Ex Parte Chan et al

Patent Trial and Appeal Board

Feb 25, 2016

12800230 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/800,230 05/11/2010 Alistair K. Chan
103600 7590 02/29/2016
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.
103069-0122 2370
EXAMINER
DOBSON, DANIEL G
ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
02/29/2016 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.,
Appeal2014-001659
Application 12/800,230
Technology Center 2600
Before ERIC S. FRAHM, JEFFREY A. STEPHENS, and
CARLL. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-001659
Application 12/800,230
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 30-45, 48, 49, 51-54, and 57-59.
Final Act. 1; Advisory Act 2 (mailed Apr. 8, 2013); App. Br. 7. Claims 1-
29, 46, 47, 50, 55, 56, and 60-87 are cancelled. Id.; see also App. Br. 17-20
(Claims Appendix). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Claimed Subject Matter
The invention relates to delivering multiple optical power forms over
an optical conduit with a counter propagating optical control signal.
Abstract. Claim 30, reproduced below, is exemplary of the matter on
appeal:
30. A method of transmitting power, comprising:
generating at least a first optical power having a first optical
po\'l/er form and a second optical po\'l/er having a second optical po\'l/er
form·
'
generating at least a first optical control signal having a first
optical control form;
transmitting at least the first optical power form and the second
optical power form in one direction, and the first optical control form
through an optical conduit in the opposite direction;
receiving at least the first optical power form by a first optical
receiver, the second optical power form by a second optical receiver
and the first optical control form by a third optical receiver; and
converting at least the first optical power form into a first power
output having a first electrical power form, the electrical power form
being based on the first optical control signal;
wherein at least one characteristic of one of the optical power
sources is adjusted based on at least one characteristic of the optical
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 12/800,230
conduit and the at least one characteristic of the optical conduit is
maximum power handling capability.
App. Br. 17 (Claims Appendix).
REJECTION
Claims 30-45, 48, 49, 51-54, and 57-59 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Wilson et al. (US 200710062696
Al, published Mar. 22, 2007) ("Wilson"), Wang (US 2008/0025676 Al,
published Jan. 31, 2008) ("Wang"), and Adams et al. (U.S. 6,331,908 Bl,
issued Dec. 18, 2001) ("Adams"). (Final Act. 2-18.)
ANALYSIS
Appellants and the Examiner dispute whether Wang, alone, or in
combination with Wilson and Adams, teaches or suggests the claim 30
limitation "converting at least the first optical power form into a first power
output having a first electrical power form, the electrical power form being
based on the first optical control signal." App. Br. 6-16; Reply Br. 2-8;
Final Act. 2-21; Advisory Act. 2; Ans. 2-11.
The Examiner finds Wilson teaches the claim 30 limitations and relies
on Wang in combination with Wilson for the disputed limitation. Final Act.
9-10 (citing Wilson Fig. 12A; i-f 83; citing Wang Fig. 4; i-fi-140, 41). See also
Advisory Act 2; Ans. 5-10.
Wilson's downhole oilfield sensor system includes a surface data
acquisition/controller in optical and/or electrical communication with a fiber
optic cable extending downhole. Wilson i-f 83, Fig. 12A. Wilson describes
three downhole modules, each of which can receive different wavelengths of
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Application 12/800,230
light and each can convert the light energy to electrical energy to power
downhole devices, e.g., downhole sensors. Id.; see also ,-r 79. The downhole
devices can also each send an optical signal upstream through the same
optical cable. Thus, the Examiner finds Wilson teaches, inter alia,
"converting at least the first optical power form into a first electrical power
output having a first electrical power form" because the optical power sent
downstream is converted downstream [by a PPC2] to electrical power in
order to power the downstream devices. Final Act. 10. Specifically, PPC
2120 converts the first optical form into an electrical signal. Id. at Fig. 12A.
The Examiner finds Wang teaches a system in which transceivers
communicate with each other and the first optical power at one transceiver is
based on a control signal received from the other transceiver. Final Act. 4
(citing i-fi-1 40, 41 ). According to Appellants:
Wang is directed to [ ] "an integrated optical fiber and
optoelectronic module for optically coupling a pair of information
system devices." Paragraph [0013]. \Vang discloses "a first electro-
optical module 400" which is connected to "a second electro-optical
module 409." Paragraph [0037] and FIG. 4. "The first electro-optical
module 400 comprises a VCSEL array 402" used to transmit optical
signals, where a "control signal is applied to the module controller
406 to set power level of each VCSEL in the array 402." Paragraphs
[0037] and [0041], and FIG. 4.
App. Br. 9.
Appellants argue Wang's controller 406 is controlled by an "electrical
control signal" and Wang merely discloses the use of an "electrical control
signal to control a laser's optical data output." App. Br. 11. According to
2 PPC is a photonic power converter for converting light into electrical
power. See Wilson i-fi-175, 79.
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Application 12/800,230
Appellants, Wang's generation and transmission of optical data does not
teach the disputed limitation because Wang is converting an electrical signal
into an optical data signal, as opposed to converting an optical power form
into an electrical power form as claimed. Id. at 13. Appellants argue the
"optical data signal of Wang is fundamentally different than 'optical power
having a first optical power form' as claimed." Id. at 13.
