Ex Parte McNicol et al

Patent Trial and Appeal Board

Sep 29, 2016

10531314 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/531,314 09/10/2007
92994 7590 10/03/2016
Ciena I Integral IP
4400 Bathurst Street, Suite 10
Toronto, ON M3H 3R8
CANADA
FIRST NAMED INVENTOR
John McNicol
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.
Cl0.1773.CIP 6434
EXAMINER
LI, SHI K
ART UNIT PAPER NUMBER
2637
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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):
uspto@integralip.com
miriam@integralip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN MCNICOL, KIERAN PARSONS,
LEO STRA WCZYNSKI, KIM B. ROBERTS, and
MAURICE S. O'SULLIVAN
Appeal2015-005213
Application 10/531,314
Technology Center 2600
Before JASON V. MORGAN, MELISSA A. HAAPALA, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-4, 6-9, 11, 14-19, 22-27, 29-34, 37-42, and 44-51.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants state the real party in interest is Ciena Corporation. App. Br. 2.
2 The Appeal Briefs claims appendix denotes claims 5, 20, and 35 as
withdrawn and claims 10, 12, 13, 21, 28, 36, and 43 as canceled. See App.
Br. 23-31.
Appeal2015-005213
Application 10/531,314
REJECTIONS ON APPEAL
Claims 1-3, 6-9, 11, 14, 19, 22, 23, 29, 34, 37, 38, 44, 50, and 51
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Price
(US 6,522,439 B2; Feb. 18, 2003), Hulick (US 5,450,044; Sept. 12, 1995),
and Jeckeln (US 6,072,364; June 6, 2000). Final Act. 2-4.
Claims 4, 15, 16, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Price, Hulick, Jeckeln, and Sinha (US 7,587,143
B2; Sept. 8, 2009). Final Act. 4-5.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Price, Hulick, Jeckeln, Sinha, and Bergano (US 6,310,709
Bl; Oct. 30, 2001). Final Act. 5-6.
Claims 24, 25, 39, 40, and 49 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Price, Hulick, Jeckeln, Griffin (US 7,546,041 B2;
June 9, 2009), and Leight (US 6,404,535 Bl; June 11, 2002). Final Act. 6.
Claims 26, 27, 41, and 42 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Price, Hulick, Jeckeln, and Kahn (US 6,424,444 B 1;
July 23, 2002). Final Act. 6-7.
Claims 30-33 and 45-48 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Price, Hulick, Jeckeln, and Pidgeon (US 5,850,305;
Dec. 15, 1998). Final Act. 7-8.
DISPOSITIVE ISSUE
Appellants' contentions present us with the following dispositive
issue: Have Appellants shown the Examiner fails to present a sufficient
rationale for combining Price's and Hulick's applied embodiments?
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Application 10/531,314
ANALYSIS
As reflected above, the Examiner rejects all claims as obvious over a
combination of Price's Figure 9 embodiment and Hulick's Figure 5
embodiment (in addition to other prior art). See e.g., Ans. 2-3 (explaining
the combination with respect to the independent claims). The Examiner
finds:
Price et al. teaches in FIG. 9 a system comprising an electrical
input AE, a distorter 32 for generating a pre-distorted signal
comprising an I-component and a Q-component, and a modulator
46 for converting the electrical signal to optical signal. . . . The
difference between Price et al. and the claimed invention is that
Price et al. does not teach the details of the modulator(s). Hulick
teaches in FIG. 5 a modulation scheme comprising converting
two orthogonal signal components AaI and AaQ to the amplitude
and phase signal components and modulat[ing] the phase of a
carrier 540 using the phase signal component (via the phase
modulator 550) and modulat[ing] the amplitude using the
amplitude signal component (via the amplitude modulator 530).
One of ordinary skill in the art would have been motivated to
combine the teaching of Hulick with the system of Price et al.
because Hulick provides the details missing from Price et al. and
the modulation scheme of Hulick increases power efficiency and
lowers Nyquist sampling rate requirements.
Final Act. 2-3 (emphasis added).
Appellants persuasively rebut the Examiner's articulated rationale
(emphasized above) for the combination, contending:
Hulick explicitly teaches that the advantages of ''increased
power efficiency and lower Nyquist sampling rate requirements"
afforded by the embodiment of [Hulick's] Fig 5 are solely
relative to the embodiments of Figs 3 and 4, and are obtained
because it eliminates the combiners 370 and summing devices
470. However, the transmitter of Price does not contain
