Ex Parte Winzer

Patent Trial and Appeal Board

Jun 9, 2016

13076987 (P.T.A.B. Jun. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/076,987 03/31/2011
22046 7590 06/13/2016
Alcatel-Lucent USA Inc
600-700 Mountain A venue
Docket Administrator - Room 3B-212F
Murray Hill, NJ 07974
FIRST NAMED INVENTOR
Peter J. Winzer
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.
809034 4776
EXAMINER
LEUNG,WAILUN
ART UNIT PAPER NUMBER
2637
NOTIFICATION DATE DELIVERY MODE
06/13/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
narpatent@alcatel-lucent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER J. WINZER
Appeal2015-000356
Application 13/076,987
Technology Center 2600
Before CAROLYN D. THOMAS, JOSEPH LENTIVECH, and
SHARON PENICK, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-5, 10-17, 22, and 23. Claims 6-9 and
18-21 are objected to as being dependent upon a rejected base claim, but
would be allowable if rewritten in independent form including all of the
limitations of the base claim and any intervening claims (Final Act. 5). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
The present invention relates generally to enabling data transmission
using spatial multiplexing. See Spec. i-f 3.
Appeal2015-000356
Application 13/076,987
Claim l is illustrative:
1. A transmitter comprising:
an encoder configured to encode one or more input bit
streams into a plurality of spatially spreading coded bit streams and
provide the plurality of coded bit streams as output;
a plurality of modulators, each modulator configured to
receive a respective one of the plurality of coded bit streams,
modulate the respective one of the plurality of coded bit streams, and
provide a modulated output signal; and
a spatial multiplexer configured to spatially multiplex the
plurality of modulated output signals for insertion on a spatially
multiplexing waveguide.
Appellant appeals the following rejections:
RI. Claim 1-5, 10, 12-17, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chen (US 2010/0329693 Al, Dec. 30,
2010) and Niu (US 2008/0101493 Al, May 1, 2008); and
R2. Claims 11 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chen, Niu, and Magnotti (US 5,751,811, May 12, 1998).
ANALYSIS
Claims 1-23
Issue: Did the Examiner err in finding that Niu is analogous art?
Appellant contends that, regarding the argument that Niu is not from
the same field of endeavor as the claimed invention, "the Office Action
includes absolutely no evidence or analysis, in stark contrast to the Bigio
requirement. ... The lack of analysis renders the assertion conclusory"
(App. Br. 5). Appellant further contends that "Niu is directed to 'space-time
coding ... in wireless communication systems' ... The function of
inventions [sic] of the subject Application bear no relation to RF beam
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Application 13/076,987
steering as taught by [Niu]" (id. at 6). Appellant also contends that
"[t]hough the Office Action does not address [the second prong] of the test
for analogous art, ... Niu is ALSO not reasonably pertinent to the problem
faced by the inventor ... [because it is not] pertinent to security of data
optically transmitted via a physical layer subject to tapping" (App. Br. 7-8).
We agree with Appellant.
"Whether a reference in the prior art is 'analogous' is a fact question."
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561, 1568 n.9 (Fed. Cir. 1987)). Two criteria
have evolved for answering the question: "(1) whether the art is from the
same field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved. Id. at 658-59 (citing In re Deminski, 796 F.2d 436,
442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)). The
field of endeavor test "requires the PTO to determine the appropriate field of
endeavor by reference to explanations of the invention's subject matter in
the patent application, including the embodiments, function, and structure of
the claimed invention." In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004)
(citation omitted). See id. at 1326 ("[T]he PTO must show adequate support
for its findings on the scope of the field of endeavor in the application's
written description and claims, including the structure and function of the
invention.").
Here, we find that the Examiner has not adequately supported its
findings. We note that the "Field of the Invention" section of the present
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Application 13/076,987
application describes that the present invention relates to "optical
transmission equipment" and "data transmission using spatial multiplexing"
(i-f 3). Similarly, the "Summary of the Invention" of the present application
likewise states that"[ o ]ne or more embodiments herein disclosed allow for
secure physical-layer transmission over spatially multiplexed (e.g., multi-
core or multi-mode) optical fiber" (i-f l 0) and providing "the ability to
