Paul Littlewood et al.Download PDFPatent Trials and Appeals BoardDec 11, 201914975191 - (D) (P.T.A.B. Dec. 11, 2019) 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. 14/975,191 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. Appeal 2018-007966 Application 14/975,191 2 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 Appeal 2018-007966 Application 14/975,191 3 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 Appeal 2018-007966 Application 14/975,191 4 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 Appeal 2018-007966 Application 14/975,191 5 (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. Appeal 2018-007966 Application 14/975,191 6 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 Appeal 2018-007966 Application 14/975,191 7 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 Appeal 2018-007966 Application 14/975,191 8 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). Appeal 2018-007966 Application 14/975,191 9 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, Appeal 2018-007966 Application 14/975,191 10 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. Appeal 2018-007966 Application 14/975,191 11 “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 Appeal 2018-007966 Application 14/975,191 12 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 Appeal 2018-007966 Application 14/975,191 13 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.” Appeal 2018-007966 Application 14/975,191 14 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. Appeal 2018-007966 Application 14/975,191 15 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 Appeal 2018-007966 Application 14/975,191 16 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. Appeal 2018-007966 Application 14/975,191 17 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 Copy with citationCopy as parenthetical citation