Ex Parte Tian et al

Board of Patent Appeals and Interferences

Oct 30, 2009

10246053 (B.P.A.I. Oct. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte CECHAN TIAN, KOJI TAKEGUCHI, YASUHIKO AOKI, and
SUSUMU KINOSHITA
_____________

Appeal 2009-002882
Application 10/246,053
Technology Center 2600
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Decided: October 30, 2009
_______________

Before ROBERT E. NAPPI, CARLA M. KRIVAK, and ELENI MANTIS
MERCADER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
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This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 4, 6, 7, 8, 11, 13, 14, 15, and 19 through 26. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed towards a node from an optical network
which includes a tunable band-pass filter. See page 3 of Appellants’
Specification.
Claim 1 is representative of the invention and reproduced below:
1. A node for an optical network, comprising:
a first transport element operable to be coupled to an optical
ring and to transport traffic in a first direction;
a second transport element operable to be coupled to the optical
ring and to transport traffic in a second, disparate direction;
the first and second transport elements each comprising:
an optical splitter element operable to split an ingress signal
into an intermediate signal and a drop signal;
a filter operable to reject at least a first sub-band of the network
from the intermediate signal to generate a passthrough signal
including a plurality of disparate sub-bands of the network; and
an add element operable to add local traffic in at least the first
sub-band to the passthrough signal for transport in the network;
an amplifier; and
a configurable amplified spontaneous emission (ASE) filter
coupled to the optical ring and operable to selectively filter out energy
from sub-bands not used for carrying traffic in the network, the
configurable ASE filter comprising a plurality of filters and associated
switches, wherein each filter corresponds to a particular one of a
plurality of sub-bands and wherein the switch associated with each of
the filters is operable to be configured to either pass or terminate
traffic based on whether the associated sub-band is used for carrying
traffic in the network.

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REFERENCES
Mizrahi US 6,002,503 Dec. 14, 1999
Srivastava US 6,025,941 Feb. 15, 2000
Fatehi US 6,519,064 B1 Feb. 11, 2003
Egnell US 6,590,681 B1 Jul. 8, 2003

REJECTION AT ISSUE
Claims 1, 4, 6, 7, 8, 11, 13, 14, 15, 19, 21, 23, 24, and 26 are rejected
by the Examiner under 35 U.S.C. § 103(a) as being unpatentable over Egnell
in view of Srivastava and Fatehi. The Examiner’s rejection is on pages 3
through 7 of the Answer.1
Claims 20, 22, and 25 are rejected by the Examiner under 35 U.S.C.
§ 103(a) as being unpatentable over Egnell in view of Srivastava, Fatehi and
Mizrahi. The Examiner’s rejection is on pages 7 and 8 of the Answer.
ISSUES
Appellants argue, on pages 12 through 15 of the Brief2 that the
rejection of independent claim 1 is in error. Appellants assert that the
Examiner erred in finding that Fatehi teaches a plurality of filters associated
with switches where the switch associated with each filter is operable to
either pass or terminate traffic based on whether the associated sub-band is
used for carrying traffic in the network. Appeal Brief 13, Reply Brief 2-3.

1 Throughout the opinion, we make reference to the Answer, mailed January
10, 2008, for the respective details thereof.
2 Throughout the opinion, we make reference to the Appeal Brief received
December 17, 2007, and the Reply Brief received February 19, 2008, for the
respective details thereof.

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Accordingly, Appellants’ contentions presented with respect to the
Examiner’s rejection of claims 1, 4, 6, 7, 8, 11, 13, 14, 15, 19, 21, 23, 24,
and 26 present us with the issue: have Appellants shown that the Examiner
erred in finding that Fatehi teaches a configurable filter as claimed?

PRINCIPLES OF LAW
In analyzing the scope of the claim, Office personnel must rely on
Appellants’ disclosure to properly determine the meaning of the terms used
in the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 980
(Fed. Cir. 1995). “[I]nterpreting what is meant by a word in a claim ‘is not
to be confused with adding an extraneous limitation appearing in the
specification, which is improper’.” (emphasis in original) In re Cruciferous
Sprout Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002) (citations and
quotations omitted).

