Ex Parte 6542660 et al

Patent Trial and Appeal Board

Jun 27, 2014

95001148 (P.T.A.B. Jun. 27, 2014)

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.
95/001,148 02/19/2009 6542660 5145-CIRREX-RI148 2485
27571 7590 06/30/2014
Ascenda Law Group, PC
84 W. Santa Clara St.
Suite 550
San Jose, CA 95113
EXAMINER
NGUYEN, TUAN H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/30/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

CISCO SYSTEMS, INC.
Requester and Cross-Appellant

v.

GRAYWIRE LLC
Patent Owner and Appellant
________________

Appeal 2014-001734
Reexamination Control 95/001,148
Patent 6,542,660 B1
Technology Center 3900
________________

Before JOHN A. JEFFERY, DAVID M. KOHUT, and
JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owner appeals the Examiner’s decision to reject claims 1-24,
26-31, 34-37, 39-41, 45, 48, 55, 56, 60, 61, 65, 66, 68, and 71. PO App. Br.
2. Requester cross-appeals the Examiner’s determination not to make a
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proposed rejection of claims 1-19. 3PR App. Br. 2. We have jurisdiction
under 35 U.S.C. §§ 134 and 315, and heard the appeal on April 30, 2014.
Claims 1-24, 26-31, 34-37, 39-41, 45, 48, 55, 56, 60, 61, 65, 66, 68,
and 71 are rejected on various grounds; the Examiner has not adopted
proposed rejections of claims 1-19 on various grounds. See RAN 5-90.
We affirm.

STATEMENT OF THE CASE
This proceeding arose from a request by Cisco Systems, Inc. for an
inter partes reexamination of U.S. Patent 6,542,660, titled “Method and
System for Increasing a Number of Information Channels Carried by Optical
Waveguides” (the “’660 patent”). The ’660 patent is involved in litigation.
The case is captioned Graywire, LLC v. Ciena Corp. et al.; Case No. 1:08-
cv-02993. On July 17, 2009, the case was stayed. PO App. Br. 2; see also
3PR App. Br. 2. The ’660 patent describes “[a]n optical add/drop
multiplexing (OADM) device can increase the number of information
channels carried by an optical waveguide by utilizing different wavelength
regions of light.” Abstract.
Claims 1, 6, and 14 are illustrative. Claims 1, 6, and 14 are reproduced
below:
1. An optical add-drop multiplexing (OADM) device comprising:
a wavelength adapter module for transforming unstabilized non-
monochromatic or monochromatic light energy into one or more channels of
stabilized monochromatic light energy having one or more predefined
wavelength regions; and
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a filter module for at least one of dropping, adding, and recombining
one or more channels of stabilized monochromatic light energy having one
or more predefined wavelength regions, whereby information traffic carried
by an optical waveguide is substantially increased; and wherein the OADM
device is part of a SONET optical network.

6. An optical network comprising:
a SONET network; and
a plurality of optical add-drop multiplexing (OADM) devices
connected to a plurality of SONET network terminals; each OADM device
comprising:
a wavelength adapter module for transforming unstabilized non-
monochromatic or monochromatic light energy into one or more channels of
stabilized monochromatic light energy having one or more predefined
wavelength regions; and
a filter module for at least one of dropping, adding, and recombining
one or more channels of stabilized monochromatic light energy having one
or more predefined wavelength regions.

14. The optical network of claim 6, wherein the wavelength adapter
module further comprises a optical feedback assembly coupled to an optical
waveguide.

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SELECTED REFERENCES
 Chang et al., “Multiwavelength Reconfigurable WDM/ATM/SONET
Network Testbed,” Journal of Lightwave Technology, Vol. 14, No. 6,
June 1996 (“Chang”).
 M. G. Young et al., “A 16 X 1 Wavelength Division Multiplexer with
Integrated Distributed Bragg Reflector Lasers and Electroabsorption
Modulators,” IEEE Photonics Technology Letters, Vol. 5, No.8, Aug.
1993 (“Young Article”).
 Published PCT Application WO 97/30495 A1, published Aug. 21,
1997 (“the ’495 PCT Application”).
 Published PCT Application WO 97/07608 A1, published Feb. 27,
1997 (“the ’671 PCT Application”).
 Wagner et al., “MONET: Multiwavelength Optical Networking,”
Journal of Lightwave Technology, Vol. 14, No. 6, June 1996
(“Wagner”).
 Walter J. Goralski, SONET: A Guide to Synchronous Optical
Networks, McGraw-Hill, 1997 (“SONET Guide”).
 US 6,295,306 B1; issued Sep. 25, 2001 (“Asami”).

