Ex Parte Bratkovski et al

Patent Trial and Appeal Board

Jun 26, 2017

13560450 (P.T.A.B. Jun. 26, 2017)

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.
13/560,450 07/27/2012 Alexandre M. Bratkovski 83013742 3698
56436 7590 06/28/2017
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
LAMBERT, DAVID W
ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDRE M. BRATKOVSKI,
JACOB KHURGIN, WAYNE VICTOR SORIN, and
MICHAEL RENNE TY TAN
Appeal 2015-007107
Application 13/560,450
Technology Center 2600
Before MARC S. HOFF, LINZY T. McCARTNEY, and
JOHN D. HAMANN, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2015-007107
Application 13/560,450
STATEMENT OF THE CASE
The present patent application concerns “[a] spatially multiplexed
optical transmission system and method . . . where modulated optical signals
are combined and launched along a data transmissions path to increase
information bandwidth while mitigating system costs.” Specification | 10,
filed July 27, 2012 (“Spec.”). Claim 1 illustrates the claimed subject matter:
1. A system comprising:
an optical Y-junction coupler to receive a first modulated
optical signal on a wide input path of the optical Y-junction
coupler and to receive a second modulated optical signal on a
narrow input path of the optical Y-junction coupler, wherein the
optical Y-junction coupler generates a combined optical signal
from signals received on the wide input path and the narrow input
path; and
a multimode waveguide to receive the combined optical
signal from the optical Y-junction coupler and to propagate a
spatially multiplexed optical output signal along a transmission
path.
Appeal Brief 26, filed January 21, 2015 (“App. Br.”).
REJECTIONS
Claim 16 stands rejected under 35U.S.C. § 112 12 as indefinite.
Claims 1—16 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over three or more of Hatayama (US 2004/0018017 Al; Jan. 29, 2004),
Tavlykaev et al. (US 5,917,974; June 29, 1999), Stuart (US 6,525,853; Feb.
25, 2003), Way (US 2009/0067843 Al; March 12, 2009), Dyott (US
4,669,814; June 2, 1987), and Kim (US 4,741,586; May 3, 1988).
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Application 13/560,450
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments, and we disagree with Appellants that the Examiner erred. To the
extent consistent with the analysis below, we adopt the Examiner’s
reasoning, findings, and conclusions as set forth in the appealed action and
the Answer. We address Appellants’arguments below. Appellants have
waived arguments Appellants failed to timely raise or adequately present.
See 37 C.F.R. §§ 41.37(c)(l)(iv), 41.41(b)(2).
§ 112 Rejection
Claim 16 recites “wherein the given and the other wavelengths are
separated by about 50 nanometers.” App. Br. 29. The Examiner concluded
claim 16 is indefinite because “nothing in the claims or [the written
description] limits the amount of tolerable deviation encompassed by ‘about
50 nanometers.’” Final Rejection 6, filed September 25, 2014 (“Final
Rej.”); see also Answer 15, filed June 1, 2015 (“Ans.”). Appellants argue
the term “about” does not render claim 16 indefinite in light of Ex parte
Eastwood, 163 U.S.P.Q. 316 (Bd. App. 1968) (nonprecedential). See App.
Br. 7.
We find Appellants’ argument unpersuasive. The Federal Circuit has
explained that during prosecution
[i]t makes good sense, for definiteness and clarity as for other
validity requirements, for the USPTO to initially reject claims
based on a well-founded prima facie case of lack clarity. . . based
on the perspective of one ordinary skill in the art in view of the
entire written description and developing prosecution history.
In re Packard, 751 F.3d 1307, 1312 (Fed. Cir. 2014) (per curiam). The
court further stated that “if the applicant does not adequately respond to that
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Application 13/560,450
prima facie case,” it also makes good sense “to confirm that rejection on the
substantive basis of having failed to meet the requirements of [§ 112 12].”
Id.
That is the case here. As noted above, the Examiner concluded claim
16 is indefinite because neither the claims nor the written description
provides a standard for determining the scope of the term “about.” See Final
Rej. 6; Ans. 15. In response, Appellants simply contend Eastwood
establishes that “about” is definite as a general matter. See, e.g., App. Br. 7.
