CISCO TECHNOLOGY, INC.

Patent Trials and Appeals Board

Aug 26, 2020

14665159 - (D) (P.T.A.B. Aug. 26, 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.
14/665,159 03/23/2015 FARROKH MOTTAHEDIN 062891.3997 6785
86846 7590 08/26/2020
Baker Botts L.L.P./Cisco Systems
2001 Ross Avenue
SUITE 900
Dallas, TX 75201
EXAMINER
WOLF, DARREN E
ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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):
PTOmail1@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FARROKH MOTTAHEDIN, DARREN K. HOPCROFT, and
BRICE D. ACHKIR
Appeal 2019-002271
Application 14/665,159
Technology Center 2600
Before ELENI MANTIS MERCADER, LARRY J. HUME, and
JASON J. CHUNG, Administrative Patent Judges.
MANTIS MERCADER, 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 29, 30, and 32–48. See Final Act. 1.
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. Appellant identifies the real party in interest as Cisco Technology,
Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus for testing using a
transceiver module. Claim 29, reproduced below, is illustrative of the
claimed subject matter:
29. An apparatus comprising:
a transceiver housing configured to be inserted into a port of a
host system, the port comprising at least a first channel and a
second channel;
a printed circuit board mounted in the transceiver housing and
comprising an electrical interface configured to interface with the
port of the host system; and
an identification module mounted on the printed circuit board,
the identification module configured to;
identify the apparatus to the host system; and
indicate to the host system, during testing of the host system, that
the apparatus is connected to a network even if the apparatus is
not connected to the network.
Appeal Br. 18 (Claims App.).
REJECTION
Claims 29, 30, and 32–48 are rejected under 35 U.S.C. 112(a) or 35
U.S.C. 112 (pre-AIA) first paragraph, 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.
The specification does not enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make and use the
invention commensurate in scope with these claims.
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OPINION
Claims 29, 30, and 32–48 stand rejected under 35 U.S.C. 112(a) or
35 U.S.C. 112 (pre-AIA) first paragraph, 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.
a) Examiner’s findings regarding the Specification, being enabling for a
limited scope based on the teachings in the application, but not
reasonably providing enablement for the full scope recited in the
claims.
The Examiner rejected claims 29, 30, and 33–48 under 35 U.S.C.
112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, 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. 7. According to the Examiner,
the Specification does not enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make and use the
invention commensurate in scope with these claims. Id. (citing MPEP
§ 2164.08 stating: “The Federal Circuit has repeatedly held that the
specification must teach those skilled in the art how to make and use the full
scope of the claimed invention without ‘undue experimentation.”’ In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)).
In the Answer, the Examiner clarifies the Wands Factors’ analysis as
it correlates to the findings in the Final Action in response to Appellant’s
argument for lack of analysis. See Ans. 15–16 and Appeal Br. 12–13; also
see In re Wands, 858 F2d 731, 737 (Fed. Cir. 1988). In particular, page 7,
paragraph 21, discusses the direction provided in the Specification (Wands
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factor #6) and the working examples (Wands factor #7) with regard to the
electrical interface, addressing the teachings and specific examples in
structure shown in Figure 2 and the flowchart of Figure 4. Ans. 15 (citing
Final Act. 7, para. 21). Regarding the breadth of the claims (Wands factor
#1), the Final Action at pages 7–12 discusses the scope of the claims with
reference to the teachings of the Specification. Id. In particular, the scope
of independent claim 29 (Wands factor #1) is discussed on pages 7–8, with
examples of the scope discussed on page 8, paragraphs 23–24. Id. at 15–16.
With respect to the direction provided in the Specification (Wands
factor #6) and the working examples (Wands factor #7), the Examiner finds
that Appellant’s Specification teaches an apparatus at Figure 2 that includes
a PCB 64 with an electrical interface 66. Final Act. 7. The Specification
teaches the electrical interface interfaces with the first and second channels
of the host system port through the use of pins corresponding to the transmit
and receive signals of channels 1 and 2. Id. This arrangement provides
loopback functionality and simulates a connection to a network by
connecting the transmit pin of one channel to the receive pin of the other
channel as illustrated in Figures 2 and 4. Id. Figure 4 is a flowchart
illustrating operation of the invention in which information transmitted on
channel 1 (step 418) is received on channel 2 (step 420), and information
transmitted on channel 2 (step 426) is received on channel 1 (step 430). Id.
The Examiner finds that claim 29 recites an apparatus including a
housing, PCB with an electrical interface, and an ID module. Id. The
Examiner finds that the claim, however, does not recite the manner in which
the electrical interface of the PCB is “configured to interface with the port of
the host system” (e.g., does not recite the general structure of Fig. 2 and the
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general operation of Fig. 4). Id. As a result, the Examiner concludes that
the claim has a broad scope including arrangements of the elements that are
fundamentally different than those taught in the Specification. Id. at 7–8.
The Examiner explains that as by way of example, claim 29 broadly
recites a PCB to interface with the port but does not recite the connections
(e.g., does not recite connections commensurate with the loopback
arrangement of FIG. 2). Id. at 8. According to the Examiner, the claim has
a scope that includes a wide variety of connections that are not
commensurate with the teachings. Id. For example, the claim has a scope
that includes the transmit pin of channel 1 looping back on the transmit pin
of channel 2, and the receive pin of channel 1 loops back on the receiver pin
of channel 2, but the Specification does not teach how to make and use such
a device. Id.
The Examiner further finds that the claim also has a scope that
includes no loopback connection between the first and second channels and
the Specification does not teach how to make and use such a device. Id.
Further, according to the Examiner the claim recites a port comprising first
