Ex Parte Tian et al

Board of Patent Appeals and Interferences

Jul 26, 2010

10695711 (B.P.A.I. Jul. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte CECHAN TIAN, YASUHIKO AOKI,
and SUSUMU KINOSHITA
________________

Appeal 2009-005217
Application 10/695,711
Technology Center 2600
________________

Before ROBERT E. NAPPI, KENNETH W. HAIRSTON,
and MAHSHID D. SAADAT, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1 to 46. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appellants’ invention relates to an optical network and method for
communicating using an optical network having an optical ring and a
plurality of nodes for adding and dropping traffic streams or channels to and
from the ring (Fig. 1; Abstract; Spec. 3:7-6:23). The nodes may include hub
node(s), sub-band node(s), and/or a combination node with sub-band, hub,
and/or coupler node transport elements (Figs. 1-4 and 7; claims 1, 8, 12, 16,
23, 29, 32, 35, and 41). The hub nodes may form a plurality of photonic
domains that communicate different traffic streams in the same sub-band
without interference (see Figs. 11, 12A, 12B, and 13; claims 35-46).
Claim 35 is representative of the claimed invention, and reads as
follows:
35. An optical network, comprising:
an optical ring operable to communicate optical traffic;
a plurality of nodes coupled to the optical ring, each node operable to
passively add and drop one or more traffic streams to and from the optical
ring, each traffic stream comprising at least one channel;
the plurality of nodes comprising:
a plurality of hub nodes operable to selectively pass or
terminate a plurality of individual sub-bands of the optical traffic; and
a plurality of sub-band nodes each operable to terminate a
respective sub-band of the optical traffic;
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wherein the plurality of hub nodes form a plurality of photonic
domains each operable to communicate different traffic streams in the same
sub-bands without interference.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Way US 2003/0025961 A1 Feb. 6, 2003
Johnson US 6,868,201 B1 Mar. 15, 2005
(filed Mar. 22, 2002)

(i) The Examiner rejected claims 1 to 3, 5 to 10, 12 to 14, 16 to 18,
and 20 to 46 under 35 U.S.C. § 102(e) based upon the teachings of Way.
(ii) The Examiner rejected claims 4, 11, 15, and 19 under 35 U.S.C.
§ 103(a) based upon the teachings of Way and Johnson.2
With regard to the anticipation rejection of claims 1 to 3, 5 to 10, 12
to 14, 16 to 18, and 20 to 46 and the obviousness rejection of claims 4, 11,
15, and 19, the Examiner relies on Way (see Figs. 6, 13, 19, and 23; ¶
[0071]) as teaching the recited limitations of an optical network including an
optical ring and nodes including hub node(s), sub-band node(s), and/or a
combination node with sub-band, hub, and or coupler node transport
elements (Ans. 3-5). With regard to the anticipation rejection of claims 35
to 46, the Examiner relies on Way (Figs. 6, 13, and 19; ¶ [0071]) as teaching
the recited limitation of hub nodes forming a plurality of photonic domains

2 Because Appellants have failed to present any arguments with regard to the
obviousness rejection applying Way and Johnson combined (as to claims 4,
11, 15, and 19) under § 103, there is no issue before us for review as to this
rejection. See 37 C.F.R. § 41.37(c)(1)(vii) (requiring a statement in the
briefs as to each ground of rejection presented by Appellants for review);
and see 37 C.F.R. § 41.37(c)(1)(vii) (stating that arguments not presented in
the briefs by Appellants will be refused consideration).