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ANALYSIS
THE INDEFINITENESS REJECTION OF CLAIMS 21, 24, 29, 37, AND 41
The Examiner rejects claims 21, 24, 29, 37, and 41 as being indefinite.
RAN 81-84.
Patent Owner does not present arguments regarding the indefiniteness
of claims 21, 24, 29, 37, and 41.
We, therefore, summarily sustain the Examiner’s rejection of claims
21, 24, 29, 37, and 41 as indefinite.

THE ANTICIPATION REJECTION OF CLAIMS 1-12, 14-17, AND 20 BY CHANG
Claims 1-12, 16, and 17
The Examiner finds Chang describes all limitations of claims 1 and 6.
RAN 14-17, 22-23. The Examiner relies on Chang’s (Fig. 1) network
testbed architecture, including Chang’s (Fig. 2) network access nodes, for
describing the recited OADM device being part of a SONET optical
network. RAN 16.
Patent Owner makes the following principal arguments:
(i) The “Examiner erred in concluding that the Chang Article
discloses a SONET network as that term is properly construed for the ’660
patent.” PO App. Br. 33.
(ii) “[T]he proper construction for the term “SONET network” would
be an optical network originally designed to operate using SONET protocols
and time division multiplexing --and not merely a network connected to a
SONET terminal.” PO App. Br. 34.
(iii)
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The Chang Article discloses a network testbed that is able to
receive information from an ATM/SONET terminal that
complies with the bit rates for SONET OC-3 information and
retransmit that information over the testbed. The mere fact that
the ATM/SONET terminal transmits information in accordance
with certain SONET protocols to the data link receivers does
not make the testbed a “SONET network” as that term is used
in the ’660 patent specification. The testbed was not operated
under time division multiplexing. It merely is connected to an
ATM/SONET terminal.
PO App. Br. 34; see also PO Reb. Br. 5-6.
We agree with the Examiner that Chang’s (Fig. 1) network testbed
architecture, including Chang’s (Fig. 2) network access nodes, describes the
recited OADM device being part of a SONET optical network. We agree
with the further elaboration by Third Party Requester and adopt as our own
Third Party Requester’s analysis:
The described ATM/SONET terminals generate signals in the
SONET protocol, and those signals use the SONET protocol
from origin to destination throughout the network. A person of
ordinary skill in the art would have considered a network using
some, but not necessarily all, SONET network elements to be a
SONET optical network. The network described in the Chang
Article falls easily within the definition of a SONET network as
that term is understood by a person of ordinary skill in the art.
3PR Resp. Br. 15 (citing 3PR Resp. Br. Ex. E3, Declaration of W. John
Tomlinson, Ph.D., Sept. 30, 2011, ¶ 12).
We are not persuaded of Examiner error.
Contrary to Patent Owner’s arguments (i), (ii), and (iii), the ’660
patent Specification does not define the term “SONET network.” For
example, the ’660 patent (col. 7, ll. 12-14) describes “FIG. 3 illustrates an
exemplary optical network 300 that includes a SONET network overlayed
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with optical add/drop multiplexing (OADM) devices 310 of the present
invention.” The ’660 patent (col. 8, ll. 20-23) further describes “both
SONET protocol and non-SONET information channels can be propagated
simultaneously on the same access network.” Thus, a broad, but reasonable,
construction of the term “SONET network” includes a network using some,
but not necessarily all, SONET network elements, such as Chang’s (Fig. 1)
network testbed architecture, including Chang’s (Fig. 2) network access
nodes. The evidence of record supports the Examiner’s findings, and
explains that Chang discloses a SONET network. See 3PR Resp. Br. Ex. E3,
Declaration of W. John Tomlinson, Ph.D., Sept. 30, 2011, ¶ 12.
We, therefore, sustain the Examiner’s rejection of claims 1 and 6 as
anticipated by Chang, as well as claims 2-5, 7-12, 16, and 17, which are not
argued with particularity.

