Ex Parte Fouquet et al

Board of Patent Appeals and Interferences

Jun 28, 2007

10314687 (B.P.A.I. Jun. 28, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JULIE FOUQUET and DATONG CHEN
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Appeal 2007-1114
Application 10/314,687
Technology Center 2600
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Decided: June 28, 2007
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Before KENNETH W. HAIRSTON, JOSEPH L. DIXON, and
ST. JOHN COURTENAY III, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's Final Rejection of claims 21-31. Claims 1-20 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.
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Application 10/314,687

BACKGROUND
Appellants’ invention relates to systems and methods for selectively
diverting data from nodes in an optical network. An understanding of the
invention can be derived from a reading of exemplary claim 21, which is
reproduced below.
21. A communication system comprising:
a switching node for switching data packets; and
an optical bypass system configured to receive an optical signal
comprising a data packet and a header, the optical bypass system
operable to selectively divert the optical signal away from the
switching node, the optical bypass system comprising:
an optical switch configured to receive a first portion of the
optical signal, and selectively divert the optical signal away from the
switching node in response to an optical switch control signal
provided thereto;
an optical-to-electrical (O/E) converter configured to receive a
second portion of the optical signal and generate an electrical signal
comprising the header;
a bypass control system configured to generate a bypass control
signal; and
a switching control system communicatively coupled to the
bypass control system and the O/E converter, the switching control
system configured to receive at least one of the bypass control signal
and the electrical signal comprising the header, and to generate in
response thereto, the optical switch control signal for controlling the
optical switch.

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PRIOR ART
The prior art reference of record relied upon by the Examiner in
rejecting the appealed claims is:
Yoo 6,519,062 B1 Feb. 11, 2003
(Filed Sept. 1, 2000)
REJECTIONS
Claim 21 stands rejected under 35 U.S.C. § 102(e) as being
anticipated by Yoo.
Claims 22-31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yoo.
Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellants regarding the above-noted rejection, we make
reference to the Examiner's Answer (mailed Nov. 16, 2006) for the
reasoning in support of the rejections, and to Appellants’ Brief (filed Sep.
14, 2006) and Reply Brief (filed Jan. 16, 2006) for the arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellants’ Specification and claims, to the applied prior art
reference, and to the respective positions articulated by Appellants and the
Examiner. As a consequence of our review, we make the determinations
that follow.

