SEMTECH CANADA CORPORATION

Patent Trials and Appeals Board

Aug 27, 2020

14695890 - (D) (P.T.A.B. Aug. 27, 2020)

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.
14/695,890 04/24/2015 Gurpreet S. BHULLAR 20348P0001US02 7823
23550 7590 08/27/2020
HOFFMAN WARNICK LLC
540 Broadway
4th Floor
Albany, NY 12207
EXAMINER
PASCAL, LESLIE C
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
08/27/2020 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GURPREET S. BHULLAR

Appeal 2019-005403
Application 14/695,890
Technology Center 2600
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–10, 12–14, 40–42, and 50–56. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Semtech
Canada Corporation. Appeal Brief dated Jan. 28, 2019 (“Appeal Br.”) 3.
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CLAIMED SUBJECT MATTER

The present application generally relates to optical communication.
Specification filed April 24, 2015 (“Spec.”) ¶ 2. The Specification teaches
that optical transmitters employing Directly Modulated Lasers (DML) are
conventionally known. Id. ¶ 3. The Specification further teaches that, when
operating at higher data rates, distortion from the DML limits performance
of the data link. Id. Conventionally, linear filters are used to compensate for
the distortion. Id. ¶ 4. Because the distortion is nonlinear (id. ¶ 21),
however, linear filters fail to achieve optimal compensation (id. ¶ 4).
The Specification describes an embodiment including “a component
having repeatable distortion characteristics; and a drive circuit for providing
a drive signal and comprising a non-linear filter for pre-compensating for
distortion introduced by the component having repeatable distortion
characteristics in response to the drive signal, the error having a non-linear
response to the drive signal.” Id. ¶ 5.
Claim 1 (the sole independent claim) is illustrative of the subject
matter on appeal and is reproduced below:
1. A circuit comprising:
a component having repeatable distortion characteristics; and
a drive circuit for providing a drive signal and comprising a
non-linear filter having at least a tap for pre-compensating for
distortion introduced by the component having repeatable
distortion characteristics in response to the drive signal, the
repeatable distortion having a non-linear response to the drive
signal.
Appeal Br. 15 (Claims App.) (reformatted for clarity)
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REJECTIONS
The Examiner maintains the following rejections:2
1. Claims 1–10, 12–14, 40–42, and 50–56 are rejected under 35
U.S.C. § 112(b) as indefinite for failure to particularly point
out and distinctly claim the subject matter which the inventor
regards as the invention. Final Action dated March 28, 2018
(“Final Act.”) 3–7.
2. Claims 1–10, 12–14, 40–42, and 50–56 are rejected under 35
U.S.C. § 112(a) for failure to comply with the written
description requirement. Id. at 7–12.
3. Claims 1–10, 12–14, 40–42, and 50–56 are rejected under 35
U.S.C. § 112(a) for failure to comply with the enablement
requirement. Id. at 12–16.
DISCUSSION
Rejection 1. The Examiner rejects claims 1–10, 12–14, 40–42, and
50–56 as indefinite. Id. at 3–7. In support of the rejection, the Examiner
determines that, in claim 1, it is not clear what structure provides, “the
repeatable distortion having a nonlinear response to the drive signal” or
“pre-compensating for distortion introduced by the component having
repeatable distortion characteristics in response to the drive signal.” Id. at
4–5.
The Examiner further determines that the limitation found in claims
6–8 requiring “the non-linear filter comprises a non-linear Finite Impulse
Response (FIR) filter having at least 2 weights for application at each tap” is

