Ex Parte Searcy et al

Patent Trial and Appeal Board

Apr 12, 2018

14828676 (P.T.A.B. Apr. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/828,676 08/18/2015
28078 7590 04/12/2018
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
FIRST NAMED INVENTOR
Steven Searcy
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.
2262-000lCON 5638
EXAMINER
WOLDEKIDAN, HIBRET ASNAKE
ART UNIT PAPER NUMBER
2637
MAILDATE DELIVERY MODE
04/12/2018 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 STEVEN SEARCY and SORIN TIBULEAC
Appeal2017-010072
Application 14/828,67 6
Technology Center 2600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1-17, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Appellants' invention is a hybrid wavelength division multiplexing
system. Specifically, intensity modulated signals generated by optical
amplitude modulators are co-propagated with phase modulated signals
1 Appellants identify the real party in interest as ADVA Optical Networking
SE. App. Br. 2.
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generated by optical phase modulators. A drive voltage of the optical
amplitude modulator reduces an extinction ratio of the intensity modulated
signals to minimize a cross-phase modulation impact on the co-propagating
phase modulated signals. See generally Abstract. According to the
Specification, minimizing the cross-phase modulation impact on the co-
propagating phase modulated signals increases the hybrid wavelength
division multiplexing system's transmission performance. Spec. 6: 13-17.
Claim 1, reproduced below, is illustrative:
1. A hybrid wavelength division multiplexing system,
wherein one or more intensity modulated signals is co-
propagated with one or more phase modulated signals, said one
or more phase modulated signals is propagated on different
wavelengths than the one or more intensity modulated signals,
and
wherein an extinction ratio of the one or more intensity
modulated signals is reduced to minimize a cross-phase
modulation impact on the co-propagating one or more phase
modulated signals.
THE REJECTIONS
The Examiner rejected claims 1-17 on the ground of obviousness-
type double patenting over claims 1---6, 8-11, and 13 of Searcy et al. (US
9,166,722 B2; Oct. 20, 2015) ("the '722 patent") and Tanaka et al. (US
2012/0170928 Al; July 5, 2012). Final Act. 6-15. 2
The Examiner rejected claims 1, 10, 12, 15, and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Xu et al. (US 2012/0134669 Al; May 31,
2 Throughout this opinion, we refer to (1) the Final Rejection mailed July 12,
2016 ("Final Act."); (2) the Appeal Brief filed February 23, 2017 ("App.
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2012), Tanaka, and Dahan et al. (US 2010/0260505 Al; Oct. 14, 2010).
Final Act. 15-21.
The Examiner rejected claims 2--4, 9, 11, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Xu, Tanaka, Dahan, and Ota et al. (US
2008/0212979 Al; Sept. 4, 2008). Final Act. 21-23.
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Xu, Tanaka, Dahan, Ota, and Jennen (US 7,421,204 B2;
Sept. 2, 2008). Final Act. 24.
The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Xu, Tanaka, Dahan, Ota, and Hiroshi Yamazaki et al.,
Integrated 100-Gb/s PDM-QPSK modulator using a hybrid assembly
technique with silica-based PLCs and LiNb03 phase modulators, 34th
European Conf. on Optical Comm., Sept. 2008, at 1--4. Final Act. 24--25.
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Xu, Tanaka, Dahan, and Yu et al. (US 2011/0081151 Al;
Apr. 7, 2011 ). Final Act. 25-26.
The Examiner rejected claims 13 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Xu, Tanaka, Dahan, and Sagawa et al. (US 2011/0178053
Al; July 15, 2010). Final Act. 26-28.
THE DOUBLE PATENTING REJECTION OVER CLAIM 1 OF THE
'722 PATENT AND TANAKA
The Examiner finds the '722 patent's independent claim 1 discloses
many recited elements of Appellants' independent claim 1 including, among
Br."); (3) the Examiner's Answer mailed May 24, 2017 ("Ans."); and (4) the
Reply Brief filed July 24, 2017 ("Reply Br.").
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other things, co-propagating one or more intensity modulated signals with
one or more phase modulated signals. Final Act. 7. Although the Examiner
acknowledges that the '722 patent's claim 1 does not disclose propagating
the one or more intensity modulated signals and the one or more phase
modulated signals on different wavelengths, the Examiner cites Tanaka for
teaching this feature in concluding that Appellants' claim 1 would have been
obvious. Id. at 7, 9.
