Ex Parte Deas

Board of Patent Appeals and Interferences

Sep 15, 2008

10384379 (B.P.A.I. Sep. 15, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID A. DEAS
____________

Appeal 2008-0243
Application 10/384,379
Technology Center 2600
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Decided: September 15, 2008
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Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and SCOTT R. BOALICK, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 1-10 and 19-22. Claims 11-18 are withdrawn from
consideration and claims 23-31 are canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF THE CASE
Appellant’s invention relates to delivery of ultra wide band
communication services via wireless delivery using a system that includes
an optical signal to electrical signal converter responsive to a wavelength
division multiplexer (Spec. 2). According to Appellant, the ultra wide band
communication device is, in turn, responsive to the signal converter (id.).
Claim 1 is illustrative of the claimed invention, and it reads as follows:
1. A system comprising:

a wavelength division multiplexer;

an optical signal to electrical signal converter configured to
terminate an optical signal, the optical signal to electrical signal
converter responsive to the wavelength division multiplexer; and

an ultra wide band communication device responsive to the
optical signal to electrical signal converter.

The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
McCorkle US 6,505,032 B1 Jan. 7, 2003
Aburakawa US 2003/0007214 A1 Jan. 9, 2003
Park US 2003/0180049 A1 Sep. 25, 2003
(filed Mar. 6, 2003)
Rumpf US 2004/0047313 A1 Mar. 11, 2004
(filed Sep. 10, 2002)
Santhoff US 6,782,048 B2 Aug. 24, 2004
(filed Jun. 21, 2002)

Gaute Lambertsen & Takahiko Yamada (Lambertsen), “PON Mobile Access
Network without Mobile IP FA Switchover,” IEEE publication, 2002, pp.
2137-2141.

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Claims 1, 3-7, 19, 21, and 22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Aburakawa in view of McCorkle.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Aburakawa in view of McCorkle and Santhoff.
Claims 8-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Park in view of Santhoff.
Claims 19-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rumpf in view of Lambertsen.1
We make reference to the Briefs (Appeal Brief filed October 20, 2006
and Reply Brief filed March 26, 2007) and Answer (mailed January 25,
2007) for their respective details. Only those arguments actually made by
Appellant have been considered in this decision. Arguments which
Appellant did not make in the Briefs have not been considered and are
deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii).
ISSUES
1. Under 35 U.S.C § 103(a), with respect to the appealed claims 1, 3-7,
19, 21, and 22, would the ordinarily skilled artisan have found it
obvious to modify Aburakawa with McCorkle to render the claimed
invention unpatentable?
2. Under 35 U.S.C § 103(a), with respect to the appealed claim 2 would
the ordinarily skilled artisan have found it obvious to modify
Aburakawa and McCorkle with Santhoff to render the claimed
invention unpatentable?

1 The rejection of claim 20 under the first paragraph of 35 U.S.C. § 112 has
been withdrawn (Ans. 4).
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3. Under 35 U.S.C § 103(a), with respect to the appealed claims 8-10,
would the ordinarily skilled artisan have found it obvious to modify
Park with Santhoff to render the claimed invention unpatentable?
4. Under 35 U.S.C § 103(a), with respect to the appealed claims 19-21,
would the ordinarily skilled artisan have found it obvious to modify
Rumpf with Lambertsen to render the claimed invention
unpatentable?

PRINCIPLES OF LAW
To reach a conclusion of obviousness under § 103, the Examiner bears
the burden of producing a factual basis supported by a teaching in a prior art
reference or shown to be common knowledge of unquestionable
demonstration. Our reviewing court requires this evidence in order to
establish a prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72 (Fed.
Cir. 1984).
Furthermore, the test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary skill in the art.
See In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006), In re Young, 927
F.2d 588, 591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA
1981).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR, 127 S. Ct. at 1739). “One of the ways in which a
patent's subject matter can be proved obvious is by noting that there existed
at the time of invention a known problem for which there was an obvious
solution encompassed by the patent's claims.” KSR, 127 S. Ct. at 1742.
The KSR Court further recognized that “[w]hen there is a design need
or market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp.” KSR, 127
S. Ct. at 1742. In such circumstances, “the fact that a combination was
obvious to try might show that it was obvious under § 103.” Id.

