Ex Parte Winzer et al

Patent Trial and Appeal Board

Aug 7, 2017

13332588 (P.T.A.B. Aug. 7, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/332,588 12/21/2011 Peter J. Winzer 808639-US-NP 4350
46850 7590 08/09/2017
MENDELSOHN DUNLEAVY, P.C.
1500 JOHN F. KENNEDY BLVD., SUITE 312
PHILADELPHIA, PA 19102
EXAMINER
JACOB, OOMMEN
ART UNIT PAPER NUMBER
2637
NOTIFICATION DATE DELIVERY MODE
08/09/2017 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):
docketing @ mendelip .com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER J. WINZER and GERARD J. FOSCHINI1
Appeal 2017-000298
Application 13/332,588
Technology Center 2600
Before MAHSHID D. SAADAT, JOHN P. PINKERTON, and
CARL L. SILVERMAN, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 5, 6, 10, 11, 14, and 16, which are the only
claims pending in the application. Claims 3, 8, 9, 12, 13, 15, 17, 19, and 20
are canceled.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Alcatel-Lucent USA Inc. as the real party in interest.
App. Br. 2.
2 Claims 4, 7, and 18 are objected to, but those objections are not before us.
Claims 21—26 are allowed.
Appeal 2017-000298
Application 13/332,588
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention is generally directed to
“equipment for establishing and operating multiple-input/multiple-output
(MIMO) optical-transport channels over a multimode or multicore
fiber.” Spec. 1,11. 19-21.3
Claim 1 is representative and reproduced below (with the disputed
limitations emphasized)'.
1. An optical system, comprising:
an optical-mode-coupling (OMC) device configured to
address a first subset of spatial modes of an optical link;
a controller configured to reconfigure the OMC device to
address a second subset of spatial modes of the optical link
during transmission of an optical signal carrying an FEC-
encoded block of data through said OMC device and said
optical link, wherein the second subset differs from the first
subset by one or more spatial modes', and
an FEC encoder configured to generate a plurality of data
streams carrying the FEC-encoded block of data; and
wherein the OMC device is configured to address the
first subset of spatial modes during a portion of the
transmission of the optical signal carrying said FEC-encoded
block of data and is configured to address the second subset of
spatial modes during another portion of the transmission of the
optical signal carrying said FEC-encoded block of data.
3 Our Decision refers to the Final Action mailed Sept. 29, 2015 (“Final
Act.”); Appellants’ Appeal Brief filed Feb. 11, 2016 (“App. Br.”) and Reply
Brief filed Sept. 30, 2016 (“Reply Br.”); the Examiner’s Answer mailed
Aug. 1, 2016 (“Ans.”); and the original Specification filed Dec. 21, 2011
(“Spec.”).
2
Appeal 2017-000298
Application 13/332,588
Rejections on Appeal
Claims 1, 2, 5, 6, 14, and 16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Essiambre et al. (US 2010/0329670 Al;
published Dec. 30, 2010) (“Essiambre”), Endo et al. (US 2009/0128883 Al;
published May 21, 2009) (“Endo”), and AAPA (Official Notice of FEC
encoding).
Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Essiambre, Endo, AAPA, and Chen (US 2010/0329693
Al; published Dec. 30, 2010).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Briefs and are not persuaded the Examiner has erred.
Unless otherwise noted, we adopt as our own the findings and reasons set
forth by the Examiner in the Office Action from which this appeal is taken
(Final Act. 5—9) and in the Examiner’s Answer (Ans. 2—7), and we concur
with the conclusions reached by the Examiner. For emphasis, we consider
and highlight specific arguments as presented in the Briefs.
Rejection of Claims 1, 2, 5, 6, 14, and 164 under § 103(a)
The Examiner rejects claim 1 based on the combined teachings of
Essiambre, Endo, and AAPA. See Final Act. 5—6. The Examiner finds
Essiambre teaches:
4 Appellants argue claims 1, 2, 5, 6, 14, and 16 as a group, focusing on claim
1. App. Br. 4—11. Thus, we decide the rejection of these claims on the basis
of representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
3
Appeal 2017-000298
Application 13/332,588
1. “an optical-mode-coupling (OMC) device configured to address
a first subset of spatial modes of an optical link” (Final Act. 5
(citing Fig. 3a, item 340));
2. “reconfiguring the OMC device to address a second subset of
spatial modes of the optical link during transmission of an
optical signal carrying [a] block of data through said OMC
device” {id. (citing Fig. 5, Tflf 72—73 (“discloses reconfiguring
the SLM [spatial light modulator]”))); and
3. “wherein the OMC device is configured to address the first
subset of spatial modes during a portion of the transmission . . .
and . . . address the second subset of spatial modes during
another portion of the transmission” {id. (citing 173 (“discloses
‘change in the transverse mode assignment”))).5
The Examiner finds “Endo teaches a controller controlling the SLM.”
