Paul Littlewood et al.

Patent Trials and Appeals Board

Dec 11, 2019

14975191 - (D) (P.T.A.B. Dec. 11, 2019)

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.
14/975,191 12/18/2015 Paul LITTLEWOOD 10.2334 3898
22474 7590 12/11/2019
Clements Bernard Walker
4500 Cameron Valley Parkway
Suite 350
Charlotte, NC 28211
EXAMINER
PASCAL, LESLIE C
ART UNIT PAPER NUMBER
2637
NOTIFICATION DATE DELIVERY MODE
12/11/2019 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):
patlaw@worldpatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL LITTLEWOOD,
MICHEL P. BÉLANGER, CHRISTINE TREMBLAY,
MD. NOORUZZAMAN, and NABIH ALLOUNE
____________

Appeal 2018-007966
Application 14/975,191
Technology Center 2600
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU,
and SHARON FENICK, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 2, 4–10, 12–18, and 20, which are all

1 This Decision refers to Appellant’s Appeal Brief (“Appeal Br.,” filed
Mar. 22, 2018) and Reply Brief (“Reply Br.,” filed Aug. 1, 2018), the
Examiner’s Final Office Action (“Final Act.,” mailed Nov. 2, 2017) and
Answer (“Ans.,” mailed June 4, 2018), and the original Specification
(“Spec.,” filed Dec. 18, 2015).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Ciena Corporation as the real party in
interest. Appeal Br. 2.
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of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
Appellant’s invention relates to network resource optimization in an
optical network. Spec. ¶ 1. Specifically, the invention involves
“determining traffic variations over time” and “adjusting one or more of
transceivers and wavelengths between nodes in the optical network to match
the traffic demands at various time intervals.” Id. ¶ 3.
Claims 1, 9, and 17 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal:
1. A method of network resource optimization based on
time-varying traffic in an optical network with a filterless
architecture, the method comprising:
obtaining real time traffic matrices containing bandwidth
values based on measured time-varying traffic in the optical
network over a period of time and based on time differences of
nodes and traffic variations, wherein the optical network
comprises an ultra-long-haul network spanning multiple time
zones;
calculating a total number of one or more of transceivers
and wavelengths needed in the optical network after the period
of time based on the real time traffic matrices, wherein the
calculating utilizes groupings of fiber trees and source nodes in
the optical network and determines transceivers based on the
real time traffic matrices in the period of time; and
adjusting the one or more of the transceivers and the
wavelengths between nodes in the optical network based on the
calculated total number using the filterless architecture which
enables transceivers to broadcast and to change connections
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between nodes without active switching by adjustment of
receivers to selectively receive the broadcast.
Appeal Br. 14 (Claims App.).
REJECTIONS ON APPEAL
The Examiner rejects claims 1, 2, 4–10, 12–18, and 20 under 35
U.S.C. § 101 as being directed to non-statutory subject matter. Final Act. 2–
5.
The Examiner rejects claims 1, 2, 4–10, 12–18, and 20 under
35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph as failing to
comply with the enablement requirement. Final Act. 5–8.
The Examiner rejects claims 1, 2, 4–10, 12–18, and 20 under
35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph as being
indefinite. Final Act. 8–10.
ANALYSIS
Rejection Under 35 U.S.C. § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter, or [a] new and useful
improvement thereof.” 35 U.S.C. § 101. However, the Supreme Court has
long interpreted § 101 to “contain[] an important implicit exception: Laws of
nature, natural phenomena, and abstract ideas are not patentable.” Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
In Alice, the Supreme Court reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012) “for distinguishing patents that claim laws of
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nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The first
step in this analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts,” e.g., to an abstract idea. Id.
Concepts determined to be abstract ideas include certain methods of
organizing human activity, such as fundamental economic practices (id. at
219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical formulas
(Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes
(Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). If it is determined that the
claims are directed to a patent-ineligible concept, the second step of the
analysis requires consideration of the elements of the claims “individually
and ‘as an ordered combination’” to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). In
other words, the claims must contain an “inventive concept,” or some
element or combination of elements “sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [abstract idea]
itself.” Id. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“2019 Guidance”). Under that guidance, we first
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as fundamental economic
practices, or mental processes) (“Step 2A, Prong 1”); and
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong 2”).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then (“Step 2B”) look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, and conventional” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Guidance, 84 Fed. Reg. at 52–56.
The Examiner determines that the claims are directed to an abstract
idea and that the claim elements, considered both individually and in
combination, do not include additional elements that are sufficient to amount
to significantly more than the abstract idea. Final Act. 2–5. In particular,
the Examiner finds that the claims recite limitations that “could be a thought
process” (id. at 3; see Ans. 15) and that the additional elements are recited at
a high level of generality, i.e., as generic computer components performing
generic functions of computer processing (Final Act. 4–5).
Appellant argues that the claims are not directed to an abstract idea
but, rather, to optimization of an optical network. Appeal Br. 8. Appellant
contends that the claims are similar to those found to be patent-eligible in
Diamond v. Diehr, 450 U.S. 175 (1981) because they “use[] mathematical
equations to solve a very concrete technological problem – how to minimize
transceivers and wavelengths in an optical network with time-varying traffic
and a filterless architecture for broadcast-and-select functionality.” Id. at 10.
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Appellant further argues that “two unique aspects in combination, namely
