Ex Parte Casali et al

Patent Trial and Appeal Board

Feb 4, 2016

12972007 (P.T.A.B. Feb. 4, 2016)

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.
12/972,007 12/17/2010 Daniel de Souza Casali XCA920100056US1 9072
127893 7590 02/04/2016
Streets & Steele - Lenovo (Singapore) Pte. Ltd.
13100 Wortham Center Drive
Suite 245
Houston, TX 77065
EXAMINER
DAM, DUSTIN Q
ART UNIT PAPER NUMBER
1758
MAIL DATE DELIVERY MODE
02/04/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DANIEL de SOUZA CASALI, RODRIGO CERON
FERREIRA de CASTRO, BRENO HENRIQUE LEITAO, and
THIAGO CESAR ROTTA
____________________

Appeal 2014-002288
Application 12/972,007
Technology Center 1700
____________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
Appellants1 filed an appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.2

1 Appellants identify the real party of interest as International Business Machines
Corporation. Appeal Br. 2.
2 Our decision refers to Appellants’ Appeal Brief (Appeal Br.) filed July 30, 2013,
the Examiner’s Answer (Ans.) mailed October 22, 2013, and Appellants’ Reply
Brief (Reply Br.) mailed December 20, 2013.
Appeal 2014-002288
Application 12/972,007

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STATEMENT OF THE CASE
The subject matter on appeal relates to apparatus for generating electricity in
a computer rack (see, e.g., claims 1 and 11). Appellants disclose a challenge with
data centers is how to lower energy consumption to approach an ideal green data
center. Spec. ¶ 2. Appellants disclose that in a well-designed energy efficient data
center, empty spaces of a computer rack must be filled with panels to maintain hot
and cold sides, which facilitate the use of air flow for cooling equipment and save
energy by reducing the amount of power required to operate an equipment cooling
system. Spec. ¶ 3. In view of this, Appellants disclose an apparatus for generating
electricity in a computer rack by using thermoelectric generator modules exposed
to the hot and cold sides of a computer rack. Spec. ¶¶ 15 and 16. The thermal
difference across the generator modules results in the generation of electricity by
the generator modules. Spec. ¶¶ 16.
Claim 1 is illustrative, with the limitations at issue italicized:
1. An apparatus for generating electricity in a computer rack,
comprising:
a plurality of thermoelectric generator modules secured in a
planar assembly having a first side and a second side, wherein each
thermoelectric generator module has a first thermally conductive
substrate exposed on the first side of the planar assembly and a second
thermally conductive substrate exposed on the second side of the
planar assembly, and wherein the plurality of thermoelectric generator
modules are operatively coupled in a circuit to supply electrical
current from the planar assembly;
a first duct for directing a first fluid stream across the first side
of the planar assembly to supply heat to the first thermally conductive
substrate;
a second duct for directing a second fluid stream across the
second side of the planar assembly to withdraw heat from the second
thermally conductive substrate; and
a housing securing the planar assembly between the first and
second ducts, wherein the housing is received in a computer rack.
Appeal 2014-002288
Application 12/972,007

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Claims Appendix at Appeal Br. 15 (emphasis added).
The claims on appeal stand rejected as follows:3
(1) Claims 1–7 and 11–14 under 35 U.S.C. § 102(b) as anticipated by
Heyes;4
(2) Claims 8–10 and 15 under 35 U.S.C. § 103(a) as unpatentable over
Heyes; and
(3) Claims 1, 2, 7, and 9–12 under 35 U.S.C. § 102(b) as anticipated by
Maeda.5

ANALYSIS
Anticipation Rejection over Heyes
The dispositive issue on appeal is whether the Examiner improperly
construed the meaning of the phrase, “wherein the housing is received in a
computer rack,” as recited in independent claims 1 and 11, and in doing so,
reversibly erred in finding Heyes anticipates these claims. We answer this
question in the affirmative and, therefore, will not sustain the Examiner’s
anticipation rejection.
The Examiner finds Heyes discloses an apparatus for generating electricity
including a plurality of thermoelectric generator modules secured in a planar
assembly, a first duct structurally capable of directing a first fluid stream across a
first side of the planar assembly, and a second duct structurally capable of directing
a second fluid stream across a second side of the planar assembly. Ans. 5–6. The

