Ex Parte Peters et al

Patent Trial and Appeal Board

Oct 24, 2012

10177053 (P.T.A.B. Oct. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANK H. PETERS, JONATHAN SIMON, SCOTT CORZINE,
and CLIFTON L. ANDERSON
____________

Appeal 2011-007521
Application 10/177,053
Technology Center 2600
____________

Before JOHN A. JEFFERY, ELENI MANTIS MERCADER, and DENISE
M. POTHIER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
This application returns to us after another panel of this Board
affirmed the Examiner’s rejection of then-pending claims 1, 5, 7, 9, 14, 15,
19, 20, 25, 26, and 33-37 in part. Ex parte Peters, No. 2009-001724 (BPAI
June 2, 2009) (non-precedential). Prosecution was reopened after that
decision, and Appellants now appeal under 35 U.S.C. § 134(a) from the
Examiner’s subsequent rejection of claims 26 and 33-40. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Appellants’ optical communication system includes light sources,
each having light emission elements that transmit signals at different
intensities. The signals are coded differently depending on the intensity,
combined collectively, and transmitted on a waveguide corresponding to a
channel. See generally Spec. ¶¶ 0023-27, 0043-45; Figs. 1-5. Claim 26 is
illustrative:
26. An optical communication method, comprising:

receiving a plurality of electrical data signals;

providing at least first, second and third individual light sources
configured in an array, the first, second and third light sources comprising
respective discrete light emission elements configured to emit light of first,
second and third light intensities only, respectively, the first, second, and
third light intensities being different from one another, the first, second and
third light sources being configured to transmit optical signals corresponding
thereto at the first, second and third light intensities, respectively, into a
same optical waveguide in an optical communication medium having first
and second ends with no intervening multiplexer or encoder disposed
between the array and the second end of the optical communication medium;

providing, with a controller, a plurality of control signals responsive
to the electrical data signals to each light source individually such that multi-
level coding optical signals formed by combining the outputs of the first,
second, and third discrete light emission elements are transmitted by the
array into the same waveguide and thence into the first end of the optical
communication medium,

optically coupling the first, second and third optical signals
corresponding to the first, second and third light intensities to the same
optical waveguide,

receiving the plurality of multi-level coding optical signals at the
second end of the optical communication medium.
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THE REJECTIONS
1. The Examiner rejected claims 26 and 33-40 under 35 U.S.C.
§ 112, first paragraph as failing to comply with the written description
requirement. Ans. 4-5.1
2. The Examiner rejected claims 33-40 under 35 U.S.C. § 112,
second paragraph as failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention. Ans. 5-6.
3. The Examiner rejected claims 26 and 33-40 under 35 U.S.C.
§ 103(a) as unpatentable over Hietala (US 7,215,721B2; May 8, 2007 (filed
Mar. 28, 2002)), Fergusson (US 6,404,533 B1; June 11, 2002), and
Tamburelli (US 4,211,929; July 8, 1980). Ans. 7-16.

THE WRITTEN DESCRIPTION REJECTION
The Examiner finds that the originally-filed disclosure fails to support
the recited limitation that no intervening multiplexer or encoder is disposed
between the light source array and the second end of the optical
communication medium. Ans. 4-5, 17-19. Although the Examiner
acknowledges the Specification’s silence regarding this feature, the
Examiner nonetheless finds that Appellants’ originally-filed disclosure does
not support this negative limitation since there is no discussion regarding the
recited exclusion, let alone its advantages or disadvantages or associated
alternative embodiments. Id.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed November
16, 2010; (2) the Examiner’s Answer mailed February 1, 2011; and (3) the
Reply Brief filed March 24, 2011.
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Appellants argue that Figure 1 and Paragraphs 18 and 19 of their
disclosure amply support the recited negative limitation. App. Br. 26; Reply
Br. 21-23. According to Appellants, not only does Figure 1 show no
multiplexers or encoders in media 16 between the source and destination
optical devices, but the Specification indicates that optical signals are
maintained within their respective channels throughout the media. Id.

