Ex Parte Chen et al

Patent Trial and Appeal Board

Feb 28, 2017

13353579 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/353,579 01/19/2012 Young-Kai Chen Chen 67-15-12 1316
59978 7590 03/02/2017
Chiesa Shahinian & Giantomasi PC (ALU)
Attn: Jeffrey M. Weinick
One Boland Drive
West Orange, NJ 07052
EXAMINER
PINKNEY, DA WAYNE
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
patent @ csglaw. com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUNG-KAI CHEN, KUN-YII TU, and
MICHAEL GEORGE ZIERDT
Appeal 2016-000415
Application 13/353,579
Technology Center 2800
Before DONNA M. PRAISS, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal the Examiner’s rejection of claims 7—12, 14, and
15. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM-IN-PART.
1 In this Decision, we refer to the Non-Final Office Action appealed from,
mailed June 10, 2014 (“Non-Final Act.”); the Appeal Brief dated December
10, 2014 (“App. Br.”); the Examiner’s Answer to the Appeal Brief mailed
August 7, 2015 (“Ans.”); and the Reply Brief (“Reply Br.”) dated October 7,
2015.
2 Appellants identify Alcatel-Lucent USA Inc. and Alcatel Lucent as the real
parties in interest. App. Br. 1.
Appeal 2016-000415
Application 13/353,579
The Claimed Invention
Appellants’ disclosure relates to a device for processing of
radiofrequency (RF) signals comprising an optical phase modulator; a pair
of detectors; and an RF combiner. Spec. 1; Abstract. Claim 7 is illustrative
of the subject matter on appeal and is reproduced below from the Claims
Appendix to the Appeal Brief (App. Br. 10) (key disputed claim language
italicized):
7. Apparatus comprising:
an optical phase modulator configured to receive an
optical carrier signal as input, and to produce as output, when
driven by a radiofrequency modulation signal, a complementary
pair of phase-modulated optical signals in which the respective
phase modulations are opposite in sign;
a pair of detectors, each configured to convert a
respective one of the complementary phase-modulated optical
signals to a radiofrequency signal; and
an RF combiner configured to form an output signal by
combining the converted radiofrequency signals from the
detectors.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Skeie US 5,249,243 Sept. 28, 1993
US 2002/0088920 A1 July 11, 2002Imajuku et al.,
(hereinafter “Imajuku”)
Gertel et al.,V1
(hereinafter “Gertel”)
US 6,634,811 B1 Oct. 21,2003
Kaushik
Kikuchi
Yan et al
(hereinafter “Yan”)
US 7,187,871 B1 Mar. 6, 2007
US 2009/0324247 Al Dec. 31, 2009
US 7,881,618 B2 Feb. 1,2011
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Application 13/353,579
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 7—9 and 15 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Gertel in view of Skeie. Non-
Final Act. 2; Ans. 2.
2. Claim 10 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Gertel in view of Skeie as applied to claim 9 above, in
view of Kikuchi. Non-Final Act. 4; Ans. 2.
3. Claim 11 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Gertel in view of Skeie as applied to claim 9 above, in
view of Imajuku. Non-Final Act. 5; Ans. 2.
4. Claim 12 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Gertel in view of Skeie as applied to claim 7 above, in
view of Kaushik. Non-Final Act. 5; Ans. 2.
5. Claim 14 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Gertel in view of Skeie in view of Kaushik as applied to
claim 12 above, and further in view of Yan. Non-Final Act. 6; Ans. 2.
OPINION
Rejection 1
Appellants do not separately argue claims 7—9 and 15. App. Br. 2—6.
We select claim 7 as representative and claims 8, 9, and 15 stand or fall with
claim 7. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that the combination of Gertel and Skeie suggests
an RF signal processing apparatus satisfying all of the limitations of claim 7,
and concludes that the combination would have rendered claim 7 obvious.
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Application 13/353,579
Non-Final Act. 2—3 (citing Gertel, Fig. 2, elements 12,14,18, 32, 34, 36, 38,
40, 46, 48, 50, 52, 54, 56; Skeie, claim 1).
The Examiner finds that Gertel discloses the limitations of claim 7
with the exception that:
Gertel does not disclose the phase modulator produces a
complementary pair of phase-modulated optical signals as
output, and the optical phase modulator configured to produce
complementary phase-modulated optical signals in which the
respective phase modulators are opposite in sign.
Non-Final Act. 3.
The Examiner, however, relies on Skeie for suggesting these missing
limitations. Id. In particular, the Examiner finds that Skeie teaches that it
was known and would have been desirable to make the phase modulator
produce a complementary pair of phase-modulated optical signals as output
and for the optical phase modulator to be configured to produce
complementary phase-modulated optical signals in which the respective
phase modulators are opposite in sign. Id. (citing Skeie, claim 1).
Based on the above findings, the Examiner concludes that:
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to make the phase modulator
produce [] a complementary pair of phase-modulated optical
signals as output as taught by the apparatus of Skeie in the
apparatus of Gertel since Skeie teaches it is known to include
this feature in an apparatus for providing an effective apparatus.
Id.
