Ex Parte Effenberger

Patent Trial and Appeal Board

Nov 21, 2013

11740993 (P.T.A.B. Nov. 21, 2013)

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.
11/740,993 04/27/2007 Frank J. Effenberger 4194-04300 2181
89394 7590 11/22/2013
Futurewei Technologies, Inc.
c/o Conley Rose, P.C.
5601 Granite Parkway
Suite 500
Plano, TX 75024
EXAMINER
LIU, LI
ART UNIT PAPER NUMBER
2636
MAIL DATE DELIVERY MODE
11/22/2013 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 FRANK J. EFFENBERGER
____________

Appeal 2011-006857
Application 11/740,9931
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, JOHN A. EVANS, and PETER P. CHEN,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) involving claims to a
passive optical network with partially-tuned lasers. The Examiner has
rejected the claims as failing the written description requirement and as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The real party in interest is Futurewei Technologies, Inc.
Appeal 2011-006857
Application 11/740,993

2
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (“App. Br.” filed Nov. 2, 2010), the Answer
(“Ans.” mailed Jan. 3, 2011), and the Reply Brief (“Reply Br.” filed Mar. 3,
2011).

STATEMENT OF THE CASE
The claims relate to a passive optical network (PON) component
comprising a processor coupled to a plurality of receivers, the processor
configured to monitor a plurality of drifting laser wavelengths and cause the
drifting laser wavelengths to be tuned to a plurality of pass-bands. The
claims further relate to an optical network unit (ONU) comprising a receiver,
a transmitter coupled to the receiver, and a partially-tunable laser coupled to
the transmitter and having a drifting laser wavelength, wherein the drifting
laser wavelength is periodically tuned to one of a plurality of pass-bands.
The claims further relate to a method comprising monitoring a plurality of
drifting laser wavelengths associated with a plurality of pass-bands, and
reconfiguring a plurality of time division multiple access (TDMA) timeslots
when one of the drifting laser wavelengths migrates from one pass-band to
another pass-band. (See Abstract).
Claims 1-10 and 12-20 are on appeal. Claims 1, 10, and 16 are
independent. An understanding of the invention can be derived from a
reading of exemplary Claim 1, which is reproduced below:
1. A passive optical network (PON) component comprising:
a processor coupled to a plurality of receivers, the
processor configured to monitor a plurality of drifting laser
wavelengths transmitted from a plurality of lasers, each of
which is unable to transmit its wavelength within a single pass-
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band, and cause the drifting laser wavelengths to be tuned to a
plurality of pass-bands.

The claims stand rejected as follows2:
1. Claims 1-9 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. (Ans.
3-4).
2. Claims 1-3, 5, and 7-9 are rejected under 35 U.S.C. § 103(a) as
obvious over Lidén3 and Kim.4 (Ans. 4-8).
3. Claims 4 and 6 are rejected under 35 U.S.C. § 103(a) as obvious
over Lidén, Kim, and Lee.5 (Ans. 8-11).
4. Claims 10 and 12-15 are rejected under 35 U.S.C. § 103(a) as
obvious over Kim, Lidén, and Lee. (Ans. 12-16).
5. Claims 16-20 are rejected under 35 U.S.C. § 103(a) as obvious
over Lidén, Kim, and Lee. (Ans. 16-20).
WRITTEN DESCRIPTION
ISSUES AND ANALYSIS
We agree with Appellant’s contention that the originally-filed
Specification provides adequate written description support for the recitation
“a plurality of lasers, each of which is unable to transmit its wavelength
within a single pass-band,” as recited in Claim 1. (App. Br. 9-10).

2 Based on Appellant’s arguments in the Appeal Brief, we will decide the
appeal on the basis of groups of claims as set forth below. See 37 C.F.R.
§ 41.37(c)(1)(vii).
3 Lidén, U.S. Patent No. 6,980,742 B1, issued Dec. 27, 2005.
4 Kim, U.S. Patent App. Pub. No. 2005/0123300 A1, pub. Jan. 9, 2005.
5 Lee, U.S. Patent App. Pub. No. 2006/0002706 A1, pub. Jan. 5, 2006.
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The Examiner finds that the Manual of Patent Examining Procedure
(MPEP) states where
a claim is amended to include subject matter, limitations, or
terminology not present in the application as filed, involving a
departure from, addition to, or deletion from the disclosure of
the application as filed, the examiner should conclude that the
claimed subject matter is not described in that application.

