Ex Parte Chowdhury et al

Patent Trial and Appeal Board

Apr 29, 2014

10442287 (P.T.A.B. Apr. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AREF CHOWDHURY and RENE-JEAN ESSIAMBRE

____________

Appeal 2011-011752
Application 10/442,287
Technology Center 2600
____________

Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and
MICHAEL J. STRAUSS, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011752
Application 10/442,287

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-12, 14-24, and 26-32. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
The claimed invention is directed to reducing the penalty in the
optical signal-to-noise ratio induced by nonlinear effects in an optical
communication system. Abstract. The communication system is operated
and is adapted to be operated in a pseudo-linear regime. Id. An optical
phase conjugator is employed with a suitable dispersion map. Id. This
combination yields a desirable improvement in the required penalty in the
optical signal-to-noise ratio due to nonlinear effects. Id.
Independent claims 1 and 15, reproduced below, are representative of
the subject matter on appeal.
1. A system for optical communication comprising a series of
optical fiber segments and an optical phase conjugator
connected between two of the segments; and

wherein the system is configured to operate the series in a
pseudo-linear regime such that the series has a dispersion map,
the dispersion map having non-zero cumulative dispersions of
opposite signs at a beginning and an end of the series of optical
fiber segments;

wherein a dispersion map ratio of the dispersion map is in a
range of 0.5 to 2.0; and

wherein the ends of the segments connect to devices located in
nodes, each device including an amplifier, a transmitter, a
multiplexer, a demultiplexer, a wavelength converter, a
Appeal 2011-011752
Application 10/442,287

3
receiver, a switch, an add-drop multiplexer, a cross connect, or
a modulator.

15. A process for operating an optical communication system
comprising propagating an optical signal through a series of
optical fiber segments and an optical phase conjugator
connected between two of the segments; and

wherein the system is configured to operate the series in a
pseudo-linear regime such that the series has a dispersion map,
the dispersion map having non-zero cumulative dispersions of
opposite signs at a beginning and an end of the series of optical
fiber segments;

wherein a dispersion map ratio of the dispersion map is in a
range of 0.5 to 2.0; and

wherein the ends of the segments connect to devices located in
nodes, each device including an amplifier, a transmitter, a
multiplexer, a demultiplexer, a wavelength converter, a
receiver, a switch, an add-drop multiplexer, a cross connect, or
a modulator.

REFERENCES and REJECTIONS
1. The Examiner rejected claims 1, 7-9, 11, 12, 14, 15, 21-23, and 26-32
under 35 U.S.C. § 103(a) as being unpatentable over Downie (U.S.
Pat. No. 7,016,583 B2, Mar. 21, 2006) in view of Nissov (U.S. Pat.
No. 7,139,489 B2, Nov. 21, 2006).
2. The Examiner rejected claims 2 and 16 under 35 U.S.C. § 103(a) as
being unpatentable over Downie and Nissov, in further view of
Gagliardi (Robert M. Gagliardi & Sherman Harp, Optical
Communications, 1-8 (John Wiley & Sons, 2nd ed. 1995)).
Appeal 2011-011752
Application 10/442,287

4
3. The Examiner rejected claims 3 and 17 under 35 U.S.C. § 103(a) as
being unpatentable over Downie and Nissov, in further view of Islam
(U.S. Pat. No. 7,068,938 B1, Jun. 27, 2006).
4. The Examiner rejected claims 4-6 and 18-20 under 35 U.S.C. § 103(a)
as being unpatentable over Downie and Nissov, in further view of
Glingener (U.S. Pat. Pub. No. 2003/0072513 A1, Apr. 17, 2003).
5. The Examiner rejected claims 10 and 24 under 35 U.S.C. § 103(a) as
being unpatentable over Downie and Nissov, in further view of
Gnauck (U.S. Pat. No. 5,532,868, Jul. 2, 1996).
6. The Examiner rejected claims 27 and 28 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description
requirement.

ISSUES
The issues are whether the Examiner erred in finding:
1. that the limitation of “the series of optical fiber segments and nodes
forms an optical path from an optical data transmitter to an optical
data receiver” as recited in claims 27 and 28 fails to comply with the
written description requirement; and
2. that a person of ordinary skill in the art would incorporate the
amplifier of Nissov into the optical transmission system of Downie.