ISSUE
Has the Examiner erred in rejecting claim 26 by finding that it fails to
satisfy the written description requirement under § 112, first paragraph?
This issue turns on whether the original disclosure reasonably conveys to
skilled artisans that Appellants possessed the requirement that no intervening
multiplexer or encoder is disposed between the light source array and the
second end of the optical communication medium as of the filing date.

PRINCIPLES OF LAW
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellants possessed the claimed
invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).

ANALYSIS
We begin by noting that it is undisputed that the original disclosure
does not expressly state the recited negative limitation at issue, namely that
no intervening multiplexer or encoder is disposed between the light source
array and the second end of the optical communication medium. Rather, this
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negative limitation was added to claim 26 during prosecution via an
amendment filed December 28, 2009. Nor is it disputed that Appellants’
Figure 1 shows no multiplexers or encoders associated with the optical
media between the source and destination optical devices.
But as the Examiner indicates, the mere absence of a positive
recitation in the original disclosure is not basis to exclude the limitation.
Ans. 17 (quoting MPEP § 2173.05). Rather, “[n]egative claim limitations
are adequately supported when the specification describes a reason to
exclude the relevant limitation.” Santarus, Inc. v. Par Pharm., Inc., -- F.3d -
-, Nos. 2010-1360, -1380, 2012 WL 3797966, at *5-6 (Fed. Cir. Sept. 4,
2012) (emphasis added).
That is not the case here. Although Appellants’ Specification notes
that optical signals are maintained within their respective channels
throughout the optical media as Appellants indicate (App. Br. 26; Reply Br.
23 (citing Spec. ¶ 0018; emphasis added)), Appellants have not shown that
this somewhat brief disclosure pertaining to an exemplary embodiment
explains why intervening multiplexers or encoders are excluded. To be sure,
an intervening multiplexer disposed within optical media 16 in Figure 1
would presumably multiplex the optical signals on different channels 15 to a
single channel, and arguably run counter to the disclosure’s maintaining
optical signals within their respective channels in this exemplary
embodiment.
But leaving aside the disclosure’s alternative embodiment in the last
sentence of Paragraph 0018 where optical signals may be switched from one
channel to another (arguably not precluding multiplexing), we nonetheless
are unpersuaded by Appellants’ argument even if the claim was limited to
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the exemplary embodiment that maintains optical signals within respective
channels. That is, we fail to see why this feature excludes intervening
encoders, for Appellants have not shown why encoded optical signals would
not be maintained within their respective channels according to the
exemplary embodiment and as recited in claim 22.
In any event, this is not a case where, as in Santarus, skilled artisans
would understand from the Specification the disadvantages of a particular
alternative that includes the features excluded by the negative limitation.
See Santarus, 2012 WL 3797966, at *6. Accord Ans. 18 (noting this
omission). Rather, this is a case where Appellants’ excluding intervening
multiplexers or encoders in claim 26 using a negative limitation effectively
introduces a new concept that is not reasonably supported by the original
disclosure. See, e.g., Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,
1323 (Fed. Cir. 2003) (finding no express disclaimer or independent
lexicography in the written description to justify adding negative limitation);
Ex parte Grasselli, 231 USPQ 393, 394 (BPAI 1983), aff’d mem., 738 F.2d
453 (Fed. Cir. 1984) (“[T]he express exclusion of certain elements implies
the permissible inclusion of all other elements not so expressly excluded.
This clearly illustrates that such negative limitations do, in fact, introduce
new concepts.”).
And to the extent that the recited lack of intervening multiplexers or
encoders between the light source array and the second end of the optical
communication medium would have been obvious from Appellants’ original
disclosure is not dispositive here. Although the written description
requirement under § 112 does not demand (1) any particular form of
disclosure, or (2) the Specification recite the claimed invention verbatim, a
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description that merely renders the invention obvious does not satisfy the
requirement. Ariad, 598 F.3d at 1352 (citations omitted).
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 26, and claims 33-40 not separately argued with
particularity.

THE § 112, SECOND PARAGRAPH REJECTION
Since Appellants concede that the Examiner correctly rejected claims
33-40 under 35 U.S.C. § 112, second paragraph (App. Br. 27; Reply Br. 24),
we sustain that rejection. Ans. 5-6, 19.

