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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Response to Arguments
Applicant's arguments filed Feb 16, 2026 have been fully considered but they are not persuasive.
The rejections of the drawings are withdrawn in light of the amendments of the claims. Most of the rejections in the prior Action are withdrawn in light of the amendments. The amendments to replace “circuit” with “unit” have overcome some rejections, but have resulted in new rejections below.
Claim Interpretation - Means Plus Function
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 1, line 10: a “monitoring light generation unit”.
Claim 1, line 13: a “time synchronization unit”
Claim 1, line 16: a “light reception unit ...”.
Claim 1, lines 17 and 19: a “turnback unit ...”.
Claim 1, last paragraph: a “time control unit...”.
Claim 4: a “blocking unit...”.
Claim 5: a “passage unit...”.
Claim 7: a “signal processing unit...”.
Claim 8: a “signal processing unit...”.
Each of these “units” is coupled with functional language in the claims.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112 - Indefinite
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 1-18 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.
Claim 1, line 10, recites a “monitoring light generation unit”. This element is interpreted under 112(f) but it is not clear what particular structure is within the scope of this element. The application illustrates the invention in terms of blank boxes, as illustrated in FIG. 1.
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However, the application does not teach what particular structure is within this “unit”.
Claim 1, line 13, recites a “time synchronization unit” to perform particular functions. This element is interpreted under 112(f) but it is not clear what particular structure is within the scope of this element. See, for example, FIG. 1.
Claim 1, line 16, recites a “light reception unit ...”. This element is interpreted under 112(f) but it is not clear what particular structure is within the scope of this element. See, for example, FIG. 1.
Claim 1, line 17, recites “a turnback circuit”. It is not clear if this is the same as the turnback unit introduced in line 6 (in which case the Examiner suggests amending claim 17 to “the turnback unit” or similar language) or if it is a different turnback unit (in which case the Examiner suggests using language that clearly distinguishes the different turnback units).
Claim 1, last paragraph, recites a “time control unit...”. This element is interpreted under 112(f) and, for the reasons discussed with regard to the “monitoring light generation unit”, it is not clear what particular structure is being claimed.
Claim 4, recites a “blocking unit...”. For the reasons discussed with regard to the “monitoring light generation unit”, it is not clear what particular structure (i.e., what particular circuit) is being claimed.
Claim 5, recites a “passage unit...”. For the reasons discussed with regard to the “monitoring light generation unit”, it is not clear what particular structure (i.e., what particular circuit) is being claimed.
Claim 7, recites a “signal processing unit...”. For the reasons discussed with regard to the “monitoring light generation unit”, it is not clear what particular structure (i.e., what particular circuit) is being claimed.
Claim 8, recites a “signal processing unit...”. For the reasons discussed with regard to the “monitoring light generation unit”, it is not clear what particular structure (i.e., what particular circuit) is being claimed.
Claims 2-9 depend from one or more of the claims rejected above and fail to further limit the scope in a manner to overcome the rejections. In addition, these dependent claims recite additional functionality for the “unit” elements. For the reasons discussed in claim 1, the scope of the additional circuit elements and the additional functionality is unclear.
Claim 10 recites a method with the same general functionality/desired results as the operation of the apparatus of claim 1. For the reasons discussed in claim 1, it is not clear how the desired results/functionality is performed by the apparatus. Similarly, it is not clear what steps are within the scope of the desired results/functionality recited in method claim 10.
Claims 11-18 are rejected because they depend from claim 10 and they fail to further limit the scope in a manner to overcome the rejections.
The Examiner notes that claim 1, lines 17 and 19, recite a “turnback unit ...”. This element is interpreted under 112(f) but the application at FIG. 2 illustrates a turnback unit.
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See also, for example:
[0034] FIG. 2 illustrates one example of an optical repeater including a turnback unit. An optical repeater 30 includes an optical amplifier 32 for an uplink, an optical amplifier 36 for a downlink, optical filters 34 and 38 as wavelength selection units, and optical couplers 31, 33, 35, and 37. Herein, the optical filters 34 and 38 and the optical couplers 31, 33, 35, and 37 constitute a turnback unit (loopback unit). Note that, a passage wavelength band of each of the optical filters 34 and 38 is set in such a way as to include a wavelength of monitoring light.
Therefore, this element is not rejected on the grounds that the 112(f) interpretation is unclear.
The claims are rejected as being indefinite under 35 USC 112(b). However, in the interests of compact prosecution, and in the interests of assisting Applicant to prepare the most complete response, the claims are also rejected under 112(a), Enablement.
