Jeff Finkelstein

Patent Trials and Appeals Board

Nov 13, 2019

13241055 - (D) (P.T.A.B. Nov. 13, 2019)

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.
13/241,055 09/22/2011 Jeff Finkelstein 33020-RA21/10209-US1 1000
124538 7590 11/13/2019
Cox Communications, Inc.
c/o Next IP Law Group LLP
131 S Cortez St
New Orleans, LA 70119
EXAMINER
ANDREWS, HOYET H
ART UNIT PAPER NUMBER
2411
NOTIFICATION DATE DELIVERY MODE
11/13/2019 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):
bbalser@nextiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFF FINKELSTEIN
Appeal 2018-009220
Application 13/241,055
Technology Center 2400
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).

1 We refer to the Specification, filed September 22, 2011 (“Spec.”); Final
Office Action, mailed August 31, 2017 (“Final Act.”); Appeal Brief, filed
March 28, 2018 (“Appeal Br.”); Examiner’s Answer, mailed July 25, 2018
(“Ans.”); and Reply Brief, filed September 25, 2018 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2017). Appellant identifies the real party in interest as Cox
Communications, Inc. Appeal Br. 1.
Appeal 2018-009220
Application 13/241,055
2
We AFFIRM.
PRIOR APPEAL
This Application was subject to a prior appeal 2016-002274, decided
on December 5, 2016 (our “prior Decision”), in which this panel of the
Board affirmed the Examiner’s rejections of all of the claims then pending
before us.3
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to moving a gateway/media
converter from inside a customer premises to outside the customer premises.
Abstract. Claim 1, reproduced below with altered formatting, is
representative of the claimed subject matter:
1. A system comprising:
a media converter located outside of customer premises, the
media converter configured
to receive packets from an access network in a first
format,
to convert the packets from the first format to second
format packets; and
to transmit second format packets from a gateway to a
plurality of customer premises equipment units
(CPEUs) located in a plurality of customer
premises; and

3 For purposes of future proceedings before the Board, Appellant and
Appellant’s counsel are reminded of their duty to identify prior and pending
appeals that “involve an application or patent owned by the appellant or
assignee, are known to appellant, the appellant’s legal representative, or
assignee, and may be related to, directly affect or be directly affected by or
have a bearing on the Board’s decision in the pending appeal, except that
such statement is not required if there are no such related cases.” 37 C.F.R.
§ 41.37(c)(ii).
Appeal 2018-009220
Application 13/241,055
3
one or more point of entry filters located outside the customer
premises configured to prohibit a user inside a customer
premises from receiving communications not intended for
that user.
REFERENCES 4
The prior art relied upon by the Examiner is:
Name Reference Date
Biegert et al. US 2009/0060531 Al Mar. 5, 2009
Non-Patent Literature
Chinlon Lin, Broadband Optical Access Networks and Fiber-to-the-
Home: Systems Technologies and Deployment Strategies, John Wiley
& Sons, 2006.
Frank Effenberger & Tarek S. El-Bawab, Passive Optical Networks
(PONs): Past, Present, and Future, Optical Switching and
Networking, vol. 6, no. 3, 2009, pp. 143–150.,
doi:10.1016/j.osn.2009.02.001
REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Effenberger, Biegert and Lin. Final Act. 5.
ANALYSIS
Except as noted, we adopt as our own (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Final
Act. 2–17; Ans. 3–15) and (2) the findings and reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief
(Ans. 15–26) and concur with the conclusions reached by the Examiner. We
highlight the following for emphasis.

