar drive circuit, to drive a laser diode (LD) light source 21. Non- Final Act. 11—12 (citing Tanaka 133, Fig. 1). The laser diode (LD) 21 generates an optical signal that is monitored by the photodiode (PD) 22. See Tanaka 130, Fig. 1. The voltage signal from the photodiode (PD) 22 is VMON. See Tanaka 135, Fig. 1. Appellant agrees Tanaka teaches cross talk. Br. 6 (citing Tanaka 52, 85). Tanaka teaches that crosstalk noise is low in VMON which is derived from the optical signal from the laser diode (LD) 21, driven by a bipolar drive circuit. See Tanaka 30, 33, 35, 52, Fig. 1. Contrary to Appellant’s argument, the ordinarily skilled artisan would 7 Appeal 2016-004949 Application 14/474,174 readily appreciate that reduction of cross-talk with the use of a bipolar driver circuit is taught or at least suggested in the system of Tanaka. Accordingly, we sustain the Examiner’s obviousness rejection of claim 170. Regarding claim 178, Appellant argues Jin does not teach selecting a scale factor relating to the inverted portions of the electrical signal to minimize cross-talk penalty. Br. 7. In particular, Appellant contends Jin teaches a ratio of output electronic signals can measure cross-talk penalty, but not adjusting the ratio to change cross-talk. Br. 7. The Examiner responds that controlling the input signal into channel A and B selects the ratio as a scaling factor. Ans. 14—15 (citing Jin Sec. 1). We agree with the Examiner because Jin teaches adjusting the cross-talk penalty by attenuating the optical signal received at the receiver (channel A) and thus, controlling the input signal by selecting the ratio as a scaling factor to minimize cross talk penalty. See Jin Sec. 2, Figs. 1,3. Accordingly, we are not persuaded of error of the Examiner’s rejection of claim 178. Regarding claim 192, Appellant argues the cited references do not teach an optimization procedure to determine the scale factor relating to inverted portions of the electrical signal to reduce crosstalk penalty. Br. 8. The Examiner finds Tanaka teaches a feedback error signal to adjust the driving signals and thus, Tanaka teaches an optimization procedure. Ans. 15 (citing Tanaka 133, Fig. 1). We agree with the Examiner because, as discussed above, Tanaka suggests that crosstalk noise can be changed in VMON which is derived from the optical signal from the laser diode (LD) 21, driven by the driving signals. See Tanaka 30, 33, 35, 52, Fig. 1. Therefore, Tanaka suggests the optimization procedure may determine the 8 Appeal 2016-004949 Application 14/474,174 scale factor to reduce crosstalk penalty. Accordingly, we sustain the Examiner’s obviousness rejection of claim 192. Regarding the rejections of claims 171—177, 179-191, and 193—196, because Appellant have either not presented separate patentability arguments or have reiterated substantially the same arguments as those previously discussed for patentability of independent claims 1 and 11 (Br. 3, 8), claims 171—177, 179—191, and 193—196 fall therewith for the same reasons set forth above. See 37 C.F.R. § 41.37(c)(l)(iv). DECISION We affirm the Examiner’s obviousness rejections under 35 U.S.C. § 103(a) of claims 170-196. 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 9 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOEL S. PASLASKI Appeal 2016-004949 Application 14/474,174 Technology Center 2600 JOHN A. EVANS, Administrative Patent Judge, dissenting. ANALOGOUS ART For the reasons discussed below, I find Costello is not analogous art for purposes of the present claims. Moreover, I also find the Examiner has failed to show that the claimed “cross-talk penalty” is taught by the prior art, I, therefore, respectfully dissent from the Majority Opinion and would REVERSE the rejection of all claims. Legal Standard for Analogous Art The ultimate determination of obviousness under § 103 is a question of law, based on several underlying factual findings. In re Klein, 647 F.3d 1343, 1347 (Fed. Cir. 2011). The Federal Circuit reviews the Board’s legal conclusion of obviousness de novo. Id. (citing In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000)). The Federal Circuit reviews the Board’s legal conclusions, de novo, therefore, a fortiori, the Board must review the Appeal 2016-004949 Application 14/474,174 Examiner’s legal conclusions de novo. The Examiner draws the legal conclusion “that the Costello [reference] is an analogous art.” Ans. 14. I disagree with this conclusion and the Majority’s adoption thereof. A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. In re Klein at 1348; Innovention Toys, LLC, v. MGA Entertainment, Inc., 637 F.3d 1314, 1321 (Fed.Cir.2011); In re Bigio, 381 F.3d 1320, 1325 (Fed.Cir.2004); In re Clay, 966 F.2d 656, 658 (Fed.Cir.1992). Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein at 1348 (citing Bigio, 381 F.3d at 1325). Same field of endeavor The Examiner finds Oda discloses a bidirectional optoelectronic device comprising a photodetector arranged to receive an input optical signal having a first portion modulated to encode information. Final Act. 10—11. The Examiner finds Costello teaches “an electronic device having edge dimensions less than 10 mm” wherein a light source and photodetector are placed within 2 mm of each other. Non-Final Act. 13 (emphasis omitted). The “field of endeavor” test asks whether the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art, because of the similarity to the structure and function of theclaimed invention as disclosed in the application. Schott Gemtron Corp. v. SSWHolding Co. Inc., IPR2013-00358, slip op. at 19 (citing Bigio, at 2 Appeal 2016-004949 Application 14/474,174 1325—27). “It is necessary to [apply] ‘common sense’ in ‘deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor’.” Id. at 1326. Appellant discloses “[t]he field of the present invention [i.e., “field of endeavor”] relates to bidirectional or multi-channel optoelectronic devices, including bidirectional optoelectronic transceivers.” Spec., 12. Appellant discloses “generally, a multi-channel optoelectronic device is one that can simultaneously handle such conversion between electrical and optical signals for two or more such pairs of corresponding signals (each pair comprising a ‘channel’).” Id. at 13. Specifically, Appellant details “each signal (electrical or optical) typically comprises a carrier wave modulated according to a given scheme to encode digital or analog information.” Id. at 15. The Examiner’s finding that “Costello is a bidirectional opto electronic device” (Ans. 13) is not grounded in Appellant’s Specification. “The ‘field of endeavor’ test asks [whether] the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art, because of the similarity to the structure and function of the claimed invention as disclosed in the application.” Schott Gemtron at 19 (emphasis added). The Examiner makes no finding that Costello teaches a signal modulated to encode information, as disclosed by Appellant. Spec., 1 5. The Examiner is silent as to which Bigio prong is found to be satisfied. However, Costello implicitly fails the “same field of endeavor” prong of the Bigio test. Therefore, the Examiner’s finding that Costello is “analogous art,” must rely on the “reasonably pertinent” prong of the Bigio test. 3 Appeal 2016-004949 Application 14/474,174 Reasonably pertinent It is not required that a reference be from the same field of endeavor as the claimed invention, in light of the Supreme Court’s instruction: “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Klein at 1348 (citing Clay, 966 F.2d at 659). The Examiner finds the references are analogous because each reference, including Costello, teaches an optoelectronic device having a cross-talk penalty less than about 3dB. Ans. 13. Appellant contends Costello is not analogous to a bidirectional optoelectronic device wherein the optical end electrical signals encode information. App. Br. 5. Appellant argues Costello does not encode information, thus, the entire notion of a cross-talk penalty is not relevant to the claims or the cited art and therefore the light source and detector can be placed as close as one would like. Id. The Examiner and Appellant differ as to the implication of Costello’s teaching of cross-talk. Compare Ans. 13 with App. Br. 5. Appellant discloses each electrical or optical signal comprises a carrier wave modulated according to encode digital or analog information. Spec., 13. Appellant further discloses a correspondence between the input optical signal and the output electrical signal. Id. Appellant discloses 4 Appeal 2016-004949 Application 14/474,174 “sensitivity” is the minimum optical power needed to ensure sufficiently faithful encoding on the output electrical signal of information encoded on the input optical signal (e.g., to