Ex Parte Preisach

Board of Patent Appeals and Interferences

Jun 30, 2009

10752022 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HELMUT PREISACH
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Appeal 2009-003219
Application 10/752,022
Technology Center 2600
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Decided:1 June 30, 2009
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Before JOHN C. MARTIN, MAHSHID D. SAADAT,
and CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3 and 5.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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).
2 Claim 4 is objected to (Final Office Action mailed April 10, 2007).
Appeal 2009-003219
Application 10/752,022

2
STATEMENT OF THE CASE
Appellant’s claimed invention is an integrated optical transceiver
circuit that includes an optical equalizer for a distorted optical/electrical
(O/E) converted signal, an adaptive regenerator, and a clock recovery circuit.
An embedded processing unit and an integrated programmable memory are
also provided. (Spec. 2:18-25) Software algorithms stored in the
programmable memory adjust threshold values of the adaptive regenerator
(Spec. 2:18-3:2). Because the threshold is adaptively adjusted, optimization
with respect to a reduction in bit errors is achieved (Spec. 9:15-27; App. Br.
9).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.

1. An integrated transceiver comprising:

a first equalizer for a distorted O/E-converted optical signal;

an adaptive regenerator coupled to the equalizer;

a clock recovery circuit coupled to the adaptive regenerator;

an embedded processing unit; and

an integrated programmable memory for storing different
pieces of software;

wherein said processing unit adjusts threshold values of said
adaptive regenerator according to a software algorithm loaded
into said memory.

Appeal 2009-003219
Application 10/752,022

3
REFERENCES
Aronson US 2004/0091028 A1 May 13, 2004
(filed Jul. 28, 2003)

The Examiner rejected claims 1-3 and 5 under 35 U.S.C. § 103(a)
based upon the teachings of Aronson.
Appellant contends that the retimer of Aronson does not correspond to
Appellant’s adaptive generator and that Aronson does not disclose adjusting
threshold values of the adaptive generator (App. Br. 10, 11; Reply Br. 8).
Appellant further contends that Aronson is not entitled to the priority date of
its provisional application as it lacks an enabling disclosure (Reply. Br. 4-
7).3

ISSUE
Has Appellant established the Examiner erred in finding that adjusting
a reference clock signal is the same as adjusting threshold values of an
adaptive regenerator?

3 This argument is entitled to no consideration because it was not
necessitated by a new point in the Answer and thus should have been made
in the opening Brief. See Optivus Technology, Inc. v. Ion Beam
Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for
the first time in the reply brief that could have been raised in the opening
brief is waived); accord, Ex parte Scholl, No. 2007-3653, slip op. at 18 n.13
(BPAI March 13, 2008) (designated as an “Informative Opinion” at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd073653.pdf).

Appeal 2009-003219
Application 10/752,022

4
FINDINGS OF FACT
1. Appellant’s invention discloses an adaptive regenerator 202
controlled by an embedded micro-controller (CPU) 210). Threshold values
of the adaptive regenerator are adjusted according to software loaded in the
CPU. (Spec. 5:10-15; generally Spec. 9).
2. Aronson teaches a transceiver that includes dual eye openers
and an equalizer. A receiver eye opener extracts a clock from an electrical
signal and uses that clock to regenerate degraded data within the signal to
remove jitter (¶ [0046]; Fig. 2). A multiplexer (MUX 955g) allows a retimer
(RT) to retime data in synchronization with either a reference clock or a
clock Tx (¶ [0056]; Fig. 4).

PRINCIPLES OF LAW
A rejection based on § 103 must rest upon a factual basis rather than
conjecture or speculation. “Where the legal conclusion [of obviousness] is
not supported by facts it cannot stand.” In re Warner, 379 F.2d 1011, 1017
(CCPA 1967). See also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

ANALYSIS
The Examiner rejected claims 1-3 and 5 under 35 U.S.C. § 103(a)
based upon the teachings of Aronson. The Examiner finds that the retimer
RT 2170 corresponds to Appellant’s claimed adaptive regenerator (Advisory
Action mailed August 8, 2007). This is the only element under contention.
The Examiner finds that Aronson’s RT is an adaptive generator
because the RT is adjusted by a rate selected from a multiplexer that receives
a reference clock signal (i.e., a threshold value) (Ans. 5; FF 2).
Appeal 2009-003219
Application 10/752,022

5
Appellant contends that Aronson receives a reference clock to start
retiming data and a Tx clock to retime data in synchronization with the Tx
clock (FF 2). These clock signals align the phase of the electrical signal to
correctly clock the signal. Thus, the reference clock of Aronson, used to
start retiming data, is not the same as a threshold value. That is, threshold
signal values are not adjusted; rather it is the Tx clock, which retimes the
data according to the data rate, that is adjusted (Reply Br. 8).
It is clear from Aronson that it is a clock signal that is adjusted and
not threshold values of an adaptive generator as asserted and claimed by
Appellant. Thus, Aronson does not suggest Appellant’s claimed invention.

CONCLUSION
Appellant has established the Examiner erred in finding that adjusting
a reference clock signal is the same as adjusting threshold values of an
adaptive regenerator.

DECISION
The Examiner’s decision rejecting claims 1-3 and 5 is reversed.

REVERSED

KIS

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