and second channels without reciting particular structure commensurate with
the teachings. Id. The Examiner finds that “Channels,” by themselves, are
not particular structure and the claim does not recite the structure carrying
these channels. Id. The Examiner further finds that claim 29 has a scope
that includes for example, a single transmit pin and a single receive pin for
both channels 1 and 2. Id. According to the Examiner, the claim also has a
scope that includes a single pin for both transmit and the receive functions of
all of the channels. Id. The Examiner asserts that the Specification,
however, does not teach how to make and use such devices and does not
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teach how the loopback functionality would operate within the full scope of
such claims (i.e., contrast the scope of the claim with, for example disclosure
of Figs. 2 and 4). Id.
b) Appellant’s argument that the § 112 rejection is only proper if the
Examiner meets the burden of establishing a reasonable basis as to
why the scope of protection provided by a claim is not adequately
enabled by the Specification by viewing the Specification in light of
the eight Wands factors.
Appellant argues inter alia that the § 112 rejection is only proper if
the Examiner meets the burden of establishing a reasonable basis as to why
the scope of protection provided by a claim is not adequately enabled by the
Specification. Id. at 12–13 (citing M.P.E.P. § 2164.04). The proper
standard for determining whether claims are enabled requires, at minimum,
viewing the specification in light of the eight Wands factors. Id. (citing
M.P.E.P. § 2164.0l (a); discussing In re Wands, 858 F2d 731, 737 (Fed. Cir.
1988)). Id.
We agree with Appellant’s argument regarding the Wands factors as
particularly addressed below. At the outset, it is improper to conclude that a
disclosure is not enabling based on an analysis of only one of the Wands
factors while ignoring one or more of the others. M.P.E.P. § 2164.01(a)
(citing In re Wands, 858 F.2d at 737). The Examiner’s analysis must
consider all the evidence related to each of these factors, and any conclusion
of non-enablement must be based on the evidence as a whole. See id.
The Wands factors considered by the Examiner should have included:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
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(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the
invention based on the content of the disclosure.
M.P.E.P. § 2164.01(a) (citing In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988)).
The Examiner addressed the direction provided in the Specification by
the inventor (Wands factor (F)) and the existence of working examples
(Wands factor (G)). See Ans. 15 (citing Final Act. 7, para. 21). The
Examiner also addressed the breadth of the claims (Wands factor (A)). See
Ans. 15 (citing Final Act. 7–12). The Examiner improperly concluded that a
disclosure is not enabling based on an analysis of only three of the Wands
factors while ignoring the other Wands factors. See M.P.E.P. § 2164.01(a)
(citing In re Wands, 858 F.2d at 737). Appellant argues some of the Wands
factors and we turn to them in more detail below.
c) Wands Factor (C)--The state of the prior art; Wands Factor (D)--The
level of one of ordinary skill; and Wands Factor (E)--The level of
predictability in the art.
Determining enablement is a question of law based on underlying
factual findings. In re Vaeck, 947 F.2d 488, 495; Atlas Powder Co. v. E.I.
du Pont de Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984).
Appellant argues, and we agree, that contrary to the Examiner’s
finding that the scope of claim 29 includes a variety of “loopback
functionality” arrangements other than the example illustrated in Figure 2, so
that undue experimentation would be required for those with skill in the art
to make and use these arrangements, the Examiner failed to consider how
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the level of skill and predictability in the art impact the scope of enablement.
Id. Appellant argues, and we agree, that the amount of guidance or direction
needed to satisfy the enablement requirement is inversely related to the
amount of knowledge in the state of the art as well as the predictability in the
art. Id. (citing M.P.E.P. § 2164.03). According to Appellant the level of
ordinary skill in the relevant art, the scope of which is not addressed by the
Examiner, is relatively high. Id. Moreover, we agree that the invention is
comprised of electrical elements which are specifically described as
predictable. Id. (citing M.P.E.P. § 2164.03 citing In re Vickers, 141 F .2d
522, 526–27 (CCPA 1944)).
We further agree with Appellant that what the Examiner describes as
a “loopback functionality” is a concept well known in in the art as a
common troubleshooting technique. See id. We agree that a person of
ordinary skill in the art would readily appreciate that other configurations of
loopback connections could be used. See id. Furthermore, we note that the
specification need not disclose what is well-known to those skilled in the art
and preferably omits that which is well-known to those skilled and already
available to the public. In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991);
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed.
Cir. 1986), cert. denied, 480 U.S. 947 (1987); and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1463 (Fed. Cir. 1984).
d) Wands Factor (F)--The amount of direction provided by the inventor
and (G)--The existence of working examples.
Appellant argues that this is not a situation in which the Specification
is failing to teach a limitation appearing in the claims--the disclosure
provides at least one embodiment that teaches one of ordinary skill in the art
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how the electrical interface for the PCB can be “configured to interface with
the port of the host system.” Appeal Br. 12. Appellant directs our attention
to paragraphs 19–22 of the present Specification, which, in conjunction with
Figure 2, illustrates an embodiment of the configuration disclosed by claim
29. Id. (citing PGPub paras. 19–22 which correspond to Appellant’s Spec.
9–11). Appellant points us to the Examiner’s findings’ describing how
Figures 2 and 4 teach an embodiment of the interface between the PCB
electrical interface and the host system port in paragraph 21 of the Final
Office Action. Id. Appellant concludes that this teaching provided by the
Specification is entirely sufficient to enable the full scope of the claims. Id.
By way of introduction the invention, Figure 1 is reproduced below:

