Ex Parte Chow et al

Patent Trial and Appeal Board

Jan 29, 2018

13410936 (P.T.A.B. Jan. 29, 2018)

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.
13/410,936 03/02/2012 Bruce Cinkai Chow HIll-124 2807
21495 7590 01/31/2018
CORNING INCORPORATED
INTELLECTUAL PROPERTY DEPARTMENT, SP-TI-3-1
CORNING, NY 14831
EXAMINER
MOTSINGER, TANYA THERESA NGO
ART UNIT PAPER NUMBER
2637
NOTIFICATION DATE DELIVERY MODE
01/31/2018 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):
u sdocket @ corning .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE CINKAI CHOW, ANTHONY NG’OMA,
MICHAEL S. PAMBIANCHI, and MICHAEL SAUER
Appeal 2017-008955
Application 13/410,93 61
Technology Center 2600
Before ROBERT E. NAPPI, DAVID M. KOHUT, and LYNNE E. PETTIGREW,
Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Coming Optical
Communications LLC. App. Br. 2.
Appeal 2017-008955
Application 13/410,936
INVENTION
Appellants’ invention relates to an optical fiber network for providing
bandwidth to subscribers. Spec. H 1, 5; Abstract.
CLAIMED SUBJECT MATTER
Claims 1,9, 14, and 17 are independent. Claim 1 is representative and is
reproduced below.
1. An optical network unit (ONU), comprising:
an optical fiber interface configured to communicate with
an optical fiber network;
an optical/electrical converter configured to receive
digital optical downlink signals at a first frequency from the
optical fiber network through the optical fiber interface and
convert the digital optical downlink signals to electrical
downlink signals;
electrical circuitry comprising a digital baseband
converter, the digital baseband converter configured to
frequency convert the electrical downlink signals to digital
extremely high frequency (EHF) downlink signals at an EHF;
and
a wireless transceiver configured to transmit the digital
EHF downlink signals to a proximate subscriber unit associated
with a proximate building through an antenna such that the
proximate building blocks the digital EHF downlink signals
from propagating past the proximate building.
Independent claims 9, 14, and 17 recite similar limitations as claim 1, and
Appellants argue they are allowable for the same reasons as argued for claim 1.
App. Br. 8, 18; Reply Br. 9.
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REJECTIONS AT ISSUE
I. The Examiner has rejected claims 1—5 and 8—13 under 35 U.S.C. § 103(a) as
unpatentable over Soto (US 2010/0150566 Al; June 17, 2010) and Carbone
(US 2012/0309325 Al; Dec. 6, 2012).2
II. The Examiner has rejected claims 6—8 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Soto, Carbone, and Morton (US 2012/0114076 Al; May
10, 2012).
III. The Examiner has rejected claims 14—19 under 35 U.S.C. § 103(a) as
unpatentable over Soto, Carbone, and Boch (US 2002/0128009 Al; Sept. 12,
2002).
IV. The Examiner has rejected claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Soto, Carbone, and Kaplan (US 2008/0224869 Al; Sept.
18,2008).
V. The Examiner has rejected claims 21—23 under 35 U.S.C. § 103(a) as
unpatentable over Soto, Carbone, Boch, and Manzano (US 2007/0261060
Al; Nov. 8, 2007).
ISSUES
Appellants argue, on pages 9-24 of the Appeal Brief and pages 2—15 of the
Reply Brief, the Examiner’s rejections are in error. These arguments present us
with the following issues:
1) Did the Examiner err in finding that it would be obvious to combine Soto
and Carbone?
2 Throughout this Decision we refer to the Appeal Brief filed February 21, 2017;
Reply Brief filed June 2, 2017; Final Rejection dated August 24, 2016; and the
Examiner’s Answer dated April 6, 2017.
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2) Did the Examiner err in finding the combination of Soto and Carbone
teach or suggest “electrical circuitry comprising a digital baseband
converter, the digital baseband converter configured to frequency convert
the electrical downlink signals to digital extremely high frequency (EHF)
downlink signals at an EHF,” as recited in claim 1?
3) Did the Examiner err in finding Morton teaches or suggests an oval
radiation pattern for the transmission signal as required in claim 6?