Appellants contend the obviousness-type double patenting rejection
does not meet the test set forth in In re Vogel, 422 F.2d 438 (CCPA 1970)
that determines whether an application's claim could be infringed without
infringing a corresponding claim in a patent. App. Br. 16. According to
Appellants, a system including the one or more intensity modulated signals
and the one or more phase modulated signals of Appellants' claim 1, but not
including the optical amplitude modulator and optical supervisory channel of
the '722 patent's claim 1, infringes Appellants' claim 1, but does not
infringe the '7 22 patent's claim 1. Id.
Appellants further contend there is no motivation or suggestion to
combine Tanaka's signals with the '722 patent to achieve Appellants' claim
1. Id. at 1 7. According to Appellants, Tanaka teaches generating a delay
difference between an intensity modulated signal and phase modulated
signal, and the '722 patent teaches away from inserting delays. Id.
ISSUE
Under the doctrine of obviousness-type double patenting, is the
Examiner's reason to combine the teachings of the '722 patent and Tanaka
supported by articulated reasoning with some rational underpinning to
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justify the Examiner's obviousness conclusion? This issue turns on whether
the '722 patent teaches away from inserting delays.
ANALYSIS
At the outset, we note Appellants' inartful characterization of
obviousness-type double patenting. "There are generally two types of
double patenting rejections." MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 804 (9th ed. Rev. 08.2017, Jan. 2018). One is the "same
invention," or statutory, form of double patenting based on language from
35 U.S.C. § 101 that states, in the singular, that an inventor "may obtain a
patent." MPEP § 804 (emphasis added). "Same invention" means identical
subject matter. See Vogel, 422 F.2d at 441. Notably, Appellants rely on the
test in Vogel to determine whether a same invention, or identical subject
matter, is present.
All types of double patenting which are not the same invention, or
statutory type double patenting, are referred to as "obviousness-type," or
non-statutory, double patenting. See In re Van Ornum, 686 F.2d 937, 942
(CCPA 1982); see also MPEP § 804. That is the situation here. See Final
Act. 6. Vogel recognizes and establishes a separate test, which Appellants
do not reference, for obviousness-type double patenting: "Does any claim in
the application define merely an obvious variation of an invention disclosed
and claimed in the patent?" Vogel, 422 F.2d at 441--42. Thus, Appellants'
reliance on the test in Vogel for a same invention, or statutory double
patenting, is misplaced because this test does not apply to the Examiner's
obviousness-type, or non-statutory, double patenting rejection.
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We also find unavailing Appellants' contention (App. Br. 17) that the
'722 patent teaches away from inserting delays into intensity modulated and
phase modulated signals. The '722 patent discloses that conventional
mechanisms attempt to reduce cross-phase modulation, including the
insertion of channel separation devices that also introduce differential delay
between the channels. '722 patent, col. 2, 11. 1---6. The '722 patent further
discloses an object of the invention is to increase transmission performance
of a hybrid wavelength division multiplexing system not having the
disadvantages of the conventional mechanisms. Id. at col. 2, 11. 21-25.
Even if a skilled artisan infers the conventional mechanism having a
differential delay between channels also has a disadvantage, such an
inference pertains to the conventional mechanism being, at most, inferior to
the '722 patent's invention. But a reference that describes something as
inferior in certain circumstances does not teach away. In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994) (noting that "[a] known or obvious composition
does not become patentable simply because it has been described as
somewhat inferior to some other product for the same use").
Accordingly, Appellants have not established that the reference
unequivocally criticizes, discredits or otherwise discourages inserting delays,
thereby teaching away from the Examiner's proposed combination. See In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
THE OBVIOUSNESS REJECTION OVER XU, TANAKA, AND DAHAN
The Examiner finds that Xu, Tanaka, and Dahan collectively teach or
suggest all recited elements of claim 1. Final Act. 15-20. The Examiner
finds that Xu co-propagates one or more intensity modulated signals with
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one or more phase modulated signals. Id. at 15. According to the Examiner,
Xu's signals modulated by an intensity modulator, and then modulated by a
phase modulator, co-propagate. Ans. 3. The Examiner also cites Tanaka for
teaching propagating the one or more intensity modulated signals and one or
more phase modulated signals on different wavelengths. Final Act. 16.
Dahan is also cited for teaching providing a desired extinction ratio. Id. at
16-17.
Appellants contend, among other things, that Xu does not teach or
suggest co-propagating intensity and phase modulated signals. App. Br. 11;
Reply Br. 7-8. According to Appellants, Xu's signals are intensity
modulated and then phase modulated, but argue Xu does not disclose
intensity and phase modulated signals that are simultaneously present in a
transmission line, and, therefore, does not co-propagate those signals as
claimed. App. Br. 11; Reply Br. 8.
ISSUE
Under§ 103(a), has the Examiner erred in rejecting claim 1 by finding
that Xu, Tanaka, and Dahan collectively would have taught or suggested one
or more intensity modulated signals co-propagates with one or more phase
modulated signals?