the ultra-long-haul optical network with time variations in traffic and the
filterless architecture,” are “required to perform Appellant’s optimization”
and thus amount to significantly more than an abstract idea. Id.
Step 2A, Prong 1
Under Step 2A, Prong 1 of the 2019 Guidance, we agree with the
Examiner that the claims recite a judicial exception, i.e., an abstract idea.
See Final Act. 2. Specifically, we agree with the Examiner that the claims
recite a “thought process,” i.e., a mental process. See id. at 3; Ans. 15.
For example, claim 1 recites “calculating a total number of one or
more of transceivers and wavelengths needed in the optical network after the
period of time based on the real time traffic matrices, wherein the calculating
utilizes groupings of fiber trees and source nodes in the optical network and
determines transceivers based on the real time traffic matrices in the period
of time.” Under its broadest reasonable interpretation, the “calculating”
limitation covers performance of the limitation in the mind, i.e., a mental
mathematical calculation. Independent claims 9 and 17 recite corresponding
“calculation” limitations, and further include the recitation of generic
components. Other than the “circuitry” recited in claim 9 and the “memory
storing instructions” and “processor” recited in claim 17 as performing the
similarly recited steps, nothing in the claims precludes those steps from
being performed in the human mind. For example, but for the recitation of
the “circuitry,” “memory,” and “processor,” the claims encompass mentally
or manually (e.g., with pencil and paper) calculating the number of
transceivers and wavelengths needed based on the obtained real time traffic
matrices and utilizing groupings of fiber trees and source nodes, including
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mentally or manually determining transceivers based on the obtained real
time traffic matrices.
Accordingly, independent claims 1, 9, and 17 recite a mental process
as identified in the 2019 Guidance and, thus, an abstract idea.
Step 2A, Prong 2
Under Step 2A, Prong 2 of the 2019 Guidance, we next look to
whether the claims recite additional elements that integrate the abstract idea
into a practical application. We determine that they do not. For example,
claim 1 additionally recites “obtaining real time traffic matrices containing
bandwidth values based on measured time-varying traffic in the optical
network over a period of time and based on time differences of nodes and
traffic variations.” This “obtaining” step is recited at a high level of
generality (i.e., as general means of gathering traffic data of the optical
network) and amounts to insignificant pre-solution activity. See 2019
Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(g).
Claim 1 further recites “adjusting the one or more of the transceivers
and the wavelengths between nodes in the optical network based on the
calculated total number.” Appellant argues that, due to this “adjusting” step,
the claims are not directed to an abstract idea and are patent-eligible like the
claims in Diehr because they recite a “method, system, etc. to control the
optical network” based on the calculations. Appeal Br. 10; see id. at 8–9
(Appellant describing the “adjusting” step as a “post-solution step” through
which the “network . . . is configured based on the calculations”). However,
the “adjusting” step is recited at a high level of generality (i.e., as a general
means of changing or tuning the optical network according to the calculated
number of needed transceivers and wavelengths). Thus, we agree with the
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Examiner that “adjusting the one or more of the transceivers and the
wavelengths . . . based on the calculated total number” amounts to
insignificant post-solution activity, and is insufficient to render the claims
patent-eligible. See Ans. 13; 2019 Guidance, 84 Fed. Reg. at 55; MPEP
§ 2106.05(g).
Claim 1 further recites “wherein the optical network comprises an
ultra-long-haul network spanning multiple time zones” and that the
“adjusting” step is performed “using the filterless architecture which enables
transceivers to broadcast and to change connections between nodes without
active switching by adjustment of receivers to selectively receive the
broadcast.” These limitations are recited at a high level of generality and
merely limit the claims to a particular technological environment (i.e., an
ultra-long-haul network that spans across multiple time zones and has a
filterless architecture). See 2019 Guidance, 84 Fed. Reg. at 55; MPEP
§ 2106.05(h).
As discussed above, independent claims 9 and 17 recite that
“circuitry,” “memory storing instructions,” and a “processor” perform the
recited steps. We agree with the Examiner that these additional “circuitry,”
“memory,” and “processor” elements are recited at a high level of generality,
i.e., as generic components performing generic functions of computer
processing (e.g., retrieving and storing data, calculating, and
outputting/sending signals). See Final Act. 4–5. In other words, they are
generic limitations that merely apply the abstract idea using generic
components. See 2019 Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(f).
The claim limitations do not include any particular machine that is integral
to the claim. See 2019 Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(b).
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Although Appellant argues that the claimed invention “provides an
improvement to network operation,” we agree with the Examiner that the
claims do not recite a technological improvement in addition to the abstract
idea. See Reply Br. 2; Ans. 17–18. For example, notwithstanding
Appellant’s argument that the claimed invention “optimizes a number of
transceivers and wavelengths based on previously measure[d] traffic” (Reply
Br. 2), the claims “do not require an arguably inventive set of components or
methods, such as measurement devices or techniques, that would generate
new data. They do not invoke any assertedly inventive programming.”
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir.
2016). That is, the claims do not reflect an improvement in computer
functionality itself, or to any other technology or technical field. See 2019
Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(a).
Thus, even in combination, the additional limitations do not integrate
the abstract idea into a practical application because they do not impose any
meaningful limits on practicing the abstract idea.
Accordingly, we agree with the Examiner that the claims are directed
to an abstract idea.
Step 2B
Under Step 2B of the 2019 Guidance, we agree with the Examiner
that the additionally recited elements of “circuitry,”3 “memory storing