2 The rejections are considered in the order in which they were issued by the
Examiner.
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insufficient to inform one as to the structure encompassed by the claim. Id.
at 5. The Examiner additionally determines that, although a number of
claims (claims 6–10, 14, 40–42, 50–52, and 54–56) include limitations
requiring the filters to have multiple weights, it is not clear “what the
specific weighting values are or how they are determined . . . or what
specific structure they are associated with.” Id.
The Examiner further determines that the “analogue filter” limitation
of claims 12 and 13 does not adequately inform one of the structure required
by the claim. Id. The Examiner further determines that “[n]or is it clear
what the criteria is for switching in claims 9 and 41 between first weight
signal and a second weight signal.” Id. at 6. The Examiner also determines
that claims 8 and 40 do not describe sufficient structure for “supporting
filtering of both a rising edge, low to high signal level response and a falling
edge, high to low signal level response.” Id.
Appellant argues that the rejection of claims 1–10, 12–14, 40–42, and
50–56 is in error. Appeal Br. 8–14. Appellant, however, does not present
argument regarding the specific scope of any rejected claim or the structure
required by any specific limitation at issue. Id. Rather, Appellant states its
view of the law and policy relating to the doctrine of indefiniteness (without
citation to caselaw). Id. Appellant then concludes that the Examiner has
misapplied the law regarding indefiniteness. Id. at 9–11.
Appellant makes a limited number of statements specific to the claims
at issue. First, Appellant asserts that “[i]t has been shown that one of skill in
the art can look at a driver circuit and determine whether or not it falls
within the monopoly claimed within each and every claim.” Id. at 9.
Second, in regard to whether there is a clear cut indication of the scope of
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the subject matter covered by the claim, Appellant asserts that the scope is a
“non-linear filter with a tap.” Id.
In the Answer, the Examiner contends that “Appellant[] ha[s] not
addressed the specifics of the rejections.” Examiner’s Answer dated May
10, 2019 (“Answer”) at 4.
The Examiner further discusses the course of prosecution where, in
response to an art based rejection, Appellant had advocated for a particular
claim construction. Answer 4–5. The Examiner states that Appellant’s
indication of its view of the scope of the claims led to the present rejection.
Id.
In its Reply (Reply Brief dated July 10, 2019 (“Reply” or “Reply
Br.”)), Appellant argues that the Examiner’s discussion of a prior art
reference renders the rejection “improper.” Reply Br. 2. Appellant
additionally makes certain general allegations of error. Id. at 4.
“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections.” In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011). Here, it is not apparent that Appellant has
identified any specific error in the rejection. Further, Board rules require
that Appellant’s “arguments shall explain why the examiner erred as to each
ground of rejection contested by appellant.” 37 C.F.R. § 41.37(c)(1)(iv).
While Appellant’s brief surely indicates general disagreement with the
rejection, there is no explanation as to why the Examiner’s determination
was in error as to the specific limitations at issue.
In view of the foregoing, we determine that Appellant has not shown
error in the Examiner’s rejection of claims 1–10, 12–14, 40–42, and 50–56
on the basis of indefiniteness.
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Rejection 2. The Examiner rejects claims 1–10, 12–14, 40–42, and
50–56 under 35 U.S.C. § 112(a) for failure to comply with the written
description requirement. Final Act. 7–12.
In support of the rejection, the Examiner determines that claim 1
requires compensating for distortion (“a non-linear filter having at least a tap
for pre-compensating for distortion”). Id. at 8. The Examiner determines
that the claim scope “extends to all filters that resolve the problem which is
more than is ‘adequately supported by the written description.’” Id. at 9.
In addition, the Examiner determines that claims 6–10, 14, 40–42, 50–
52, and 54–56 are not adequately supported. Id. at 9–10. Each of these
claims requires that the filter have “weight(s)” for application at a tap.
Appeal Br. 15–18 (Claims App.). The Examiner finds that, in the
Specification (¶¶ 35–37), “[i]t is vaguely disclosed how [weighting] is
done.” Final Act. 10. The Examiner determines that “[e]ither the applicant
feels that it is so well known how to determine these optimum weights to
provide the functional language (which appears to be an admission that this
is obvious and well known), or it would require ‘undue experimentation.’”
Id.
The Examiner further determines that claims 8 and 40 are not
adequately supported. Id. at 10–11. These claims each require that “the
non-linear filter comprises a non-linear Finite Impulse Response (FIR) filter
having at least 2 weights for application at each tap and supporting filtering
of both a rising edge, low to high signal level response and a falling edge,
high to low signal level response.” Appeal Br. 15, 16 (Claims App.). The