ANALYSIS
A key aspect of claim 1 is one or more intensity modulated signals co-
propagating with one or more phase modulated signals. As noted
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previously, Appellants dispute the Examiner's reliance on Xu for teaching
the recited co-propagation. Therefore, we first construe this term.
As shown in Appellants' Figure 3, an optical amplitude modulator 2
generates an intensity modulated signal and an optical phase modulator 8
generates a phase modulated signal. Spec. 8: 10-13; 14: 13-30. Appellants'
Figure 3 further illustrates an optical multiplexing/ demultiplexing unit 11
multiplexing the intensity modulated signal and phase modulated signal. Id.
at 14:21-26. As Appellants indicate (see Reply Br. 2-3), Figure 3 illustrates
that the multiplexed intensity modulated signal and phase modulated signal
are placed on the same fiber 12 simultaneously, and thus co-propagate. We
agree.
The plain meaning of the prefix "co-" is "with : together : joint :
jointly," MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY 218 (prefix def. 1)
(10th ed. 1993); and "together" is "at one time: SIMULTANEOUSLY," id.
at 1240 (adv. def. 3a). Therefore, under its broadest reasonable
interpretation consistent with the Specification, one or more intensity
modulated signals co-propagating with one or more phase modulated signals
is one or more intensity modulated signals propagating simultaneously with
one or more phase modulated signals.
Given this construction of this key term in claim 1, we find the
Examiner's rejection problematic. Xu is directed to controlling multicast
data over wavelength-division-multiplexed passive optical networks (WDM-
PONs). Xu i-f 1. Xu's Figure 1 is illustrative and reproduced below:
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10
300-1
300-2
RN
200-l
50
40-3
20 40-l 200-N
Fig. I
Xu's Figure 1 shows architecture for a WDM-PON system 1000.
As illustrated in Xu' s Figure 1, Xu' s optical intensity modulator 3 0-1
modulates an optical carrier from laser 20 to generate downstream point-to-
point (p-t-p) return-to-zero (IRZ) signals. Id. i-f 36. Xu's Figure 1 further
illustrates the various downstream p-t-p IRZ signals are then multiplexed in
a multiplexer (MUX)/demultiplexer (DEMUX) unit 300-1. 3 Id. i-f 37. Xu's
Figure 1 further illustrates the multiplexed downstream p-t-p IRZ signals are
then received by an optical phase modulator 400. Id.
Notably, the signals that were intensity modulated at intensity
modulator 30-1 are then phase modulated at phase modulator 400. To say
that these phase modulated signals somehow co-propagate with intensity
modulated signals as the Examiner indicates (Ans. 3) strains reasonable
limits on this record. In short, we fail to see-nor has the Examiner
3 "Acronym: MUX." MICROSOFT COMPUTER DICTIONARY 353 (5th ed.
2002).
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shown-that the intensity modulated signals propagate simultaneously with
phase modulated signals.
Although Xu's phase modulator 400 orthogonally modulates the
multiplexed downstream p-t-p IRZ signals, as driven by pre-coded multicast
data (see Xu i-f 3 7), the Examiner does not explain how this functionality
teaches or suggests the recited co-propagation (see Final Act. 2-5, 15-20;
Ans. 2--4). Nor does the Examiner explain how modulating (1) the
multiplexed downstream p-t-p IRZ signals in an amplitude dimension of the
optical carrier, and (2) the multicast data in a phase dimension of the optical
carrier in Xu's optical phase modulator 400 (see Xu i-f 37), teaches or
suggests the recited co-propagation. We will not speculate in this regard
here in the first instance on appeal.
Accordingly, we are persuaded that the Examiner erred in rejecting
(1) independent claim 1; (2) independent claims 10, 12, and 15, which also
require co-propagating an intensity modulated signal with a phase modulated
signal; and (3) dependent claim 16 for similar reasons. Because this issue is
dispositive regarding our reversing the Examiner's rejection of these claims,
we need not address Appellants' other associated arguments.
THE OTHER OBVIOUSNESS REJECTIONS
Because the Examiner has not shown that the cited prior art cures the
foregoing deficiencies regarding the rejection of independent claims 1, 10,
12, and 15, we will not sustain the obviousness rejections of dependent
claims 2--4, 6-9, 11, 13, and 14 for similar reasons.
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CONCLUSION
The Examiner erred in rejecting claims 1--4 and 6-16 under§ 103(a).
The Examiner did not err in rejecting claims 1-17 on the ground of
obviousness-type double patenting.
DECISION
The Examiner's decision in rejecting claims 1-17 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). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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