Figure 1 shows host system 20 of the communications system 10 that
may include a number of ports 22 configured to receive transceivers 40.
Spec. 5:11–13. Each of the ports 22 may have a receptacle configured to
allow an electrical interface of transceiver 40 to interface with an electrical
interface 24 of the host system 20. Spec. 5:19–21. For example, port 22
may be configured to guide a compact SFP transceiver 40 into a receptacle
to interface with electrical interface 24 wherein the electrical interface 24
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may represent a 20-pin connector compatible with compact SFP
transceivers. Spec. 5:21–26.
We turn to Figure 2 reproduced below:

Figure 2 shows the transceiver module 60 for testing the
communications system 10. Spec. 9:1–3. In particular, transceiver module
60 represents a device operable to facilitate testing of at least two channels
of port 22 in host system 20. Spec. 9:4–8. Transceiver 60 may facilitate
loop-back testing of the physical channels of port 22. Spec. 9:8–9.
The particular embodiment of the testing, component connections as
well as operability of the feedback circuit with channels is described as
follows:

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Transceiver 60 includes a housing 62 and a printed
circuit board 64 that may have an electrical interface 66.
Printed circuit board 64 may include identification module 76
and/or authentication module 78. In some embodiments,
housing 62 may represent a compact SFP housing. Housing 62
may be operable to be inserted into receptacle of port 22 in a
similar manner as was described above with respect to
transceiver 40.
Printed circuit board 64 represents one or more substrates
having electronic trace connectors. Printed circuit board 64
supports and/or couples the various electrical components of
transceiver 60. Printed circuit board 64 may include an
electrical interface 66 and feedback circuit 68. Electrical
interface 66 may be operable to interface with electrical
interface 24 of host system 20. Electrical interface 66 may, for
example, represent a 20-pin connector. Accordingly, electrical
interface 66 may include pins operable to interface with duplex
channels associated with compact SFP transceivers. In the case
where transceiver module 60 has a compact SFP housing, the
pin assignment of electrical interface 66 may correspond to that
described below with respect to FIGURE 3.
Feedback circuit 68 may include electrical trace
connectors 70 and 72. Trace connectors 70 and 72 may couple
the channels of port 22 to each other in pairs. Trace connectors
70 and 72 are operable to couple the transmit pins of channel l
to the receive pins of channel 2 and the receive pins of channel l
to the transmit pins of channel 2.
Trace connector 70 may include a pair of connectors 70a
and 70b. Likewise, trace connector 72 may include a pair of
connectors 72a and 72b. As illustrated, trace connector 70a
may couple the TX - pin of channel l to the RX - pin of channel
2, and trace connector 70b may couple the TX+ pin of channel l
to the RX+ pin of channel 2. Similarly, trace connector 72a may
couple the TX - pin of channel 2 to the RX pin of channel l, and
trace connector 72b may couple the TX+ pin of channel 2 to the
RX + pin of channel l. In some embodiments, each of
connectors 70a and 70b and connectors 72a and 72b may
respectively include a capacitor. Each capacitor Cl, C2, C3, and
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C4 may be of any capacitance suitable to remove DC
components of signals transmitted by channels l and 2 of port
22. For example, each capacitor may be a 0.01 microfarad
capacitor, 0.10 microfarad capacitor, or have other appropriate
capacitance. Removing such DC components using capacitors
may facilitate high speed data transmission rates. In some
embodiments, the TX -pin of channel 2 may also be coupled to
ground by a resistor Rl. Rl may be of any appropriate
resistance. For example, Rl may be approximately 500 ohms.
Rl may facilitate compatibility of transceiver 60 with both
compact SFP and SFP ports 22 of host system 20.
