Ex Parte Chen

Patent Trial and Appeal Board

Mar 29, 2016

13167040 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/167,040 06/23/2011
25537 7590 03/31/2016
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
FIRST NAMED INVENTOR
David Zhi Chen
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.
20110180 7185
EXAMINER
BELLO, AGUSTIN
ART UNIT PAPER NUMBER
2637
NOTIFICATION DATE DELIVERY MODE
03/31/2016 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DA YID ZHI CHEN
Appeal2014-007820
Application 13/167,040
Technology Center 2600
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
MELISSA A. HAAPALA Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-20, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-007820
Application 13/167,040
Invention
The invention on appeal relates to a system including "one or more
single-mode optical fibers that connect an optical line terminal at a central
office to an input cable of an optical splitter in a fiber distribution hub, and
one or more dispersion compensating optical fibers that connect an output
cable of the optical splitter to an optical network terminal at customer
premises." (Abstract). Claim 1 is representative, with the contested "optical
splitter" limitation emphasized:
1. A system comprising:
one or more single-mode optical fibers that connect an
optical line terminal at a central office to an input cable of an
optical splitter in a fiber distribution hub; and
one or more dispersion compensating optical fibers that
connect an output cable of the optical splitter to an optical
network terminal at customer premises,
wherein the one or more single-mode optical fibers, the
optical splitter, and the one or more dispersion compensating
optical fibers form a communication path, for an optical signal,
from the optical line terminal at the central office to the optical
network terminal at the customer premises,
wherein the optical signal travels from the optical line
terminal at the central office to the optical splitter over the one
or more single-mode optical fibers,
wherein when the optical signal travels from the optical
line terminal at the central office to the optical splitter over the
one or more single-mode optical fibers, the optical signal gains
positive dispersion,
wherein the optical signal, which arrives at the optical
splitter from the optical line terminal, travels from the optical
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Appeal2014-007820
Application 13/167,040
splitter to the optical network terminal at the customer premises
over the one or more dispersion compensating optical fibers, and
wherein when the optical signal, which arrives at the
optical splitter from the optical line terminal, travels from the
optical splitter to the optical network terminal at the customer
premises over the one or more dispersion compensating optical
fibers, the optical signal gains negative dispersion that partially
or fully cancels the positive dispersion that the optical signal has
gained over the one or more single-mode optical fibers.
Rejections
A. Claims 1-7, 10-12, 15-17, and 20 are rejected under 35 U.S.C.
§ 102(b), as anticipated by Ishikawa (US 5,636,046; iss. June 3,
1997).
B. Claims 8, 9, 13, and 14 are rejected under 35 U.S.C. § 103(a), as
being obvious over the combined teachings and suggestions of
Ishikawa and Rathje (US 2008/0063347 Al; pub. Mar. 13, 2008).
C. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a), as being
obvious over the teachings and suggestions of Ishikawa. 1
Grouping of Claims
Based on Appellant's arguments, we decide the appeal of claims 1, 2,
6, 7, 10-12, 15-17, and 20 on the basis of representative claim 1. We
address the remaining claims rejected under rejections A-C, infra. See 37
C.F.R. § 41.37(c)(l)(iv).
1 Claims 18 and 19 (rejected as being obvious over Ishikawa) each depend
directly from claim 16 that is rejected under § 102(b ), as being anticipated by
Ishikawa.
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Appeal2014-007820
Application 13/167,040
ANALYSIS
RejectionA of Claims 1, 2, 6, 7, 10--12, 15-17, and20under § 102(b)
Issue: Under § 102, did the Examiner err in finding Ishikawa
expressly or inherently discloses an "optical splitter" within the meaning of
claim 1, under a broad but reasonable interpretation?
According to the Examiner, the claimed "optical splitter" is described
in Ishikawa' s as demultiplexer 23a. (Final Act. 2). Reviewing Ishikawa' s
Figure 30, we find the demultiplexer 23a splits an optical signal into a
plurality of constituent "signal light waves of the wavelengths /q to '4 after
wavelength demultiplexing." (Ishikawa, col. 35, 11. 60-61).
However, Appellant urges the Examiner's interpretation of claim 1 is
unreasonable:
In contrast [to a demultiplexer], an optical splitter receives
a beam of light, and splits the beam into resultant beams of
identical frequencies. Each of the resultant beams includes every
signal present in the original beam received by the optical
splitter, and therefore, unlike a demultiplexer, performs no signal
selection . . . . Accordingly, the demultiplexer of Ishikawa does
not disclose or correspond to the optical splitter of claim 1.
(App. Br. 10.)
We observe claim 1 is silent regarding any requirement the optical
splitter "splits the beam into resultant beams of identical frequencies," as
urged by Appellant. (Id.). The Examiner additionally finds: "In fact,
nowhere in Appellant's specification is it disclosed that the claimed optical
splitter splits the beam into identical frequencies or that the resultant beam
includes every signal present in the original optical beam received by the
optical splitter." (Ans. 11.)
