Ex Parte Soto et alDownload PDFBoard of Patent Appeals and InterferencesOct 27, 200910867107 (B.P.A.I. Oct. 27, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ALEXANDER SOTO and WALTER SOTO ____________ Appeal 2009-002440 Application 10/867,107 Technology Center 2600 ____________ Decided: October 27, 2009 ____________ Before ROBERT E. NAPPI, JOHN A. JEFFERY, and THOMAS S. HAHN Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-4, 7-12, 15-18, 21-23, 26-32, and 34-37. Claims 5, 6, 13, 14, 19, 20, 24, 25, 33, and 38 are canceled. See App. Br. 5; Ans. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2009-002440 Application 10/867,107 2 STATEMENT OF THE CASE Appellants invented a converter, method, link, and network for a communication system. The converter either converts optical signals into electrical signals or vice versa. For example, when converting the optical signals to electrical signals, a mixer mixes a first electrical signal to produce a second electrical signal, which carries the same information as the first electrical signal. This information includes overhead data according to a Passive Optical Network (PON) protocol and reduces the complexity of the system.1 Independent claim 1 is reproduced below with the key disputed limitations emphasized: 1. A converter in a passive optical network comprising: an optical fiber input port; an optical detector configured to receive an optical signal over the optical fiber input port and generate a first electrical signal carrying information; and a mixer in electrical communication with the optical detector configured to mix the first electrical signal with a radio frequency carrier wave producing a second electrical signal for transmission by an antenna; wherein the second electrical signal carries the same information as the first electrical signal; and wherein the information is network communications according to an optical communication protocol for the passive optical. 1 See generally Spec. ¶¶ 2, 6-18, and 31-33; Figs. 1-3 and 5. Appeal 2009-002440 Application 10/867,107 3 The Examiner relies on the following prior art references to show unpatentability: Izadpanah US 2003/0002100 A1 Jan. 2, 2003 Seto US 2003/0035183 A1 Feb. 20, 2003 The Examiner’s rejections are as follows: (1) Claims 1-3, 7-11, 15-17, 21, and 22 stand rejected under 35 U.S.C. § 102(a)2 as being anticipated by Seto. Ans. 3-5. (2) Claims 1, 4, 7-9, 12, 15-18, 21-23, 26-28, and 37 stand rejected under 35 U.S.C. § 102(a) as being anticipated by Izadpanah. Ans. 5-8. (3) Claims 29-32 and 34-36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Izadpanah. Ans. 8-9. Rather than repeat the arguments of Appellants or the Examiner, we refer to the Briefs and the Answer3 for their respective details. In this decision, we have considered only those arguments actually made by Appellants. Arguments which Appellants could have made but did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). 2 Seto and Izadpanah also qualify as prior art under 35 U.S.C. § 102(e). 3 Throughout this opinion, we refer to: (1) the Appeal Brief filed December 1, 2007; (2) the Examiner’s Answer mailed December 26, 2007; and (3) the Reply Brief filed February 26, 2008. Appeal 2009-002440 Application 10/867,107 4 I. ANTICIPATION REJECTIONS A. SETO Regarding representative claim 1,4 the Examiner finds that Seto discloses all the recited limitations. Ans. 3-4. In particular, the Examiner states Seto discloses in paragraph thirty-eight that the recited information is network communications according to an optical communications protocol for the passive optical. Ans. 4. Appellants argue that, using the proper definition of “protocol,” the data or information in the Seto system is not in accordance with an optical communication protocol, but rather a radio signal protocol. App. Br. 11-12; Reply Br. 2-6. ISSUE The following issue has been raised in the present appeal: (1) Have Appellants shown that the Examiner erred in rejecting claim 1 under § 102 by finding that Seto discloses all the limitations in claim 1 that are afforded patentable weight? FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence. 4 Appellants argue claims 1-3, 7-11, 15-17, 21, and 22 as a group. App. Br. 11-12. Accordingly, we select independent claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2009-002440 Application 10/867,107 5 Seto (1) Seto discloses a transmitting and receiving device having an optical fiber 30a to transmit information to an optical-to-electrical (O/E) converter 34. The signal from the converter 34 enters the multiplier 42, after divider 36 and filters 38 and 40, and, eventually, is transmitted by antenna 68. ¶¶ 163-166 and 168-170; Fig. 13. PRINCIPLES OF LAW “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Calif., 814 F.2d 628, 631 (Fed. Cir. 1987) (citations omitted). All claim limitations must be considered when determining patentability. