Ex Parte Soto et al

Board of Patent Appeals and Interferences

Sep 29, 2010

10886514 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALEXANDER I. SOTO and WALTER G. SOTO
_____________

Appeal 2009-006986
Application 10/886,514
Technology Center 2600
____________

Before KENNETH W. HAIRSTON, THOMAS S. HAHN,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-006986
Application 10/886,514

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 77 to 109, 111 to 119, and 121 to 132. Claims 1 to 76
and 110 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).2
We REVERSE.
Appellants’ invention is concerned with an optical local area network
(LAN) which includes a network manager (NM) and one or more local
network clients (e.g., network client adapters (NCAs)) (Spec. ¶¶ [0002],
[0013]; claims 77, 109, and 122). The NM at the head end of the optical
LAN is a central transmission point and overall controlling device for the
LAN, and the NCAs use communication logic and memory to respond to
messages from the NM using a protocol (e.g., layer-1, layer-2, or layer-3
protocal) (Spec. ¶¶ [0004], [0006], [0008], [0010], [0022]-[0025], [0029],
and [0030]). Preferably, the NCAs use a layer-2 protocol (Spec. ¶¶ [0008],
[0010], and [0030]).
Claim 77, reproduced below with the disputed claim language
emphasized, is representative of the subject matter on appeal:

2 Claim 120 has not been rejected and is therefore not before us on appeal.
Although claim 120 has been included by the Examiner on the cover sheet of
the Final Rejection mailed October 11, 2007, and has been mistakenly
included by Appellants in the Brief (see App. Br. 1 and 19), neither the Final
Rejection nor the Answer (see generally Ans. 3-11) includes a rejection of
claim 120 or any discussion as to the merits of 120. Accordingly, claim 120
(although depending from rejected claim 119) is not rejected and is thus not
under our jurisdiction on appeal under 35 U.S.C. § 6(b).

Appeal 2009-006986
Application 10/886,514

3

77. An optical Local Area Network (LAN) of one or more local area
network clients, the optical LAN comprising:
a network manager for managing optical signals each incorporating
both a control channel and a data channel in a single optical wavelength,
including an optical interface having means for converting received optical
signals to electrical signals and means for producing transmitted optical
signals from electrical signals,
a plurality of optical ports,
a passive optical coupler coupled between the optical interface
and the optical ports and having means for accepting received optical signals
from and for distributing transmitted optical signals to the optical interface
and the optical ports, and
a control module coupled to the optical interface and having
means for receiving electrical signals from and for transmitting electrical
signals to the optical interface;
a plurality of network client adapters including an optical interface
having means for converting received optical signals to electrical signals and
means for producing transmitted optical signals from electrical signals,
an optical port coupled to the optical interface, and
a control module having means for receiving electrical signals
from and for transmitting electrical signals to the optical interface; and
a plurality of optical waveguides each coupled between one of the
network client adapter optical ports and the network manager;
whereby the network manager can receive an optical signal
incorporating both a control channel and a data channel in a single optical
wavelength from any network client adapter, a network client adapter can

Appeal 2009-006986
Application 10/886,514

4
receive an optical signal incorporating both a control channel and a data
channel in a single optical wavelength from the network manager, and the
network manager and network client adapters are in communication to
facilitate sending and receiving data across the optical waveguides.
(Claim 77 (emphases added)).

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Graves US 5,029,333 July 2, 1991
Hale US 5,572,349 Nov. 5, 1996
Abdelhamid US 6,023,467 Feb. 8, 2000
Masucci US 6,498,667 B1 Dec. 24, 2002
Adcox US 2003/0236916 A1 Dec. 25, 2003
(filed Apr. 21, 2003)
Wang US 2004/0052274 A1 Mar. 18, 2004
(filed Dec. 11, 2002)
Medina US 6,778,399 B2 Aug. 17, 2004
(filed May 15, 2002)
Kuo US 7,031,343 B1 Apr. 18, 2006
(filed Nov. 17, 2000)

The following obviousness rejections are before us for review:
(i) Claims 77, 82 to 87, 98, 100, 122, and 124 to 126 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Wang and Kuo.
(ii) Claims 78 to 81, 105 to 107, 109, 111, 112, 118, 119, 123, 128,
and 129 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Wang
and Kuo, further in view of Abdelhamid.
(iii) Claims 88 to 96, 99, and 101 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Wang and Kuo, further in view of Masucci.

