BRITISH TELECOMMUNICATIONS PUBLIC LIMITED COMPANY

Patent Trials and Appeals Board

Aug 12, 2020

2018008734 (P.T.A.B. Aug. 12, 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.
14/771,998 09/01/2015 Albert RAFEL PORTI 4359.63WOUS01 5617
135778 7590 08/12/2020
Patterson Thuente Pedersen, P.A.
4800 IDS CENTER
80 SOUTH 8TH STREET
MINNEAPOLIS, MN 55402-2100
EXAMINER
LIU, LI
ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
08/12/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT RAFEL PORTI, NEIL JAMES PARKIN, and
STEPHEN CHARLES BEAUMONT
Appeal 2018-008734
Application 14/771,998
Technology Center 2600
Before JEREMY J. CURCURI, IRVIN E. BRANCH, and PHILLIP A.
BENNETT, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellant1 has filed a paper under 37 C.F.R. § 41.52(a)(1) requesting
we reconsider our Decision of May 29, 2020, wherein we affirmed the
Examiner’s rejection of claims 1–4 and 6–12. We have reconsidered our
Decision in light of Appellant’s comments in the request, and we are not

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 BRITISH
TELECOMMUNICATIONS PUBLIC LIMITED COMPANY. Appeal Br.
2.
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Application 14/771,998
2
persuaded of anything our Decision misapprehended or overlooked. We,
therefore, decline to change the Decision.
DISCUSSION
We do not find Appellant’s arguments convincing of any error in our
original Decision. The Board did not misapprehend or overlook Appellant’s
arguments. Rather, the Board disagreed with Appellant and determined that
on this record “the contents of Figures 1 and 2 are the work of another and
are prior art.” Dec. 8 (citing Spec. 5:18–19). We decline to change our
original Decision, which states the following:
[W]e recognize that there must be a statutory basis before one’s
own work may be considered as prior art. According to the
MPEP, “the examiner must determine whether the subject matter
identified as ‘prior art’ is applicant’s own work, or the work of
another. In the absence of another credible explanation,
examiners should treat such subject matter as the work of
another.” MPEP § 2129 (emphasis added).
Appellant’s Specification discloses “Figure 1 shows a
schematic depiction of a known FTTCab network.” Spec. 5:18
(emphasis added). Appellant’s Specification discloses “Figure 2
shows a schematic depiction of a known resilient FTTCab
network.” Spec. 5:19 (emphasis added).
Given these disclosures in Appellant’s Specification
describing the contents of Figures 1 and 2 as “known,” we find
the contents of Figures 1 and 2 are the work of another and are
prior art. See Spec. 5:18–19.
In making this finding, we emphasize that the record does
not include another credible explanation or other evidence, such
as declaration testimony, of Figures 1 and 2 describing
Appellant’s own work. See Appeal Br. 21 n.1; see also Reply Br.
4–5.
Dec. 8.
For emphasis, we respond to the principal arguments presented in the
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Application 14/771,998
3
Request for Rehearing.
Appellant argues the cited passage of MPEP § 2129 is inapplicable
because Applicant did not identify Figures 1 and 2 as prior art. See Req.
Reh’g 3 (“There is no rule establishing that ‘known’ structures are prior
art.”).
We appreciate Appellant’s argument on this point. However, in
reaching our Decision, we interpret Appellant’s Specification (Spec. 5:18–
19) as making the required identification. We determine that such an
interpretation of the term “known” is reasonable, particularly on this record
where there is no other evidence on this point, such as declaration testimony
of Figures 1 and 2 describing Appellant’s own work.
Similarly, Appellant argues an admission that something is known is
not an admission of prior art. See Req. Reh’g. 4–5. Appellant argues “where
something is not described as being prior art, but rather is only described by
the Applicant as being ‘known,’ it is not sufficient to treat that disclosure as
AAPA.” Req. Reh’g 4 (citing Reading & Bates Construction Co. v. Baker
Energy Resources Corp., 748 F.2d 645 (Fed. Cir. 1984); In re Ehrreich, 590
F.2d 902 (C.C.P.A.1979)).
We also appreciate Appellant’s argument on this point. However, the
issue here is: what exactly was admitted? Put another way, are the inventors
improving on their own work as in Reading and Ehrreich, or improving on
the work of another? Based on the record before us, we determine the latter.
Notably, the Specification uses the term “known” rather than “my known”
when describing Figures 1 and 2, and Appellant has not argued the subject
matter of Figures 1 and 2 is the invention in another copending case or
issued patent to the same inventors.
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Application 14/771,998
4
Appellant further argues “the ‘known’ drawings and description
thereof include aspects that are not generally known, and are not prior art.”
Req. Reh’g 5 (citing Ex Parte Toyohide Kumagae et al., Appeal No. 2013-
005150 (PTAB December 18, 2014)). We also do not find this further
argument persuasive. In the instant case, the aspects of Appellant’s Figures 1
and 2 that are relied on in our Decision are shown in Figures 1 and 2, which
we determine are the work of another and are prior art.
Further, Appellant argues that an express label as “Prior Art” would
be sufficient to support a finding of AAPA. See Req. Reh’g 5–6 (citing In re
Nomiya, 509 F.2d 566 (C.C.P.A. 1975)).
We recognize that an express label as “Prior Art” is not present in
Appellant’s Figures 1 and 2. That said, based on the record before us, we
determine that Appellant’s statements in the Specification are sufficient to
support a finding that Appellant’s Figures 1 and 2 are prior art.
Finally, Appellant argues “[t]he manner in which the linecards 310
and 312 [in Appellant’s Figure 2] are operated, as described throughout the
rest of the application, has conventionally been either that both linecards are
passive, or alternatively both linecards are active.” Req. Reh’g 7. Appellant
further argues “[t]hroughout prosecution, the Examiner has failed to provide
any evidence that use a mix of active and passive linecards at individual
cabinets is known by others such that it would have prior art effect.” Req.
Reh’g 7.
These further arguments remain unpersuasive because in making our
decision, we determine Appellant’s Figures 1 and 2 are the work of another
and are prior art, and these teachings are used in combination with other
references to show that the invention would have been obvious to one of
ordinary skill in the art.
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CONCLUSION
Based on the record before us now and in the original appeal, we have
granted Appellant’s request to the extent that we have reconsidered our
Decision, but we deny Appellant’s request to make any changes in our
Decision.
The request for rehearing is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv).

REHEARING DENIED