Claims 14, 15 and 20
The Examiner finds Chang describes all limitations of claims 14 and
20. RAN 18-20, 24-25. The Examiner relies on Chang’s distributed feedback
laser (DFB laser) for describing the recited optical feedback assembly. RAN
18-19 (citing Chang, Fig. 2).
Patent Owner makes the following principal arguments:
(i) The “Examiner erred in concluding that a distributed feedback
laser (‘DFB laser’) satisfies the ‘optical feedback assembly’ recitation in
Claims 14 and 20.” PO App. Br. 7.
(ii)
As can be seen from the proper construction of the term
“optical feedback assembly,” the structure requires at least two
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aspects: 1) the structure is outside the active region of the laser
device and 2) the structure feeds light energy back into the
active region of the laser device to stabilize the wavelength of
light energy emitted from the laser. The grating of the DFB
laser fails to provide either of these two aspects.
PO App. Br. 10; see PO App. Br. 8-10 (citing the ’660 patent, Fig. 4, col. 9,
ll. 31-44; the ’523 patent, col. 2, ll. 28-42, col. 2, ll. 66 - col. 3, l. 9, col. 4, ll.
28-31, col. 8, ll. 5-11; PO App. Br. Ex. 1, Declaration of Donald D. Davis,
Jr., Ph.D., May 28, 2010, ¶¶ 15, 17); see also PO Reb. Br. 6-7.
We agree with the Examiner that Chang’s distributed feedback laser
(DFB laser) describes the recited optical feedback assembly. We agree with
the further elaboration by Third Party Requester and adopt as our own Third
Party Requester’s analysis:
[T]he Examiner correctly looked to the specification to provide
a definition for the term “optical feedback assembly.” Finding
no express definition, he properly applied the broadest
reasonable interpretation standard to find that DFB lasers
include optical feedback assemblies.
3PR Resp. Br. 4.
“[A] person skilled in the art would have understood that the gratings of the
DFB lasers taught by [] Chang [] form an optical feedback assembly.” 3PR
Resp. Br. 4 (citing 3PR Resp. Br. Ex. E2, Declaration of W. John
Tomlinson, Ph.D., Oct. 9, 2009, ¶ 14).
We have considered the arguments (PO App. Br. and PO Reb. Br.)
and evidence (PO App. Br. Evidence Appendix) presented by Patent Owner,
including the declarations by Donald D. Davis, Jr., Ph.D, and we are not
persuaded of Examiner error.
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Contrary to Patent Owner’s argument (i), the evidence of record
supports the Examiner’s findings, and explains that “[i]n a DFB laser, such
as the type disclosed in [] Chang [], the grating would have been understood
by a person of ordinary skill in the art as an assembly that provides optical
feedback and is coupled to the optical waveguide of the laser gain region.”
3PR Resp. Br. Ex. E2, Declaration of W. John Tomlinson, Ph.D., Oct. 9,
2009, ¶ 14.
Contrary to Patent Owner’s argument (ii), the ’660 patent
Specification and U.S. Pat. No. 6,496,523 (the ’523 patent) (incorporated by
reference in the ’660 patent) describe embodiments, and do not define the
term “optical feedback assembly.” For example, the ’660 patent (col. 6, ll.
4-6) explains that Fig. 4 illustrates an exemplary OADM device; the ’660
patent (col. 9, ll. 34-36) (emphasis added) describes “[a]n optical feedback
assembly 430 can comprise a filtering device in combination with a partial
reflecting device.” Thus, a broad, but reasonable, construction of the term
“optical feedback assembly” includes a distributed feedback laser (DFB
laser).
We, therefore, sustain the Examiner’s rejection of claims 14 and 20 as
anticipated by Chang, as well as claim 15, which is not argued with
particularity.