4 All citations herein to these references are by reference to the first named
inventor/author only.
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The Examiner finds Effenberger discloses a media converter outside
of customer premises. Final Act. 8–9. The Examiner applies Biegert for
disclosing the recited media converter configuration, i.e., configured to
receive packets, convert the packets from a first to a second format, and
transmit the packets to a plurality of customer premises equipment located in
a plurality of customer premises. Id. at 9–13. The Examiner relies on Lin
for disclosing the point of entry filters of claim 1. Id. at 13–16.
Appellant contends the prior art fails to disclose a media converter
located outside of customer premises that transmits reformatted packets to a
plurality of customer premises equipment units (CPEUs) located in a
plurality of customer premises. Appeal Br. 5. Appellant argues both
Effenberger and Biegert teach moving functionality in towards, rather than
out of and away from, customer premises and into the service provider’s
physical plant. Id. at 5–6. According to Appellant “[b]y moving the
gateway for a group of customer premises into a single gateway in the
physical plant of the service provider [as per Appellant’s invention], the
customer no longer needs to maintain the gateway.” Id. at 6.
The Examiner replies, finding Effenberger’s disclosure of an access
network having central office and remote nodes connecting users to the
network teaches a media converter outside of customer premises that serves
a plurality of customer premises equipment located in a plurality of customer
premises. Ans. 17. The Examiner finds Biegert’s media converter teaches
capabilities both inside and outside of the customer premise. Id. The
Examiner provides further details about how the combination of Effenberger
and Biegert is applied in teaching or suggesting the disputed limitation at
pages 18–23 of the Answer.
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Appellant’s contention is unpersuasive of reversible Examiner error.
We agree with the Examiner in finding the combination of Effenberger and
Biegert teaches or suggests the disputed limitation of claim 1.
In interpreting the argued limitation, we note Appellant discloses
“[m]edia converter functionality in the gateway plays an important role in
today’s multiprotocol, mixed-media local area networks (LANs). For
example, LAN administrators can deploy media converters to integrate fiber
optic cabling and active equipment into existing copper-based, structured
cabling systems while achieving significant cost savings.” Spec. ¶ 21.
Thus, consistent with Appellant’s Specification, a media converter transmits
signals between different transmission media, such as between fiber optic
and copper cabling.
Effenberger discloses the transition between (optical) fiber and
(electrical) copper media can occur at various locations including at a node
(Fiber to the Node or FTTN), curb (Fiber to the Curb or FTTC), building
(FTTB), home (FTTH), and premises (Fiber to the Premises or FTTP).
Effenberger p. 144. One skilled in the art at the time of the invention would
have understood a building often includes several premises, e.g., an
apartment building including multiple dwelling units or residences. Thus,
Effenberger teaches or suggests a media converter (i.e., converting from
fiber to copper) at locations outside of customer premises (e.g., at a network
node, curb, or at some common location at or in a building) to provide
copper-based services to a plurality of customer premises (e.g., building
residents). Accordingly, Effenberger teaches or suggests the argued
limitation requiring a media converter be located outside of customer
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premises and transmit packets to a plurality of CPEUs located in a plurality
of customer premises.
Addressing Biegert, although we agree with Appellant the reference
discloses relocating optical network terminal (ONT) functionality “to a
subscriber gateway device that resides within the subscriber premises”
(Biegert ¶ 7), such relocation necessarily also discloses configurations
wherein the subscriber gateway is not relocated but remains outside the
subscriber premises. That is, Appellant’s argument that the prior art teaches
moving functionality into the customer premises (Appeal Br. 17) is a tacit
acknowledgement that Biegert also teaches the functionality can be provided
outside the customer premises. Furthermore, even though located at the
customer premise, Biegert’s Figures 5 and 6 explicitly depict an ONT
including a media converter 78 located outside (i.e., “outdoors”) rather than
inside (i.e., “indoors”) the customer premises. Furthermore, Biegert’s ONT,
including its media converter, provides services to plural customer premises
equipment units (subscriber devices) including telephone 36A, computer
36B, and television 36D as shown in the figures. Still further, Biegert
discloses:
Each one of ONTs 28 may serve a single subscriber premises, or
operate on a shared basis to deliver information to two or more
closely located residential or business subscriber premises, via
electrical connections (e.g., copper cables) or additional optical
fiber connections. ONTs 28 may deliver the information to the
two or more closely located subscriber premises either directly
or via a network hub, router or switch.
Biegert ¶ 40 (emphasis added). Thus, Biegert’s ONT and media converter
are disclosed as (i) outside of customer premises and (ii) transmitting to a
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plurality of customer premises equipment units located in a plurality of
customer premises thereby teaching or suggesting the argued limitation.
We are also unpersuaded by Appellant’s argument the prior art is
deficient because it expresses a preference to moving functionality in
towards, rather than out of and away from, customer premises. Appeal Br.
5–6. The fact that a reference discloses an alternative configuration does not
negate its disclosure of a less preferred alternative. The disclosure of a
reference is not limited to preferred embodiments or examples. In re Mills,
470 F.2d 649, 651 (CCPA 1972) (“[A] reference is not limited to the
disclosure of specific working examples.”) “[I]n a section 103 inquiry, the
fact that a specific [embodiment] is taught to be preferred is not controlling,
since all disclosures of the prior art, including unpreferred embodiments,
must be considered.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (internal quote and citation omitted). Non-preferred
embodiments of the prior art must be considered in determining
obviousness. In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979); In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976); In re Susi, 440 F.2d 442, 446 n.3
(CCPA 1971). “What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 419 (2007). To be non-obvious, the claimed
subject matter must not encompass “the predictable use of prior art elements
according to their established functions.” Id. at 417.
We note Appellant has presented no objective evidence of record that
establishes that locating a media converter outside of customer premises and
transmitting format-converted packets to a plurality of CPUs located in a
plurality of customer premises produces unexpected results. Design changes
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that do not “result in a difference in function or give unexpected results” are
“no more than obvious variations consistent with the principles known in
th[e] art” of the patent at issue and, therefore, are obvious design choices. In
re Rice, 341 F.2d 309, 314 (CCPA 1965); see also In re Chu, 66 F.3d 292,
298–99 (Fed. Cir. 1995) (determining “design choice” is appropriate where
“the applicant failed to set forth any reasons why the differences between the
claimed invention and the prior art would result in a different function or
give unexpected results”). Thus, consistent with our prior Decision,
relocating Appellant’s gateway/media converter from inside to outside a
customer premises, allowing for inferences and creative steps that an
ordinarily skilled artisan would have employed, would predictably yield no
more than one would expect. Decision 7–8.
For the reasons discussed, Appellant’s contention of error in
connection with independent claim 1 is unpersuasive of reversible Examiner
error. Appellant’s arguments in connection with independent claims 10 and
19 are substantially similar to those presented in connection with
independent claim 1 (Appeal Br. 7–12) and are unpersuasive for similar
reasons. Dependent claims 2–9, 11–18, and 20 are not argued separately
and, therefore, fall with their respective independent claim. Accordingly, we
sustain the rejection of claims 1–20 under 35 U.S.C. § 103(a) over
Effenberger, Biegert and Lin.
DECISION
We affirm the Examiner’s rejection under 35 U.S.C. § 103.
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 § 103 Effenberger, Biegert, Lin 1–20
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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). See
37 C.F.R. § 41.50(f).

AFFIRMED