But we do not understand Eastwood to stand for this broad proposition, and
in any event, controlling Federal Circuit precedent states otherwise. See,
e.g., Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370—71 (Fed. Cir.
2014) (explaining that although terms of degree do not require “absolute or
mathematical precision,” “[t]he claims, when read in light of the
specification and the prosecution history, must provide objective boundaries
for those of skill in the art”).1 Because Appellants have not provided any
other persuasive evidence or argument to rebut the Examiner’s conclusion,
we sustain the Examiner’s indefmiteness rejection.
1 See also Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818,
826 (Fed. Cir. 1984) (“When a word of degree is used the district court must
determine whether the patent’s specification provides some standard for
measuring that degree. The trial court must decide, that is, whether one of
ordinary skill in the art would understand what is claimed when the claim is
read in light of the specification.”); GE Lighting Sols., LLC v. Lights of Am.,
Inc., 663 F. App’x 938, 940 (Fed. Cir. 2016) (nonprecedential) (“Although
terms of degree are [not] inherently indefinite, the patent must provide some
standard for measuring that degree such that the claim language provide[s]
enough certainty to one of skill in the art when read in the context of the
invention.” (quotation marks and citation omitted)).
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Application 13/560,450
§ 103 Rejections
Claim 1
Appellants contend the Examiner’s combination of Hatayama,
Tavlykaev, and Stuart teaches away from the invention recited in claim 1.
Specifically, Appellants argue the Examiner’s combination replaces
Hatayama’s Y-junction with Tavlykaev’s Y-branch, which results in an
inoperable device and renders Hatayama’s invention unsatisfactory for its
intended purpose. See App. Br. 8—11; Reply Br. 3—6, 8—9.
We find Appellants’ arguments unpersuasive. Appellants’ arguments
assume the Examiner concluded it would have been obvious to replace
Hatayama’s Y-junction with Tavlykaev’s Y-branch. See App. Br. 8—11;
Reply Br. 3—6, 8—9. But the Examiner found that, in light of Tavlykaev’s
teachings, it would have been obvious to modify Hatayama’s Y-junction so
that it has a wide path and a narrow path. See, e.g., Final Rej. 8 (“[I]t would
have been obvious ... to modify the system of Hatayama such that the first
input path is a wide input path, [and] the second input path is a narrow input
path . . . .”). The Examiner repeatedly explained that the Examiner’s
combination does not replace Hatayama’s Y-junction with Tavlykaev’s Y-
branch. See, e.g., Final Rej. 2 (“[T]he Examiner did not suggest replacing
the Y-junction coupler . . . of Hatayama with a Y-branch mode splitter ... of
Tavlykaev.”); Ans. 16 (“The Examiner has attempted to make clear
throughout the prosecution history that the proposed modification to . . .
Hatayama includes setting the relative dimensions of the . . . the Y-
junction. . . not completely replacing the Y-junction coupler of Hatayama
with [the] Y-branch ... of Tavlykaev.’ ’).
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Yet Appellants contend that “since the Examiner is explicitly relying
on the physical structure of [Tavlykaev’s] Y-branch mode,” the Examiner’s
rejection requires replacing Hatayama’s Y-junction with Tavlykaev’s Y-
branch. Reply Br. 4—5. We disagree. As noted above, the Examiner found
that in light of Tavlykaev’s general teachings about Y-junctions, it would
have been obvious to modify Hatayama’s Y-junction to have the claimed
“wide input path and the narrow input path”:
Tavlykaev teaches that it is well-known in the art that an optical
Y-junction coupler must be asymmetrical, having a wider path
. . . and a narrow path ... in order for the coupler to be abiotic
and limit interaction between modes. . . . Therefore, it would
have been obvious to . . . modify the system of Hatayama such
that the first input path is a wide input path, that the second input
path is a narrow input path . . . because it is well-known in the art
than an optical Y-junction coupler must be asymmetrical in order
for the coupler to be abiotic and limit interaction between modes.
Final Rej. 8 (citing Tavlykaev 6:44—50). Nothing in this analysis requires
replacing Hatayama’s Y-junction coupler with Tavlykaev’s Y-branch.