Final Act. 6 (citing Endo Fig. 1). The Examiner further finds AAPA teaches
“an FEC6 encoder configured to generate a plurality of data streams carrying
the FEC-encoded block of data.” Id. (citing AAPA).
Appellants contend the rejection of claim 1 is improper for three
reasons:
1. Endo is not a proper reference because it is not analogous art to
the claimed invention (App. Br. 5—7);
5 The Examiner may have mistakenly referred to paragraph 73, rather than
paragraph 72, because we note paragraph 72 states “SLM 520 is a
reconfigurable device” and “[t]his feature can be useful, e.g., to enable a
relatively easy change in the transverse-mode assignment for different
optical channels of OMC module 500.” See Essiambre 172,11. 1—6.
6 FEC is defined in the Specification as “forward error correction.” Spec. 3,
11. 3^4.
4
Appeal 2017-000298
Application 13/332,588
2. the Examiner has failed to make a prima facie case of
obviousness with respect to the “controller” limitation of claim
1 (see App. Br. 5—7; Reply Br. 2-4);
3. the Examiner’s rejection is based on the improper use of
hindsight (see App. Br. 10-11).
We are not persuaded by Appellants’ contentions that the Examiner
erred.
Analogous Art Issue
Regarding Appellants’ contention that Endo is not analogous art,
Appellants argue Endo is not from the same field of endeavor —
“establishing and operating multiple-input/multiple-output (MIMO) optical-
transport channels over a multimode or multi-core fiber” (App. Br. 6
(emphasis omitted) (citing Spec. 1,11. 18—21)) — or reasonably pertinent to
the problem faced by the inventor of “how to overcome certain ‘limitations
of FEC coding, as applied to under-addressed optical MIMO systems’” (Id.
(emphasis omitted) (citing Spec. 8,11. 3—5)). According to Appellants, Endo
is directed to achieving optical quality of image display in image projection,
which has nothing to do with overcoming limitations of FEC coding,
especially because Endo does not mention terms such as “MIMO,”
“multimode,” “fiber,” and “FEC,” or equivalents. Id.
We are not persuaded by Appellants’ arguments. The Examiner finds
that Appellants’ Specification indicates one problem that needs solution is
dynamically and intelligently managing the OMC device, which the
Examiner finds corresponds to the “reconfiguration capability for the OMC
device, as recited in [the] claims.” Ans. 2 (citing Spec. 2,11. 21—23). Thus,
the Examiner finds that “at the time of [the] invention the reconfiguration
5
Appeal 2017-000298
Application 13/332,588
capability is one problem faced by [the] inventor.” Id. at 2—3. The
Examiner also finds:
A controller as taught in Endo would have commended itself to
the inventor, since Endo clearly shows a controller for SLM
device, which in turn is used in Essiambre to implement the
OMC device in Essiambre. Hence, [the] reference Endo would
have helped [the] inventor solve the problem to find a controller
for reconfiguring the OMC device.
Id. at 3.
In the Reply Brief, Appellants do not address or attempt to rebut the
Examiner’s findings. For the reasons discussed by the Examiner, the
preponderance of the evidence supports the Examiner’s findings. Thus, we
agree with the Examiner’s finding that Endo is analogous prior art to claim 1
because it is reasonably pertinent to the problem facing the inventors of the
reconfiguration capability of the OMC device.
