Ex Parte Hecker et al

Patent Trial and Appeal Board

Jul 18, 2014

10547152 (P.T.A.B. Jul. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NANCY HECKER, ALEXANDER RICHTER,
and CARLOS ENRIQUE SABIDO PONCE
____________________

Appeal 2011-013131
Application 10/547,152
Technology Center 2600
____________________

Before JOSEPH F. RUGGIERO, JEFFREY S. SMITH, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 11–29. Claims 1–10 have been cancelled. Appeal Brief 2. We
have jurisdiction over the appeal of these claims pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.

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STATEMENT OF CASE1
An understanding of the invention can be derived from a reading of
exemplary claim 11, which is reproduced below [bracketed matter added]:
11. A method for transmitting working signals between
network elements via a first connection path and for
transmitting protection signals between network elements via a
second connection path of an optical network, the method
comprising:
[a] transmitting the protection signals via the second connection
path, [b] the protection signals having the same wavelengths as
the working signals and each protection signal and working
signal having the same wavelength being transmitted over the
same fiber, wherein
[c] a polarization of the protection signals is orthogonal relative
to a polarization of further working signals transmitted over at
least sections of the second connection path, [d] the further
working signals having the same wavelength as the protection
signals.

REJECTIONS
The Examiner rejected claims 11–13, 15, 17, 19, and 29 under
35 U.S.C. § 103(a) as being unpatentable over Flanagan (US 5,159,595, Oct.
27, 1992) and Schönfelder (US 6,580,535 B1, June 17, 2003). Ans. 5–10.
The Examiner rejected claims 14, 16, 18, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Flanagan, Schönfelder, and Mistry
(US 2004/0109683 A1, June 10, 2004). Ans. 10–12.

1 Our Decision will make reference to Appellants’ Appeal Brief (“Br.,” filed
Mar. 11, 2011), and the Examiner’s Answer (“Ans.,” mailed June 8, 2011).
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The Examiner rejected claims 21 and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Flanagan, Schönfelder, and Shiragaki
(US 7,280,470 B2, Oct. 9, 2007). Ans. 12–13.
The Examiner rejected claims 23–25, 27, and 28 under 35 U.S.C.
§ 103(a) as being unpatentable over Flanagan, Schönfelder, and Bergano
(N.S. Bergano et al., Bit-Synchronous Polarization And Phase Modulation
Scheme For Improving The Performance of Optical Amplifier Transmission
Systems, Electronics Letters, Vol. 32, No.1, 52–54, Jan. 4, 1996). Ans. 13–
14.
The Examiner rejected claim 26 under 35 U.S.C. § 103(a) as being
unpatentable over Flanagan, Schönfelder, Mistry, and Bergano. Ans. 14–15.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to claims 11–29 that has been argued by the
Appellants. Br. 7–13.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. Ans. 5–19.
We concur with the conclusions reached by the Examiner. We highlight and
address specific findings and arguments for emphasis as follows.
The Examiner finds that Flanagan teaches the preamble and element
[a] of claim 11 (Ans. 5–6; Flanagan Figs. 9 and 10). For elements [b], [c],
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and [d], the Examiner relies upon Schönfelder (Ans. 6; Schönfelder, col. 5,
ll. 20–40). The Examiner finds that:
At the time of invention it would have been obvious to a person
of ordinary skill in the art to modify the nodes of the optical
ring in Flanagan, by integrating optical senders in Flanagan to
send working or protect signals, such that, the working or
further working signal in other sections and protect signals may
be polarization multiplexed. The motivation for the combination
would be to improve bandwidth efficiency in Flanagan, by
eliminating need for additional wavelengths that are required
for protection.

Ans. 6 (emphasis ours).
Appellants’ arguments with respect to the Examiner’s obviousness
rejection of exemplary independent claim 11 mainly focus on whether
Flanagan and Schönfelder are combinable. Br. 10. According to
Appellants,
the most that might have been suggested by considering the
teachings in Flanagan et al. and Schonfelder would have been
making more efficient use of the spectrum by polarization
division multiplexing the signals in the normal traffic of
Flanagan et al. However, one of ordinary skill in the art would
most certainly not have obtained a suggestion to polarize the
normal traffic orthogonally with respect to the protected traffic
signals that are only transmitted when a fault occurs in the ring
transmission system of Flanagan et al.

Br. 11.
In response, the Examiner finds, and we agree,
In normal condition in Flanagan there is no problem of sharing
fibers by different signals since they have dedicated bandwidths
available. Only during a fault condition does this necessity
arise. In Flanagan, unused spare bandwidth has to be set aside.
Hence person of ordinary skill would have looked forward to
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some mechanism to avoid this. Polarization multiplexing as in
Schonfelder eliminates this requirement for spare bandwidth.
This extra bandwidth (spare capacity) can be used for other
applications. Hence efficiency of bandwidth allocation is
increased during fault condition.

Ans. 19.
Appellants’ arguments do not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in the
art and are therefore ineffective to rebut the Examiner’s prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.” (citations
omitted)). This reasoning is applicable here.
We further note that the Examiner has found actual teachings in the
prior art and has provided a rationale for the combination (see Ans. 6,
19). We note that the above-noted teachings suggest that the combination
involves the predictable use of prior art elements according to their
established functions, i.e., traffic protection during faulty conditions and
polarization. There is no requirement that the problem solved by the
secondary reference be discussed by the primary reference to apply the
teachings of the secondary reference in a rejection under 35 U.S.C.
§ 103. The Supreme Court has held that in analyzing the obviousness of
combining elements, a court need not find specific teachings, but rather may
consider “the background knowledge possessed by a person having ordinary
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skill in the art” and “the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). To be nonobvious, an improvement must be “more
than the predictable use of prior art elements according to their established
functions,” id. at 417, and the basis for an obviousness rejection must
include an “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” Id. at 418 (citation and internal
quotation marks omitted). Here, the Examiner has provided a rationale for
the combination. Accordingly, we find that the Examiner has provided
sufficient motivation for modifying Flanagan with the teachings of
Schönfelder.
We observe that no Reply Brief is of record to rebut such findings
including the Examiner’s responses to Appellants’ arguments. Therefore, in
the absence of sufficient rebuttal evidence or argument to persuade us
otherwise, we adopt the Examiner’s findings and underlying reasoning (Ans.
5–19), which are incorporated herein by reference. Consequently, we find
no error in the Examiner’s rejection of claim 11, independent claim 29
which includes substantially the same limitations as claim 11 and which was
argued together (Br. 7–8), and dependent claims 12–28 not argued
separately.
CONCLUSIONS
The Examiner did not err in rejecting claims 11–13, 15, 17, 19, and 29
under 35 U.S.C. § 103(a) as being unpatentable over Flanagan and
Schönfelder.
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The Examiner did not err in rejecting claims 14, 16, 18, and 20 under
35 U.S.C. § 103(a) as being unpatentable over Flanagan, Schönfelder, and
Mistry.
The Examiner did not err in rejecting claims 21 and 22 under
35 U.S.C. § 103(a) as being unpatentable over Flanagan, Schönfelder, and
Shiragaki.
The Examiner did not err in rejecting claims 23–25, 27, and 28 under
35 U.S.C. § 103(a) as being unpatentable over Flanagan, Schönfelder, and
Bergano.
The Examiner did not err in rejecting claim 26 under 35 U.S.C.
§ 103(a) as being unpatentable over Flanagan, Schönfelder, Mistry, and
Bergano.

DECISION
The Examiner’s decision rejecting claims 11–29 is affirmed.
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).

AFFIRMED

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