Ex Parte Chan et al

Patent Trial and Appeal Board

Mar 17, 2016

12800238 (P.T.A.B. Mar. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/800,238 05/11/2010 Alistair K. Chan
103600 7590 03/21/2016
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
103069-0125 8127
EXAMINER
DOBSON, DANIEL G
ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
03/21/2016 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
U-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALISTAIR K. CHAN, RODERICK A. HYDE,
MURIEL Y. ISHIKAWA, JORDIN T. KARE, and
LOWELL L. WOOD JR.
Appeal2014-005204
Application 12/800,238
Technology Center 2600
Before ERIC S. FRAHM, JEFFREY A. STEPHENS, and
CARLL. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the final
rejection of claims 1-53. Final Act. 2. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Searete LLC, an affiliate of
Intellectual Ventures Management, LLC. (App. Br. 2.)
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Application 12/800,238
STATEMENT OF THE CASE
The invention relates to delivering multiple optical power forms over
an optical conduit. Abstract. Claim 1, reproduced below, is exemplary of
the matter on appeal:
1. An optical power system, comprising:
at least one optical power source providing at least a first
modulated optical power form and a second optical power form, the
first optical power form being different than the second optical power
form, the first optical power form including at least one characteristic
that is modulated; and
a device configured to receive at least the first modulated optical
power form and to provide output driven by the modulated first optical
power form; and
an optical conduit coupled to the optical power source and the
device and configured to transmit at least the first modulated optical
power form and the second optical power form there between.
App. Br. 18 (Claims Appendix).
REJECTIONS
Claims 1, 2, 9-12, 15, 16, 20, 21, 26-29, 32, 33, 37, 38, 43--46, 49,
and 50 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Werthen et al (U.S. 2008/0235418 Al, published Sept. 25, 2008)
("Werthen"). Final Act. 5-10.
Claims 3-7, 17-19, 22-24, 34--36, 39--41, and 51-53 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Werthen and Fatehi et
al. (US 5,745,274, issued Apr. 28, 1998)("Fatehi"). Final Act. 11-22.
Claims 8, 25, and 42 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Werthen and Nishimura et al. (US 2005/0031351 Al,
published Feb. 10, 2005)("Nishimura"). Final Act. 22-24.
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Appeal2014-005204
Application 12/800,238
Claims 13, 14, 30, 31, 47, and 48 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Werthen and Schaffner et al. (US
7,941,022 Bl, issued May 10, 2011)(" Schaffner"). Final Act. 24--27.
ANALYSIS
The 35 U.S.C. § 102(b) Rejection
Appellants and the Examiner dispute whether W erthen discloses the
claim 1 limitations: "a first modulated optical power form and a second
optical power form" and "a device configured to receive at least the first
modulated optical power form and to provide output driven by the
modulated first optical power form." App. Br. 9-15; Reply Br. 2-5; Final
Act. 5-6; Ans. 2-10.
Claim terms in a patent application are given the broadest reasonable
interpretation consistent with the Specification, as understood by one of
ordinary skill in the art. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
However, great care should be taken to avoid reading limitations of the
Specification into the claims. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d
1364, 1369 (Fed. Cir. 2003).
According to Appellants, W erthen is directed to an optical data link
for receiving optical power and data signals and providing USB compliant
electrical data signals and a 5V electrical power signal to an external USB
device. Appeal Br. 9 (citing Abstract). Werthen discloses a host interface
module (HIM) and a device interface module (DIM) that can operate
together to form the optical data link. Id. (citing Werthen i-f 40, Figs. 7, 9).
Appellants argue W erthen describes an optical power signal
(generated by OPS 145) and an optical data signal (generated by MOS 135),
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Application 12/800,238
not a first modulated optical power form and a second optical power form.
App. Br. 10. According to Appellants, the Examiner's broadest reasonable
interpretation errs by interpreting the term "optical power form" to include
W erthen' s optical data signal because such an interpretation is inconsistent
with the Specification and Werthen's description, and one of skill in the art
would understand that "optical power form" means a power signal, not a
data signal. App. Br. 13-15. Appellants argue the '"first modulated optical
power form' and the 'second optical form' ... indicate a specific type and
structure of optical signals to one of skill in the art, namely optical power
signals that can power devices, and drive output." Appeal Br. 14.
