Ex Parte Mahlab

Board of Patent Appeals and Interferences

Aug 29, 2012

09936440 (B.P.A.I. Aug. 29, 2012)

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.
09/936,440 01/25/2002 Uri Mahlab MAHLAB=2 3860
1444 7590 08/29/2012
Browdy and Neimark, PLLC
1625 K Street, N.W.
Suite 1100
Washington, DC 20006
EXAMINER
BELLO, AGUSTIN
ART UNIT PAPER NUMBER
2613
MAIL DATE DELIVERY MODE
08/29/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte URI MAHLAB
____________________

Appeal 2011-000793
Application 09/936,440
Technology Center 2600
____________________

Before DEBRA K. STEPHENS, MICHAEL R. ZECHER, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 09/936,440
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 45-55, 57, 59, 66-73, 82-84, and 86. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

The claims are directed to method and apparatus for routing data-
carrying optical signals. See generally Spec. 1: 5-8. Claim 45, reproduced
below with disputed claim limitations in italics, is representative of the
claimed subject matter:
45. In a telecommunication system, a method for
routing optical data signals using a first communication path
comprising at least one optical fiber extending between at least
two network elements of the telecommunication system for
carrying optical data signals separated from their associated
optical addressing signals, and a second communication path
comprising one or more optical fibers extending between at
least two network elements of the telecommunication system
for carrying optical addressing signals separated from their
associated optical data signals, each of said at least two network
elements having routing capabilities, the method comprising the
steps of
providing a combination of said optical addressing
signals to provide addressing information required for
establishing an address for routing the optical data signals, and
providing at least one of said at least one optical fiber
comprised in said first communication path for carrying said
optical data signals separated from their associated optical
addressing signals different from any of the one or more optical
fibers comprised in said second communication path, and
wherein said optical data signals being conveyed
separately from their associated optical addressing signals
along said at least one optical fiber were generated at a
plurality of different network elements, each of said plurality of
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different network elements having routing capabilities.
(Emphases added)

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Barnsley
Nir
US 5,488,501
US 6,160,652
Jan. 30, 1996
Dec. 12, 2000

REJECTIONS
The Examiner made the following rejections:
Claims 45-47, 53, 55, 57, 66, 72 , 82, 83, and 86 stand rejected under
35 U.S.C §102(b) as being anticipated by Barnsley. Ans. 4-12.
Claims 48-52, 54, 59, 67-71, 73, and 84 stand rejected under 35 U.S.C
§103(a) as being unpatentable over Barnsley and Nir. Ans. 13-15.

OPINION
Appellant’s Contentions
Appellant argues that Barnsley does not teach or suggest
communication paths between router network elements where the data
signals are conveyed along one path and the control signals along another
path, as required in independent claims 45, 46, 66, 82 and 86. App Br. 19.
Appellant contends that the Examiner takes an overly broad interpretation of
the terms network elements and routers as Barnsley fails to disclose the
network elements or routers that have routing capabilities, namely switching
and forwarding, required in the claims. App. Br. 23
Based on Appellant’s arguments we take claim 45 as representative of
independent claims 45, 46, 66, 82 and 86.
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Issues
Does Barnsley disclose “optical data signals being conveyed
separately from their associated optical addressing signals along said at least
one optical fiber,” where those optical data signals “were generated at a
plurality of different network elements, each of said plurality of different
network elements having routing capabilities” as required in independent
claim 45?