identify the presence of an eavesdropper tapping into such fiber utilized for
such spatially multiplexed physical-layer transmission" (id.). In describing
the prior art upon which the invention improves, the Specification of the
present application discusses that "single-mode and conventional multi-
mode fibers are inherently vulnerable to bend-induced tapping" (i-f 8) and "a
system using in-line optical amplifiers ... will hence convert a wavelength-
dependent loss differential into a signal-to-noise ratio (SNR) differential,
which in tum prohibits the detection of an eavesdropper by a simple
differential loss measurement at the receiver" (id.). Basically, the present
application describes how to achieve a secure transmission over spatially
multiplexed optical fiber.
To the extent that the Examiner's use of the cited reference Niu is
based on a determination that it is within Appellant's field of endeavor, we
find that the Examiner has not provided adequate support for that
conclusion. For example, the Examiner merely notes that "Appellant's
invention is directed to 'secure data transmission using spatial multiplexing,'
therefore techniques for 'using spatial multiplexing' should be considered as
'analogous prior art.' Particularly, Niu's disclosure is directed to 'Method
and system for computing a spatial spreading matrix for space-time coding
in Wireless communication systems"' (Ans. 7; see also Niu's i-f l ).
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Application 13/076,987
However, "[the] test for analogous art requires the PTO to determine the
appropriate field of endeavor by reference to explanations of the invention's
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention." Bigio, 381 F.3d at 1325-
26 (citations omitted). As noted supra, the Appellant's Specification
concerns "optical transmission systems" and using "spatial multiplexing" in
such optical systems. The Examiner does not explain, sufficiently, why the
scope of Appellant's field of endeavor extends beyond the disclosed spatial
multiplexing in optical transmission systems to Niu's spatial spreading
matrix for space-time coding in wireless communication systems.
Likewise, the Examiner makes insufficient findings in support of a
determination that Niu is analogous art under the second test. "A reference is
reasonably pertinent if ... it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor's attention in
considering his problem." Klein, 647 F.3d at 1348 (quoting In re Clay, 966
F.2d 656, 659 (Fed. Cir. 1992). See also In re Oetiker, 977 F.2d 1443, 1447
(Fed. Cir. 1992) ("[I]t is necessary to consider "the reality of the
circumstances' ... -- in other words, common sense -- in deciding which
fields a person of ordinary skill would reasonably be expected to look for a
solution to the problem facing the inventor.").
Here, the Examiner correctly finds that the problem with which
Appellant is involved is directed to optical communication systems
vulnerable to tapping and noise (see Ans. 7). The Examiner then goes on to
note that "Niu's teaching is 'reasonably pertinent' to the problem faced by
Appellant because Niu teaches a technique on the coded spatial data streams,
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which is aimed to solve the problem of minimizing errors" (id.) (emphasis
omitted).
However, we find that the Examiner has not sufficiently explained
how Niu is pertinent to the particular problem with which the inventor is
involved. Niu appears to specifically address "channel fading" from the
transmitter antenna to any receiver antenna and how to mitigate the same
(see Niu i-fi-12--4). Whereas, Appellant is concerned with the problem of the
vulnerability of fiber-optical transmission systems "to tapping, which is
done by bending the transmission fiber such that a small amount of light is
coupled out at a local bend" (Spec. i1 5). We agree with Appellant that the
Examiner's reasoning "fails to show that Niu[' s wireless system] is
reasonably pertinent to the Appellant's [optical bending] problem, at least
because the reasoning fails to show that Niu 'logically ... commended itself
to [the] inventor[']s attention in considering his problem" (Reply Br. 4). In
other words, the Examiner fails to explain how fading between wireless
communications antennas, as addressed in Niu, is reasonably pertinent to
addressing bends in optical fiber. Instead, the Examiner merely notes that
both systems minimize errors, without addressing the specific embodiments,
function, and structure of the claimed invention.
Because the Examiner has not met the burden of establishing that Niu
constitutes analogous art, we do not sustain the rejection of claims 1-23 as
being obvious in view of Chen and Niu.
DECISION
We reverse the Examiner's§ 103(a) rejections.
REVERSED
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