Ex Parte Lin et al

Patent Trial and Appeal Board

Mar 25, 2016

13300130 (P.T.A.B. Mar. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/300, 130 11/18/2011
24628 7590 03/25/2016
Husch Blackwell LLP
Husch Blackwell Sanders LLP Welsh & Katz
120 S RIVERSIDE PLAZA
22NDFLOOR
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Philip J. Lin
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PBOl 6708
0007 /8378/87233/lOOD
EXAMINER
PASCAL, LESLIE C
ART UNIT PAPER NUMBER
2636
MAILDATE DELIVERY MODE
03/25/2016 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 PHILIP J. LIN and JAMES D. MILLS
Appeal2014-005681
Application 13/300,130
Technology Center 2600
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 20-25 and 29-35. App. Br. 2. 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Throughout this opinion, we refer to (1) the Appeal Brief filed January 24,
2014 ("App. Br."); (2) the Examiner's Answer mailed March 10, 2014
("Ans."); and (3) the Reply Brief filed April 7, 2014 ("Reply Br.").
Appeal2014-005681
Application 13/300,130
STATEMENT OF THE CASE
Appellants' invention is an integrated, optical add-drop multiplexer.
Spec. 1. Known optical multiplexers are formed from discrete components.
Id. Appellants, however, integrate multiple functions into a single device,
replacing many discrete components and reducing cost. Id. at 2. In one
embodiment, Appellants describe how these add-drop multiplexers replace
passive splitters to form a collapsed-ring network. See id. at 8-9.
Claim 20 is reproduced below:
1. A wavelength division multiplexing
communications system comprising:
a plurality of optical fibers;
a plurality ofintegrated, optical add/drop modules wherein
the modules each include at least one integrated receiver module
embodied as an integrated circuit chip which carries an optical
input, coupled to a respective optical fiber, and a plurality of
electrical outputs, the integrated circuit chip incorporates a
wavelength demultiplexer and optical detectors integrated into
the integrated circuit chip, and an integrated transmitter module
embodied as another integrated circuit chip which carries a
plurality of electrical input ports and an optical output, the other
integrated circuit chip incorporates monochromatic optical
sources and a multiplexer integrated into the other integrated
circuit chip, the optical output coupled to a respective optical
fiber where each integrated circuit chip includes a plurality of
waveguides integrally formed on a respective substrate; and
a controllable electrical switching fabric for coupling
some of the electrical outputs to some of the electrical input ports
with signal input and output ports for inputting or outputting
information carrying electrical signals.
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Application 13/300,130
THE REJECTIONS
The Examiner rejected claims 29-35 under 35 U.S.C. § l 12(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite. Ans. 2.
The Examiner rejected claims 20-25 under 35 U.S.C. § 103(a) as
unpatentable over Cao (US 6,407 ,839 B 1; issued June 18, 2002), Imoto
(US 4,909,584; issued Mar. 20, 1990), and DeMartino (US 6,567,429 Bl;
issued May 20, 2003). Ans. 2-3.
The Examiner rejected claims 29-31 and 33 under 35 U.S.C. § 103(a)
as unpatentable over Cho (US 2002/0171897 Al; published Nov. 21, 2002).
Ans. 3.
The Examiner rejected claim 32 under 35 U.S.C. § 103(a) as
unpatentable over Cho and Mao (US 5,926,590; issued July 20, 1999).
Ans. 3.
The Examiner rejected claim 34 and 35 under 35 U.S.C. § 103(a) as
unpatentable over Cho, Cao, and Imoto. Ans. 3.
THE INDEFINITENESS REJECTION
Contentions
The Examiner finds that independent claim 29 is vague and indefinite.
Ans. 2. First, the Examiner finds that having an add-drop node on opposing
ends of the pairs contradicts the requirement that some pairs are coupled via
a corresponding optical link. Ans. 2, 4. Second, the Examiner finds that the
recited "coupling" is indefinite because it does not clearly explain how the
fiber pairs are connected to the add-drop nodes. Ans. 2.
Appellants, conversely, contend that claim 29 is definite. App. Br. 6-
7; Reply Br. 2-3. In particular, Appellants argue that claim 29 does not
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Application 13/300,130
require that an add-drop module be connected directly to the opposing ends
of a pair as stated by the Examiner. App. Br. 6. For example, Appellants
argue that optical fiber pairs can be connected between two or five add-drop
nodes. Id. To illustrate, Appellants point to Figure 8B of their disclosure.
Id.; Reply Br. 2-3.
Analysis
We begin by noting a key inconsistency with the Examiner's
indefiniteness rejection. The Examiner rejects claims 29-35 as indefinite
(Ans. 2), yet only claims 30, 34, and 35 depend from independent claim 29.
