Ex Parte FRANKEL et al

Patent Trial and Appeal Board

Sep 25, 2018

14924802 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/924,802 10/28/2015 Michael Y. FRANKEL
22474 7590 09/27/2018
Clements Bernard Walker PLLC
4500 Cameron Valley Parkway
Suite 350
Charlotte, NC 28211
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10.2320 3550
EXAMINER
LI, SHI K
ART UNIT PAPER NUMBER
2637
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
patlaw@worldpatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL Y. FRANKEL, JOHN P. MATEOSKY, and
VLADIMIR PELEKHATY
Appeal2018-001986
Application 14/924,802 1
Technology Center 2600
Before JUSTIN BUSCH, JOHN P. PINKERTON, and
JASON J. CHUNG, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-3 and 5-20. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
INVENTION
The invention is directed to a high port count switching module,
targeting switch elements capable of tens of terabits per second capacity in
1 According to Appellants, Ciena Corp. is the real party in interest. App. Br.
2.
2 Claim 4 has been canceled. App. Br. 15.
Appeal2018-001986
Application 14/924,802
an extremely dense package with low power dissipation. Spec. ,r 1. Claim 1
is illustrative of the invention and is reproduced below:
1. A high port count switching module, comprising:
a plurality of switching circuits comprising a first set of
switches and a second set of switches each disposed on a glass
interposer, wherein the plurality of switching circuits each
comprises crosspoint switches configured to perform switching
at a full signal rate, and wherein the first set of switches are
communicatively coupled to the second set of switches through
first electrical interconnects on the glass interposer; and
a plurality of optical transceivers disposed on the glass
interposer and communicatively coupled to the first set of
switches through second electrical interconnects on the glass
interposer, and wherein the plurality of optical transceivers are
connected to one or more optical waveguides each comprising a
fiber integrated in the glass interposer and connectable to one or
more external fibers.
REJECTIONS AT ISSUE
Claims 1-3, 6-9, and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Eberle (US 2007 /0291535 Al;
published Dec. 20, 2007), Decker (US 2016/0085038 Al; filed Sept. 22,
2014), and Bowen (US 2012/0189245 Al; published July 26, 2012). Final
Act. 2--4.
Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Eberle, Decker, Bowen, and Wang (US
2013/0082364 Al; published Apr. 4, 2013). Final Act. 4--5.
Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Eberle, Decker, Bowen, and Ella (US 2016/0056945
Al;§ 371 (c)(l),(2) Date Sept. 22, 2015). Final Act. 5.
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Appeal2018-001986
Application 14/924,802
Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Eberle, Decker, Bowen, and Marimuthu (US
2014/0077364 Al; published Mar. 20, 2014). Final Act. 6.
Claims 12-14 and 16-18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Eberle, Decker, Bowen, and Li
(US 2014/0270762 Al; published Sept. 18, 2014). Final Act. 6-7.
Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Eberle, Decker, Bowen, Li, and Wang. Final Act.
7-8.
Claim 19 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Eberle, Decker, Bowen, Li, and Ella. Final Act. 8-
9.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
ANALYSIS
Rejection of Claims 1-3, 5--8, 10--17, 19 and 20 under 35 U.S.C. § 103
The Examiner finds the combination of Eberle, Decker, and Bowen
inherently teaches "switching at a full signal rate" as recited in claims 1 and
20. Ans. 2. In addition, the Examiner finds paragraph 16 of Bowen teaches
"a fiber integrated in the glass interposer" as recited in claims 1, 12, and 20.
Ans. 3--4 ( citing Bowen ,r 16). The Examiner concludes a person having
ordinary skill in the art at the time of the invention would have combined
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Appeal2018-001986
Application 14/924,802
Bowen with Eberle and Decker to make the integrated waveguide/fiber more
compact and reliable. Final Act. 3--4.
Appellants argue the references fail to teach "switching at a full signal
rate" as recited in claims 1 and 20 because the references fail to teach the
signals input into the switch are the same signals output from a different port
at the same speed. App. Br. 8-11; Reply Br. 1-2. Appellants also argue
Bowen fails to teach "a fiber integrated in the glass interposer" as recited in
claims 1, 12, and 20 because Bowen teaches laying fibers 403 on top of
interposer 400 rather than integrated in glass interposer 400. App. Br. 11-
12; Reply Br. 3. And Appellants argue the Examiner fails to present a prima
facie case of obviousness because: (1) there is no suggestion of "high port
count switching" recited in claims 1, 12, and 20; and (2) the Examiner relies
on impermissible hindsight to reject most of the claim limitations because
the cited references fail to teach full signal rate switching. App. Br. 12-13;
Reply Br. 3. We disagree with Appellants.
At the outset, we note Appellants defining "switching at a full signal
rate" requires that "the signals input into the switch are the same signals
