Ex Parte Bash et al

Board of Patent Appeals and Interferences

Dec 20, 2010

10976786 (B.P.A.I. Dec. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CULLEN E. BASH, CHANDRAKANT D. PATEL,
RATNESH K. SHARMA, and ABDLMONEM BEITELMAL
____________________

Appeal 2009-007202
Application 10/976,786
Technology Center 3700
____________________

Before JENNIFER D. BAHR, JOHN C. KERINS, and KEN B. BARRETT,
Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007202
Application 10/976,786

2
STATEMENT OF THE CASE
Cullen E. Bash et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-5 and 11-27. Claims 6-10 and 28
have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellants’ claimed invention pertains to the control of vent tiles
which provide cool air to computer systems’ racks. See Spec. 1:10-11, 20-
25. Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method of controlling vent tiles, said method
comprising:
identifying levels of influence the vent tiles respectively
have over at least one rack;
correlating the vent tiles with the at last one rack based
on the identified levels of influence;
determining a vent tile family (VTF) of the at least one
rack, said VTF including vent tiles having at least a predefined
level of influence over the at least one rack as determined by
the correlation between the vent tiles and the at least one rack;
identifying a vent control family (VCF) from the vent
tiles in the VTF, said VCF including vent tiles having an
associated at least one rack whose inlet condition is outside of a
predefined threshold;
assigning weights to the vent tiles according to the
identified levels of influence each of the vent tiles respectively
has over the at least one rack; and
controlling the vent tiles in the VCF based on the
assigned weights of the vent tiles.

Appeal 2009-007202
Application 10/976,786

3
THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 26 and 27 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter;
2. Claims 1-5, 15-18, 20-23, 26, and 27 are rejected under 35
U.S.C. § 102(e) as being anticipated by Bash (US 7,031,154 B2, issued Apr.
18, 2006); and
3. Claims 1, 11-15, 19, 20, 24, and 25 are rejected under 35
U.S.C. § 102(e) as being anticipated by Sharma (US 6,868,682 B2, issued
Mar. 22, 2005).

ANALYSIS
The rejection of claims 26 and 27 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter
Claim 26 recites “[a] tangible computer readable storage medium on
which is embedded one or more computer programs …comprising a set of
instructions ….” Claim 27 depends from claim 26 and recites additional
instructions. The Examiner maintains that the broadest reasonable
interpretation of these claims encompasses a computer program per se and a
computer program embodied as an intangible dynamic signal. Ans. 3.
Based on this interpretation, the Examiner rejected claims 26 and 27 as
directed to non-statutory subject matter. Id. Appellants contest the
rejection, and specifically argue that the term “tangible” excludes signals.
Reply Br. 5-6.
The Examiner’s construction is overly broad. Claim 26 does not
merely refer to a “tangible computer readable medium,” but rather recites a
“tangible computer readable storage medium.” The portion of Appellants’
Appeal 2009-007202
Application 10/976,786

4
Specification mentioned by the Examiner (Ans. 3) describes storage devices
and signals as two different types of computer readable media. Spec. 37:6-
12. The claims, however, are limited to storage media, and thus do not
encompass signals. Additionally, we construe claim 26 as reciting a
computer readable storage medium encoded with a computer program, not
claiming a computer listing per se.
In light of the above, we do not sustain the rejection of claims 26 and
27 under § 101.

The rejection of claims 1-5, 15-18, 20-23, 26, and 27 as being anticipated by
Bash
Appellants offer arguments pertaining to all of the rejected claims,
and offer additional arguments for dependent claims 2, 21, and 27. App. Br.
17, 22. For the arguments pertaining to all of the rejected claims, we select
claim 1 as the representative claim2. 37 C.F.R. § 41.37(c)(1)(vii). We
consider separately the additional arguments pertaining to dependent claims
2, 21, and 27, and select claim 2 as the representative claim for that group.
Claim 1
Appellants contend that the Examiner has misinterpreted the claimed
“identifying levels of influence” step and that Bash fails to disclose that step.
App. Br. 17-18; Reply Br. 7-8. Thus, argue Appellants, Bash also does not
disclose the step of correlating based on the identified level of influence or

2 We acknowledge that Appellants also mention independent claims 15, 20,
and 26 under the single subheading addressing all of the claims. App. Br.
19-20. However, even if we were to consider those claims to be separately
argued, Appellants offer the same “identifying levels of influence” argument
for those claims as offered for claim 1. Id.
Appeal 2009-007202
Application 10/976,786