4) Did the Examiner err in finding the combination of Sato, Morton, and
Carbone teaches or suggests “the transmitted digital EHF downlink
signals are steered such that a structure associated with the proximate
building of the proximate subscriber unit blocks signals from propagating
past the structure,” as recited in claim 8?
5) Did the Examiner err in finding the combination of Soto, Carbone, and
Boch teaches or suggests a plurality of ONUs where the plurality of
ONUs reduce mutual interference through frequency domain
multiplexing as required in claims 18 and 19?
ANALYSIS
We have reviewed Appellants’ arguments in the Appeal Brief and the Reply
Brief, the Examiner’s rejections, and the Examiner’s response to Appellants’
arguments. Appellants’ arguments have not persuaded us of error in the
Examiner’s rejections of claims 1—5 and 7—23. Appellants’ arguments have
persuaded us of error in the Examiner’s rejections of claims 6 and 24.
Issue 1
The Examiner finds that Soto teaches most of the limitations of claim 1,
including wireless transmission of signals through an RF antenna, but lacks an
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explicit teaching of an EHF transceiver. Final Act. 6; see Soto Fig. 4B. The
Examiner finds that Carbone teaches an EHF transceiver and supports Soto’s
teaching that an EHF signal is an RF signal. Final Act. 6—7; Ans. 20—21. The
Examiner further finds that it would be obvious to combine the EHF transceiver of
Carbone with the optical network of Soto to allow users at the proximate
subscriber unit to transmit and receive EHF signal transmissions, enabling
communication. Final Act. 6.
Appellants argue that the Examiner fails to support the conclusion of
obviousness for combining Soto and Carbone because there would be no reason to
look to Carbone because Soto already enables communication with a user. App.
Br. 14; Reply Br. 4; see Final Act. 6. Appellants further argue that the teachings of
Soto and Carbone are at odds since using EHF signals would not be beneficial to
Soto for extending coverage area because Carbone’s EHF transceiver is for short
range communication. App. Br. 14—15; Reply Br. 4.
We concur with the Examiner’s conclusion of obviousness and are not
persuaded by Appellants’ arguments. The Examiner rejected the claims based on
the combination of pre-existing elements in Soto (bi-directional wireless
transmission of signals through an RF antenna, i.e., transceiver) and Carbone (EHF
transceiver) with each performing the same function they would perform
separately. “The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Modifying Soto’s passive
optical network to use Carbone’s EHF transceiver would yield predictable results.
As such, the combination of Soto and Carbone has sufficient reasoning with
rational underpinnings to support the conclusion of obviousness. Further, to
Appellants’ argument that the references are at odds, the Examiner finds and
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Appellants’ agree that both Soto and Carbone teach EHF transmissions. See Ans.
20—21; Reply Br. 3^4. Using Carbone’s EHF transceiver, which may have the
disadvantage of limiting coverage area, does not frustrate Soto’s communication.
SeeMedichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A]
given course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate motivation to combine.”). The Examiner did not
err in finding that it would be obvious to combine Soto and Carbone.
Issue 2
The Examiner finds Soto teaches digital signals because of the coding
formats applied to Soto’s optical and electrical downlink signals. Ans. 21—22;
Soto 132. The Examiner further finds that Soto’s mixer and local oscillator
operate as a digital baseband converter “to raise the center frequency of the . . .
signal... to a frequency suitable for radio transmission.” Ans. 22—23.
Appellants argue Soto does not teach or suggest digital signals because the
terms “digital signals” or “[digital] downlink signals” do not appear in a word
search of the reference, and Soto does not teach digital processing of signals. App.
Br. 15—16; Reply Br. 6, 8. Appellants argue Soto’s signal coding formats for
modulating signals do not teach digital signals. App. Br. 17; Reply Br. 6.
Additionally, Appellants argue the combination of references does not teach or
suggest a frequency baseband converter to convert the electrical downlink signal to
digital EHF signals. App. Br. 15, 18; Reply Br. 5, 8—9. Specifically, Appellants
argue that structures used in mixing the baseband signal do not constitute a digital
baseband converter. App. Br. 17; Reply Br. 7—8.
