Ex Parte Matthews

Board of Patent Appeals and Interferences

Apr 4, 2012

11291104 (B.P.A.I. Apr. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/291,104 11/30/2005 Manyalibo Joseph Matthews 7 7768
7590 04/05/2012
Ryan, Mason & Lewis, LLP
Suite 205
1300 Post Road
Fairfield, CT 06824
EXAMINER
VANDERPUYE, KENNETH N
ART UNIT PAPER NUMBER
2613
MAIL DATE DELIVERY MODE
04/05/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MANYALIBO JOSEPH MATTHEWS
____________

Appeal 2010-002931
Application 11/291,104
Technology Center 2600
____________

Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE, and JOHNNY A.
KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002931
Application 11/291,104

2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of
claims 1-20. We affirm.

INTRODUCTION
According to Appellant, the application is directed to methods and apparatus
for increasing downstream bandwidth of a passive optical network using integrated
WDM/power spitting devices, such as the 2P1 devices, and one or more tunable
lasers. (Abstract).

STATEMENT OF THE CASE

Exemplary Claim
Claim 1 is representative of the invention and reproduced below with
disputed limitations in italics:

1. An optical multiplexing/demultiplexing system, comprising:

an integrated wavelength division multiplexing (WDM)/power spitting
device having a WDM passive optical network (PON) and a power splitting
PON;

one or more tunable lasers for selectively generating an optical signal of a
desired wavelength, wherein said optical signal of a desired wavelength is
communicated using said WDM PON for transporting at least user data; and

one or more user data input circuits for receiving said user data for said one
or more tunable lasers.

Rejection
The Examiner has rejected claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over Cohen (US 5,321,541) in view of Ball et al. (US 7,016,608 B1).
Appeal 2010-002931
Application 11/291,104

3

Appellant’s Contentions

Appellant argues on pages 2 through 7 of the Reply Brief
1
that the Examiner‟s
rejection of claims 1-20 is in error.
1. Appellant argues that Cohen does not disclose user data. (Reply Br. 3).
Further, Appellant argues that Cohen teaches an OTDR transmitter 222 to
transmit diagnostic signals (col. 10, line 64, to col. 11, line 2). (Reply Br. 2).
Appellant also contends that “data,” e.g., user data or testing data, must be
converted to a “signal” in order to be transmitted. (Reply Br. 3).
Specifically, Appellant contends that "data” may be carried by a "signal,"
but is not classified as a "signal." (Reply Br. 3). Appellant further contends
Figure 17 of Cohen cannot show that “user data” is transmitted in the same
way as the testing signal. (Reply Br. 3). Appellant also contends that Cohen
only discloses using the tunable laser for sending diagnostic signal; the
transmission of a diagnostic signal does not infer that "data" or "user data" is
transmitted. (Reply Br. 3).

2. Appellant further argues that there is no indication in Cohen that any
inherent diagnostic signal input circuit would be suitable for accepting user
data. (Reply Br. 3). Thus, Appellant argues that a data input circuit for
receiving data for the tunable laser is not an inherent feature of Cohen or
Ball. Appellant further contends that Cohen's teaching to use OTOR
transmitter 222 to transmit diagnostic signals (col. 10, line 64, to col. 11,
line 2) teaches away from the claimed invention. (Reply Br. 5). Thus,

1
Throughout this opinion we refer to the Reply Brief dated November 17, 2009.
We note that pages of the 4-7 of the Reply Brief contain Appellant‟s arguments
verbatim from the Appeal Brief dated August 5, 2009.
Appeal 2010-002931
Application 11/291,104

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Appellant contends that there is no motivation to remove the interface for
diagnostic signals based on the teaching of either Cohen or Ball in order to
add an interface to transmit user data. (Reply Br. 5).

Issue on Appeal
Did the Examiner err in rejecting claims 1 to 20 as being obvious because
the combination of Cohen and Ball fails to teach or suggest the above-argued
features?

