Ex Parte Benjamin et al

Patent Trial and Appeal Board

Jun 23, 2016

12712758 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121712,758 02/25/2010
115615 7590 06/27/2016
W&T/Corning
106 Pinedale Springs Way
Cary, NC 27511
FIRST NAMED INVENTOR
Seldon D. Benjamin
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HI09-l 12 3348
EXAMINER
KING, JOSHUA
ART UNIT PAPER NUMBER
2828
NOTIFICATION DATE DELIVERY MODE
06/27/2016 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):
patents@wt-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SELDON D. BENJAMIN, DAVIDE D. FORTUSINI,
ANTHONY NG'OMA, and MICHAEL SAUER
Appeal2014-009614
Application 12/712,758
Technology Center 2800
Before JEFFREY S. SMITH, BRUCE R. WINSOR, and
MICHAEL M. BARRY, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-7, 9, 13, and 21, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b). Claims 8, 10-12,
14--20, and 22-24 are cancelled. (App. Br. 22, 23 (Claims App'x).)
We affirm.
1 The real party in interest identified by Appellants is Coming Cable
Systems LLC. (App. Br. 2.)
Appeal2014-009614
Application 12/712,758
STATEMENT OF THE CASE
Appellants' disclosed invention "relates to optical transmission
devices, and more particularly to optically injection-locked [(OIL)]
semiconductor laser devices for high speed optical transmission." (Spec.
i-f 2.) Claim 1, which is illustrative, reads as follows:
1. An optical transmission device comprising:
a master laser configured to generate a master signal;
a VCSEL[2] configured for optical injection locking by
the master laser, and configured to generate a VCSEL output
signal comprising a carrier component and a modulated
sideband component;
an equalizer unit configured to receive the VCSEL output
signal and output an equalized output signal having a reduced
ratio of carrier component power to modulated sideband
component power in comparison to the VCSEL output signal,
such that the equalized output signal has the carrier component
power approximately equal to the modulated sideband
component power, the equalizer unit comprising a filter; and
an amplifier, wherein the filter is located between the
VCSEL and the amplifier.
The Examiner relies on the following prior art in rejecting the claims:
Yang et al. US 6,061,161 May 9, 2000
(hereinafter "Yang")
Sasai et al. US 6,459,519 Bl Oct. 1, 2002
(hereinafter "Sasai")
Roberts et al. US 2004/0208643 Al Oct. 21, 2004
(hereinafter "Roberts")
Lukas Chrostowski, Optical Injection Locking of Vertical Cavity
Surface Emitting Lasers (2003) (Ph.D. dissertation, University of
California at Berkley) (hereinafter "Chrostowski").
2 Vertical-Cavity Surface-Emitting Laser. (Spec. i-f 2.)
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Application 12/712,758
Jianjun Yu et al., A Novel Scheme to Generate Single-Sideband
Millimeter-Wave Signals by Using Low-Frequency Local Oscillator
Signal, 20 IEEE PHOTONICS LETTERS 478 (2008) (hereinafter "Yu").
Claims 1, 2, and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chrostowski and Yu. (See Final Act. 3---6.)
Claims 3, 9, 13, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chrostowski, Yu, and Roberts. (See Final Act. 6-
12.)
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chrostowski, Yu, and Sasai. (See Final Act. 12-13.)
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chrostowski, Yu, Sasai, and Yang. (See Final Act. 13-
15.)
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed Oct. 28, 2013, "App. Br. Rev." filed Feb. 12, 2014; "Reply Br."
filed Sept. 8, 2014) and the Specification ("Spec." filed Feb. 25, 2010) for
the positions of Appellants and the Final Office Action ("Final Act." mailed
May 24, 2013) and Answer ("Ans." mailed July 7, 2014) for the reasoning,
findings, and conclusions of the Examiner. Only those arguments actually
made by Appellants have been considered in this decision. Arguments that
Appellants did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
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Application 12/712,758
ISSUES
The issues presented by Appellants' contentions are as follows:
Whether the Examiner errs in finding the combination of Chrostowski
and Yu teaches or suggests:
an equalizer unit configured to receive the VCSEL output
signal and output an equalized output signal having a reduced
ratio of carrier component power to modulated sideband
component power in comparison to the VCSEL output signal,
such that the equalized output signal has the carrier component
power approximately equal to the modulated sideband
component power, the equalizer unit comprising a filter; and an
amplifier, wherein the filter is located between the VCSEL and
the amplifier[,]
as recited in claim 1.
Whether the Examiner errs in finding the combination of
Chrostowski, Yu, and Roberts teaches or suggests "amplifying the equalized
output signal with an optical amplifier," as recited in claim 13.