ANALYSIS
We have reviewed Appellant’s arguments regarding the claim
limitation “optical data signals being conveyed separately from their
associated addressing signals along said at least one optical fiber” where
those optical data signals “were generated at a plurality of different network
elements, each of said plurality of different network elements having routing
capabilities” and the Examiner’s answer.
Appellant argues that Barnsley does not disclose two different
communication paths between the head-end station and node 1. App. Br. 23.
Appellant asserts that the elements in Barnsley identified by the Examiner as
reading on the claim limitations are not “routers” within the metes and
bounds of claim 45. App. Br. 20. Moreover, Barnsley discloses that data
and control signals arrive together at node 1 along path 2, as the data and
control signals are combined and only partially separated at node 1. Reply 3
(discussing Barnsley col. 4, ll. 17-30 and Fig.1).
The Examiner answered that in Barnsley “it is clear to see that at
certain points in the path between network elements 4, 5, and 8 the data
signal travels a path that is separate from its associated address signal” and
that “this separation occurs twice, once between elements 4, 5, and the input
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to element 6, and again when the address signal is separated from the data
signal by element 14.” Ans. 17 (discussing flow of control and data signals
flow in Fig. 1); see also Barnsley col. 3, l. 55 to col. 4, l. 7.
We agree with Appellant. The Examiner focuses on the separate
paths between data generator 4 and header generator 5 that are combined at
the coupler 6, but fails to show that the light modulating generators have
routing capabilities. Ans. 16. Instead, the generators, 4 and 5, are described
by the Examiner and in Barnsley as light modulators. Ans. 16; Barnsley col.
3, l. 56 – col 4, l. 1. We are not persuaded light modulators as disclosed by
Barnsley are switches and forwarding routers as claimed. We also disagree
with the Examiner’s finding that the band-pass filter 14 is a switch as
claimed simply because it switches the combined data modulated signal and
combined wave signal from the input fiber to the output fiber. Ans. 16.
Instead, we find the bandpass filter 14 at node 1 removes or filters out a
particular signal and passes the desired signal (Barnsley col. 4, ll. 21-24).
Thus, it does not fall within the bounds of routing as claimed by Appellant.
We also agree with Appellant that Barnsley’s combined signals from
optical data generator 4 and header generator 5 arrive together at node 1
(Reply 3). Barnsley discloses a “means for multiplexing the data and control
signals onto the transmission line” (col. 1, ll. 59-60), where “the control
signal overlaps the data signal [and] the two signals occupy the same time
slot” (col. 2, ll. 3-4). Barnsley discloses a combined control and data signal
that is sent from splitter 7 to optical switch 8, where a small portion of the
data signal is sent from splitter 7 to band-pass filter 14. Barnsley, col. 4, ll.
17-30; see Reply 3. Thus, even within node 1 of Barnsley, control and data
signals remain combined after splitter 7 until they reach switch 8.
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Because Barnsley fails to disclose the claim 45 limitation for “optical
data signals being conveyed separately from their associated addressing
signals along said at least one optical fiber” where the optical data signals
“were generated at a plurality of different network elements, each of said
plurality of different network elements having routing capabilities,” we
reverse the Examiner’s rejection of claim 45. We need not reach the
remaining issues Appellant identifies as the limitations discussed above are
also found in independent claims 46, 66, 82 and 86 and their related
dependent claims. Accordingly, we reverse the Examiner’s rejection of
claims 45-47, 53, 55, 57, 66, 72 , 82, 83, and 86 under 35 U.S.C §102(b) as
being anticipated by Barnsley.
With respect to claims 48-52, 54, 59, 67-71, 73, and 84, the Examiner
has not shown Nir cures the deficiencies of Barnsley. We reverse the
Examiner’s rejection of claims 48-52, 54, 59, 67-71, 73, and 84 under 35
U.S.C §103(a) as being unpatentable over Barnsley and Nir.
CONCLUSIONS OF LAW
The Examiner erred in finding that Barnsley discloses “optical data
signals being conveyed separately from their associated optical addressing
signals along said at least one optical fiber,” where those optical data signals
“were generated at a plurality of different network elements, each of said
plurality of different network elements having routing capabilities” as
required in claim 45.

DECISION
For the above reasons, the Examiner’s rejections of claims 45-55, 57,
59, 66-73, 82-84 and 86 are REVERSED.

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REVERSED
ke