Ex Parte BuAbbud

Board of Patent Appeals and Interferences

Oct 9, 2009

10199549 (B.P.A.I. Oct. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GEORGE BUABBUD
____________________

Appeal 2009-006945
Application 10/199,549
Technology Center 2400
____________________

Decided: October 9, 2009
____________________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY, III, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-006945
Application 10/199,549

I. STATEMENT OF CASE
Appellant appeals the Examiner’s final rejection of claims 1-29 under
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellant, the invention relates to a “communication
system for transmitting video signals to a subscriber using optical fibers, for
providing bi-directional telephone services for a subscriber using optical
fibers, and for providing high-speed data services to a subscriber via a cable
modem using optical fibers” (Spec. 28, ll. 2-5).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and reproduced below:

1. A network node for communicating signals to and
from a subscriber comprising:

a signal modification device operable to receive video
programming at a first wavelength in a downstream direction
from a video programming source;

a cross-connect unit operable to provide the video
programming at a second wavelength in the downstream
direction to an optical node device, the cross-connect unit
operable to combine the video programming with bi-directional
telephone signals transported to and from the optical node
device at a third wavelength in the downstream direction and a
fourth wavelength in an upstream direction;

an optical interface unit operable to communicate the bi-
directional telephone signals to and from the cross-connect unit,
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the optical interface unit operable to communicate the bi-
directional telephone signals to and from a plain old telephone
service (POTS) system;

a cable modem transmission system (CMTS) operable to
transport cable modem (CM) signals;

a signal combining device operable to combine the cable
modem (CM) signals received from the cable modem
transmission system (CMTS) with the video programming prior
to the transportation of the video programming to the optical
node device; and

a high bandwidth bi-directional communication path
between the CMTS and a public network and between the
optical interface unit and the plain old telephone service
(POTS) system.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sutherland US 5,181,106 Jan. 19, 1993
Feldman US 6,577,414 B1 Jun. 10, 2003

Claims 1-29 stand rejected under 35 U.S .C. § 103(a) as unpatentable
over Feldman in view of Sutherland.

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II. ISSUES
1) Has Appellant shown that the Examiner erred in finding that
Feldman in view of Sutherland teaches or would have suggested “a high
bandwidth bi-directional communication path between the CMTS and a
public network” (claim 1)?
2) Has Appellant shown the Examiner erred in finding that
Feldman in view of Sutherland teaches or would have suggested “a high
bandwidth bi-directional communication path . . . between the optical
interface unit and the plain old telephone service (POTS) system” (claim 1)?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Feldman
1) Feldman discloses a network providing broadcast video and
targeted services from a local headend (110) to subscribers (180) via a hub
(126) (col. 3, l. 59 – col. 4, l. 18; Figs. 1 and 2).
2) Bi-directional signals are transmitted between the subscribers
(180) and a coarse wavelength division multiplexer (CWDM) (132, 232) of
the hub (126) (col. 4, ll. 33-43; col. 4, l. 66 – col. 5, l. 4; Figs. 1 and 2).
3) A downstream leg of the hub (126) carries signals from the
local headend (110) to the CWDM (132, 232) via a transmitter (134, 234),
amplifier (128, 235), and optical splitter (130, 231) (col. 4, ll. 28-33; Figs. 1
and 2).
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4) The downstream leg of the hub (126) also carries signals from a
cable modem termination system and associated IP router (CMTS/Router)
(140, 240) to the CWDM (132, 232) (Figs. 1 and 2).
5) An upstream leg carries signals from the CWDM (132, 232) to
the CMTS/Router (140, 240) via an optical combiner (136, 236) and receiver
(138, 238) (col. 4, ll. 39-43; Figs. 1 and 2).
6) The upstream leg also carries signals from the CMTS/Router
(140, 240) to the local headend 110 (col. 4, ll. 57-61; Figs. 1 and 2).
7) Synchronous optical networks (SONETS) (233, 218) provide a
bi-directional path for carrying the targeted service signals, including IP
telephone signals, between the local headend 110 and the hub (126) (col. 4,
ll. 19-22, 39-43, and 57-61; col. 5, ll. 25-26; Figs. 1 and 2).
8) The hub (126) combines the downstream broadcast video and
downstream targeted service (TS) signals (e.g., IP telephone) into a single
composite optical signal that is transmitted from the CWDM (132, 232) to
an Optical-Electrical converter (OEC) 150 serving the subscribers (180)
(col. 4, ll. 33-38; col. 5, ll. 25-26; Figs. 1 and 2).
9) A passive optical network (PON) (142) carries bi-directional
signals of 1.5 microns and 1.3 microns between the CWDM (132, 232) and
the OEC (150) (col. 4, ll. 47-54; Figs. 1 and 2).