5
the step of assigning weights according to the identified level. App. Br. 17;
Reply Br. 7.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). It is the Appellants’
burden to precisely define the invention, not that of the United States Patent
and Trademark Office. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)
(citing 35 U.S.C. § 112, ¶ 2). Appellants have the opportunity to amend the
claims during prosecution, and broad interpretation by the Examiner reduces
the possibility that the claim, once issued, will be interpreted more broadly
than is justified. Prater, 415 F.2d at 1404-05.
The Examiner broadly construed “identifying levels of influence” as
“recognizing how the vents may effect the [cooling of the] racks in any
way[.]” Ans. 4; see also id. at 5 (tying the level of influence to the level of
cooling ability). The Examiner found that the claimed step of “identifying
levels of influence the vent tiles respectively have over at least one rack” is
inherent in Bash’s positioning of the vent tiles (reasoning that the system
was created with vents positioned based on a recognition of the effects of the
vent tiles, Ans. 14, 15) and in Bash’s correlating step – further finding that
“it is impossible to perform a correlation without identifying the effects of
the vents on the racks.” Id. at 4.
Appellants argue:
The Examiner’s interpretation of the claimed identifying step is
improper because although recognition of how vents may affect
racks may be inherent in the creation of a vent-rack system,
there is nothing in this line of reasoning to indicate that the
Appeal 2009-007202
Application 10/976,786

6
levels of influence the vents have over a rack is identified.
Instead, the Examiner’s reasoning merely results in the possible
detection of which vents have some level of influence, but does
not result in the identification of the levels of influence the vent
tiles have over the rack.
Reply Br. 8. Although Appellants do not clearly set forth their proposed
interpretation of “identifying levels of influence,” it seems that Appellants
contend that identifying a level of influence requires a certain degree of
precision (i.e. something more precise than “some” influence). However,
such a requirement is not found in the language of claim 1. Appellants do
not direct us to any portion of the Specification that is inconsistent with the
Examiner’s broad construction or otherwise offer any persuasive argument
or evidence as to how the Examiner applied an overly broad construction to
the Bash disclosure. As such, Appellants have not persuaded us that the
Examiner erred in finding that Bash discloses the identifying step.
As to the correlating step, Appellants agree that Bash’s vent tiles are
correlated to racks, but maintain that the tiles are only correlated to those
racks upon which those tiles are positioned. Reply Br. 8. Appellants argue
that this means that the tiles are correlated by position rather than level of
influence. Id. This argument is not persuasive as it appears to be based on
Appellants’ unduly narrow understanding of the identifying step. Further, it
is not clear why, as Appellants suggest, the vent position and level of
influence are mutually exclusive concepts. The Examiner reasonably
maintains that one creating the system shown in Bash’s Figure 6 would
position and control the dynamically controllable vents based on the
recognition of the vent’s effect on the rack. See Ans. 14; Bash, col. 16, ll. 5-
Appeal 2009-007202
Application 10/976,786

7
31. Again, the claim does not require the recognition of the precise
magnitude of the effect (level of influence).
Appellants maintain that the vent tiles that are positioned on a
particular rack may be considered a Vent Tile Family (VTF) but that all such
tiles have the same level of influence and therefore the VTF is not
determined by level of influence. Reply Br. 9. Similarly, regarding the step
of assigning weights and the step of controlling the Vent Control Family
(VCF) tiles based on that weight, Appellants argue that Bash’s vents are all
on the same rack and therefore all have the same level of influence and thus
the same assigned weights. See Reply Br. 10. Appellants’ arguments appear
to be based on the incorrect assumption that claim 1 requires different levels
of influence and assigned weights for each individual vent tile, and may be
premised on Appellants’ unduly narrow understanding of what constitutes a
level of influence. Appellants do not direct our attention, and we see none,
to any language in claim 1 that excludes from coverage controlling a group
of vent tiles all having the same level of influence and having the same
assigned weights and where that group of vents constitutes a vent tile family
as well as a vent tile control family.
Appellants argue that claim 1 requires the identification of the VCF to
be based on the condition of at least one rack in a plurality of racks, and that
Bash discloses that each VTF includes a single rack and therefore “does not
appear to disclose that the condition of one rack affects how airflow is
delivered to any other rack.” Reply Br. 9. This argument is not
commensurate in scope with the claim language because claim 1 does not
recite a plurality of racks, but merely pertains to the control of vent tiles in
“the at least one rack,” which encompasses a single rack.
Appeal 2009-007202
Application 10/976,786