Using feedback circuit 68, printed circuit board 64 may
be operable to receive information from channel l of port 22
and transmit that information to channel 2 of port 22. Printed
circuit board 64 may also receive information from channel 2 of
port 22 and transmit that information to channel l of port 22. It
should be understood, however, that while an example
embodiment of transceiver 60 is illustrated, the teachings of the
present disclosure are intended to encompass embodiments of
host system 20 having more than two channels per port. In
such embodiments, an additional trace connector may be
provided for each additional pair of channels.
Spec. 9:9, 11:15.
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Figure 4 is reproduced below:

Figure 4 is a flow chart illustrating an example method of testing a
communication system 20 using transceiver module 60. See Spec. 15:21–
17–19.
Accordingly, Appellant’s Specification provides at least a single
embodiment with electrical elements on how to make and use the invention
based on the disclosure of Figures 1, 2, and 4 as described above. A single
embodiment may provide broad enablement in cases involving predictable
factors, such as mechanical or electrical elements. In re Vickers, 141 F.2d
522, 526–27 (CCPA 1944); In re Cook, 439 F.2d 730, 734 (CCPA 1971).
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Thus, we agree with Appellant that the disclosed embodiment is sufficient to
enable the full scope of the claims under Wands factor (F)--The amount of
direction provided by the inventor in the Specification and Wands factor
(G)--The existence of a working electrical example.
Appellant further argues that the Examiner’s finding that claim 29
does not “recite the connections of the interface, but rather recites the
desired result” does not apply the correct standard for enablement. Appeal
Br. 12. The enablement requirement is satisfied if the patent specification--
not the patent claim--teaches those skilled in the art how to make and use the
full scope of the claimed invention without undue experimentation. Id.
(citing M.P.E.P. § 2164.08). Appellant submits that the configuration of the
interface between the electrical interface and the port of the host system is
indeed supported by the present Specification, together with what is well
known in the art and the predictability of the art. Id.
We agree with Appellant that the configuration of the interface
between the electrical interface and the port of the host system is supported
by the present Specification, together with what is well known in the art and
the predictability of the art as shown by the disclosed embodiment as
discussed above.
e) Conclusion based on the Wands Factors Analysis.
In reviewing for lack of enablement, the Wands court elected to consider
“all of the factors.” Wands at 740. However, it is not necessary to review
all the Wands factors to find an enabling disclosure. Rather, the Wands
factors “are illustrative, not mandatory” and what is relevant to an
enablement determination depends upon the facts of the particular case. See
Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991);
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see also Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir.
1999); Warner-Lambert Co. v. Teva Pharms. USA, Inc., 418 F.3d 1326,
1337 (Fed. Cir. 2005).
Based on the above analysis under sections c) and d), we agree with
Appellant that at least the following Wands factors weigh in favor of
enablement: the state of the prior art (Wands factor (C)), the level of
ordinary skill in the art (Wands factor (D)), the level of predictability in the
art (Wands factor (E)), and the amount of direction provided in the
Specification by the inventor (Wands factor (F)).
Accordingly, we reverse the Examiner’s rejection of claim 29 as well
as the rejection of claims 30, and 32–48 for the same reasons as stated
above.
CONCLUSION
We reverse the Examiner’s rejection of claims 29, 30, and 32–48
under pre-AIA 35 U.S.C §112, first paragraph.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
29, 30, 32–48 112, first
paragraph
Enablement

29, 30, 32–48
REVERSED