Ex Parte Bernasconi et al

Patent Trial and Appeal Board

Feb 28, 2019

14594313 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/594,313 01/12/2015
46850 7590 03/04/2019
MENDELSOHN DUNLEAVY, P.C.
1500 JOHN F. KENNEDY BL VD., SUITE 312
PHILADELPHIA, PA 19102
FIRST NAMED INVENTOR
Pietro A.G. Bernasconi
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.
190031-US-DIV 7649
EXAMINER
LEE,JAIM
ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
docketing@mendelip.com
Nokia.ipr@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIETRO A. G. BERNASCONI and DAVID T. NEILSON 1
Appeal2018-000044
Application 14/594,313
Technology Center 2600
Before JEAN R. HOMERE, CAROLYN D. THOMAS, and
ERIC B. CHEN, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-6 and 9-15, all the pending claims
in the present application. Claims 7, 8, and 16-20 are canceled (see Claims
Appendix). We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
The present invention relates generally to controlling the operating
parameters of tunable lasers (see Spec., Abstract).
1Appellants name Alcatel-Lucent USA Inc. as the real party in interest
(App. Br. 2).
Appeal2018-000044
Application 14/594,313
Claim 1 is illustrative:
1. An optical method, comprising:
receiving light from a plurality of lasers, each laser lasing
at a corresponding lasing wavelength and being connected to a
different optical input port of an optical multiplexer that is periodic in
its frequency response;
multiplexing, using the optical multiplexer, the light
received from the lasers to produce an optical output signal;
measuring, using a spectral analyzer, a spectral
composition of the optical output signal over one or more wavelength
ranges, wherein each of said one or more wavelength ranges excludes
the lasing wavelengths; and
adjusting a spectral location of optical pass bands of the
optical multiplexer based on the spectral composition measured by the
spectral analyzer, said adjustment being performed by changing a
temperature of the optical multiplexer.
Appellants appeal the following double patenting rejections:
RI. Claims 1---6 and 9-13 are rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1-12 of Bernasconi U.S.
Patent No. 8,983,306 B2 (Mar. 17, 2015) (Final Act. 5-11);
R2. Claim 14 is rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1-12 of Bernasconi in view of
Precision Photonic Corporation (Advanced Design of Etalons, 2003) (Final
Act. 11-12); and
R3. Claim 15 is rejected on the ground ofnonstatutory double
patenting as being unpatentable over claims 1-12 of Bernasconi in view of
Rinaudo et al. (US 6,323,987 B 1) and Agilent (Agilent Spectrum Analysis
Basics, 2006).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
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Appeal2018-000044
Application 14/594,313
(precedential).
ANALYSIS
Issue: Did the Examiner err in finding that Appellants failed to
maintain the line of demarcation between the independent and distinct
inventions identified by the Examiner's restriction requirement?
Appellants contend that the present application is a divisional of U.S.
Patent Application No. 13/294,410 (US 8,983,306, issued Mar. 17, 2015)
(App. Br. 5), because Application No. 13/294,410 was subject to a
restriction requirement dated May 10, 2013 (id.). As such, Appellants
contend that "[u]nder these facts, 35 U.S.C. 121 and MPEP 804.01 clearly
and unequivocally immunize the present divisional application against
nonstatutory double patenting rejections in which U.S. Patent No. 8,983,306
is used as a reference" (id.).
Appellants further contend that "claims 1-6 and 9-15 of the present
divisional application are the direct result of the restriction requirement"
(App. Br. 6). Appellants further contend that "[d]uring prosecution ... the
Appellant[ s] introduced amendments that significantly narrowed original
claim 16 ... [and] [ t ]he preliminary amendment filed in the present
divisional application similarly narrowed original claim 1" (App. Br. 7).
Therefore, Appellants conclude that if original claim 16 was distinct from
original claim 1, and both claims were similarly narrowed by amendment,
then amended claims 16 and 1 remain to be distinct from each other, i.e.,
"the narrowed Inventions I and II are also distinct from each other" (id.).
We disagree with Appellants.
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Appeal2018-000044
Application 14/594,313
While Appellants' argument is generally true under 35 U.S.C. § 121,
the MPEP and relevant case law require that "consonance" exist between the
scope of the claims at issue in the instant case and the claims subject to the
prior restriction requirement.
Generally, a patent issuing on an application with respect to which a
requirement for restriction under this section has been made, or on an
application filed as a result of such a requirement, shall not be used as a
reference either in the Patent and Trademark Office or in the courts against a
