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 .
Claim Interpretation
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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: an optical distributer configured to output optical signals in claim 1.
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
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 1-3 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 recites the limitation "the optical transmission device" in line 3. There is insufficient antecedent basis for this limitation in the claim. It is also unclear whether “the optical transmission device” refers to “An optical transmission apparatus” in line 1. For the purpose of compact prosecution, they are considered to be the same.
The dependent claims 2-3 are rejected for being dependent on the rejected claim 1.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/992240 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 of Application No. 18/872129
Claim 1 of Application No. 18/992240
An optical transmission apparatus that transmits an optical signal between a communication terminal device and a network without converting the optical signal into an electrical signal, the optical transmission device comprising:
a plurality of multiplexer/demultiplexer configured to receive and output optical signals from and to the communication terminal device connected to the optical transmission apparatus;
An optical transmission device which transmits an optical signal between a communication terminal device and a network, without converting the optical signal into an electric signal, the optical transmission device comprising:
a plurality of multiplexer/demultiplexers which input and output the optical signal to and from the communication terminal device connected to an own device;
a plurality of wavelength multiplexer/separator configured to receive and output optical signals from and to the network connected to the optical transmission apparatus; and
a plurality of wavelength multiplexing separators
an optical distributer configured to output optical signals output from the multiplexer/demultiplexer and subjected to predetermined electrical processing to a predetermined multiplexer/demultiplexer.
an upstream signal multiplexer which outputs the optical signal in the upstream direction subjected to the electric processing by the electric processor to the predetermined wavelength multiplexing separator.
However, Claim 1 of Application No. 18/872129 differs from Claim 1 of Application No. 18/992240 because Claim 1 of Application No. 18/872129 does not include “an upstream signal demultiplexer which outputs the optical signal in an upstream direction, which is output from the multiplexer/demultiplexer, to an electric processor that executes predetermined electric processing on the optical signal.”
It is clear that all of the elements of Claim 1 of Application No. 18/872129 are to be found in Claim 1 of Application No. 18/992240 (as Claim 1 of Application No. 18/872129 fully encompasses Claim 1 of Application No. 18/992240). The difference between Claim 1 of Application No. 18/872129 and Claim 1 of Application No. 18/992240 lies in the fact that Claim 1 of Application No. 18/992240 includes many more elements and thus much more specific. Thus, the invention of Claim 1 of Application No. 18/992240 is in effect a “species” of the “generic” invention of Claim 1 of Application No. 18/872129. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since Claim 1 of Application No. 18/872129 is anticipated by Claim 1 of Application No. 18/992240, it is not patentably distinct from Claim 1 of Application No. 18/992240.
Regarding claim 3,
Claim 3 of Application No. 18/872129
Claim 1 of Application No. 18/992240
The optical transmission device according to claim 1, wherein the optical distributer outputs an optical signal on which predetermined electrical processing has been executed to a multiplexer/demultiplexer different from a multiplexer/demultiplexer through which the optical signal has already passed.
an upstream signal demultiplexer which outputs the optical signal in an upstream direction, which is output from the multiplexer/demultiplexer, to an electric processor that executes predetermined electric processing on the optical signal;
an upstream signal multiplexer which outputs the optical signal in the upstream direction subjected to the electric processing by the electric processor to the predetermined wavelength multiplexing separator.
Regarding claim 4,
Claim 4 of Application No. 18/872129
Claim 7 of Application No. 18/992240
An optical transmission method performed by an optical transmission apparatus that transmits an optical signal between a communication terminal device and a network without converting the optical signal into an electrical signal, the optical transmission method comprising:
a step in which the optical transmission apparatus receives/outputs optical signals from/to the communication terminal device connected to the optical transmission apparatus;
An optical transmission method which transmits an optical signal between a communication terminal device and a network, without converting the optical signal into an electric signal, the optical transmission method comprising:
inputting and outputting the optical signal to and from the communication terminal device connected to an own device, by a multiplexer/demultiplexer
a step in which the optical transmission apparatus receives/outputs optical signals from/to the network connected to the optical transmission apparatus; and
inputting and outputting the optical signal to and from a network connected to the own device, by a wavelength multiplexing separator; and
an optical distribution step in which the optical transmission apparatus outputs optical signals subjected to predetermined electrical processing to a predetermined multiplexer/demultiplexer
outputting the optical signal in the upstream direction subjected to the electric processing by the electric processor to the predetermined wavelength multiplexing separator, by an upstream signal multiplexer
However, Claim 4 of Application No. 18/872129 differs from Claim 7 of Application No. 18/992240 because Claim 4 of Application No. 18/872129 does not include “outputting the optical signal in an upstream direction, which is output from the multiplexer/demultiplexer, to an electric processor that executes predetermined electric processing on the optical signal, by an upstream signal demultiplexer.”
