CFM Global LLC

Patent Trials and Appeals Board

Feb 16, 2022

2021001849 (P.T.A.B. Feb. 16, 2022)

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. 14/242,905 04/02/2014 Christopher P. Macioch 213410-0001-00- US-544000 6647 55694 7590 02/16/2022 FAEGRE DRINKER BIDDLE & REATH LLP (DC) 1500 K STREET, N.W. SUITE 1100 WASHINGTON, DC 20005-1209 EXAMINER SADLON, JOSEPH ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 02/16/2022 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): DBRIPDocket@faegredrinker.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER P. MACIOCH, MICHAEL J. PINGITORE, and FRANK C. PINGITORE Appeal 2021-001849 Application 14/242,905 Technology Center 3600 Before JENNIFER D. BAHR, LISA M. GUIJT, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 21-41.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies CFM Global LLC as the real party in interest. Appeal Br. 1. 2 Claims 1-20 have been cancelled. Appeal Br. A-1 (Claims App.). Appeal 2021-001849 Application 14/242,905 2 CLAIMED SUBJECT MATTER Appellant’s disclosure is directed to data farms and their locations inside buildings. Claim 21, reproduced below with emphasis added, is illustrative of the claimed subject matter. 21. A system for distributed file storage, comprising: a plurality of data farms having at least a first data farm in a first building and a second data farm in a second building separate and independent from the first building, each data farm comprising: a data storage module; a local control module comprising a data protection module; and a communication interface between said data farm and a wide-area network; an interface to one or more remote data servers, the remote data servers configured to transmit data to the data farm and to receive data from the data farm by communicating with the communication interface of the data farm through the wide-area network; and an administrative module configured to record a quantity of data received or transmitted by the communication interface of the data farm, wherein at least the first data farm is adapted to be installed within a concealed structural space of a respective structure of the first building. Appeal Br. A-1 (Claims App.). Appeal 2021-001849 Application 14/242,905 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Feng US 2009/0144220 A1 June 4, 2009 Dolganow US 2010/0208590 A1 Aug. 19, 2010 Chiu US 2010/0306286 A1 Dec. 2, 2010 REJECTIONS3 I. Claims 21-29, 31-33, and 36-41 are rejected under 35 U.S.C. § 102(b) as anticipated by, or in the alternative, under 35 U.S.C. § 103 as unpatentable over, Feng. II. Claims 30 and 34 are rejected under 35 U.S.C. § 103(a) as unpatentable over Feng and Chiu. III. Claim 35 is rejected under 35 U.S.C. § 103(a) as unpatentable over Feng and Dolganow. OPINION Rejection I (Feng) Anticipation The Examiner finds that Feng discloses all of the elements recited in claim 21, including first and second data farms in first and second buildings, respectively, and that the first data farm is adapted to be installed in a concealed structural space of a structure of the first building. Non-Final 3 The Examiner withdrew, without further explanation, a rejection of claims 21-41 under 35 U.S.C. § 112, second paragraph, as indefinite. See Ans. 15- 16; Non-Final Act. 3. The rejection concluded that the terms “data farms” and “concealed” in the independent claims were unclear. See Non-Final Act. 3. Appeal 2021-001849 Application 14/242,905 4 Act. 4-5. As for this last claim limitation, the Examiner finds Feng’s data farms may be installed in a cooled computer room. Id. at 5. The Examiner concludes, “Feng inherently teaches data farms adapted to be-or capable of being-installed in a concealed space.” Id. Regarding the interpretation of the “concealed” limitation, the Examiner states, “[the] term ‘concealed[’] has not been explicitly defined as to prevent the cited reference from teaching the vague and indefinite claim language of ‘adapted to be installed within a concealed structural space.’” Id. at 16. Obviousness The Examiner provides an alternative basis for rejecting claim 21 over Feng. See Non-Final Act. at 5-6. Specifically, the Examiner determines that, to the extent Feng does not disclose that its data farm is adapted to be installed within a concealed structural space of the first building, “then it certainly would have been obvious to a skilled artisan in the art at the time the invention was made to modify the datacenters of Feng by placing them within concealed structural spaces in order to protect the data from outside intrusion.” Id. Appellant argues that the Examiner’s claim interpretation is unreasonably broad. See Appeal Br. 9-10. However, Appellant does not provide an alternative claim interpretation of the clause at issue in claim 21, or identify any specific structure Appellant believes this clause requires and is missing from Feng. See id. Instead, Appellant quotes portions of paragraphs 13, 17, and 66 of the Specification and concludes, “a POSITA would not understand installing a data farm within a concealed structural space to include Feng’s installation of a datacenter within a cooled computer room, as the Office now suggests.” Appeal Br. 9-10. Appeal 2021-001849 Application 14/242,905 5 In a related discussion, in response to the Examiner’s now-withdrawn rejection of claim 21 as indefinite, Appellant asserted that paragraph 66 teaches that the word “concealed” in claim 21 means “[a] person should not be aware that they were within a data farm 104” and that this word should be given its plain and ordinary meaning. Appeal Br. 7. Appellant does not specifically address what it means, in light of the Specification, to be “adapted to be installed within a concealed structural space” as recited in claim 21. For the reasons discussed below, we determine that claims 21-41 are indefinite, and we reverse the Examiner’s anticipation/obviousness rejections over Feng (Rejection I). Rejections II-III (Feng and either of Chiu and Dolganow) Rejections II-III are obviousness rejections of dependent claims 30, 34, and 35, which depend from one of independent claims 27 and 31. See Non-Final Act. 13-15 (Claims App.). For the same reasons, we do not address Rejections II-III. NEW GROUND OF REJECTION A claim is properly rejected as indefinite if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam); see also Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). There is no per se rule prohibiting defining claimed subject matter in terms of its interaction with some unclaimed subject