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Appeal2014-007820
Application 13/167,040
In the Reply Brief (3) Appellant responds: "there is no need for the
specification to define the term" because "'optical splitter' is a technical
term of art, and one of ordinary skill in the art (e.g., optics art and/or optical
communications art) would understand ... that an 'optical splitter' is not the
same thing as a demultiplexer."
However, Appellant has not provided any rebuttal evidence in the
record in support. Appellant's mere assertion of the optical splitter's
technical meaning in the art "does not take the place of evidence in the
record." In re Schulze, 346 F.2d 600, 602 (CCPA 1965). Attorney
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Moreover, because "applicants may amend claims to narrow their
scope, a broad construction during prosecution creates no unfairness to the
applicant or patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007) (citation omitted).
Because Appellant has not provided a definition in the Specification
or rebuttal evidence in the record, we are not persuaded the Examiner's
broader reading of the claim term "optical splitter" is overly broad or
unreasonable.
Therefore, on this record, we find a preponderance of the evidence
supports the Examiner's finding of anticipation regarding independent claim
1. Because Appellant has not persuaded us the Examiner erred, we sustain
Rejection A of representative claim 1. Grouped claims 2, 6, 7, 10-12,
15-17, and 20, also rejected under rejection A, fall with claim 1. See
Grouping of Claims, supra.
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Appeal2014-007820
Application 13/167,040
Re} ection A of Claims 3-5 under § j 02 (b)
Regarding claims 3 and 5, Appellant follows a pattern of: (1) reciting
the claim language, (2) restating the Examiner's findings, and (3) merely
asserting that Ishikawa does not describe the features of a "fiber distribution
hub" of claim 3, and the "fiber distribution terminal" of claim 5. (See App.
Br. 13-15). However, mere attorney argument and conclusory statements do
not demonstrate error in the Examiner's rejection. 2
As for claim 4, Appellant contends the Examiner erred in citing to
"different lengths" in Ishikawa (column 3, lines 32-41), and reference label
25 (corresponding to the Optical Dispersion Compensator Unit in Ishikawa' s
Figure 30), as disclosing the recited feature: "wherein the fiber distribution
hub includes slack in the one or more dispersion compensating optical
fibers." (App. Br. 14; claim 4, emphasis added).
Although the cited portion of Ishikawa does not explicitly use the
word "slack", 3 we find Ishikawa' s discussion of "varying the length of the
fiber" to adjust the "dispersion compensation amount" (Ishikawa col. 3, 11.
39--40) discloses the type of "slack" recited in claim 4. (Cf with Appellant's
Spec. iJ 34 ("by shortening either single-mode fiber 302 slack or dispersion
compensating fibers 304 slack in fiber distribution hub 206, the lengths of
2 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.").
3 An ipsissimis verb is test is not required. In re Bond, 910 F .2d 831, 832-
33 (Fed. Cir. 1990) (citing Akzo N. V. v. U.S. Int'! Trade Comm 'n, 808 F.2d
1471, 1479 n. 11 (Fed. Cir. 1986)). "An anticipatory reference ... need not
duplicate word for word what is in the claims." Standard Havens Prods. v.
Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991).
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Appeal2014-007820
Application 13/167,040
single-mode fiber 302 or dispersion compensating fibers 304 may be
reduced"); see also id. iJ 44-55, describing "slack" as a difference in
lengths.).
For at least these reasons, and on this record, we find a preponderance
of the evidence supports the Examiner's finding of anticipation regarding
dependent claims 3-5.
Rejections B and C of Claims 8, 9, 13, 14, 18, and 19 under§ 103
Appellant does not advance separate, substantive arguments and
supporting evidence demonstrating error regarding the Examiner's rejections
Band C of claims 8, 9, 13, 14, 18, and 19. Instead, Appellant merely
restates the purported deficiencies regarding the anticipation rejection of
independent claims 1 and 12. However, for the reasons discussed above,
we find no deficiencies regarding anticipation rejection A. Therefore, we
sustain the Examiner's rejections Band C, under§ 103, of dependent claims
0 C\ l'J 1A 10 ~~rl 1C\ o, 7, l..J, l"t, 10, illlU 17.
Reply Brief
To the extent Appellant may advance new arguments in the Reply
Brief not in response to a shift in the Examiner's position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief or are not responsive to arguments raised in the Examiner's Answer
will not be considered except for good cause. See 37 C.F.R. § 41.4l(b)(2).
Conclusion
For at least the aforementioned reasons, on this record, we are not
persuaded the Examiner erred. We find a preponderance of the evidence
supports the Examiner's finding of anticipation regarding all claims rejected
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Appeal2014-007820
Application 13/167,040
under rejection A. Likewise, for the reasons discussed above, we are not
persuaded of error regarding the Examiner's underlying factual findings and
ultimate legal conclusion of obviousness for all claims rejected under § 103,
under rejections Band C.
DECISION
We affirm the Examiner's rejection of claims 1-7, 10-12, 15-1 7, and
20 under § 102(b ).
We affirm the Examiner's rejections of claims 8, 9, 13, 14, 18, and 19
under§ 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § l.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
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