divisional application or against the original application or any patent issued
on either of them, if the divisional application is filed before the issuance of
the patent on the other application. 35 U.S.C. § 121.
Specifically, a divisional patent application resulting from an
Examiner-imposed restriction requirement cannot later be rejected on the
grounds of nonstatutory obviousness-type double-patenting in light of the
parent application pursuant to the safe harbor provisions of 35 U.S.C.
§ 121. However, with regard to double patenting, § 121 will not apply to
remove the parent as a reference where the principle of consonance is
violated:
Consonance requires that the line of demarcation between the
"independent and distinct inventions" that prompted the restriction
requirement be maintained. Though the claims may be amended, they
must not be so amended as to bring them back over the line imposed
in the restriction requirement. Where that line is crossed the
prohibition of the third sentence of Section 121 does not apply.
Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 1579 (Fed. Cir.
1991); see also Gerber Garment Technology Inc. v. Lectra Systems Inc., 916
F.2d 683, 688 (Fed. Cir. 1990).
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Appeal2018-000044
Application 14/594,313
With these principles in mind, the Examiner admits that a "restriction
requirement was sent out on 5/10/13 based on the parent application No.
13/294,41 O" (see Ans. 13). However, the Examiner finds, and we agree, that
"the Appellant[s], in [their] amendments subsequently filed, added the
limitations from the non-elected claims into the elected claims[,] [and] [b ]y
doing so, [Appellants] combined the two distinct inventions into one" (Ans.
15). Therefore, the Examiner concludes that "the limitations of the restricted
claim 1 is variably incorporated into the allowed claim 16" (id. at 17), and
"[a]s a result, Appellant[s] failed to maintain the line of demarcation
between the independent and distinct inventions identified by the [E]xaminer
in the requirement for restriction" (id.).
Specifically, the Examiner sufficiently illustrates loss of consonance
between original claim 16 and amended claim 16 - invention II (similarly
original claim 1 and divisional claim 1 - invention I) in the charts
represented in the Answer (see Ans. 14--19). For example, amended claim
16 was amended by incorporating limitations from non-elected claim 1, i.e.,
"measure a spectral composition of the optical output signal over one or
more wavelength ranges ... adjust a spectral location of optical pass bands
... "(see Ans. 15-17)(emphasis added). As a result, the line of demarcation
between the "independent and distinct inventions" that prompted the
restriction requirement was not maintained between invention I and
invention II. Specifically, invention II can no longer be practiced without
measuring spectral intensities and measuring the output over one or more
wavelength ranges, i.e., the Examiner's reason for making the restriction
requirement (see Ans. 15).
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Appeal2018-000044
Application 14/594,313
Similarly, divisional claim 1 (invention I) now incorporates a
temperature feature that was only previously shown in invention II, e.g.,
changing a temperature of the optical multiplexer (see claim 1 ). As such,
invention I can no longer be practiced without some type of temperature-
control unit being coupled to the optical multiplexer, i.e., the Examiner's
reason for making the restriction requirement (see Ans. 15).
Although we agree with Appellants that the claims in invention I and
invention II were similarly narrowed by amendment (see App. Br. 7), it is
this precise step of making the claims look "similar" that obliterated the line
of demarcation between invention I and invention II. Though the claims
may be amended, they must not be so amended as to bring them back over
the line imposed in the restriction requirement. Here, we agree with the
Examiner that Appellants crossed the line imposed in the restriction
requirement. As such, we find that Appellants are not entitled to the safe
harbor provisions of 35 U.S.C. § 121.
Because each of the double-patenting rejections rely upon the same
patent (Bernasconi U.S. Patent No. 8,983,306 B2), and the issues of
applicability of this patent in the double patenting rejections are the same,
we have considered these rejections Rl-R3 together. Based on the
foregoing, we determine that Appellants have not identified any error
relevant to the safe harbor provision and therefore, we affirm all of the
double patenting rejections.
DECISION
We affirm the Examiner's double patenting rejections Rl-R3.
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Appeal2018-000044
Application 14/594,313
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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