Ex Parte Soto et al

Board of Patent Appeals and Interferences

Oct 27, 2009

10867107 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ALEXANDER SOTO and WALTER SOTO

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Appeal 2009-002440
Application 10/867,107
Technology Center 2600
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Decided: October 27, 2009
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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.

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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.
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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.

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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).
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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
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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)
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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).
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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.
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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).
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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
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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
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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
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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.

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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.

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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