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(Ans. 5). The Examiner determines that Figure 6 of Way discloses the
claimed sub-band nodes, Figure 13 of Way discloses the non-interfering
communication traffic streams in the same sub-band, and Figure 19 of Way
discloses the hub nodes and associated photonic domains (Ans. 12).
With regard to the anticipation rejection of claims 35 to 46 (see
rejection (i) supra), Appellants argue, inter alia (App. Br. 19-20; Reply Br.
2-4) that Way fails to disclose (i) plural photonic domains for
communicating different traffic streams in the same sub-band without
interference (and instead discloses three different bands in Figure 13, bands
62, 64, and 66), and (ii) plural hub nodes on one single and same optical ring
for communicating traffic (and instead discloses three different rings).
With regard to the anticipation rejection of claims 1 to 3, 5 to 10, 12
to 14, 16 to 18, and 20 to 34 (see rejection (i) supra), Appellants argue, inter
alia (App. Br. 20-26; Reply Br. 4-6) that Way fails to disclose a hub node(s)
that (i) passively adds and drops one or more traffic strings to and from a
ring, and (ii) terminates a respective sub-band of the optical traffic.
Specifically, Appellants contend that Way’s hub node 24 in Figure 6 “either
passes or stops traffic communicated on rings 14 and 16 depending on
whether switch(es) 22 are open or closed” (App. Br. 21), but does not
perform the two hub node functions discussed supra and recited in claims 1,
12, 16, 23, and 32. Appellants also argue (Reply Br. 5) that Way’s switch
22 does not passively add and drop traffic to and from the optical ring.
With regard to claims 8 to 10 and 29 to 31, Appellants also contend
(App. Br. 22-24; Reply Br. 5-6) that Way fails to disclose a combination
node because there is no hub node transport element in Way that is operable
to selectively pass or terminate sub-bands. Appellants admit that “[o]ne of
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ordinary skill in the art is well aware that a coupler both drops and continues
traffic on a ring” (Reply Br. 6 (emphasis added)), but assert (App. Br. 23)
that Way’s tunable filter 166 in Figure 23 does not selectively pass or
terminate traffic because traffic is passed on the ring through coupler 120.
The obviousness rejection of claims 4, 11, 15, and 19 over Way and
Johnson (see rejection (ii) listed supra) will be decided in accordance with
the outcome of the issue concerning the anticipation rejection of claims 1, 8,
12, and 16 because Appellants have not presented any arguments or
requested review of the obviousness rejection (ii) listed supra. Arguments
not made by Appellants in the Brief are considered waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUES
Based on Appellants’ arguments, the following issues are presented:
(i) Does Way disclose (i) plural photonic domains for
communicating different traffic streams in the same sub-
band without interference, and (ii) plural hub nodes on one
single and same optical ring for communicating traffic as set
forth in claims 35 to 46?
(ii) Does a proper interpretation of claims 1 to 3, 5 to 10, 12 to
14, 16 to 18, and 20 to 34 encompass a hub node(s) that (i)
passively adds and drops one or more traffic strings to and
from a ring, and (ii) terminates a respective sub-band of the
optical traffic?
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(iii) Does Way disclose the limitation common to claims 8 to 10
and 29 to 31 of a hub node transport element operable to
“selectively pass or terminate” traffic on the optical ring?

FINDINGS OF FACT (FF)
1. Way describes an optical network 10 including an optical ring 12/14,
plural nodes 24, a hub node (Fig. 19), and sub-band nodes 26 (Fig. 6),
coupler nodes 120/166 (Fig. 23) (Abstract; Figs. 6, 13, 19, and 23; ¶¶
[0057], [0071]). Way shows three different rings 54, 56, and 58 and
three different bands 62, 64, and 66 in Figure 13.
2. Way describes four different embodiments as “passive optical ring
networks” (Figs. 20(a)-(d); ¶¶ [0043]-[0046] and [0085]).
3. Way describes couplers 120 in Figure 23 as “drop ports” that drop
traffic from the ring, and also a tunable filter 166 that cuts out certain
wavelengths from the traffic (see ¶ [0087]).

PRINCIPLES OF LAW
Claim Construction
“During examination, ‘claims … are to be given their broadest
reasonable interpretation consistent with the specification, and … claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech.
Cir., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048,
1053-54 (Fed. Cir. 1997).

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Anticipation
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).