Because Appellants’ “teaching away” arguments assume the
Examiner’s combination replaces Hatayama’s Y-junction with Tavlykaev’s
Y-branch, see, e.g., App. Br. 8—9, 11—13; Reply Br. 5—6, 8—9, we find these
arguments unpersuasive. Moreover, these arguments largely rely on thinly
supported speculation and assumptions about the results of the Examiner’s
combination. See App. Br. 8—9, 11—13; Reply Br. 5—6, 8—9. We do not find
these inadequately supported arguments persuasive. Cf. In re Schulze, 346
F.2d 600, 602 (CCPA 1965) (“Argument in the brief does not take the place
of evidence in the record.”).
Appellants also contend “the Examiner has failed to adequately
explain the rational basis for combining and modifying Hatayama and
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Tavlykaev.” Reply Br. 6; see also App. Br. 10-11. According to
Appellants, “it is not inherent or otherwise required that a Y-junction be
asymmetrical having a wider path and a narrow path in order for the coupler
to be adiabatic, as alleged by the Examiner.” App. Br. 10 (emphasis
modified). Moreover, Appellants assert “adiabatic” means “occurring
without loss or gain of heat” and argue the Examiner has not provided any
evidence that the Hatayama’s Y-junction “would cause an undesirable loss
or gain in heat.” Id. (citing Merriam-Webster’s Online Dictionary). Finally,
Appellants contend “[tjhere is nothing in Hatayama that teaches or suggests
any need for implementing an asymmetrical Y-junction coupler described in
Tavlykaev.” App. Br. 10; Reply Br. 6—7.
We find Appellants’ arguments unpersuasive. The Examiner found
Hatayama does not describe the properties of the disclosed Y-junction but
“Tavlykaev teaches that it is well-known [sic] in the art that an optical Y-
junction coupler must be asymmetrical, having a wide path . . . and a narrow
path ... in order for the coupler to be [adiabatic] and limit interaction
between modes.” Ans. 20 (citing Tavlykaev 6:44—50). In light of these
findings, the Examiner concluded it would have been obvious to modify
Hatayama’s Y-junction
such that... the first input path is a wide input path, the second
input path is a narrow input path . . . because it is well-known
[sic] in the art than an optical Y-junction coupler must be
asymmetrical in order for the coupler [to] provide the benefits of
being [adiabatic] and limiting interaction between modes.
Id.
Tavlykaev supports this conclusion. Tavlykaev discloses “[a] Y-
branch is adiabatic if the interaction between its normal modes is weak
enough to be neglected. For a Y-branch to be adiabatic, it is necessary that
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Application 13/560,450
the structure be asymmetrical, for example, have nonidentical branches, and
transformation of the structure topology over the tapering section be
gradual.” Tavlykaev 6:44—50 (emphases added). Tavlykaev’s Figure 2
depicts an asymmetric Y-branch that has branches of different widths. See
id. Fig. 2, items 7, 8; see also id. at 6:42-44 (“[A]n adiabatic Y-branch mode
splitter with nonidentical branches ... of, for example, different widths as
illustrated in Fig. 2.”). Although these disclosures may not limit
asymmetrical Y-branches to those that have branches of different widths,
these disclosures certainly would have suggested modifying a Y-branch to
have branches of different widths in order to gain the advantages of an
adiabatic Y-branch.
The Examiner provided sufficient reason to make this modification.
The Examiner found it would have been obvious to one of ordinary skill in
the art to modify Hatayama’s Y-junction in this manner “because it is well-
known [sic] in the art than an optical Y-junction coupler must be
asymmetrical in order for the coupler [to] provide the benefits of being
[adiabatic] and limiting interaction between modes.” Ans. 20. Although
Appellants argue the Examiner has not established that Hatayama’s Y-
junction is not adiabatic, see App. Br. 10, in light of Hatayama’s silence on
the structure and properties of the disclosed Y-junction, we see no error in
the Examiner’s conclusion. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“The test for obviousness .... is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”). As
for Appellants’ contention that Hatayama does not provide motivation for
this modification, see App. Br. 10, Reply Br. 6—7, the Examiner found
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Application 13/560,450
Tavlykaev does, see Ans. 20, and Appellants’ arguments have not persuaded
us the Examiner erred.