output from a different port at the same speed" (App. Br. 8-9) is not
commensurate with the scope of claims 1 and 20. "[Appellants'] arguments
fail from the outset because ... they are not based on limitations appearing
in the claims." See In re Self, 671 F.2d at 1348 (CCPA 1982). Nor do we
find support for such a limiting definition in Appellants' Specification
because paragraph 21 of Appellants' Specification, which Appellants assert
supports the limitation, simply identifies exemplary signaling rates ( e.g., 28
Gbps or 56 Gbps) and uses the term etcetera to suggest the open ended
nature of the full signal rate. Compare App. Br. 4 (citing Spec. ,r 21) with
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Appeal2018-001986
Application 14/924,802
Spec. ,r 21 ("a full signal rate, i.e. 28 Gbps or 56 Gbps, etc.") ( emphasis
added).
We agree with the Examiner that the combination of Eberle, Decker,
and Bowen teaches "switching at a full signal rate" as recited in claims 1 and
20 because the circuitry in the combination of Eberle, Decker, and Bowen
inherently has a maximum signal rate for switching and the hardware that
performs the switching at that rate. 3 Ans. 2.
In addition, we agree with the Examiner's finding that paragraph 16 of
Bowen discloses "the interposer integrated with an optical component and
an optical conduit such as a fiber/planar waveguide" ( emphases added),
which teaches the limitation "a fiber integrated in the glass interposer" as
recited in claims 1, 12, and 20. Ans. 3--4 (citing Bowen ,r 16).
Regarding Appellants' argument that there is no suggestion of the
"high port count switching module" recited in claims 1, 12, and 20 (App. Br.
12), this argument is misplaced because it gives patentable weight to "high
port count switching," but that language is non-limiting preamble language
that does not breathe life into claims 1, 12, and 20. 4
Moreover, we disagree with Appellants' impermissible hindsight
arguments (App. Br. 12-13; Reply Br. 2-3) because: (1) the Examiner
3 We note that independent claim 12 does not recite "switching at a full
signal rate." We find Appellants' arguments pertaining to "switching at a
full signal rate," therefore, do not apply to claim 12.
4 Claim construction is an issue of law that is left for a court or a tribunal
rather than the Examiner. "[W]hen the district court reviews only evidence
intrinsic to the patent ( the patent claims and specifications, along with the
patent's prosecution history), the judge's determination will amount solely
to a determination of law." Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.
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Application 14/924,802
provides sufficient rationale to combine Bowen, Eberle, and Decker ( and Li
in claim 12), which Appellants do not rebut sufficiently; and (2) the
Examiner explains adequately how the combination of Eberle, Decker, and
Bowen (and Li in claim 12) inherently teaches full signal rate switching as
discussed supra. In particular, we agree with the Examiner's inherency
statement pertaining to switching at a full signal rate, and we agree with the
Examiner's conclusion that a person having ordinary skill in the art at the
time of the invention would have combined Bowen with Eberle and Decker
to make the integrated waveguide/fiber more compact and reliable. Final
Act. 3--4. We conclude the Examiner has set forth sufficient "articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)
(quoting Kahn, 441 F.3d at 988).
Appellants do not argue separately dependent claims 2, 3, 5-8, 10, 11,
13-17, and 19 with particularity, but assert the rejections of those claims
should be withdrawn for at least the same reasons as argued regarding
independent claims 1, 12, and 20. App. Br. 14. Accordingly, we sustain the
Examiner's rejections of: (1) independent claims 1, 12, and 20; and (2)
dependent claims 2, 3, 5-8, 10, 11, 13-17, and 19.
Rejection of Claims 9 and 18 under 35 U.S.C. § 103
The Examiner finds paragraph 48 of Decker teaches a rate of 25.78
Gbps, which the Examiner maps to the limitation "at least 25 Gbps" as
recited in claims 9 and 18. Final Act. 4, 6 ( citing Decker ,r 48).
Ct. 831, 841 (2015). "[T]he ultimate issue of the proper construction of a
claim should be treated as a question of law." Id. at 838.
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Application 14/924,802
Appellants argue Decker fails to teach 25 Gbps because it fails to
teach handling a full signal rate through the switching circuits. App. Br. 11.
We disagree with Appellants.
As stated supra, we disagree with Appellants' argument that
"switching at a full signal rate" requires "the signals input into the switch are
the same signals output from a different port at the same speed" (App. Br. 8-
9). Accordingly, the cited portion of Decker teaches a rate of 25.78 Gbps,
which teaches the limitation "at least 25 Gbps" recited in claims 9 and 18.
Final Act. 4, 6 ( citing Decker ,r 48).
Accordingly, we sustain the Examiner's rejection of claims 9 and 18.
DECISION
We affirm the Examiner's decision rejecting claims 1-3 and 5-20
under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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