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Application 10/531,314
combiners or summation devices similar to Hulick' s combiners
370 and summing devices 470[.] As such, it is clear that the
"problem" solved by Hulick's embodiment of FIG. 5 simply does
not exist in the transmitter of Price.
App. Br. 17;3 see also id. at 16-17 (quoting Hulick's supporting disclosures
of col. 6, 11. 35-49 and col. 7, 11. 24-29). The Examiner acknowledges the
merit of Appellants' rebuttal by confirming the articulated motivation was
not for replacing Price's Figure 9 modulator with Hulick's Figure 5
modulator,4 but rather for selecting Hulick's Figure 5 modulator from
amongst Hulick's seven modulators (see Figs. 1-7). Ans. 3 ("The Examiner
cites the advantage of FIG. 5 to point out a reason for choosing the particular
configuration of FIG. 5 instead of other configurations taught by Hulick.").
As reflected by Appellants' above argument, the articulated advantage of
choosing Hulick's Figure 5 modulator over Hulick's other modulators is not
necessarily (nor self-evidently) an advantage of choosing Hulick's Figure 5
modulator over Price's Figure 9 modulator. And, as reflected by Appellants'
Reply Brief arguments, the Examiner thus now lacks an articulated rationale
for replacing Price's Figure 9 modulator with Hulick's Figure 5 modulator.
Reply Br. 2.
3 A corrected Appeal Brief, responding to a Notice of Non-Compliant
Appeal Brief and providing compliant Summary of Claimed Subject Matter,
was submitted December 8, 2014. We cite to the original Appeal Brief
submitted November 4, 2014.
4 The Final Action and Answer do not describe the modification with
particularity. However, considering the inputs/outputs of the cited
modulators, the Examiner plainly proposes to replace Price's element 46
with Hulick's elements 520, 530, and 550.
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Application 10/531,314
The Examiner need not present a motivation to replace Price's Figure
9 modulator with Hulick's Figure 5 modulator. See KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 419 (2007). But, the Examiner must provide enough
explanation for Appellants (and the Board) to ascertain the Examiner's
contemplated reason for modification. See id. at 417-418; see also id. at
415-421 (example reasons). Here, the Examiner presents no reason for
replacing Price's Figure 9 modulator with Hulick's Figure 5 modulator; thus
merely establishing these components were known in the art. See id. at 418
("[A claimed invention] is not proved obvious merely by demonstrating that
each of its elements was, independently, known in the prior art.").
We further note that, considering their inputs and outputs, Price's and
Hulick's modulators may seem interchangeable. Appellants acknowledge as
much in stating:
Hulick does not teach an IQ modulator. Rather, Hulick teaches
a rectangular to polar converter 520 coupled to phase and
amplitude modulators 530 and 550. At best, the system of Hulick
FIG. 5 might be viewed as an alternative to Price's IQ modulator
46, but the examiner has neither suggested such a substitution,
nor articulated any reason for modifying Price in that manner.
Reply Br. 2.
However, Appellants also correctly assert (above) that Price's and
Hulick' s modulators are different technologies such that "the person or [sic]
ordinary skill in the art will recognise that the transmitter of Price FIG. 9
cannot successfully be modified to include the modulator of Hulick FIG. 5
... because ... Price's transmitter requires an optical modulator that
modulates an optical carrier, whereas Hulick FIG. 5 provides an electrical
modulator." App. Br. 15; see also App. Br. 16 ("[T]he mere fact that
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electrical phase and amplitude modulators exist ... [as in] Hulick, does not
itself imply that corresponding optical devices also exist that would enable
implementation of a polar coordinate optical modulator capable of
generating a dispersion compensated optical signal.") The above differences
provide compelling evidence and persuasive reasoning overcoming the
Examiner's mere mention that the two technologies would be amenable to
common sense finding of interchangeability (see Final Act. 9) or mere
finding that the two reference need not be bodily incorporated (see Ans. 2).
DECISION
For the foregoing reasons, the Examiner's rejections of claims 1-4,
6-9, 11, 14-19, 22-27, 29-34, 37-42, and 44-51 are reversed.
REVERSED
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