ANALYSIS
First Issue: Claims 35 to 46
We agree with Appellants (Reply Br. 2 and 4) that Way fails to
disclose a plurality of hub nodes that are each operable to passively add and
drop traffic from the ring, forming a plurality of photonic domains each
operable to communicate different traffic streams in the same sub-bands
without interference. Although Way discloses three different rings (112,
144, and 144 in Figure 19) and three different bands (62, 64, and 66 in
Figure 13) (FF 1), Way is silent as to creating photonic domains designed to
communicate different traffic streams in the same sub-bands as set forth in
the claims on appeal. Although we agree with the Examiner that claims 35
and 41 are not limited to just one ring, the Examiner has not sufficiently
shown how or why Way’s arrangement of three rings and three bands meet
the claim recitation of a ring having plural hub nodes, and the hub nodes
forming plural photonic domains, when Way only shows one hub node 142
in Figure 19.
Thus, with respect to the optical network recited in independent
claims 35 and 41, we agree with Appellants (see App. Br. 19-20; Reply Br.
2-4) that Way fails to disclose (i) plural photonic domains for
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communicating different traffic streams in the same sub-band without
interference (and instead discloses three different bands in Figure 13, bands
62, 64, and 66), and (ii) plural hub nodes on one single and same optical ring
for communicating traffic (and instead discloses three different rings). It
follows that the Examiner has not established anticipation because Way does
not disclose each and every limitation of the claimed invention set forth in
independent claims 35 and 41. Atlas Powder Co., 190 F.3d at 1347;
Paulsen, 30 F.3d at 1478-79. The anticipation rejection of claims 35 to 46 is
not sustained because Way does not teach (i) plural photonic domains for
communicating different traffic streams in the same sub-band without
interference, and (ii) plural hub nodes on one single and same optical ring
for communicating traffic.
Second Issue: Claims 1 to 3, 5 to 7, 12 to 14, 16 to 18, 20 to 28, and 32 to 34
We agree with the Examiner (Ans. 12-14) that claims 1, 12, 16, 23,
and 32 do not require that the hub node(s) be operable to perform both of the
functions as averred by Appellants. The claim language, broadly
interpreted, encompasses plural nodes that are operable to add and drop
traffic from the ring, sub-band nodes or transport elements to terminate
traffic, and other nodes that can include a hub node(s) or transport element
for dropping or terminating traffic (see claims 1, 12, 16, 23, and 32). And,
in light of our findings with respect to Way (FF 1), we find no error in the
Examiner’s reliance (see Ans. 3-5) on Way (see Figs. 6, 13, 19, and 23; ¶
[0071]) as teaching the recited limitations of an optical network including an
optical ring and nodes including hub node(s), sub-band node(s), and/or a
combination node with sub-band, hub, and or coupler node transport
elements. Claims 1, 12, 16, 23, and 32 do not limit the plurality of nodes to
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require the same nodes to perform both the add/drop function and the
termination function(s). The Examiner is correct (Ans. 12-14) that, properly
interpreted, these claims encompass Way’s hub node operation, albeit with a
different arrangement, e.g., one where the two recited actions of the claims
discussed supra are performed by plural nodes that are different from, and
not the same as the hub node.
Appellants’ argument (Reply Br. 5) that Way’s switch 22 does not
passively add and drop traffic to and from the optical ring is also not
convincing. If switch 22 is open, then no traffic is passed (i.e., traffic is
dropped). Thus, after instruction is received from an outside source, switch
22 is opened. This means that traffic is passively dropped after the switch is
opened (i.e., the optical ring does not include hardware to perform such a
function). Notably, Way also describes four different embodiments as
“passive optical ring networks (Figs. 20(a)-(d); ¶¶ [0043]-[0046] and [0085];
FF 2).
Thus, we are not persuaded by Appellants’ arguments (App. Br. 21-22
and 24-25; Reply Br. 4-6) that Way fails to disclose the common limitation
recited in independent claims 1, 12, 16, 23, and 32 of hub node(s) that (i)
passively add and drop one or more traffic strings to and from a ring, and (ii)
terminate a respective sub-band of the optical traffic. We will therefore
sustain the Examiner’s anticipation rejection of claims 1, 12, 16, 23, and 32,
as well as claims 2, 3, 5 to 10, 13, 14, 17, and 18 which depend respectively
therefrom.