3 In Step 2B, the Examiner refers to the Specification’s disclosure that “a
corresponding device such as hardware, software, firmware, and a
combination thereof can be referred to as ‘circuitry configured or adapted
to.’” Final Act. 5; Spec. ¶ 78. The Examiner finds that “[i]t would appear
that the applicants disclose that the ‘circuitry adapted to’ of claim 9 could be
software which does not fall under a statutory class.” Id.; see also Ans. 6,
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instructions,” and “processor” in claims 9 and 17 are mere recitations of
generic computer structures performing generic computer functions and thus
do not amount to significantly more than the abstract idea. See Final Act. 4–
5. As discussed above, those additional elements amount to no more than
mere instructions to apply the abstract idea using generic computer
components. Mere instructions to apply an abstract idea on a generic
computer do not provide an inventive concept. Alice, 573 U.S. at 223–24.
Reevaluating the extra-solution activity of “obtaining real time traffic
matrices containing bandwidth values based on measured time-varying
traffic in the optical network over a period of time and based on time
differences of nodes and traffic variations” and “adjusting the one or more of
the transceivers and the wavelengths between nodes in the optical network
based on the calculated total number” (see 2019 Guidance, 84 Fed. Reg. at
56 (stating that a conclusion under Step 2A that an additional element is
insignificant extra-solution activity should be reevaluated in Step 2B)), we
find nothing unconventional in these steps of collecting traffic data to
perform the “calculating” step and changing or tuning the optical network as
a result of the “calculating” step. Appellant provides no evidence of how the
ordered combination of steps is unconventional or amounts to significantly
more than the abstract idea to which the claims are otherwise directed.
Appellant argues that the “filterless architecture” and “ultra-long-haul
network spanning multiple time zones” recited in the independent claims are

