Rohde, Harald et al.

Patent Trials and Appeals Board

Apr 30, 2020

13049287 - (D) (P.T.A.B. Apr. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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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):
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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.
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Application 13/049,287

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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).
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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.
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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
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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
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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
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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
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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.
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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