Ex Parte Fenwick et al

Patent Trial and Appeal Board

Mar 20, 2013

10980521 (P.T.A.B. Mar. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID MARTIN FENWICK, RICHARD J. LUEBS,
TERREL L. MORRIS, and DUANE A. WEGHER
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Appeal 2010-011218
Application 10/980,521
Technology Center 2600
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Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
The Patent Examiner finally rejected claims 1-3, 5-13, and 15-31.
Claims 4 and 14 were withdrawn. (App. Br. 2). Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
INVENTION
This invention relates to an optical bus system. (Spec. 1). Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system comprising:
at least first and second processing units;
an optical bus system coupled to the at least first and
second processing units, wherein the optical bus system
includes a plurality of optical switches, each optical switch
comprising at least a first switch state for directing light in at
least a first direction and a second switch state for directing
light in at least a second direction; and
an optical bus controller coupled to the optical bus
system.
(Disputed limitation emphasized).

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REJECTIONS1
R1. Claims 1, 5, 8-11, 15, 18-22, 25, and 27 stand are rejected under 35
U.S.C. § 102(e) as being anticipated by Ozeki (U.S. Patent 6,651,139).
R2. Claims 2, 3, 6, 7, 12, 13, 16, 17, 23, 24, 26, and 28-31 stand rejected
under 35 U.S.C. §103(a) as being unpatentable over the combined teachings
and suggestions of Ozeki and Lenz, (Roland Lenz, "Introduction to all
optical switching technologies").

ANALYSIS
R1. CLAIMS 1, 11, 21, AND 27
Issue: Under §102, did the Examiner err in finding that Ozeki
expressly or inherently discloses "an optical bus controller coupled to the
optical bus system," within the meaning of claim 1, and the commensurate
language of claims 11, 21, and 27?
The Examiner finds:
When optical switches are utilized for the optical bus, a
controller that controls the optical switches has to be connected
to the optical switches in order for the system to function
normally. Without a controller to control the switches, the
system employing optical switches for the optical bus simply
would not work. Therefore, claim 1 is clearly and undoubtedly
anticipated by prior art Ozeki with its implicit and inherent
teachings.
(Ans. 7).

1 In the Answer, the claim numbers in the heading for rejection R1 is
missing claim 21. (See Ans. 4). The claims listed in the Appeal Brief for
rejection R1 are also incorrect, as claims 21, 25, and 27 are missing. (App.
Br. 6). It is apparent these are oversights and we address the rejections
accordingly.
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Appellants contend:
As stated in the Appeal Brief, the Examiner has not supplied a
factual basis to support the Examiner's assertion that Ozeki
describes an optical bus controller or a means for adjusting the
distribution of optical data communications, as described in
claims 1, 11, 21, and 27.
(Reply Br. 3).
"Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates." MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365
(Fed. Cir. 1999). Once a prima facie case of anticipation has been
established, the burden shifts to the Appellant to prove that the prior art
product does not necessarily or inherently possess the characteristics of the
claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as
here, the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed
product.”). See also In re Spada, 911 F.2d 705, 708-09 (Fed. Cir. 1990).
On this record, Appellants' contentions are not persuasive. Appellants
do not cite to a definition of "optical bus controller" in the Specification.2

2 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
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The Examiner finds that "a controller that controls the optical switches has
to be connected to the optical switches in order for the system to function
normally." (Ans. 7). The Examiner cites to Ozeki Figure 1 and column 5,
lines 1-41, as evidence that the Ozeki system necessarily (inherently)
includes an optical bus controller. (Ans. 4; 6-7). Ozeki discloses
"[a]lthough not shown in FIG. 1, an arbiter unit is included which executes
the arbitration for avoiding the contention in the signal communications and
the memory accesses between the processors." (Col. 5, ll. 27-30; See Fig.
3). We also observe that in disputing the Examiner's finding of inherency,
the Appellants admit:
"[i]n order to prevent two or more processors from transiting at
the same time and thereby degrading each other's optical
signals at the bus interfaces 14a and 14b, Ozeki includes an
arbiter unit (col. 5, lines 27-30) to avoid detection of two or
more optical signals at each of the bus interfaces 14a and 14b."
(App. Br. 8, emphasis added). Ozeki Figure 3 shows the arbiter unit
connected to the Bus interface 12 (light switch). Thus, we find Ozeki's
arbiter unit falls within the scope of the broadest reasonable interpretation of
the claimed "an optical bus controller" because the arbiter unit controls the
bus interfaces 12 of the optical bus system 13 to "avoid[] the contention in
the signal communications and the memory accesses between the
processors." (Col. 5, ll. 27-30). Our interpretation is fully consistent with
Appellants' Specification where the optical bus manager 110 (optical bus
controller) controls loads (contention) in the optical system bus. (Spec. ¶
[0019]; claim 7). We also find Ozeki's arbiter unit describes the claimed