16. The Examiner, however, does not set forth an analysis rejecting
independent claim 9 as reciting “software per se,” and, therefore, directed to
non-statutory subject matter. Accordingly, we do not opine on this matter
any further.
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“two unique aspects in combination” that amount to significantly more than
the abstract idea. Appeal Br. 10. According to Appellant, these limitations
are a “specific and non-generic network architecture” and are “required
elements which enable the network optimization.” Reply Br. 2–3. As
discussed above, these limitations merely link the abstract idea to a
particular technological environment (i.e., an ultra-long-haul network
spanning multiple time zones and having a filterless architecture). A claim
that is directed to an abstract idea does not become patent-eligible by being
limited to a particular technological environment. Elec. Power Grp., 830
F.3d at 1354.
Appellant asserts that a filterless architecture has the benefit of
“allow[ing] a network operator to remotely change optical wavelengths
between terminals without switching or reconfiguration making it possible to
change connections every day based on the time variation.” Appeal Br. 7.
We note the corresponding recitation in the independent claims that the
filterless architecture “enables transceivers to broadcast and to change
connections between nodes without active switching by adjustment of
receivers to selectively receive the broadcast.” However, the limitation of
“chang[ing] connections between nodes without active switching” merely
describes a characteristic of filterless architectures. See Spec. ¶¶ 23–24
(“Filterless optical networks inherently support efficient resource sharing
between traffic paths without active switching. . . . The novelty in the
systems and methods recognizes that this traffic load variation fits well with
the inherent passive switching and capacity sharing capabilities of filterless
networks to re-use network resources without employment of active
switches and reduce overall resource requirements and eliminate active
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elements from networks.”). Thus, we agree with the Examiner that the
“filterless architecture” and “ultra-long-haul network spanning multiple time
zones” recited in the independent claims, as well as the additional limitations
recited in the dependent claims, do not amount to significantly more than the
abstract idea. See Final Act. 4; Ans. 18–19. Appellant has not shown that
the claims add any specific limitation beyond the judicial exception that is
not “well-understood, routine, and conventional” in the field. See MPEP
§ 2106.05(d).
Accordingly, considering the claim elements individually and as an
ordered combination, we agree with the Examiner that there are no
meaningful claim limitations that represent sufficiently inventive concepts to
transform the nature of the claims into a patent-eligible application of the
abstract idea.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1, 2, 4–10, 12–18, and 20 under 35 U.S.C. § 101.
Rejection Under 35 U.S.C. § 112(a) - Enablement
To meet the enablement requirement of 35 U.S.C. § 112(a), the
disclosure, as filed, must be sufficiently complete to enable one skilled in the
art to make and use the claimed invention “without undue experimentation.”
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). “An inventor need not,
however, explain every detail since he is speaking to those skilled in the art.”
In re Howarth, 654 F.2d 103, 105 (CCPA 1981).
The Examiner rejects claims 1, 2, 4–10, 12–18, and 20 under
35 U.S.C. § 112(a) as failing to meet the enablement requirement. Final
Act. 5–8. Addressing independent claim 1, the Examiner finds that the
recited step of “obtaining real time traffic matrices containing bandwidth
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values” is not enabled because neither the claims nor the Specification is
sufficiently detailed with respect to criteria, parameters, and “how [the real
time traffic matrices] are specifically obtained, particularly with respect to
‘containing bandwidth values.’” Ans. 21, 22, 25. For example, the
Examiner finds that the Specification’s disclosure of bandwidth only
pertains to conventional traffic matrices and that the Specification does not
mention “real time traffic matrices” containing bandwidth values. Id. at 21
(citing Spec. ¶¶ 33, 48).4
Appellant argues that “[o]ne skilled in the art recognizes the traffic
matrices quantify the bandwidth values over a period of time” and that the
claimed “real time traffic matrices” are “described in detail in the
Specification.” Appeal Br. 11.
We are unpersuaded by the Examiner that one skilled in the art would
be unable to determine, without undue experimentation, how to “obtain[]
real time traffic matrices containing bandwidth values” as claimed. For
example, the Specification discloses “calculating the real time traffic matrix
(TLM) from the traffic matrix (TM),” which “contains [bandwidth] values in
Gb/s.” Spec. ¶ 48. The Specification goes on to demonstrate, using
equations and flowcharts, how one skilled in the art could obtain the real
time traffic matrix “from inputs such as the traffic matrix (TM), the daily
traffic variation vector ρ, time shift ΔT(h), and network topology.” Id. ¶ 52;
see also id. ¶¶ 50–57; Figs. 9–10. On this record, we agree with Appellant

