Ex Parte Valley et al

Patent Trial and Appeal Board

May 8, 2013

11854449 (P.T.A.B. May. 8, 2013)

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.
11/854,449 09/12/2007 George C. Valley PD-980202A 4902
20991 7590 05/09/2013
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
LI, SHI K
ART UNIT PAPER NUMBER
2637
MAIL DATE DELIVERY MODE
05/09/2013 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 GEORGE C. VALLEY, THOMAS S. LA FRANCE,
and WAH L. LIM
____________________

Appeal 2011-000206
Application 11/854,449
Technology Center 2600
____________________

Before: JOHN A. JEFFERY, CAROLYN D. THOMAS, and IRVIN E.
BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 6-19, and 22-25. We have jurisdiction under 35 U.S.C. § 6(b). Claims 2-5,
20, and 21 are cancelled.
We affirm.
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STATEMENT OF CASE
Introduction
Appellants’ disclosure generally relates to trunking systems for optical
communication between two continents using a satellite as a component of
the system. Spec. ¶ 2. The system may include one or more satellites (Figs. 1
and 2 and ¶¶ 23 and 24), transmitting and receiving circuits (Figs. 4A and B
and ¶¶ 27-30) and interconnections to terrestrial networks (Fig. 3 and ¶ 34).
In addition to optical components such as transmitting and receiving
telescopes, wavelength division multiplexers and demultiplexers, amplifiers,
and regeneration circuits, the transmitting and receiving circuits include
adaptive optics subsystems that compensate for various deleterious effects
on the uplink and downlink signals, including atmospheric aberrations and
spacecraft movement. Figs. 4A and B and ¶¶ 28 and 30. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A system comprising:
a satellite;
a first ground system in communication with the satellite
comprising,
an optical transmitting circuit comprising,
a transmitting add drop multiplexer removing a plurality
of optical wavelengths from a first optical network to form a
first optical signal;
a transmitting wave division demultiplexer in
communication with the transmitting add drop multiplexer
forming a plurality of different transmitting wavelength signals
corresponding to wavelengths from the first optical signal;
a plurality of transmitting regeneration circuits in
communication with a respective one of the wave division
demultiplexers generating a transmitting regenerative signal for
each of the plurality of different transmitting wavelength
signals;
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a plurality of transmitting amplifiers in communication
with a respective one of the plurality of transmitting
regeneration circuits forming transmitting amplified
regenerated signals;
a transmitting wave division multiplexer multiplexing the
transmitting amplified regenerated signals to form a
transmitting multiplexed signal;
a transmitting adaptive optics subsystem receiving the
transmitting multiplexed signal and forming a transmitting
compensated multiplexed signal compensated for atmospheric
aberrations and movement of the satellite; and
a transmitting telescope transmitting the transmitting
compensated multiplexed signal to the satellite.
References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fang
Bloom
Durant
Kanda
Desurvire
Korotky
US 4,099,121
US 5,710,652
US 6,016,212
US 6,091,528
US 6,201,621 B1
US 6,947,670 B1
Jul. 4, 1978
Jan. 20, 1998
Jan. 18, 2000
Jul. 18, 2000
Mar. 13, 2001
Sep. 20, 2005

Rejections
The Examiner rejected claims 1, 6-11, 14, 19, and 22-24 under 35
U.S.C §103(a) as unpatentable over Durant, Korotky, Desurvire, Bloom, and
Kanda (Ans. 3-6), and claims 12, 13, 15-18, and 25 under 35 U.S.C §103(a)
as unpatentable over Durant, Korotky, Desurvire, Bloom, Kanda, and Fang
(Ans. 7-8).1

1 Appellants do not separately argue the rejections of claims 9, 10, 15, 16,
18, 19, 22, 23, 24, and 25, which stand or fall with the claims from which
they depend.
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RELATED APPEAL
Although Appellants do not identify any related appeals (App. Br. 2,
26), the Examiner nonetheless identifies Appeal Number 2007-0983 as
related to this appeal. Ans. 2. That decision was rendered in connection
with an appeal in the present application’s parent application, where another
panel of this Board affirmed the Examiner’s obviousness rejections over
various prior art references—two of which are at issue here in the present
appeal (Bloom and Fang). To the extent that the earlier panel’s findings and
conclusions regarding these references are applicable to the issues before us
in the present appeal, we so note that here.