Claims 31-33 depend from independent claim 20, which lacks the language
in claim 29 that is said to render the claims 29-35 indefinite. See Ans. 2, 4.
Therefore, the Examiner's indefiniteness rejection of claims 31-33 is
erroneous for that reason alone.
Turning to the merits of the rejection, claim 29 recites, in pertinent
part, "add/drop nodes on opposing ends of each of the plurality of pairs of
optical fibers." In a second limitation, the claim further requires that "some
of the pairs terminate at respective add/drop nodes while others are coupled
via a corresponding one of the add/ drop nodes to selected ones of other fiber
pairs."
We are not convinced that these limitations create a contradiction, or
are otherwise inconsistent to render the claim indefinite. The Examiner's
rejection states that the claim requires that "some ends are connected to add-
drop nodes and others are coupled to corresponding links." Id. (emphasis
added). The Examiner further states that the claim does not resolve "how a
pair of fibers can be coupled via a corresponding link of optical fiber . ... "
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Application 13/300,130
Id. at 4 (emphasis added). But claim 29 does not recite that the fibers are
coupled to links or coupled via links.
Instead, claim 29 recites "the coupling links fibers." Ans. 2 (emphasis
added). That is, the word "links" is a verb in claim 29, not a noun as the
Examiner uses in explaining the rejection. See id. at 2, 4. Although the
Specification discusses optical fiber links (see, e.g., Spec. 8), claim 29 does
not recite this feature.
The Examiner's purported contradiction (Ans. 2) is resolved by
noticing that claim 29 recites that the fiber pairs are coupled to other fiber
pairs via the add-drop nodes-not links of optical fiber. So, when the two
allegedly contradictory limitations are read together, claim 29 calls for
(1) the add-drop nodes "on opposing ends" of the fiber pairs, and (2) some
pairs are coupled via these add-drop nodes to other fiber pairs of a certain
kind. Accordingly, we find no contradiction or inconsistency between these
limitations to render the claim indefinite.
Referring to Figure 8B of the present application, Appellants provide
an example of how some pairs are coupled to illustrate the second limitation
discussed above, "some of the pairs terminate at respective add/drop nodes
while others are coupled via a corresponding one of the add/drop nodes to
selected ones of other fiber pairs." See Reply Br. 2-3.2 For example, Figure
8B shows optical fiber pair 1 lOa and 1 lOb coupled via add-drop node 130a
2 Appellants' explanation contains an apparent typographical error in the last
line of page 2 of the Reply Brief. Specifically, there is no add-drop node
labeled with the reference numeral "130" in Figure 8B. Therefore, we
presume that Appellants intended to refer to reference numeral as 130c,
which terminates the optical fiber pairs that are collectively labeled 11 Oc.
Accordingly, we deem this apparent typographical error harmless.
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Application 13/300,130
to other fiber pairs (collectively labeled as 11 Oc ), just as recited in claim 29.
See id. at 3. Figure 8B also shows that fiber pair 11 Oc terminates at add/ drop
node 130a, 130c, 130d, and 130e. See id. at 2.
Accordingly, we do not sustain the Examiner's indefiniteness
rejection of claim 29 or dependent claims 30, 34, and 35, rejected under the
same rationale. Moreover, because claims 31-33 do not depend from
independent claim 29 as noted above, we likewise will not sustain the
Examiner's indefiniteness rejection of claims 31-33.
THE OBVIOUSNESS REJECTION OVER CAO, IMOTO, AND
DEMARTINO
Contentions
The Examiner finds that Cao discloses every recited element of claim
20 except for the integrated receiver and transmitter devices, but cites Imoto
and DeMartino as teaching these features in concluding that the claim would
have been obvious. Ans. 2-3. In particular, the Examiner cites Imoto's
background discussion of how an optical multiplexer can be integrated into a
one-chip, monolithic device. Id. (citing Imoto, col. 1, 11. 6-13). The
Examiner further points to Imoto' s optical and electrical components as
being "integrated as a whole." Ans. 3--4 (citing Imoto, col. 7, 11. 41--43).
Appellants point out that claim 20 requires integrated-circuit chips.
Reply Br. 3. In Appellants' view, Imoto merely integrates optical
components. App. Br. 7-8. According to Appellants, none of the references
integrate electro-optic chips. Id. at 8. Furthermore, Appellants contend that
the Examiner has not established a prima facie case of obviousness, and that
none of the references address the problem solved by the invention. Id. at 9-
12.
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Issues
1. Under§ 103, has the Examiner erred in rejecting claim 20 by
finding that Cao, Imoto, and DeMartino collectively would have taught or
suggested integrating electrical and optical components on a chip, as recited
in claim 20?