Specifically, Werthen's "optical data signal is used to produce digital USB
data, which does not drive the output of any device as claimed." Id. at 13.
According to Appellants, the Specification "clearly differentiates between
optical power forms and optical data [control] forms." Id. at 14.
As discussed below, we are not persuaded by Appellants' arguments
and instead agree with the Examiner's findings and interpretations.
The Examiner finds the term "optical power form" is not defined in
the Specification and the term "form" means type or kind. Ans. 2 (citing
Merriam-Webster Dictionary). The Examiner finds, and we agree,2 the
"plain meaning of modulated optical power form is a type or kind of
modulated optical power" and "[ t ]his includes any form of modulated
optical power and any modulated optical signal that has optical power." Id.
2 We are not persuaded by Appellants' proffered IEEE definition of "power"
and argument that when "power" is used to describe form, it is to distinguish
between optical forms and optical control (data) signals. Reply Br. 3--4.
This definition and argument provides insufficient basis why the Examiner's
definition and interpretation are unreasonable or overbroad.
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Application 12/800,238
(emphasis added). With this interpretation, the Examiner finds Werthen's
optical data signal has power, because every optical signal has power, and
the optical data signal is a form (type) of optical power. Ans. 4--5 (citing
Dutton (Harry J.R. Dutton, Understanding Optical Communications, IBM,
INTERNATIONAL TECHNICAL SUPPORT ORGANIZATION, Sept. 1998)).
The Examiner finds the use of "optical power form" in the
Specification does not exclude an optical power form being the same as an
optical control signal (optical data signal). Ans. 2-3. For example, the
Specification uses the term "may" to characterize there may be differences
but leaves open the case where they are the same. Id. at 3 (citing Spec.
i-fi-1 52, 54, 46). Moreover, the Specification states the descriptions are
exemplary and non-limiting. Ans. 4 (citing i-f 100). Thus, we are not
persuaded by Appellants' argument that the term is used consistently in the
Specification to distinguish between optical power form and optical control
signal (optical data signal) and, therefore we agree the Examiner's claim
interpretation is not inconsistent with the Specification. Ans. 4; App. Br. 14.
We are not persuaded by Appellants' argument that a "single
transmission of an optical power and data signal is not a transmission of both
a first modulated optical power form and a second optical power form."
App. Br. 12. Instead, we agree with the Examiner's finding that Werthen
discloses the transmission of the first optical signal (data signal) and the
second optical power form (optical power signal). Ans. 6.
We are not persuaded that Werthen's description of power and data
signals as separate signals requires that optical power form must be narrowly
interpreted to exclude optical data signals. App. Br. 10-13. Moreover,
assuming arguendo, optical power signals and optical data signals are
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Application 12/800,238
considered different signals as argued by Appellants, the disputed term is
"optical power form" and Appellants present insufficient evidence to
persuade us the Examiner's findings and interpretation are unreasonable or
overbroad.
Regarding the limitation "and to provide output driven by the
modulated first optical power form," the Examiner finds, and we agree,
every optical signal has power, the optical data signal drives the output Srd
and, if the optical data signal is not present, Srd would not be present. Ans. 4
(citing Dutton). In addition, we note Appellants argue the first modulated
power form in connection with "electrical device loads," such as a speaker,
but the claim recites "to provide output driven by" without any recitation of
specific electrical device loads Appeal Br. 13 (citing Spec. i-fi-166-69, 89);
Ans. 7. Therefore, we are not persuaded by Appellants' arguments.
In view of the above, we sustain the rejection of claim 1 and
independent claims 20 and 37 as these claims are argued together with claim
1. We also sustain the rejection of dependent claims 2, 9-12, 15, 16, 21, 26-
29, 32, 33, 38, 43--46, 49, and 50 as these claim are not argued separately.
The 35 U.S.C. §103(a) Rejections
Appellants rely on the same arguments considered above regarding
anticipation and present no additional arguments of non-obviousness. App.
Br. 16-17. Therefore, we sustain the rejection of claims 3-8, 13, 14, 17-19,
22-25, 30, 31, 34-36, 39--42, 47, 48, and 51-53.
DECISION
We affirm the Examiner's decision rejecting claims 1-53.
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Application 12/800,238
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
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