Appellants argue that the Examiner’s rejection should be reversed
because Gertel does not teach or suggest the “optical phase modulator” of
claim 7. App. Br. 4; Reply Br. 2, 3. In particular, relying on the declaration
of Peter J. Winzer (“Winzer Declaration”), Appellants argue that modulator
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Appeal 2016-000415
Application 13/353,579
32 of Gertel’s Figure 2 is not an optical phase modulator and the Examiner
has not shown that Gertel teaches or suggests an optical phase modulator
that produces “phase-modulated optical carriers.” App. Br. 3, 5. Appellants
contend that the optical modulator of Gertel’s Figure 2 is an “optical
intensity modulator” rather than an optical phase modulator, as claimed. Id.
at 3, 4; Reply Br. 2, 3.
Appellants further argue that the Examiner’s proposed modification of
Gertel would “change the principle of operation of Gertel’s device” and the
proposed modification would render Gertel’s device “unsuitable for its
intended purpose.” App. Br. 5; Reply Br. 4.
We do not find the Appellants’ arguments persuasive to justify a
reversal of the Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (explaining that even if the examiner had failed to make a prima
facie case, the Board would not have erred in framing the issue as one of
reversible error because it has long been the Board’s practice to require an
appellant to identify the alleged error in the examiner’s rejections).
The Examiner’s finding that Gertel discloses an optical phase
modulator is supported by a preponderance of the evidence in the record.
Ans. 2. Gertel explicitly discloses that “the RF modulation on the first
optical signal 34 and the RF modulation on second optical signal 36 can be
manipulated to be 180° out of phase at the two output ports of the modulator
32.” Gertel, col. 1,1. 67—col. 2,1. 3. Gertel also discloses that “the RF
modulation on first optical signal 34 is the exact reciprocal of the RF
modulation on second optical sign 36” and the RF modulation on optical
signals 34 and 36 being “exactly out of phase.” Id. at col. 2,11. 5—10. As the
Examiner further finds (Ans. 2; Non-Final Act. 2), in addition to disclosing
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Application 13/353,579
that the output signals can be adjusted to be 180° out of phase, Gertel
teaches that the modulator 32 modulates the phase of input signals 34 and 36
and is configured to receive an optical carrier signal as input 14. Gertel, col.
1,11. 61-66, col. 1,11. 67—col. 2,1. 3.
The Examiner’s finding (Non-Final Act. 3) that Skeie discloses that
the phase modulator produces a complementary pair of phase-modulated
optical signals as output and the optical phase modulator configured to
produce complementary phase-modulated optical signals in which the
respective phase modulators are opposite in sign is also supported by a
preponderance of the evidence in the record. Skeie, col. 15,1. 36—col. 16,1.
2, claim 1.
Appellants’ argument that modulator 32 of Gertel’s Figure 2 is not an
“optical phase modulator” (App. Br. 3; Reply Br. 2) is not persuasive of
reversible error in the Examiner’s analysis and findings because it is
unsupported by sufficient evidence in the record. The portions of the
Winzer Declaration that Appellants rely on as support for this argument
(Winzer Decl. 8—13) lack adequate factual support and rest solely on
uncorroborated opinion testimony. See Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Fack of factual
support for expert opinion going to factual determinations . . . may render
the testimony of little probative value in a validity determination.”). In
particular, the declaration fails to identity or cite to any publications, for
example, or other objective evidence in the record as support for the relied
upon opinion testimony.
The declaration also does not identify sufficient evidence in the record
or provide a persuasive technical explanation explaining why modulator 32
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Application 13/353,579
in Figure 2 of Gertel does not correspond to the optical phase modulator
element of claim 7, as found by the Examiner. In particular, although the
declaration states that Gertel’s modulator 32 is an intensity-based optical
modulator rather than an optical phase modulator (Winzer Decl. 8, 9), it
provides no meaningful technical explanation or persuasive evidence
regarding the functionality of and any alleged material differences between
intensity-based optical modulators and optical phase modulators sufficient to
rebut or show reversible error in the Examiner’s finding that Gertel discloses
the claimed optical phase modulator.
Appellants’ argument regarding the lack of a device for converting
optical phase modulation to optical intensity modulation (App. Br. 4; Reply
Br. 3) is not persuasive because, as the Examiner correctly points out (Ans.
3), claim 7 does not recite such a device. See In re Van Geuns, 988 F.2d
1181, 1184—85 (Fed. Cir. 1993) (“[L]imitations are not to be read into the
claims from the specification.”).
Appellants’ arguments that the Examiner’s proposed modification of
Gertel would change the principle of operation of Gertel’s device and render
Gertel’s device unsuitable for its intended purpose (App. Br. 5; Reply Br. 4)
are equally unpersuasive because Appellants do not direct us to sufficient
evidence in the record or provide an adequate technical explanation to
support them and for the well-stated reasons provided by the Examiner at
page 4 of the Answer (explaining that Gertel’s device’s principle of
operation is phase modulation).
Appellants’ contention that by replacing Gertel’s modulator 32 with
Skeie’s modulator, “Gertel’s diode detectors 46 and 48 . . . would not work”
(App. Br. 5, 6) is conclusory and, without more, insufficient to support
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Application 13/353,579
Appellants’ arguments or otherwise rebut the Examiner’s findings in this
regard. De Blauwe, 736 F.2d 699 at 705.
Accordingly, we affirm the Examiner’s rejection of claims 7—9 and 15
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the
combination of Gertel and Skeie.
Rejections 2 and 3
In response to the Examiner’s Rejections 2 and 3, stated above,
Appellants do not present any additional substantive arguments. Rather,
Appellants argue that these rejections should be reversed for essentially the
same reasons presented above in response to Rejection 1 and claim 7. App.
Br. 6, 7. In particular, Appellants contend that claims 10 and 11 are
“allowable” and “patentable” because “Claim 10 depends from claim 7” and
“Claim 11 depends from claim 7,” respectively. Id. at 6, 7. We do not find
Appellants’ arguments in this regard persuasive for the same reasons
discussed above in affirming the Examiner’s Rejection 1.
Moreover, Appellants’ assertions that the claims are “allowable” and
“patentable” and that each of the claims “depends from claim 7” (App. Br. 6,
7), without more, are insufficient to rebut or otherwise establish reversible
error in the Examiner factual findings and conclusions in this regard. In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Accordingly, we affirm the Examiner’s Rejections 2 and 3.
Rejections 4 and 5
Claim 12 depends from claim 7 and adds the limitation:
further comprising an amplitude-to-phase converter configured
to provide a phase-converted signal as the radiofrequency
modulation signal for driving the optical phase modulator.
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Application 13/353,579
App. Br. 11 (Claims App’x).
The Examiner finds that the combination of Gertel, Skeie, and
Kaushik suggests an apparatus satisfying all of the limitations of claim 12
and concludes that the combination would have rendered claim 12 obvious.
Non-Final Act. 5—6. The Examiner finds that the combination of Gertel and
Skeie discloses the limitations of claim 12 with the exception that the
combination “does not disclose an amplitude-to-phase converter configured
to provide a phase-converted signal as the radiofrequency modulation signal
for driving the optical phase modulator,” as recited in the claim. Id. at 6.
The Examiner, however, relies on Kaushik for teaching this missing
limitation. Id.
In particular, the Examiner finds that Kaushik teaches that:
it would have been desirable to include an amplitude-to-phase
converter configured to provide a phase-converted signal as the
radiofrequency modulation signal for driving the optical phase
modulator ... for the purpose of providing an effective
apparatus.
Id. (citing Kaushik, col. 1,11. 40-55).
Based on the above findings, the Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time the
invention was made:
to include an apparatus that it would have been desirable to
include an amplitude-to-phase converter configured to provide
a phase-converted signal as the radiofrequency modulation
signal for driving the optical phase modulator as taught by the
apparatus of Kaushi[k] in the combination of Gertel in view of
Skeie since Kaushi[k] teaches it is known to include this feature
in an apparatus for providing an effective apparatus.
Id.
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Appellants argue that the Examiner’s rejection of claim 12 should be
reversed because “the cited portions of Kaushik do not teach or suggest at
least ‘a phase converted signal as the radiofrequency modulation signal for
driving the optical phase modulator,’” as recited in the claim. App. Br. 7—8
(emphasis added).
Appellants’ argument is persuasive because the Examiner has not
provided an adequate technical explanation or directed us to sufficient
evidence to support the finding that Kaushik teaches or suggests a phase
converted signal as the radiofrequency modulation signal for driving the
optical phase modulator. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992) (holding that the examiner bears the initial burden of establishing a
prima facie case of obviousness).
As Appellants note (App. Br. 7), although the portion of Kaushik cited
by the Examiner mentions the phrase “phase modulation” (Kaushik, col. 1,
11. 40-55), it does not teach, suggest, or mention the signal driving the
optical phase modulator, as claimed. The Examiner also does not direct us
to other evidence—whether in Kaushik or elsewhere in the record—that
supports this finding.
The Examiner’s finding that “it would have been desirable to include
an amplitude-to-phase converter configured to provide a phase-converted
signal as the radiofrequency modulation signal for driving the optical phase
modulator ... for the purpose of providing an effective apparatus” (Non-
Final Act. 6) is conclusory and, without more, insufficient to sustain the
Examiner’s obviousness conclusion and satisfy the Examiner’s evidentiary
burden in this regard. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
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(holding “rejections on obviousness grounds cannot be sustained by mere
conclusory statements”); Oetiker, 977 F.2d at 1445.
Accordingly, we reverse the Examiner’s rejection of claim 12 as
obvious over the combination of Gertel, Skeie, and Kaushik.
Because the foregoing deficiencies in the Examiner’s findings and
conclusion regarding the combination of Gertel, Skeie, and Kaushik are not
remedied by the Examiner’s findings regarding the additional Yan reference
or combination of Gertel, Skeie, Kaushik, and Yan cited in support of the
fifth ground of rejection, we also reverse the Examiner’s Rejection 5.
DECISION/ORDER
The Examiner’s rejections of claims 7—11 and 15 are affirmed.
The Examiner’s rejections of claims 12 and 14 are reversed.
It is ordered that the Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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