(Ans. 21 (citing MPEP § 2163.02)).
Claim 1 was amended to add the recitation “a plurality of lasers, each
of which is unable to transmit its wavelength within a single pass-band.”
The Examiner finds that the original disclosure describes “partially-tunable”
lasers, but that a partially-tunable laser differs from a laser in general. (Ans.
21). The Examiner finds that the wavelength of a partially-tunable laser is
affected by the same factors that affects lasers, in general, but that fewer of
these factors are controlled in a partially-tunable laser. (Id.). The Examiner
finds that the original Specification does not disclose a laser (interpreted as
broadly as its terminology reasonable allows) that is unable to transmit its
wavelength within a single band-pass. (Ans. 21-22).
Appellant contends that the original Specification (¶¶ 24, 26, and 27)
clearly describes a plurality of lasers, each of which is unable to transmit its
wavelength within a single band-pass.
The Specification discloses:
The ONU [optical network units] laser wavelengths have the
tendency to drift away from the centers of the pass-bands, and
thus the lasers are periodically tuned to account for any laser
wavelength drifting. Because the tuning function is limited, the
OLT [optical line terminal] can selectively direct ONU laser
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wavelengths to migrate from one pass-band to another when the
lasers can no longer be tuned to the center of its pass-band.

(Specification ¶ 24).
We further find that Specification ¶ 25 discloses “fully-tunable lasers”
and the drawbacks of their control. Paragraph 25 further discloses that the
wavelength of “any type of laser” may be affected by various factors, the
control of which will stabilize the wavelength. We find that Specification
¶ 26 discloses “partially-tunable lasers” and their control. We find that the
Claim 1 recitation “a plurality of lasers, each of which is unable to transmit
its wavelength within a single pass-band,” is adequately supported by the
original disclosure. In view thereof, we decline to sustain the rejection of
claims 1-9 under 35 U.S.C. § 112.
OBVIOUSNESS
Claims 1-3, 5, and 7-9
ISSUES AND ANALYSIS
Claim 1
We agree with Appellant’s contention that the combination of Lidén
and Kim fails to teach or suggest “a plurality of lasers, each of which is
unable to transmit its wavelength within a single pass-band,” as recited in
Claim 1. (App. Br. 13). Appellant contends that Lidén’s lasers are able to
transmit at specific wavelengths, either by control of temperature or by other
means. (Id.). The Examiner asserts that an extreme wavelength drift in
Lidén’s lasers that goes uncorrected would result in crosstalk between
adjacent channels. (Ans. 25). Appellant contends that this disclosure
actually represents the undesirable background art that Lidén’s invention
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corrects. Appellant contends that the Lidén invention corrects for any
wavelength drift using fully-tunable, wavelength-specific lasers so as to
prevent any misalignment between the wavelengths and the demultiplexer
filter. (App. Br. 14-15).
The Examiner’s Answer finds that Claim 1 recites “‘a plurality of
laser[s],’” not a plurality of “‘partially-tunable laser[s],’” and that Claim 1
does not specifically indicate the conditions under which the laser is unable
to transmit its wavelength within a single pass-band. (Ans. 25). The
Examiner finds that a “‘partially-tunable laser’” is unable to transmit its
wavelength within a single pass-band unless provision is made for control of
parameters, such as temperature, current, and voltage. (Id.). The Examiner
finds that Lidén discloses “‘an extreme drift in wavelength in an individual
laser will not be corrected and could ultimately lead to crosstalk between
adjacent channels.’” (Id. (quoting Lidén col. 1, ll. 58-60)). Thus, the
Examiner finds that it would have been obvious to a person of skill in the art
that, absent control over certain parameters, any laser is unable to transmit
its wavelength within a single band-pass. (Ans. 26).
Appellant replies that In re Zletz, 893 F.2d 319 (Fed. Cir. 1989),
stands for the proposition that the words of the claim must be given their
plain meaning unless the plain meaning is inconsistent with the
Specification, and contends that the Examiner’s claim construction is
inconsistent with the plain meaning of the words in Claim 1. (Reply. Br. 9).
Specifically, Claim 1 recites, and the Specification describes, “a plurality of
lasers, each of which is unable to transmit its wavelength within a single
pass-band. However, the Examiner construes the claim such that the laser
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‘is able to transmit its wavelength within a single pass-band by controlling
current, voltage and/or other parameters.’” (Id.). Appellant argues that the
Examiner’s claim construction is inconsistent with the plain meaning of the
words in Claim 1, and consequently, contrary to the claim construction
principles defined by the Federal Circuit. (Id.). Appellant also replies that
Lidén discloses that one of the problems associated with the prior art is that
the wavelengths may drift as they are propagated through the optical
distribution network (ODN). (Reply Br. 10). Lidén’s invention is directed
to a solution of this problem:
“In the light of the disadvantages associated with the prior art[,]
it is an object of the present invention to provide an
arrangement and procedure for controlling the wavelengths of
channels in an optical WDM system which is reliable, simple
and inexpensive in its implementation.”

