Ex Parte Hann

Patent Trial and Appeal Board

Aug 29, 2016

13300728 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/300,728 11/21/2011
466 7590
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
08/31/2016
FIRST NAMED INVENTOR
Kenneth Hann
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.
3502-1227 5191
EXAMINER
LAMBERT, DAVID W
ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
DocketingDept@young-thompson.com
yandtpair@firs ttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH HANN 1
Appeal2015-000950
Application 13/300,728
Technology Center 2600
Before MICHAEL J. STRAUSS, MICHAEL M. BARRY, and
AARON W. MOORE, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON i\.PPEi\L
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellant identifies the real party in interest as Tellabs OY. App. Br. 2.
Appeal2015-000945
Application 13/153,304
Introduction
Appellant states the invention relates to transceiver units and
associated methods of operating for both a slave-end and a master-end of a
phase synchronized loop. Spec. 1 (Field of the Invention). Claim 1 is
illustrative (shown here with a dispositive requirement highlighted):
1. A transceiver unit for a slave-end of a phase
synchronized loop, the transceiver unit comprising:
an optoelectronic transmitter for producing, according to
a transmission line-code, a first light signal carrying a bit
stream to be transmitted and for directing the first light signal
into an optical data transfer link between the slave-end and a
master-end of the phase synchronized loop,
an optoelectronic receiver for receiving a second light
signal from the optical data transfer link and for detecting,
according to a reception line-code, a received bit stream from
the second light signal,
electrical connectors for receiving from an external
device at least part of the information contained by the bit
stream to be transmitted and for delivering to the external
device at least part of the information contained by the received
bit stream, and
a processor for including a first timing signal into the bit
stream to be transmitted, for detecting a second timing signal
from the received bit stream, and for calculating a phase
difference between a phase signal prevailing at the transceiver
unit and a reference phase signal prevailing at the master-end
on the basis of (i) a transmission moment of the first timing
signal at the transceiver unit, (ii) a first timestamp indicating a
reception moment of the first timing signal at the master-end,
(iii) a reception moment of the second timing signal at the
transceiver unit, and (iv) a second time-stamp indicating a
transmission moment of the second timing signal at the master-
end,
wherein the transmission line-code defines the manner
the bit stream to be transmitted is encoded to the properties of
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Application 13/153,304
the first light signal and the reception line-code defines the
manner the received bit stream is encoded to the properties of
the second light signal, and the processor is configured to read
information indicating the values of the first and second time
stamps from the received bit stream that is in a form
corresponding to the second light signal according to the
reception line-code.
App. Br. 35-36 (Claims App'x).
Rejections
Claims 1, 4, 6, 10, 12, 14, 16, and 21-24 stand rejected under 35
U.S.C. § 102(b) as anticipated by Laulainen (US 2008/0101514 Al; May 1,
2008). Final Act. 4--9.
Claims 2, 3, 5, 13, and 15 stand rejected under 35 U.S.C. § 103(a) as
obvious over Laulainen and Dybsetter (US 2004/0201582 Al; Oct. 14,
2004). Final Act. 9-14.
Claims 7-9 and 17-19 stand rejected under 35 U.S.C. § 103(a) as
obvious over Laulainen and Bloom (US 6,490,067 B2). Final Act. 14--19.
Claims 11-20 stand rejected under 35 U.S.C. § 103(a) as obvious over
Laulainen and Yang (US 2005/0117855 Al; June 2, 2005). Final Act. 19-
20.
ISSUE
Based on Appellant's arguments, the dispositive issue is whether the
Examiner errs in rejecting the independent claims as anticipated by
Laulainen.
ANALYSIS
To anticipate a claim, a prior art reference "must disclose every
limitation of the claimed invention," In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997); Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
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Application 13/153,304
628, 631 (Fed. Cir. 1987) ("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."), and "must describe the
applicant's claimed invention sufficiently to have placed a person of
ordinary skill in the field of the invention in possession of it," In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990).
The fact that a certain result or characteristic may occur or be present
in the prior art is not sufficient to establish the inherency of that result or
characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). To rely
upon the theory of inherency, the Examiner must provide a basis in fact
and/or technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art. In re King, 801 F.2d 1324 (Fed. Cir. 1986).
Claim 1 's disputed limitation requires reading time stamp information
from a "bit stream that is in a form corresponding to the second light signal
according to the reception line-code." Appellant contends that Laulainen
contains no explicit disclosure regarding line-codes (App. Br. 20), that while
use of line-codes is implicitly necessary in Laulainen's disclosed system,
"[t]he mere existence of line-codes in Laulainen discloses/suggests nothing
as to how such line-codes are used, or not used, in Laulainen," and that
"[a ]bsent some other disclosure, one of skill would understand that
Laulainen operates in a conventional manner" (id. at 22).
Appellant asserts that "a timing protocol, such as e.g. IEEE 1588, is
normally run by a processor which is a) not arranged to write and/or read
data to/from a bit stream that is in the form corresponding to a physical
signal according to a line-code and which is b) not located in a transceiver
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Application 13/153,304
unit." (Id.) Thus, Appellant argues, the Examiner errs in rejecting claim 1
because conventional approaches with Laulainen' s system would "not [be]
arranged to write and/or read data to/from a bit stream that is in the form
corresponding to a physical signal according to a line-code" as claimed, and
thus does not teach the disputed limitation. Id. at 22-23.
The Examiner answers that the claims, in view of the Specification,
"require only that a line code 'defines the manner' that a 'bit stream is
encoded to the properties of the ... light signal'" and that "[ o ]ne of ordinary
skill in the art could reasonably interpret this to be simply a code for
modulating a bit stream onto an optical signal." Ans. 19. The Examiner
concludes that, "as the system of Laulainen requires the use of line-codes in
order to transmit and receive data, Laulainen anticipates the claimed line-
codes regardless of what type of line-code is employed in the prior art
system." Id. at 2 0.
Appellant argues in reply that use of conventional transceiver
technology with Laulainen need not, and indeed would not implement the
disputed requirement. Reply Br. 3-7. Appellant explains how conventional
synchronization between transceivers requires meeting minimum pulse
density requirements, and that a fallout of this is that Laulainen's protocol
data units, which the Examiner identified for the bit streams (see Final Act 4,
Laulainen Fig. 4), necessarily are not in a form corresponding to a line-code
as claimed. Reply 4---6. Appellant contends the bit streams within the
transceiver in Laulainen "could be in forms corresponding to the line-code
(or linecodes) being used only if the transceivers were such (hypothetical)
transceivers which can maintain the bit- (or symbol-) synchronization with
their peering transceivers in the network irrespective of the pulse densities of
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Application 13/153,304
light signals" but that "Appellant is not aware of such (hypothetical)
transceivers and neither has the Examiner has brought forth any document
which would disclose such a (hypothetical) transceiver, or presented such an
argument." Id. at 6.
We agree. Appellant persuades us the Examiner errs in rejecting
claim 1under35 U.S.C. § 102 because Laulainen neither expressly discloses
the disputed limitation, nor is it inherently necessary for Laulainen's system.
We accordingly do not sustain the rejection of independent claim 1, or the
rejection of claims 21 and 23, which include the same disputed limitation
(see App. Br. 43, 46 (Claims App'x)).
Independent claims 12, 22, and 24 correspond to claims 1, 21, and 23,
respectively, in that the former are directed to "a slave-end of a phase
synchronized loop," whereas the latter are directed to "a master-end of a
phase synchronized loop" (see App. Br. 40, 44--45, 47 (Claims App'x)).
Claims 12, 22, and 24 each recite a requirement for setting values in a bit
stream indicating "reception moment" and "transmission moment"
information that must "be transmitted [] in a form corresponding to the
transmission line-code." Id. This requirement is analogous to the disputed
limitation. Thus, for the same reasons discussed above, we also find the
Examiner errs in rejecting claims 12, 22, and 24. Because we do not sustain
the rejection of any independent claim, we therefore also do not sustain the
rejection of dependent claims 2-11 and 13-20.
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1-24.
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REVERSED
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