4 The Examiner also finds that “calculating a traffic matrices based on the
traffic variations over a period of time in which the traffic is measured” is
not enabled. Final Act. 6 (emphasis added); see also Ans. 19. The claims
on appeal, however, do not recite “calculating a traffic matrices.”
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that the Specification is sufficiently detailed to enable a person skilled in the
art to “obtain[] real time traffic matrices containing bandwidth values.”
The Examiner further finds that the recited steps of “calculating a total
number of one or more of transceivers and wavelengths needed . . .
utiliz[ing] groupings of fiber trees and source nodes” and “adjusting the one
or more of the transceivers and the wavelengths between nodes” are not
enabled because “no criteria or parameters” for performing those steps are
claimed or disclosed. Final Act. 6–7; Ans. 25; see also id. at 22. Along
similar lines, the Examiner finds lack of enablement for calculating “a
minimum number of the transceivers and the wavelengths to support traffic”
as recited in dependent claims 2, 10, and 18 and adjusting “over a period” as
recited in dependent claims 8 and 16. Final Act. 7; Ans. 8.
Appellant argues that enablement under § 112(a) does not require the
claims to recite every calculation step or implementation detail, and that the
Specification describes how one skilled in the art could perform the claimed
steps “in detail, including the calculations and equations.” Appeal Br. 11–12
(citing Spec. ¶¶ 28, 47–62; Figs. 7–12).
We agree with Appellant. For example, the Specification describes
calculating the required (i.e., minimum) number of transceivers and
wavelengths to support traffic as follows:
In order to calculate the total number of transceivers required in
the filterless solution, groups of the traffic elements can be made
that belong to same fiber tree and the same source node. The
summations of each group over all the real time traffic matrices
are compared, and the maximum values are used to calculate the
total number of transceivers needed over 24 hours in the given
network. To calculate the total number of wavelengths, the
summation of the TLMs over 24 hours are compared, and the
maximum value is taken as the wavelength consumption.
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Spec. ¶ 48. The Specification provides further detail, including equations
and flowcharts, on how one skilled in the art could calculate the total
number of transceivers (id. ¶¶ 50–60; Fig. 11) and wavelengths (id. ¶¶ 50,
60–62; Fig. 12) needed.
The Specification also describes the step of “adjusting the one or more
of the transceivers and the wavelengths between nodes” using circuitry (id.
¶ 75), specifically a filterless architecture, as follows:
The filterless architecture can include a broadcast-and-
select node architecture, where one wavelength is broadcast to a
plurality of nodes through splitters and combiners, and a coherent
optical receiver which selectively receives a desired wavelength
from a plurality of available wavelengths and rejects a plurality
of undesired wavelengths without the need for a channel filter.
The filterless architecture can include passive optical
components. The adjustment can be performed over a 24-hour
period based on the traffic variations.
Id. ¶ 76; see also id. ¶¶ 25–28. According to the Specification, “[t]his
delivers lightpath reconfiguration capability in optical networks, where the
reconfigurations are performed from the edge nodes.” Id. ¶ 25. The
Specification further discloses that a processor and memory storing
instructions may be used to perform the “adjustment” step. Id. ¶ 77.
On this record, we agree with Appellant that the Specification
sufficiently enables one skilled in the art to “calculat[e] a total number of
one or more of transceivers and wavelengths needed . . . utilizing groupings
of fiber trees and source nodes” and “adjust[] the one or more of the
transceivers and the wavelengths between nodes” as claimed. Despite the
Examiner’s finding that the Specification’s enablement is not commensurate
in scope with the claims (Ans. 20, 22, 25; Final Act. 6), we determine that
the scope of enablement provided by the Specification bears a reasonable
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correlation to the scope of the claims. See In re Fisher, 427 F.2d 833, 839
(CCPA 1970) (“In cases involving predictable factors, such as mechanical or
electrical elements, a single embodiment provides broad enablement in the
sense that, once imagined, other embodiments can be made without
difficulty and their performance characteristics predicted by resort to known
scientific laws.”); see also MPEP § 2164.08. Furthermore, although the
Examiner poses various questions regarding how to perform the claimed
steps (see Final Act. 7, 11; Ans. 11–12, 21–24), the Examiner has not
provided specific technical reasons why one skilled in the art could not,
without undue experimentation, develop or ascertain any missing
information that is essential to the practicing the claimed invention. See
MPEP § 2164.04.
For the foregoing reasons, we do not sustain the Examiner’s rejection
of claims 1, 2, 4–10, 12–18, and 20 for lack of enablement under 35 U.S.C.
§ 112(a).
Rejection Under 35 U.S.C. § 112(b) - Indefiniteness
The Examiner rejects claims 1, 2, 4–10, 12–18, and 20 under
35 U.S.C. § 112(b) as being indefinite. Final Act. 8–10. Addressing
independent claim 1, the Examiner finds that the limitations “calculating a
total number of one or more transceivers and wavelengths needed in the
optical network after the period of time based on the real time traffic
matrices” and “adjusting the one or more of the transceivers and the
wavelengths between nodes in the optical network” are unclear. Final
Act. 8–9. The Examiner reasons that there are “no criteria of how to
calculate” and repeats much of the same questions regarding “how” to
perform the recited steps posed in the § 112(a) enablement rejection. Id.
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According to the Examiner, “[t]here is so much missing from the claims in
order to make clear what the applicants feel is their invention.” Id. at 10.5
Appellant argues that the claims are not required to recite every
calculation step or implementation detail in order to be definite under
§ 112(b). Appeal Br. 11–12.
We agree with Appellant. “A decision on whether a claim is invalid
under § 112, 2d ¶, requires a determination of whether those skilled in the art
would understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986). Here, we determine that the metes and bounds
of the claims are clearly set forth by the claim language when read in light of
the Specification, to those having skill in the art. We are also unpersuaded
that the questions posed by the Examiner regarding how to perform the
recited steps amount to unclear metes and bounds of claim scope. Rather,
the Examiner’s questions of “how” go to the issue of enablement, which is
discussed above.
The Examiner states that “[t]he claims do not meet the enablement
requirement if the applicant is claiming more than they have disclosed.”
Final Act. 12. However, claim breadth is not to be equated with
indefiniteness. In re Gardner, 427 F.2d 786, 788 (CCPA 1970) (“Breadth is

