Ex Parte Okuno et al

Board of Patent Appeals and Interferences

Jul 26, 2012

09781564 (B.P.A.I. Jul. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TOSHIAKI OKUNO and MASAYUKI NISHIMURA
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Appeal 2010-003648
Application 09/781,564
Technology Center 2600
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Before DEBRA K. STEPHENS, KRISTEN L. DROESCH, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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STATEMENT OF THE CASE 1
The Invention
The present invention relates to a wavelength division
multiplexing optical transmission system, having an optical
amplifier, for transmitting multiple-wavelength signal light.
Spec. p. 1, ll. 6-9, “Field of the Invention”.
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows
(emphasis added to contested limitation):
1. An optical transmission system comprising:
an optical transmission line through which a plurality of
signal light components having wavelengths different from
each other included in a predetermined wavelength band are
transmitted;
an optical amplifier, installed on said optical transmission
line, having a wavelength-dependent noise figure; and
a plurality of multiplexing stations each constituted by a
signal multiplexing section installed on said optical
transmission line connected to an input end side of said optical
amplifier, and at least one signal light outputting means for
outputting a signal light component multiplexed at said signal
multiplexing section;
wherein, between two of said multiplexing stations
adjacent each other, said signal light outputting means of said
multiplexing station disposed upstream in a signal light
propagating direction outputs a signal light component
having a signal wavelength set so as to yield a noise figure

1 Throughout this Decision, we refer to the Appeal Brief (App. Br.) filed
Jan. 29, 2007; the originally-filed Specification (Spec.); the Non-Final
Office Action (NFOA) mailed Sep. 3, 2004; and the Examiner’s Answer
(Ans.) mailed June 19, 2007.
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lower than that of the signal wavelength of a signal light
component outputted from said signal light outputting means
of said multiplexing station disposed downstream.
Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mitsuda 5,563,733 Oct. 8, 1996
Ogoshi 6,028,698 Feb. 22, 2000
Shimomura 6,404,525 June 11, 2002 (filed Jul. 28, 1998)
Rejections on Appeal
1. The Examiner has rejected claims 1, 3, 4, 6, 8, 9, 11, 13, 14 and
16-18 under 35 U.S.C § 103(a) as being unpatentable over Mitsuda in view
of Ogoshi. (Ans. 3-7; NFOA 2-6; and App. Br. 7).
2. The Examiner has rejected dependent claims 2, 5, 7, 10, 12 and
15 under 35 U.S.C § 103(a) as being unpatentable over Mitsuda and Ogoshi
in view of Shimomura. (Ans. 7-8; NFOA 6-7; and App. Br. 7).
PRINCIPLES OF LAW
When it is necessary to select elements of various teachings in order
to form the claimed invention, we ascertain whether there is any suggestion
or motivation in the prior art to make the selection made by applicant.
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cir. 1985).
In KSR, the Court held the following:
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Application 09/781,564

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Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known
to the design community or present in the marketplace; and
the background knowledge possessed by a person having
ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue. To
facilitate review, this analysis should be made explicit. See
In re Kahn, 441 F. 3d 977, 988 (C.A. Fed. 2006)
(“[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”). As our
precedents make clear, however, the analysis need not seek
out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill
in the art would employ.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
ISSUE
35 U.S.C § 103(a): Claims 1-18
Appellants contend that the Examiner has erred by improperly
construing the teachings of the Mitsuda reference, i.e., “in view of the clear
difference between the optical fiber amplifier of the primary reference,
Mitsuda, and the optical transmission system of the present claimed
invention, the rejection is not sustainable.” (App. Br 9).
Further, Appellants contend that Mitsuda’s “WDM couplers 21 to 23
are all used for coupling the signals with the pump light. Mitsuda does not
disclose or suggest the multiplexing of signals 51 and 53.” (App. Br. 9-10)
(emphasis omitted).
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In addition, Appellants contend that “with Mitsuda's optical amplifier,
the noise figure of the amplifier is directly adjusted. Mitsuda clearly states
that as to this amplifier ‘…noise can be minimized by exciting the signal by
the 0.98 µm pump light at an output section of the optical fiber amplifier.’
See col. 7 of Mitsuda, lines 60 through 66. . . . [T]he noise figure of the
amplifier disclosed by Mitsuda is directly adjusted within the amplifier itself
as apparent from a reading of column 7 of Mitsuda, lines 20 through column
8, line 4.” (App. Br. 10).
Appellants also contend that “in the optical transmission system of the
present invention, the noise figure of the amplifier itself is not adjusted, and
fluctuations in S/N ratio are reduced according to the correlation between the
wavelength dependency of the noise figure and the transmission length, as
described in the written description of the specification. Such an optical
transmission system and optical transmission method are neither disclosed
nor suggested by the applied art.” (App. Br. 10) (emphasis omitted).
Issue: Did the Examiner err in finding that Ogoshi in combination
with Mitsuda teaches or suggests the limitation “wherein, between two of
said multiplexing stations adjacent each other, said signal light outputting
means of said multiplexing station disposed upstream in a signal light
propagating direction outputs a signal light component having a signal
wavelength set so as to yield a noise figure lower than that of the signal
wavelength of a signal light component outputted from said signal light
outputting means of said multiplexing station disposed downstream”?
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with the Examiner’s
conclusions that Ogoshi’s teaching cited in the Answer (Ans. 4) meets the
claim limitation at issue.
We find that the Examiner has not made a prima facie case for
unpatentability by failing to identify where the art of record teaches or
suggests the physical arrangement of upstream/downstream multiplexing
stations relative to signal wavelengths set so as to yield an upstream noise
figure lower than that of the signal wavelength outputted from a
multiplexing station disposed downstream, as variously recited in the claims
on appeal.
We are not persuaded that neither Mitsuda’s nor Ogoshi’s processes,
even in light of the Examiner’s observation that “because the overall noise
figure of the optical fiber amplifier is dominated by the noise figure of the
front stage and a low noise figure at the input is advantageous to help
maintaining its output optical power” (Ans. 5), teaches the limitation at
issue, or even generally accounts for the location of multiplexing stations for
different wavelengths based upon the noise figure versus wavelength
characteristics of the optical amplifier and the transmission lengths between
the multiplexing stations and the optical amplifier.
Having found at least one error by the Examiner in analyzing the art
of record and construing the claims, we need not reach a conclusion on the
merits of other contentions made by Appellants.
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Accordingly, we do not sustain the Examiner’s rejection of claims 1,
3, 4, 6, 8, 9, 11, 13, 14 and 16-18.
Also, with respect to the rejection of claims 2, 5, 7, 10, 12, and 15,
and as applied by the Examiner (Ans. 7), Shimomura does not remedy the
deficiencies of Mitsuda and Ogoshi discussed above with respect to the
rejection of independent claim 1. Accordingly, for the same reasons as
claim 1, we do not sustain the rejection of claims 2, 5, 7, 10, 12, and 15.
DECISION
1. The decision of the Examiner to reject claims 1, 3, 4, 6, 8, 9, 11,
13, 14 and 16-18 under 35 U.S.C § 103(a) as being unpatentable over
Mitsuda in view of Ogoshi is reversed.
2. The decision of the Examiner to reject claims 2, 5, 7, 10, 12 and
15 under 35 U.S.C § 103(a) as being unpatentable over Mitsuda and Ogoshi
in view of Shimomura is reversed.
REVERSED

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