Claim Rejections - 35 USC § 112 - Enablement
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 1-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Teachings of the Application.
The figures illustrate “unit” elements within a “optical transmission path monitoring device”. These “unit” elements are boxes and they do not include any particular structure to indicate how to make or use them. See, for example, FIGS. 1, 6, and 8.
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The application at FIG. 3 illustrates an optical transmission path monitoring system including monitoring devices 1100, 1200 and repeaters 1010.
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Like FIGS. 1, 6, and 8, the monitoring devices 1100, 1200 in FIG. 3 are illustrated as boxes without particular structure. FIGS. 5, 7, and 9 illustrate the optical transmission path monitoring methods. FIG. 5 is illustrated for reference.
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These steps recite the functionality of the various “units” in the figures. However, the application does not appear to teach how to achieve or implement this functionality (e.g., the application does not teach a device that can perform the functionality recited in the claims, as discussed above). In summary, the application appears to identify aspirational functionality, but does not appear to teach how to make or use that functionality.
Scope of the Claims.
Claim 1, first paragraph, recites a “monitoring light generation unit that generates” desired functionality. As discussed above, the drawings illustrate this “unit” as a box but does not illustrate the structure of the unit, and the written description does not teach how to make this unit.
Claim 1 also recites a “time synchronization unit that performs...”, a “light reception unit that receives...”, a “turnback unit...” turning back light, and a “time control unit that controls...”. For the reasons discussed with reference to the “monitoring light generation unit”, these “unit” elements also do not appear to be supported by the teachings of the application.
Claims 2-9 depend from claim 1 and fail to recite particular structure for the units. Furthermore, these dependent claims add additional functionality to the unit elements of claim 1, and they add additional “unit” elements which have a broad scope in the same manner as the unit element discussed in claim 1.
Claim 10 is a method that recites the functionality of claim 1 and has a broad scope analogous to claim 1. As discussed above, the application does not appear to teach how to implement the method steps/functionality (e.g., the application does not teach a device that can perform the functionality recited in the claims).
Claims 11-18 depend from claim 10 and recite additional functionality that the application do not appear to teach how to make or use.
When considering the teachings of the application and the scope of the claims, see MPEP 2173.05(g), 4th paragraph:
… Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc). Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167. …
This supports a finding that the broad scope of the claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Other Considerations.
The nature of the invention is optical transmission and reception apparatuses and corresponding methods. One of ordinary skill would know how to perform some tasks in the present technological area and related to the invention, such as providing power to components (although power supplies and power specifications are not explicitly taught in the application), and splicing and coupling the electrical and optical components together in a way that limits losses to a commercially acceptable level (although this is not explicitly taught in the application), and managing the temperature of electrical and optical components which are susceptible to performance degradation and undesirable operational variations based on temperature (although this is not explicitly taught in the application), and shielding components from EM interference because commercial systems routinely operate in the RF spectrum and would generate interference to electrical components within the system and outside of the system (although this is not explicitly taught). However, this knowledge does not address the issues raised above.
Conclusion.
Claims 1-9 recite monitoring devices and system including a variety of “unit” elements that perform desired functionality. After careful consideration of all of the factors, the Examiner has concluded that the “unit” elements in the claims are not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 10-18 recite methods corresponding to the functionality of the apparatus claims. However, the application does not appear to teach how to make and use this functionality. After careful consideration of all of the factors, the Examiner has concluded that the subject matter of the method claims is not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claims are rejected as being indefinite under 35 USC 112(b), and as lacking enablement under 35 USC 112(a). However, in the interests of compact prosecution and in the interests of assisting Applicant to prepare the most complete response, the claims are also rejected under 35 USC 112(a), Written Description.
Claim Rejections - 35 USC § 112 - Written Description
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 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-9 recite monitoring devices and system including a variety of “unit” elements that perform desired functionality, but the application does not appear to describe the “unit” elements. This is discussed in more detail above in the 112(b) and 112(a) Enablement rejections. As a result, the subject matter of the apparatus claims is not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention.
Claims 10-18 recite methods corresponding to the functionality of the apparatus claims. The application does not appear to teach how to perform this functionality (e.g., does not teach a device or other implementation that can perform the functionality recited in the claims). This is discussed in more detail above in the 112(b) and 112(a) Enablement rejections. As a result, the subject matter of the method claims are not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2003/0165006 (Stephens) teaches to transmit and receiver monitor signals as optical supervisory channels using supervisory transmitter 64. See, for example FIG. 2:
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[0043] A local, amplifier central processor 62 can be provided to oversee amplifier operation, perform signal quality and amplifier performance analyses and calibration tasks. The central processor 62 can locally perform the analyses or merely send the data elsewhere in the network management system 22 for processing. A supervisory transmitter 64 can be used to transmit the signal quality, as well as other system information, to a network management layer of the network management system 22. The central processor 62 can communicate with the network management layer either directly or via one or more nodes 16 in a supervisory channel through the transmission fiber 14.