8
Appellants have not persuaded us that the Examiner erred in rejecting
claim 1 as anticipated by Bash.

Claim 2
Claim 2 recites that the step of correlating “comprises calculating a
vent tile influence coefficient (VTI) matrix, wherein the VTI matrix
correlates mass flow rates of airflow through the at least one rack and the
vent tiles.” For this feature, the Examiner found that Bash discloses a
lookup table and, alternatively, a conversion factor. Ans. 6. Additionally,
the Examiner reasons that a matrix includes a 1x1 matrix. Id. Appellants’
arguments regarding this claim are directed to Bash’s lookup table, and
suggest that Appellants contend that the lookup table stores actual flow rates
and vent settings rather than a calculated coefficient or a matrix of a plurality
of coefficients. See App. Br. 22-23. However, even if we were to accept as
correct Appellants’ argument regarding a look-up table, Appellants have not
addressed or shown error in the Examiner’s conversion factor findings and
related reasoning. Accordingly, Appellants have not persuaded us of error in
the rejection of claim 2.
We affirm the rejection of claims 1 and 2 and of claims 3-5, 15-18,
20-23, 26, and 27, which fall with the respective representative claim, as
anticipated by Bash.

The rejection of claims 1, 11-15, 19, 20, 24, and 25 as being anticipated by
Sharma
Appellants argue the rejected claims as a group. App. Br. 23-25;
Reply Br. 12, 15. We again select claim 1 as the representative claim, and
claims 11-15, 19, 20, 24, and 25 stand or fall with claim 1.
Appeal 2009-007202
Application 10/976,786

9
Appellants’ assertions in the Appeal Brief regarding this rejection
consist of little more than a recitation of claim language, quotations from
and descriptions of Sharma’s disclosure, and conclusory assertions that
Sharma does not disclose the step of identifying levels of influence or,
correspondingly, the steps of correlating and assigning weights based on
these levels of influence. See App. Br. 23-25. In the Reply Brief, Appellants
allege that more steps are not disclosed by Sharma and elaborate somewhat
by including a statement of the Examiner’s findings regarding the various
claim steps. Reply Br. 12-15. However, Appellants do not cogently explain
why the Examiner’s findings (Ans. 8-9, 21-22) are erroneous under the
broadest reasonable construction of claim 1.
Additionally, Appellants reiterate the argument, previously made in
the context of Bash, that Sharma fails to disclose the performance of certain
steps based on the levels of influence “because each of the vent tiles on a
particular rack has the same level of influence over that rack ….” Reply Br.
14 (emphasis added). However, Sharma depicts dynamically controllable
vent tiles 130, 132, 134 (found, at least in part3, to be the claimed vent tiles,
Ans. 8) which are located on the floor between racks, not on a particular
rack. Sharma, col. 5, ll. 35-45; fig. 1; compare Sharma, fig. 1 with Bash, fig.
6 (depicting vents on both the floor and on the racks). Thus, it is not clear
that Appellants are addressing the pertinent reference or the rejection as
articulated by the Examiner.

3 The Examiner also lists Sharma’s element 302 in identifying the vent tiles
(e.g., Ans. 8), possibly because the element number “(302)” immediately
follows “one or more vent tiles” in Sharma’s specification. Sharma, col. 10,
ll. 14-16. Element 302 actually refers to the step of agents activating a
cooling system and opening the vent tiles. Id.; see also id. at fig. 3A.
Appeal 2009-007202
Application 10/976,786

10
Appellants have not persuaded us that the Examiner erred in finding
that Sharma discloses all of the steps of claim 1. As such, we affirm the
rejection of claim 1 and of claims 11-15, 19, 20, 24, and 25, which fall
therewith, as anticipated by Sharma.

DECISION
The decision of the Examiner to reject claims 1-5 and 11-27 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

mls

HEWLETT-PACKARD COMPANY
INTELLECTUAL PROPERTY ADMINISTRATION
3404 E. HARMONY ROAD
MAIL STOP 35
FORT COLLINS, CO 80528