Whether the Examiner errs in finding the combination of
Chrostowski, Yu, and Roberts teaches or suggests "routing the VCSEL
output signal to the optical amplifier in the equalizer unit, wherein the
optical amplifier is configured to provide a wavelength-dependent optical
gain or a wavelength dependent optical loss" and "amplifying the modulated
sideband component or attenuating the carrier component in the optical
amplifier to form the equalized output signal," as recited in claim 21.
Whether the Examiner errs in finding the combination of
Chrostowski, Yu, and Sasai teaches or suggests "the filter comprises a first
three-port optical filter, the first three-port optical filter being configured to
receive the VCSEL output signal from the VCSEL, separate the carrier
component and the modulated sideband component, and separately transmit
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Application 12/712,758
the carrier component and the modulated sideband component," as recited in
claim 4.
Whether the Examiner errs in finding the combination of
Chrostowski, Yu, Sasai, and Yang teaches or suggests "a second three-port
optical filter or a three-port optical power coupler, wherein the second three-
port optical filter or three-port optical power coupler is configured to
combine the attenuated carrier component and the modulated sideband
component to output the equalized output signal," as recited in claim 5.
Whether the Examiner errs in finding the combination of
Chrostowski, Yu, Sasai, and Yang teaches or suggests "a second three-port
optical filter or a three-port optical power coupler, wherein the second three-
port optical filter or three-port optical power coupler is configured to
combine the carrier component and the amplified sideband component to
output the equalized output signal," as recited in claim 6.
ANALYSIS
We review the Examiner's findings, conclusions, and explanations
(Final Act. 3-15; Ans. 2-10) light of Appellants' arguments and contentions
(App. Br. 7-19; Reply Br. 2-12). We agree with the Examiner's findings
and explanations, and we adopt them as our own. The following discussion,
findings, and conclusions are for emphasis.
Claim 1
Appellants contend as follows:
Chrostowski' s filter is used to remove/reduce Amplified
Spontaneous Emission (ASE) noise, which an EDFA[3]
3 Erbium-doped fiber amplifier. (Chrostowski 1.)
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Application I2/7I2,758
amplifier typically adds to the amplified optical signal. Thus,
in Chrostowski, the only reason to add a filter would be to
remove the ASE noise that the EDF A typically adds, so it
would only make sense to add it after the amplifier. There is no
reason to add a "spaced tunable filter" like that in Yu because
the purpose for adding the "spaced tunable filter" in Yu does
not apply to the system of Chrostowski.
(App. Br. I4.) We disagree.
Both Yu and Chrostowski are directed to optical communication using
carriers having modulated sidebands. (See Yu 478 (Abstract); Chrostowski
I, 7 (Fig. 5, § 1. I.4).) Yu teaches that "the received sensitivity performance
is dependent on the optical CSR[4] with optimum performance occurring at
a CSR equal to 0 dB [i.e., when the carrier power is equal to the sideband
power (see Ans. 3, n. I)]." (Yu 480 (2nd col.) (emphasis added).) Yu
further teaches controlling the CSR using a filter TOPI 5 (Yu 479 (2nd col.}-
80 (1st col.) ("We change the transparent wavelength of the TOPI to obtain
different CSR .... ").)
We note that the salient question is not whether it would have been
obvious to replace Chrostowski' s filter with Yu' s filter - rather the question
is whether it would have been obvious to incorporate Yu's filter into
Chrostowski' s system, with or without the inclusion of Chrostowski' s filter.
One of ordinary skill in the art would have recognized that Yu's technique
for optimizing performance by using a filter to adjust CSR so that the carrier
component power and sideband component power are approximately equal
would have improved Chrostowski' s system in the same way it improves
4 Carrier-to-sideband [power] ratio. (Yu 478 (Abstract).)
5 Tunable optical filter (with appended numbers for distinguishing among
multiple TOFs). (Yu 479.)
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Application I2/7I2,758
Yu's system. "[l]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 4I 7 (2007). Therefore, contrary to Appellants' contention
(App. Br. I3), Yu explicitly provides a reason to combine Yu and
Chrostowski, i.e., to optimize performance by setting CSR to 0 dB. (See
Ans. 3-5.)
Furthermore, Yu teaches locating the filter TOPI in the optical
communication link before an amplifier EDFA. (Yu 479 (1st col. (Fig. 2)).)
For emphasis, we note that there are a finite number of predictable places
Yu's filter TOPI could be located in Chrostowski's "experimental setup" to
adjust the CSR ratio of Chrostowski's signal: (I) before Chrostowski's
amplifier EDFA; and (2) after Chrostowski's amplifier EDFA. (See id.)
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
KSR, 550 U.S. at 421.
Appellants contend Chrostowski teaches away from the inclusion of a
filter because Chrostowski teaches that the filter may, in some
circumstances, be unnecessary. (App. Br. I2-I3 (citing Chrostowski 68).)