guarantee a bit error rate below a specified limit for a digital data signal). Spec. 17. Importantly for the claims and for a finding that Costello is analogous art, Appellant defines “cross-talk penalty” as the ratio of the sensitivity of the photodetector with versus without the input electrical signal applied to the light source. Id. Appellant argues Costello does not encode information, thus, the entire notion of a cross-talk penalty is not relevant to the claims or the cited art. App. Br. 5. The Examiner does not construe the term “cross-talk penalty” that is recited in the claims, nor does the Examiner define Costello’s “cross-talk.” “The construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). However, while the PTO is required to give claims their “broadest reasonable construction,” the “claims should always be read in light of the specification” and the broadest reasonable construction rule does not provide “an unfettered license to interpret claims to embrace anything remotely related to the claimed invention.” See In re Suitco Surface, Inc., 603 F.3d 1374 (Fed. Cir. 1010). The claimed “cross-talk penalty” is the ratio of the sensitivity of the photodetector with versus without the input electrical signal applied to the light source. Spec. 17. As defined by Appellant, the “cross-talk penalty” relates to ratios of information bit error rates. Id. Because Costello does not teach modulating a signal to encode information, Costello cannot teach the claimed “cross-talk penalty.” 5 Appeal 2016-004949 Application 14/474,174 In re Klein, 647 F.3d 1343, 98 USPQ2d 1991 (Fed. Cir. 2011), is instructive as to the “reasonably pertinent” prong for determining whether a reference is analogous art. In determining whether a reference is reasonably pertinent, an examiner should consider the problem faced by the inventor, as reflected - either explicitly or implicitly - in the specification. See Bahr Memorandum.7 However, the Examiner compared Costello to the prior art, not to Appellant’s Specification. (“This shows that the Costello is an analogous art since all the references related to optoelectronics devices.”) Ans. 14. Substantial Evidence The Federal Circuit reviews the Board’s underlying factual findings for substantial evidence. In re Klein, 647 F.3d 1343, 1347 (Fed. Cir. 2011) (citing In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000)). The Board’s determination that a prior art reference is analogous art presents an issue of fact, reviewed for substantial evidence. In re Icon Health & Fitness, Inc., 496 F.3d 1374, 1378 (Fed.Cir.2007). However, the Examiner’s finding that Costello is prior art lacks a factual predicate. The Examiner made a finding relating to Costello’s “cross-talk,” but did not relate that to the claimed “cross-talk penalty.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (citation omitted) (finding “the name of the game is the claim”). Nor did the Examiner make a finding that Costello’s “cross-talk” has any relation to ratios of information bit error rates, as defined by Appellant. See Spec. 1 7 Robert W. Bahr, Analogous Art for Obviousness Rejections, Memorandum to Patent Examining Corps, July 26, 2011, https://www.uspto.gov/sites/default/files/patents/law/exam/analogous_art.pd f. We note the Bahr Memorandum is not binding upon the Board. However, it is guidance that, reasonably, the Examining Corps should follow. 6 Appeal 2016-004949 Application 14/474,174 7. The Examiner’s “argument is unpersuasive in light of our claim construction of the term” [“cross-talk penalty”]. Schott Gemtron at 20 (finding the accused reference not to be analogous art). Whereas the PTO is required to give claims their “broadest reasonable construction,” the “claims should always be read in light of the specification” and the broadest reasonable construction rule does not provide “an unfettered license to interpret claims to embrace anything remotely related to the claimed invention.” See In re Suitco Surface, Inc., 603 F.3d 1374 (Fed. Cir. 1010). In view of the foregoing, I would find Costello is not analogous art for purposes of the present claims. Moreover, I would also find the Examiner has failed to show that the claimed “cross-talk penalty” is taught by the prior art. I, therefore, respectfully dissent from the Majority Opinion and would REVERSE the rejection of all claims. 7 Copy with citationCopy as parenthetical citation