DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 04/10/2026 has been entered.
Claim Objections
Claims 1, 6, 9, and 11 are objected to because of the following informalities: claims 1 and 6 recite “a downstream RF signal” but then they and several dependent claims refer to it as “the downstream signal” leading to an inconsistency. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: the claim refers to “the reflections” when the previous recitation is “RF reflections” leading to an inconsistency. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding independent claims 1, 6, and 13, the final clause in each claim in effect recites “attenuating RF reflections of the downstream signal while present in RF spectrum associated in the ONU with upstream signals”. However, it is unclear based on the wording what “associated in the ONU with upstream signals” means. When looking to the Specification, it appears that the spectrum of the downstream RF signal overlaps in spectrum with at least one of the upstream RF signals sent to the ONU from subscribers and it is the overlapped portion that is attenuated in reflections of the downstream signal. However, this does not seem readily apparent from the current wording of the claims. Dependent claims 2-5, 9-12, and 15-21 do not cure the independent claims of this issue and are similarly rejected.
Further regarding independent claims 1 and 6, each claim in effect recites an ONU comprising “an optical first input comprising a downstream Radio Frequency (RF) signal”. (emphasis added) However, it does not make sense to say an ONU or any other piece of equipment comprises a signal since the ONU is still an ONU regardless on if signals are sent to it. It appears from reading the Specification that the optical first input receives a downstream RF signal which is more standard in the art. Furthermore, taking this interpretation, it is unclear based on the current wording how an optical first input would interface with a head end via an RF signal as claimed. As worded in independent claim 13 and consistent with the Specification, the downstream RF signal is sent optically which should be indicated in the other independent claims. Dependent claims 2-5 and 9-12 do not cure claims 1 and 6 of these issues and are similarly rejected.
Claim 2 recites the limitation "the downstream direction". There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "the plurality of high isolation ports". There is insufficient antecedent basis for this limitation in the claim. Dependent 5 does not cure claim 4 of this issue and is similarly rejected.
Regarding claims 5, 7, 8, 12, and 14, each of the claims recite rejecting or canceling of “reflections”. However, it is unclear if these “reflections” are supposed to be the same reflections of the downstream signal as recited in the independent claims or if they are some other reflections in the system. Furthermore, due to the open-ended way the reflections are recited, it is unclear if these are supposed to include virtually any reflections in the system (e.g. even optical reflections) or if they are supposed to be limited to a specific domain.
Further regarding claim 12, the claim recites that the ONU attenuates reflections using at least one of an active amplifier and a switched filter. However, based on the current claim language, it is unclear how an ONU would use either of these elements to accomplish this or even if they are supposed to be comprised within the ONU or somehow otherwise connected to the ONU.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a limited scope based on the teachings in the application, does not reasonably provide enablement for full scope of the claims. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Regarding independent claims 1, 6, and 13, each claim has been amended to include a variation of a port interface capable of attenuating RF reflections of a downstream signal when it overlaps in spectrum with upstream signals. However, as with the previous rejection in the action dated 04/22/2024 regarding “ports” being able to perform this function, an “interface” has not been redefined in the Specification nor have the element(s) in Figure 47 which actually perform this function (paragraphs [0238] and [0241] of the published application clearly state that the controllable switch filters 326 of Figure 47 attenuate reflection of downstream signals that overlap in spectrum with upstream signals) ever been referred to as being in an “interface”. Applicant is still assigning functionality to a claimed element that is not commensurate with what one of ordinary skill in the art would apply normally apply to it and which is expressly described in the application as being performed by another element.
The direction and examples provided by Applicant appear to be enabling for a limited scope of the invention (i.e. the structure shown in Figure 47), but not for the full scope of the claims. While the claims do not need to include every detail of the embodiments disclosed in the application, the scope of the claims must be commensurate with the teachings of the application. In the present case, the claimed port interfaces are written in terms of functional language that results in a broad scope and includes ways to achieve the desired results that are very different from the teachings of the application. The nature of the invention is optical transmission and reception of RF signals and one or ordinary skill would know how to make and use the disclosed invention from the teachings of the application. One of ordinary skill would also know how to perform other tasks in the present technological area and related to the invention, such other pre and post processing methods for ensuring the RF data is not corrupted. However, without additional guidance and teaching, one or ordinary skill would not be able to make and use the invention without the specific elements or method steps for attenuating reflections of a downstream signal (e.g. switch filters 326 of Figure 47). One of ordinary skill could follow the teachings of the application and make and use the structure taught in the application, and could implement some variations to those teachings. However, the application does not provide the guidance needed for the full scope of the claims.
To bridge this gap, additional inventing will be required to create new forms of “port interfaces” to perform the recited functions without the unclaimed structures or method steps from the disclosed embodiments, and to invent new combinations of method steps for achieving the desired results (i.e. alternative ways of attenuating such signals). As a result, the claims have a scope that would include structures and combinations of steps that are not commensurate with the teachings of the present application and would “pre-empt the future” by claiming a scope that includes future inventions that are useful in communications networks, but for which the inventors have not provided teachings to allow one of ordinary skill to make or use the full scope of the claimed invention.
When weighing all of the factors, particularly the disparity between the scope of the claims and the teachings and direction of the application, undue experimentation would be required to make and use the full scope of the claims. Dependent claims 2-5, 9-12, and 15-21 are rejected due to the dependence on the independent claims (NOTE: some dependent claims as noted above do recite this structure but they are not specifically tied to the functions required in the independent claims).
Allowable Subject Matter
Independent claims 1, 6, and 13 would be allowable if amended in the following way:
Claim 1. (Currently Amended) An Optical Network Unit (ONU) comprising:
an optical first input configured to receive a downstream Radio Frequency (RF) signal from a head end as an optical signal; and
a plurality of high isolation ports
each high isolation port coupled to a respective filter which is capable of attenuating RF reflections of the downstream RF signal which overlap in RF spectrum an upstream RF signal[[s]] sent to the ONU.
Claim 6. (Currently Amended) A system comprising:
a head end;
an Optical Network Unit (ONU) comprising an optical first input configured to receive a downstream Radio Frequency (RF) signal from the head end as an optical signal and a plurality of ports
a plurality of cable modems each connected to a respective one of the plurality of portscoupled to a respective filter capable of attenuating reflections of the downstream RF signal which overlap in RF spectrum an upstream RF signal[[s]] sent by a cable modem, and reflected from at least one of the plurality of cable modems.
Claim 13. (Currently Amended) A method comprising:
propagating an optically-received downstream signal from a head end to each of a plurality of subscribers through an Optical Network Unit (ONU) connected to the head end by an optical cable and each of the plurality of subscribers by a Radio Frequency (RF) coaxial cable;
propagating respective upstream signals from each of the plurality of subscribers through the ONU to the head end; and
attenuating, in a filter connected to a high isolation port , RF reflections of the downstream signal which overlap in RF spectrum an upstream signal[[s]] received by the high isolation port.
Note that these are merely suggestions and other proposals will be considered. These amendments also do not cure the dependent claims of their issues noted above.
Conclusion
The Examiner attempted twice to reach an attorney of record to fix the issues noted above but was unable to do so in a timely fashion.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CASEY L KRETZER whose telephone number is (571)272-5639. The examiner can normally be reached M-F 10:00-7:00 PM Pacific Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Payne can be reached at (571)272-3024. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CASEY L KRETZER/Primary Examiner, Art Unit 2635
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