Ex Parte Cui et al

Patent Trial and Appeal Board

Dec 11, 2015

12511795 (P.T.A.B. Dec. 11, 2015)

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.
12/511,795 07/29/2009 Zhi Cui 20103/2008-1500 4483
83417 7590 12/14/2015
AT&T Legal Department - HFZ
ATTN. Patent Docketing
One AT&T Way
Room 2A-207
Bedminster, NJ 07921
EXAMINER
BELLO, AGUSTIN
ART UNIT PAPER NUMBER
2637
MAIL DATE DELIVERY MODE
12/14/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ZHI CUI and JAMES WILLIAM REMBERT
____________________

Appeal 2013-010129
Application 12/511,795
Technology Center 2600
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, 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) of the final rejection of
claims 1–5, 9–19, and 22. We address the unclear status of claims 6–8 in
n.1, infra. 1 Claims 20, 21, and 23 were canceled. Claim 24 was withdrawn

1 Although claims 6–8 were included in the list of rejected claims on the
Final Office Action Summary page, we find no detailed statement of
rejection to review for claims 6–8 in the Final Action (mailed June 12,
2012), or in the Non-Final Action, mailed February 15, 2012. Nor does the
Examiner indicate in the record that claims 6–8 are allowable or objected to.
Therefore, the status of claims 6–8 is unclear on appeal. For such claims of
undetermined status, the Board has no adverse decision establishing a prima
facie case under 35 U.S.C. §132 to review, and thus we have no jurisdiction
under pre-AIA 35 U.S.C. §6(b) as to any claims that were not rejected.
Accordingly, claims 6–8 are not before us on appeal.
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from consideration as being directed to a non-elected invention. (Final
Act. 2). We have jurisdiction under 35 U.S.C. § 6(b) regarding the
rejections of claims 1–5, 9–19, and 22.
We Affirm.
INVENTION
The claimed invention relates to methods and apparatus to upgrade
communication services in subscriber distribution areas. Spec. ¶ 1.
Claim 1, reproduced below, is representative of the claimed subject
matter on appeal:
1. A method of upgrading communication services in a
subscriber distribution area, the method comprising:
installing [L1] an optical network unit communicatively
coupled to an optical line terminal located at a remote terminal
serving a subscriber distribution area, the optical network unit
including a first subscriber downlink interface to serve a first
subscriber premises and a second subscriber downlink interface
to serve a second subscriber premises, [L2] the optical network
unit located at a curb or parkway location separate from a
location of the remote terminal;
providing a first communication service to the first
subscriber premises via a first electrically conductive medium
communicatively coupled to the first subscriber downlink
interface via a first removably attachable subscriber downlink
module;
providing a second communication service to the second
subscriber premises via a second electrically conductive
medium communicatively coupled to the second subscriber
downlink interface via a second removably attachable
subscriber downlink module; and
in response to receiving a request to upgrade the first
communication service, replacing the first removably attachable
subscriber downlink module with a third removably attachable
subscriber downlink module and connecting an optical
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transmission medium between the third removably attachable
subscriber downlink module and the first subscriber premises
while retaining the second electrically conductive medium
communicatively coupled to the second subscriber downlink
interface to provide the second communication service to the
second subscriber premises.
(Contested limitations lettered as L1 and L2 and emphasized.)
REJECTIONS
R1. Claims 1 and 5 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Swieconek (US 6,980,725 B1, iss. Dec. 27, 2005).
R2. Claims 2–4, 9–19, and 22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Swieconek and Pruett (US
5,953,389, iss. Sep. 14, 1999).2

