Ex Parte Peters et al

Board of Patent Appeals and Interferences

Jun 2, 2009

10177053 (B.P.A.I. Jun. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANK H. PETERS, JONATHAN SIMON,
SCOTT CORZINE, and CLIFTON L. ANDERSON
____________

Appeal 2009-001724
Application 10/177,053
Technology Center 2600
____________

Decided:1 June 2, 2009
____________

Before ROBERT E. NAPPI, JOHN A. JEFFERY,
and KARL D. EASTHOM, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/177,053

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DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 5, 7, 9, 14, 15, 19, 20, 25, 26, and 33-37. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
Appellants invented an optical communication system and method.
The system and method include light sources, each having a number of light
emission elements that transmit signals at different intensities. The signals
are coded differently depending on the intensity, combined collectively, and
transmitted on a waveguide corresponding to a channel.2 Independent claim
1 is reproduced below:
1. An optical communication device, comprising:
a plurality of discrete light emission elements configured in an
array, each discrete light emission element being configured to
transmit optical signals to a corresponding individual optical
waveguide in an optical communication medium, each discrete light
emission element being configured to transmit optical signals of at
least three different intensities;
a controller configured to provide biased control signals to each
light emission element such that each light emission element transmits
multi-level coding optical signals to the optical communication
medium using the at least three different intensities.

2 See generally Spec.¶¶ 23-27 and 43-45.
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The Examiner relies upon the following as evidence in support of the
rejection:
Bergmann US 5,138,475 Aug. 11, 1992
Yamaguchi US 6,166,839 Dec. 26, 2000

Gurusami US 6,643,471 B2 Nov. 4, 2003
(filed Apr. 2, 2001)

(1) Claims 1, 5, 7, 9, 14, 15, 19, 20, and 25 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Yamaguchi and Gurusami (Ans.
3-5).
(2) Claims 26 and 33-37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yamaguchi, Gurusami, and Bergmann (Ans. 5-7).
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
Appellants argue the claims as follows: (1) claims 1, 5, 7, 9, 14, 15,
19, 20, and 25, and (2) claims 26 and 33-37 (App. Br. 26-71). We will
address each grouping separately.

3 Throughout the opinion, we refer to: (1) the Appeal Brief filed July 1,
2007; (2) the most recent Examiner’s Answer mailed October 17, 2007; and
(3) the Reply Brief filed December 17, 2007.

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OBVIOUSNESS REJECTION OVER YAMAGUCHI AND GURUSAMI
Claims 1, 5, 7, 9, 14, 15, 19, 20, and 25
Representative claim 14 is rejected under 35 U.S.C. § 103(a) as being
unpatentable by Yamaguchi and Gurusami (Ans. 3-4). The Examiner finds
that Yamaguchi discloses all the limitations of representative claim 1, except
for the controller configured such that each light emission element transmits
multi-level coding optical signals to the optical communication medium
(Ans. 3-4). The Examiner relies on Gurusami to teach implementing
multi-level coding signals for transmission from each light emission element
on Yamaguchi’s system so as to increase transmission capacity on
Yamaguchi’s fiber optic link (Ans. 4).
Appellants argue that: (1) Yamaguchi does not disclose: (a) a light
emission element configured to transmit an optical signals at different
intensities; (b) a controller; and (c) light emission elements transmitting
multi-coding optical signals; (2) Gurusami does not teach: (a) light emission
elements configured to transmit optical signals to a corresponding individual
optical waveguide and (b) a controller to provide biased control signals to
each light emission element such that each element transmits multi-level
coding optical signals using the three different intensities; (3) the combined
Yamaguchi and Gurasami system would not result in an array of light
emission elements configured to transmit multi-level coded optical signals
using the three different intensities because: (a) Gurusami’s disclosure to use

4 Appellants argue claims 1, 5, 7, 9, 14, 15, 19, 20, and 25 together (App. Br.
56-63). Accordingly, we select independent claim 1 as representative. 37
C.F.R. § 41.37(c)(1)(vii).
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a single optical fiber for two incoming data streams teaches away from using
a corresponding individual optical waveguide for each light emission
element as disclosed by Yamaguchi; (b) Yamaguchi and Gurasami do not
solve the problems solved by the present invention; and (c) Yamaguchi and
Gurusami operate at cross purposes; and (4) the Examiner has not provided
any specific reason for combining the references (App. Br. 38, 39, 47, 48,
and 56-63; Reply Br. 45, 46, 54, 55, and 63-71).