Appeal 2009-006986
Application 10/886,514

5
(iv) Claims 97 and 113 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wang, Kuo, and Masucci, further in view of Graves.
(v) Claims 101 to 104, 113, 115 to 117, 130, and 131 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Wang and Kuo, further in
view of Adcox.
(vi) Claims 108 and 132 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wang and Kuo, further in view of Medina.
(vii) Claims 114 and 127 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wang, Kuo, Masucci, and Graves, further in view of Hale.
(viii) Claim 121 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Wang, Kuo, and Abdelhamid, further in view of Medina.
In all of the rejections, the Examiner relies upon Wang as describing
the feature common to each of independent claims 77, 109, and 122 of an
optical point-to-multipoint network including an NM, one or more NCAs,
and a plurality of optical waveguides (Ans. 3-5). The Examiner equates
Wang’s optical line terminal (OLT) to an NM, and Wang’s optical network
units (ONUs) to NCAs. The major premise underlying the rejections
applying Wang is that the Examiner determines that Wang discloses or
suggests an optical LAN recited in each of independent claims 77, 109, and
122, as opposed to a wide area network (WAN). However, the Examiner
notably fails to assert in the rejections (see Ans. 3-11) that Wang’s “point-to-
multipoint network” is a LAN (Ans. 3). Instead, the Examiner reasons that
LAN and passive optical networks (PONs) are not exclusive, and that a PON
is suitable for a LAN and not suitable for a WAN (Ans. 13).

Appeal 2009-006986
Application 10/886,514

6
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 (Fed. Cir. 1988). The
Examiner’s articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).
On the record before us, we find no supportive evidence for the
Examiner’s assertion (Ans. 3-6, 13) that Wang teaches or suggests an optical
LAN. To the contrary, we are more persuaded by Appellants’ argument
(Reply Br. 3) that since Wang describes multiple customer premises (see
Wang at ¶ [0006]), Wang does not disclose an optical LAN, but instead what
is most likely an optical WAN. In our view, one of ordinary skill in the art
would understand that a signal at an OLT at a headend would need to be
amplified to communicate with a plurality of ONUs at customers’ premises,
thus making it a WAN. Wang says as much in paragraph [0006],
[t]ypically, the network endpoints are at the central office
or headend on one side, and the customer premises on the other
side. In one common configuration, an optical line terminating
(OLT) network device is located at the headend, and a plurality
of optical network units (ONUs) are located at the customers’
premises.
Although the Examiner is correct that Wang’s point-to-multipoint
network performs bandwidth allocation and dynamically manages
bandwidth using known layer protocols, we agree with Appellants (Reply
Br. 3) that PONs can be used in either LANs or WANs, and the fact remains
that Wang discloses nothing concerning the disclosed network being a LAN
as recited in claims 77 and 122.

Appeal 2009-006986
Application 10/886,514

7
We are also persuaded by Appellants’ argument (App. Br. 13) that
Kuo’s Figure 2, and element 200, serves to distinguish an OLT and
ONU/ONT from an NM and NCA. In other words, the fact that Kuo’s
point-to-multipoint PON 200 is shown separate from head end 210 and
customer premises 214 including a LAN (see Fig. 2; col. 2, ll. 30-60) is
evidence that Figure 2 shows a WAN which is composed of LANs found at
the customer premises’ end. Notably, Kuo describes a broadband
architecture in the form of a PON, which “facilitates broadband
communications between an optical line terminal (OLT) and multiple remote
optical network units (ONUs) over a purely passive optical distribution
network” (col. 1, ll. 14-26). Thus, we agree with Appellants that Kuo does
not disclose or suggest an optical LAN including an NM, one or more
NCAs, and a plurality of optical waveguides as recited in claims 77, 109,
and 122, or otherwise cure the deficiencies of Wang (App. Br. 13; Reply Br.
2-4).
Likewise, Abdelhamid does not disclose or suggest an optical LAN
including an NM, one or more NCAs, and a plurality of optical waveguides
as recited in claim 109, and fails to cure the deficiencies of Wang and Kuo
with respect to claim 109 and its corresponding dependent claims.
In light of our findings with respect to Wang discussed supra, we are
persuaded by Appellants’ argument (App. Br. 12-14; Reply Br. 2-4) that
Wang fails to teach or suggest an optical LAN including an NM, as recited
in claims 77 and 122. Accordingly, we will not sustain the Examiner’s
rejection of claims 77 and 122, and claims 82 to 87, 98, 100, and 124 to 126
which depend therefrom. For similar reasons, we will not sustain the

Appeal 2009-006986
Application 10/886,514

8
Examiner’s rejection of claims 78 to 81, 105 to 107, 109, 111, 112, 118, 119,
123, 128, and 129.
Because none of the additionally applied references to Masucci,
Graves, Adcox, Medina, and Hale cures the deficiencies of Wang, we will
not sustain the Examiner’s obviousness rejections of dependent claims 88 to
97, 99, 101 to 104, 108, 113 to 117, 121, 127, and 130 to 132, which
ultimately depend from claims 77, 109, and 122, respectively.
In summary, we will not sustain the obviousness rejections of claims
77 to 109, 111 to 119, and 121 to 132 because (i) the Examiner has not
established a factual basis to support the legal conclusion of obviousness
(see Fine, 837 F.2d at 1073), and (ii) the Examiner’s articulated reasoning
(and namely the factual findings regarding Wang) in the rejections do not
possess a rational underpinning to support the legal conclusion of
obviousness. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
The decision of the Examiner to reject claims 77 to 109, 111 to 119,
and 121 to 132 is reversed.

REVERSED

KIS

Alexander Soto
7673 Hazard Center Dr.
San Diego, CA 92108