2 The Examiner inexplicably copies the previously withdrawn § 101
rejection of claims 16–19 and 22 in the Answer (5). However, the Examiner
withdrew the § 101 rejection of claims 16–19 and 22 in the Advisory Action
(2), mailed Oct. 19, 2012. Therefore, this rejection is not before us on
appeal. See 37 C.F.R. 41.39(a)(1)(“An examiner's answer is deemed to
incorporate all of the grounds of rejection set forth in the Office action from
which the appeal is taken (as modified by any advisory action and pre-appeal
brief conference decision), unless the examiner's answer expressly indicates
that a ground of rejection has been withdrawn.”) (Emphasis added).
However, because “tangible” does not have the same limiting scope as
“non-transitory,” in the event of further prosecution, we direct the
Examiner’s attention to a precedential Board decision to ensure the “tangible
computer readable storage device or storage disk” of independent claim 16 is
directed to statutory subject matter under 35 U.S.C. § 101. Under our
jurisprudence, the scope of the recited “tangible computer readable storage
device or storage disk” appears to encompass transitory media. See Ex parte
Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential) (holding recited
machine-readable storage medium ineligible under § 101 since it
encompasses transitory media). Here, the recited “tangible computer
readable storage device or storage disk” is not claimed as non-transitory, and
the originally-filed Specification does not expressly and unambiguously
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CLAIM GROUPING
Based on Appellants’ arguments (App. Br. 8–42), we decide the
appeal of Rejection R1 of claims 1 and 5 on the basis of independent claim
1.3 See 37 C.F.R. §41.37(c)(1)(vii).
We decide the appeal of Rejection R2 of claims 4, 9–19 and 22 based
on representative claim 9.4 We address separately argued dependent claims
2 and 3, infra.
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. However, on this record, for the reasons described below, we are
not persuaded the Examiner erred.

R1. Rejection of Claim 1 under § 102(b)
Issue: Under § 102, did the Examiner err in finding the cited
reference discloses contested limitations L1 and L2, as recited in claim 1?
In particular, is the Examiner’s interpretation of the contested claim
limitations “optical network unit,” “remote terminal,” and “optical network
unit located at a curb or parkway location separate from a location of the

disclaim transitory forms via a definition. (See e.g., Spec. ¶46). Therefore,
the “tangible computer readable storage device or storage disk” of claim 16
is not limited to non-transitory forms and appears ineligible under § 101.
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) §1213.02.
3 We note the Examiner’s typographical error (Ans. 7) in citing to Pruett
instead of Swienconek regarding the anticipation rejection of claim 5 over
Swieconek. We consider this oversight as a typographical error because the
Examiner is clearly referring to Swieconek, at column 8, lines 20–31, that
describes external optical fibers at line 23.
4 Separately argued independent claim 16 recites commensurate limitations.
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remote terminal,” overly broad or unreasonable, within the meaning of
claim 1?
Appellants contend:
The final Office Action incorrectly alleges that the central
office of Swieconek constitutes the remote terminal of claim 1.
(App. Br. 8).

The remote terminal of Swieconek is separate from a central
office and houses fibers that connect to a central office.
. . .
The final Office action incorrectly alleges that the drop sites
described by Swieconek constitute the optical network unit of
claim 1. . . . Drop sites described in the background section of
Swieconek are remote terminals, not the optical network unit of
claim 1, as alleged in the final Office action.
(App. Br. 9).
In response, the Examiner, under a broad but reasonable interpretation
(BRI), reads the contested “remote terminal” limitation on Swieconek’s
central office. (Ans. 10, Final Act. 3, citing Swieconek col. 3, ll. 58–59).
The Examiner points out that Applicants’ Specification does not define
“remote terminal” or “optical network unit.” (Ans. 12).
The Examiner further finds the contested “remote terminal” limitation
is a “generic term which is used to describe any location where an optical
network is terminated[,] and is remote from any other such network
element.” (Ans. 12–13, Final Act. 3, citing Swieconek col. 1, ll. 27–42).
The Examiner also finds Swieconek’s drop sites describe the claimed
optical network units, particularly noting the drop sites in Swieconek are an
essential part of the upgrade from copper to fiber. (Ans. 13–14, Final Act. 3,
citing Swieconek, col. 4, ll. 48–60).
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Extrinsic Evidence (Appendix B of the Appeal Brief)
At the outset, we address the evidence presented regarding proposed
definitions of the contested claim term “remote terminal”, as shown in
Appellants’ Evidence Appendix (Appendices E and F), filed concurrently
with the Appeal Brief. Pursuant to our procedural rule, 37 C.F.R. § 41.30,
“Evidence does not include dictionaries, which may be cited before the
Board.”
Here, we find Appellants’ proposed definitions are not citations from
dictionaries, but are instead extracted from an AT&T FAQ/DSL Report
website, and from the appendix of a book entitled “Telecom Crash Course.”
(See, Appendices E and F). Therefore, we evaluate this extrinsic evidence to
determine whether it is admissible under our procedural rules.
Under 37 C.F.R. 41.37(c)(2):
A brief shall not include any new or non-admitted amendment,
or any new or non-admitted affidavit or other Evidence. See
§ 1.116 of this title for treatment of amendments, affidavits or
other evidence filed after final action but before or on the same
date of filing an appeal and § 41.33 for treatment of
amendment, affidavits or other Evidence filed after the date of
filing the appeal.