ISSUES
The following issues have been raised in the present appeal:
(1) Under § 103, have Appellants shown that the Examiner erred in
finding that the combined Yamaguchi and Gurasami system results in
discrete light emission elements that transmit optical signals at three
different intensities and a controller that provides signals such that each light
emission element transmits multi-level coding optical signals at the three
different intensities in rejecting claim 1?
(2) Under § 103, have Appellants shown that the Examiner erred by
failing to present a specific reason to combine Gurusami with Yamaguchi in
rejecting claim 1?
(3) Under § 103, have Appellants shown that Gurusami’s teaching of
combining data on different channels before transmission on a single optical
fiber teaches away from combining with Yamaguchi’s system that uses
multiple optical fibers in rejecting claim 1?

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Yamaguchi
1. Yamaguchi discloses an optical transmitting-receiving system
that includes a transmitting module 10, an optical fiber array module 20, and
a receiving module 30. (Col. 5, ll. 16-21; Fig. 1).
2. Yamaguchi states the transmitting module 10 includes laser
diodes 12D1-12DN that transmit optical signals to respective optical fibers
21D1-21DN. (Col. 5, ll. 21-23 and col. 8, ll. 14-38; Fig. 1).
3. Figure 2 in Yamaguchi shows the identification level of the
received data in time varies due to temperature changes. (Col. 1, ll. 39-43,
col. 2, ll. 4-12; Fig. 2).
4. Yamaguchi shows the light intensity output of a light emission
element (e.g., 12C) varies based on the current and temperature. (Col. 6, ll.
5-24; Fig. 3).

Gurusami
5. Gurusami discloses an optical modulator 214 that transmits
optical signals at four different levels (i.e., Optical Power Levels 1-4) to
improve the fiber optic link’s capacity. Gurusami receives two distinct data
streams 202 and 204 and transmits a composite signal with one of four
different intensity levels over an optical fiber 215. (Col. 1, ll. 49-53, col. 4,
ll. 17-20, col. 4, l. 50-col. 5, l. 21, and col. 5, ll. 33-37; Figs. 2 and 3G).
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6. Gurusami teaches the optical power levels are created by
driving the voltage on the resistor 234 to a given output pulse level (e.g.,
levels 1-4) corresponding to different dB relative attenuation. (Col. 5, l. 39 -
col. 6, l. 15; Figs. 2 and 3G).
7. Gurusami teaches that some communication systems transmit
data over one or more fiber optic cables. (Col. 1, ll. 18-20).
8. Gurusami does not state that transmitting data over a single
optical channel is superior to multi-channel technique. See generally
Gurusami.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073-74 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). “[T]he examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Furthermore,
“there must be some articulated reasoning with
some rational underpinning to support the legal
conclusion of obviousness” . . . . [H]owever, the
analysis need not seek out precise teachings
directed to the specific subject matter of the
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challenged claim, for a court can take account of
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) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
Claim 1 has been rejected based on the combination of Yamaguchi
and Gurusami (Ans. 3-4). As such, Appellants cannot show nonobviousness
by attacking Yamaguchi or Gurusami individually where the rejections are
based on the combination. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986). Thus, at the outset, Appellants’ arguments that
Yamaguchi does not disclose certain elements of claim 1 or Gurusami does
not teach other elements of claim 1 (App. Br. 38, 39, 47, 48, and 56; Reply
Br. 45, 46, 54, 55, and 63) are not persuasive.
Yamaguchi discloses an optical communication device that includes a
transmitting module 10 having a plurality of discrete laser diodes or light
emission elements 12D1-12DN that transmit optical signals to a
corresponding individual optical fiber or waveguide 21D1-21DN
respectively (FF 1-2). The Examiner also finds (Ans. 4) that based on
Figure 2, Yamaguchi discloses that each light emission element (e.g., 12D1-
12DN) transmits signals at three different intensities as recited in claim 1.
Figure 2 in Yamaguchi shows the identification level of the received data in
time varies due to temperature changes (FF 3), while Figure 3 shows the
light intensity output of a light emission element varies with the current and