THE OBVIOUSNESS REJECTION
Regarding representative claim 26, the Examiner finds that Hietala’s
system in Figure 1 receives electrical data signals via transmitter 110 which
modulates light source 120 to transmit associated multi-level optical signals
into optical waveguide 130 to detector 140 at the other end of the
waveguide. Ans. 7-8, 20-21, 23, 29-31. The Examiner acknowledges that
Hietala does not (1) have three individual light emission elements in an array
with different light intensities; (2) provide control signals to each individual
element to form multi-level coding optical signals by combining the
elements’ outputs into the same waveguide; and (3) optically couple the
elements’ associated optical signals to the same waveguide. Ans. 8-11, 20-
31. The Examiner, however, cites Fergusson as teaching limitation (1), and
Tamburelli as teaching limitations (2) and (3) in concluding that the claim
would have been obvious. Id.
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Appellants argue that the cited prior art does not teach or suggest the
last three clauses of claim 26,2 namely (1) providing control signals to each
light emission element individually such that multi-level coding optical
signals formed by combining the elements’ outputs are transmitted by the
array into the same waveguide; (2) optically coupling the optical signals
corresponding to the elements’ different intensities to the same waveguide;
and (3) receiving multi-level coding optical signals at the optical
communication medium’s second end. App. Br. 28-36; Reply Br. 25-27.
Appellants add that there is no reason to combine the cited references as the
Examiner proposes since, among other things, (1) they do not address the
problems solved by the present invention; (2) they teach away from the
claimed invention; and (3) the Examiner’s combination is based on
impermissible hindsight. App. Br. 28, 31-36; Reply Br. 27-30.

ISSUES
I. Under § 103, has the Examiner erred in rejecting claim 26 by
finding that Hietala, Fergusson, and Tamburelli collectively would have
taught or suggested (1) providing control signals to each light emission
element individually such that multi-level coding optical signals formed by
combining the elements’ outputs are transmitted by the array into the same
waveguide; (2) optically coupling optical signals corresponding to the
elements’ different intensities to the same waveguide; and (3) receiving

2 Appellants identify particular limitations in the last three clauses of claim
26 as “elements (viii), (ix), (x), and (xi)” to correspond to four of the 11
numbered limitations on pages 24 and 25 of the Brief. See App. Br. 24-25,
30-31; Reply Br. 25-27.
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multi-level coding optical signals at the optical communication medium’s
second end?
II. Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
On this record, we find no error in the Examiner’s obviousness
rejection of representative claim 26 for the reasons indicated by the
Examiner. Ans. 7-11, 19-31. As shown in Hietala’s Figure 1, transmitter
110 modulates light source 120 (e.g., a laser or laser diode) with the
incoming multi-channel digital data stream to produce a single multilevel
digital signal with 2n levels at the same symbol rate. Hietala, col. 6, ll. 38-
50; Fig. 1. This multilevel signal is sent via an optical waveguide 130 to
optical detector 120 coupled to receiver 150 which converts the received
multilevel signal to a set of binary inputs or channels. Hietala, col. 6, ll. 51-
60.
Although Hietala’s light source is not an array of three individually-
controlled light sources with respective elements that emit light with
different intensities as the Examiner acknowledges (Ans. 8, 23), we
nonetheless see no error in the Examiner’s reliance on Fergusson and
Tamburelli for teaching these features. As the Examiner indicates (Ans. 8,
23, 29), Fergusson’s Figure 14 shows an array of optical transmitter
transducers 1400 that emit different light intensities to produce 16 different
light outputs from only four sources. Fergusson, col. 10, ll. 21-48 (noting
that transducers 1404, 1406, and 1408 transmit optical power having two,
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four or eight times that of transducer 1402). Notably, not only are these
transducers laser light sources as the Examiner indicates (Ans. 23 (citing
Fergusson, col. 9, ll. 52-57))—sources similar to those used by Hietala as
noted above—the array’s light outputs are combined optically and
transmitted through a fiber optic link to a receiver 1100. Fergusson, col. 10,
ll. 1-4, 38-42; Fig. 11.3
Based on this functionality, we see no reason why skilled artisans
would not have substituted an array of light sources in lieu of the single light
source in Hietala to yield predictable results as the Examiner proposes (Ans.
23, 25), namely providing, among other things, a relatively large number of
light outputs from few sources.
Nor are we persuaded of error in the Examiner’s reliance on
Tamburelli merely to show that individually controlling individual light
sources of an array as claimed would have been obvious. Ans. 10-11, 24-25,
30. Although Fergusson drives the transducer array with an electronic
circuit 1306, Fergusson does not detail this electronic circuit as the
Examiner acknowledges. Ans. 24 (citing Fergusson, col. 10, ll. 38-42). To
be sure, Fergusson presets each transducer’s ON current to bias their
respective light outputs (Fergusson, col. 10, ll. 25-31), but does not specify
exactly how the electronic circuit does this. Nevertheless, we see no reason
why skilled artisans would not individually control each light source in an
array via respective control signals as the Examiner proposes in light of
Tamburelli. Tamburelli’s circuitry translates binary electrical pulses into a