ANALYSIS
1. Rejection of Claims 1, 3-7, 19, 21, and 22 over Aburakawa
and McCorkle

The Examiner asserts (Ans. 3-4) that Aburakawa discloses all of the
elements of claim 1, except for an ultra wideband (UWB) communication
device for which the Examiner relies on McCorkle (Ans. 5). The Examiner
further concludes that using the UWB system in Aburakawa provides the
benefit of low power, high data rate communications without interfering
with other wireless systems (id.).
Appellant does not argue any of the teachings of McCorkle relied on
by the Examiner and mainly asserts that Aburakawa fails to teach or suggest
that an optical signal to electrical signal converter is configured to terminate
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an optical signal since Aburakawa is related to a control station connected to
base stations in a loop structure which has no termination (App. Br. 6).
Appellant further asserts that the reference merely discloses coupling or
splitting an optical signal, which is different than terminating the optical
signal (App. Br. 7).
The Examiner argues that the presence of a loop structure does not
preclude termination of the optical signal and relies on additional prior art
references that teach optical signal termination in a loop architecture (Ans.
9). The Examiner further asserts that while a coupler or splitter may not
necessarily terminate a signal, the optical receiver 53 connected to the
coupler 55 in Aburakawa includes an optical signal to electrical signal
converter that terminates an optical signal (id.). By relying on the dictionary
definition of “terminate” as “to bring to an end” and “to connect a wire
connector to something,” the Examiner concludes that the conversion of
optical signal to electrical signal is terminating the signal since the converter
brings the optical signal to an end and converts it to an electrical signal (Ans.
10).
Based on our review of the reference and Appellant’s disclosure, we
agree with the Examiner that the conversion of optical signal to electrical
signal in Aburakawa terminates the optical signal. Aburakawa teaches that
the transmission signals intended for mobile station MS1 are converted to
electrical signals by an optical receiver (Figs. 3 and 14; ¶¶ [0053] and
[0158]). We also note that Appellant has not pointed to any portion of the
Specification where the claimed limitation of “to terminate” is defined,
leaving us with the broadest reasonable interpretation as stated by the
Examiner. As such, to the extent disclosed, the claimed “to terminate” reads
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on converting the optical signal to an electrical signal in Aburakawa, which
results in termination of the optical signal.
Appellant’s next argument is directed to lack of motivation or
suggestion to combine the references (App. Br. 7-8; Reply Br. 7). Appellant
specifically argues that the proposed combination cannot work since the
short distance system of McCorkle would not provide enough range to work
properly for the mobile phones in Aburakawa (id.). We again disagree with
Appellant and observe that, consistent with the principles outlined in the
KSR holding, one of ordinary skill in the art would have used a known
solution for the recognized problem of interference with other wireless
systems which needs the low power, high data rate transmission provided by
ultra wide band communication devices disclosed by McCorkle. See
McCorkle, column 3, lines 25-33 and column 4, lines 16-18.
With respect to claim 19, Appellant argues that there is no teaching or
suggestion of a passive optical network (PON) in either reference (App. Br.
9; Reply Br. 7-8). Appellant refers to paragraphs [0115] and [0116] of
Aburakawa and argues that transmitting and relaying wavelengths between
clusters are carried out using active devices, not passive device (id.). The
Examiner responds by pointing out that the cited paragraphs correspond to
Figure 12 which relates to transmission between clusters, whereas the
rejection is based on Figure 3 which shows no active device in the loop of
the cluster (Ans. 11). We remain unconvinced by Appellant’s assertion of
error in the Examiner’s position and find that Aburakawa, in the cited
portions, does provide a passive optical network in the loop, as required by
claim 19.
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In view of our analysis above, we find that the teachings of
Aburakawa and McCorkle, when considered as a whole, support the
Examiner’s 35 U.S.C. § 103 ground of rejection. In that regard, we find that
using the ultra wide band communication device of McCorkle with the
optical signal to electrical signal converter of Aburakawa is no more than the
predictable use of a known element according to its established function of
providing low power, high data transmission rate without interfering with
the wireless system. Thus, we sustain the 35 U.S.C. § 103(a) rejection of
claims 1 and 19, as well as claims 3-7, 21, and 22 argued together with their
base claims, over the teachings of Aburakawa and McCorkle.

