Ex Parte Agazzi

Board of Patent Appeals and Interferences

Jul 15, 2010

09765014 (B.P.A.I. Jul. 15, 2010)

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.
09/765,014 01/17/2001 Oscar E. Agazzi 36976/NJP/B600 7258
7590 07/16/2010
CHRISTOPHER C. WINSLADE
MCANDREWS, HELD & MALLOY
500 W. MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
KIM, DAVID S
ART UNIT PAPER NUMBER
2613
MAIL DATE DELIVERY MODE
07/16/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte OSCAR E. AGAZZI
____________

Appeal 2009-003746
Application 09/765,014
Technology Center 2600
____________

Before JAMES D. THOMAS, MAHSHID D. SAADAT, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-003746
Application 09/765,014

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 6-9, 11, 12, 18-20, 22, 23, 28, 32, 37, 38,
42, 57, 61, 65, 70, and 71.2 Appeal Brief 11. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1, which further illustrates the invention, follows:
1. A method for high-speed transmission of information data on an
optical channel, the method comprising:
encoding information via a trellis encoder to produce digital
multilevel symbols;
equalizing the digital multilevel symbols to compensate for
characteristics of the optical channel, said equalizing comprising precoding
the digital multilevel symbols using a Tomlinson-Harashima precoder;
converting the digital multilevel symbols into analog multilevel
signals; and
transmitting the analog multilevel signals over the optical channel.

Appellant appeals the following rejection:
Claims 1, 6-9, 11, 12, 18-20, 22, 23, 28, 32, 37, 38, 42, 57, 61, 65, 70,
and 71 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Ling3 in view of any/all of Ungerboek,4 Lee,5 and Schlegl6 and further in
view of Uyematsu7 and Winters.8 Answer 4-11.

2 Claims 5, 16, 31, 36, 41, 45, 60, 64, 69, and 74 were rejected under 35
U.S.C. § 103(a). See Answer 2. However, Appellant does not present this
rejection for review. See Appeal Brief 11.
3 WO 98/39871; September 11, 1998.
4 Gottfried Ungerboeck, Channel Coding with Multilevel/Phase Signals, 28
IEEE TRANSACTIONS ON INFO. THEORY 55 (Jan. 1982).
Appeal 2009-003746
Application 09/765,014

3
Rather than repeat Appellant’s arguments or the Examiner’s positions
in their entirety, we refer to the Appeal Brief (filed July 2, 2008) and the
Answer (mailed July 25, 2008) for their respective details. In this decision,
we have considered only those arguments actually made by Appellant.
Arguments which Appellant could have made but did not make in the Brief
have not been considered and are deemed to be waived. See 37 C.F.R. §
41.37(c)(1)(vii) (2008).

ISSUE
Does the combination of multiple references cited by the Examiner
establish a prima facie case of obviousness by disclosing a method and
apparatus that employs a Tomlinson-Harashima precoder in an optical
transmission system?

ANALYSIS
The Examiner provides motivation to apply the method of Ling to an
optical channel based upon Ling’s and Uyematsu’s disclosures of a trellis
coded modulation (TCM) scheme and Uyematsu’s teaching that the TCM
scheme can be applied to optical communications systems. Answer 5.
However, the Examiner admits that the “only portion of a TCM system that

5 L.H. CHARLES LEE, CONVOLUTIONAL CODING: FUNDAMENTALS AND
APPLICATIONS (Artech House 1997).
6 CHRISTIAN SCHLEGEL, TRELLIS CODING (IEEE Press 1997).
7 Tomohiko Uyematsu et al., Trellis Coded Modulation for Multilevel
Photon Communication System, 2 SING. ICCS/ISITA ’92, at 582 (Nov.
1992).
8 Jack H. Winters et al., Reducing the Effect of Transmission Impairments in
Digital Fiber Optic Systems, IEEE COMM. MAG., June 1993, at 68.
Appeal 2009-003746
Application 09/765,014

4
appears lacking in the system of Ling is an express disclosure of a trellis
encoder.” Id. The Examiner states that it is known that trellis encoding
incorporates convolutional encoding and mapping as shown in Ungerbreok,
Lee, and Schlegl and addresses Ling’s deficiency by referring to Ling’s
basic elements of a trellis encoder – a convolutional encoder 320 and bit to
symbol mapping 322. Id. The Examiner concludes that one of ordinary skill
in the art would have been motivated to employ Ling’s convolutional
encoder 320 and bit to symbol mapping 322 as a trellis encoder since the
trellis decoder 366 of Ling implies the complementary use of trellis
encoding. Id.
However, Appellant argues that claim 1 requires a Tomlinson-
Harashima precoding (THP) in an optical transmission system, and Ling is
the only prior art cited by the Examiner that teaches THP, but Ling is
directed to a copper based transmission system and not an optical
transmission system. Appeal Brief 12-13. Appellant surmises that it would
not have been obvious to one of ordinary skill in the art to implement THP
in an optical transmission system because optical transmission systems have
different channel characteristics and present different challenges than copper
cabling transmission systems. Id. at 13. Appellant further argues that the
Examiner has failed to provide any motivation to apply the THP of Ling to
an optical communication system. Id.
The Examiner did not provide motivation to apply the THP of Ling to
an optical communication system because he relied upon the references’
disclosures of trellis encoder/decoder for his motivation to combine the
references. See Answer 5. There was no need for the Examiner to provide
motivation for combining every element of the prior art references. Further,
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Application 09/765,014

5
while Appellant argues that using a THP in a copper cabling transmission
system is challenging, Appellant has not offered any evidence that the THP
had to be modified to operate in an optical system. In fact, Appellant
employs THP without any significant modification to the precoding process.
Therefore, we will sustain the Examiner’s rejection of independent
claims 1, 11, 28, 32, 38, 42, 57, 61, 65, and 71 for the reasons stated above.
We will also sustain the Examiner’s rejection of dependent claims 6-9, 12,
18-20, 22, 23, 37, and 70 for the same reasons.

DECISION
The Examiner’s rejection of claims 1, 6-9, 11, 12, 18-20, 22, 23, 28,
32, 37, 38, 42, 57, 61, 65, 70, and 71 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(v) (2009).

ORDER
AFFIRMED

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CHRISTOPHER C. WINSLADE
MCANDREWS, HELD & MALLOY
500 W. MADISON STREET
SUITE 3400
CHICAGO, IL 60661