2. Is the Examiner's proposed combination supported by articulated
reasoning with some rational underpinning to justify the Examiner's
obviousness conclusion?
Analysis
We begin by noting that the Examiner's rejection (Ans. 2-3) is not a
model of clarity. Although this lack of clarity makes discerning the
Examiner's position difficult, the Examiner nonetheless articulates findings
sufficiently on this record to support the obviousness conclusion.
For example, the Examiner does not use the term "chip" in claim 20's
rejection. Id. Instead, the Examiner's rejection refers to a monolithic device
in Imoto. Id. at 3. But Imoto's monolithic device is indeed a chip. See
Imoto, col. 1, 11. 6-13, 25-28. So we understand the Examiner's position to
be that Imoto's one-chip, monolithic-type device (id.) is evidence that the
recited integrated-circuit chip would have been obvious. Ans. 3. That Imoto
refers to one-chip monolithic device in the Background Art section (Imoto,
col. 1, 11. 25-28) only bolsters the Examiner's conclusion in this regard.
In arriving at this conclusion, the Examiner combines multiple
embodiments within Imoto. Ans. 2-3. First, the Examiner cites the
embodiment in Figure 4. Id. at 3. In Figure 4's embodiment, the
arrangement contains electrical components---e.g., driving circuit 17 (Imoto,
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Application 13/300,130
col. 7, 11. 27-31}-and optical ones---e.g., photodiodes 14 and 15 (id.,
Fig. 4(a)). Although Imoto does not expressly state that a chip-based
integration is used for Figure 4's components (id., col. 7, 11. 41--43), the
Examiner nonetheless points to Imoto' s one-chip, monolithic-type device in
the background section. Ans. 2-3 (citing Imoto, col. 1, 11. 6-13, 25-28).
Read together, Examiner combines Imoto's integrating electrical and optical
components with the known technique of integrating components on a chip.
See Ans. 3.
The Examiner's obviousness conclusion is supported by a suggestion
from Imoto. As noted above, consistent with the Examiner's articulated
rationale (see id.), Imoto explains that one-chip, monolithic-type devices are
known to reduce production costs. See Imoto, col. 1, 11. 25-28. In light of
these collective teachings, the Examiner's obviousness conclusion is
reasonable.
Appellants' argument against Imoto amounts to an individual attack.
App. Br. 7-8; Reply Br. 3. This individual attack does not show non-
obviousness where, as here, the rejection is based on a combination of
teachings. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Specifically, Appellants do not dispute that Imoto integrates optical
components on "a device." App. Br. 8. Rather, Appellants argue that
Imoto's integrating optical and electrical components does not "necessarily
involve the use of integrated circuit chips." Reply Br. 3 (emphasis added).
But this argument is unavailing, for the rejection is based on obviousness,
not anticipation. Nor have Appellants addressed the Examiner's reliance on
multiple embodiments within Imoto (Ans. 3). As such, Appellants'
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Application 13/300,130
arguments (Reply Br. 3) do not persuasively rebut the Examiner's
obviousness conclusion drawn from the prior art's collective teachings.
We are also unpersuaded by Appellants' contention that the Examiner
did not establish a prima facie case of obviousness. App. Br. 9-12.
Notably, this argument is not based on any discussion of the Examiner's
findings. See id. at 9-10. Instead, Appellants discuss legal precedent
pertaining to obviousness (id. at 9-11) followed by a conclusion quoting
claim language (id. at 11-12). Moreover, Appellants reiterate that none of
the references provide an integrated add-drop module that is said to have
solved the problem of the claimed invention. Id. at 12. According to
Appellants, because this concept was not recognized, there is purportedly no
reason to combine the references. Id. at 12.
These contentions are unavailing. First, we are unpersuaded by
Appellants' argument regarding providing an integrated add/ drop module for
the reasons discussed previously. Second, to the extent that Appellants
contend that the prior art must recognize the problem to be solved to provide
a reason to combine the cited references (see App. Br. 12), we disagree. To
be sure, the nature of the problem to be solved can provide a motivation to
combine references. DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006). But that is not the
only source of such a motivation to combine references: it can also stem
from common knowledge in the art, or the prior art considered as a whole.
See id. Because the Examiner's articulated rationale to combine the cited
references is based at least on the prior art as a whole and common
knowledge in the art (see Ans. 3), the Examiner's proposed combination is
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Application 13/300,130
supported by articulated reasoning with some rational underpinning to
justify the Examiner's obviousness conclusion.