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35 U.S.C. § 102
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987). The inquiry as to whether a reference
anticipates a claim must focus on what subject matter is encompassed by the
claim and what subject matter is described by the reference. As set forth by
the court in Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ
781, 789 (Fed. Cir. 1983), it is only necessary for the claims to “‘read on’
something disclosed in the reference, i.e., all limitations of the claim are
found in the reference, or ‘fully met’ by it.” While all elements of the
claimed invention must appear in a single reference, additional references
may be used to interpret the anticipating reference and to shed light on its
meaning, particularly to those skilled in the art at the relevant time. See
Studiengesellschaft Kohle v. Dart Indus., Inc., 726 F.2d 724, 726-727, 220
USPQ 841, 842-843 (Fed. Cir. 1984).
Here, we find that the Examiner has interpreted the claims in a
reasonable manner in light of the express limitations recited in the language
of independent claim 21. Appellants argue that the Appellants may be their
own lexicographer and that it is reasonable to look to Appellants’
Specification to interpret the claim language (Br. 13). The Examiner
counters that Appellants have not defined the term “control signal” in the
Specification. (Answer 9). The Examiner maintains that Yoo teaches
control signals which cause optical signals to be routed around faulty nodes
or links where the optical signal is bypassing the node or link. The
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Examiner maintains that signals which cause this to happen would constitute
bypass control signals (Answer 10). We agree with the Examiner’s
interpretation that the nodes or links are bypassed by the routing and find
that Yoo teaches at column 9, lines 30-35, that the traffic is monitored and
updates the routing table and to correct the routing table to route around
faulty nodes and links.
The Examiner further maintains that the routing information or table
322 of Yoo would have been control signals since it is used to route the
optical signals. Again, we agree with the Examiner’s interpretation (Answer
10).
The Examiner maintains that independent claim 21 does not require
the switching control system to receive the bypass control signal and only
requires “the switching control system configured to receive at least one of
the bypass control signal and the electrical signal comprising the header, and
to generate in response thereto, the optical switch control signal for
controlling the optical switch.” We agree with the Examiner that the
language of independent claim 21 does not state that both signals are
received and only one is used in the control. Therefore, we find the
Examiner’s claim interpretation to be reasonable in light of the express
limitations as recited in independent claim 21. Therefore, Appellants’
argument that the switch controller of Yoo always uses the header
information as contrasted with Appellants’ invention (Br. 11; Reply Br. 4-7),
is not commensurate in scope with the language of independent claim 21.
Therefore, Appellants' argument is not persuasive.
Appellants reproduce portions of the original Specification and argue
that the Examiner has dismissed Appellants’ argument regarding claim
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interpretation (Br. 12-13). Appellants’ contention is that the Examiner must
interpret the bypass control signal as Appellants intended to claim the
invention rather than how it is actually recited in the express language of
independent claim 21. We disagree with Appellants, and we will sustain the
rejection of independent claim 21.
35 U.S.C. § 103
At the outset, we note that to reach a proper conclusion under § 103,
the Examiner, as finder of fact, must step backward in time and into the
mind of a person of ordinary skill in the art at a time when the invention was
unknown, and just before it was made. In light of all the evidence, we
review the specific factual determinations of the Examiner to ascertain
whether the Examiner has convincingly established that the claimed
invention as a whole would have been obvious at the time of the invention to
a person of ordinary skill in the art. When claim elements are found in more
than one prior art reference, the fact finder must determine “whether a
person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem
facing the inventor, would have been led to make the combination recited in
the claims.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed.
Cir. 2006). With respect to the role of the Examiner as finder of fact, the
Court of Appeals for the Federal Circuit has stated: “the examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The Court of Appeals
for the Federal Circuit has also noted: “[w]hat the prior art teaches, whether
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it teaches away from the claimed invention, and whether it motivates a
combination of teachings from different references are questions of fact.” In
re Fulton, 391 F.3d 1195, 1199-1200, 73 USPQ2d 1141, 1144 (Fed. Cir.
2004) (internal citations omitted). In rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner
must make the factual determinations set forth in Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). Furthermore, “‘there must
be some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness’ . . . . [H]owever, 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.” KSR Int’l v.
Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (quoting
In re Kahn, 441 F.3d at 988, 78 USPQ2d at 1336 (Fed. Cir. 2006)).
With respect to dependent claims 22-25, Appellants argue that the
Examiner is in error in rejecting these claims under 35 U.S.C. § 103 since
the independent claim has been rejected only under 35 U.S.C. § 102 and not
under obviousness (Br. 13-15). Appellants' argument is not persuasive.
Additionally, Appellants contend that an affidavit is needed for the
Examiner to support the Examiner’s rejection (Br. 15). We disagree with
Appellants and find that the Examiner’s rejection is supported by the
Examiner’s claim interpretation. Here, we agree with the Examiner’s
common sense analysis of the prior art that if there is a faulty node or link
which is being routed around or bypassed then that would also be a time
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when the switching node would be going under a maintenance procedure.
While we agree with Appellants that this limitation is not expressly taught
by Yoo, we still find that it is suggested by Yoo under the Examiner’s
reasonable claim interpretation. Additionally, we find that the rejection
could have been formulated under anticipation. Therefore, Appellants'
argument is not persuasive. We find no need for an affidavit by the
Examiner to evidence what is taught or fairly suggested by Yoo.
Therefore, Appellants' argument is not persuasive, and we will sustain the
rejection of dependent claim 22.
With respect to dependent claim 23, Appellants rely upon the
arguments advanced with respect to dependent claim 22 since dependent
claim 23 depends from dependent claim 22 (Br. 15-16). We cannot agree
with Appellants and find that dependent claim 23 depends from independent
claim 21. We find that the Examiner has set forth the statement of the
rejection at pages 5-6 of the Answer, and Appellants have not shown any
error therein. Therefore, Appellants' argument is not persuasive, and we will
sustain the rejection of dependent claim 23.
With respect to dependent claims 24 and 25, Appellants maintain that
the Examiner is in error to rely upon inherency to enable and disable the
bypassing of a switching node (Br. 16). We disagree with Appellants and
conclude that the table 322 of Yoo would include bypass information in the
signal therefrom if the table was updated to route around or through certain
switching nodes as the Examiner has interpreted the claim language.
Therefore, Appellants' argument is not persuasive, and we will sustain the
rejection of dependent claims 24 and 25.
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With respect to independent claim 26, Appellants contend that Yoo
does not teach every element of the claimed invention and requests an
affidavit from the Examiner (Br. 17). Again, we find no need for an
affidavit for what is taught or fairly suggested by Yoo. Appellants argue
that the method need not be implemented by a computer and that Yoo does
not teach a computer for all the claimed elements (Br. 17). We find that the
Examiner has set forth a sufficient rational why it would have been obvious
to one skilled in the art at the time of the invention to have used stored
computer instructions for the recited functions. (Answer 6 and 18-21). We
find the Examiner’s rejection sufficient to establish a prima facie case of
obviousness. Appellants contend that the Examiner has not shown that Yoo
teaches “enabling an optical switch to switch a second portion of the optical
signal away from the switching node upon determining from the header that
the optical signal is not destined for the switching node.” The Examiner
relies upon figures 6 and 7 and column 10 of Yoo to teach that the larger
part of the optical signal is delayed and ready to be forwarded to the switch
fabric now set up according to the header information. We agree with the
Examiner that Yoo teaches this limitation. Therefore, we do not find that
Appellants have shown error in the Examiner’s initial showing of
obviousness, and we will sustain the rejection of independent claim 26.
With respect to dependent claims 27-28, Appellants appear to contend
that since the Examiner has relied upon a single reference under 35 U.S.C.
§ 103 the rejection is deficient since all of the express elements are not
shown in Yoo (Br. 18-19). We cannot agree with Appellants and do not find
this argument persuasive of an error in the prima facie case of obviousness
of dependent claims 27-28. With respect to generating the bypass control
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signal independent of the header information (Reply Br. 7-8), we find that
the updated table 322 of Yoo would perform this function independent of the
individual headers. Therefore, Appellants' argument is not persuasive, and
we will sustain the rejection of dependent claims 27-28 and dependent claim
30 which depends therefrom.
With respect to dependent claims 29 and 31, Appellants argue that the
Examiner has not shown a control signal received from the switching node
to determine if the switching node is ready to receive the optical signal. We
disagree and find that the information from the table is updated from the
switches. Therefore, Appellants' argument is not persuasive, and we will
sustain the rejection of dependent claims 29 and 31.

CONCLUSION
To summarize, we have sustained the rejection of claim 21 under
35 U.S.C. § 102, and we have sustained the rejection of claims 22-31 under
35 U.S.C. § 103(a).

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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