Appellants’ arguments are not persuasive. There is no requirement in an
obviousness analysis for the prior art to “contain a description of the subject matter
of the appealed claim in ipsissimis verbis.” In re May, 574 F.2d 1082, 1090
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(CCPA 1978). Thus, the references relied on by the Examiner need not use the
same exact words of the claims. Further, Appellants have not presented any
particular arguments to explain why the Examiner’s finding that Soto teaches
certain coding formats where “signals with these coding formats are digital
signal[s]” is in error. Ans. 22; Soto 132. Thus, the evidence supports the
Examiner’s findings that Soto teaches digital signals.
Regarding Appellants’ argument to the digital baseband converter, it does
not address the teachings of Soto in the rejection as proposed by the Examiner.
The Examiner finds that the mixer of Soto that modulates the digital downlink
signal input with the carrier signal from the local oscillator meets the claimed
digital baseband converter. Ans. 22—23; see Soto 135. Soto teaches that the
frequency of the carrier signal may include frequencies in the EHF band. Soto
Tflf33—34. Carbone supports the teaching in Soto that an EHF signal is an RF
signal. See Final Act. 6; Ans. 21. As such, in the combination as proposed by the
Examiner, the mixer and local oscillator are configured to frequency convert the
digital electrical downlink signals to digital EHF downlink signals at an EHF.
Accordingly, we are not persuaded the Examiner erred in finding Soto, as
combined with Carbone, teaches or suggests “electrical circuitry comprising a
digital baseband converter, the digital baseband converter configured to frequency
convert the electrical downlink signals to digital extremely high frequency (EHF)
downlink signals at an EHF,” as recited in claim 1.
For the reasons discussed above, we are not persuaded of error and sustain
the Examiner’s rejection of independent claim 1. Independent claims 9, 14, and 17
recite similar limitations as claim 1, and Appellants present the same arguments for
them. See App. Br. 8, 18. Claims 2—5, 7 and 21 depend from claim 1 or another
dependent base claim, claims 10-13 and 22 depend from claim 9 or another
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dependent base claim, claims 15 and 16 depend from claim 14, and claims 20 and
23 depend from claim 17 or another dependent base claim. App. Br. 25—28,
Claims Appendix. Appellants do not present separate arguments for claims 2—5, 7,
10-13, 15, 16, 20, 21, and 23. App. Br. 18—19, 23. Thus, we sustain the
Examiner’s rejection of claims 2—5, 7, 9—17, and 20-23 for the same reasons as set
forth above for claim 1.
Issue 3
Claim 6 depends from claim 1 and recites “wherein the wireless transceiver
is configured to transmit the digital EHF downlink signals using an oval radiation
pattern.” App. Br. 26, Claims Appendix. The Examiner takes Official Notice that
oval radiation patterns are well known. Final Act. 10.
Appellants argue Morton does not teach or suggest transmitting digital EHF
signals using an oval radiation pattern, as required by claim 6. App. Br. 19.
Specifically, Appellants disagree with the Examiner’s Official Notice regarding the
oval radiation pattern, arguing that it would not be obvious without looking at the
Specification. App. Br. 20.
In response to Appellants’ challenge of this Official Notice, the Examiner
has not provided evidence to support the finding that an oval radiation pattern is
well known. See Final Act. 9—10; Ans. 25. Thus, the Examiner has presented
insufficient evidence to demonstrate that an oval radiation pattern for the
transmission signal as recited in claim 6 is obvious. Therefore, we do not sustain
the Examiner’s rejections of claim 6 and claim 24, which depends from claim 6.
Issue 4
Claim 8 depends from claim 7 and recites “wherein the transmitted digital
EHF downlink signals are steered such that a structure associated with the
proximate building of the proximate subscriber unit blocks signals from
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propagating past the structure.” App. Br. 26, Claims Appendix. The Examiner
finds the combination of Soto and Carbone teaches transmitting digital EHF
signals to the wireless terminal at a building or premises as taught in Soto and finds
Morton teaches steering the signals. Final Act. 11; Ans. 25—26; Soto 14.
Additionally, the Examiner finds the building would inherently block EHF signals
as a result of the materials used for the building. Ans. 26.
