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

Ex Parte Stephens et al

Board of Patent Appeals and InterferencesSep 7, 2010

11635303 (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. 2 Appeal 2009-007163 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 3 Appeal 2009-007163 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 4 Appeal 2009-007163 Application 11/635,303 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. 5 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 LEVEL 3 COMMUNICATIONS, LLC C/O CPA GLOBAL P.O. BOX 52050 MINNEAPOLIS, MN 55402 6