DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim Rejections - 35 USC § 112
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 1-8 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 and 4, and thus each of claims 2-3 and 5-8 each recites that the additional signal is a non-communication signal. This is new matter. The disclosure only specifies the low frequency range of the additional signal and does not disclose it as unmodulated or as not communicating anything. To the contrary, the additional signal generator is only disclosed as having a low frequency range, and as a “multi-signal generation device” (spec 0036).
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 1-8 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.
Claims 1 and 4, and thus each of claims 2-3 and 5-8 by way of dependence, each recites “the information to be communicated.” There is lack of antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3, 4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (“Jiang”) (US Patent Application Publication No. 2017/0244479) in view of Frankel (US Patent Application Publication No. 2010/0329694).
Regarding claim 1, Jiang discloses an optical transmission system that converts a first electrical signal to an optical signal, transmits the converted optical signal, and converts the transmitted optical signal to a second electrical signal (figs. 13 and 16 and paragraphs 0041 and 0043), the optical transmission system comprising: an electrical-optical conversion device that converts the first electrical signal to the optical signal (fig. 13 element 240 and paragraph 0041); an optical transmission line that transmits the optical signal converted in the electrical-optical conversion device (fig. 13 element 250 and paragraph 0041); and an optical-electrical conversion device that converts the optical signal transmitted from the optical transmission line to the second electrical signal (fig. 16 element 304 and paragraph 0043), wherein the first electrical signal includes a communication signal having a high frequency (paragraph 0041, high-speed), wherein the optical transmission system further includes an additional signal generation device that generates a low-frequency additional signal having a frequency of 1 Hz or more and 9 MHz or less (fig. 13 element 220 and paragraph 0046), and wherein the electrical-optical conversion device converts the first electrical signal including the additional signal generated in the additional signal generation device and the communication signal to the optical signal (fig. 13 and paragraph 0041). Jiang discloses the transmission in the context of a DWDM system (paragraph 0045), but does not specify that the high frequency is more than 10 GHz and 100 GHz or less. Frankel shows that data rates for DWDM systems of more than 10 Gbps and 100 Gbps or less are conventional (paragraph 0002). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use more than 10 Gbps and 100 Gbps or less data rates for the high-speed transmission of Jiang, to meet the high-speed requirement of Jiang using such known, conventionally realized bit rates.
The combination of Jiang and Frankel discloses that the additional signal does not include the information to be communicated (Jiang: fig. 13 element 220 does not include the “High-Speed Data”), but does disclose mixing a PT data signal with the pilot signal, and thus does not disclose that it does not communicate. However, The PT data signal is presented without any other function depending on it, and the purpose of Jiang fig. 13 element 220 is to spectrally expand the CW pilot-tone (paragraph 0041). The fact that Jiang also mixes PT data with the pilot signal does not make not sending PT data with the pilot signal a patentable distinction. It is prima facie obvious to omit an element of a primary reference if the function attributed to the element not desired or required (see MPEP § 2144.04(II)(A)). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to omit the PT data mixing, or simply output no information from it the PT data element, as a matter of prima facie obvious omission of an element, when there no need or desire to send unessential low frequency PT data mixed with the spectrally-expanded pilot signal.
Regarding claim 3, the combination of Jiang and Frankel discloses the optical transmission system according to claim 1, further comprising: a communication signal generation device that generates the communication signal (fig. 13 element 210 and paragraph 0041).
Regarding claim 4, Jiang discloses an optical transmission method of converting a first electrical signal to an optical signal, transmitting the converted optical signal, and converting the transmitted optical signal to a second electrical signal (figs. 13 and 16 and paragraphs 0041 and 0043), wherein the first electrical signal includes a communication signal having a high frequency (paragraph 0041, high-speed), wherein the optical transmission method further includes: a first step of converting the first electrical signal to the optical signal (fig. 13 element 240 and paragraph 0041); a second step of transmitting the optical signal converted in the first step (fig. 13 element 250 and paragraph 0041); a third step of converting the optical signal transmitted in the second step to the second electrical signal (fig. 16 element 304 and paragraph 0043); and a fourth step of generating a low-frequency additional signal having a frequency of 1 Hz or more and 9 MHz or less (fig. 13 element 220 and paragraph 0046), and wherein in the first step, the first electrical signal including the additional signal generated in the fourth step and the communication signal is converted to the optical signal (fig. 13 and paragraph 0041). Jiang discloses the transmission in the context of a DWDM system (paragraph 0045), but does not specify that the high frequency is more than 10 GHz and 100 GHz or less. Frankel shows that data rates for DWDM systems of more than 10 Gbps and 100 Gbps or less are conventional (paragraph 0002). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use more than 10 Gbps and 100 Gbps or less data rates for the high-speed transmission of Jiang, to meet the high-speed requirement of Jiang using such known, conventionally realized bit rates.