Appellants argue Soto, Carbone, and Morton do not teach or suggest the
limitations of claim 8. Appellants specifically argue it would not have been
obvious to steer the transmission of Soto and Carbone toward a building to be
blocked by the building. App. Br. 21; Reply Br. 12. Appellants further argue that
the Examiner did not provide evidence to support the conclusion of obviousness.
App. Br. 21; Reply Br. 12.
Appellants’ arguments are not persuasive. We agree with the Examiner that
Soto teaches buildings with wireless terminals to receive wireless signals from a
network. See Final Act. 11; Ans. 26; Soto 14. When coupled with Morton’s
teaching of a beam steering antenna, the beam would logically be directed at the
receiving building. Appellants’ Specification recognizes that it is known that
certain building materials block EHF signals. Spec. 144. Thus, we find the
evidence supports the Examiner’s findings that the combination of Soto, Carbone,
and Morton teaches transmitted digital EHF downlink signals steered such that a
structure associated with the proximate building of the proximate subscriber unit
blocks signals from propagating past the structure. Therefore, we sustain the
Examiner’s rejection of claim 8.
Issue 5
Claim 18 depends from claim 17 and recites “a plurality of ONUs
configured to communicate with respective proximate subscriber units.” App. Br.
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28, Claims Appendix. Claim 19 depends from claim 18 and recites “wherein the
plurality of ONUs reduces mutual interference through frequency domain
multiplexing (FDM).” App. Br. 28, Claims Appendix.
The Examiner finds Soto does not teach multiple ONUs/converters, but that
it would be obvious to include multiple ONUs to increase the number of users on
the network. Final Act. 19. Specifically, the Examiner finds the duplication of
ONUs has no patentable significance as it would not generate new and unexpected
results and would provide the benefit of additional communication. Ans. 27. The
Examiner further finds Soto teaches ONUs using wavelength division multiplexing
to reduce mutual interference. Final Act. 19; Ans. 27; Soto 144. Additionally, the
Examiner finds wavelength division multiplexing and frequency division
multiplexing are the same kind of multiplexing. Ans. 27.
Appellants argue the Examiner’s conclusion of obviousness lacks
evidentiary support and is conclusory. App. Br. 22; Reply Br. 13. Specifically,
Appellants argue that if it were obvious to add multiple converters to Soto, Soto
would have disclosed multiple converters. App. Br. 22; Reply Br. 13. Appellants
agree with the Examiner’s findings that Soto teaches wavelength division
multiplexing, but further argue that Soto does not mention a plurality of ONUs
using multiplexing to reduce mutual interference. App. Br. 22; Reply Br. 13.
Appellants’ arguments are not persuasive. Regarding the argument to
multiple ONUs, we concur with the Examiner’s conclusion that the duplication of
ONUs of Soto would be obvious as supported by our conclusion of obviousness for
the first ONU. Further, as the Examiner finds with claim 19, Soto does teach
multiple ONUs. See Final Act. 19; Ans. 27; Soto 144, Fig. 4C (“converter 150E . .
. in FIG. 4C [shows] cascading boxes [to] designate^ a plurality of such parts[,]. . .
utilized by ... a Wavelength Division Multiplexing [Network (WDM-PON),] . . .
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wherein multiple wavelengths of the WDM-PON are dedicated for each and every
ONU or ONT”). This finding is further supported by Soto Figures 5 A to 5C and
related disclosure. Thus, we agree with the Examiner’s finding that Soto teaches
multiple ONUs. Regarding the argument to reducing mutual interference, the
Examiner finds Soto’s ONUs using wavelength division multiplexing, which is the
same as frequency division multiplexing, to reduce interference. Appellants do not
present any arguments to explain why the Examiner’s finding is in error. Instead,
Appellants’ argument restates the claim language and simply argues that the
references do not teach or suggest the elements. See App. Br. 22; Reply Br. 13-14.
Such conclusory arguments are unpersuasive. Therefore, we sustain the
Examiner’s rejection of claims 18 and 19.
DECISION
The Examiner’s rejections of claims 1—5 and 7—23 are affirmed.
The Examiner’s rejections of claims 6 and 24 are reversed.
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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