OBVIOUSNESS REJECTION OF CLAIM 1
The Examiner finds claim 1 obvious over Durant, Korotky, Desurvire,
Bloom, and Kanda (Ans. 3-6) citing Kanda’s free space laser
communication system of Fig. 5, which includes an adaptive optics for
correcting aberrations. Id. at 6. Appellants argue that because Kanda’s
disclosure is limited to space-based optical communication, “atmospheric
aberrations cannot possibly be corrected for or contemplated in Kanda.”
App. Br. 10. Appellants further argue that Bloom cannot be relied on for
teaching compensation for movement of the satellite because the “coarse-
tracking and fine-tracking appear to be used for adjusting the direction of
some type of encoder/motor/driver system.” Id., referring to Bloom, Fig. 6.

Issue
Whether the Examiner erred in rejecting claim 1 under 35 U.S.C.
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§ 103(a), finding that the combination of Durant, Korotky, Desurvire,
Bloom, and Kanda describes “a transmitting adaptive optics subsystem
receiving the transmitting multiplexed signal and forming a transmitting
compensated multiplexed signal compensated for atmospheric aberrations
and movement of the satellite.”
Analysis
We are unpersuaded that the Examiner erred. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007). “[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” Id. at 417. When
considering obviousness of a combination of known elements, the operative
question is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id. Here,
Appellants have not presented persuasive evidence that Kanda’s space-based
aberration correction system could not be used to correct for atmospheric
aberration or that such modification would be beyond the capability of a
person of ordinary skill in the art. Nor are we persuaded by Appellants’
argument which is based on the premise that the function of Bloom’s course-
tracking and fine-tracking is not compensation for movement of the satellite.
App. Br. 10. Appellants’ statement that the functionality appears limited to
“adjusting the direction of some type of encoder/motor/driver system” (Id.)
is not persuasive in view of the fact that the “encoder/motor/driver system”
labeling is modified by satellite positioning terminology (i.e., elevation and
azimuth) and operates on a “fast steering mirror” of a telescope (Bloom, Fig.
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6), which at least suggests that its functionality includes compensating for
“movement of the satellite.” Accordingly, we sustain the Examiner’s
rejection of claim 1 and of claim 19, which falls with claim 1. App. Br. 14.

OBVIOUSNESS REJECTION OF CLAIM 6
Claim 6 recites an “an optical receiving circuit” having receiving
elements in correspondence with the “optical transmitting circuit” elements
of claim 1. The Examiner cites Durant, column 3, lines 44-46 for “optical
wavelength demultiplexing,” and finds, referring to claim 1, that the same
signal regeneration method for routing signals from add drop multiplexer to
satellite would be applicable for routing signals from satellite to add drop
multiplexer. Ans. 6. Appellants contend that the Examiner has erred by not
identifying all elements of claim 6. App. Br. 12, Reply Br. 4.
Issue
Whether the Examiner erred in rejecting claim 6 under 35 U.S.C.
§ 103(a), finding that the combination of Durant, Korotky, Desurvire,
Bloom, and Kanda describes an optical receiving circuit that has a receiving
telescope, a receiving wave division multiplexer, a plurality of receiving
regeneration circuits, a plurality of receiving amplifiers, a wave division
multiplexer and an add drop multiplexer.
Analysis
We are unpersuaded that the Examiner erred. The rejection is
premised on optical elements being functionally equivalent whether used in
a receiving circuit or in a transmitting circuit. Appellants have presented no
evidence that this premise is flawed. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 550 U.S. at 416. Accordingly, we are
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not persuaded that the Examiner erred in rejecting claim 6. Claim 22
depends from claim 19 (rejection sustained supra) and falls with claim 6.
App. Br. 14. Claim 24 depends from claim 22 and falls with claim 22. Id.

OBVIOUSNESS REJECTION OF CLAIM 7
Appellants content that the Examiner erred in rejecting claim 7 –
which rejection cites Kanda, Figure 1, for a “receiving adaptive optics
subsystem receiving the second optical signal and forming a receiving
compensated signal” (Ans. 6) – because Kanda’s tracking mirror (element
23) “does not appear to form a compensated signal.” App. Br. 12-13.
Appellants submit that “there is no teaching for receiving a compensated
signal as recited in claim 7.” Reply Br. 4.
Issue
Whether the Examiner erred in rejecting claim 7 under 35 U.S.C.
§ 103(a), finding that the combination of Durant, Korotky, Desurvire,
Bloom, and Kanda describes “the optical receiving circuit comprises [a]
receiving adaptive optics subsystem receiving the second optical signal and
forming a receiving compensated signal.”
Analysis
We are unpersuaded that the Examiner erred and adopt the
Examiner’s findings. Ans. 6, 13. We sustain the rejection of claim 7 and of
claims 9 and 10, which fall with claim 7.