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Third Issue: Claims 8 to 10 and 29 to 31
We are also not persuaded by Appellants’ arguments as to claims 8
and 29. Way discloses the limitation common to claims 8 to 10 and 29 to 31
of a hub node transport element operable to “selectively pass or terminate”
traffic on the optical ring because (i) as Appellants admit, Way discloses
dropping traffic in the optical ring (Reply Br. 6), and (ii) we agree with the
Examiner (Ans. 15-16) that Ways’ couplers 120 in Figure 23 act as “drop
ports” and terminate traffic, and tunable filter 166 also acts to terminate
certain wavelengths from the traffic (FF 3).
Because we distinguish no significant difference between dropping or
terminating traffic, and independent claims 8 and 29 merely require passing
or terminating traffic in the alternative, Way’s termination of traffic on a
ring satisfies the limitations at issue. The Examiner is also correct (Ans. 14-
16) that Way’s Figure 6 suggests that nodes 26 also serve to drop or
terminate traffic from the ring. In view of the foregoing, we will sustain the
Examiner’s anticipation rejection of claims 8 and 29, as well as claims 9, 10,
30, and 31 which depend respectively therefrom.
Obviousness Rejection of Claims 4, 11, 15, and 19
The Examiner rejected claims 4, 11, 15, and 19 under 35 U.S.C.
§ 103(a) based upon the teachings of Way and Johnson, relying on Johnson
as teaching a (de)multiplexer being an array waveguide (Ans. 6). Appellants
merely present nominal arguments to claims 4, 11, 15, and 19 by grouping
them by number with the arguments regarding the anticipation rejection of
claims 1 to 3, 5 to 10, 12 to 14, 16 to 18, and 20 to 34 (App. Br. 21-25;
Reply Br. 4-6). Appellants have not particularly pointed out errors in the
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Examiner’s reasoning to persuasively rebut the Examiner's prima facie case
of obviousness.
We will sustain the obviousness rejection of claims 4, 11, 15, and 19
over Way and Johnson for the reasons discussed supra with regard to the
teachings of Way, and because Appellants have failed to rebut the
Examiner’s prima facie case of obviousness. See 37 C.F.R.
§ 41.37(c)(1)(vii) (requiring a statement in the briefs as to each ground of
rejection presented by Appellant for review); 37 C.F.R. § 41.37(c)(1)(vii)
(stating that arguments not presented in the briefs by Appellants will be
refused consideration).

CONCLUSIONS
Anticipation Rejection
First Issue
Way does not disclose (i) plural photonic domains for communicating
different traffic streams in the same sub-band without interference, and (ii)
plural hub nodes on one single and same optical ring for communicating
traffic as set forth in claims 35 to 46. Accordingly, we will not sustain the
Examiner’s anticipation rejection with regard to these claims.
Second Issue
A proper interpretation of claims 1 to 3, 5 to 10, 12 to 14, 16 to 18,
and 20 to 34 does not encompass a hub node(s) that (i) passively adds and
drops one or more traffic strings to and from a ring, and (ii) terminates a
respective sub-band of the optical traffic. Accordingly, Appellants
arguments in this respect are unconvincing and we will sustain the
anticipation rejection of these claims.
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Third Issue
Way discloses the limitation common to claims 8 to 10 and 29 to 31
of a hub node transport element operable to “selectively pass or terminate”
traffic on the optical ring because Way selectively terminates traffic on an
optical ring. Accordingly, Appellants arguments in this respect are
unconvincing and we will sustain the anticipation rejection of these claims.
Obviousness Rejection
Based on Appellants’ failure to address the Examiner’s prima facie
case of obviousness, Appellants have failed to show that the Examiner erred
in determining that Way and Johnson teach or suggest the optical network
and method of communicating using an optical network as recited in claims
4, 11, 15, and 19. Accordingly, we will sustain the Examiner’s obviousness
rejection of these claims.
Summary
We conclude that Appellants have adequately shown the Examiner
erred in rejecting claims 35 to 46 under 35 U.S.C. § 102(e). Appellants have
not shown the Examiner erred in rejecting claims 1 to 3, 5 to 10, 12 to 14, 16
to 18, and 20 to 34 under 35 U.S.C. § 102(e), and in rejecting claims 4, 11,
15, and 19 under 35 U.S.C. § 103(a).

ORDER
The decision of the Examiner rejecting claims 1 to 34 is affirmed.
The decision of the Examiner rejecting claims 35 to 46 is reversed.
Accordingly, the decision of the Examiner is affirmed-in-part.

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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-IN-PART

KIS

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