Ex Parte an

Board of Patent Appeals and Interferences

Jan 12, 2009

10150852 (B.P.A.I. Jan. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FU-TAI AN
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Appeal 2008-4694
Application 10/150,852
Technology Center 2600
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Decided: January 12, 2009
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Before MAHSHID D. SAADAT, ROBERT E. NAPPI
and CARLA M. KRIVAK, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-4, 6-8, 10-15, 17-19, 21, and 22. Claims 5, 9, 16, and 20 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
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Application 10/150,852

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Appellant’s claimed invention relates to communication systems
using phase encoding and optical filtering in transmissions over optical
fibers.
Claim 1 is illustrative of the invention and reads as follows:
1. A communication method comprising:

receiving user data and a first optical signal;

phase encoding the user data to form an encoded signal
representing the user data;

modulating the first optical signal with the encoded signal to
form a second optical signal representing the user data, wherein the
second optical signal comprises an optical double sideband signal;

transferring the second optical signal through an optical
circulator to an ultra-violet light carved grating;

filtering the second optical signal in the optical domain via the
ultra-violet light carved grating to form an optical single sideband
signal representing the user data; and

transmitting the optical single sideband signal representing the
user data via the optical circulator.

The Examiner relies on the following prior art references to show
unpatentability:
Livingston US 4,623,886 Nov. 18, 1986
Huddleston US 5,099,348 Mar. 24, 1992
Henmi US 5,227,908 Jul. 13, 1993
Mihailov US 5,706,375 Jan. 6, 1998
Cornelius US 6,490,080 B2 Dec. 3, 2002
(filed Dec. 22, 2000)

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Application 10/150,852

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Claims 1, 2, 4, 6-8, 10-13, 15, 17-19, 21, and 22 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Henmi, Livingston,
Cornelius, and Mihailov.
Claims 3 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Henmi, Livingston, Cornelius, and Mihailov, and further
in view of Huddleston.
We make reference to the Briefs and Answer for the respective
details. Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant did not make in the
Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103. Appellant does not dispute the
Examiner’s reading of the claimed features on the prior art teachings,
Appellant merely focuses on whether the bandpass filtering function
performed by the grating of Cornelius produces an optical single sideband
signal from an optical double sideband signal (App. Br. 6-8). Appellant
further challenges the combination of Henmi and Cornelius as obvious to
one of ordinary skill in the art (App. Br. 8-9).
Therefore, the issue turns on whether there is a legally sufficient
justification for combining the disclosures of Henmi and Cornelius and if so,
whether the combination of the applied references teaches the claimed
subject matter.

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Application 10/150,852

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FINDINGS OF FACT
Henmi
1. Henmi discloses transmitting a single side-band light
component and a carrier light component to a transmission path such as an
optical fiber (col. 4, ll. 37-40).
2. As shown in Figure 1, in a transmission side 100, an out put
light of laser 101 is modulated by modulator 105 receiving an input signal
from terminal 103. The modulated light is passed through an optical filter
107, which suppresses the one side-band signal component (col. 5, ll. 6-16).
Cornelius
3. Cornelius relates to an optical signal converter, which as shown
in Figure 3, includes an optical filter 25 to minimize the effect of noise (col.
4, l. 66 through col. 5, l. 10; col. 12, ll. 9-13)
4. The optical filter 25 is disclosed to be constructed from, for
example, thin film dielectric filters, a combination of a fiber Bragg grating
and/or optical power splitter, or a combination of a fiber Bragg grating with
an optical circulator to act as a band pass filter (col. 5, ll. 11-15).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
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Application 10/150,852

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presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore,
‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, 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., 127 S. Ct. 1727, 1741 (2007)(quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of claims
1, 2, 4, 6-8, 10-13, 15, 17-19, 21, and 22 over Henmi, Livingston, Cornelius,
and Mihailov, Appellant asserts that the Examiner has failed to set forth a
prima facie case of obviousness since the bandpass filtering function
performed by the grating of Cornelius does not produce an optical single
sideband signal from an optical double sideband signal and cannot be used
as the optical filter of Henmi (Br. 6-8; Reply Br. 2-3). Appellant further
argues that no proper motivation for the proposed combination of references
has been established (App. Br. 8-9). After reviewing the arguments of
record from Appellant and the Examiner, we are in general agreement with
Appellant’s position as stated in the Briefs.
The Examiner proposes to use an optical band pass filter from one of
the known filters such as the one suggested by Cornelius (Ans. 8). The
Examiner further asserts that the band pass filter constructed from a
combination of fiber Bragg grating with optical circulator has the well-
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Application 10/150,852

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known benefit of a passing band with sharp edges (Ans. 9). We find that
Cornelius, at best, provides an optical filter made of a combination of fiber
Bragg grating with optical circulator and has little relevance to filtering an
optical double sideband signal in the optical domain via the ultra-violet light
carved grating to form an optical single sideband signal (FF 4), as recited in
claims 1 and 12. The filter of Cornelius is, in fact, used to minimize noise
(FF 3) which is different from the optical filter 107 employed by Henmi for
suppressing the one side-band signal component (FF 1-2). As such, the
Examiner has not provided any convincing rationale as to why the skilled
artisan would look to the fiber Bragg grating with optical circulator of
Cornelius to suppress the one side-band signal component in Henmi.
For example, while the Examiner suggests that the well known filter
of Cornelius has the benefit of “pass band with sharp-edges” (Ans. 9), we
find no evidence in the disclosure of Cornelius that indicates that its filter is
able to suppress one side-band signal components or have any connection to
optical single or double sideband signals. Given the above discussed
deficiencies in the applied prior art and consistent with the holding in KSR,
we fail to see how and in what manner the filter of Cornelius might have
been employed to arrive at the method steps set forth in each of the appealed
independent claims 1 and 12. In our view, given the absence of any
connection between the two filters disclosed in Henmi and Cornelius, and
the differing purposes they serve, such as suppressing one side-band signal
component vs. minimizing noise, any attempt to combine these references in
the manner proposed by the Examiner could only come from Appellant’s
own disclosure using hindsight reconstruction.
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Application 10/150,852

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With respect to the Huddleston reference, applied by the Examiner to
address the Manchester encoding of the user data, as recited in claims 3 and
14, we find nothing in the reference that overcomes the deficiencies of
Henmi and Cornelius discussed above.
In view of the above discussion, since we are of the opinion that the
proposed combination of references set forth by the Examiner does not
support the obviousness rejection, we do not sustain the rejection of
independent claims 1 and 12, nor of claims 2-4, 6-8, 10, 11, 13-15, 17-19,
21, and 22, dependent thereon.

CONCLUSION
On the record before us, we find that the Examiner fails to make a
prima facie case of obviousness with respect to independent claims 1 and 12.
Therefore, in view of our analysis above, the 35 U.S.C. § 103 rejection of
claims 1-4, 6-8, 10-15, 17-19, 21, and 22 cannot be sustained.

DECISION
The decision of the Examiner rejecting claims 1-4, 6-8, 10-15, 17-19,
21, and 22 is reversed.

REVERSED

KIS

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