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Examiner states that “it does not appear that the specification teaches how
these factors are determined.” Final Act. 11.
Appellant argues that the rejection for failure to comply with the
written description requirement is in error. Appeal Br. 5–8, 11–14.
Appellant argues that there is no requirement that a claim (rather than
the specification) be enabling. Id. at 5. Appellant asserts that the claim “is
not broader than the disclosure and does not, ‘leave(s) room for ambiguity.’”
Id. at 6. Appellant additionally argues that the rejection includes “objections
that are mutually exclusive one to another” which “renders the objections so
confusing and unclear as to make it impossible for the Appellant to
adequately respond.” Id. In particular, Appellant asserts that at some points
the Examiner finds that “there is no structure” required by the claims and at
other points that there is limited structure required. Id. (Appellant does not
provide a citation in support of these statements).
Appellant asserts that “[h]ere, the teaching is to a non-linear filter with
a tap. That is exactly what is claimed in claim 1.” Id. at 7. Appellant
further argues that “[t]he claim is not to every possible method of
precompensating for the distortion, but to doing so with a non-linear filter
having a tap.” Id. Appellant additionally argues that “the reasonable
interpretation of the claims is not broader than the description in the
specification.” Id. Appellant asserts that “[t]here is no claim that is broader
than the description and one of skill in the art will know from the description
and from the claims how to design and implement a circuit within the scope
of claim 1.” Id. at 13. Appellant does not discuss or cite any specific
portion of the Specification. Id. at 5–8, 11–14.
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In the Answer, the Examiner reiterates that “[t]he present independent
claim reads on any nonlinear filter with a tap that provides very specific
precompensation, which is more than the Appellants have disclosed.”
Answer 7. The Examiner further asserts that “the examiner NEVER said
that ‘there is no structure’” as indicated by Appellant. Id. at 9 (capitalization
in original).
In the Answer, the Examiner additionally finds that “[t]he Appellants
have taught how to use a few nonlinear filters with a tap. This does not
mean that they are entitled to any and all nonlinear filters that provide the
precompensation that have not been disclosed by the Appellants.” Id. at 15.
The Examiner concludes that “[c]laim 1 of the present application claims
more species than the ones disclosed.” Id.
In its Reply, Appellant asserts that “[t]he specification is sufficient
such that one of skill in the art can reliably and predictably implement the
filter in ‘the any of a number of ways’ without ambiguity.” Reply Br. 3.
The purpose of the written description requirement is to “ensure that
the scope of the right to exclude, as set forth in the claims, does not over-
reach the scope of the inventor’s contribution to the field of art as described
in the patent specification.” Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345
(Fed. Cir. 2000) (cited with approval in University of Rochester v. G.D.
Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004)).
In appealing the rejection based on the written description
requirement, Appellant argues that the rejection is so confusing and unclear
that it cannot fairly respond. Appeal Br. 6. An Examiner establishes a
prima facie case where a “rejection satisfies 35 U.S.C. § 132, in ‘notify[ing]
the applicant . . . [by] stating the reasons for [its] rejection, or objection or
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requirement, together with such information and references as may be useful
in judging of the propriety of continuing the prosecution of [the]
application.’” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting 35
U.S.C. § 132) (alterations in original). “It is well-established that the Board
is free to affirm an examiner’s rejection so long as appellants have had a fair
opportunity to react to the thrust of the rejection.” In re Jung, 637 F.3d at
1365 (internal citations omitted).
Here, while there is a certain lack of clarity in the rejection arising
from the similarity of the Examiner’s analysis of distinct legal doctrines, the
overall thrust is sufficiently discernable to permit Appellant a fair
opportunity to respond to the action. Accordingly, we proceed to consider
the appeal.
As discussed above, “it has long been the Board’s practice to require
an applicant to identify the alleged error in the examiner’s rejections.” In re
Jung at 1365. Appellant, however, does not direct us to any particular
portion of the Specification that provides support for the claim limitations at
issue. Appellant makes some general statements relevant to claim 1 (and its
dependents) and the “filter” limitation, as discussed above. These
statements, however, are inadequate to show specific error in the Examiner’s
rejection. Additionally, Appellant does not provide specific argument
regarding the “weight” limitations identified by the Examiner.
In view of the foregoing, Appellant has not shown error in the
Examiner’s rejection for failure to comply with the written description
requirement.