It also teaches that different paths can be used for the monitor signals. See:
[0054] The actual gain measurements and input pump powers will be used to calculate a set of amplifier performance parameters specific to a particular span of transmission fiber and amplifier. The amplifier performance parameter calculations can be performed internally or externally to the system 10. The system 10 can internally perform the calculations using the amplifier central processor 62 or the measurements can be sent directly or via the supervisory channel to a network management layer of the network management system 22.
[0055] Likewise, the calculated amplifier performance parameters can be stored locally in the amplifier central processor or elsewhere in the network management system 22. In the first scenario, when the gain profile of the amplifier 12 is to be changed, the network management system 22 would either directly or via the supervisory channel send the desired gain profiles to each amplifier in the system 10. The amplifiers 12 would then locally calculate and implement the necessary pump power levels. In the second scenario, the network management system 22 would calculate the pump input power levels necessary to implement a new gain profile for the signal wavelengths and transmit the input pump power levels to the amplifiers. It will be appreciated that the two scenarios can be combined to provide redundancy in case of a failure in the system 10.
In other words, monitoring data/signals can be sent and received over OSCs.
US 6,690,884 (Kelty) at FIG. 2 illustrates an optical communication system including transmitters 16/36 and receivers 18 to transmit supervisory information on a supervisory channel.
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FIG. 4 illustrates a network element including a distributor 30 to separate the OSC channel from the transmission line, an OSC monitor 38 that receives the OSC signal.
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See also col. 3, last paragraph before “Description of the Invention”.
FIG. 4 shows a supervisory channel circuitry at an amplifier, such as in the dashed box in FIG. 2.
See also col 7, first two paragraphs, which discuss FIG. 4 in more detail:
(17) Monitoring at the receiver 18 can be performed for each received wavelength as part of the normal receiver functions and the receiver or node CP 34 can monitor the status of the channels. As shown in FIG. 4, signal monitors 38 also can be disposed along the optical path 32 at various monitoring points, such as amplifiers 20 sites shown by the dashed box in FIG. 2. The signal monitors 38 can include one or more fixed wavelength receivers 18 or tunable monitors, such as one or more wavelength tunable receivers or spectrum analyzers. The signal monitors 38 can be configured to perform FEC decoding of the one or more signal channels to follow the evolution of errors that have to be corrected along the transmission path 32. Corrected error monitoring and other signal performance monitoring, such as optical signal to noise ratio monitoring, can be used to identify the fibers 14 and spans in the system 10 where signal degradation is occurring. The signal monitoring information along the transmission path 32 can be used to provision new optical paths to bypass only the degraded portions and specifically identify the degraded portions for service personnel.
(18) System transmitters 36 can be provided in the amplifiers 20 to transmit FEC and other signal monitoring information from the amplifiers 20 to the NMS 22. The supervisory channel information can be transmitted in either or both directions via the available fibers 14 in the transmission path 32 and can be counter- and/or co-propagated with the signal channels in the system 10.
In other words, the OSC signal is a monitor signal. In addition, Kelty teaches a controller 34 to process the received signal, a transmitter 36 to output a further OSC signal, and a combiner 28 to combine the new OSC signal with the transmission line.
US 2003/0147138 (Price) teaches the use of an NMS and teaches that OSCs can be used to send and receive monitoring data. See, for example, [0049]:
[0049] Receivers 14 with tunable F-P filters 16 can also be deployed as optical spectrum analyzers 42 to provide monitoring data for controlling amplifiers 24 and other optical components, as well as system operations. The monitoring data can also be sent to the network management system 38 via either a system supervisory channel through the optical fiber 22 or the optical nodes 26 or a direct connection using a WAN or other communication network.
[0050] The optical spectrum analyzers 42 of the present invention provide not only the usual capabilities of power level detection across the spectrum, but further provides error checking capability at each monitoring point. The ability to detect errors at the various monitoring points allows specific spans between monitoring points to be identified as the source of the errors.
In other words, monitoring data/signals can be sent and received over OSCs.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARREN WOLF whose telephone number is (571)270-3378. The examiner can normally be reached Monday through Friday, 7:00 AM to 3:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KENNETH N. VANDERPUYE can be reached at 571-272-3078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DARREN E WOLF/Primary Examiner, Art Unit 2634