Obviousness of Claim 1 Issue
Regarding Appellants’ contention that the art does not teach the
“controller” limitation of claim 1, Appellants argue Endo’s control unit
serves to reconfigure the spatial light modulator (SLM) between red, green,
and blue laser pulses to enable the video projector to display the whole color
image using a single SLM and does not teach or suggest “reconfiguring the
SLM for any other purpose.” App. Br. 8. Appellants argue that AAPA, as
applied by the Examiner, merely shows that FEC is known, but does not
attempt to show why the specific use of FEC encoding in conjunction with
controllable changes of addressed spatial modes of the optical link would
have been obvious to a person of ordinary skill in the art. Id. According to
Appellants, the recitation of “an FEC encoder” in claim 1 “provides an
implicit limitation on the structure of the claimed apparatus,” i.e., the
6
Appeal 2017-000298
Application 13/332,588
controller to reconfigure the OMC device. Id. at 8—9 (citing Spec. 33,11. 20—
32); Reply Br. 2. Appellants also argue that, by finding “Endo’s control unit
can be used as an example of the ‘controller’ recited in claim 1,” the
Examiner “essentially states” the control unit that serves to reconfigure the
SLM of Endo “can have the same structure as the ‘controller’ that can
‘reconfigure the OMC device’” and this “constitutes a clear substantive
error.” App. Br. 9. In that regard, Appellants argue the Examiner’s finding
is in error because (1) the Examiner has not shown Endo’s control unit is
“capable of acquiring the requisite timing of the FEC-encoded bock of data”
and (2) Endo’s control unit and the “controller” of claim 1 cannot have the
same structure as “Endo does not deal with FEC-encoded blocks of data.”
Id. at 9—10. Appellants further argue the Examiner has admitted “that the
combination of Essiambre and Endo does not teach a controller that can
reconfigure an OMC device during transmission of FEC-encoded data”
because Essiambre and Endo are “devoid of the use of FEC encoding.”
Reply Br. 3^4. Thus, according to Appellants, the entirety of the
characteristics of the claimed “controller” “must be made obvious using the
AAPA,” but “the essence and scope of the AAPA is summarized by the
Examiner as ‘FEC is well known.’” Id. at 4. Appellants also argue the
Examiner errs (1) in relying on claim 14 in finding the reconfiguration of the
OMC device by the controller in claim 1 “is made randomly and not based
on any criteria” and (2) in finding the claims do not recite any “specific use”
of FEC coding in conjunction with controllable changes of addressed spatial
modes. Reply Br. 4—5.
We are not persuaded by Appellants’ arguments. First, Appellants’
arguments that Endo’s control unit does not teach “reconfiguring the SLM
7
Appeal 2017-000298
Application 13/332,588
for any other purpose” (App. Br. 8) and Essiambre and Endo do not teach
“a controller that can reconfigure an OMC device during transmission of
FEC-encoded data” (Reply Br. 3 4) are not persuasive because they fail to
address the rationale of the Examiner’s rejection, which is based on the
combined teachings of Essiambre, Endo, and AAP A, and instead attack the
references individually or in pairs. See Ans. 5—6. Non-obviousness cannot
be established by attacking references individually where the rejection is
based upon the teachings of a combination of references. In re Merck & Co.
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The relevant inquiry is whether
the claimed subject matter would have been obvious to those of ordinary
skill in the art in light of the combined teachings of the references. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Here, the Examiner relies on
Essiambre, rather than Endo, “to teach all [of the] functional limitations . . .
being performed during OMC reconfiguration” and relies on Endo “to show
a physical controller that is used to control an SLM.” Ans. 5—6. As stated
supra, the Examiner relies on AAPA to teach an FEC encoder to generate
data streams carrying the FEC-encoded block of data. Final Act. 6. Thus,
Appellants’ argument that the Examiner has “admitted” the combination of
Essiambre and Endo does not teach the claimed “controller” because they
are devoid of FEC encoding is not persuasive because the Examiner relies
on the combination of Essiambre, Endo, and AAPA to teach the “controller”
of claim 1.
Second, we are unpersuaded by Appellants’ argument that the
Examiner has not shown the use of FEC encoding in conjunction with
controllable changes of addressed spatial modes would have been obvious to
a person of ordinary skill in the art. App. Br. 8. In that regard, the Examiner
8
Appeal 2017-000298
Application 13/332,588
determines, and we agree, “[t]he claims do[] not explicitly recite any
‘specific use’ of FEC encoding in conjunction with controllable changes of
addressed spatial modes,” but only “that the data supplied to the OMC
device is FEC coded before being sent to [the] OMC device.”7 Ans. 4.
Thus, Appellants’ argument is not commensurate with the scope of claim 1.