3 Claims 8 and 15 were rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite in the Final Office Action dated April 10, 2013. This rejection has been
withdrawn by the Examiner. Ans. 3.
4 Heyes, US 2004/0098991 A1, published May 27, 2004 (“Heyes”).
5 Maeda et al., US 2003/0183269 A1, published Oct. 2, 2003 (“Maeda”).
Appeal 2014-002288
Application 12/972,007

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Examiner finds the plurality of thermoelectric generator modules are operatively
coupled in a circuit that is structurally capable of supplying electrical current from
the planar assembly. Ans. 5. Further, the Examiner finds Heyes, while not
disclosing the housing is received in a computer rack, nonetheless discloses a
housing that is structurally capable of being received in a computer rack. Ans. 6.
In particular, the Examiner construes the phrase, “wherein the housing is received
in a computer rack,” to be an intended use. Ans. 18.
Appellants argue Heyes does not disclose a housing received in a computer
rack because the phrase, “wherein the housing is received in a computer rack,” is
not an intended use limitation but rather describes structure. Appeal Br. 8.
Appellants’ argument is persuasive. Here, claim 1 positively recites that
“the housing is received in a computer rack” (emphasis added). This positive
recitation of the receipt of the housing in a computer rack defines a structural
relationship between these two structures, and not just a mere statement of the
intended use of the housing. Therefore, we construe claim 1 to require a housing
received in a computer rack. In other words, the computer rack is an affirmatively
claimed structure and is part of the apparatus of the claim.
Independent claim 11 also positively recites that the housing is received in a
computer rack. Thus, we likewise construe claim 11 to require a housing received
in the computer rack.
“To anticipate a claim, a prior art reference must disclose every limitation of
the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997). As discussed above, claims 1 and 11 require a
housing received in a computer rack. Since the Examiner does not find Heyes
discloses a housing received in a computer rack, the Examiner has not met the
initial burden of setting forth a prima facie case of anticipation.
Appeal 2014-002288
Application 12/972,007

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For the reasons described above, we do not sustain the Examiner’s § 102(b)
rejection of claims 1–7 and 11–14 over Heyes.

Obviousness Rejection over Heyes
In the obviousness rejection of claims 8–10 and 15 over Heyes, the
Examiner finds Heyes does not explicitly disclose a housing form factor allowing
the housing to fit or fill a bay of a computer rack. Ans. 12. The Examiner finds
Heyes suggests the size of Heyes’s thermoelectric generator module may be
varied. Id. The Examiner concludes it would have been obvious to optimize the
size of the thermoelectric generator module via routine experimentation to provide
a housing form factor to fit or fill the bay of a computer rack. Id.
The rationale set forth by the Examiner in the § 103 rejection over Heyes
does not remedy the deficiencies of the § 102 rejection over Heyes. As discussed
above, Heyes does not disclose a computer rack, which is recited in claims 1 and
11. Therefore, even if the form factor of the housing of Heyes were optimized via
routine experimentation, as determined by the Examiner, Heyes would still not
disclose or suggest all of the limitations of the claims.
For the reasons described above, we do not sustain the Examiner’s § 103(a)
rejection of claims 8–10 and 15 over Heyes.

Anticipation Rejection of Claims 1, 2, and 9–12 over Maeda
The Examiner finds Maeda discloses a plurality of thermoelectric generator
modules in a stack and secured in a planar assembly having a first side and a
second side, wherein the plurality of thermoelectric generator modules are
operatively coupled in a circuit and capable of supplying electrical current. Ans.
14–15. The Examiner finds Maeda discloses a first duct capable of directing a first
Appeal 2014-002288
Application 12/972,007