2. Rejection of Claim 2 over Aburakawa, McCorkle, and
Santhoff

Appellant argues that Santhoff transmits UWB signals over a wired
network employing a “carrier free” architecture, which does not require
using high frequency carrier regeneration hardware or carrier modulation
hardware (App. Br. 9; Reply Br. 8-9). The Examiner responds that while
Santhoff includes a carrier free architecture, an ultra wide band modulator
modulates the received signal (Ans. 12).
We agree with the Examiner and find that Santhoff does provide for a
signal processor in the ultra wideband device 40 which modulates the signal
received from the satellite receiver into a multiplicity of UWB pulses (col. 8,
ll. 40-44). We also agree with the Examiner that since the claim does not
recite a “carrier modulator,” the fact that Santhoff does not require such
modulator due to its “carrier free” architecture (col. 5, ll. 22-27) is
inconsequential. With respect to using a wired network, Santhoff actually
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requires that the communication path be only partially wired and allows for
wireless connection (col. 4, l. 61- col. 5, l. 2). Therefore, we do not find
error in the Examiner’s position with respect to the teachings of Santhoff
and sustain the 35 U.S.C. § 103(a) rejection of claim 2 over Aburakawa in
view of McCorkle and Santhoff.
3. Rejection of Claims 8-10 over Park and Santhoff

Appellant does not dispute Park’s disclosure of a passive optical
network and merely argues that the combination of the references is
improper since Santhoff does not teach or disclose an UWB communication
device responsive to a PON, nor is there a motivation to combine the UWB
system of Santhoff with Park (App. Br. 10; Reply Br. 9-10). Appellant
specifically asserts that the power splitter 560 of Santhoff teaches away from
the passive or un-powered optical network (PON) of Park (Reply Br. 10).
The Examiner responds by repeating the arguments made with respect to
claim 2, addressed supra, regarding the use of UWB communication
systems in combination with passive optical networks to achieve high data
rate without interference with wireless systems (Ans. 12-13).
We agree with the Examiner and, for similar reasons discussed above
with respect to claim 2, find the combination of the UWB system of
Santhoff with Park’s PON to be reasonable. We also note that Appellant’s
reference to the power splitter 560 of Santhoff teaching away from the PON
of Park (Reply Br. 10) is misplaced since the power splitter is actually a part
of Park’s disclosure which includes the passive optical network (Park, ¶¶
[0026] and [0049]). Therefore, we do not find error in the Examiner’s
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position with respect to the teachings of Santhoff and sustain the 35 U.S.C.
§ 103(a) rejection of claims 8-10 over Park and Santhoff.
4. Rejection of Claims 19-21 over Rumpf and Lambertsen

Appellant argues that the cellular-type network of Lambertsen could
not communicate with fast moving devices if the UWB transmitter of Rumpf
was to be used (App. Br. 10-11; Reply Br. 10-12). Appellant specifically
asserts that Rumpf uses a fiber bundle in a small physical area like a
building or ship to form a local area network which may not work if used in
the wireless system of Lambertsen involving communicating with fast
moving devices (Reply Br. 11). The Examiner responds by pointing out that
the combination does not require bodily incorporation of one structure in the
other and is based on the collective teachings of the two prior art references
(Ans. 14).
We agree with the Examiner and find that one of ordinary skill in the
art would have used UWB communication disclosed by Rumpf in the
passive optical network of Lambertsen since the UWB improves the wireless
transmission part of PON. Although Rumpf uses the optical network in a
building (¶ [0027]) while a larger network with longer distance coverage are
also suggested (¶ [0028]). Therefore, contrary to Appellant’s argument
(Reply Br. 11) and according to Leapfrog, using the UWB system of Rumpf
in combination with the network of Lambertsen, where mobile users are
coupled wirelessly with the optical network (Lambertsen, section II.A),
would constitute a combination of familiar elements according to methods
known to the skilled artisan with a predictable result, which is likely to be
obvious. Therefore, we do not find error in the Examiner’s position with
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respect to the combination of the applied references and sustain the
35 U.S.C. § 103(a) rejection of claims 19-21 over Rumpf and Lambertsen.

CONCLUSION
Because Appellant has failed to point to any error in the Examiner’s
position, we sustain the 35 U.S.C. § 103 rejections of claims 1-10 and 19-22.

ORDER
The decision of the Examiner is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

KIS

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