Rohde, Harald et al.Download PDFPatent Trials and Appeals BoardApr 30, 202013049287 - (D) (P.T.A.B. Apr. 30, 2020) 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. 13/049,287 03/16/2011 Harald Rohde XNQ-154RCE2 1394 959 7590 04/30/2020 NELSON MULLINS RILEY & SCARBOROUGH LLP FLOOR 30, SUITE 3000 ONE POST OFFICE SQUARE BOSTON, MA 02109 EXAMINER JORDAN, ANDREW ART UNIT PAPER NUMBER 2883 NOTIFICATION DATE DELIVERY MODE 04/30/2020 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): ipboston.docketing@nelsonmullins.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HARALD ROHDE and ERICH GOTTWALD Appeal 2019-001255 Application 13/049,287 Technology Center 2800 ____________ Before DONNA M. PRAISS, N. WHITNEY WILSON, and BRIAN D. RANGE, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 5, 12, and 18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In this Decision, we refer to the Specification filed Mar. 16, 2011 (“Spec.”), the Non-Final Office Action dated Mar. 3, 2017 (“Non-Final Act.”), the Appeal Brief filed Aug. 2, 2017 (“Appeal Br.”), the Examiner’s Answer dated Oct. 9, 2018 (“Ans.”), and the Reply Brief filed Nov. 28, 2018 (“Reply Br.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Xieon Networks S.a.r.l. is identified as the real party in interest. Appeal Br. 3. Appeal 2019-001255 Application 13/049,287 2 STATEMENT OF THE CASE The invention relates to an optical modulator, a combination of several optical modulators, and a method for providing optical carriers. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal (emphasis added). 1. An optical modulator, comprising: the optical modulator for receiving an optical signal as input and for conveying a portion of the optical signal to a first ranch of the optical modulator and a portion of the optical signal to a second branch of the optical modulator, wherein said first branch contains a first amplitude modulator, and a phase shifter, wherein the phase shifter shifts a phase of the portion of the optical signal in the first branch relative to the portion of the optical signal in the second branch, and wherein said second branch contains a second amplitude modulator; said optical modulator further comprising: a first driving circuit that is configured to provide a sinusoidal first signal to drive the first amplitude modulator; and a second driving circuit that is configured to provide a second signal that is phase-shifted by substantially 90 degrees relative to the sinusoidal first signal to drive the second amplitude modulator; and a combining unit having two inputs and two outputs and combining optical fields of said first branch and said second branch such that each of said outputs provides a different single optical carrier having a different predetermined frequency offset relative to a frequency of the light source. Appeal Br. 12 (Claims Appendix). Appeal 2019-001255 Application 13/049,287 3 Claim 12 is directed to a plurality of optical modulators according to claim 1 and independent claim 18 is directed to a method for providing a plurality of optical carriers based on an input signal. Id. at 12–13. ANALYSIS We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After considering the argued claims in light of the case law presented in this Appeal and each of Appellant’s arguments, we are not persuaded of reversible error in the appealed rejections. The Examiner rejects claims 1, 5, 12, and 18 as follows. Non-Final Act. 4–10. Claim(s) 35 U.S.C. § Basis/Reference(s) 1, 12, 18 103(a) Kang I,3 Kang II,4 Prosyk5 5 103(a) Kang I, Kang II, Prosyk, Kawanishi6 We separately address the rejections below. 3 US 2008/0074722 A1, published Mar. 27, 2008. 4 US 2008/0114556 A1, published May 15, 2008. 5 US 6,650,458 B1, issued Nov. 18, 2003. 6 US 2010/0014874 A1, published Jan. 21, 2010. Appeal 2019-001255 Application 13/049,287 4 Obviousness of Claims 1, 12, and 18 Appellant argues claims 1 and 12 together and relies on those same arguments in asserting the patentability of claim 18. Appeal Br. 5–10. Therefore, we confine our discussion to claim 1, which we select as representative. Claims 12 and 18 stand or fall with claim 1. 37 C.F.R. § 1.37(c)(1)(iv). Appellant contends that the Examiner erred in rejecting claims 1 and 12 because the combination of Kang I, Kang II, and Prosyk does not disclose the limitation requiring connecting the combiner to the branch outputs “such that each of said outputs provides a different single optical carrier having a different predetermined frequency offset relative to a frequency of the light source.” Appeal Br. 5. Appellant also contends the Examiner erred in relying on Kang II for teaching that the first driving circuit is configured to provide a sinusoidal first signal to drive the first amplitude modulator and that the second driving circuit is configured to provide a second signal that is phase shifted by substantially 90 degrees relative to the sinusoidal first signal to drive the second amplitude modulator because Kang II is concerned with a different problem than the claimed subject matter. Id. at 7–8. According to Appellant, Kang II at best teaches you can better capture the spectra of a pulse train if you vary the control signal of a phase shifter to four consecutive different phase offsets. Id. at 8. Appellant asserts that Prosyk does not disclose that coupler 33c in Prosyk’s Figure 2 can be considered a combining unit providing “different single unmodulated optical carriers having a different predetermined frequency offset relative to a frequency of the light source” as recited in claim 1. Id. at 9. According to Appellant, Prosyk varies combining ratios by varying the phase shifts induced by the phase shifters 33a and 33b, thus Appeal 2019-001255 Application 13/049,287 5 modifying the interference at the output ports. Id. Appellant contends that Prosyk does not disclose spatial separation of frequency components, and asserts that if Prosyk’s outputs (coupler 33c) provided a different single unmodulated optical carrier having a different predetermined frequency offset relative to a frequency of the light source, there would be no interference at the output ports of element 33, the combining ratio could not be adjusted, and variable coupler 33 would not fulfill its function. Id. at 9– 10. The Examiner responds that the fact that Kang II is concerned with a different problem does not negate that it teaches it was well