It is clear that all of the elements of Claim 4 of Application No. 18/872129 are to be found in Claim 7 of Application No. 18/992240 (as Claim 4 of Application No. 18/872129 fully encompasses Claim 7 of Application No. 18/992240). The difference between Claim 4 of Application No. 18/872129 and Claim 7 of Application No. 18/992240 lies in the fact that Claim 7 of Application No. 18/992240 includes many more elements and thus much more specific. Thus, the invention of Claim 7 of Application No. 18/992240 is in effect a “species” of the “generic” invention of Claim 4 of Application No. 18/872129. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since Claim 4 of Application No. 18/872129 is anticipated by Claim 7 of Application No. 18/992240, it is not patentably distinct from Claim 7 of Application No. 18/992240.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1 and 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tosaki (US20140023373A1) in view of Ji et al. (US20120213517A1).
Regarding claim 1, Tosaki discloses An optical transmission apparatus (Fig. 2) that transmits an optical signal between a communication terminal device and a network without converting the optical signal into an electrical signal, the optical transmission device comprising:
a plurality of multiplexer/demultiplexer (Fig. 3; Fig. 4; Fig. 2; the plurality of branch wavelength selection input units 31 and the plurality of selection output units 42) configured to receive and output optical signals (Fig. 1-4; Para. 38; Optical dropper 300 drops the optical signals input from respective multiplexers 12 and passes them to respective transponders included in transponder assembly 50. Transponder assembly 50 has a plurality of transponders each connected to both optical dropper 300 and optical adder 400. Optical dropper 300 inputs wavelength-specific optical signals to different transponders depending on the wavelengths of the wavelength-specific optical signals included in the wavelength-multiplexed optical signals) from and to the communication terminal device connected to the optical transmission apparatus (Fig. 1-4; a plurality of transponders is shown. Nx1 WSS1 33-1 multiplexes input optical signals while the 1xM WSS1 35-1 demultiplexes the inputted multiplexed optical signal as shown);
a plurality of wavelength multiplexer/separator (Fig. 1; Fig. 2; the plurality of demultiplexers 11 and the plurality of multiplexers 12) configured to receive and output optical signals from and to the network connected to the optical transmission apparatus (Fig. 1; Fig. 2; Para. 35; Optical cross connect 100 includes N (N refers to an integer of 2 or greater) demultiplexers 11 corresponding respectively to N routes which input wavelength-multiplexed optical signals to RAODM node 10, and N multiplexers 12 corresponding respectively to N routes which output wavelength-multiplexed optical signals from RAODM node 10); and
an optical distributer (Fig. 1-4; the NxN matrix switch 41) configured to output optical signals output from the multiplexer/demultiplexer (Fig. 1-4; Para. 52; optical adder 400 has L add matrix switches 41 that serve as switchers for selectively inputting wavelength-specific optical signals from a plurality of optical paths to a plurality of add wavelength selection/output units 42 corresponding to respective routes).
However, the present system does not expressly disclose a distributer subjected to predetermined electrical processing to a predetermined multiplexer/demultiplexer.
Ji et al. discloses a distributer (Fig. 1; the grooming add/drop aggregator 108 corresponds to the optical dropper/adder 200 of Tosaki) subjected to predetermined electrical processing to a predetermined multiplexer/demultiplexer (Fig. 1; Fig. 2; Fig. 3; Para. 20; Para. 28; The GADA 108 receives locally processed channels from all degrees 102-1 through 102-N, selects appropriate channels to be dropped at respective transponders 112, sends appropriate channels to the grooming subsystem 110 for grooming, and sends the added channels from the transponders 112 and the groomed channels to the respective output ports of ROADM subsystems 102. As shown in Fig. 3, the receivers 302 pass the signals to data stream switch 316, which performs a grooming operation as shown in FIG. 2. The data stream switch 316 outputs groomed signals to a set of M transmitters 318, which convert the groomed signals to optical signals and retransmit them).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a grooming subsystem, as taught by Ji et al., in the present combination in order to perform the traffic grooming. This will provide better spectral efficiency and optimize the network performance by fully packing data into lightpaths so that optical bandwidth is not wasted.
Regarding claim 3, the present combination discloses The optical transmission device according to claim 1, as described and applied above, wherein the optical distributer outputs an optical signal on which predetermined electrical processing has been executed (Ji et al., Fig. 3; Para. 28; A set of M receivers 302 accepts optical signals and converts the optical signal to the electrical domain. The receivers 302 pass the signals to data stream switch 316, which performs a grooming operation as shown above in FIG. 2) to a multiplexer/demultiplexer different from a multiplexer/demultiplexer through which the optical signal has already passed (Tosaki, Fig. 3; Fig. 4; the subsystem 110 of Ji et al. receives optical signal from one of the 1xM WSS 35 and transmits processed optical signal through one of the 1xM WSS 45).
Regarding claim 4, the present combination teaches a device that necessarily perform this method claim in light of the rejection of Claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAI M LEE whose telephone number is (571)272-5870. The examiner can normally be reached M-F 9:5:30 PM.
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JAI M. LEE
Examiner
Art Unit 2634
/JAI M LEE/Examiner, Art Unit 2634
Prosecution Insights