Ex Parte Finkelstein

Patent Trial and Appeal Board

Dec 1, 2016

13241055 (P.T.A.B. Dec. 1, 2016)

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.
13/241,055 09/22/2011 Jeff Finkelstein 33020-RA21/10209-US1 1000
124538 7590 12/05/2016
Cox Communications, Inc.
c/o Next IP Law Group LLP
Two Ravinia
Suite 500
Atlanta, GA 30346
EXAMINER
ANDREWS, HO YET H
ART UNIT PAPER NUMBER
2411
NOTIFICATION DATE DELIVERY MODE
12/05/2016 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):
bgunter @ nextiplaw. com
bbalser @ nextiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFF FINKELSTEIN1
Appeal 2016-002274
Application 13/241,055
Technology Center 2400
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—20. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Cox Communications, Inc. as the real party in interest.
App. Br. 1.
Appeal 2016-002274
Application 13/241,055
STATEMENT OF THE CASE
Introduction
Appellant’s invention is directed to moving a gateway/media
converter from inside a customer premises to outside the customer premises.
Abstract.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics'.
1. A system comprising:
a central office media converter located outside of customer
premises, the media converter configured to receive packets from an
access network in a first format, to convert the packets from the first
format to second format packets; and to transmit second format
packets from a gateway in the central office to a plurality of customer
premises equipment units (CPEUs) located in a plurality of customer
premises.
The Examiner’s References and Rejections
Claims 1—20 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Act. 6—8.
Claims 1—20 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter that the Applicant regards as the invention. Final Act. 8—
10.
Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Effenberger et al. (Frank Effenberger et al., Passive
Optical Networks (PONs): Past, Present, and Future, Optical Switching and
Networking 6, February 2009) (“Effenberger”) and Biegert et al.
(US 2009/0180060531 Al; Mar. 5, 2009) (“Biegert”). Final Act. 12-20.
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Application 13/241,055
ANALYSIS2
Only those arguments actually made by Appellant have been
considered in this Decision. Arguments Appellant did not make in the
Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments the Examiner has erred. App. Br. 3—11; Reply Br. 2—6. We are
not persuaded by Appellant’s contentions regarding the pending claims and,
in connection therewith, adopt as our own the findings and reasons set forth
by the Examiner in the Office Action from which this appeal is taken (Final
Act. 2—19), and as set forth by the Examiner in the Answer in response to
arguments made in Appellant’s Appeal Brief (Ans. 2—25). We highlight and
address specific findings and arguments below.
Rejections under 35 U.S.C. § 112
Claim 1 recites, inter alia, “a central office media converter” and “the
central office.” The Examiner finds these features are not supported by the
original disclosure and, therefore, claims 1—20 fail to comply with the
written description requirement. Final Act. 6—8. The Examiner further finds
“[i]t is unclear . . . what the relation is between . . . ‘a central office media
converter located outside of customer premises,’ [as recited in claims 1 and
19,] and ‘physical plant’ discussed in [the] instant specification.” Id. at 8
(emphasis in original). The Examiner concludes “central office,” as recited
2 In this Opinion, we refer to Appellant’s Appeal Brief (“App. Br.,” filed
July 16, 2015); Appellant’s Reply Brief (“Reply Br.,” filed December 16,
2015); the Final Office Action (“Final Act.,” mailed January 30, 2015); and
the Examiner’s Answer (“Ans.,” mailed on October 30, 2015).
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Application 13/241,055
in claim 1, “is not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor(s), at
the time the application was filed, had possession of the claimed invention.”
Ans. 16.
The Examiner further finds claim 10 does not particularly point out
and distinctly claim subject matter regarding “where and what constitutes”
“‘located outside customer premises’” and “‘packets through a gateway in
the central office,’” as recited in claim 10. Final Act. 9. The Examiner
further finds claim 19 does not particularly point out and distinctly claim
subject matter regarding “where and what constitutes” a “‘central office
router,”’ “‘central office media converter,”’ and “‘[a] service provider
physical plant,”’ as recited in claim 19. Id. (emphasis omitted). The
Examiner further finds claim 20 does not particularly point out and distinctly
claim subject matter “given that Claim 15 is a method claim and claim 20
states ‘The system of claim 15.’” Id. at 10 (emphases in original).
In response, Appellant argues “one of ordinary skill in the art would
recognize the central office as a telecommunications system element in light
of the specification in satisfaction of the written description requirement of
[§ 112], First [and Second] Paragraph^].” App. Br. 4; Reply Br. 2.
We are unpersuaded the Examiner erred by Appellant’s unsupported
allegation of Examiner error. Appellant has not provided sufficient evidence
and/or a persuasive line of technical reasoning explaining why one of
ordinary skill in the art would recognize the “central office,” as claimed, as a
telecommunications system element. It is well settled that mere attorney
arguments and conclusory statements, which are unsupported by factual
evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
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Application 13/241,055
1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (attorney argument is not evidence). Therefore, we are not persuaded