(Emphasis added).
We find 37 C.F.R. § 1.116 is applicable here because Appellants’
Evidence Appendix was filed concurrently with the Appeal Brief. Rule
1.116(e) guides that such submitted evidence “may be admitted upon a
showing of good and sufficient reasons why the affidavit or other evidence
is necessary and was not earlier presented.”
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However, Appellants have not met either of these two procedural
requirements. We find the record is silent regarding any showing of:
(1) good and sufficient reasons why the submitted evidence is necessary,
and (2), why such extrinsic was not presented earlier. Following our
procedural rules, we decline to consider the documents cited in Appellants’
Evidence Appendix B (containing Appendices E and F).
Claim Construction
As an initial matter of claim construction, we observe Appellants
contest structural limitations (“remote terminal,” “an optical network unit”),
which are recited within method claim 1 (App. Br. 8–11). Thus, instead of
contesting the steps or acts performed by the claimed method, Appellants
contest the structural environment in which the method is performed.
Regarding the contested claim terms “optical network unit” and
“remote terminal,” Appellants do not argue a definition (recited in the claims
or described in the Specification) that would preclude the Examiner’s
broader interpretation of the contested claim limitations.
Our reviewing court guides “[i]t is the [A]pplicants’ burden to
precisely define the invention, not the PTO’s.” In re Morris, 127 F.3d 1048,
1056 (Fed. Cir. 1997) (citation omitted). The Applicants must do so by
placing such definitions in the Specification with sufficient clarity to provide
a person of ordinary skill in the art with clear and precise notice of the
meaning that is to be construed. See In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994).
Here, we decline to interpret the contested claim terms (limitations L1
and L2) in light of extrinsic, non-dictionary, evidence, which is inadmissible
under our procedural rules. See Evidence Appendix B.
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For patent application claims before the USPTO, “[g]iving claims
their broadest reasonable construction ‘serves the public interest by reducing
the possibility that claims, finally allowed, will be given broader scope than
is justified.”’ In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004) (quoting In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)).
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).
This reasoning is applicable here. Given the lack of definitions in the
claims or Specification for the aforementioned claim terms recited in
limitations L1 and L2, on this record, Appellants have not persuaded us the
Examiner’s broader interpretations are overly broad or unreasonable.
(Ans. 10–15).
Because Appellants have not persuaded us the Examiner erred, we
sustain anticipation rejection R1 of representative claim 1. Associated
grouped dependent claim 5 falls with claim 1.