known to use sinusoidal drive signals and specifically with phase shift, and that Kang is nearly identical with the claimed device. Ans. 4. The Examiner further responds that a skilled artisan would recognize the flexibility of Kang I’s device and that it could be driven with Kang II’s modulation signals to achieve a desired modulated output signal. Id. at 5. Regarding Prosyk, the Examiner responds that the reference is relied upon to teach a 2x2 coupler and Appellant does not argue Prosyk’s coupler is materially different from Appellant’s coupler, therefore it is presumed to have the same functionality. Id. at 6. Thus, when Prosyk’s coupler is used in Kang I’s device, driven as taught by Kang II, it would achieve all of the functionality of the claimed device. Id. The Examiner asserts that Appellant’s argument regarding Prosyk’s coupler 33c implies that there is a material difference, but does not identify any specific difference regarding how it would be expected to function when combined with Kang I in view of Kang II. Id. at 9. In the Reply Brief, Appellant asserts the Examiner’s finding that Kang I’s optical modulator is a very flexible device is based primarily on Appeal 2019-001255 Application 13/049,287 6 conjecture and not the reference’s teachings. Reply Br. 2. Regarding Kang II, Appellant contends that there is no teaching of configuring the driving circuits to produce the multiple output carriers as claimed. Id. Appellant maintains that the purpose of Prosyk is important because the claim requires the outputs of the combining unit being results from the actions of the combination of claimed elements. Id. at 3. Appellant also asserts there is nothing inherent in the “grocery list of items that the Examiner has cherry picked from the references.” Id. Appellant’s arguments do not persuade us that the Examiner reversibly erred in rejecting claim 1 as obvious over the cited prior art references. Appellant does not dispute the Examiner’s finding that Prosyk teaches a 2x2 coupler. Nor does Appellant establish any material difference between Prosyk’s coupler and the claimed combining unit with respect to Prosyk’s coupler being capable of coupling the two signals coming in to point 304 in Kang as modified by Kang II. Instead, Appellant distinguishes the references individually for not disclosing the claimed optical modulator when the rejection is over the combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Although Appellant asserts that the combination of references “fail[s] to teach or suggest that each of the outputs provides a different single optical carrier having a different predetermined frequency offset relative to a frequency in the light source” (Appeal Br. 9), Appellant does not direct us to any reason to support the implication that Prosyk’s coupler in Kang I’s Appeal 2019-001255 Application 13/049,287 7 system as modified by Kang II lacks this capability. Therefore, in the absence of evidence that Prosyk’s coupler lacks the capability of controllably combining Kang’s two signals, the preponderance of the evidence cited in this Appeal record supports the Examiner’s determination that it would have been within the skill of a person having ordinary skill in the art to modify Kang’s system with Kang II’s phase-shifted modulation for providing different modulations and with Prosyk’s 2x2 coupler for controlling the coupling of the two signals. Similarly, Appellant does not dispute the Examiner’s finding that Kang II discloses phase-shifted modulation of a signal, but, rather that Kang II does not disclose using such phase shifting outside of Kang II’s purpose of determining the optical phase profile of a pulse train. Appeal Br. 8; Reply Br. 2 (“[T]he references teach optical systems that use modulators for different purposes”). In a determination of obviousness, it is not necessary that Kang II’s purpose for phase-shifted modulation of a signal be the same as that of the inventors. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“Although the motivation to combine here differs from that of the applicant, the motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness.”). Moreover, as the Examiner finds, Kang I discloses that “[v]arious drive signal configurations may be employed depending on the type of modulation format, the specification of the [electro-absorption modulator], and the coupling ratio of the input and output couplers.” Ans. 3 (quoting Kang I ¶ 28). Thus, the preponderance of the evidence cited in this Appeal record supports the Examiner’s finding that Kang II discloses the use of sinusoidal drive signals with phase shift to achieve a desired modulated output light Appeal 2019-001255 Application 13/049,287 8 signal and that it would have been within the skill of a person having ordinary skill in the art to use Kang II’s drive signal configurations of the two amplitude modulators in Kang I’s system. In sum, Appellant’s arguments are not persuasive of error in the Examiner’s conclusion that it would have been obvious to modify Kang I with the drive signal configurations of Kang II and the coupler of Prosyk. Accordingly, we affirm the Examiner’s rejection of claim 1 under 35 U.S.C. § 103 over Kang I, Kang II, and Prosyk. Obviousness of Claim 5 Claim 5, which depends from claim 18, recites “wherein a phase of said first branch or a phase of said second branch is adjusted to at least partially compensate a deficient suppression of a frequency of said light source.” Appeal Br. 12 (Claims Appendix). Appellant asserts that the additional prior art reference cited by the Examiner does not cure the deficiencies argued in connection with claims 1, 12, and 18. Appeal Br. 1– 11. Because Appellant’s arguments do not persuade us that the Examiner reversibly erred in rejecting claims 1, 12, and 18 for the reasons discussed above, we likewise affirm the Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a). CONCLUSION For these reasons, we uphold the Examiner’s rejections of claims 1, 5, 12, and 18 under 35 U.S.C. § 103(a) as obvious over the cited prior art references. Appeal 2019-001255 Application 13/049,287 9 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). In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 12, 18 103(a) Kang I, Kang II, Prosyk 1, 12, 18 5 103(a) Kang I, Kang II, Prosyk, Kawanishi 5 Overall Outcome 1, 5, 12, 18 AFFIRMED Copy with citationCopy as parenthetical citation