THE OBVIOUSNESS REJECTION OF CLAIMS 18 AND 19 OVER CHANG AND
YOUNG ARTICLE
The Examiner finds Chang and Young Article teach all limitations of
claim 18. RAN 29, 33 (citing Request, Ex. M). The Examiner explains
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it would have been obvious to one of ordinary skill in the art,
based upon Chang Article in view of the Young Article to
construct the wavelength adapter module and the filter module
as a unitary structure because the Young Article discloses that
the laser, optical feedback assembly, and filter structure
(combiner) can be formed on a single chip to eliminate
alignment issues.
RAN 33.
Patent Owner makes the following principal arguments:
(i) The “Examiner erred in concluding that the Young Article
discloses a wavelength adapter module and filter module forming a unitary
structure in rejecting Claim 18.” PO App. Br. 18.
(ii) Young Article’s combiner does not teach the recited filter module,
and Young Article’s laser and grating structure does not teach the recited
wavelength adapter module. See PO App. Br. 18-20.
We agree with the Examiner that Chang and Young Article
collectively teach the recited unitary structure. We agree with the further
elaboration by Third Party Requester and adopt as our own Third Party
Requester’s analysis:
[T]he Examiner’s rejection incorporated by reference the
Request and Exhibits M and N thereto which explain that the
Chang Article or the Pirelli Specification discloses the
wavelength adapter module and filter module (See, Claim 6)
and the Young Article discloses that the modules can form a
unitary structure. As explained in the Request at Exhibits M
and N for claim 18, it would have been obvious to one of
ordinary skill in the art, based upon the Chang Article or the
Pirelli Specification in view of the Young Article to construct
the wavelength adapter module and the filter module as a
unitary structure because the Young Article discloses that the
lasers, optical feedback assemblies, and filtering structures can
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be formed on a single chip to eliminate alignment issues.
(Young Article, p. 908).
3PR Resp. Br. 9.
Contrary to Patent Owner’s arguments (i) and (ii), the combined
teachings of Chang and Young Article teach the recited limitations.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981)(citations omitted).
Here, the Examiner relies on Chang for teaching the wavelength
adapter module and the filter module, and relies on Young for teaching the
forming of a unitary structure. The Examiner explains why the combined
teachings suggest all recited limitations. See RAN 29, 33; Request, Ex. M,
pp. 53-54.
We, therefore, sustain the Examiner’s rejection of claim 18 as obvious
over Chang and Young Article, as well as claim 19, which is not argued with
particularity.

THE OBVIOUSNESS REJECTION OF CLAIM 26-31, 36, 37, 55, AND 71 OVER
CHANG AND THE ’495 PCT APPLICATION
The Examiner finds Chang and the ’495 PCT Application teach all
limitations of claim 28. RAN 107.
The Examiner explains
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[i]t is agreed with the Requester Comments After First, and
Second ACP, p. 25, and 26 respectively that the ’495 PCT
Application discloses that Fabry-Perot lasers and DFB lasers
(as taught in the Chang Article) are alternative implementations
as explained on page 44 of the Requester October 2009
Comments. It would be obvious in view of the teaching of the
’495 PCT Application to modify the optical feedback assembly
of the Chang Article using a Fabry-Perot laser.
RAN 107.
Patent Owner makes the following principal arguments:
(i) The “Examiner erred in concluding that the ’495 PCT
Application discloses a laser device comprising a Fabry-Perot laser as
required by Claim 28.” PO App. Br. 31.
(ii) “The entire objective of the ’495 PCT Application is to develop a
suitable laser device that overcomes the deficiencies of a Fabry-Perot laser.
It would not have been obvious to one of ordinary skill in the art to “simply
substitute” a Fabry-Perot laser in for the laser device disclosed in the ’495
PCT Application.” PO App. Br. 32.
(iii) “The ’495 PCT Application actually teaches away from such a
substitution.” PO App. Br. 32.
We agree with the Examiner that Chang and the ’495 PCT
Application teach all limitations of claim 28. We agree with the further
elaboration by Third Party Requester and adopt as our own Third Party
Requester’s analysis:
The ’495 PCT Application plainly discloses, “Fabry-Perot (FP)
lasers typically emit in multiple longitudinal modes and have
large output bandwidths.” (p. 1, 1. 23) The reference further
discloses that the low cost Fabry-Perot lasers and the more
complex DFB lasers are both “common implementations” of
semiconductor diode lasers. The simple substitution of one
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semiconductor diode laser for another, based upon cost and
complexity considerations for the implementation, yields
entirely predictable results. Although the ’495 PCT
Application does disclose improvements over the Fabry-Perot
and DFB lasers, the MPEP admonishes, “’[a] known or obvious
composition does not become patentable simply because it has
been described as somewhat inferior to some other product for
the same use.’ In re Gurley, 27 F.3d 551, 554 ... (Fed. Cir.
1994).” (See, MPEP §2145.X.D.1.) Thus, the ’495 PCT
Application’s teaching of improvements over the well-known
Fabry-Perot laser does not constitute a teaching away from
combination with the Chang Article.
3PR Resp. Br. 13.
We are not persuaded of Examiner error.
Contrary to Patent Owner’s arguments (i) and (ii), as explained above,
the ’495 PCT Application discloses Fabry-Perot lasers and distributed
feedback lasers (DFB) as common laser implementations. See the ’495 PCT
Application, p. 1, l. 20 - p. 2, l. 6.
Contrary to Patent Owner’s argument (iii), while an alternative may
be inferior to or less desirable than another, that alone is insufficient to teach
away from the inferior alternative unless the disclosure criticizes, discredits,
or otherwise discourages that alternative. In re Fulton, 391 F.3d 1195, 1200-
01 (Fed. Cir. 2004). Here, we agree with Third Party Requester that the ’495
PCT Application’s teaching of improvements over the well-known Fabry-
Perot laser does not constitute a teaching away.
We, therefore, sustain the Examiner’s rejection of claim 28 as obvious
over Chang and the ’495 PCT Application, as well as claims 26, 27, 29-31,
36, 37, 55, and 71, which are not argued with particularity.

