Ex Parte Wan et al

Patent Trial and Appeal Board

Feb 16, 2016

12916028 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/916,028 10/29/2010
76614 7590
Terry W. Kramer, Esq.
Kramer & Amado, P.C.
330 John Carlyle Street
3rd Floor
Alexandria, VA 22314
02/18/2016
FIRST NAMED INVENTOR
PingW. Wan
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
ALC 3562 8781
EXAMINER
LIU,LI
ART UNIT PAPER NUMBER
2636
NOTIFICATION DATE DELIVERY MODE
02/18/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mail@krameramado.com
ipsnarocp@alcatel-lucent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PING W. WAN and DERRICK REMEDIOS
Appeal2014-002206
Application 12/916,028
Technology Center 2600
Before KAL YANK. DESHPANDE, DAVID M. KOHUT, and
JUSTIN T. ARBES, Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-002206
Application 12/916,028
STATEMENT OF CASE1
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner's
Final Rejection of claims 1, 2, 5-9, 11, 12, and 15-20.2 We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We REVERSE.
INVENTION
The invention is directed to optical transmission systems and
performance measurement. Spec. ,-r 1.
Claim 1 is illustrative of the invention and is reproduced below:
1. A method for in-band measurement of an optical signal-
to-noise ratio (OSNR) by a demodulation device, the method
compnsmg:
receiving an optical payload containing a low-frequency
signal;
filtering a first passband of the optical payload in an
optical channel;
converting the first passband-filtered optical signal to a
first target electrical signal;
measuring DC and AC components of the first target
electrical signal;
filtering a second passband of the optical payload within a
bandwidth of the optical channel;
converting the second passband-filtered optical signal to a
second target electrical signal;
measuring DC and AC components of the second target
electrical signal; and
1 Our decision makes reference to Appellants' Reply Brief ("Reply Br.,"
filed Dec. 3, 2013), and Appeal Brief ("App. Br.," filed Aug. 13, 2013), and
the Examiner's Answer ("Ans.," mailed Oct. 3, 2013) and Final Office
Action ("Final Act.," mailed Apr. 22, 2013).
2 Claims 3, 4, 10, 13, 14, and 21 are indicated as containing allowable
subject matter, but objected to as being dependent on a rejected base claim.
Final Act. 6.
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Appeal2014-002206
Application 12/916,028
determining the OSNR of the optical channel, wherein the
OSNR of the optical channel is based on a first ratio between the
DC components of the first and second target electrical signals
and a second ratio between the AC components of the first and
second electrical signals.
REJECTION AT ISSUE
Claims 1, 2, 5-9, 11, 12, and 15-20 stand rejected under 35 U.S.C.
§ 112, first paragraph, for lack of enablement." Final Act. 4--5; Ans. 2-3.
ISSUE
Did the Examiner err in concluding that claims 1, 2, 5-9, 11, 12, and
15-20 lack enablement?
ANALYSIS
Independent claims 1 and 11 recite filtering first and second
"passband[s] of [an] optical payload in an optical channel," converting the
first and second "passband-filtered optical signal[s] to []target electrical
signal[s]," and "measuring DC and AC components of the []target electrical
signal[s]." An optical signal-to-noise ratio (OSNR) is then determined based
on the DC and AC components of the "first and second target electrical
signals." See claims 1 and 11. Claims 2, 5-9, 12, and 15-20 are dependent
upon one of the independent claims.
The Examiner finds that, in order to practice the claimed inventions,
the locations and relative powers of the first and second pass bands must be
specified. Final Act. 4-5. Therefore, because these values are not included
in the claims, the Examiner finds that the claims are not enabled. Final Act.
4--5 (citing In re Mayhew, 527 F.2d 1229, 1233 (CCPA 1976)); Ans. 3---6.
Additionally, the Examiner cites to paragraphs 39--40 and 65---67 of the
Specification to demonstrate the critical or essential nature of the locations
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Appeal2014-002206
Application 12/916,028
and relative powers of the first and second pass bands to practice the claimed
invention. Final Act. 4--5; Ans. 2-3, 6-7. According to the Examiner,
"[i]f the measured power of the first passband is the same as the measured
power of the second passband," the equation described in the Specification
and recited in dependent claims 2 and 12 is undefined; therefore, a power
difference (e.g., "at least 10%" as described in the Specification) is a
"critical/essential" feature that is not recited in the claims. Final Act. 4--5.
Appellants argue that the locations and relative powers of the first and
second passbands are not critical or essential, but are instead only arbitrary.
App. Br. 5, 8-9; Reply Br. 3-4, 7. Appellants also contend that one skilled
in the art would be able to practice the inventions as claimed without undue
experimentation. Id.
We agree with Appellants. Where a claim fails to recite a feature
described in the specification as being critical or essential to the claimed
invention, the claim fails to comply with the enablement requirement of
under 35 U.S.C. § 112, first paragraph. Mayhew, 527 F.2d at 1233.
However, features that are merely preferred are not critical. In re Goffe,
F.2d 564, 567 (CCPA 1976). Appellants argue that the Specification
generally, and the sections cited by the Examiner, merely disclose
illustrative embodiments of the invention and do not describe the locations
and relative powers of the first and second pass bands as critical or essential
subject matter necessary to practice the invention. App. Br. 5---6; Reply Br.
2, 6; see Spec. i-fi-139, 40, 65 (referring to an "illustrative embodiment,"
"some embodiments," "alternative embodiments," etc.). Because we
determine that a person with ordinary skill in the art would not require undue
experimentation to practice the claimed invention without locations of the
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Application 12/916,028
passbands, we determine that the Examiner fails to establish that the claims
lack enablement.
Accordingly, we cannot sustain the Examiner's rejection of
independent claims 1 and 11, as well dependent claims 2, 5-9, 12, and 15-
20.
CONCLUSION
The Examiner erred in concluding that claims 1, 2, 5-9, 11, 12, and
15-20 lack enablement.
DECISION
The Examiner's decision to reject claims 1, 2, 5-9, 11, 12, and 15-20
under 35 U.S.C. § 112, first paragraph, for lack of enablement is reversed.
REVERSED
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