5 The Examiner also finds that “calculating a traffic matrices based on the
traffic variations over a period of time in which the traffic is measured” is
unclear. Final Act. 8 (emphasis added); see also Ans. 19. The claims on
appeal, however, do not recite “calculating a traffic matrices.” To the extent
that the Examiner finds the limitation “obtaining real time traffic matrices
containing bandwidth values” to be unclear, we are unpersuaded for same
reasons discussed in this section of the Decision.
Appeal 2018-007966
Application 14/975,191

18
not indefiniteness.”); see also MPEP § 2173.04 (“A broad claim is not
indefinite merely because it encompasses a wide scope of subject matter
provided the scope is clearly defined.”).
For the foregoing reasons, we do not sustain the Examiner’s rejection
of claims 1, 2, 4–10, 12–18, and 20 for indefiniteness under 35 U.S.C.
§ 112(b).
CONCLUSION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s rejection of claims 1, 2, 4–
10, 12–18, and 20 is affirmed. See 37 C.F.R. § 41.50(a)(1).
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

Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1, 2, 4–10, 12–
18, 20 101 Eligibility
1, 2, 4–10,
12–18, 20

1, 2, 4–10, 12–
18, 20 112(a) Enablement
1, 2, 4–10,
12–18, 20
1, 2, 4–10, 12–
18, 20 112(b) Indefiniteness
1, 2, 4–10,
12–18, 20
Overall
Outcome
1, 2, 4–10,
12–18, 20