temperature (FF 4). However, without deciding whether these figures show
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that a light emission element transmits signals at three different intensities,
we find that Appellants admit (App. Br. 47) that Gurusami provides a
specific teaching of an optical transmitter or light emission element 214 that
transmits optical signals at different levels (e.g., Optical Power Levels 1-4)
or intensities. See also FF 5. Gurusami receives two distinct data streams
202 and 204 and transmits a composite signal with one of four different
intensity levels over an optical fiber 215 in order to improve the fiber optic
link’s capacity (FF 5). Additionally, Gurusami teaches the optical power
levels or intensities are created or coded by driving the voltage on the
resistor 234 to different output pulse levels that are transmitted as multi-level
coding optical signals to the optical fiber or communication medium 215 by
an optical modulator or light emission element 214 (FF 6).
Thus, Gurusami teaches that multiplexing data streams using at least
three different intensities levels allows for transmission of multi-level coding
signals (FF 5-6) to an optical communication medium with improved link
capacity. As Yamaguchi discloses multiple data streams being sent over
multiple optical fibers (FF 2), one skilled in the art would have recognized
Gurusami’s teaching would improve Yamaguchi’s system by increasing the
link capacity over each fiber optic line (e.g., 12D1). See KSR, 550 U.S. at
417. For example, in the combined Yamaguchi and Gurusami system, Data
1 and Data 2 can be combined, as taught by Gurusami, so as to improve a
respective optical fiber’s or link’s capacity (see FF 5). As another example,
Data M and Data N can similarly be combined to improve another respective
link’s capacity. See id. These arrangements would predictably result in a
plurality of modulators or light emission elements 214, each configured to
transmit multi-coding optical signals to an individual waveguide in an
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optical communication medium using at least three different intensities. See
KSR, 550 U.S. at 417. Thus, as explained above, Gurusami provides a
specific reason or motivation to combine with Yamaguchi’s system.
Appellants contend that Gurusami teaches away from the recited
invention “by stating that the single optical channel data transmission and
reception technique disclosed [by Gurusami] is superior to multi-channel
technique” (App. Br. 62). Appellants have made such an assertion without
any reference to a specific portion of Gurusami, and we find no such
statement in Gurusami (FF 8). Arguments made by counsel do not take the
place of evidence in the record. In re Schulze, 346 F.2d 600, 602 (CCPA
1965); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). In any
event, such conclusory statements fall well short of rebutting the Examiner’s
prima facie case of obviousness articulated in the rejection – a position that
we find reasonable. As discussed above, Gurusami provides a reason for
combining its teachings with Yamaguchi’s system and does not state that
multiple fiber optic lines cannot be used with Gurusami. Moreover, the
combined Yamaguchi and Gurusami system still includes multiple
individual optical waveguides. Additionally and contrary to Appellants’
assertions (App. Br. 58 and 62), Gurusami recognizes and teaches that some
communication systems transmit data over one or more fiber optic cables
(FF 7). We find, therefore, that Gurusami does not “tout” or teach using
only a single fiber optic for the transmission of data in an optical
communication system.
Also, Appellants argue that Yamaguchi and Gurusami do not disclose
or teach the problems solved by the present invention (App. Br. 59). “In
concerning motivation in the obviousness analysis, the problem examined is
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not the specific problem solved by the invention but the general problem that
confronted the inventor before the invention was made.” Kahn, 441 F.3d at
988 (emphasis added); see also Princeton Biochemicals, Inc. v. Beckman
Coulter, Inc., 411 F.3d 1332, 1337 (Fed. Cir. 2005) (“[t]he law does not
require that the references be combined for the reasons contemplated by the
inventor.”) Thus, we are not persuaded of error in combining Yamaguchi
and Gurusami for the reasons previously discussed.
For the foregoing reasons, Appellants have not shown the Examiner
erred in rejecting claims 1, 5, 7, 9, 14, 15, 19, 20, and 25 under 35 U.S.C.
§ 103 based on Yamaguchi and Gurusami.