ANALYSIS
35 U.S.C. § 112, Claims 27 and 28
Appellants argue the Examiner is reading the limitations of an optical
data transmitter and the optical data receiver being at the terminal ends of a
Appeal 2011-011752
Application 10/442,287

5
series of optical fiber segments and nodes into claims 27 and 28 (App.Br.
21). Appellants rely on Figure 1 for a showing of a series of segments
between a transmitter and receiver (Reply Br. 5).
We do not agree. The Examiner has the initial burden of showing that
an original claim is not supported by the written description. “[T]he PTO
has the initial burden of presenting evidence or reasons why persons skilled
in the art would not recognize in the disclosure a description of the invention
defined by the claims.” In re Wertheim, 541 F.2d 257, 263-64 (CCPA
1976). The Examiner met this burden by identifying claims 27 and 28, as
new claims which did not have written description support (see MPEP
§ 2163.04). We agree with the Examiner that Figure 1 shows Appellants’
Admitted Prior Art (Ans. 10). Appellants’ invention is shown in Figures 11a
and 11b, which do not include a pseudo-linear regime with “the series of
optical fiber segments and nodes . . . from an optical data transmitter to an
optical data receiver” as recited in claims 27 and 28 (emphasis added).
Further, Appellants’ Specification provides a written description for a
pseudo-linear regime for segments 12, 7, 8, 9, and 11; 8 and 9; and 10, 9, 8,
and 7; none of which include “the series of optical fiber segments and nodes
. . . from an optical data transmitter to an optical data receiver” as recited in
claims 27 and 28 (emphasis added).
Appellants further argue that a person of ordinary skill in the art
would recognize the elements and apply the teachings of the application to
produce the claimed invention of claims 27 and 28 (Reply Br. 5).
We do not agree. Appellants’ argument that the teachings of the
Specification should be applied to the admitted prior art of Figure 1 is not
consistent with the written description. If the teachings of the Specification
Appeal 2011-011752
Application 10/442,287

6
were applied to Figure 1, as suggested by the Appellants, it would merely
provide a series of segments with pseudo-linear regime (Spec. 7, ll. 13-14).
The pseudo-linear segments extend from the receiver 12 to the
reshaper/timer 11 or from the transmitter 10 to the reshaper 7, but not from
the receiver 12 to the transmitter 10. “One shows that one is ‘in possession’
of the invention by describing the invention, with all its claimed limitations,
not that which makes it obvious.” Lockwood v. American Airlines Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997) (emphasis and citation omitted). Where a
textual description of an embodiment is absent, a showing that the missing
description would have been obvious does not suffice. Id. at 1571-72
(“Entitlement to a filing date does not extend to subject matter which is not
disclosed, but would be obvious over what is expressly disclosed. It extends
only to that which is disclosed.”). Appellants’ position that the teachings of
the Specification should be applied to include the segments from the
transmitter to the receiver is an obviousness determination, which is not
sufficient for the written description requirement.
Appellants argue that, on a preponderance of evidence, claims 27 and
28 meet the requirements of 35 U.S.C. § 112 (Reply Br. 5).
Appellants’ position regarding a preponderance of evidence is equally
not compelling. Although the written description requirement does not
demand (1) any particular form of disclosure, or (2) that the specification
recite the claimed invention verbatim, “a description that merely renders the
invention obvious does not satisfy the written description requirement.”
Ariad Pharm., Inc, v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010)
(en banc) (citations omitted). We agree with the Examiner’s finding (Ans.
10) that, based on the Specification, the disclosure does not include a
Appeal 2011-011752
Application 10/442,287

7
description of the pseudo-linear regime extending between of an optical data
transmitter to an optical data receiver.
Accordingly, we affirm the Examiner’s rejection of claims 27 and 28,
under 35 U.S.C. § 112.

The Downie and Nissov Combination
Appellants argue that a person of ordinary skill in the art would not
combine Downie and Nissov because Downie teaches symmetrical
dispersion managed lines 20, 24, and 28 about the center of the span and
mirror symmetry of the power distribution about the optical phase
conjugator 40 (App. Br. 7-8). Appellants argue the inclusion of an
amplifier, as disclosed in Nissov, into the dispersion managed lines as taught
by Downie, would destroy symmetry and make the combination unsuitable
for the intended purpose of minimizing the undesirable effects of non-
linearities (App. Br. 9). Appellants further argue the amplifier would
increase noise (App. Br. 11) and signal distortion due to non-linear optical
effects (App. Br. 13-14).
We do not agree. We agree with the Examiner that bodily
incorporation of the references is not required (Ans. 9). The features of the
secondary reference need not be bodily incorporated into the primary
reference, but consideration should be given to what the combined
teachings, knowledge of one of ordinary skill in the art, and the nature of the
problem to be solved as a whole would have suggested to those of ordinary
skill in the art (see In re Keller, 642 F.2d 413,425 (CCPA 1981)). The
Examiner found the combined teachings would allow for the optical system
of Downie with amplifiers inserted between the segments to compensate for
Appeal 2011-011752
Application 10/442,287