meaning; however, a patentee must clearly express that intent in the written
description.").
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"optical bus controller coupled to the optical bus system" (bus system 13
including interface bus 12 (optical switches)) because Ozeki's arbiter unit is
attached to the bus interfaces 12. (See Fig. 3).
For these reasons, on this record, we are not persuaded of Examiner
error. Therefore, we sustain the Examiner's rejection of claims 1, 11, 21,
and 27.

R1. CLAIMS 5, 8-10, 15, 18-20, AND 22
Issue: Under §102, did the Examiner err in finding that Ozeki
expressly or inherently discloses "the optical bus controller changes the state
of at least the optical switch," within the meaning of claim 5 and
commensurate language of claim 15 and "the optical bus controller
configures the optical bus to provide a first communication channel to the
first processing unit and second communication channel to the second
processing unit," within the meaning of claim 10, and commensurate
language of claims 8, 9, 18-20, and 22?
Appellants' contend the Examiner did not adequately support the
finding that Ozeki inherently discloses the limitations at issue. (App.
Br. 11). We are not persuaded by Appellants' contentions for the reasons
given above with respect to claims 1, 11, 21, and 27. Appellants do not cite
to a definition of "optical bus controller" and "communication channel" in
the Specification.3 Ozeki's arbitrator unit communicates with and controls
the bus interfaces including light switches of the optical bus system 13 to
"avoid[] the contention in the signal communications and the memory

3 See footnote 2.
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accesses between the processors." (Fig. 3; Col. 5, ll. 27-30). Thus, we find
Ozeki's arbitrator unit that controls the bus interfaces falls within the scope
of the broadest reasonable interpretation of "the optical bus controller [that]
changes the state of at least the optical switch." (Claim 5; see Ozeki, col. 5,
ll. 27-30; ll. 1-41; see also Fig. 3). Furthermore, we find Ozeki's arbitrator
unit discloses the claimed "optical bus controller [that] configures the optical
bus to provide a first communication channel to the first processing unit and
second communication channel to the second processing unit." (Claim 10;
see Ozeki, col. 5, ll. 27-30, ll. 1-41; see also Figs. 1, 3; Ans. 4). In
particular, Ozeki discloses "connecting each module with an optical fiber or
optical switch" (communications channel). (col. 5, ll. 36-37; see also Ans.
7). Ozeki additionally discloses intensity, polarization, and wavelength
communication channels. (Col. 6, ll. 34-36, 54-59). For these reasons, on
this record, we are not persuaded of Examiner error. Accordingly, we
sustain the rejection of claims 5, 8-10, 15, 18-20, and 22.

R1. CLAIM 25 AND R2. CLAIM 26
Issue: Under §102, did the Examiner err in finding that Ozeki
discloses "means for monitoring the status of the plurality of means for
processing data," within the meaning of claim 25?
Appellants contend:
Finally, in rejecting claim 25, the Examiner has offered no
evidence that each and every element as set forth in claim 25
can be found either expressly or inherently in Ozeki. In
particular, claim 25 includes the element:
"means for monitoring the status of the plurality of
means for processing data[.]"
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Yet, the Examiner has not identified a means or any other
device for monitoring the status of the plurality of processors
11a-11d of Ozeki . . . .
(App. Br. 10).
Appellants' contentions are persuasive because the Examiner fails to
identify any statement in Ozeki that discloses the limitation at issue. (See
Ans. 4). To affirm the Examiner on this record would require speculation on
our part. We decline to engage in speculation. Therefore, we reverse the
Examiner's rejection of claim 25 and of claim 26, which depends therefrom.

