Ex Parte Fee et al

Board of Patent Appeals and Interferences

Jan 26, 2009

11265575 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte JOHN A. FEE and FRANK A. McKIEL JR.
_____________

Appeal 2008-2492
Application 11/265,575
Technology Center 2600
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Decided: January 26, 2009
_______________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and KARL D.
EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants request a rehearing pursuant to 37 C.F.R. § 41.52 of our
Decision on Appeal (“Decision”), sent electronically, November 19, 2008
affirming the Examiner’s rejection of claims 105-155.
We deny the request, insofar as it seeks a modification of our
decision, for the reasons that follow.
Appellants’ arguments focus on claims 124 and 111, respectively, as
representative of claims 124-127, 129, 131, 132, and 139 rejected as
anticipated based on Konishi; and claims 111-117, 135-138, and 143-149,
rejected as obvious based on Gerstel and Fee. Appellants do not present
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Application 11/265,575

separate patentability arguments for the obviousness rejection of claim 128
based upon Konishi; claims 118-121, 130, and 150-153, based upon Konishi
and Fatehi; claims 105-110, 133, 134, and 140-142, based upon Konishi and
Shiragaki; nor claims 122, 123, 154, and 155, based upon Konishi, Fatehi,
and Shiragaki. (See Reh’g 1, 5). Accordingly, claims 111 and 124 represent
the claims before us on rehearing.
Appellants mainly contend, with respect to the anticipatory rejection
of claim 124, that Konishi’s optical component cannot be an optical
component required by the claim, because Konishi’s oscillator 22 first
generates an electrical signal which then becomes an optical component.
(Reh’g 2, see Konishi Fig. 1). Appellants’ argument fails because the claim
does not preclude such a process.
The relevant portion of claim 124 recites: “routing an optical signal to
a first port of the optical switch, wherein the optical signal has an attribute of
known value conveyed by a component of the optical signal, wherein the
component is superimposed onto the optical signal by electrically
modulating an electrical signal.” The output of Konishi’s modulator 21
contains the optical signal and its disputed component, superimposed, as
claimed, prior to the optical switch. Appellants do not argue otherwise.
Therefore, Konishi meets claim 124.
Appellants’ argument that Konishi’s modulator 21 must output an
optical component, otherwise the component cannot be superimposed onto
the signal, (Reh’g 2), is not commensurate with the claim scope. The claim
does not preclude creating the component (i.e., superimposing it) with an
electrically modulated electrical signal, after the oscillator, albeit prior to the
switch.
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In other words, the claim requires routing a signal with its
superimposed attribute carrying component to the switch.1 As such,
Konishi’s system meets the claim. Konishi’s optical external modulator first
electrically modulates an electrical signal via the oscillator 22 and control
circuit 23, and then modulates an input optical signal to the modulator 21
with that modulated electrical output of the oscillator, thereby creating a
superimposed component on the optical carrier signal at the optical
transmission line 7 (Konishi, Fig. 1). That signal and its superimposed
component, which carries an “attribute of known value . . . of the optical
signal” (i.e., the optical signal frequency), is then input to the matrix switch
3 via transmission lines 51-53. (See Konishi, Figure 2, col. 3, ll. 38-47;
Decision 7-9, FF 1, 2). Claim 124 requires no more. The claim does not
require an optical component to exist at the oscillator output, as Appellants
argue.
To support the argument that claim 124 requires Konishi’s oscillator
to output an optical component, Appellants rely on their disclosure (Reh’g 2-
3, citing Spec. Fig. 9, ¶¶ 0037- 44). Such reliance is not persuasive for
several reasons. First, absent any clear intent, claims are not limited by a
particular embodiment in the Specification. In re American Academy of
Science Tech. Center, 367 F.3d 1359, 1369-70 (Fed. Cir. 2004).

