Ex Parte Goodwin et al

Board of Patent Appeals and Interferences

Jan 19, 2010

10941679 (B.P.A.I. Jan. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIM O. GOODWIN, LARRY H. STEINHORST,
and WILSON K. CHAN

_____________

Appeal 2009-006798
Application 10/941,679
Technology Center 2600
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Decided: January 19, 2010
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Before KENNETH W. HAIRSTON, THOMAS S. HAHN
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-006798
Application 10/941,679

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 2, 4-11, and 13-28. We have jurisdiction under 35 U.S.C.
§ 6(b).

INVENTION
Appellants’ claimed invention is directed to monitoring an optical
network wherein protection path errors can be determined prior to the failure
of the working path (Spec. 5).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method for monitoring an optical network, comprising:
communicating optical traffic along a working path of an optical
network;
the optical network comprising a protection path for the optical traffic to
communicate the optical traffic upon a failure in the working path;
the protection path comprising two or more network elements coupled
together by optical lines; and
while communicating optical traffic along the working path,
monitoring an idle signal of the protection path to detect an error in the
protection path comprising an error in a component of one or more of the
network elements.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Goto US 5,757,768 May 26, 1998

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The following rejections are before us for review:
1. The Examiner rejected claims 19-27 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description material.
2. The Examiner rejected claims 1, 2, 10, and 11 under 35 U.S.C.
§ 102(b) as being anticipated by Goto.
3. The Examiner rejected claims 4-9, 13-18, and 28 under 35 U.S.C.
§ 103(a) as being unpatentable over Goto.

ISSUES
The first issue is whether Appellants have shown that the Examiner
erred in finding that the limitation of “a computer readable medium” as
recited in claims 19-27 fails to comply with the written description material.
The second issue is whether Appellants have shown that the Examiner
erred in finding that Goto teaches the limitation of: “while communicating
optical traffic along the working path, monitoring an idle signal of the
protection path” as recited in claim 1 and similarly recited in claim 10.

FINDINGS OF FACT (FF)
1. Appellants’ Specification (pg. 14, ll. 1-4), states that an “[e]rror
detection unit 330 may comprise any suitable hardware, software or
encoded logic and may be located at any suitable location of the
optical network.”
2. Goto teaches that the idle frame is transmitted to the other nodes via a
loop comprising the working path (6A, 7A, and 8A) and the
protection path (6B, 7B, and 8B) (Fig. 5A).
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3. Goto teaches that when a cable is cut at point 14 “no ‘B&S’ frames
are generated in the network, nodes 1 and 2 proceed from step 201 to
step 202 to start sending idle frames and check for the reception of an
idle frame from nodes 2 and 1” (col. 6, ll. 52-55; Figs. 2 and 5A).
4. Goto teaches that after bridging links 8A and 8B at point 15 and links
6A and 6B at point 16 then the transmission of the B &S frames is
resumed (col. 6, l. 60-col. 7, l. 12).

PRINCIPLES OF LAW
Written Description Rejection
The purpose of the written description requirement is to prevent
an applicant from later asserting that he invented that which he did
not; the applicant for a patent is therefore required to “recount his
invention in such detail that his future claims can be determined to be
encompassed within his original creation.”

Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 1313, 1330 (Fed. Cir.
2003) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir.
1991)). While there is no requirement that the claimed invention be
described in the identical wording that was used in the specification, there
must be sufficient disclosure to show one of skill in this art that the inventor
“invented what is claimed.” See Union Oil Co. of California v. Atlantic
Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000).
The written description must be of sufficient detail to show possession
of the full scope of the invention. Pandrol USA LP v. Airboss Railway
Products Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005).

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Anticipation
“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. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

ANALYSIS
Written Description of Claims 19-27
We agree with the Examiner (Ans. 4) that the term “medium” as
recited in claim 19 does not appear in the original Specification and that the
term “media” which does appear only refers to an “optical link.” However,
we are persuaded by Appellants’ argument (App. Br. 10-11), that the
original Specification’s reference, to the section reciting an “[e]rror
detection unit 330 may comprise any suitable hardware, software or encoded
logic and may be located at any suitable location of the optical network”
(emphasis in original)(FF 1), does provide sufficient disclosure to one
skilled in the art to recognize that the “encoded logic” refers to logic that
would be encoded on “a computer-readable medium” as recited in claim 19.
See Union Oil Co. of California, 208 F.3d at 997.
Accordingly, Appellants have shown error in the Examiner’s rejection
of independent claim 19 and, for similar reasons, of dependent claims 20-27.

Anticipation Rejection of Claims 1, 2, 10 and 11
Appellants argue inter alia that Goto discloses an alarm signal that is
communicated upon a failure of the working path and does not disclose
“monitoring an idle signal of the protection path to detect an error in the
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protection path comprising an error in a component of one or more of the
network elements” while communicating optical traffic along the working
path (App. Br. 12). Appellants assert that the communication of the alarm
signal of Goto occurs after the failure of the working path, and its
communication is clearly not a disclosure of monitoring an idle signal of the
protection path while communicating traffic along the working path (App.
Br. 12).
We agree with the Examiner (Ans. 10-11) that in Figure 5A Goto
teaches that the idle frame is transmitted to the other nodes via a loop
comprising the working path (6A, 7A, and 8A) and the protection path (6B,
7B, and 8B) (FF 2), and thus reads on the limitation of: “monitoring an idle
signal of the protection path” as recited in claim 1 and similarly recited in
claim 10. This is because the monitoring of the idle signal occurs with
respect to the protection path in addition to the working path. However, we
are persuaded by Appellants’ argument (App. Br. 12) that the monitoring of
the idle signal of the protection path as taught by Goto does not occur “while
communicating optical traffic along the working path.”
Goto teaches that when a cable is cut at point 14 “no ‘B&S’ frames
are generated in the network, nodes 1 and 2 proceed from step 201 to step
202 to start sending idle frames and check for the reception of an idle frame
from nodes 2 and 1” (FF 3). After bridging links 8A and 8B at point 15 and
links 6A and 6B at point 16 then the transmission of the B &S frames is
resumed (FF 4). Thus, clearly in Goto there is no communication of optical
traffic (i.e., no transmission of the B&S frames) while monitoring the idle
signal of the protection path (6B, 7B, and 8B).
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Accordingly, we do not agree with the Examiner’s reasoning (Ans.10-
11) because Goto does not teach the limitation of “while communicating
optical traffic along the working path, monitoring an idle signal of the
protection path” (emphasis added).
For the foregoing reasons, Appellants have shown error in the
Examiner’s rejection of independent claims 1 and 10 and, for similar
reasons, dependent claims 2 and 11.

Obviousness Rejection of Claims 4-9, 13-18, and 28
For similar reasons as those stated supra, Appellants have also shown
error in the Examiner’s rejections of claims 4-9, 13-18, and 28.

CONCLUSIONS
Appellants have shown that the Examiner erred in finding that the
limitation of “a computer readable medium” fails to comply with the written
description material.
Appellants have shown that the Examiner erred in finding that Goto
teaches the limitation of: “while communicating optical traffic along the
working path, monitoring an idle signal of the protection path.”

ORDER
The decision of the Examiner to reject claims 1, 2, 4-11, and 13-28 is
reversed.

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Appeal 2009-006798
Application 10/941,679

REVERSED

ELD

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