FINDINGS OF FACT
1. Fatehi teaches an add drop arrangement for a wavelength division
multiplexed system which can be easily upgraded. Abstract.
2. Fatehi’s system makes use of an optical transfer device that has a drop
path. Col. 5, ll. 26-30.
3. Signals input to the optical transfer device in Fatehi are routed from
the input to an optical routing device and from there to a filter pack.
The filter pack passes some frequencies and reflects others back to the
transfer device, which drops the reflected frequencies. Col. 5, ll. 46-
60.
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4. Fatehi teaches several arrangements of switches and filters in the filter
pack. One of the arrangements shown in figure 4d includes numerous
switches and filters where the switches are used to insert or shunt
individual filters in the optical path. When a filter is inserted, it
reflects selected frequencies and passes others. The reflected
wavelengths are dropped. Col. 8, ll. 43-48, 54-63.

ANALYSIS
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that Fatehi teaches a configurable filter as claimed. Claim 1
recites that a configurable filter comprises a series of filters and switches.
Claim 1 further recites that “the switch associated with each of the filters is
operable to be configured to either pass or terminate traffic based on whether
the associated sub-band is used for carrying traffic in the network.” Thus,
the scope of claim 1 includes that the switch terminates traffic in the
network, but is not limited to terminating traffic to the filter.
Appellants’ arguments on page 13 of the Appeal Brief are not
persuasive as they are not commensurate in scope with the claim.
Appellants argue that Fatehi does not disclose “each fiber grating having an
associated switch or that each such switch can either pass or terminate traffic
to its associated filter.” Appeal Brief 13. We are not persuaded by this
argument as we do not find that claim 1 recites a limitation directed to the
switch terminating traffic to the filter, rather as discussed above, claim 1
recites that the switch terminates traffic in the network.
In rejecting claim 1, the Examiner relies upon the filter depicted in the
figure 4d embodiment of Fatehi to demonstrate that the claimed configurable
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filter is known. Answer 9. Appellants argue on page 2 of the Reply Brief
that this embodiment does not teach the claimed filter as:
the switches do not terminate traffic but instead merely route traffic
either to the associated filter from the bypass route or from the
associated filter to the bypass route. In short, the filter module of
Figure 4D is the same as the module of Figure 4B, except that is [sic]
allows for multiple wavelengths to be reflected by filters so that the
wavelengths can be dropped.

We agree with Appellants’ explanation that that the switches operate
to route light to associated filters to be reflected and dropped, but we do not
agree that the claim defines over such an arrangement. As discussed above
claim 1 recites that the switches are associated with each filter and are
configured to either pass or terminate network traffic (of the associated sub-
band). Fatehi teaches that the switches either place a filter in a light path or
by-pass the filter. Fact 4. When the filter is in the light path, the filter
reflects frequencies that are to be dropped and passes other frequencies.
Fact 4. The reflected frequencies are dropped by the optical transfer device.
Fact 3. Thus, when the switch passes light to the filter, light carrying traffic
of the reflected frequency is reflected and dropped from traffic in the
network, i.e., the switch in this position operates to terminate traffic in the
network. When the switch by-passes the filter, it passes light to the network.
Thus, Appellants’ arguments have not persuaded us that the Examiner erred
in finding that Fatehi teaches a configurable filter as claimed.
Appellants further argue that the Examiner has provided no
motivation to combine Egnell in view of Srivastava and Fatehi, and has not
provided a motivation to modify Fatehi to arrive at a configurable filter as
claimed. Appeal Brief 13-14, Reply Brief 3. We are not persuaded by this
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argument as we find that Fatehi teaches the configurable filter as claimed,
thus there is no need for the Examiner to provide a reason to so modify
Fatehi.
Appellants’ arguments have grouped claims 4, 6, 7, 8, 11, 13, 14, 15,
19, 21, 23, 24, and 26 together with claim 1. Appeal Brief 12. As
Appellants’ arguments have not persuaded us of error in the Examiner’s
rejection of claim 1, we sustain the Examiner’s rejection of claims 1, 4, 6, 7,
8, 11, 13, 14, 15, and 19, 21, 23, 24, and 26 under 35 U.S.C. § 103(a).
Appellants’ arguments on page 14 of the Appeal Brief assert that the
rejection of claims 20, 22, and 25 under 35 U.S.C. § 103(a) is in error for the
same reasons as claim 1. As we are not persuaded of error in the rejection of
claim 1, we are similarly not persuaded of error in the Examiner’s rejection
of claims 20, 22, and 25. Accordingly, we sustain the Examiner’s rejection
of claims 20, 22, and 25 under 35 U.S.C. § 103(a).

ORDER
The decision of the Examiner rejecting claims 1, 4, 6, 7, 8, 11, 13, 14,
15, and 19 through 26 is affirmed.
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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