Ex Parte West

Patent Trial and Appeal Board

Oct 17, 2016

13621673 (P.T.A.B. Oct. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/621,673 09/17/2012 Lamar E. West JR.
62658 7590 10/19/2016
MERCHANT & GOULD P.C.
CISCO Technology, Inc.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
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.
60374.0780USC1/966306-US. 9652
EXAMINER
LEUNG,WAILUN
ART UNIT PAPER NUMBER
2637
NOTIFICATION DATE DELIVERY MODE
10/19/2016 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):
USPT062658@merchantgould.com
PTOL-90A (Rev. 04/07)
~UNITED STATES PATENT AND TR~ADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte LAMARE. WEST JR.
Appeal2015-003045
Application 13/621,673
Technology Center 2600
Before JEAN R. HOMERE, ADAM J. PYONIN, and NABEEL U. KHAN,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 20-36, which are all pending claims. See App. Br. 3.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Introduction
Appellant's disclosure is "related to systems and methods for
transmitting combined reverse optical signals from a plurality of frequency
Appeal2015-003045
Application 13/621,673
modulated burst mode transmitters." Spec. 1 :8-9. 1 Claims 20, 28, and 33
are independent. Claim 33 is reproduced below for reference:
33. A burst mode optical transmitter, comprising:
a carrier detect circuit to check for the presence of a
subcarrier signal within a combined reverse electrical signal
comprising a plurality of reverse electrical signals provided in an
upstream direction;
a frequency modulation modulator to modulate a carrier
signal using the combined reverse electrical signal; and
a laser to provide an optical signal that is intensity
modulated by the frequency modulated carrier signal when a
subcarrier signal is detected, wherein no optical signal is
transmitted when a subcarrier signal is absent.
The Examiner s Re} ection
Claims 20-36 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hsu (US 5,005,936; Apr. 9, 1991), Kanazawa (US
6,067,177; May 23, 2000), and West (US 2002/0154371 Al; Oct. 24, 2002).
Final Act. 4.
ISSUES
Appellant's arguments present us with the following issues:
A. Did the Examiner err in rejecting independent claim 33, because
the references do not teach or suggest "a carrier detect circuit to
check for the presence of a subcarrier signal within a combined
reverse electrical signal" and "a laser to provide an optical signal
that is intensity modulated by the frequency modulated carrier
1 Separately, we note the Specification appears to be printed using a type of
toner-saver mode, resulting a pattern of missing portions within each font.
See 37 C.F.R. 1.52(a)(l)(iv) and 37 C.F.R. 1.52(a)(l)(v).
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Application 13/621,673
signal when a subcarrier signal is detected," (hereinafter, the
"carrier detect circuit" and "laser" limitations) as claimed?
B. Did the Examiner err in rejecting the independent claims, because
the claims provide advantages not realized by the art of record,
which weigh in favor of a finding of non-obviousness?
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments. We do not find the Examiner erred; rather, we adopt the
Examiner's findings and conclusions (see Final Act. 2-12; Ans. 11-18) as
our own, and we add the following primarily for emphasis.
A. Carrier Detect Circuit and Laser Limitations
Appellant argues the Examiner erred in rejecting independent claim
33, because the cited references do not teach or suggest the claimed carrier
detect circuit and laser limitations. See App. Br. 6-13. Particularly,
Appellant contends that none of the art of record teaches or suggests "the
claimed functional interrelationship between the carrier detect circuit and the
laser recited in claim 33" (App. Br. 7) or "any structure or function that can
detect a subcarrier signal, consistent with the carrier detect circuit recited in
claim 33" (App. Br. 9). Appellant provides similar arguments regarding
independent claims 20 and 28, which recite similar limitations. See App. Br.
15-17, 19.
During prosecution, we apply the broadest reasonable interpretation of
claim terms, consistent with the specification, as would be understood by
one of ordinary skill in the art. In re Am. A cad. of Sci. Tech Ctr., 367 F .3d
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1359, 1364 (Fed. Cir. 2004) (citations omitted). However, "limitations are
not to be read into the claims from the specification." In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993).
