Futurewei Technologies, Inc.

Patent Trials and Appeals Board

Dec 6, 2021

2020006095 (P.T.A.B. Dec. 6, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/856,803 12/28/2017 Yangjing Wen 4502-33200 2643
89394 7590 12/06/2021
Futurewei Technologies, Inc.
c/o Conley Rose, P.C.
4965 Preston Park Blvd, Suite 195E
Plano, TX 75093
EXAMINER
WOLF, DARREN E
ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
12/06/2021 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):
aipatent@huawei.com
dallaspatents@dfw.conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YANGJING WEN, YU SHENG BAI, AN LI, and YAN CUI
Appeal 2020-006095
Application 15/856,803
Technology Center 2600
Before JAMES B. ARPIN, HUNG H. BUI, and SCOTT RAEVSKY,
Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 7–10, 15, 16, 19, and 20. The remaining claims
are objected to as dependent on a rejected base claim, but would otherwise
be allowable. Final Act. 11. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Futurewei Technologies, Inc., a
subsidiary of Huawei Technologies Co., Ltd. Appeal Br. 3.
Appeal 2020-006095
Application 15/856,803

2
CLAIMED SUBJECT MATTER
The claims relate to an optical parameter detection receiver. Spec.
¶ 27. Claim 1, reproduced below, is illustrative (with emphasis added to
indicate the disputed limitation):
1. A method comprising:
receiving a multiplexed optical signal comprising optical
channels for N wavelengths, N being a positive integer greater
than or equal to two;
separating the multiplexed optical signal into a first
multiplexed light and a second multiplexed light, each of the
first multiplexed light and the second multiplexed light having
the same polarization, and each of the first multiplexed light
and the second multiplexed light having N wavelengths;
separating the first multiplexed light into a plurality of
first lights, each having a different wavelength;
separating the second multiplexed light into a plurality of
second lights simultaneous with separating the first multiplexed
light into the first lights, each of the second lights having a
different wavelength; and
generating optical parameters for each optical channel
in the N wavelengths using the first light and the second light
for each wavelength.
REJECTION
The Examiner makes the following rejection:
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1, 7–10, 15, 16, 19,
20
112(a) Lack of Enablement

Appeal 2020-006095
Application 15/856,803

3
ANALYSIS
The Examiner rejects independent claims 1, 8, and 15 for lack of
enablement “because the specification, while being enabling for a limited
scope based on the teachings in the application, does not reasonably provide
enablement for the full scope recited in the claims.” Final Act. 6. The
Examiner points to the following limitation in claim 1, for example, as not
enabled: “generating optical parameters for each optical channel in the N
wavelengths using the first light and the second light for each wavelength.”
Id. According to the Examiner, the Specification “does not teach how any
optical parameter can be generated, but rather teaches the generation of
specific parameters (e.g., see FIGS. 9 and 11).” Id. at 7.
Appellant contends that the claims are enabled, relying on the factors
from In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Appeal Br. 8–34.
From Appellant’s lengthy arguments, we note the following. First,
Appellant contends that the optical technology of the present claims is
“predictable technology.” Id. at 11. Second, Appellant contends that
“[e]ight paragraphs of the specification explain how to generate the optical
parameters.” Id. at 14 (citing Spec. ¶¶ 42–49, Figs. 9–11). Third, Appellant
contends that “the Office Action admits that the specification discloses not
only one, but two different examples of optical architectures that generate
optical parameters using the first and second light for each wavelength,
namely FIGS. 9 and 11.” Id. at 19. And finally, Appellant argues,
“[a]lthough not required for enablement of the claim limitation in question,
the second example provides further enablement of the broad claim
limitation.” Id.
Appeal 2020-006095
Application 15/856,803

4
The Examiner responds with similarly lengthy findings. We note the
following from the Examiner’s Answer. Ans. 9–35. First, the Examiner
finds that “the generating step in method claim 1 does not require any of the
steps from either of the disclosed algorithms (FIGS. 13 and 14).” Ans. 13.
Second, the Examiner admits that “the art may be predictable” but finds that
“the disparity between the scope of the claims and the teachings in the
application are such that the art is not sufficiently predictable to support the
broad scope of the claims in light of the complexity required in the
teachings.” Id. at 22. Third, the Examiner “agrees that there are two
embodiments disclosed” but finds that “[t]he inventors do not provide any
direction or guidance for algorithms or generator structures that are
commensurate with the rejected claims.” Id. at 23. Finally, the Examiner
determines that “[w]hile it is possible that a single embodiment can, in some
circumstances, enable a broad claim, there is no guidance saying that a
single embodiment will always enable a broad claim.” Id. at 24.
In the Reply Brief, Appellant responds that “[it] is well settled that the
amount of disclosure required to enable a broad claim is dependent on the
predictability of the art.” Reply Br. 2. Appellant cites Spectra-Physics, Inc.
v. Coherent, Inc., which states:
If an invention pertains to an art where the results are
predictable, . . . a broad claim can be enabled by disclosure of a
single embodiment . . . and is not invalid for lack of enablement
simply because it read on another embodiment of the invention
which is inadequately disclosed.
Id. (citing 827 F.2d 1524, 1533 (Fed. Cir. 1987) (internal citations omitted)).
Appellant argues that because the optical technology of the claims is
predictable and because there are two embodiments supporting the claim
limitation, the claim is enabled. See id. at 2–4.
Appeal 2020-006095
Application 15/856,803

5
We agree with Appellant that the general rule of Spectra-Physics
applies here. The Examiner admits that the disputed limitation is supported
by two embodiments from the Specification and that the technology of the
claims is predictable. Ans. 22–23. Under Spectra-Physics, the predictable
optical technology and the Specification’s multiple embodiments sufficiently
enable the broad claims. See 827 F.2d at 1533. Although our reviewing
court held in LizardTech, Inc. v. Earth Resource Mapping, Inc. that, in
certain circumstances, a single embodiment may not sufficiently enable a
broad claim, we find LizardTech distinguishable at least because there are
two embodiments disclosed in Appellant’s Specification. See 424 F.3d
1336, 1346 (Fed. Cir. 2005); see also Instrumentation Lab. Co. v.
Hemosonics LLC, PGR2019-00047, Paper 8 at 15 (PTAB Oct. 24, 2019)
(distinguishing LizardTech based on a disclosure of multiple embodiments).
Accordingly, we do not sustain the Examiner’s rejection of claim 1
and of similar independent claims 8 and 15. The Examiner’s rejection of the
dependent claims relies on similar arguments, which we reverse for similar
reasons.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 7–10, 15,
16, 19, 20
112(a) Lack of
Enablement
1, 7–10, 15,
16, 19, 20

REVERSED