Ex Parte Lee et al

Patent Trial and Appeal Board

Mar 24, 2014

13212621 (P.T.A.B. Mar. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAEMYOUNG LEE and JE SOO KO
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Appeal 2014-001906
Reissue Application 13/212,621
Patent 7,577,370 B2
Technology Center 2600
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Before JOHNNY A. KUMAR, JOHN A. EVANS, and LARRY J. HUME,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review2 under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of Claims 19 and 203 as anticipated. We have
jurisdiction under 35 U.S.C. § 6(b).

1 The Real Party in Interest is Electronics and Telecommunications Research
Institute.
2 We have considered in this decision only those arguments Appellants
actually raised in the Briefs. Any other arguments which Appellants could
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(iv).
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We REVERSE.4

STATEMENT OF THE CASE
Appellants seek to reissue U.S. Patent 7,577,370 B2, issued Aug. 18,
2009, directed to a method and apparatus for extracting an optical clock
signal with reduced influence of the pattern of an input optical signal by
using characteristics of a Fabry-Perot laser diode. Spec. col. 1, ll. 15-19.
Claims 1-18 were indicated to be allowable, and dependent Claims
21-25 were indicated as containing allowable subject matter, but objected to
as depending from a rejected claim.5 Independent Claims 19 and 20 stand
rejected as anticipated.6 An understanding of the invention can be derived
from a reading of exemplary Claim 20, which is reproduced below with
disputed limitations italicized:

3 App. Br. 8.
4 Our decision refers to Appellants’ Appeal Brief filed July 4, 2013 (“App.
Br.”); Reply Brief filed October 21, 2013 (“Reply Br.”); Examiner’s Answer
mailed August 21, 2013 (“Ans.”); Final Office Action mailed February 7,
2013 (“Final Rej.”); and the original Specification filed August 18, 2011
(“Spec.”).
5 This reissue application passes the North American Container test for
recapture. See N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d
1335, 1349 (Fed. Cir. 2005); MPEP § 1412.02. No subject matter was
canceled in parent application 11/580,357.
6 The broadened claims presented in this reissue application were filed
within the 2-year statutory limit. See 35 U.S.C. § 251; MPEP § 1412.03.
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20. A method comprising:
reflecting a first frequency component in an input optical
signal;
matching the reflected first frequency component with a
first predetermined output mode;
matching a second frequency component in the input
optical signal with a second predetermined output mode; and
beating the matched first frequency component and the
matched second frequency component to extract a clock signal.
References & Rejections
The Examiner relies upon the prior art as follows:
Cundiff et al. US 2004/0017833 A1 Jan. 29, 2004
Ruiz US 2007/0091944 A1 Apr. 26, 2007
The reissue claims stand rejected as follows:7
1. Claim 20 stands rejected as under 35 U.S.C. § 102(b) as anticipated by
Cundiff.
2. Claims 19 and 20 stand rejected under 35 U.S.C. § 102(e) as anticipated
by Ruiz.

APPELLANTS’ CONTENTIONS
1. Cundiff fails to teach or suggest all of the limitations of Claim 20,
because Cundiff does not disclose (App. Br. 9-13):
a. matching the reflected first frequency component with a first
predetermined output mode;
b. matching a second frequency component in the input optical
signal with a second predetermined output mode; and

7 Based on Appellants’ arguments in the Appeal Brief, we will decide the
appeal on the basis of claims as set forth below. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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c. beating the matched first frequency component and the matched
second frequency component to extract a clock signal.
2. Ruiz fails to teach or suggest all the limitations of Claims 19 and 20,
because Ruiz does not disclose (App. Br. 13-17):
a. a first Fabry-Perot laser diode configured to match the reflected
first frequency component with a first predetermined output
mode and output the matched first frequency component;
b. a second Fabry-Perot laser diode configured to match a second
frequency component in the input optical signal with a second
predetermined output mode and output the matched second
frequency; and
c. a photodetector configured to beat the received frequency
components to extract a clock signal.

ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 9-17)
and Reply Brief (Reply Br. 3-7), the issues presented on appeal are:
I. Whether the Examiner erred in finding that Cundiff discloses matching
the reflected first frequency component with a first predetermined output
mode and matching a second frequency component in the input optical
signal with a second predetermined output mode (hereinafter “mode
matching”).
II. Whether the Examiner erred in finding that Ruiz discloses matching the
reflected first frequency component with a first predetermined output
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mode and matching a second frequency component in the input optical
signal with a second predetermined output mode.
CLAIM 20
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We agree with Appellants’
conclusions.
Appellants contend that Cundiff fails to teach or suggest “matching
the reflected first frequency component with a first predetermined output
mode” and “matching a second frequency component in the input optical
signal with a second predetermined output mode,” as recited in Claim 20.
App. Br. 11-12. Appellants argue that shifting a frequency through
frequency shifter 1328 (Figure 13A) is not the same as “matching” a
frequency component with a predetermined output mode. Appellants
present the American Heritage Dictionary definition of matching: “to be
exactly alike, to correspond exactly.” App. Br. 11. Therefore, Appellants
argue, shifting the frequency of the signal 1322 is not matching the
frequency component with a predetermined output mode. App. Br. 12.
Likewise, Appellants contend that doubling a frequency through frequency
doubler 1324 is not the same as “matching” a frequency component with a
predetermined output mode. One of ordinary skill in the relevant art would
not construe doubling a frequency, to be the same as matching the frequency
component with a predetermined output mode. App. Br. 11-12.
The Examiner finds that input optical signal 1316 of Cundiff is
reflected at beam splitter 1318 to reflect first frequency component 1322 and
the first frequency component is “matched” at frequency splitter 1328 with a
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first predetermined output mode, which is determined by control signal
1330. Ans. 3-4, 7. The Examiner further finds that a second frequency
component 1320 of Cundiff is “matched” at frequency doubler 1324 with a
second predetermined output mode. Ans. 4, 7. The Examiner points to an
alternate definition of “matching” from the American Heritage Dictionary:
“to find or produce a counterpart.” Ans. 7. The Examiner then defines
“double” to be “composed of two like parts, double doors” and contends,
therefore, that matching (i.e., producing a counterpart) is analogous to
doubling (i.e., composing two like parts). Id.
We agree with Appellants that shifting a frequency is not the same as
mode matching (matching a frequency component with a predetermined
output mode). Appellants’ Specification describes “match[ing a] first
frequency component [of an input signal] with [a] predetermined output
mode” as adjusting the intensity of the first frequency component to reach a
desired output signal. Spec. col. 3, ll. 52-57; col. 6, ll. 38-42. Appellants’
discussion of mode matching of the input signal is consistent with the
ordinary meaning in the art of mode matching, which is the “precise spatial
matching of the electric field distributions of laser beams.”8
We do not find support in Cundiff for the required limitation of
“matching a . . . frequency component [of an] input . . . signal with a . . .
predetermined output mode” (emphases added). Cundiff is silent regarding
output modes, electric field distributions, or intensity of the signals. Thus,
we do not find that Cundiff teaches mode matching.

8 See RP Photonics Encyclopedia, http://www.rp-photonics.com/
mode_matching.html (last visited Mar. 19, 2014).
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In view of the foregoing, we decline to sustain the rejection of
independent Claim 20.

CLAIMS 19 AND 20
We agree with Appellants’ contention that Ruiz does not teach or
suggest “a first Fabry-Perot laser diode configured to match the reflected
first frequency component with a first predetermined output mode” and “a
second Fabry-Perot laser diode configured to match a second frequency
component in the input optical signal with a second predetermined output
mode,” as required by Claim 19. App. Br. 14-15. Appellants argue that Ruiz
does not teach the optical outputs 310 and 314 to be reflected and matched
with a first and second output mode, respectively, and to output the matched
first and second frequency components. App. Br. 15. Rather, once the
optical outputs 310 and 314 are reflected by reflectors 308 and 312,
respectively, the reflected signals are transmitted to a photodetector 316, but
Ruiz does not describe a matching performed at the photodetector 316. Id.
Appellants contend that similar arguments, supra, apply to Claim 20. App.
Br. 16-17.
The Examiner finds the first Fabry-Perot laser diode (Fig. 3, 302;
Fig. 1, 110) is configured to match the reflected first frequency component
with a first predetermined output mode and output the matched first
frequency component, and the second Fabry-Perot laser diode (Fig 3, 304;
Fig. 1, 112) is configured to match a second frequency component in the
input optical signal with a second predetermined output mode and output the
matched second frequency component. Ans. 4, 8. The Examiner contends
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the first laser 110 is configured to match the first frequency at 195.94h [sic]
Terahertz (THz) at the output mode of 1530 nm and the second laser 112 is
configured to match the second frequency at 195.879 THz at the output
mode of 1530.5 nm. Ans. 8. The Examiner cites the American Heritage
Dictionary's definition for “matching” of “to resemble or harmonize with,”
and the definition for “tunable” is “to make it resonant with a given input
signal.” Id. The Examiner contends, therefore, that “matching” and
“tunable” are analogous terms. Id.
Appellants respond that, assuming arguendo that tuning is the same as
matching, there is still no evidence in Ruiz that a signal from the laser 110 or
112 is reflected and tuned with a predetermined output mode and a matched
frequency component is output. Reply Br. 6.
We agree with Appellants’ contention that Ruiz does not teach
“match[ing] the reflected first frequency component with a first
predetermined output mode” and “match[ing] a second frequency component
in the input optical signal with a second predetermined output mode,” as
required by Claims 19 and 20 (emphases added). Assuming the “first
frequency component in an input optical signal” is 310 of Figure 3, we do
not find support for both the “input optical signal” that is reflected and
“output” from the Fabry-Perot laser that is matched to the reflected
component of the input signal. There is only one output signal 310 from
laser 302. If 310 is considered the “input optical signal,” then it is reflected
into photodetector 316 but not matched (i.e., mode matching as discussed
above) by a Fabry-Perot laser, as required by the claims. If signal 310 is
considered the mode matched output of the Fabry-Perot laser, Ruiz does not
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disclose an input optical signal that is reflected into the Fabry-Perot laser to
provide mode matching.
Appellants also argue that Ruiz fails to teach or suggest “beating the
matched . . . frequency component[s] . . . to extract a clock signal”
(emphasis added). Because we find that Ruiz does not disclose the required
matching of a first reflected frequency component and matching of a second
frequency component, it follows that Ruiz also fails to disclose beating the
components to extract a clock signal.
In view of the foregoing, we decline to sustain the rejection of
independent Claims 19 and 20.

DECISION
The rejections of Claims 19 and 20 under 35 U.S.C. § 102 are
REVERSED.

REVERSED

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