We agree with the Examiner that nothing in Chrostowski identified by
Appellants "criticize[s], discredit[s], or otherwise discourage[s]" (In re
Fulton, 39I F.3d I I95, I200-0I (Fed. Cir. 2004)), using Yu's filter TOPI in
Chrostowski's system to adjust the CSR to 0 dB. (See Ans. 2-3.)
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Application I2/7I2,758
Appellants contend the Examiner's stated rational for combination of
Yu with Chrostowski is merely "in order to optimize performance of the
transmitter." (App. Br. I3.) Appellants argue "this statement of motivation
is too general to form an 'articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.'" (Id. (quoting
KSR, 550 U.S. at 4I8).) We disagree. The Examiner has articulated the
reasoning for combination in far more detail than asserted by Appellants.
(Ans. 4--5.) In particular, the Examiner articulated the following reasoning:
The advantage [ofYu's filter TOPI] is to obtain optimum
performance of the transmitter ([Yu,] Conclusion).
Accordingly, it would have been obvious to one of ordinary
skill in the art at the time the invention was made to have
modified the device disclosed by Chrostowski with the laser
output modulated to comprise a carrier component and a
modulated sideband component; and configure the equalizer
unit to output an equalized output signal having a reduced ratio
of carrier component power to modulated sideband component
power in comparison to the laser output signal and the filter
before the optical amplifier based on the teachings of Yu et al.
that the output signal should have a reduced ratio of carrier
component power to modulated sideband component power in
comparison to the laser output signal, such that the output
signal has the carrier component power approximately equal to
the modulated sideband component power in order to optimize
performance of the transmitter.
(Final Act 4--5.) We conclude the Examiner's articulated reasoning is not
conclusory. Rather, it is detailed, well-reasoned, and based on rational
underpinnings evidenced by the cited references.
Appellants contend Yu's filter TOPI is not part of an equalization unit
because "the filters in Yu are used to select multiple signals separated by the
passband spacing of the filter, and are not used to equalize the CSR." (App.
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Br. 14.) We disagree. Yu explicitly teaches "chang[ing] the transparent
wavelength of the TOPI to obtain different CSR[s] ... "(Yu 479 (2nd col.}-
80, (1st col.)), and "the received sensitivity performance is dependent on the
optical CSR with optimum performance occurring at a CSR equal to 0 dB
[i.e., when the carrier power is equal to the sideband power]" (Yu 480 (2nd
col.)), i.e., equalization of the carrier power and the sideband power. (See
Ans. 7-8.) Therefore, we find Yu teaches
an equalizer unit configured to receive [a laser] output signal
and output an equalized output signal having a reduced ratio of
carrier component power to modulated sideband component
power in comparison to the [laser] output signal, such that the
equalized output signal has the carrier component power
approximately equal to the modulated sideband component
power,
as recited in claim 1.
Appellants contend as follows:
The TOPI filter in Yu is tuned so that the carrier wavelength
falls somewhere along the slope of the filter, which requires
very tight temperature control and wavelength stability to work.
In contrast, in the claimed invention, the approach is much
simpler - the filter is centered on the modulated sideband such
that the "equalized output signal [has] a reduced ratio of carrier
component power to modulated sideband component power in
comparison to the VCSEL output signal, such that the equalized
output signal has the carrier component power approximately
equal to the modulated sideband component power." This
approach is stable with respect to environmental conditions. Yu
does not teach this approach.
(App. Br. 15 (brackets in original).) We are not persuaded of error because,
as pointed out by the Examiner (Ans. 6-7), Appellants are arguing
limitations not found in the claims.
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Application 12/712,758
We conclude Appellants do not demonstrate error in the rejection of
claim 1. Accordingly, we sustain the rejection over Chrostowski and Yu of
claim 1. Appellants contend Roberts does not cure the deficiencies in the
teachings of Chrostowski and Yu, but do not otherwise separately argue
claims 2, 3, 7, and 9 with particularity. Accordingly we also sustain in the
rejections over various combinations of Chrostowski, Yu, and Roberts of
claims 2, 3, 7, and 9, which depend from claim 1.
Claims 13 and 21
Appellants recite language from claims 13 and 21 and state generally
that the claims "define[] over the cited art for at least these reasons." (App.
Br. 17; see also Reply Br. 10.) Such a conclusory statement, amounting to
no more than quoting the claim language and a general denial of
obviousness, is unpersuasive to rebut the prima facie case set forth by the
Examiner. Cf 37 C.F.R. § 41.37(c)(l)(iv) ("A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim."); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art."); cf In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of
this court to examine the claims in greater detail than argued by an appellant,
looking for [patentable] distinctions over the prior art.").
