Ex Parte Tomioka

Board of Patent Appeals and Interferences

Oct 10, 2007

10038545 (B.P.A.I. Oct. 10, 2007)

The opinion in support of the decision being entered
today is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KATSUMI TOMIOKA
____________

Appeal 2007-2374
Application 10/038,545
Technology Center 2600
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Decided: October 10, 2007
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Before KENNETH W. HAIRSTON, HOWARD B. BLANKENSHIP, and
ROBERT E. NAPPI, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1 to 12. We have jurisdiction under 35 U.S.C. § 6(b).
We will sustain the rejection.
STATEMENT OF THE CASE
Appellant has invented a system and method of measuring the
transmission line distance between each of a plurality of subscriber units and
Appeal 2007-2374
Application 10/038,545

station equipment by comparing a distance measuring control signal returned
from each of the subscriber units with a reference value (Figures 1 and 2;
Specification 4, 11 and 21).
Claim 1 is representative of the claims on appeal, and it reads as
follows:
1. An optical subscriber system comprising: station equipment; a
plurality of subscriber units; a transmission line for transmitting trailing
signals from the station equipment to the plurality of subscriber units and
transmitting leading signals from the plurality of subscriber units to the
station equipment; and a star coupler for branching trailing signals and
combining the leading signals,
the station equipment comprising a transmission line distance
monitor/processor unit which sends a distance measuring control signal to
each of the subscriber units, measures, based on a distance measuring signal
returned from each of the subscriber units, the transmission line distance
between the station equipment and each of the subscriber units, and judges
whether the transmission line distance is larger or smaller than a
predetermined reference value.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Effenberger US 5,930,018 Jul. 27, 1999
Tochio US 6,563,613 B1 May 13, 2003
(filed Dec. 2, 1998)
The Examiner rejected claims 1 to 12 under 35 U.S.C. § 103(a) based
upon the teachings of Tochio and Effenberger.
Appellant contends that the claims on appeal explicitly require that the
measured values are compared to a predetermined1 reference value, whereas

1 A “reference value” is described throughout the disclosure, but a
“predetermined reference value” is not mentioned in the disclosure.
2
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Application 10/038,545

all of the distances in Effenberger “are measured, and none of them are
determined beforehand (i.e., predetermined)” (Br. 7).
ISSUE
Does the applied prior art teach or would it have suggested to the
skilled artisan a comparison of a measured distance value to a predetermined
reference value?
FINDINGS OF FACT
Appellant has not challenged the Examiner’s findings that Tochio
describes all of the optical subscriber system structure and steps set forth in
claims 1 and 5, respectively, except for the station equipment judging
“whether the transmission line distance is larger or smaller than a
predetermined reference value” (Final Rejection 2).
Effenberger describes a passive optical network that determines the
distance of each optical network unit (ONU) from the central optical line
termination unit (OLT) (col. 2, ll. 36 to 39). The respective distances are
listed “in ascending order from nearest to farthest” from the OLT (i.e., the
ONU distances are compared to each other) (col. 2, ll. 52 to 54). Based on
the respective distances of the ONUs from the OLT, the ONUs communicate
with the OLT “in ascending order of nearest to farthest” (col. 3, ll. 18 to 22).
PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, then the burden shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
See Id.
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Application 10/038,545

The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
The claims on appeal should not be confined to specific embodiments
described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323,
75 USPQ2d 1321, 1334 (Fed. Cir. 2005) (en banc). During ex parte
prosecution, claims must be interpreted as broadly as their terms reasonably
allow since Applicants have the power during the administrative process to
amend the claims to avoid the prior art. In re Zletz, 893 F.2d 319, 321-22,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
ANALYSIS
The Examiner contends that a reference value in Effenberger is a
previously measured ONU distance value that is used in the noted
comparison with a subsequently measured ONU distance value (Final
rejection 3 and 5). We agree with the Examiner’s reasoning that a
previously measured distance value in Effenberger becomes a reference
value for a subsequently measured distance value during the ordering of the
measured distance values “in ascending order from nearest to farthest” from
the OLT.
The disclosed and claimed invention does not explain how and at
what time a reference value becomes a “predetermined” reference value.
Thus, Appellant’s argument that a measured distance value is not a reference
value “determined beforehand” is without merit since the claims are
interpreted as broadly as their terms reasonably allow during ex parte
prosecution (Br. 7).

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Application 10/038,545

CONCLUSION OF LAW
The Examiner has established the obviousness of claims 1 and 5. The
obviousness of claims 2 to 4 and 6 to 12 has been established by the
Examiner because Appellant has not presented any patentability arguments
for these claims apart from the arguments presented for claims 1 and 5.
DECISION
The obviousness rejection of claims 1 to 12 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).
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Application 10/038,545

AFFIRMED

eld

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