Ex Parte Cole et al

Patent Trial and Appeal Board

Jul 8, 2016

13252141 (P.T.A.B. Jul. 8, 2016)

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
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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.").
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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
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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
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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
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