On this record, then, we are not persuaded that the Examiner erred in
rejecting claim 20, and claims 21-25,3 not argued separately with
particularity (App. Br. 7-10; Reply Br. 4).
THE OBVIOUSNESS REJECTION OVER CHO
Claims 29 and 30
We also sustain the Examiner's rejection of claim 29 reciting various
features that the Examiner concludes are obvious in view of Cho. Ans. 3.
Appellants allege that the Examiner has not established a prima facie
case of obviousness. Id. at 8-12. We disagree. By finding that Cho's
repeaters are the recited add-drop nodes, and concluding that the recited
configuration would have been obvious (Ans. 3 (citing Cho i-f 11)), the
Examiner established a case of obvious that shifted the burden to Appellants
to rebut.
But that rebuttal has not been persuasively demonstrated on this
record. That is, Appellants do not specifically identify error in the
Examiner's position. Instead, Appellants allege that the Office Action does
not address the recited limitations without identifying any specific
deficiency in the Examiner's findings and conclusions. See App. Br. 9. But
this is not a case where the rejection is so uninformative that it prevents
Appellants from recognizing and countering the grounds of rejection. See In
3 The Manual of Patent Examining Procedure (MPEP) requires that each
claim end with a period. MPEP § 608.0l(m), 9th ed. (Nov. 2015). Claim
21, however, does not. We leave to the Examiner to address this matter.
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Application 13/300,130
re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Rather, the Examiner's
articulated position is based on Cho's repeaters (Cho i-f 11), which, in the
Examiner's view, is evidence of obviousness (Ans. 3}-a finding that is
articulated in the rejection and, therefore, subject to rebuttal.
Although Appellants allege that Cho does not disclose the recited
features, Appellants do not explain why the Examiner's findings and
conclusions are deficient. In fact, Appellants respond to the Examiner's
Answer by discussing only Cao, Imoto, and DeMartino (Reply Br. 4}-none
of which were cited in the obviousness rejection of claim 29. See Ans. 3.
We are, therefore, not persuaded that the Examiner erred in rejecting
claims 29 and 30.
Claim 31
We, however, do not sustain the Examiner's obviousness rejection of
claim 31. Here, the "rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection." See Jung, 637 F.3d at 1362 (internal citations and quotation
marks omitted).
Specifically, claim 31 depends from independent claim 20. As
discussed previously, the Examiner rejects claim 20 as obvious over Cao,
Imoto, and DeMartino. Ans. 2-3. But without any accompanying
explanation, the Examiner states that dependent claim 31 is rejected as
obvious over Cho alone. Id. at 3. Because the Examiner does not discuss
any of the limitations of claim 31, or otherwise explain how Cho relates to
claims 20 or 31, the Examiner failed to make a prima facie case of
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obviousness for claim 31. Consequently, the Examiner's rejection of claim
31 is erroneous for that reason alone.
Claim 33
We, likewise, do not sustain the Examiner's obviousness rejection of
claim 33. Like claim 31, claim 33 depends from independent claim 20. As
discussed previously, the Examiner rejects claim 20 as being obvious over
Cao, Imoto, and DeMartino. Ans. 2-3. The Examiner's rejection of
dependent claim 33, however, does not rely on any of these references. Id.
Rather, the Examiner finds that claim 33 is obvious over Cho alone. Id. Yet
the Examiner does not compare Cho with the limitations of claim 20. Id.
Because the rejection lacks any further explanation in this regard, the
Examiner's obviousness rejection of claim 33 is erroneous for that reason
alone.
THE OBVIOUSNESS REJECTION OVER CHO AND MAO
For reasons similar to those indicated for claim 33, we also do not
sustain the Examiner's rejection of claim 32 (Ans. 3). Like claim 33, claim
32 depends from claim 20. But again, the Examiner rejects claim 32 over
references not used in claim 20's rejection, without any further explanation
for this inconsistency. Id. Therefore, the Examiner's obviousness rejection
of claim 32 is erroneous for that reason alone.
THE OBVIOUSNESS REJECTION OVER CHO, CAO, AND IMOTO
We do, however, sustain the Examiner's obviousness rejection of
claims 34 and 35 (id.). Appellants do not squarely address the Examiner's
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rejection of these claims. See App. Br. 7-12; Reply Br. 2--4. Nevertheless,
to the extent that Appellants' earlier arguments apply to these claims, we are
unpersuaded by these arguments for the reasons discussed previously.
CONCLUSION
The Examiner erred in rejecting claims 29-35 under§ 112.
Under§ 103, the Examiner did not err in rejecting claims 20-25, 29,
30, 34, and 35, but erred in rejecting claims 31-33.
DECISION
The Examiner's decision rejecting claims 20-25 and 29-35 is
affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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