OBVIOUSNESS REJECTION OF CLAIM 8
With respect to the rejection of claim 8, Appellants argue that there is
no teaching “for compensating for atmospheric aberrations in the Kanda
reference.” App. Br. 13, Reply Br. 2.
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Issue
Whether the Examiner erred in rejecting claim 8 under 35 U.S.C.
§ 103(a), finding that the combination of Durant, Korotky, Desurvire,
Bloom, and Kanda describes “the receiving compensated signal compensates
for atmospheric aberrations.”
Analysis
We are unpersuaded that the Examiner erred. Appellants present
arguments regarding a single reference without providing evidence of error
with respect to a rejection based on a combination of references. Non-
obviousness cannot be established by attacking the references individually
when the rejection is predicated upon a combination of prior art disclosures.
See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We refer
to our analysis supra regarding atmospheric aberrations. Ans. 6, 13. The
Examiner did not err in rejecting claim 8. Claim 23 depends from claim 22
and falls with claim 8. App. Br. 14.

OBVIOUSNESS REJECTION OF CLAIM 11
Appellants argue that the Examiner erred in rejecting claim 11
because Bloom “does not teach or suggest that an adaptive optics subsystem
receives a multiplexed signal and compensates the multiplexed signal for
movements of the satellite,” (App. Br. 13) and that the Examiner “fails to
provide any specific recitation besides the Bloom reference for the teachings
in claim 11.” Reply Br. 5.
Issue
Whether the Examiner erred in rejecting claim 11 under 35 U.S.C.
§ 103(a), finding that the combination of Durant, Korotky, Desurvire,
Bloom, and Kanda describes “the receiving telescope receives the second
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signal from a satellite system and the transmitting telescope transmits the
transmitting multiplexed signal to the satellite system.”
Analysis
It is apparent that the rejection is based on a combination of
references. The Examiner cites Bloom, Figure 4, which depicts transmitting
and receiving telescopes. Ans. 6. Appellants’ argument does not persuade us
that the Examiner erred in finding claim 11 obvious over the combination of
references.

OBVIOUSNESS REJECTION OF CLAIM 14
Appellants argue that the Examiner erred in finding claim 14 obvious,
because, “[a]lthough Korotky teaches an optical ring network” (App. Br.
14), the Examiner does not describe “how the combination of the Korotky
reference and the other references is formed.” Reply Br. 5.
Issue
Whether the Examiner erred in rejecting claim 14 under 35 U.S.C.
§ 103(a), finding that the combination of Durant, Korotky, Desurvire,
Bloom, and Kanda describes “the first optical network comprising an optical
ring network.”
Analysis
We disagree with Appellants and adopt the Examiner’s findings. Ans.
14.
OBVIOUSNESS REJECTION BASED ON THE COMBINATION OF SIX
REFERENCES
The Examiner concludes that it would have been obvious to combine
Durant, Korotky, Desurvire, Bloom, Kanda, and Fang because “spatial
diversity allows the network to avoid transceivers that are affected by local
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precipitation conditions and choose optimal transmitters for sending data.”
Ans. 7. Appellants state that their transmitting-adaptive optics system
reduces the need for rerouting signals as the Examiner states and further
contend that the Kanda system is only a space-based system and there is no
motivation “to construct a system that is a ground-to-satellite based system
out of the teachings of strictly space-based systems and strictly ground-
based systems.” App. Br. 11-12.
Issue
Whether the Examiner improperly combined Durant, Korotky,
Desurvire, Bloom, Kanda, and Fang in rejecting claims 12, 13, 15-18, and
25 under 35 U.S.C. § 103(a).
Analysis
We are unpersuaded that the Examiner’s reasoning for combining the
references lacks “rational underpinning to support the legal conclusion of
obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). A reason
to combine teachings from the prior art “may be found in explicit or implicit
teachings within the references themselves, from the ordinary knowledge of
those skilled in the art, or from the nature of the problem to be solved.”
WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir.
1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). While the
Examiner’s rationale for combining the references may be different than
Appellants’ reason for making the invention, it is sufficient that references
suggest doing what an appellant did. See, e.g., In re Gershon, 372 F.2d 535,
539 (CCPA 1967). Moreover, as depicted in Bloom, Fig. 1, which shows a
combined space-based and ground-based system, Appellants misstate that
the references include “strictly space-based systems and strictly ground-
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based systems.” App. Br. 11. The Examiner did not err in finding a rationale
for combining them.