We are not persuaded by Appellants' arguments because they are
directed to the disclosure of the individual reference Wang, rather than the
combined teachings and suggestions of Wilson and Wang. Moreover, the
Examiner cites Wilson for teaching converting optical power to electrical
power. Final Act. 9-10; Ans. 5-10. The Examiner cites Wang for the broad
teaching of the concept of using a control signal to control an optical flow,
not for the transmission of optical data. Final Act. 4. Appellants improperly
argue the individual reference, rather than the combination of the references
cited by the Examiner. In re Keller, 642 F.2d413, 426(CCPA1981)
("[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references."); In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Regarding Wang, Appellants further argue:
Adjusting the bias voltage and current of a VCSEL laser device
in response to an electrical control signal, is not the same as
converting an optical power form "into a first power output
having a first electrical power form" where "the electrical
power form [is] based on the first optical control signal," as
claimed.
App. Br. 14. We are not persuaded and instead agree with the Examiner that
adjusting the VCSEL directly affects the transmitted optical power, and this
directly affects the amount of power received at the optical receiver, which
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Application 12/800,230
directly affects the characteristics of the converted electrical signal. Ans. 9
(citing Wang i-f 41 ). While adjusting the VCSEL may not be "the same" as
argued above by Appellants we agree with the Examiner that Wang broadly
teaches the concept of controlling upstream optical sources. Final Act. 4.
Appellants argue "optical power forms" indicate a specific type and
structure of optical signals, namely optical power signals, and these are
fundamentally different than optical data signals, as claimed. App. Br. 13
(citing Spec. i-f 53); Reply Br. 7-8. More specifically, Appellants argue
paragraph 53 of the Specification "differentiates between optical power
forms and control [data] forms." App. Br. 13. According to Appellants, the
Examiner has ignored the specific claimed "optical power form" and
changed it to a generic "optical signal." App. Br. 13; Reply Br. 7.
We are not persuaded and instead agree with the Examiner's findings.
We note the term "optical power form" is not defined and the Examiner
finds no specific type and structure of optical power form is consistently
used in the Specification. Ans. 7. The Examiner does not ignore the
claimed "optical power form" because Wilson is cited for a system that uses
laser to transmit light of different wavelength (optical power forms) that are
converted to electrical power. Ans. 8 (citing Wilson Fig. 12A, elements
2118, 2120, i-f83; see also Final Act. 9-10).
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. Keller, 642 F.2d at 425. "A court can take account of the
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Application 12/800,230
inferences and creative steps that a person of ordinary skill in the art would
employ," such as the complementary teachings of the references. KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The reason to combine the
cited references is found in the references and in the knowledge of one of
ordinary skill in the art. We determine the benefit gained from the
combination, articulated by the Examiner, would have motivated an
ordinarily skilled artisan to make such a combination.
On this record, Appellants do not present any evidence that the
combination of Wilson and Wang is "uniquely challenging or difficult for
one of ordinary skill in the art" or "represented an unobvious step over the
prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19). Nor have Appellants
provided objective evidence of secondary considerations, which our
reviewing court guides "operates as a beneficial check on hindsight."
Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352
(Fed. Cir. 2013).
Appellants argue the Examiner's rationale for combining Wilson and
Wang is inadequate because it is conclusory and because Wang does not
teach the disputed limitation as argued above. App. Br. 14-15. We disagree
because, as discussed above, the combination of Wilson and Wang teaches
the disputed limitation. Regarding the rationale, the Examiner finds the
motivation would have been to allow the power level [of Wilson] to be set to
the desired level. Final Act. 10-11 (citing Wang i-f 41). This is reasonable
inasmuch as Wilson's downhole devices are electrically powered and rely on
the correct electrical power under downhole conditions. Appellants provide
no evidence why the Examiner's findings are unreasonable.
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As stated by the Court, the Examiner's obviousness rejection must
be based on "'some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness."' KSR, 550 U.S. at 418
(quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). The analysis need
not, however, seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ. Id.
In view of the foregoing, we sustain3 the rejection of claim 30, and
independent claim 59 argued together with claim 30. App. Br. 4.
Dependent claims 31--45, 48, 49, 51-54, 57, and 58 are not argued
separately and, therefore, we also sustain the rejection of these claims. App.
Br. 15.
DECISION
We affirm the Examiner's decision rejecting claims 30--45, 48, 49,
51-54, and 57-59.
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
3 In the Answer and Reply Brief, the Examiner and Appellants also include
detailed discussion of points A, B, C, and D regarding the detailed operation
of signals in Appellants' Figure 3 embodiment and Wang's Figure 4. We
need not address this detailed discussion because, as discussed above, we
agree with the Examiner that Wilson combined with the broad teaching of
Wang teaches the claimed invention.
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