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). However, the Examiner need not give patentable weight to nonfunctional descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); Gulack, 703 F.2d at 1385. ANALYSIS Appellants and the Examiner disagree on whether Seto discloses the recitation, “wherein the information is network communications according to an optical communication protocol for the passive optical” in claim 1. App. Br. 11-12; Ans. 4. This limitation, however, describes the type of information carried on the electrical signals and, as such, merely constitutes descriptive material. When presented with a claim comprising descriptive Appeal 2009-002440 Application 10/867,107 6 material, an Examiner must determine whether the claimed descriptive material should be given patentable weight. While all claim limitations must be considered when determining patentability, the Examiner need not give patentable weight to nonfunctional descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. Ngai, 367 F.3d at 1338; Gulack, 703 F.2d at 1385. Claim 1 recites a converter having a mixer that mixes a first electrical signal with a radio frequency carrier wave to produce a second electrical signal. Claim 1 further recites that the first and second electrical signal carry the same information, and that the information is network communications according to an optical communication protocol. Notably, no functional relationship exists between the substrate (i.e., the signal) and the descriptive material (i.e., the information). At best, the descriptive material merely pertains to the content and nature of the information itself (i.e., information according to the recited protocol). Accordingly, the recited information pertaining to the recited protocol is nonfunctional descriptive material that does not patentably distinguish over the prior art. See Ngai, 367 F.3d at 1338; Gulack, 703 F.2d at 1385.5 Based on this claim construction, we turn to Seto. Appellants do not dispute the Examiner’s finding that Seto discloses a converter comprising an optical fiber input port, an optical detector configured as recited in claim 1, and a mixer configured as recited in claim 1. See generally App. Br. and Reply Br. Nevertheless, we find that Seto discloses such an optical fiber 5 See also Ex parte Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential) (discussing cases pertaining to nonfunctional descriptive material) Appeal 2009-002440 Application 10/867,107 7 input port (e.g., optical fiber 30a), an optical detector 34 that converts an optical signal to a first electrical signal carrying information, and a mixer 42 that mixes the first electrical signal with a carrier wave to produce a second electrical signal for antenna transmission at 68. See FF 1. Thus, we find that Seto anticipates claim 1. For the above reasons, Appellants have not shown error in the anticipation rejection of claim 1 based on Seto. Accordingly, we will sustain the rejection of claim 1 and claims 2, 3, 7-11, 15-17, 21, and 22, which fall with claim 1. B. IZADPANAH Regarding representative claim 1,6 the Examiner finds Izadpanah discloses all the limitations. Ans. 5-6. Appellants argue that the Examiner has strained the reading of Izadpanah, and Izadpanah does not disclose a PON or optical communication protocol for the recited information. App. Br. 13-15; Reply Br. 6-8. ISSUE The following issue has been raised in the present appeal: (2) Have Appellants shown that the Examiner erred in rejecting claim 1 under § 102 by finding that Izadpanah discloses all the limitations in claim 1 that are afforded patentable weight? 