Ex Parte Cole et alDownload PDFPatent Trial and Appeal BoardJul 8, 201613252141 (P.T.A.B. Jul. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/252,141 10/03/2011 97149 7590 07112/2016 Maschoff Brennan 1389 Center Drive, Suite 300 Park City, UT 84098 FIRST NAMED INVENTOR Christopher R. Cole 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 ATTORNEY DOCKET NO. CONFIRMATION NO. Fl002.10197US03 1030 EXAMINER LIU,LI ART UNIT PAPER NUMBER 2636 NOTIFICATION DATE DELIVERY MODE 07/12/2016 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): docket@mabr.com info@mabr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER R. COLE, LEWIS B. ARONSON, and DARIN JAMES DOUMA Appeal2014-006812 Application 13/252,141 Technology Center 2600 Before JOHNNY A. KUMAR, TERRENCE W. McMILLIN, and MONICA S. ULLAGADDI, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARil...JG Appellants filed a Request for Rehearing ("Request") under 37 C.F.R. § 41.52(a)(l) requesting that we reconsider our Decision of April 6, 2016, wherein we affirm the Examiner's rejection of claims 1---6 and 9-20 under 35 U.S.C. § 103. We have reconsidered our Decision, in light of Appellants' arguments in the Request, and find that Appellants have not identified any points misapprehended or overlooked by the Board in our Decision therein. We, therefore, decline to change or modify our prior Decision for the reasons discussed infra. Appeal2014-006812 Application 13/252,141 In the Request ( 1--4 ), Appellants present the following related contentions why Fee may not be combined with Jayakumar to teach independent claims 1, 9, and 16: 1. [N]ot only does Jayakumar teach away generally from the technology disclosed in Fee, ... [but] Jayakumar also expressly disparages Fee as a reference by expressly making reference to its patent number. Request 3 (emphasis omitted). [T] here can be no clearer case of "teaching away" between first and second references than where the first reference expressly cites to the second reference and then disparages the teachings of the second reference. Id. at 4. 2. According to MPEP § 2141.02(VI), "A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721F.2d1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)." Accordingly, where a first prior art references expressly teaches away from a second prior art reference, the second prior art reference is not available for combination with the first prior art reference for purposes of an obviousness rejection. Id. at 3 (emphasis omitted). ANALYSIS I. Regarding contention (1 ), the Examiner found and we agreed that Fee teaches the "same status data" limitation, and that Jayakumar does not teach away from a combination with Fee to meet this limitation (Decision 6). Appellants contend that we have overlooked that Jayakumar expressly teaches away from redundantly sending comprehensive operational 2 Appeal2014-006812 Application 13/252,141 information on multiple channels (App. Br. 15) and emphasize the following point: Jayakumar also expressly disparages Fee as a reference by expressly making reference to its patent number (US 5,995,256) and by giving at least three separate reasons why the technology disclosed in Fee "is not widely used or implemented." Request 3 (emphasis omitted). In particular, Appellants contend: [a.] the sub-carrier modulated transmission method described by Fee et al. in U.S. Pat. Nos. 5,995,256 and 6, 108, 113 suffers from poor Signal to Noise Ratio (SNR) of the sub-carrier signal when recovered by the sub-carrier receiver. [b.] Unfortunately, this scheme does not work for single wavelength systems and it requires costly, multiple receivers and optical signal taps for extracting the sub-carrier signal. [ c.] In addition, only one sub-carrier channel is available in a multi-wavelength system and this does not allow for irzdividual clzarzrzel corztrol arzd rrzarzagerrzerzt irz suclz systerrzs. Request 3 (paragraphing added) (quoting Jayakumar i-f 23). We disagree. The Examiner's rejection is not based upon a bodily incorporation of Fee's method and apparatus into Jayakumar's method and device. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." (citations omitted)); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures."). 3 Appeal2014-006812 Application 13/252,141 As to Appellant's contentions (a) and (b), the purported poor SNR ratio of the sub-carrier signal upon recovery by the receiver arises from the optical signal taps needed for separation and extraction of the sub-carrier control signal from the different wavelength channels (see Jayakumar i-f 23). Jayakumar however, overcomes this problem by not using optical signal taps to separate the control signals because they do not need to be summed and recombined. Therefore, no SNR loss would have taken place by providing the redundancy on the existing control channels of Jayakumar resulting from a combination with Fee. As to Appellants' contention ( c ), J ayakumar overcomes the problem of individual channel control and management by sending wavelength- specific control over each channel as noted by Appellants (Br. 12-13). The Examiner has relied upon Fee's teaching of promoting the transmission of the same status data over multiple channels. The Examiner has pointed out that Jayakumar does not suggest that the management data transmitted in the status control link be completely different for each channel. (Ans. 24). Jayakumar teaches redundancy in addition to wavelength-specific control data and is thus compatible with Fee (Ans. 23-24). Moreover, the above- cited claim limitation does not require that only the same status data be transmitted in the status link modulation signal as Fee teaches, but may also comprise adding on wavelength-specific data as would have resulted from the proposed combination of Jayakumar and Fee. See, e.g., In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) ("A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use."). Although Jayakumar has described aspects of Fee's invention in some ways as inferior for the 4 Appeal2014-006812 Application 13/252,141 problems recited supra, Jayakumar may adopt some of the suggestions of Fee in its improvement over the apparatus and method of Fee. The Examiner has provided a reasonable rationale as to how such a combination would improve the method and system of Jayakumar, stating "a reliable, redundant and fault tolerant control and management communication channel for the entire network is obtained, and safety can be enhanced." (Final Act. 10; Ans. 27) Therefore, we find Appellants' first contention that J ayakumar expressly teaches away from a combination with Fee to be unpersuasive by the preponderance of the evidence, and we agree with the Examiner that such a combination is plausible for reasons of improvement over the prior art. II. Regarding contention (2); we agree with the Examiner that the teachings of Fee as a whole would entail acknowledging that a redundancy across a multi-channel network would have been considered beneficial. ("the control and management information can be for the entire communications network, not just 'only the wavelength on which the WSC is transmitted"'). Ans. 24. See W.L. Gore & Assoc., 721 F.2d at 1550 (a prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention). "[O]bviousness must be determined in light of all the facts, and there is no rule that a single reference that teaches away will mandate a finding of nonobviousness. Likewise, a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate 5 Appeal2014-006812 Application 13/252,141 motivation to combine." Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (emphasis added); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (if a prior art reference discloses a different solution to a similar problem, it does not teach away from the claimed subject matter unless the prior art reference also criticizes, discredits, or otherwise discourages the solution claimed). In this case, it is the use of an optical tap that may have been discouraged, but not the teaching of having redundant data on each channel. CONCLUSION We have considered all arguments raised by Appellants in the Request, but Appellants have not persuaded us that we misapprehended or overlooked any points in rendering our Decision. DECISION We have granted Appellants' Request to the extent that we have reconsidered our Decision, but we deny the Request with respect to making any changes therein. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). REHEARING DENIED 6 Copy with citationCopy as parenthetical citation