1 Note that Appellants do not argue that the term “wherein,” on line 4 of
claim 124, refers to a process occurring inside the switch. The term
“wherein” reasonably relates to the general formation of the optical signal
and component anywhere prior to, or within, the switch.
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Second, Appellants did not rely on this more limiting disclosure in
their Brief, but rather, relied upon the very portions we relied upon in our
Decision (App. Br. 4, citing Spec. Fig. 11, ¶¶ 0071, 0076, 0077, see Reh’g
2-3, noting our reliance). Appellants’ initial reliance on the portions we
accordingly relied upon to support claim 124, not only constitutes a waiver
of reliance on other portions, but also eviscerates any clear intent to rely on a
specific embodiment under the American Academy standard.
Third, Appellants’ reliance upon the more limiting disclosure of
Figure 11 does not clearly convey any distinction over Konishi, primarily
because Figure 11 does not support claim 124 as argued. Appellants state, in
reliance on Figure 11, that the tapped-off portion of the optical signal 830
constitutes a component of the signal, which is then electrically processed to
update the optical signal at 826. Appellants conclude that the tapped-off
component is then superimposed onto the optical signal “by electrically
modulating an electrical signal.” (Reh’g 3).
However, Appellants’ analysis is not correct, again, for several
reasons. First, another (untapped) component is superimposed via the new
subcarrier transmitter 920 (thus creating the updated optical signal). (See
Fig. 11). Second, Appellants do not explain specifically where in Figure 11
an electrical modulation of an electrical signal occurs, and thereafter, how a
component is superimposed by such modulation.2 Hence, Appellants have
not met their burden of explaining how our finding, and the Examiner’s, that
Konishi’s electrical modulation and subsequent component superposition
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meets claim 124, is inconsistent with Appellants’ more limited process at
Figure 11. Moreover, Appellants do not dispute that our Decision with
respect to Konishi is consistent with the very portions of Appellants’
disclosure that Appellants relied upon in their Brief.
Finally, Appellants query us as to whether we relied on Appellants’
admitted prior art (Appellants’ patents, according to Appellants) to support
the anticipatory rejection of claim 124 based on Konishi. (Reh’g 3-4). Our
reliance in this regard was cumulative. As we indicated in our decision, we
found no error in the Examiner’s anticipation rejection based solely on
Konishi. Our intent was to note that Appellants’ support for the recited
limitation involving the superimposition of a component on a carrier, as
generally recited in claim 124, and their arguments distinguishing Konishi,
indicated that Appellants’ arguments amounted to alleging that Konishi does
not disclose what is an admitted, prior art modulation technique. See
Decision 9.
That is, Appellants admit that their own patents disclose a “means for
injecting in the optical domain a subcarrier signal superimposed upon an
existing optical carrier, and a technique for superimposing a subcarrier
signal upon a modulated optical carrier.” (Reh’g 4). Appellants do not
describe with sufficient particularity how this admitted prior art teaching
differs from what Konishi teaches. As such, Appellants’ admissions support
our finding, and the Examiner’s, that Konishi also discloses the same or a