For the above reason, we sustain the Examiner’s rejection of claim 1.
Because Appellants’ arguments concerning claims 2—8, 11—14, and 16 are
substantially similar to Appellants’ arguments for claim 1, we also sustain
the Examiner’s rejection of these claims.
Claim 9
Claim 9 recites “[t]he system of claim 8, wherein output from the
third Y-junction coupler is coupled to the multimode waveguide to generate
four orthogonal propagation modes along the transmission path.” App. Br.
27. Appellants contend Kim does not teach or suggest “employment of any
structure or function that would correspond to the ‘third Y-junction
coupler.’” App. Br. 21. Moreover, in Appellants’ view, the Examiner
“fail[ed] to explain how the cited art, including Hatayama, Tavlykaev,
Stuart, and Kim would teach or suggest to one of ordinary skill in the art
how to implement” the claimed couplers and waveguide “to generate four
orthogonal propagation modes along the transmission path.” Id. at 22—23
(emphasis modified).
We find Appellants’ arguments unpersuasive. The Examiner found
Hatayama teaches the recited “third Y-junction coupler,” not Kim as argued
by Appellants. See Ans. 34. The Examiner also found (1) Hatayama
teaches outputting four different signals onto an output waveguide; (2) Kim
teaches it is well known to propagate four orthogonal signals on a single
waveguide; and (3) Stuart teaches propagating multiplexer output along a
multimode waveguide. Id. The Examiner concluded these combined
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teachings would have suggested the subject matter recited in claim 9. Id. at
35.
Although Appellants contend the Examiner has not adequately
explained how the cited art would generate the recited “modes,” Appellants
have not presented any persuasive evidence this process would have been
“uniquely challenging or difficult for one of ordinary skill in the art.”
Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007). Indeed, the portion of the written description Appellants map to
this limitation does not detail how Appellants’ system generates the recited
“four orthogonal propagation modes.” See App. Br. 5 (mapping paragraph
22 of the written description to the “generate” limitation); Spec. 122 (stating
that Y-junction couplers “mix optical signals from wide and narrow
waveguide inputs into a subsequent Y-junction coupler 640 to produce four
orthogonal modes”). This indicates that generating the “four orthogonal
propagation modes” would have been within the ability of one of ordinary
skill in the art. Cf. In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994)
(“[T]he Board’s observation that appellant did not provide the type of detail
in his specification that he now argues is necessary in prior art references
supports the Board’s finding that one skilled in the art would have known
how to implement the features of the references . . . .”). Accordingly, we
sustain the Examiner’s rejection of claim 9.
Claims 10 and 15
Claim 10 recites “[t]he system of claim 9, further comprising
employing two detectors in a receiver to detect two signal modes from a
common signal and to combine the signal modes to provide diversity
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detection in the receiver.” App. Br. 27. Claim 15 recites a similar
limitation. Id. at 29. Appellants contend “the ‘two detectors in a receiver
. . . combine the signal modes’ ... is outside the scope” of the cited art. Id.
at 24. According to Appellants, “in Stuart, there is no ‘combining’ during
RF demodulation.” Reply Br. 13.
We find Appellants’ arguments persuasive. The Examiner found
Stuart teaches the “combining” recited in claim 10 because Stuart discloses
“[t]he received signal modes are then combined in an RF demodulation and
signal processing unit.” See Ans. 37—38 (citing Stuart Fig. 3, 4:22—34).
Although the cited portions of Stuart disclose that a demodulation unit
receives signals from optical detectors, the cited portions of Stuart do not
disclose that the demodulation unit combines these signals. See Stuart Fig.
3, 4:22—34. This is in stark contrast to Stuart’s description of the
transmitting process, where Stuart explicitly discloses combining and
transmitting signals to a receiver. See id. at 4:16—21. Therefore, based on
the record before us, we do not sustain the Examiner’s rejection of claims 10
and 15.
DECISION
We affirm the Examiner’s indefmiteness rejection of claim 16. We
affirm the Examiner’s obviousness rejections of claims 1—9, 11—14, and 16
We reverse the Examiner’s obviousness rejections of claims 10 and 15.
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)(iv).
AFFIRMED-IN-PART
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