8
power loss due to the fiber segment (Final Rejection 3). Nissov teaches that
long-haul terrestrial optical communication systems use multiple segments,
where dispersion compensation is provided by the selection of fiber in
combination with an amplifier to improve noise performance (col. 2,
ll. 10-21). Therefore, we agree with the Examiner that the combined
teachings of Downie and Nissov reasonably suggest the use of amplifiers
between the segments to improve noise performance in long segments.
Appellants further argue that the Examiner’s motivation to combine
the references of amplifiers compensating for power loss due to the fiber
segment and improved noise performance is merely a conclusory statement
(App. Br. 15). Appellants also argue that the combination would be too
difficult for the delicate nature of the modification (Reply Br. 3).
We do not agree. The Examiner finds, and we agree, that the
amplifiers of Nissov could be added to the optical system of Downie without
destroying the symmetry by appropriate selection of the overall
amplification to compensate for fiber loss (Ans. 9). While Appellants argue
that the combination is difficult, Appellants fail to provide evidence
sufficient to persuade us that it is beyond the capabilities of a person of
ordinary skill in the art. We conclude the proffered combination is no more
than a simple arrangement of old elements, with each performing the same
function it had been known to perform, yielding no more than one would
expect from such an arrangement. See KSR Int'l Co. v. Teleflex, lnc., 550
U.S. 398, 416 (2007). The combination itself is sufficient reasoning with
rational underpinning to support a finding of obviousness. Additionally, “a
court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418. Appellants have
Appeal 2011-011752
Application 10/442,287

9
presented no evidence that the step was uniquely challenging or difficult for
a person of ordinary skill in the art. Furthermore, Downie suggests that a
person of ordinary skill in the art would able to incorporate amplifiers and
maintain a symmetric power profile. Particularly, Downie teaches that
Raman amplifiers can be coupled to the third fiber portion in order to make
the power profile symmetric (col. 7, l. 67 - col. 8, l. 2).
Appellants further argue that Downie teaches away from the inclusion
of an amplifier in the fiber segments because Downie provides dispersion
managed spans (App. Br. 17). Appellants rely on the 37 C.F.R. § 1.132
declaration of Dr. Aref Chowdhury to show the combination would destroy
the anti-symmetry of the dispersion profile and symmetry of the optical
power profile (App. Br. 8). The Appellants’ position is ineffective because
it only takes into account one preferred manner of reducing non-linear
distortion. Downie teaches multiples ways to minimize the effects of non-
linearities, including the selection of fiber types, fiber lengths, dispersion
symmetry, or preferably both dispersion and power symmetry (col. 9, ll. 39-
43). A reference does not teach away if it merely expresses a general
preference for an alternative invention but does not “criticize, discredit, or
otherwise discourage” investigation into the invention claimed. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants have not shown
where Downie criticizes, discredits, or discourages the use of an amplifier as
taught by Nissov.
We further agree with the Examiner that the subject matter as a whole
would have been obvious to a person of ordinary skill in the art (Ans. 9).
Downie discloses the use of both dispersion and power symmetry to
minimize non-linearities, but also teaches the selection of fiber types and
Appeal 2011-011752
Application 10/442,287

10
lengths to achieve the same purpose (col. 9, ll. 39-43). Nissov similarly
teaches the section of fiber for long haul lengths, in combination with
amplifiers between the segments for the same purpose of compensating for
dispersion (col. 2, ll. 12-21). The combined teachings of Downie and
Nissov provide for a system with reduced non-linearities that operate with
improved dispersion and noise performance over long hauls, by the selection
of fiber type, fiber length in combination with an amplifier.
Accordingly, we affirm the Examiner’s rejection of claims 1 and 15,
and for the same reasons, the rejection of claims 2-12, 14, 16-24, and 26-32.

CONCLUSIONS
The Examiner did not err in finding:
1. that the limitation of “the series of optical fiber segments and nodes
forms an optical path from an optical data transmitter to an optical
data receiver” as recited in claims 27 and 28 fails to comply with the
written description requirement; and
2. that a person of ordinary skill in the art would incorporate the
amplifier of Nissov into the optical transmission system of Downie.
DECISION
The Examiner’s decision rejecting claims 1-12, 14-24, and 26-32 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
Appeal 2011-011752
Application 10/442,287

11

msc