OBVIOUSNESS REJECTION OVER YAMAGUCHI, GURUSAMI, AND BERGMANN
Claims 26 and 33-37
Independent claim 26 varies in scope from independent claim 1.
Claim 26 recites a method that provides a plurality of light sources, each
light source having: (a) a first, second, and third discrete light emission
elements configured to emit light of different intensities and (b) being
configured to transmit optical signals to a corresponding individual optical
waveguide. The Examiner finds that Yamaguchi, Gurusami, and Bergmann
collectively teach all the limitations of claim 26 (Ans. 5-6). Among other
arguments, Appellants contend that there is no combination of Yamaguchi,
Gurusami, and Bergmann that results in an array of light emission elements
configured to transmit multi-level coded optical signals to an optical
communication medium using at least three different intensities (App. Br.
65-68; Reply Br. 73-80).

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ISSUE
The following additional issue has been raised in the present appeal:
Under § 103, have Appellants shown that the Examiner erred in
finding that the combination of Yamaguchi, Gurasami, and Bergmann teach
a light source comprising at least three discrete light emission elements that
emit light at different light intensities respectively and each light source
transmits multi-level coding optical signals using the three discrete light
emission elements in rejecting claim 26?

ADDITIONAL FINDINGS OF FACT
The record supports the following additional findings of fact (FF) by a
preponderance of the evidence.
Bergmann
9. Bergmann teaches optical data link 10 having a plurality of
transmitters (e.g., TX 161-16N), each transmitter (e.g., TX 161) having a pair
of light emitting devices (e.g., 181 and 201). (Col. 2, ll. 61-62 and col. 3, ll.
10-18; Fig. 1).
10. Bergmann shows each light emitting device (e.g., 181 or 201)
transmits its signal to a corresponding optical fiber (e.g., 221 or 241). (Col.
3, ll. 18-20; Fig. 1).
11. Bergmann teaches an alternative embodiment that includes a
transceiver arrangement (e.g., TX16'i and RX 30'i) associated with
component 12. The transmitting circuit (e.g., 16'i) of the transceiver has a
light emitting device 18i to transmit signals through a waveguide 22i. The
receiving device 26i receives signals from waveguide 22i. (Col. 4, ll. 3-23;
Fig. 2).
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ANALYSIS
Yamaguchi discloses a method of providing a plurality of laser diodes
or light sources 12D1-12DN in an optical communication system, each light
source transmitting optical signals to a corresponding individual optical
waveguide (e.g., 21D1-12DN) (FF 2). Yamaguchi does not disclose each
light source has at least three light emission elements and that each emission
element is configured to emit light at a different light intensity from one
another. As explained above, Gurusami includes circuitry with an optical
modulator or light source 214 that emits light at three different intensities
and codes the signals to the medium to increase capacity on the link (FF 5-
6). However, Gurusami also does not disclose the light source has three
light emission elements and that each light emission elements emits light at
different intensities from one another. The Examiner relies on Bergmann to
cure these deficiencies.
Bergmann discloses a light source (e.g., TX 161-16N) that has two
light diodes or emission elements (e.g., 181 and 201) (FF 9). Bergmann also
shows that each diode transmits the signal to a different fiber (e.g., 221 and
241) and not the same corresponding fiber (FF10). Thus, even when
combined with Yamaguchi and Gurusami, the Figure 1 embodiment of
Bergmann does not suggest a light source having three emission elements
and the light source is configured to transmit the element’s optical signals to
a corresponding waveguide. Bergmann teaches an alternative embodiment
that includes transceiver arrangement (e.g., TX16'i and RX 20'i) for a
component 12 having a light source (e.g., TX16'i), in which a single light
emission diode 18i transmits signals through a waveguide 22i and the other
light emission element 26i receives signals (FF 11). Bergmann, thus, does
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not cure the deficiencies of Yamaguchi and Gurusami, such that the
combination of the references teaches each light source has at least three
discrete light emission elements that emit light at different light intensities
from one another and each light source, having the three light emission
elements, transmits optical signals to a corresponding optical waveguide.
Independent claim 33 recites an apparatus similar in scope to
independent claim 26. That is, claim 33 recites that each light source has at
least three different light emission elements that emit signals at different
light intensities from one another, and the light source is configured to
transmit optical signals to a corresponding individual optical waveguide.
For the foregoing reasons, we will not sustain the rejection of
independent claims 26 and 33 and dependent claims 34-37 for similar
reasons.

CONCLUSIONS
(1) Under § 103, Appellants have not shown that the Examiner
erred in finding that the combined Yamaguchi and Gurusami system results
in discrete light emission elements that transmit optical signals at three
different intensities and a controller that provides signals such that each light
emission element transmits multi-level coding optical signals at the three
different intensities in rejecting claims 1, 5, 7, 9, 14, 15, 19, 20, and 25.
(2) Under § 103, Appellants have not shown that the Examiner
erred by failing to present a specific reason to combine Gurusami with
Yamaguchi in rejecting claims 1, 5, 7, 9, 14, 15, 19, 20, and 25.

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(3) Under § 103, Appellants have not shown that Gurusami’s
teaching of combining data on different channels before transmission on a
single optical fiber teaches away from combining with Yamaguchi’s system
that uses multiple optical fibers in rejecting claims 1, 5, 7, 9, 14, 15, 19, 20,
and 25.
(4) Under § 103, Appellants have shown that the Examiner erred in
finding that the combination of Yamaguchi, Gurasami, and Bergmann
teaches a light source comprising at least three discrete light emission
elements that emit light at different light intensities respectively and each
light source transmits multi-level coding optical signals using the three
discrete light emission elements in rejecting claims 26 and 33-37.

DECISION
We have sustained the Examiner's rejection of claims 1, 5, 7, 9, 14,
15, 19, 20, and 25 and have not sustained the Examiner’s rejection of claims
26 and 33-37. Accordingly, the Examiner’s rejection of claims 1, 5, 7, 9, 14,
15, 19, 20, 25, 26, and 33-37 is affirmed-in-part.

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No 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-IN-PART

pgc

Kathy Manke
Avago Technologies Limited
4380 Ziegler Road
Fort Collins, CO 80525