Ex Parte May et al

Board of Patent Appeals and Interferences

Mar 11, 2010

10027249 (B.P.A.I. Mar. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GREGORY D. MAY, ROBERT W. KEYS, DAVID W. PARK,
and DOUGLAS ECCLESTON
____________

Appeal 2009-003812
Application 10/027,249
Technology Center 2600
____________

Decided: March 11, 2010
____________

Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and
ROBERT E. NAPPI, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1, 3-5, 7, 10-12, 14-18, 24, and 25, which are all of the pending
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claims. Claims 2, 6, 8, 9, 13, and 19-23 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief (filed April 9, 2008) and the Answer (mailed
June 6, 2008) for the respective details. Only those arguments actually made
by Appellants have been considered in this decision. Arguments which
Appellants could have made but chose not to make in the Brief have not
been considered and are deemed to be waived. See 37 C.F.R. §
41.37(c)(1)(vii).

Appellants’ Invention
Appellants’ invention relates to the measurement of optical signal
strength in an optical system in which optical signals of more than one
wavelength pass through a wavelength select switch to a power meter which
measures the power in the optical signals. The measured optical power
signal is used to control an optical amplifier by causing the optical amplifier
to either increase or decrease the optical strength. (See generally Spec. 3:20-
4:7 and 5:22-6:16).

Claim 1 is illustrative of the invention and reads as follows:
1. A method of measuring optical signal power in an optical system,
comprising:
receiving optical signals at a wavelength select switch;
passing a subset of the optical signals comprised of more than one
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individual wavelength through the wavelength select switch at substantially
the same time to a power meter;
measuring power in the subset of optical signals using the power
meter;
displaying an indication of the optical signal power in the optical
signals on a monitor to a system administrator; and
controlling an optical amplifier in accordance with the power of the
optical signals to regulate optical signal power of the optical signals.

The Examiner’s Rejections

The Examiner’s Answer cites the following prior art references:
Solomon US 4,903,339 Feb. 20, 1990
Felger US 5,521,701 May 28, 1996
Alexander US 5,986,782 Nov. 16, 1999
Prohaska US 2002/0176658 A1 Nov. 28, 2002
(eff. filed Oct. 13, 2000)
Sugaya US 6,873,795 B1 Mar. 29, 2005
(filed Nov. 16, 1999)

Claims 1, 3-5, 11, 12, 14-17, 24, and 25 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Sugaya in view of Prohaska and
Felger.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sugaya in view of Prohaska, Felger, and Solomon.
Claims 7 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sugaya in view of Prohaska, Felger, and Alexander.

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ISSUES
The pivotal issues before us are whether the Examiner erred in
determining:
a) Sugaya discloses the controlling of an optical amplifier in
accordance with measured optical signal power to regulate the optical signal
power of the output optical signals, and
b) if so, the obviousness to the ordinarily skilled artisan of
combining the wavelength select switch and optical power display teachings
of Prohaska and Felger with Sugaya.

FINDINGS OF FACT
The record supports the following relevant findings of fact (FF) by a
preponderance of the evidence:
1. Sugaya discloses (Figs. 9 and 11, col. 12, ll. 45-52) an optical
power measuring and control system including a wavelength select unit (13
and 30) for passing received optical signals to a power meter PD 31.
2. Sugaya further discloses (col. 12, ll. 52-56) a total-power
uniformalizing control 32 for outputting the difference between the detected
power value and the set value of the power.
3. Further disclosed by Sugaya (col. 12, ll. 56-64) is a control
correction circuit 33 which outputs the difference between the detected
power and the set value of the power as a feedback signal to the excitation
light source 29.

PRINCIPLES OF LAW
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During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “[T]he words of a claim ‘are
generally given their ordinary and customary meaning.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). Furthermore,
‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS

I. The obviousness rejection of claims 1, 3-5, 11, 12, 14-17, 24,
and 25 based on the combination of Sugaya, Prohaska, and
Felger.
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Appellants’ arguments with respect to independent claims 1 and 12
focus on the alleged deficiency of any of the applied prior art in disclosing
the claimed controlling of an optical amplifier in accordance with optical
signal power output to regulate the optical signal power of received optical
signals. In Appellants’ view (App. Br. 9-10), the Sugaya reference, relied
upon by the Examiner as providing the claimed optical amplifier controlling
feature, discloses only the control of the excitation light source 29 which
controls the amount of light input to the optical amplifier 28. According to
Appellants, Sugaya, therefore, does not control the optical amplifier itself
but, rather, only the amount of light input to and then output from the optical
amplifier.
We do not agree with Appellants. We find no error in the Examiner’s
ultimate determination (Ans. 4-5) that the output signal power of Sugaya’s
optical amplifier 28 is controlled by variably controlling the amount of
excitation light from source 29 that is input to the optical amplifier 28. (FF
2 and 3). Further, notwithstanding the above, we also agree with the
Examiner’s finding (Ans. 9-10), and there are no arguments to the contrary
forthcoming from Appellants, that an ordinarily skilled artisan would have
recognized and appreciated that it is the combined elements of the excitation
light source 29 and the optical amplifier fiber 28 which constitute the
optical amplifier structure of Sugaya.
Lastly, we find, contrary to Appellants’ arguments (App. Br. 10-11).
that the Examiner (Ans. 4, 5, and 11-13), in accordance with the previously
discussed KSR standard, has set forth an articulated line of reasoning with a
rational underpinning to support the conclusion that the respective
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wavelength select switch and optical power display teachings of Prohaska
and Felger would have served as an obvious enhancement to the optical
power controlling system of Sugaya.
For the above reasons, the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claims 1 and 12, as well as dependent claims 3-5, 11, 14-17, 24,
and 25 not separately argued by Appellants, is sustained.

II. The obviousness rejections of claims 7, 10, and 18.

The Examiner’s obviousness rejections of dependent claims 7, 10, and
18 are sustained as well. We find no error in the Examiner’s application
(Ans. 6-8) of the power threshold and power meter teachings, respectively,
of Solomon and Alexander to the combined system of Sugaya, Prohaska,
and Felger. Appellants (App. Br. 12) have made no separate arguments for
the patentability of claims 7, 10, and 18 but, instead, have relied on the
arguments asserted against independent claims 1 and 12, which arguments
we found to be unpersuasive as discussed supra.

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CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims for obviousness under 35 U.S.C.
§ 103(a).

DECISION
The Examiner’s decision rejecting claims 1, 3-5, 7, 10-12, 14-18, 24,
and 25 under 35 U.S.C. § 103(a) 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) (2007).

AFFIRMED

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