R2. Rejection of Claims 2–4, 9–19, and 22 under §103
Dependent Claim 2
Appellants contend the contested limitation, “for upgrading to an
optical type of transmission medium” is not taught or suggested by Pruett or
Swieconek.” (App. Br. 12). Appellants urge: “Pruett et. al. describe
allowing ‘companies to provision a network that is comprised of both digital
and analog technologies.’ . . . digital and analog technologies are
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implementable using an electrically conductive type of transmission medium
without needing an optical type of transmission medium.” (App. Br. 12).
However, we agree with the Examiner’s finding Pruett’s teaching of
“providing updates to subscribers profiles indicating that subscribers are
enabled for upgrading to an optical transmission medium [was] well known
in the art,” and thus teaches or suggests the contested claim 2 limitation
“enabled for upgrading to an optical type of transmission medium.” (Final
Act. 6, citing Pruett, col. 43, l. 63–col. 46, l. 1).
We also agree with the Examiner that Pruett’s description of replacing
twisted pair wires with optical fiber for upgrading networks would have
taught or suggested the contested “upgrading” limitation recited in claim 2.
(Ans. 15, citing Pruett col. 46, ll. 58–67).
We additionally agree with the Examiner that Swieconek’s teaching
that any communication hardware can be upgraded to new communication
hardware at least suggests the claim 2 limitation of: “upgrading to an optical
type of transmission.” (Final Act. 5–6, citing Swieconek, col. 9, ll. 1–26).
For at least these reasons, on this record, we are not persuaded the
Examiner erred. Therefore, we sustain the Examiner’s § 103 rejection R2 of
dependent claim 2 over the combination of Swieconek and Pruett.

Dependent Claim 3
Regarding claim 3, Appellants contend:
Pruett et al. do not teach or suggest that the facilities
modification and office equipment replacement involve
updating a first subscriber line type entry in a first subscriber
profile to indicate that a first subscriber line comprises an
optical transmission medium. The facilities modification and
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office equipment replacement of Pruett et al. may be based
solely on an electrically conductive type of transmission
medium without involving any optical transmission medium.
(App. Br. 15–16).
Given the similarity with the claim construction issues discussed
above regarding to claim 2, we are not persuaded the Examiner’s broader
reading of claim 3 on the cited prior art is overly broad, or unreasonable.
Therefore, for essentially the same reasons articulated by the Examiner
(Final Act. 6–7), we sustain § 103 rejection R2 of dependent claim 3 over
the combination of Swieconek and Pruett.

Independent Claim 9
Appellants contend: “The final Office action incorrectly alleges that
the drop sites of Swieconek constitute the optical network units of claim 9,
and that the central office of Swieconek constitutes the remote terminal of
claim 9. . . A central office is not a remote terminal.” (App. Br. 20–21).
However, given the claim construction issues discussed above
regarding claim 1, on this record, we are not persuaded the Examiner’s
broader interpretations of the claimed “optical network units” and “remote
terminal” (claim 9), respectively, are overly broad or unreasonable. See
Ans. 11–13. The Examiner concludes, in pertinent part:
Swieconek's term ‘remote terminal’ is essentially a generic term
which is used to describe any location where an optical network
is terminated and is remote from any other such network
element. In other words, a "remote terminal" in Swieconek can
house a central office and can also be what Swieconek labels a
"drop site," i.e. a site that connects a subscriber to the optical
network since here too the optical network can and will be
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terminated based on the type of connectivity the subscriber
elects. Furthermore, it bears repeating that Appellant's
specification fails to define the term "remote terminal" in any
particular manner much less a manner that would structurally or
functionally distinguish it from Swieconek's remote terminal.
(Ans. 12–13).
However, Appellants further contend:
Pruett et al. do not teach or suggest that the facilities
modification and office equipment replacement involve
tracking transmission medium types installed between optical
network units. The facilities modification and office equipment
replacement of Pruett et al. may be based solely on an
electrically conductive type of transmission medium without
involving any optical network units.
(App. Br. 22).
[T]he Examiner has failed to provide a convincing line of
reasoning of how Pruett et al. teach or suggest updating a first
subscriber line upgradeable entry in a first subscriber profile in
a database associated with a first subscriber premises and a
second subscriber line upgradeable entry in a second subscriber
profile in the database associated with a second subscriber
premises to indicate that a first subscriber line associated with
the first subscriber premises and a second subscriber line
associated with the second subscriber premises are enabled for
replacement with an optical type of transmission medium.
(App. Br. 24).
We find Appellants are attacking the teachings of the references in
isolation and do not specifically rebut the Examiner’s ultimate legal
conclusion of obviousness which is based on the combined teachings and
suggestions of Swieconek and Pruett. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (One cannot show nonobviousness by attacking
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references individually where the rejections are based on combinations of
references).
On this record, and by the preponderance of evidence, we do not find
Appellants’ arguments persuasive regarding the contested claim 9
limitations: “remote terminal”, “optical network units”, and “optical type of
transmission medium,” for the same reasons discussed above regarding
claims 1 and 2.
We agree with the Examiner that Pruett’s description of upgrading of
a copper based twisted-pair unit with optical fiber would have taught or
suggested: “enabled for replacement with an optical type of transmission
medium,” as recited in claim 9. (Ans. 16, Pruett col. 46, ll. 58–67).
We also agree with Examiner’s additional finding that Swieconek
“teaches upgrading a copper based network unit to an optical network unit.”
(Ans. 16, see also Swieconek, col. 4, ll. 48–60).
Appellants further contend:
[T]he Examiner has failed to provide a convincing line of
reasoning of how Pruett et al. teach or suggest updating a first
subscriber line type entry in a first subscriber profile to indicate
that a first subscriber line comprises an optical type of
transmission medium.