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fluid stream across the first side of the planar assembly to supply heat, citing a
passageway between the CPU card 24 and motherboard 28 depicted in Figure 3 of
Maeda, and a second duct for directing a second fluid stream across the second
side of the planar assembly to withdraw heat, citing the passageway between the
module 60A and heat sink 42 depicted in Figure 3 of Maeda. Ans. 15–16.
Appellants argue Maeda does not disclose a first duct for directing a first
fluid stream across the first side of a planar assembly to supply heat to a first
thermally conductive substrate, as recited in claim 1. Reply Br. 10. In particular,
Appellants argue Maeda’s passageway between the CPU card 24 and motherboard
28, found by the Examiner to be a first duct, “does not allow air to be directed
across the first (lower) side of the thermoelectric conversion module 60A.” Id.
Appellants contend that because Maeda discloses the module 60A is bonded to the
heat sink 42 there would be no air flow across the lower side of the module 60A,
which faces the passageway between the CPU card 24 and motherboard 28. Id.
This argument is unpersuasive because it does not direct us to a difference
between the disclosure of Maeda and the recitation, “a first duct for directing a first
fluid stream across the first side of the planar assembly to supply heat to the first
thermally conductive substrate,” of claim 1. The Examiner finds the passageway
between the CPU card 24 and motherboard is a passageway for air that is
structurally capable of directing the air across a first side of a planar assembly.
Ans. 15. The language “directing a first fluid stream across the first side of the
planar assembly” does not require that the first fluid stream be in direct contact
with the first side of the planar assembly. Furthermore, the language “to supply
heat to the first thermally conductive substrate” requires that heat reaches a first
thermally conductive substrate, such as via some form of heat transfer, without
requiring the fluid stream to be in direct contact with the substrate. With regard to
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this limitation, the Examiner finds the passageway is structurally capable of
carrying hot air to supply heat to a thermally conductive substrate. Id. Appellants’
arguments do not direct us to any reversible error in the Examiner’s findings.
Therefore, we affirm the rejection of claim 1 over Maeda. Claims 2 and 9–
12 have not been separately argued,6 and therefore fall with claim 1.
For the reasons explained above, we sustain the Examiner’s § 102(b)
rejection of claims 1, 2, and 9–12 over Maeda.

Anticipation Rejection of Claim 7 over Maeda
Claim 7, which depends from claim 1, recites a first air moving device for
forcing an air stream through a first duct and a second air moving device for
forcing an air stream through a second duct.
In the rejection of claim 7, the Examiner finds the fan 44 depicted in Figures
2 and 3 of Maeda is a first air moving device and the exhaust outlet 48 depicted in
Figure 2 of Maeda is a second air moving device. Ans. 16–17. In support of these
findings, the Examiner interprets an “air moving device” as “a device that is
structurally capable of moving air.”
Appellants contend the exhaust outlet 48 is not an air moving device but a
passive opening permitting air to be discharged and the Examiner’s interpretation
is unreasonably broad. Reply Br. 11.
Appellants’ arguments are persuasive. The Examiner reversibly erred in the
interpretation of claim 7, which recites that the first and second air moving devices
are “for forcing,” rather than merely “for moving,” respective air streams through
respective ducts. Maeda does not disclose that the exhaust outlet 48 is capable of
“forcing” an air stream through a duct. Instead, the exhaust outlet 48 would

6 Reply Br. 10 and 12.
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Application 12/972,007

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function passively and simply allow air to flow through the outlet, as Appellants
argue.
In view of the above, we do not sustain the Examiner’s § 102(b) rejection of
claim 7 over Maeda.

DECISION
On the record before us:
A. the Examiner’s rejection of claims 1–7 and 11–14 under 35 U.S.C. §
102(b) as anticipated by Heyes is reversed;
B. the Examiner’s rejection of claims 8–10 and 15 under 35 U.S.C. §
103(a) as unpatentable over Heyes is reversed; and
C. the Examiner’s rejection of claims 1, 2, and 9–12 under 35 U.S.C. §
102(b) as anticipated by Maeda is affirmed; and
D. the Examiner’s rejection of claim 7 under 35 U.S.C. § 102(b) as
anticipated by Maeda is reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED-IN-PART