Ex Parte Stephens et al

Board of Patent Appeals and Interferences

Sep 7, 2010

11635303 - (D) (B.P.A.I. Sep. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte THOMAS D. STEPHENS, MARK A. KELTY,
and ALISTAIR J. PRICE
_____________

Appeal 2009-007163
Application 11/635,303
Technology Center 2600
______________

Before ROBERT E. NAPPI, MAHSHID D. SAADAT, and CARL W.
WHITEHEAD Jr., Administrative Patent Judges.

NAPPI, 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 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 2009-007163
Application 11/635,303

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 2 through 6, 22 through 34, and 36 through 40.
We reverse.
INVENTION
The invention is directed to an optical signal controller configured to
provide monitoring signals. See pages 6 and 7 of Appellants’ Specification.
Claim 2 is representative of the invention and reproduced below:
2. An apparatus comprising:
an optical signal controller configured to provide a monitoring
signal from an optical signal in a plurality of sub-band signals at least
one of which includes a plurality of optical signal channels, and
control the characteristics of the optical signal based on the sub-band
signal characteristics, wherein said optical signal controller is
configured to combine a compensating channel having a power based
on the sub-band signal powers with the optical signal channels for
transmission of both the compensating channel and the optical signal
channels through at least two optical amplifiers to control the
characteristics of the optical signal channels passing through the at
least two optical amplifiers via a combined compensating channel and
optical signal channels.

REFERENCES
Sugata US 5,907,429 May 25, 1999
Tajima US 5,926,304 Jul. 20, 1999
Kosaka US 6,038,062 Mar. 14, 2000
Fatehi US 6,317,255 B1 Nov. 13, 2001

REJECTIONS AT ISSUE
The Examiner has rejected claims 2, 22 through 28, 30, 32, 36, 38,
and 39 under 35 U.S.C. § 103(a) as being unpatentable over Kosaka in view
of Tajima. Answer 3-5.
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Application 11/635,303

The Examiner has rejected claims 3 through 6, 29, 33, 34, 37, and 40
under 35 U.S.C. § 103(a) as being unpatentable over Kosaka in view of
Tajima and Sugata. Answer 5-8.
The Examiner has rejected claim 31 under 35 U.S.C. § 103(a) as
being unpatentable over Kosaka in view of Tajima and Fatehi. Answer 8
and 9.
ISSUES
Appellants argue on pages 8 through 22 of the Appeal Brief that the
Examiner’s rejection of independent claims 2, 22, and 36 under 35 U.S.C.
§ 103(a) is in error.
Appellants’ contentions with respect to the rejection of claims 2, 22,
and 36 under 35 U.S.C. § 103(a), present us with the issue: did the Examiner
err in finding that the combination of references teaches an optical signal
controller for transmission of both a compensating channel and signal
channels through at least two optical amplifiers as claimed?

ANALYSIS
Appellants’ arguments have persuaded us of error in the Examiner’s
rejection of claims 2, 22, and 36. Claim 2 recites “wherein said optical
signal controller is configured …. for transmission of both the compensating
channel and the optical signal channels through at least two optical
amplifiers to control the characteristics of the optical signal channels passing
through the at least two optical amplifiers.” Independent claim 22 and 36
each recite limitations directed to the combined signals being transmitted
through at least two optical amplifiers. The Examiner in rejecting
independent claims 2, 22, and 36 relies upon Tajima’s teachings in column
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Application 11/635,303

7, lines 34-55 to show that this feature is known in the art. Answer 4.
Further, in response to Appellants’ arguments that Tajima does not teach the
signals being transmitted through at least two optical amplifiers the
Examiner states that Figure 1 of Tajima depicts a repeater, an optical
amplifier, and as such shows that light from one amplifier flows through
other amplifiers. Answer 10. Further, the Examiner equates Tajima’s main
light, element 101, to the claimed optical channel, the excitation light,
item103A, as being the compensating light, and excitation light, item 103B,
as being the information carrying light. Answer 10. The Examiner finds
that the auxiliary signal light item 102 (which appears to come from the up
stream repeater’s excitation light 103B) is not terminated, but converted to
an electrical auxiliary signal which is used to modulate the excitation light
created in the repeater. Answer 15-16.
We disagree with the Examiner’s conclusion that this meets the
claimed invention. As discussed above, the independent claims recite that
the combined signals, an optical signal with plural channels and a
compensating channel, are transmitted through two optical amplifiers, i.e. an
optical signal passes through two amplifiers. We concur with the Examiner
that the skilled artisan would recognize that Tajima teaches that an optical
signal can pass through two amplifiers. However, we do not find that
Tajima teaches that the combined signal passes through two amplifiers,
specifically, the auxiliary signal, item 102, is stripped from the light prior to
entering the amplifier, at WDM 11, this signal is converted to an electrical
signal and the data is used to generate the new signal 103B. Col. 5, l. 64-
col. 6, ll. 2, col. 7, ll. 39-44. Thus, contrary to the Examiner’s findings, the
entire signal input to the optical amplifier is not passed through the
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amplifier, but a portion (the auxiliary signal) is stripped out and then used to
provide data for the creation of a new auxiliary signal 103B which is added
to the output of the current amplifier. Accordingly, the Examiner has not
shown the claimed features were known in the art. Thus, we will not sustain
the Examiner’s rejection 2, 22 through 28, 30, 32, 36, 38, and 39 under 35
U.S.C. § 103(a) as being unpatentable over Kosaka in view of Tajima.
The Examiner’s rejections of claims 3 through 6, 29, 31, 33, 34, 37,
and 40 similarly rely upon Kosaka in view of Tajima to teach the limitations
of independent claims 2, 22, and 36. The Examiner has not found that the
additional teachings of Sugata and Fatehi remedy the deficiencies noted
above with respect to the rejection of independent claims 2, 22, and 36.
Accordingly, we will not sustain the Examiner’s rejections of claims 3
through 6, 29, 31, 33, 34, 37, and 40 for the reasons discussed above with
respect to claims 2, 22, and 36.

CONCLUSION
Appellants have persuaded us of error in the Examiner’s rejections of
claims 2 through 6, 22 through 34, and 36 through 40.

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Appeal 2009-007163
Application 11/635,303

ORDER
The decision of the Examiner to reject claims 2 through 6, 22 through
34, and 36 through 40 is reversed.

REVERSED

ELD

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