ANALYSIS
We have reviewed the Examiner‟s rejection in light of Appellant‟s
arguments that the Examiner has erred. We disagree with Appellant‟s conclusion.
We adopt as our own (1) the findings and reasons set forth by the Examiner in the
Examiner‟s Answer in response to the Appellant‟s Brief. We concur with the
conclusions reached by the Examiner. We further support the Examiner‟s findings
by noting (1) Appellant‟s own use of the phrase “data signals” in the
Specification, page 1, line 13, and (2) that the term “user data” do not appear
anywhere in Appellant‟s Specification.
With respect to Appellant‟s first contention, the Examiner finds that one of
ordinary skill in the art would have understood that there is no fundamental
difference between transmitting a testing signal to an individual user and
transmitting "user data" to that user. (Ans. 9). The Examiner concludes that “[a]s
shown in fig. 17, „user data‟… is transmitted in the same way as the testing
signal.” (Ans. 9).
The Examiner cites ample evidence to support these findings and we concur
with these findings by the Examiner. We additionally note that Appellant‟s
Appeal 2010-002931
Application 11/291,104

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augments rely upon the content of the data (i.e., the content of the information
determines whether it is “user data” or “diagnostic signal”) being different from
that taught in the prior art. The claim does not recite any element which functions
based upon this data, thus, the limitations are merely non-functional descriptive
material which does not define the invention over the prior art.
2
Thus, Appellant
has not persuaded us that the Examiner erred in finding that the combination of the
references teaches transporting user data.
With respect to Appellant‟s second contention, the Examiner responds that
“tunable lasers inherently have user data input circuits.” (Final Rejection 3). The
Examiner further found that there is “no fundamental difference between
transmitting a testing signal to an individual user and transmitting „user data‟ to
that user.” (Ans. 9). We agree with the Examiner.
We further support the Examiner‟s findings by noting that (1) the phrase
“user data input circuits” does not appear in the Specification, and (2) during
prosecution, in an Office Action response dated December 8, 2008, Appellant
admitted: “[n]ote that a user data input circuit is an inherent component of tunable
laser 1015”. (Amendment After Non-Final 8). Thus, we find that the Examiner‟s
reasoning is consistent with Appellant‟s own disclosure admitting that “a user data
input circuit is an inherent component of tunable laser.” (Amendment After Non-
Final 8).
We do not find Appellant‟s arguments convincing of any error in the
Examiner‟s stated position. Initially, we agree with the Examiner that, “both prior

2
The Examiner need not give patentable weight to descriptive material absent
a new and unobvious functional relationship between the descriptive material and
the substrate. See In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994); In re Ngai,
367 F.3d 1336, 1338 (Fed. Cir. 2004) and our decision in Ex parte Curry, 2005-
0509 (BPAI 2005), 84 USPQ2d 1272.

Appeal 2010-002931
Application 11/291,104

6

arts Cohen and Ball inherently include data input circuit for receiving data for the
tunable laser” (Ans. 13), and we do not find that the lack of such a disclosure
amounts to a “teaching away” from the use of an OTOR transmitter 222 to transmit
diagnostic signals such as taught by Cohen. (See Ans. 12).
We find that Appellant‟s “teaching away” argument is unpersuasive because
whether it is data from the user or taken from the user in some other way, it would
not change the way the signals are transmitted. (Ans. 9). We, thus, find that
modifying Cohen with the teachings of Ball in the manner proposed by the
Examiner is consistent with, rather than contrary to, Cohen‟s disclosure for the
reasons stated by the Examiner.

CONCLUSION
Appellant has not shown the Examiner erred in finding claim 1 is obvious
over Cohen and Ball. Since independent claims 10 and 17 and dependent claims 2-
9, 11-16, and 18-20 were not argued separately, we conclude that the Examiner did
not err in rejecting claims 1-20 under 35 U.S.C. § 103(a) for obviousness over
Cohen and Ball.
ORDER
The decision of the Examiner to reject claims 1-20 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD