12645409 (P.T.A.B. May. 9, 2016)

Ex Parte Bagheri et al

Patent Trial and Appeal BoardMay 9, 2016

12645409 (P.T.A.B. May. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/645,409 12/22/2009 126453 7590 05/11/2016 International Business Machines Corporation - IT Rich Lau - IPLaw Department 2455 South Road, B/008-2 Poughkeepsie, NY 12601 Harry H. Bagheri 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. POU920090105US1 8189 EXAMINER HELLNER, MARK ART UNIT PAPER NUMBER 3645 NOTIFICATION DATE DELIVERY MODE 05/11/2016 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): poiplaw2@us.ibm.com ituchman@tuchmanlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HARRY H. BAGHERI and CASIMER M. DECUSATIS Appeal2014-004715 Application 12/645,409 Technology Center 3600 Before JENNIFER D. BAHR, LINDA E. HORNER, and BRANDON J. WARNER, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Harry H. Bagheri and Casimer M. DeCusatis (Appellants) seek our review under 35 U.S.C. Â§ 134 of the Examiner's decision rejecting claims 1- 8 and 10-20, which are all of the pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. Appeal2014-004715 Application 12/645,409 CLAIMED SUBJECT MATTER Appellants' claimed subject matter "relates to the field of optical communications." Spec., para. 1. Of those claims before us on appeal, claims 1, 12, and 16 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A system comprising: a semiconductor laser diode; an optical amplifier to receive an optical signal from the semiconductor laser diode, and the optical amplifier is configured to spectrally filter the optical signal; and a linear transceiver to output an electrical signal linearly proportional to the optical signal. Appeal Br. 11 (Claims App.). REJECTION Appellants appeal from the Final Action, dated May 17, 2013, in which the Examiner rejected claims 1-8 and 10-20 under 35 U.S.C. Â§ 103(a) as unpatentable over Atkins (US 2008/0094693 Al, published April 24, 2008) and Baumgartner (US 2004/0022306 Al, published February 5, 2004). ANALYSIS Independent claims 1 and 12 recite a system including "a linear transceiver to output an electrical signal linearly proportional to the optical signal." Appeal Br. 11, 13 (Claims App.). Independent claim 16 recites a method comprising "outputting an electrical signal linearly proportional to the optical signal with a linear transceiver." Id. at 14. As to claims 1, 12, and 16, the Examiner found that Atkins discloses "[a] system comprising: a 2 Appeal2014-004715 Application 12/645,409 semiconductor laser diode [102 in figures 1 and 2]; and an optical amplifier to receive an optical signal from the semiconductor laser diode [202 in figures 1 and 2], and the optical amplifier is configured to spectrally filter the optical signal [see abstract]." Final Act. 2 (addressing claim 1); id. at 3 (addressing claims 12 and 16) (bracketing in original). The Examiner acknowledged that Atkins does not disclose "a linear transceiver to output an electrical signal linearly proportional to the optical signal," but noted that Atkins does disclose outputting a signal to a communications system fiber. Id. at 2 (citing Atkins, Fig. 2). The Examiner found that Baumgartner discloses "a transceiver (105A) with means (301 and 302) to output an electrical signal in linear proportion to the optical signal" and determined that it would have been obvious to combine Baumgartner' s optical transceiver to detect the signal output from Atkins's system. Id. Appellants argue that a person having ordinary skill in the art would not have combined the teachings of Atkins and Baumgartner to render obvious the claimed invention. Appeal Br. 6-8. In particular, Appellants contend that the Examiner's proposed combination is based on impermissible hindsight reasoning using "knowledge gleaned only from the Appellants' disclosure." Id. at 7. For the reasons that follow, we agree with Appellants that the Examiner failed to provide adequate reasoning based on rational underpinnings for combining the optical transmitter system of Atkins with the transceiver of Baumgartner. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). 3 Appeal2014-004715 Application 12/645,409 To support the conclusion of obviousness, the Examiner relied on Atkins's teaching of an output optical signal sent to a communications system fiber. See Final Act. 2 (citing Atkins, Fig. 2). Specifically, Atkins discloses an optical transmitter system comprising laser diode 102 and optical amplifier 202 that reshapes the optical output of the laser for transmission through multimode fiber 200. Atkins, para. 23, Fig. 2. According to the Examiner, "it would have been obvious to have coupled known optical transceivers to detect the signal [output of Atkins], thus leading to Baumgartner which disclosed a transceiver (105A) with means (301 and 302) to output an electrical signal in linear proportion to the optical signal." 1 Final Act. 2. However, the Examiner failed to provide an apparent reason why a person having ordinary skill in the art would have been led to combine the teachings as proposed. For instance, the Examiner does not explain why one having ordinary skill in the art would have a need to output Atkins's optical signal as a linearly proportional electrical signal. The Examiner's reasoning appears to rest solely on the fact that the claim elements were separately known in the art at the time of the invention. In the Answer, the Examiner further explains that "it would have been logical for a person versed in the art of optical communication to have been cognizant of transceiver technology applicable to optical communications at the time of the present application." Ans. 8. However, to the extent that a 1 Baumgartner discloses a serializer/transceiver interface in which photodiode 301 of transceiver 105A receives and converts optical communications signals into electrical signals. Baumgartner, paras. 38-39, 48. 4 Appeal2014-004715 Application 12/645,409 person having ordinary skill in the art of optical communications may have been aware of Baumgartner' s transceiver technology at the time of the invention, the Examiner does not provide any reason why a person having ordinary skill in the art would have been led to combine such transceiver technology with the optical transmitter system of Atkins. As such, we find that the Examiner has failed to articulate adequate reasoning based on rational underpinnings to support the proposed combination of Atkins and Baumgartner. For these reasons, we do not sustain the Examiner's rejection of claims 1-8 and 10-20 under 35 U.S.C. Â§ 103(a). DECISION The decision of the Examiner to reject claims 1-8 and 10-20 is REVERSED. REVERSED 5