The combination of Jiang and Frankel discloses that the additional signal does not include the information to be communicated (Jiang: fig. 13 element 220 does not include the “High-Speed Data”), but does disclose mixing a PT data signal with the pilot signal, and thus does not disclose that it does not communicate. However, The PT data signal is presented without any other function depending on it, and the purpose of Jiang fig. 13 element 220 is to spectrally expand the CW pilot-tone (paragraph 0041). The fact that Jiang also mixes PT data with the pilot signal does not make not sending PT data with the pilot signal a patentable distinction. It is prima facie obvious to omit an element of a primary reference if the function attributed to the element not desired or required (see MPEP § 2144.04(II)(A)). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to omit the PT data mixing, or simply output no information from the PT data element, as a matter of prima facie obvious omission of an element, when there no need or desire to send unessential low frequency PT data mixed with the spectrally-expanded pilot signal.
Regarding claim 6, the combination of Jiang and Frankel discloses the optical transmission method according to claim 4, further comprising: a fifth step of generating the communication signal (fig. 13 element 210 and paragraph 0041).
Regarding claim 7, the combination of Jiang and Frankel discloses the optical transmission system according to claim 2, further comprising: a communication signal generation device that generates the communication signal (fig. 13 element 210 and paragraph 0041).
Regarding claim 8, the combination of Jiang and Frankel discloses the optical transmission method according to claim 5, further comprising: a fifth step of generating the communication signal (fig. 13 element 210 and paragraph 0041).
Claims 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Jiang (US Patent Application Publication No. 2017/0244479) in view of Frankel (US Patent Application Publication No. 2010/0329694), as applicable for claims 1 and 4, and further in view of Kuboki (US Patent Application Publication No. 2021/0013970).
Regarding claim 2, the combination of Jiang and Frankel discloses the optical transmission system according to claim 1, but does not specify that the additional signal has an intensity of 70 dBµV [i.e. 3.2 mV] or less. However, the electrical form of the pilot signal in Jiang inherently has some voltage value(s) compatible with digital logic, the pilot signal is mixed with the main data signal (fig. 13 element 225) and the claimed voltage value does not correspond to an unexpected result. Kuboki discloses this order of magnitude for voltage levels of optical modulator control signals (paragraphs 0002-0009). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an intensity of 70 dBµV for the additional signal for the predictable results of a properly scaled voltage that is mixed with a main data signal in a circuit that feeds into a DAC.
Regarding claim 5, the combination of Jiang and Frankel discloses the optical transmission method according to claim 4, but does not specify that the additional signal has an intensity of 70 dBµV [i.e. 3.2 mV] or less. However, the electrical form of the pilot signal in Jiang inherently has some voltage value(s) compatible with digital logic, the pilot signal is mixed with the main data signal (fig. 13 element 225) and the claimed voltage value does not correspond to an unexpected result. Kuboki discloses this order of magnitude for voltage levels of optical modulator control signals (paragraphs 0002-0009). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an intensity of 70 dBµV for the additional signal for the predictable results of a properly scaled voltage that is mixed with a main data signal in a circuit that feeds into a DAC.
Response to Arguments
Applicant’s arguments of 25 August 2026 regarding the newly added limitation have been considered but are moot in view of the new grounds of rejection.
Applicant also argues that the Gbps data rate of Frankel does not read on the GHz frequency claimed. This argument is not persuasive. Applicant argues that reciting GHz strictly means “vibrations” per unit time. This argument seems to be asserting that the waveform shape of the claimed high speed signal is a continuous wave signal, i.e., that the signal is only the “vibrations” and is thus unmodulated, e.g., a sine wave. Such an unmodulated signal could not carry “the information to be communicated”. In the specification, the high speed signal is expressly to carry “the information to be communicated”, thus Applicant’s disclosure and recitation of GHz cannot mean merely “vibrations” per unit time. Further, the definition of frequency according to Mirriam-Webster is more generally the number of repetitions of a periodic process in a unit of time (https://www.merriam-webster.com/dictionary/frequency), not strictly the number of “vibrations”. A Gbps value indicates a number of repetitions of a periodic process, i.e., bits being conveyed, in a unit of time.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN M CORS whose telephone number is (571)272-3028. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kenneth 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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/NATHAN M CORS/Primary Examiner, Art Unit 2634
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