2019004933 (P.T.A.B. Mar. 31, 2021)

Massachusetts Institute of Technology

Patent Trials and Appeals BoardMar 31, 2021

2019004933 (P.T.A.B. Mar. 31, 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. 15/196,933 06/29/2016 Vincent W.S. Chan 1118/A51 4020 164874 7590 03/31/2021 Sunstein LLP 100 High Street BOSTON, MA 02110-2321 EXAMINER TRAN, ELLEN C ART UNIT PAPER NUMBER 2433 NOTIFICATION DATE DELIVERY MODE 03/31/2021 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): usptomail@sunsteinlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VINCENT W. S. CHAN Appeal 2019-004933 Application 15/196,933 Technology Center 2400 BEFORE JOSEPH L. DIXON, BEVERLY A. FRANKLIN, and MAHSHID D. SAADAT, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–23. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Massachusetts Institute of Technology. Appeal Br. 4. Appeal 2019-004933 Application 15/196,933 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. An optical signal encryptor, comprising: a first input port configured to receive an encryption key signal; a pseudo-random cipher-stream generator that generates a pseudo-random cipher-stream according to the encryption key signal; a laser whose optical output is band-spread according to the pseudo-random cipher-stream to produce a band-spread optical signal; a second input port configured to receive a data stream; and a modulator that modulates the band-spread optical signal according to the data stream. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Townsend US 5,675,648 Oct. 7, 1997 Kastella US 2005/0135620 A1 June 23, 2005 Vig US 2006/0018475 A1 Jan. 26, 2006 Elliott US 2007/0133798 A1 June 14, 2007 Dynes US 2011/0173696 A1 July 14, 2011 Brodsky US 2012/0063769 A1 Mar. 15, 2012 REJECTIONS 1. Claims 1–4, 10, 11, and 18–20 are rejected under 35 U.S.C. § 103 as being unpatentable over Elliot in view of Vig. 2. Claims 5, 6, 8, and 9 are rejected under 35 U.S.C. § 103 as being unpatentable over Elliot in view of Vig and further view of Brodsky. Appeal 2019-004933 Application 15/196,933 3 3. Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over Elliot in view of Vig and further view of Kastella. 4. Claims 12, 14, 21, and 23 are rejected under 35 U.S.C. § 103 as being unpatentable over Elliot in view of Vig and further in view of Townsend. 5. Claims 13 and 22 are rejected under 35 U.S.C. § 103 as being unpatentable over Elliot in view of Vig and further in view of Townsend and Kastella. 6. Claims 15–17 are rejected under 35 U.S.C. § 103 as being unpatentable over Elliot in view of Vig and further in view of Townsend and Dynes. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant’s position in the record. Accordingly, we reverse each of the Examiner’s rejections on appeal for the reasons set forth in the record by Appellant, and add the following for emphasis only. We note that our determination with regard to Rejection 1 is dispositive for Rejections 2–6 (the Examiner does not rely upon the Appeal 2019-004933 Application 15/196,933 4 additionally applied references in the other rejections to cure the stated deficiencies of Elliot in view of Vig). With regard to the Examiner’s position for Rejection 1, we refer to the Examiner’s statement of this rejection set forth on pages 3–5 of the Answer. We agree with Appellant that the Examiner’s interpretation of Elliot therein is flawed for the reasons provided by Appellant in the record. Appeal Br. 15–19, Reply Br. 2–5. Additionally, we agree with Appellant that the Examiner misinterprets the claim term “band-spread” for the reasons explained by Appellant on pages 17–19 of the Appeal Brief and on pages 2– 5 of the Reply Brief. Because Rejection 1 is premised on a misunderstanding of the teachings of Elliot and of the claim term “band- spread”, we are persuaded of error, and reverse Rejection 1, and therefore also reverse Rejections 2–6 for the same reasons. CONCLUSION We reverse the Examiner’s decision. Appeal 2019-004933 Application 15/196,933 5 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1–4, 10, 11, 18–20 103 Elliot, Vig 1–4, 10, 11, 18–20 5, 6, 8, 9 103 Elliot, Vig, Brodsky 5, 6, 8, 9 7 103 Elliot, Vig, Kastella 7 12, 14, 21, 23 103 Elliot, Vig, Townsend 12, 14, 21, 23 13, 22 103 Elliot, Vig, Townsend, Kastella 13, 22 15–17 103 Elliot, Vig, Townsend, Dynes 15–17 Overall Outcome 1–23 REVERSED