(App. Br. 28).

Pruett et al. describes allowing "companies to provision a
network that is comprised of both digital and analog
technologies." Id. at 9:15-19 (emphasis added). Pruett et al. do
not teach or suggest that provisioning a network that comprises
both digital and analog technologies constitutes updating a first
subscriber line type entry in a first subscriber profile to indicate
that a first subscriber line comprises an optical type of
transmission medium and maintaining a second subscriber line
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type entry in a second subscriber profile to indicate that a
second subscriber line comprises an electrically conductive type
of transmission medium. Digital and analog technologies are
implementable using an electrically conductive type of
transmission medium without needing an optical type of
transmission medium.

(App. Br. 29).
However, we find the preponderance of evidence supports the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness, which are based on the combined teachings and suggestions of
of Swieconek and Pruett (Ans. 8–9):
Swieconek discloses that "any communication hardware" can
be upgraded to "new communication hardware" (column 9 lines
1-14), that the upgrade may be merely a "change in
specification" (column 9 lines 15-26), and that "various
permutations and combinations of technology upgrades and/or
downgrades may be performed," thereby suggesting an update
in a subscriber's profile to match any hardware upgrades.
Furthermore, Pruett specifically discloses that maintaining a
database to track transmission medium types installed between
a plurality of optical network units and subscriber premises in a
subscriber distribution area (i.e. "database" of column 43 line
63 - column 46 line 1 of Pruett) and that providing updates to
subscriber profiles indicating that subscribers are enabled for
upgrading to an optical transmission medium is well known in
the art (column 43 line 63 - column 46 line 1 of Pruett).
Therefore, on this record, we do not find Appellants’ arguments
persuasive for essentially the same reasons articulated by the Examiner in
the Answer, as further discussed above. Accordingly, we sustain the
Examiner’s § 103 rejection R2 of independent claim 9, and the grouped
claims which fall therewith. (See Claim Grouping, supra).
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REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1–13), 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. § 41.41(b)(2). Here, Appellants have not shown good cause. We
additionally note that no new evidence may be submitted in a Reply Brief.
See 37 C.F.R. § 41.41.
DECISION
We affirm the Examiner’s rejection R1 of claims 1 and 5 under
§ 102(b)
We affirm the Examiner’s rejection R2 of claims 2–4, 9–19, and 22
under § 103(a).
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) (2011).

AFFIRMED

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