Ex parte Takahasahi

Board of Patent Appeals and Interferences

Jun 18, 1999

07885708 (B.P.A.I. Jun. 18, 1999)

Application for patent filed May 19, 1992. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SHIGEKI TAKAHASAHI
____________
Appeal No. 96-2223
Application No. 07/885,7081
____________
HEARD: June 9, 1999
____________
Before KRASS, HECKER, and LALL, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 14, all the claims pending in the application.
The invention is directed to testing subscribers
accommodated to a Fiber Service Node (FSN) that is connected
Appeal No. 96-2223 Page 2
Application No. 07/885,708
through an optical fiber cable to a Remote Terminal (RT)
connected through a multiplex transmission line to a central
office exchange in order to construct a Fiber To The Home
(FTTH) or Fiber In The Loop (FITL) system.
Representative independent claim 1 is reproduced as
follows:
1. A method of testing subscriber sets connected to a
service node, said service node connected through a first
bidirectional multiplex transmission line, which provides
bidirectional communication channels for each of the subscriber
sets, to a remote terminal, said remote terminal connected
through a second bidirectional multiplex transmission line to a
central office exchange, said method comprising the steps of:
sending a first command signal ordering a test of said
subscriber sets, connected to the service node, through the
central office exchange and the second bidirectional multiplex
transmission line to the remote terminal;
sending a second command signal from the remote terminal
through the first bidirectional multiplex transmission line to
the service node in response to the first command signal, said
second command signal derived from said first command signal;
testing and evaluating results of the test of the
subscriber sets within the service node in response to the
second command signal;
sending a first return signal including results of the
evaluation of the subscriber sets from the service node through
the first bidirectional multiplex transmission line to the
remote terminal; and
sending a second return signal from the remote terminal
through the second bidirectional multiplex transmission line
Appeal No. 96-2223 Page 3
Application No. 07/885,708
and central office exchange in response to the first return
signal.
No references are relied on by the examiner.
Claims 1 through 14 stand rejected under 35 U.S.C. 112,
first paragraph, as being based on an inadequate written
description. More particularly, the examiner contends that
there is no support in the original disclosure for the now
claimed limitations of “testing and evaluating results of the
test of the subscriber sets within the service mode” recited in
claim 1, “the remote terminal for testing and evaluation of the
subscriber sets” and “ordering a test and an evaluation”
recited in claim 6 and “the service node for testing and
evaluation” and “a command to test and evaluate the subscriber
sets” recited in claim 10.
Rejections based on prior art have been withdrawn by the
examiner and are not before us on appeal.
Rather than reiterate the arguments of appellant and the
examiner, reference is made to the briefs and answer for the
respective details thereof.
OPINION
Appeal No. 96-2223 Page 4
Application No. 07/885,708
In order to determine compliance with the written
description requirement of 35 U.S.C. 112, first paragraph, the
inquiry to be made pertains to whether the disclosure
(specification, drawings, claims) as originally filed
reasonably conveys to the journeyman practitioner in the art
that the inventor had possession at that time of that which he
now claims. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96
(CCPA 1976). Literal support in the disclosure for the terms
of the claims challenged by the examiner is not necessary in
order to show such possession. In re Wright, 866 F.2d 422,
426, 9 USPQ2d 1649, 1652 (Fed. Cir. 1989); In re Kaslow, 707
F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983); In re
Herschler, 591 F.2d 693, 700, 200 USPQ 711, 717 (CCPA 1979); In
re Lukach, 442 F.2d 967, 969, 169 USPQ 795, 797 (CCPA 1971).
There is no question that the original disclosure contains
support for “testing” within the service node. Support for
this recitation is rampant throughout the specification and the
original claims. For example, original claim 1 recited, in
part, “testing the subscriber in the service node...” What the
examiner really questions is support for the service node not
Appeal No. 96-2223 Page 5
Application No. 07/885,708
only “testing,” but also “evaluating” those test results, as
now claimed.
The examiner contends that no evaluation of test results
is found in the original disclosure and that the sending of a
command indicating the test results from the service node does
not inherently include evaluation of the test results at the
node. We agree with the examiner that the mere disclosure of
testing at the service node does not, necessarily, translate to
an “evaluation” at the service node. Tests may very well be
performed at one location and the test results then sent to
another location for “evaluation” of those test results.
Further, appellant’s reference to page 7, lines 4-21 of
the specification is unpersuasive of an adequate written
description to support the claimed limitations in question.
The reference to page 7, lines 4-21, refers to various test
items but to no “evaluation.” It is not clear, from the cited
portion of page 7, whether there is an “evaluation” being
performed by the service node. Therefore, this portion of the
specification cited by appellant does not indicate clearly that
the inventor had possession, at the time of the original
disclosure, of that which is now claimed.
Appeal No. 96-2223 Page 6
Application No. 07/885,708
However, we are persuaded that there is an adequate
written description in the original disclosure to support
“evaluation” by appellant’s reference to page 10, lines 3-21.
It is clear from this portion of the specification and from
Figure 8, that not only are tests being performed at the
service node, but that there is also an “evaluation” of the
test results being performed since an output of “good” or “no
good” is made. This determination, not only of a test of a
voltage value, for example, but of whether that value is within
a certain range, i.e., “good” or “no good,” is an “evaluation.”
Thus, we will not sustain the rejection of claims 1 through 14
under 35 U.S.C. 112, first paragraph, as being based on an
inadequate written description.
Moreover, we will not sustain the rejection of claims 1
through 14 under 35 U.S.C. 112, first paragraph, as being based
on an inadequate written description, because we find support
for the claim limitations in question in the last sentence on
page 7 of the original disclosure. That sentence indicates
that “the test/control section 44 must interpret the sequences
of character codes...” Since the test/control section 44 is
part of the Fiber Service Node, it is clear that the service
Appeal No. 96-2223 Page 7
Application No. 07/885,708
node not only performs the claimed testing but it also
interprets, or “evaluates”, the results of the test.
Accordingly, “testing and evaluating results of the test” are
performed “within the service node,” as claimed and the artisan
would have appreciated, from such disclosure, that the inventor
did, indeed, have possession, at the time of the original
disclosure, of that which is now claimed.
Appeal No. 96-2223 Page 8
Application No. 07/885,708
The examiner’s decision is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART N. HECKER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
EAK/jlb
Appeal No. 96-2223 Page 9
Application No. 07/885,708
NIKAIDO, MARMELSTEIN, MURRAY & ORAM
METROPOLITAN SQUARE
SUITE 330 - G STREET LOBBY
655 15TH ST., N.W.
WASHINGTON, DC 20005-5701