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THE OBVIOUSNESS REJECTION OF CLAIMS 21, 22, 24, 34, 35, AND 39-41 OVER
CHANG, THE ’495 PCT APPLICATION, AND THE ’671 PCT APPLICATION
The Examiner finds Chang, the ’495 PCT Application, and the ’671
PCT Application teach all limitations of claim 39. RAN 84 (citing Requester
Comments dated Oct. 12, 2009, p. 50); see also Requester Comments dated
Oct. 12, 2009, p. 37 (Discussing claim 21, limitation [21.6]: “Thus, one
skilled in the art would recognize that it would [have been] obvious to
replace the interference filter with an etalon filtering device [of the ’495
PCT Application]. Doing so would have involved nothing more than a
simple substitution of one known element for another to obtain predictable
results.”), Requester Comments dated Oct. 12, 2009, p. 39 (Discussing claim
21, limitation [21.8]: “[A Bragg grating] is disclosed by the ’671 PCT
Application. Replacing the DFB laser of the Chang Article with a Fabry-
Perot laser would have been obvious in view of the ’495 PCT as described
above with respect to claim portion [21.2].” Further discussing claim 21,
limitation [21.8]:
It would have been obvious to use a Bragg grating as taught by
the ’671 PCT Application to further stabilize the light provided
by the wavelength adaptor module. Thus, it would have been
obvious to one of ordinary skill in the art to use a Bragg grating
[of the ’671 PCT Application] to partially reflect light emitted
from the semiconductor gain medium.
).
Patent Owner makes the following principal arguments:
(i) The “Examiner has provided no articulate reasoning with rational
underpinning to combine the three references to arrive at the claimed
invention of Claim 39.” PO App. Br. 30.
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(ii)
The Requester had already argued that the laser device of Claim
21 is satisfied by the laser of the ’495 PCT Application, which
emits light in a narrow wavelength band. There would be
absolutely no reason “to further stabilize the light provided by
the wavelength adaptor module” -- the entire purpose of the
laser disclosed in the ’495 PCT Application is to generate such
stabilized light energy.
PO App. Br. 30-31.
(iii) “[T]here would be absolutely no reason ‘to further stabilize the
light provided by the wavelength adaptor module’ of the light energy
emitted from the laser device of the Chang Article. The DFB laser emits a
narrow wavelength of light energy.” PO App. Br. 31.
We agree with the Examiner that Chang, the ’495 PCT Application,
and the ’671 PCT Application teach all limitations of claim 39. We agree
with the further elaboration by Third Party Requester and adopt as our own
Third Party Requester’s analysis:
As explained in the TPR Comments (filed Oct. 12, 2009) at p.
50, the prior art disclosure for new claim 39 and the rationale
for combining the disclosures was originally explained at claim
limitations 21.6 and 21.8 (which references limitation 21.2).
TPR Comments at 21.2 explain that the ’495 PCT Application
provides motivation to replace DFB lasers (such as those of the
Chang Article) with more stable laser assemblies. TPR
Comments at 21.8 provide the rationale for combining the
teachings of the ’671 PCT Application which suggests
replacing a DFB laser (e.g., the DFB laser of the Chang Article)
with a laser transmission system (e.g., the laser assembly of the
’495 PCT Application) that is further controlled by a Bragg
grating. Combining these prior art elements to replace the DFB
laser of the Chang Article, as both the ’671 PCT Application
and the ’495 PCT Application suggest, yield the predicted
result of improved stability of generated wavelengths.
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3PR Resp. Br. 13.
We are not persuaded of Examiner error.
Contrary to Patent Owner’s arguments (i), (ii), and (iii), as explained
above, the Examiner’s combining the teachings of Chang, the ’495 PCT
Application, and the ’671 PCT Application is supported by articulated
reasoning with some rational underpinning to justify the Examiner’s
obviousness conclusion. See Requester Comments dated Oct. 12, 2009, pp.
37, 39, 50); see also 3PR Resp. Br. 13.
We, therefore, sustain the Examiner’s rejection of claim 39 as obvious
over Chang, the ’495 PCT Application, and the ’671 PCT Application, as
well as claims 21, 22, 24, 34, 35, 40, and 41, which are not argued with
particularity.