by Appellant’s arguments.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1 and, for similar reasons, independent claims 10 and 19 under 35
U.S.C. § 112, first and second paragraphs, together with the corresponding
rejections of claims 2—9, 11—18, and 20, which inherit the deficiencies
discussed supra by their dependencies from rejected independent claims 1
and 10.
Rejection under 35 U.S.C. § 103(a)
Appellant contends the Examiner erred in finding the combination of
Effenberger and Biegert teaches or suggests a media converter configured
“to transmit second format packets from a gateway in the central office to a
plurality of customer premises equipment units (CPEUs) located in a
plurality of customer premises,” as recited in claim 1. App. Br. 4—6. In
particular, Appellant asserts Effenberger teaches a media converter that
sends signals to multiple premises and Biegert teaches a gateway that sends
signals to a single premise. Id. at 5. Appellant argues “[tjhere is no
rationale or motivation to move the single-premises gateway of Biegert into
the [central office (CO)] of Effenberger to provide gateway services to
multiple premises other than that provided in the instant application.” Id.
(emphasis omitted). Thus, Appellant concludes “[t]he only way to combine
these teachings to arrive at the conclusion of the Office Action is through
hindsight analysis, by reading into the art applicant’s own teachings.” Id.
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We are not persuaded the Examiner erred. The Examiner reasons the
ordinary skilled artisan would have been motivated to combine Effenberger
and Biegert “for organizing an architecture wherein ‘motivated service
providers worldwide invest in FTTx (Fiber To The x)’ . . . and ‘service
providers have always been interested in optical access and in extending
fiber reach towards customer premises.’” Final Act. 18 (citation(s) omitted).
Thus, the Examiner has articulated a reason for the proposed combination
based on rational underpinnings. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). The Court in KSR further held, “the analysis need
not 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. Appellant
has not persuasively shown the Examiner’s reasoning to be in error.
Additionally, Appellant argues, for the first time in the Reply Brief,
Biegert teaches relocating optical network terminal (ONT) functionality into
a customer premises “whereas, an example embodiment of the instant claim”
moves gateway functionality from the customer premises to a physical plant.
Reply Br. 4. Appellant further argues “an embodiment according to the
instant claim” embodies multiple gateways of an individual customer
premises into a single gateway in the physical plant to reduce system and
maintenance costs. Id.
In the absence of a showing of good cause by Appellant, this
argument is untimely and deemed waived. “Any argument raised in the
reply brief which was not raised in the appeal brief, or is not responsive to
an argument raised in the examiner’s answer, including any designated new
ground of rejection, will not be considered by the Board for purposes of the
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Application 13/241,055
present appeal, unless good cause is shown.” 37 C.F.R. § 41.41(b)(2)
(2012); see also Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010)
(informative) (explaining that arguments and evidence not presented timely
in the principal brief, will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could not have
been presented in the principal brief); see also Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”).
Further, at the outset, we note Appellant’s statement that the
combination of Effenberger and Biegert does not disclose Appellant’s stated
benefit of embodying multiple gateways of an individual customer premises
into a single gateway is not commensurate with the scope of claim 1 and,
thus, does not persuade us of error in the Examiner’s rejection. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the
claims cannot be relied upon for patentability). Furthermore, we find
Appellant’s arguments are not responsive to the Examiner’s rejection.
Specifically, the Examiner relies on the combination of Effenberger and
Biegert to teach or suggest gateway functionality in a central office. See
Final Act. 13—18. Accordingly, in the absence of persuasive rebuttal as
discussed supra, we agree with the Examiner’s findings and adopt them as
our own.
We note in passing and without reliance in rendering our decision, we
discern no new or unexpected result from the location of Appellant’s
gateway/media converter. The particular placement of a part does not
impart patentability unless a new and unexpected result is produced. In re
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Application 13/241,055
Kuhle, 526 F.2d 553, 555 (CCPA 1975). Thus, relocating Appellant’s
gateway/media converter from inside a customer premises (as Appellant
admits as prior art (see Spec. ]Hf 30, 32; Figures 1 and 3)) to outside the
customer premises, allowing for inferences and creative steps that an
ordinarily skilled artisan would have employed, would predictably yield no
more than one would expect. See KSR, 550 U.S. at 416—18.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1 and, for similar reasons, the rejection of independent claims 10 and
19, which recite similar limitations and were not argued separately.
Additionally, we sustain the Examiner’s rejections of dependent claims 2—9,
11—18, and 20, which were not argued separately. See App. Br. 6, 8.
DECISION
We affirm the Examiner’s decision to reject claims 1—20.
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.
§ 41.50(f).
AFFIRMED
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