R2. CLAIMS 6, 7, 16, 17, 24, 28, AND 29
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
"wherein the optical bus controller changes the state of at least one optical
switch based on monitoring a fault status," within the meaning of claim 6
and the commensurate language of claims 16 and 28, and "wherein the
optical bus controller changes the state or at least one optical switch based
on monitoring a load status," within the meaning of claim 7, and the
commensurate language of claims 17 and 29, and claim 24 which is
commensurate with claim 6 or claim 7?
The Examiner took Official Notice that it was “well known in the art
to change the state of an optical switch based on monitoring a fault and load
status.” (Non-Final Office Action dated April, 9, 2009, page 4). Appellants
responded to the Examiner's taking of Official Notice with a demand for
evidence to support the rejection. (Reply to Office Action filed July 8, 2009,
pages 13-14). However, Appellants did not state why the noticed fact is not
considered to be common knowledge or well-known in the art. (Id.). See
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MPEP § 2144.03(C)(“To adequately traverse such a finding, an applicant
must specifically point out the supposed errors in the examiner’s action,
which would include stating why the noticed fact is not considered to be
common knowledge or well-known in the art. See 37 CFR
1.111.”)(Emphasis added). An adequate traverse of the Examiner’s taking
of Official Notice must contain adequate information or argument to create
on its face a reasonable doubt regarding the circumstances justifying the
Examiner’s notice of what is well known to one of ordinary skill in the art.
In re Boon, 439 F.2d 724, 728 (CCPA 1971).
The Examiner provides new references in the Answer to support the
taking of Official Notice in response to Appellants’ demand for evidence.
(Ans. 10-13). However, Appellants contend in the Reply Brief that the
Examiner presented new grounds of rejection by making new arguments and
citing new references to support the taking of Official Notice. (Reply Br. 4).
Our review of the record indicates that Appellants did not file a
petition under 37 CFR 1.181(a) within two months from the mailing of the
Examiner’s Answer requesting that a ground of rejection set forth in the
Answer be designated as a new ground of rejection:
If appellant believes that an examiner’s answer contains a
new ground of rejection not identified as such, appellant may
file a petition under 37 CFR 1.181(a) within two months from
the mailing of the examiner’s answer requesting that a ground
of rejection set forth in the answer be designated as a new
ground of rejection. Any such petition must set forth a detailed
explanation as to why the ground of rejection set forth in the
answer constitutes a new ground of rejection. Any allegation
that an examiner’s answer contains a new ground of rejection
not identified as such is waived if not timely raised (i.e., by
filing the petition within two months of the answer) by way of a
petition under 37 CFR 1.181(a).
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MPEP §1207.03(IV)(emphasis added).
Therefore, Appellants have waived the allegation that the Examiner’s
Answer contains a new ground of rejection because Appellants did not file a
petition under 37 CFR 1.181(a) within two months from the mailing of the
Examiner’s Answer. See also MPEP §1207.03(IV).
Moreover, because Appellants have not met their burden of traversing
the Examiner’s rejection by stating why the noticed fact is not considered to
be common knowledge or well-known in the art, on this record, we are not
persuaded of Examiner error. See MPEP § 2144.03(C); see also Boon, 439
F.2d at 728. Although the Examiner did provide references in response to
Appellants’ demand for evidence, the Examiner had no burden to provide
evidence in the next office action to maintain the rejection, since Appellants
failed to adequately traverse the Examiner’s taking of Official Notice by
stating why the noticed fact is not considered to be common knowledge or
well-known in the art. (Id.; see also 37 CFR § 1.104(c)(2)).
For these reasons, we sustain the Examiner's rejection of claims 6, 7,
16, 17, 24, 28, and 29.4

R2. DEPENDENT CLAIMS 2, 3, 12, 13, 23, 30, AND 31
Appellants contend that dependent claims 2, 3, 12, 13, 23, 30, and 31
are patentable by virtue of their dependency from parent claims 1, 11, 21,
and 27. However, we find no defect in the Examiner’s findings for the
reasons discussed above. Therefore, we sustain the Examiner's rejection of
these claims.

4 As discussed above, we reverse the rejection R2 of claim 26 because claim
26 depends from reversed independent claim 25.
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DECISION
We affirm the Examiner's rejection R1 of claims 1, 5, 8-11, 15, 18-22,
and 27 under § 102.
We affirm the Examiner's rejection R2 of claims 2, 3, 6, 7, 12, 13, 16,
17, 23, 24, 28, 29, 30, and 31 under § 103.
We reverse the Examiner's rejection R1 of claim 25 under § 102.
We reverse the Examiner's rejection R2 under §103 of claim 26
(which depends from reversed claim 25).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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