2 See Decision, at n.2 (describing a lack of a clear and specific disclosure
relating the electrical modulation to the superposition).
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similar well known modulation technique encompassed by claim 124
(whatever it is) that Appellants rely upon for a patentable distinction over
Konishi. Appellants carry the burden to demonstrate how their claim differs
over Konishi. “The problem in this case is that the appellants failed to make
their intended meaning explicitly clear.” In re Morris, 127 F.3d 1048, 1056
(Fed. Cir. 1997). “It is the applicant’s burden to precisely define the
invention, not the PTO’s.” Id.
However, Appellants state that our reliance upon their own patents for
such teachings, to sustain an anticipatory rejection, requires the entry of a
new ground of rejection. Under these circumstances, we decline that
invitation. Appellants can claim no surprise as to our reliance, albeit
cumulative, on their own patents. We noted that our reviewing court has
precluded arguments for patentability based on admitted prior art elements,
for all purposes (i.e., anticipatory or obviousness rejections) – even if the
Examiner has not used the admission. (See Decision 9 – citing In re
Reuning, 2008 WL 1836711 at *3 (Fed. Cir. 2008); Constant v. Adv. Micro-
Devices, 848 F.2d 1560, 1570 (Fed. Cir. 1988); In re Nomiya, 509 F.2d 566,
577, n.5 (CCPA 1975)).
With respect to the obviousness rejection of claim 111 based upon
Gerstel and Fee, Appellants assert a “flawed” rationale by the Board to
support the proposed combination. (Reh’g 5). Appellants first particularly
contend that skilled artisans would not have looked to Fee to add another
signal to Gerstel’s system since Gerstel already employs multiple signals.
(Reh’g 6). This argument lacks merit since it ignores the various beneficial
reasons advanced for the addition of Fee’s specific, and different, signals.
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As we generally reasoned, Fee teaches that many different signals provide
different information for full network management, each of which would
have benefited from Gerstel’s similar fault detection optical switch system,
including inter alia, benefits such as “timing, wavelength re-use, noise and
error rate analysis, customer identification, usage statistics, and link status.”
(Decision 11, citing Ans. 18, 24, 25 and FF 4).3
Appellants also contend that claim 111 requires a specific relationship
between the first and second supplemental signals that was not addressed by
the Board or the Examiner. (Reh’g 6, 7). Appellants’ statement is not
persuasive. We stated: “We also find that Fee’s first and Gerstel’s second
supplemental signal are each associated with the optical carrier, including
inter alia, identification of the carrier, as generally found by the Examiner
(Ans. 17, 18, FF 3, 4), contrary to Appellants’ second contention supra.”
(Decision 11). In other words, since Fee’s first and Gerstel’s second signals
are associated with the carrier (i.e., modulate and carry information related
to the carrier, see Decision 11, FF 3, 4, and n. 3 supra), the combination of
Fee and Gerstel meets the recited association of claim 111 between the
second supplemental signal and the modulated optical signal (modulated
“according to the first supplemental signal”).
In particular, Fee’s first supplemental signal carries ancillary network
data and modulates the optical carrier (see n. 3, supra, and Decision, (FF 4) )

(Continued on next page)
3 FF 4 lists more benefits accruing from Fee’s supplemental sub-carriers –
modulated as components on Fee’s carrier – including, inter alia,
wavelength mapping and re-use, wavelength identification (similar to
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to create “the modulated optical signal . . . produced by electrically
modulating an electrical signal according to the first supplemental signal,” as
required by claim 111. Gerstel “add[s] a second supplemental signal
associated with the modulated optical signal,” as also required by the claim,
because Gerstel’s second supplemental signal, a supervisory signal, carriers
information about the optical carrier of the modulated signal – for fault
supervision (see Decision 11, FF 3).
Appellants do not dispute the association between the second
supplemental signal and the optical signal itself, but, as noted supra, argue
that the claim requires a further association between the first and second
supplemental signals. However, contrary to Appellants’ argument, claim
111 recites no relationship between the first and second supplemental
signals. The claim merely requires an association with the (modulated)
optical signal – not the modulation on the signal (i.e., the first supplemental
signal).
On the other hand, even if claim 111 implies such a relationship, the
proposed combination meets the claim. Each one of Fee’s and Gerstel’s
supplemental signals, associated with the optical signal carrier, is necessarily
associated with the other supplemental signal by virtue of the signal carrier
association. By analogy, two windows (supplemental signals) carried in the
same automobile (optical signal) are associated with the automobile and
each other; further, each window (supplemental signal) is associated with the

Gerstel), data rate identification, bit-error correction, and customer
identification.
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automobile and the other window (modulated optical signal) by virtue of the
individual window relationships with the automobile (optical signal).
Accordingly, Appellants have not demonstrated a basis upon which to
modify our decision.
DECISION
The Request for Rehearing to the extent it seeks a modification of our
decision is denied.
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).

REHEARING DENIED

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