6 Appellants argue claims 1, 4, 7-9, 12, 15-18, 21-23, 26-28, and 37 as a group. App. Br. 13-15. Accordingly, we select independent claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2009-002440 Application 10/867,107 8 FINDINGS OF FACT The record supports the following additional findings of fact (FF) by a preponderance of the evidence. Izadpanah (2) Izadpanah discloses a transmitting and receiving system having an optical fiber (to the left of demultiplexer 202) to transmit information to an optical-to-electrical (O/E) converter 204. The signal from the converter 204 enters the modem bank 214 for modulation and eventually is transmitted by an antenna at 301. ¶¶ 36-38; Fig. 3. ANALYSIS As discussed above in connection with Seto, no functional relationship exists between the signal and the information. Accordingly, the protocol of the recited information is nonfunctional descriptive material that does not patentably distinguish over the prior art. See Ngai, 367 F.3d at 1338; Gulack, 703 F.2d at 1385. Turning to Izadpanah, Appellants do not dispute the Examiner’s finding that Izadpanah discloses a converter comprising an optical fiber input port, an optical detector configured as recited in claim 1, and a mixer configured as recited in claim 1. See generally Appeal Brief and Reply Brief. Nevertheless, we find that Izadpanah discloses such an optical fiber input port (e.g., to the left of demultiplexer 202), an optical detector 204 that converts an optical signal to a first electrical signal carrying information, and a mixer 214 that mixes the first electrical signal with a carrier wave to produce a second electrical signal for antenna transmission at 301. See FF 2. Thus, we find Izadpanah anticipates claim 1. Appeal 2009-002440 Application 10/867,107 9 For the reason discussed above, Appellants have not shown error in the anticipation rejection of claim 1 based on Izadpanah. Accordingly, we will sustain the rejection of claim 1 and claims 4, 7-9, 12, 15-18, 21-23, 26-28, and 37, which fall with claim 1. II. OBVIOUSNESS REJECTION Regarding representative claim 29,7 the Examiner finds Izadpanah discloses all the limitations, except for a second node in communication with the passive optical splitter over a second optical fiber link. Ans. 8-9. The Examiner relies on paragraph four of Izadpanah to teach designating wavelengths to different housing communities in a PON architecture. Ans. 9. The Examiner states that this teaching suggests to an ordinarily skilled artisan to modify Izadpanah’s Figure 3 optical splitting arrangement so that at least one wavelength is branched to another node (e.g., element 300) to provide services to a different community using the wavelength. Id. Appellants argue that the Examiner has not presented a prima facie case of obviousness. App. Br. 16. Appellants contend that there is no reasonable expectation of success of the Examiner’s proposed combination, and that the Examiner is using impermissible hindsight. App. Br. 16; Reply Br. 8-9. 7 Appellants argue claims 29-32 and 34-36 as a group. App. Br. 16-17. Accordingly, we select independent claim 29 as representative. 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2009-002440 Application 10/867,107 10 ISSUES The following issues have been raised in the present appeal: (3) Have Appellants shown that the Examiner erred in rejecting claim 29 under § 103 by finding that Izadpanah suggests adding a second node in communication with the splitter over a second optical fiber link to Izadpanah’s system in Figure 3? (4) Have Appellants shown that ordinarily skilled artisans would not reasonably expect success for such a modification? FINDINGS OF FACT The record supports the following additional findings of fact (FF) by a preponderance of the evidence. Izadpanah (3) Izadpanah teaches that each channel within an optical wavelength division multiplexed (OWDM) network is assigned a separate wavelength. An ODWM network can allocate different services or areas of coverage to different optical wavelengths for direct addressing. For example, each service or housing community is routed by a designated wavelength in a PON architecture and simplifies service distribution within the network by not needing to know the service type carried by each wavelength. ¶¶ 2 and 4. PRINCIPLES OF LAW “Where claimed subject matter has been rejected as obvious in view of a combination of prior references, a proper analysis under § 103 requires, inter alia, considerations of two factors: (1) whether the prior art would have Appeal 2009-002440 Application 10/867,107 11 suggested to those of ordinary skill in the art that they should make the claimed composition or device, or carry out the claimed process; and (2) whether the prior art would also have revealed that in so making or carrying out, those of ordinary skill would have had a reasonable expectation of success.” In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991) (citations omitted). “Obviousness does not require absolute predictability of success . . . For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). The Examiner must establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073-74 (Fed. Cir. 1988). “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). 