3 Although this discussion pertains partly to the embodiment of Fergusson’s
Figure 13, it nonetheless applies to the variation of the array in the Figure 14
embodiment. Compare Fergusson, col. 9, l. 65 – col. 10, ll. 1-8 with col. 10,
ll. 38-42.
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multi-level luminous signal that is produced from various combinations of
outputs from light emitters L1-L3 optically coupled to fiber F as shown in
Figure 1. Tamburelli, Abstract; col. 2, l. 30 – col. 3, l. 27; Fig. 1.
Despite Appellants’ arguments to the contrary (Reply Br. 26), we see
no error in the Examiner’s finding that various electrical components and
circuitry located upstream from Tamburelli’s light emitters in Figure 1
collectively constitute a “controller” as claimed under the term’s broadest
reasonable interpretation. Ans. 24 (listing various elements of Tamburelli’s
circuitry as collectively constituting a “controller”).4 The Examiner’s point
in this regard is well taken, since this circuitry collectively functions to
provide signals to each light emitter to produce various optical output levels.
That is, each emitter is effectively individually controlled to achieve this
result. See Tamburelli, col. 2, l. 30 – col. 3, l. 27; Fig. 1. We therefore find
that enhancing the Hietala/Fergusson system by individually controlling
each light source as suggested by Tamburelli merely predictably uses prior
art elements according to their established functions—an obvious
improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
And even assuming, without deciding, that Tamburelli’s emitters have the
same intensities as Appellants contend (Reply Br. 26), that argument does

4 To the extent Appellants argue that the multiple elements identified by the
Examiner in Tamburelli do not constitute a single controller (i.e., one and
only one controller), such arguments are not commensurate with the scope
of the claim for nothing precludes multiple elements from collectively
constituting a “controller.” Nevertheless, we further note that the indefinite
article “a” or “an” means “one or more” in open-ended claims containing the
transitional term “comprising” as is the case here, where neither the claim
nor the Specification indicates that “a controller” means one and only one
controller. See Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir. 2011).
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not address—let alone persuasively rebut—the Examiner’s reliance on
Fergusson for emitters with different intensities. Ans. 8-9, 21. 29.
Appellants’ arguments regarding Hietala’s single multi-level optical signal
(Reply Br. 27) are likewise unavailing, for they are inapposite to the
Examiner’s reliance on the cited references’ collective teachings which at
least suggest transmitting multiple multi-level signals as noted above. See In
re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (noting that
individually attacking references does not show nonobviousness where the
rejection is based on the references’ collective teachings).
Lastly, despite Appellants’ arguments to the contrary (App. Br. 28,
31-36; Reply Br. 27-30), we find ample reason to combine the references as
the Examiner proposes for the reasons indicated by the Examiner. Ans. 9-
11, 22-31. The Examiner’s reason to combine the teachings of these
references is therefore supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 26, and claims 33-40 not separately argued with
particularity.
CONCLUSION
The Examiner did not err in rejecting (1) claims 26 and 33-40 under
§ 112, first paragraph; (2) claims 33-40 under 35 U.S.C. § 112, second
paragraph; and (3) claims 26 and 33-40 under § 103.

ORDER
The Examiner’s decision rejecting claims 26 and 33-40 is affirmed.
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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

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