Here, Appellant's Specification, although silent regarding the recited
term "check," broadly describes '[t]he carrier detect circuit 325 detects the
presence of any subcarrier signal in the reverse electrical signals." Spec.
5:30-31. That is, Appellant's Specification does not distinguish the
subcarrier from other signals, but describes determining the presence of the
signal. See id. Accordingly, we find the Examiner reasonably construed the
claims to encompass the combination of cited references, because "in Hsu,
the sub-carrier signal is present along with a carrier signal," and therefore,
"when West's known technique of using a carrier detect circuit [is combined
with] Hsu and Kanazawa's system, when a carrier is not detected, it also
means a subcarrier is not detected, and when a carrier is detected, Hsu
suggested a sub-carrier is also present in the reverse signal." 2 Final Act. 3;
see also Final Act. 7; Ans. 12; West i-f 20; Hsu 3:65--4:7; Kanazawa 4:50-54.
We also agree with the Examiner that claim 33 requires "the presence
and absence of [a] subcarrier signal only controls the on and off of the laser,
but does not explicitly control the intensity of the modulation of the laser."
Ans. 14; see also Spec. 5:35---6:1 ("when a subcarrier signal is detected, the
carrier detect circuit 325 turns the laser 330 on so that it can be intensity
modulated with the frequency modulated carrier signal. When a subcarrier
signal is not detected, the laser 330 is turned off; and no optical signals are
2 Additionally, we agree with the Examiner that West teaches or suggests a
carrier detect circuit as claimed (i.e., a carrier detect circuit to check for the
presence of a subcarrier signal within a combined reverse electrical signal).
See Ans. 12 (citing West Fig. 5).
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Application 13/621,673
transmitted.") West teaches "the carrier-detect circuit 510 then controls a
switch 515 depending upon the presence of reverse signal activity" to
enable/disable a laser. West i-f 20. We find, therefore, the claim
encompasses West's optical transmitter in view of the teachings of Hsu and
Kanazawa. See Ans. 11; see also West Fig. 5.
Thus, we agree with the Examiner that "the rejected claims are
obvious to one of ordinary skill in view of the combined teachings of Hsu,
Kanazawa, and West, which yields a predictable result." Ans. 12. In
contrast, Appellant's arguments are unpersuasive of error because they
attack the references individually. "[T]he test [for obviousness] is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art," and "one cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references." In re Keller, 642 F.2d 413, 425, 426 (CCPA
1981 ).
B. Advantages
Appellant argues the Examiner erred in rejecting independent claim
33, because "the advantages of claim 33 are not realized by the art of
record," as "it would seem that in a sufficiently noisy connection, the
approach in West ... would likely detect a carrier signal continuously since
the carrier detect circuit 620, as described in West, would be unable to
distinguish between noise and a subcarrier signal." App. Br. 13, 14. We
agree with the Examiner, however, that "the features upon which applicant
relies ... are not recited in the rejected claim(s)," because claim 33 is silent
regarding signal noise. Ans. 15. Further, we note that "the problem
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Application 13/621,673
motivating the patentee may be only one of many addressed by the patent's
subject matter. The question is not whether the combination was obvious to
the patentee but whether the combination was obvious to a person with
ordinary skill in the art." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007). Appellant does not persuade us the Examiner erred in finding a
person with ordinary skill in the art would combine Hsu, Kanazawa, and
West in the manner recited by claim 33. See Final Act. 4--7. Appellant
presents similar arguments for independent claims 20 and 28, which we find
similarly unpersuasive. See App. Br. 17-20.
CONCLUSION
We sustain the Examiner's rejection of independent claims 20, 28, and
33. Appellant advances no further argument on dependent claims 21-27,
29-32, and 34--36. See App. Br. 15, 18, 20. Accordingly, we sustain the
Examiner's rejection of these claims for the same reasons discussed above.
DECISION
The Examiner's rejection of claims 20-36 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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