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)). If the Examiner’s burden is met, the burden then shifts to the Appellants to overcome the prima facie case with argument and/or evidence. Obviousness is then Appeal 2009-002440 Application 10/867,107 12 determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). ANALYSIS We find no error in the Examiner’s obviousness rejection. Izadpanah teaches allocating services or areas of coverage to different wavelengths. FF 3. Izadpanah also teaches routing to different housing communities via different wavelengths. See id. Such teachings suggest to one skilled in the art that each service or area of coverage in the network would be distributed or routed separately using the designated wavelength in the network. See id. Such teachings also suggest routing or branching the information to different areas of coverage that would include directing the information to different housing communities or distributing the information for a coverage area to the proper location without needing to know service type carried by each wavelength. See id. Moreover, taking into account inferences and creative steps that an ordinarily skilled artisan would employ, the separate distribution to different areas of coverage would include routing or branching the information or service on a designated wavelength to a particular housing community having a separate structure or a node. See id; see also KSR, 550 U.S. at 418. Thus, Izadpanah provides ample reason to add a second node to the Izadpanah system and supports the obviousness rejection of claim 29. Appellants additionally challenge that there is no reasonable expectation that including a second node in the Izadpanah system would succeed. App. Br. 16. We disagree. First, “[o]bviousness does not require Appeal 2009-002440 Application 10/867,107 13 absolute predictability of success.” O’Farrell, 853 F.2d at 903-04. Second, we find that the OWDM system in Izadpanah is in predictable art and would behave in accordance with known optical principles. Third, adding a node, whether the node be within the transceiver 300 or a separate transceiver 300, to the Izadpanah system to distribute information to a service or area of coverage does not conflict with optical principles, and, thus, one skilled in the art would have had a reasonable expectation of success when including a second node into Izadpanah’s system. Fourth, Appellants have provided no evidence, other than a mere assertion, that one skilled in the art would not reasonably expect success when including a second node. Mere lawyer’s arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Finally, Appellants refer to the discussions of claims 4, 7, 8, 15, 16, 18, 21-23, 26-28, and 37. Our previous discussion regarding Izadpanah and the nonfunctional descriptive material applies equally to this argument. For the reasons discussed above in connection with representative claim 1 and claims 4, 7, 8, 15, 16, 18, 21-23, 26-28, and 37, which fall with claim 1, we find this argument unpersuasive. For the foregoing reasons, Appellants have not rebutted the Examiner’s prima facie case of obviousness for claim 29 based on Izadpanah. Accordingly, we sustain the rejection of claim 29 and claims 30- 32 and 34-36 which fall with claim 29. Appeal 2009-002440 Application 10/867,107 14 CONCLUSIONS (1) Appellants have not shown that the Examiner erred in rejecting claims 1-3, 7-11, 15-17, 21, and 22 under § 102 by finding that Seto discloses all the limitations in claim 1 that are afforded patentable weight. (2) Appellants have not shown that the Examiner erred in rejecting claims 1, 4, 7-9, 12, 15-18, 21-23, 26-28, and 37 under § 102 by finding that Izadpanah discloses all the limitations in claim 1 that are afforded patentable weight. (3) Appellants have not shown that the Examiner erred in rejecting claims 29-32 and 34-36 under § 103 by finding that Izadpanah suggests adding a second node in communication with the splitter over a second optical fiber link to Izadpanah’s system in Figure 3. (4) Appellants have failed to show that ordinarily skilled artisans would not reasonably expect success for the Examiner’s proposed modification. DECISION We have sustained the Examiner’s rejection with respect to all claims on appeal. Therefore, the decision of the Examiner to reject claims 1-4, 7- 12, 15-18, 21-23, 26-32, and 34-37 is affirmed. Appeal 2009-002440 Application 10/867,107 15 No 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 pgc JAMES ALBERT WARD 6924 CAMINO PACHECO SAN DIEGO, CA 92111 Copy with citationCopy as parenthetical citation