IV. PRINCIPLES OF LAW
Claim Interpretation
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). “[T]he PTO gives
claims their ‘broadest reasonable interpretation.’” In re Bigio, 381 F.3d
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1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000)). “Moreover, limitations are not to be read into the claims from
the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
35 U.S.C. § 103(a)
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).
“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). “[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.” Id.
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and discussed circumstances in which a patent might be determined to
be obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417.
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“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted); see also In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA
1973) (“Combining the teachings of references does not involve an ability to
combine their specific structures.”).
A disclosure that anticipates under 35 U.S.C. § 102 also renders the
claim unpatentable under 35 US.C. § 103, for “anticipation is the epitome of
obviousness.” Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984). In
affirming a multiple reference rejection under 35 U.S.C. § 103, the Board
may rely on one reference alone in an obviousness rationale without
designating it as a new ground of rejection. In re Bush, 296 F.2d 491, 496
(CCPA 1961); In re Boyer, 363 F.2d 455, 458 n. 2 (CCPA 1966).

V. ANALYSIS
With respect to claim 1, Appellant argues that “the Feldman, et al.
patent fails to provide a bidirectional link between a CMTS and a public
network” (App. Br. 10). The Examiner appears to cite communications
between Feldman’s subscribers (180) and CMTS/Router (140, 240), carried
through the CWDM (132, 232), as teaching the bidirectional link of claim 1
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(Ans. 5 and 11).1 Accordingly, an issue we address on appeal is whether
Feldman teaches or suggests “a high bandwidth bi-directional
communication path between the CMTS and a public network” (claim 1).
We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d at 1324. Furthermore, our analysis
will not read limitations into the claims from the specification. See In re
Van Geuns, 988 F.2d at 1184.
Claim 1 simply does not place any limitation on what “high
bandwidth” means, includes, or represents. Therefore, we will not confine
the “high bandwidth bi-directional communication path” (claim 1) to a path
having a particular range of bandwidth.
As described with reference to Feldman’s Figures 1 and 2, reproduced
below, Feldman discloses a network providing broadcast video and targeted
services from a local headend (110) to subscribers (180) via a hub (126) (FF
1). Bi-directional signals are transmitted between the subscribers (180) and
a CWDM (132, 232) of the hub (126) (FF 2).
A downstream leg of the hub (126), shown as running from right to
left, carries signals from the local headend (110) to the CWDM (132, 232)
(FF 3). The downstream leg of the hub (126) also carries signals from a
CMTS/Router (140, 240) to the CWDM (132, 232) (FF 4).
An upstream leg, shown as running from left to right, carries signals
from the CWDM (132, 232) to the CMTS/Router (140, 240) (FF 5). The
upstream leg also carries signals from the CMTS/Router (140, 240) to the
local headend 110 (FF 6).

1 The Examiner incorrectly states that Sutherland discloses the
CMTS/Router (140, 240) (Ans. 11). However, he was clearly referring to
Feldman’s Figures 1 and 2.
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Feldman’s Figures 1 and 2