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Rejection 3. The Examiner rejects claims 1–10, 12–14, 40–42, and
50–56 as not enabled. Final Act. 12–16.
The Examiner determines, in regard to claims 1, 8–10, and 12–14 that
the scope of the term “component” is broader than the scope of enablement.
Id. at 12. The Examiner states that the term “component” is broad enough to
read on nonoptical elements. Id.
The Examiner additionally determines that the claim limitation “at
least 25 Gbps” (claim 5) is broader than the scope of enablement. Id. at 12–
13. The Examiner further determines that, to the extent there are
components not described in the Specification that exhibit “repeatable
distortion characteristics,” then the applicant is claiming beyond the scope of
enablement. Id. at 13.
The Examiner finds that “[t]he scope of [claim 1] covers any way that
a nonlinear filter with a tap would provide a drive signal which provides the
result, which is more than the applicants have disclosed.” Id. at 13–14
(emphasis omitted). The Examiner further finds that it would require undue
experimentation to determine how to achieve the stated functions. Id. at 14.
The Examiner finds that it is not clear how a generic nonlinear filter having
at least one tap provides a drive signal that provides the claimed repeatable
distortion and compensation. Id. The Examiner finds that claim 1 “covers
any way that a nonlinear filter with a tap would provide the result, which is
more than the applicants have disclosed.” Id.
The Examiner finds that the “weight” related limitations of claims 6–
10, 14, 40–42, 50–52, and 54–56 are not enabled. Id. at 15. Similar to prior
rejections, the Examiner finds that “[t]he only portion of the specification
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which discusses determining the weights is in paragraphs 35–37. It is
vaguely disclosed how this is done.” Id.
The Examiner finds that claims 8 and 40 are not enabled. Id. at 15–
16. These claims each require that “the non-linear filter comprises a non-
linear Finite Impulse Response (FIR) filter having at least 2 weights for
application at each tap and supporting filtering of both a rising edge, low to
high signal level response and a falling edge, high to low signal level
response.” Appeal Br. 15, 16 (Claims App.). The Examiner states that “it
does not appear that the specification teaches how these factors are
determined.” Final Act. 16.
Appellant includes certain arguments regarding enablement in its
brief. See Appeal Br. 5, 6, 11, 13. Appellant (correctly) argues that a claim
need not be enabling; rather, the specification must enable the claim. Id. at
5, 11; Reply Br. 3. Appellant further argues that “[t]here are specific
structural limitations recited within the claims that are enabled by the written
description.” Appeal Br. 5. Appellant asserts that “the disclosure in the
present application is sufficient to enable one of skill in the art to work the
invention.” Id. at 6.
Appellant additionally argues that the Examiner’s findings relating to
the clarity of the claims “have nothing to do with the sufficiency of the
disclosure.” Id. at 11. Appellant further argues that “[h]aving the same
objections under both 35 U.S.C. 112(a) and 35 U.S.C. 112(b) is confusing”
and indicative of a misunderstanding on the Examiner’s part. Id.
Appellant asserts that “the recitations of claim 1 are disclosed within
the specification in a manner that enables one of skill in the art to implement
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embodiments of the invention that fall within claim 1.” Id. at 13. As a
result, Appellant concludes, “there is sufficient disclosure.” Id.
Appellant does not discuss any portion of the Specification in the
portions of its principal brief relating to enablement.
In its Reply Brief, Appellant argues that caselaw concerning the
chemical arts relied on by the Examiner (such as Amgen v. Chugai Pharm.
Co., 927 F.2d 1200 (Fed. Cir. 1991)) is not entirely analogous because it is
known that some compounds or genes function in a desired manner while
others, even in the same class, do not. Reply Br. 2. This is in contrast to the
electronic arts where components perform predictably. Id. at 3.
Appellant further argues that “[t]he group ‘non-linear filters,’ though
large, is not beyond the scope of the disclosure.” Id. at 3. Appellant
additionally argues that the Examiner has conflated claim scope and
enablement. Id.
We determine that the Examiner has stated sufficient facts and
analysis to establish a prima facie case of lack of enablement. As discussed
above, once a prima facie case is established, “it has long been the Board’s
practice to require an applicant to identify the alleged error in the examiner’s
rejections.” In re Jung at 1365. Appellant, however, does not direct us to
any particular portion of the Specification that describes the claim
limitations at issue. Appellant does not meaningfully and specifically
respond to the Examiner’s findings regarding the following: the scope of the
term “component” (Final Act. 12); the 25Gbps limitation (id. at 12–13); the
nonlinear filter limitation (id. at 13–14), the “weight” related limitations (id.
at 15), or the “rising edge . . . falling edge” limitations” (id. at 16).
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In view of the foregoing, Appellant has not shown error in the
Examiner’s rejection for lack of enablement.

CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 12–14,
40–42, 50–
56
112(b) Indefiniteness 1–10, 12–14,
40–42, 50–
56

1–10, 12–14,
40–42, 50–
56
112(a) Written
Description
1–10, 12–14,
40–42, 50–
56

1–10, 12–14,
40–42, 50–
56
112(a) Enablement 1–10, 12–14,
40–42, 50–
56

Overall
Outcome
1–10, 12–14,
40–42, 50–
56

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED