Ex parte CLARKE et al.

Board of Patent Appeals and Interferences

Mar 19, 1998

08050029 (B.P.A.I. Mar. 19, 1998)

Application for patent filed April 29, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a
law journal and (2) is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DONALD E. A. CLARKE,
MICHAEL A. HALE and
JEREMY B. CHUTER
_____________
Appeal No. 96-3628
Application 08/050,0291
______________
HEARD: MARCH 5, 1998
_______________
Before KRASS, MARTIN and FLEMING, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1 and 3 through 9, all
the claims pending in the application. Claim 2 has been canceled.
Appeal No. 96-3628
Application 08/050,029
2
The invention is directed to passive optical networks (PON) wherein data bit
communications are transmitted over fiber optic networks. More particularly, the head-
end station is connected to a plurality of optical fiber networks. This is accomplished by a
time division, multiple access (TDMA) master in the head-end station which is connected
to at least two optical stages which are, in turn, connected to separate optical fiber
networks. Since a single TDMA master handles a plurality of fiber networks, a larger
number of end-user subscribers can be handled.
Representative independent claim 4 is reproduced as follows:
4. A passive optical network system comprising a first passive optical fiber
network connected to a time division multiple access (TDMA) master,
a first optical stage connected to the TDMA master and to the optical fiber
network,
at least one additional optical stage connected to at least one additional passive
optical fiber network, and
wherein the optical stages are connected in common to the TDMA master.
The examiner relies on the following references:
Husbands 4,776,041 Oct. 4, 1988
Ballance 4,977,593 Dec. 11, 1990
Appeal No. 96-3628
Application 08/050,029
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Claims 1 and 3 through 9 stand rejected under 35 U.S.C. § 103 as unpatentable
over Ballance in view of Husbands. In a new ground of rejection entered in the principal
answer, the examiner also rejects claim 3 under 35 U.S.C. § 112, second paragraph, as
being indefinite because the claim depends from canceled claim 2.
Reference is made to the briefs and answers for the respective positions of
appellants and the examiner.
OPINION
At the outset, we note that, in accordance with appellants’ grouping of the claims
at page 8 of the principal brief, all claims will stand or fall together with regard to the prior
art rejection.
We turn first to the rejection of claim 3 under 35 U.S.C. § 112, second paragraph.
The examiner rejects the claim as being indefinite because it depends from a now-canceled
claim (claim 2). Appellants do not dispute the propriety of the rejection, contending in the
reply brief that the improper dependency will be corrected by amendment after the
decision on appeal, specifically noting that claim 3 will be amended to depend from claim
1. Accordingly, the rejection of claim 3 under 35 U.S.C. § 112, second paragraph, is
summarily sustained and we leave it to appellants and/or the examiner, at a later,
appropriate time, to amend claim 3 to make it dependent on claim 1.
We now turn to the rejection of claims 1 and 3 through 9 under 35 U.S.C. § 103.
Appeal No. 96-3628
Application 08/050,029
4
We will not sustain the rejection of claims 1 and 3 through 9 under 35 U.S.C.
§ 103 in view of Ballance and Husbands because, in our view, the examiner has not
established a prima facie case of obviousness.
The examiner offers Ballance as teaching the claimed invention, with regard to
claims 1 and 4 through 7, but for “connecting the output of the TDMA master station
connected to respective inputs of the transmitters and output of the receivers connected in
parallel to a data input of the TDMA master station” [answer-page 4]. The examiner
contends that Ballance does teach connecting the system to various end users and that
after reaching a limit to the number of end users that can be connected by using the
splitters disclosed by Ballance, in order to increase that number further, one would add
optical components, citing various portions of Ballance in columns 8, 10, 14 and 21.
Apparently, the examiner is contending that the provision of additional transmitters
and receivers by Ballance, citing column 21, lines 28-32 of that patent, is a teaching of the
connection of a single head-end to a plurality of optical fiber networks, as claimed.
However, the additional optical components referred to at column 20 of Ballance is in
conjunction with an embodiment of Ballance’s invention wherein additional wavelengths
are used in order to add new services, such as cable TV. There is no indication or
suggestion that additional optical fiber networks are contemplated by Ballance. Both
instant independent claims 1 and 4 require more than one optical fiber network and there
is no indication anywhere in the disclosure of Ballance that Ballance contemplates
Appeal No. 96-3628
Application 08/050,029
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anything more than a single optical fiber network.
The examiner turns to Husbands for a teaching of an optical communication
system in which a head-end station (identified as elements RX, TX, 60 and 54 in Figure 4
of Husbands by the examiner) may be connected to an optical stage comprised of a
plurality of transmitters and receivers (identified as 62, 46 and 56 by the examiner) for
communicating with various devices in the network. The examiner then contends that it
would have been obvious to use the teaching of Husbands to connect a plurality of
transmitters and receivers to a head-end station in the system of Ballance “in order to
increase the number of networks that may be served by the splitters connected to the
various end users… ” [answer-page 5].
We disagree. While we do not agree with appellants that Husbands is directed to
nonanalogous art and should never have been applied, we disagree with the examiner’s
rationale for making the combination. In our view, Husbands is clearly analogous since it
relates to the same field of endeavor as the instant invention in that they both relate to
optical communications systems. As far as applicability of active networks to passive
Appeal No. 96-3628
Application 08/050,029
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networks and vice versa, Husbands discloses in the background section that both passive
and active networks, as well as hybrids, were known in the art and artisans were familiar
with how certain features of each might be combined.
The problem, as we see it, is that Husbands is directed to collision detection in
fiber optic systems. Both the prior art described in Figures 1-3 of Husbands and
Husbands’ Figure 4 inventive embodiment are directed to such collision detection. Thus,
to whatever extent Husbands’ array of transmitters and receivers may be arranged similar
to those in the instant claimed invention, the question arises as to why the artisan would
have taken this arrangement and placed it in the system of Ballance. The examiner
contends that the artisan would have been led to do this in order to increase the number of
networks that may be served, i.e., to increase the number of end users. However,
Ballance already discloses a way to increase service to a greater number of end users and
that is to employ splitters in order to split signals from a single optical fiber network.
Thus, Ballance already discloses a solution to the problem of an increasing number of end
users and we find no suggestion which would have led the artisan to do away with the
splitters of Ballance and employ, instead, a plurality of optical fiber networks. Certainly,
Husbands does not suggest a plurality of optical fiber networks connected to a single
head-end for the purpose of serving an increasing number of end users. We simply find no
incentive for the skilled artisan to have looked to Husbands for a suggestion to somehow
modify Ballance in order to provide a single head-end station connected to a plurality of
Appeal No. 96-3628
Application 08/050,029
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fiber optic networks and the examiner has convinced us of none.
We have sustained the rejection of claim 3 under 35 U.S.C. § 112, second
paragraph, but we have not sustained the rejection of claims 1 and 3 through 9 under 35
U.S.C. § 103. Accordingly, the examiner’s decision is affirmed-in part.
No period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
JOHN C. MARTIN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
)
INTERFERENCES
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )

Appeal No. 96-3628
Application 08/050,029
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