THE OBVIOUSNESS REJECTION OF CLAIMS 65, 66, AND 68 BY CHANG AND
APPLICANTS’ ADMITTED PRIOR ART
The Examiner finds Chang and Applicants’ Admitted Prior Art
(AAPA) teach all limitations of claim 65. RAN 89 (citing Requester
Comments dated Oct. 12, 2009, p. 60 (citing Request, Ex. M, pp. 34-35)).
Patent Owner makes the following principal arguments:
(i) The “Examiner erred in concluding that the Chang Article
inherently discloses protection switching as recited in Claim 65.” PO App.
Br. 28.
(ii) “[T]he operation of a SONET network does not require the use of
protection switching -- that is, protection switching is not a necessary
component of a SONET network.” PO App. Br. 29; see PO App. Br. Ex. 1,
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Declaration of Donald D. Davis, Jr., Ph.D., May 28, 2010, ¶ 20; PO App. Br.
Ex. 4, Declaration of Donald D. Davis, Jr., Ph.D., Sep. 8, 2011, ¶¶ 12-15;
PO App. Br. Ex. 5, Declaration of Donald D. Davis, Jr., Ph.D., July 6, 2009,
¶¶ 37-39.
(iii)
Nothing in the disclosure of the Chang Article suggests that the
testbed was operated with protection switching, or provides any
reason why one would operate a testbed with protection
switching. The testbed is not an actual working network -- it is
a platform to test a concept. The proper test for inherency in
this case is whether protection switching is necessarily present
in the system disclosed in the Chang Article, not whether it is
inherent in SONET networks (which it is not) nor whether it
possibly or probably [is] employed in a SONET network
generally. There is no support for the conclusion that
protection switching is inherent in the testbed system of the
Chang Article.
PO App. Br. 29.
We agree with the Examiner that Chang and AAPA teach the recited
(claim 65) “wherein the OADM device is part of a SONET network
comprising a protection switching scheme that operates irrespective of the
plurality of OADM devices.”
We agree with and adopt as our own Third Party Requester’s analysis:
The Chang Article teaches transparent operation of
conventional SONET protocols in a SONET ring, see [1.3],
which would include conventional SONET ring protection
switching schemes. Just as in the ’660 Patent, the Wavelength
Division Multiplexing (WDM) technology taught by the Chang
Article does not interfere with the underlying SONET protocol:
“We have demonstrated an optical network that exploits WDM
optical switching and transport device technologies to create a
network which is rearrangeable at the optical layer and
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transparent to data formats and protocols.” (Ex. B, Chang
Article, 1320) (emphasis added)[.]
Request, Ex. M, p. 35; see also Request, Ex. M, pp. 8-9 ([1.3] describing an
OADM device is part of a SONET network).
Thus, Chang teaches an OADM device is part of a SONET network,
and protocols that operate irrespective of the plurality of OADM devices
(Chang’s WDM network is transparent to data formats and protocols).
With further regard to the recited protection switching scheme, the
’660 patent, in the Background of the Invention section, describing AAPA,
states “[i]n the event of a single fiber or ADM transceiver failure, the
information traffic is automatically redirected around the SONET ring 70A,
using a protection fiber 210 in accordance with the UPSR automatic
protection switching (APS) feature.” The ’660 patent, col. 2, ll. 48-53.
Thus, AAPA teaches the recited protection switching scheme.
We also agree with and adopt as our own Third Party Requester’s
analysis that:
Chang Article describes a SONET network that inherently
comprises the claimed protection switching scheme, even if the
full functionality of that scheme is not utilized for a particular
application. As explained, the OADMs of the Chang Article
would not interfere with the operation of the inherent SONET
protection switching scheme and thus, the scheme operates
“irrespective” of the OADMs.
3PR Resp. Br. 12 (citing 3PR Resp. Br. Ex. E2, Declaration of W. John
Tomlinson, Ph.D., Oct. 9, 2009, ¶ 12).
We have considered the arguments (PO App. Br.) and evidence (PO
App. Br. Evidence Appendix) presented by Patent Owner, including the
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19
declarations by Donald D. Davis, Jr., Ph.D, and we are not persuaded of
Examiner error.
Contrary to Patent Owner’s arguments (i), (ii), and (iii), the evidence
of record supports the Examiner’s findings, and explains that
SONET network elements, by definition, are capable of
implementing automatic protection switching (APS). The
Chang Article demonstrated an optical network that was
“transparent to data formats and protocols” which means that
features of the SONET protocol, such as APS, could be
implemented irrespective of the optical add-drop multiplexers.
Protection switching is performed electronically by SONET
switching elements, and a person of ordinary skill would
understand that this function would be performed independently
of the optical add-drop multiplexers described in the Chang
Article since the article explains that the network was
transparent to the features of the SONET protocol.
3PR Resp. Ex. E2, Declaration of W. John Tomlinson, Ph.D., Oct. 9, 2009, ¶
12.
We, therefore, sustain the Examiner’s rejection of claim 65 as obvious
over Chang and AAPA, as well as claims 66 and 68, which are not argued
with particularity.