(Id.) (alteration in original) (quoting Lidén col. 2, ll. 7-11).
Appellant is persuasive that Lidén teaches that the wavelength drift of
an optical laser must be prevented by a control mechanism in order that the
laser be suitable for use in an optical communication system. We find that
Appellant’s invention relates to an optical communication system wherein
the laser wavelength is allowed to drift, i.e., a “processor configured to
monitor a plurality of drifting laser wavelengths.” (Claim 1). We find that a
person of skill in the art, intending to achieve Appellant’s invention, would
not take Lidén as a point of departure because Lidén teaches that one must
control the laser so as to prevent drifting laser wavelengths. The Examiner
finds that Kim teaches “to control the wavelengths of the optical network
unit in the PON [passive optical network] system.” (Ans. 5, 34). Thus,
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neither Lidén, nor Kim, teaches a PON system wherein the laser is allowed
to drift.
In view of the forgoing, we decline to sustain the rejection of Claim 1;
nor do we sustain the rejection of Claims 2, 3, 5, and 7-9, which depend
from Claim 1.
Claims 4 and 6
ISSUES AND ANALYSIS
The Examiner applies Lidén and Kim, as discussed above (Ans. 8)
and cites Lee as teaching that the wavelength may be controlled by an
optical line terminal (OLT). (Ans. 9).
As discussed above, Appellant’s invention relies on a drifting
wavelength, whereas the cited art relates to means of controlling a
wavelength. We, therefore, decline to sustain the rejection of claims 4 and
6.
Claims 10 and 12-20
ISSUES AND ANALYSIS
“Drifting laser wavelength”
We agree with Appellant’s contention that the cited art does not teach
or suggest “a partially tunable laser that has a wavelength that drifts between
pass-bands,” as variously recited in Claims 10 and 16. (App. Br. 18).
Appellant contends that Lidén teaches fully-tunable lasers that maintain
specific optical wavelengths such that there is no migration between pass-
bands, and that Kim and Lee each teach wavelength-locked lasers that also
do not migrate between pass-bands. (App. Br. 18-19).
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The Examiner finds that Kim teaches a “wavelength-tunable” laser,
the wavelength of which may be controlled by a “wavelength control
center.” (Ans. 29). The Examiner finds that Lee teaches FP-LDs (i.e.,
Fabry-Perot Laser Diodes, see Lee, ¶ 4) that are not wavelength-locked. The
Examiner cites Lee, Figure 4, but the Answer does not support this finding
with specific, textual disclosure. (Ans. 29). We find that Lee teaches the
FP-LD is, in fact, wavelength-locked:
Korean Pat. No. 325687 filed by and issued to the present
applicant discloses a light source for wavelength division
multiplexing optical communication using a Fabry-Perot Laser
Diode (FP-LD) wavelength-locked by injected incoherent light.
In the Korean Pat. No. 325687, there is presented a light source,
in which narrowband incoherent light is externally injected into
a FP-LD so that some of the oscillation modes having
wavelengths different from that of the injected light are
suppressed and the output wavelength of the FP-LD is caused
to be locked to a wavelength identical with that of the injected
light.

(Lee, ¶ 4; see also Abstract (“The passive optical network includes . . .
wavelength-locked Fabry Perot laser diodes . . . “). Thus, we agree with
Appellant that the cited art does not teach “a partially tunable laser that has a
wavelength that drifts between pass-bands.” In view thereof, we decline to
sustain the rejection of Claims 10 and 16, nor of Claims 12-15, which
depend from Claim 10, and Claims 17-20, which depend from Claim 16.

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DECISION
The rejection of claims 1-9 under 35 U.S.C. § 112 is REVERSED.
The rejection of claims 1-10 and 12-20 under 35 U.S.C. § 103 is
REVERSED.

REVERSED

msc