We find a skilled artisan would have understood Feldman’s
subscribers (180) as being part of a “public network”. Further, we find the
skilled artisan would have understood the above-described downstream and
upstream legs of the hub (126), which carry signals between Feldman’s
CMTS/router (140, 240) and subscribers (180), as providing a “high-
bandwidth bi-directional communication path”. Thus, we conclude the
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Examiner did not err in finding that Feldman teaches or suggests the “high
bandwidth bi-directional communication path between the CMTS and a
public network” (claim 1).
Appellant further argues that “the hub of the Feldman, et al. patent
provides broadband communications using IP telephony service and fails to
provide bi-directional telephone signals to and from a plain old telephone
system” (App. Br. 10). Appellant similarly argues that “[t]here is no optical
interface unit in the Feldman patent connected to a plain old telephone
system” (Id.). The Examiner finds that the “optical interface unit” of claim 1
is disclosed by Feldman’s “coupling of sonnet (233) between the hub (126)
and the local headend (110) in figure 2” (Ans. 4). Accordingly, an issue we
address on appeal is whether Feldman teaches or suggests the “high
bandwidth bi-directional communication path . . . between the optical
interface unit and the plain old telephone service (POTS) system” (claim 1).
Contrary to Appellant’s arguments, claim 1 simply does not place any
limitation on what “plain old telephone service (POTS)” means, includes, or
represents. Therefore, we will not confine the meaning of “plain old
telephone service (POTS)” to exclude any particular telephone service.
Feldman discloses SONETS (233, 218) that provide a bi-directional
path for carrying targeted service signals, including IP telephone signals,
between the local headend 110 and the hub (126) (FF 7).
We find a skilled artisan would have understood that each of
Feldman’s SONETS (233, 218) is an “optical interface unit” and that the
SONETS (233, 218) provide a “high-bandwidth bi-directional path” between
the local headend 110 and the hub. Since the SONET (233) of the hub (126)
is connected by this bi-directional path to the IP telephone service of the
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local head end (110), we conclude the Examiner did not err in finding that
Feldman teaches or suggests the “high bandwidth bi-directional
communication path . . . between the optical interface unit and the plain old
telephone service (POTS) system” (claim 1).
In addition to the above arguments, Appellant argues against the
combinability of Feldman and Sutherland by arguing that by “inserting the
loop carrier cross-connect fiber-to-the-curb system of the Sutherland patent
into the Feldman, et al. patent, the Examiner is eliminating the passive
optical network that is the backbone of the system in the Feldman, et al.
patent” (App. Br. 8). However, the Examiner is not swapping the cross-
connect-fiber-to-curb (LCX-FTC) system of Sutherland for the fiber-to-curb
components of Feldman. Rather, the Examiner has modified Feldman’s
system to merely “include a cross-connect” in view of Sutherland (Ans. 5)
and clarified that this modification does not eliminate the “backbone” of
Feldman’s system (Ans. 10). The Examiner states that “it would have been
obvious to one of ordinary skill in the art at the time of the invention was
made to modify Feldman’s reference to include a cross connect . . . because
it allows the use of splitting the bandwidth for multiuse in a household.”
(Ans. 5). Thus, in accordance with his burden, the Examiner has provided
“articulated reasoning with some rational underpinning” for the
modification. KSR, 550 U.S. at 418.
Appellant cannot rebut the prima facie case of obviousness by merely
contending (and incorrectly so) the rejection swaps Sutherland’s LCX-FTC
system for the passive optical network of Feldman’s system because the
“test for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary reference.” In
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re Keller, 642 F.2d at 425. “Rather, the test is what the combined teachings
of those references would have suggested to those of ordinary skill in the
art.” Id. Appellant has not shown that the inclusion of a cross-connect
within Feldman’s system would not have been obvious, e.g. yielded more
than predictable results or have been more than a predictable use of prior art
elements according to their established functions. KSR, 550 U.S. at 416-417.
Furthermore, the features of the recited cross-connect are disclosed by
Feldman in accordance with the Examiner’s findings. We would agree with
the Examiner’s uncontested finding that Feldman discloses a “cross connect
unit operable to provide the video programming at a second wavelength in
the downstream direction to an optical node device” (claim 1) because the
CWDM (132, 232) of the hub (126) transmits the broadcast video at a
different wavelength than which it is received by the local headend (110)
(Ans. 4). We would also agree with the Examiner’s uncontested finding that
Feldman discloses “the cross-connect unit operable to combine the video
programming with bi-directional telephone signals transported to and from
the optical node device at a third wavelength in the downstream direction
and a fourth wavelength in an upstream direction” (claim 1) because the hub
(126) transmits a composite signal of broadcast video and targeted service
(e.g., IP telephone signals) to the PON (142) and targeted service signals are
bi-directionally carried by the PON (142), at different wavelengths, to and
from the OEC (150) (Id.; see also FF 8-9).
Thus, even assuming arguendo that Appellant presented persuasive
arguments against the combinability of Feldman and Sutherland, we would
find that Feldman anticipates claim 1 and thereby renders claim 1
unpatentable under 35 US.C. § 103(a). See Jones v. Hardy, 727 F.2d 1524,
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1529 (Fed. Cir. 1984). Accordingly, we conclude that Appellant has not
shown the Examiner erred in rejecting claim 1 and claims 2-29 falling
therewith over the teachings of Feldman in view of Sutherland under 35
U.S.C. § 103(a).

VI. CONCLUSIONS
Appellant has not shown the Examiner erred in finding that claims 1-
29 are unpatentable over the teachings of Feldman in view of Sutherland.

VII. DECISION
The Examiner’s decision rejecting claims 1-29 under 35 U.S.C. §
103(a) is affirmed.
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).

AFFIRMED

peb

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