Third, we are not persuaded by Appellants’ arguments relating to the
“structure” of the “controller” of claim 1. App. Br. 8—9; Reply Br. 2.
Contrary to Appellants’ arguments, we conclude there is no “implicit
limitation” on the “controller” of claim 1 because an FEC encoder is recited
in the claim or because of “the requisite timing of the FEC-encoded block[s]
of data.” These arguments, therefore, are not commensurate with the scope
of claim 1. In addition, the portion of the Specification cited by Appellants
(Spec. 33,11. 20-32) does not describe a particular or specific “controller.”
See App. Br. 8—9.
Fourth, we are not persuaded by Appellants’ argument that the
Examiner errs by finding the control unit of Endo can have the “same
structure” as the claimed “controller.” App. Br. 9. Appellants’ argument is
unpersuasive because the Examiner did not expressly find the structure of
the control unit in Endo is the “same” as the claimed “controller.” Instead,
7 For the same reason, we are not persuaded by Appellants’ argument that
the “wherein” clause of claim 1 recites any specific use of FEC encoding in
conjunction with controllable changes of addressed spatial modes. See
Reply Br. 5. Regarding Appellants’ argument that the Examiner improperly
relied on claim 14 in finding there is no recitation of how the data being FEC
coded affects the reconfiguration (see Reply Br. 4—5), we are not persuaded
of reversible error because we do not rely on claim 14 in concluding claim 1
does not recite any specific use of FEC encoding in conjunction with
controllable changes of addressed spatial modes.
9
Appeal 2017-000298
Application 13/332,588
the Examiner finds Endo teaches “a controller for physically implementing a
dynamic[] change or adjustment [of the SLM].” Ans. 3^4. Furthermore,
Appellants merely infer such a finding by stating the Examiner “essentially
states” the control unit of Endo can have the same structure as the
“controller” of claim 1 “by alleging that Endo’s control unit can be used as
an example of the ‘controller’ recited in claim 1.” App. Br. 9.
Improper Hindsight Issue
Regarding Appellants’ contention that the Examiner’s rejection is
based on an “improper use of hindsight,” Appellants argue the teachings of
the prior art “are disparate because (i) Essiambre is from the general field of
optical communications; (ii) Endo is from the general field of video
projection; and (iii) AAPA is based on the general knowledge from the field
of error correction.” App. Br. 10. Appellants also argue that “[wjithout the
benefit of hindsight, it would not have been obvious to a person of ordinary
skill in the pertinent art at the time of the present invention to combine these
disparate prior-art teachings.” Id.
We are not persuaded by Appellants’ arguments. It must be
recognized that any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning. However, so long as it takes
into account only knowledge which was within the level of ordinary skill at
the time the claimed invention was made, and does not include knowledge
gleaned only from the Appellant’s disclosure, such a reconstruction is
proper. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here,
the Examiner finds, and we agree, “all limitations have been shown to be
taught by prior art references or AAPA” and “[t]he reconstruction does not
include . . . knowledge gleaned only from the applicant’s disclosure.” Ans.
10
Appeal 2017-000298
Application 13/332,588
6. Thus, we conclude the Examiner did not use impermissible hindsight
because the rejection is based on the references and what they would have
taught or suggested to a person of ordinary skill in the art.
Accordingly, we are not persuaded the Examiner erred in (1) finding
the combined teachings of Essiambre, Endo, and AAPA teach or suggest the
disputed limitations of claim 1 and (2) concluding that the combination of
the teachings of these references renders the subject matter of claim 1
obvious under 35 U.S.C. § 103(a). Thus, we sustain the Examiner’s
rejection of claim 1. For the same reasons, we sustain the Examiner’s
rejection of independent claim 16, as well as dependent claims 2, 5, 6, and
14.
Rejection of Claims 10 and 11 under § 103(a)
Appellants advance no separate, substantive arguments for claims 10
and 11. Instead, Appellants argue the rejection of these claims is improper
for the same reasons indicated regarding independent claim 1. App. Br. 12.
However, for the reasons discussed above, the Examiner properly rejected
independent claim 1. Therefore, we sustain the rejection of claims 10 and
11.
DECISION
We affirm the Examiner’s rejections of claims 1, 2, 5, 6, 10, 11, 14,
and 16 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
11