OBVIOUSNESS REJECTION OF CLAIM 12
Appellants argue that the Examiner erred in rejecting claim 12
because, “[a]lthough the Fang reference teaches two different earth stations,
there is no teaching or suggestion for an optical network therebetween,” and
while agreeing that “the Korotky reference does include an optical ring
network,” Appellants argue that “there is no teaching or suggestion for
providing spatial diversity in an optical system.” Reply Br. 6.
Issue
Whether the Examiner erred in rejecting claim 12 under 35 U.S.C.
§ 103(a), finding that the combination of Durant, Korotky, Desurvire,
Bloom, Kanda, and Fang describes “the first ground system is disposed on a
first landmass coupled to a first terrestrial network through the first optical
network.”
Analysis
We again find Appellants’ attack on references individually
unpersuasive of error in the Examiner’s rejection. We adopt the Examiner’s
findings. Ans. 7. We also note this Board’s decision in Appeal Number
2007-0983, discussed supra, sustaining the Examiner’s rejection and noting
the Examiner’s finding that “Fang’s teaching of using spatial diversity to
avoid or reduce the adverse effects of precipitation ‘is applicable to any
satellite communication, and is not limited to RF,’” and concluding that it
would have been obvious and within the level of skill of an artisan to
combine the RF system of Fang with the optical satellite system of Bloom.
Ex parte Valley, No. 2007-0983 (B.P.A.I July 16, 2007). We sustain the
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rejection of claim 12 and of claims 15 and 16, which fall with claim 12.
Claim 25 depends from claim 22 and falls with claim 12. App. Br. 16.

OBVIOUSNESS REJECTION OF CLAIM 13
Appellants contend that the rejection of claim 13 is in error because
Fang does not teach the elements of the claim (App. Br. 15) and because the
rejection of claim 12 from which claim 13 depends is erroneous. Reply Br.
6.
Issue
Whether the Examiner erred in rejecting claim 13 under 35 U.S.C.
§ 103(a), finding that the combination of Durant, Korotky, Desurvire,
Bloom, Kanda, and Fang describes the “first ground system determining a
first ground station having a first least distorted path between the satellite
system and the first plurality of ground stations.”
Analysis
We are unpersuaded that the Examiner erred, adopt the Examiner’s
findings (Ans. 8, 15), and refer to our analysis, supra, regarding the rejection
of claim 12. We further note this Board’s prior finding that ground stations
determining a least distorted path is inherent when Bloom is modified in
view of Fang to make a satellite trunking system that communicates with
terrestrial networks. Ex parte Valley at 10 (discussing the rejection of claim
1).
OBVIOUSNESS REJECTION OF CLAIM 17
Appellants argue that the Examiner erred in rejecting claim 17 by not
pointing to any specific passage in the Fang reference for teaching the claim
elements (App. Br. 15), specifically, “the second least distorted path.” Reply
Br. 6-7.
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Issue
Whether the Examiner erred in rejecting claim 17 under 35 U.S.C.
§ 103(a), finding that the combination of Durant, Korotky, Desurvire,
Bloom, Kanda, and Fang describes the “second ground system determines a
second ground station having a second least distorted path between the
satellite system and the second plurality of ground stations, said second
ground system communicating with said first ground system through said
satellite system and the first path and the second path.”
Analysis
We are unpersuaded that the Examiner erred. Fang describes selecting
“the optimum site or sites” of a triple diversity earth station for signal
transmission (col. 3, ll. 34-36), which, together with the combined teachings
of all the cited references, renders claim 17 obvious, along with claim 18,
the rejection of which falls with claim 17.

CONCLUSIONS
On the record before us, we find no error in the Examiner’s rejection
of claims 1, 6-11, 14, 19, and 22-24 under 35 U.S.C §103(a) as unpatentable
over Durant, Korotky, Desurvire, Bloom, and Kanda, nor in the rejection of
claims 12,13, 15-18, and 25 under 35 U.S.C §103(a) as unpatentable over
Durant, Korotky, Desurvire, Bloom, Kanda, and Fang. We sustain the
rejections.

DECISION
The Examiner’s rejection of claims 1, 6-19, and 22-25 is affirmed.

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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) (2011).

AFFIRMED

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