Appellants further contend "[c]laims 13 and 21 also specifically recite
that the filter is placed before the optical amplifier. Claims 13 and 21 thus
define over the cited art for at least the reasons set forth above [regarding
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Application 12/712,758
claim 1]." (App. Br. 17.) We conclude Appellants do not demonstrate error
in the rejection of claims 13 and 21 for the same reasons as discussed supra
regarding claim 1.
For the foregoing reasons, we sustain the rejection of claims 13 and
21.
Claim 4
Appellants contend Sasai does not cure the deficiencies in the
teachings of Chrostowski and Yu. (App. Br. 17.) We find this contention
unpersuasive of error for the reasons discussed supra regarding claim 1.
Appellants further contend the Examiner "does not point [to] a
specific element in Sasai that allegedly corresponds to the claimed 'first
three-port optical filter' and to the claimed 'first optical circulator."' (App.
Br. 18.) Appellants additionally contend as follows:
[T]here is no indication in Figure 9 of Sasai or the
accompanying text that discloses a first three-port optical filter
that is configured to perform each of the follo\'l1ing fi.1nctions:
"receive the VCSEL output signal from the VCSEL"; "separate
the carrier component and the modulated sideband component,"
and "separately transmit the carrier component and the
modulated sideband component" (emphasis added).
(App. Br. 18.) We disagree.
As to the recited "first optical circulator," Appellants' contention is
unpersuasive because it is not commensurate with the Examiner's rejection,
which relies on Chrostowski, not Sasai, to teach the first optical circulator.
(See Final Act. 12 (citing Chrostowski 69 (Fig. 62)); accord Ans. 8.) See
In re Keller, 642 F.2d413, 426(CCPA1981) ("[O]ne cannot shownon-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.").
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As to the recited "first three-port optical filter," the Examiner points
to optical filter portion 710 illustrated in Sasai's figure 9 (see Final Act. 12-
13; Ans. 9) and described as follows:
The optical filter portion 710 outputs the component of the
lower sideband divided to the first optical fiber 140-1 as a first
optical signal OS1, while outputting the components of the
upper sideband and the main carrier divided to the second
optical fiber 140-2 as a second optical signal OS2 .
. . . In FIG. 9, the optical filter portion 710 comprises an
optical circulator portion 910 having terminals 1, 2 and 3 and
an optical fiber grating portion 920. The terminals 1, 2 and 3
are connected to the external optical modulating portion 120,
the optical fiber grating portion 920, and the optical fiber 140-1.
(Sasai, col. 26, 1. 57---col. 27, 1. 3 (emphasis omitted).)
Thus, Sasai teaches "a first three-port optical filter," i.e., optical filter
portion 710, "being configured to receive ... [a] signal," i.e., OSdmod, and
"separate the carrier component," i.e., OS2, "and the modulated sideband
component," i.e., OS1, "and separately transmit the carrier component and
the modulated sideband component," as recited in claim 1. We note that the
received signal to be processed by the filter is an output signal from a
VCSEL is taught by Chrostowski and Yu. (See discussion of claim 1
supra.)
We conclude Appellants do not demonstrate error in the rejection of
claim 4. For the foregoing reasons, we are constrained by this record to
sustain the rejection over Chrostowski, Yu, and Sasai of claim 4.
Claims 5 and 6
Appellants contend Yang does not cure the deficiencies in the
teachings of Chrostowski, Yu, and Sasai (App. Br. 18.) We find this
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contention unpersuasive of error for the reasons discussed supra regarding
claims 1 and 4.
Appellants further contend
the filter in Yang is not a "three-port optical filter." Thus, the
combination of Chrostowski, Yu, Sasai, and Yang fails to teach
or suggest "a second three-port optical filter ... wherein the
second three-port optical filter ... is configured to combine the
attenuated carrier component and the modulated sideband
component to output the equalized output signal" (emphasis
added).
(App. Br. 19 (ellipses in original).) Appellants' contention is unpersuasive
because it fails to address the claim limitations as they are recited claims 5
and 6. Each of claims 5 and 6 recites "a second three-port optical filter or a
three-port optical power coupler" (emphases added). That is to say, the
claim recites an optical filter and an optical coupler in the alternative.
Appellants proffer no evidence or argument to demonstrate that Yang's
second directional coupler 130 does not teach or suggest a three-port optical
power coupler as recited in claims 5 and 6.
We conclude Appellants do not demonstrate error in the rejection of
claims 5 and 6. For the foregoing reasons, we are constrained by this record
to sustain the rejection over Chrostowski, Yu, Sasai, and Yang of claims 5
and 6.
DECISION
The decision of the Examiner to reject claims 1-7, 9, 13, and 21 is
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2013).
AFFIRMED
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