matter. However, limitations defining unclaimed subject matter interacted with, like claim Appeal 2021-001849 Application 14/242,905 6 limitations generally, must make it clear to the potential infringer what the claims encompass. See Ex parte Miyazaki, 89 USPQ2d 1207, 1213 (BPAI 2008) (precedential) (determining that reciting the height of a paper feeding unit of a printer in terms of the height of a user of the printer was unclear when the positional relationship of the user and the printer was not specified). Paragraph 15 of the Specification, cited in Appellant’s Summary of the Claimed Subject Matter as providing support for the clause at issue in claim 21 (Appeal Br. 2), states, “[s]tructural space may include space within the structure itself, such as space within walls, space under floorboards, and so forth. Structural space is often closed off with limited physical access compared to open interior space.” Emphasis added. Thus, the Specification provides certain noncommittal examples of structural space while indicating that spaces aside from what is listed in the examples also qualify as structural space. Similarly, paragraph 37 of the Specification states, Typically the data storage devices may include solid state storage units within a protective enclosure, which are then installed in discreet locations. If the data storage device is installed within an exterior wall or other boundary with an area that is not temperature-controlled, the device sheathing or housing will tend to reduce such variations. The storage devices may also be incorporated into a number of construction materials to utilize the mass of the structure for data storage. For example, along the side of a steel I-beam and/ or steel stud, along the surface of metal paneling, or voids that may be pre-formed into concrete slabs, planks, studs, etc., and so forth, i.e., substantially any place that a void exists (either natural or planned). Appeal 2021-001849 Application 14/242,905 7 Thus, storage devices (which may be in a protective enclosure) may be installed in substantially any place in the structure that a natural or planned void exists. Paragraph 74 of the Specification discloses mounting housings 400 within a wall and that “[a] backing material 504 may be provided, upon which at least some of the plurality of housings 400 may be mounted.” Thus, housings may, or may not, be mounted with backing material. Paragraph 67 of the Specification states: Referring again to FIG. 3, a storage enclosure 302 may be located within the wall 300. Storage enclosure includes the components of data farm 104. Physical characteristics of storage enclosure 302 may be adapted to the specific installation location. For example, the size, shape, capacity, etc. of storage enclosure 302, and the mounting or support it provides to components of data farm 104, may be adapted to the available space. Storage enclosure 302 may not be fully enclosed, e.g., a top direction may be left open for ease of maintenance and because ordinarily for mounting locations within a wall there is little risk of unwanted physical intrusion from the top. Enclosure requirements (e.g., the degree of enclosure, which directions may be relatively exposed, the strength of the enclosure, etc.) may vary from one installation site to another, based on factors such as the installation location and the method of securing the enclosure and/or data farm. Emphases added. Thus, the storage enclosure configuration depends on a variety of factors which are not recited in the claims and are not defined by the Specification. Based on our review of Appellant’s Specification and Appellant’s comments regarding the now-withdrawn indefiniteness rejection and the rejections based on Feng, we determine that the metes and bounds of the clause “wherein at least the first data farm is adapted to be installed within a Appeal 2021-001849 Application 14/242,905 8 concealed structural space of a respective structure of the first building” in claim 1 are unclear, rendering claim 1 indefinite. As discussed above, the structural spaces where the first data farm may be installed vary widely in size, shape, and location, to the point of merely being “substantially any place that a void exists (either natural or planned).” Spec. ¶ 37. Consequently, the last clause of claim 21 defines the first data farm, specifically, how it is “adapted,” in terms of an undefined concealed structural space. For this reason, the recited adaptation itself is undefined. See Miyazaki, 89 USPQ2d at 1213. Additionally, even assuming for the purpose of argument that the concealed structural space in the last clause of claim 21 were well defined, in light of the Specification, what it is to be “adapted to be installed” in such a location is still unclear. Appellant’s Specification merely equivocates on what type of device or material, if any, would be used for such installation. See Spec. ¶¶ 67, 74. Accordingly, we enter a NEW GROUND OF REJECTION of claim 21 and claims 22-26, 36, and 37 depending therefrom, under 35 U.S.C. § 112, second paragraph, as indefinite. Independent claims 27 and 31 recite substantially similar language to that found in the final clause of claim 21. See Appeal Br. A-2, A-4 (Claims App.). Therefore, for the same reasons, we enter a NEW GROUND of REJECTION of claims 27 and 31, and claims 28-30, 32-35, and 38-41 depending therefrom, under 35 U.S.C. § 112, second paragraph, as indefinite. Because the independent claims are so unclear that “considerable speculation as to [the] meaning of the terms employed and assumptions as to the scope of such claims” is needed, we reverse the Examiner’s prior art rejections. See In re Steele, 305 F.2d 859, 862, (CCPA 1962) (holding that Appeal 2021-001849 Application 14/242,905 9 the Examiner and the Board were wrong in relying on what, at best, were speculative assumptions as to the meaning of the claims and in basing a prior-art rejection thereon). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. CONCLUSION The Examiner’s rejections are reversed, and we enter a new ground of rejection of claims 21-41. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Ba sis Affirmed Reversed New Ground 21-29, 31-33, 36-41 102(b) Feng 21-29, 31-33, 36-41 21-29, 31-33, 36-41 103(a) Feng 21-29, 31-33, 36-41 30, 34 103(a) Feng, Chiu 30, 34 35 103(a) Feng, Dolganow 35 21-41 112, second paragraph Indefiniteness 21-41 Overall Outcome 21-41 21-41 Appeal 2021-001849 Application 14/242,905 10 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED; 37 C.F.R. § 41.50(b)