THE OBVIOUSNESS REJECTION OF CLAIM 13 OVER CHANG AND THE ’671 PCT
APPLICATION; THE OBVIOUSNESS REJECTION OF CLAIM 23 OVER CHANG, THE
’495 PCT APPLICATION, THE ’671 PCT APPLICATION, AND WAGNER; THE
ANTICIPATION REJECTION OF CLAIM 45 OVER CHANG; THE OBVIOUSNESS
REJECTION OF CLAIM 48 OVER CHANG AND SONET GUIDE; THE
OBVIOUSNESS REJECTION OF CLAIM 56 OVER CHANG, THE ’495 PCT
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20
APPLICATION, AND ASAMI; THE OBVIOUSNESS REJECTION OF CLAIMS 60 AND
61 OVER CHANG AND ASAMI
Patent Owner does not argue claims 13, 23, 45, 48, 56, 60, and 61
with particularity.
We, therefore, sustain the obviousness rejection of claim 13 over
Chang and the ’671 PCT Application; the obviousness rejection of claim 23
over Chang, the ’495 PCT Application, the ’671 PCT Application, and
Wagner; the anticipation rejection of claim 45 over Chang; the obviousness
rejection of claim 48 over Chang and SONET Guide; the obviousness
rejection of claim 56 over Chang, the ’495 PCT Application, and Asami; and
the obviousness rejection of claims 60 and 61 over Chang and Asami.

THE REMAINING REJECTIONS OVER THE PRIOR ART
Review of alternative prior art bases for rejection to claims, which
have already been determined to be appropriately rejected over the prior art,
is discretionary. See, e.g., In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir.
2009) (not reaching rejections based on obviousness when claims already
rejected as anticipated). We exercise our discretion and decline to reach the
merits of the remaining rejections over the prior art. We also exercise our
discretion and decline to reach the merits of the remaining rejections under
35 U.S.C. § 112. In addition, we need not reach the propriety of the
Examiner’s determination not to make a proposed rejection of claims 1-19.
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21

ORDER
The Examiner’s decision rejecting claims 1-24, 26-31, 34-37, 39-41,
45, 48, 55, 56, 60, 61, 65, 66, 68, and 71 is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. In the
event neither party files a request for rehearing within the time provided in
37 C.F.R. § 41.79, and this decision becomes final and appealable under 37
C.F.R. § 41.81, a party seeking judicial review must timely serve notice on
the Director of the United States Patent and Trademark Office. See 37
C.F.R. §§ 90.1 and 1.983.

AFFIRMED

PATENT OWNER:

ASCENDA LAW GROUP, PC
84 W. SANTA CLARA ST., STE. 550
SAN JOSE, CA 95113

THIRD PARTY REQUESTER:

DAVID L. McCOMBS
HAYNES and BOONE, LLP
2323 V ICTORY AVENUE
SUITE 700
DALLAS, TX 75219