Ex Parte Champion et al

Patent Trial and Appeal Board

Jul 8, 2014

11936108 (P.T.A.B. Jul. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID F. CHAMPION, KARL K. DITTUS,
JOHN G. GUNDLACH, and MICHAEL S. MILLER
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Appeal 2012-005070
Application 11/936,108
Technology Center 3600
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Before JOHN C. KERINS, MICHAEL L. HOELTER, and
BRANDON J. WARNER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 7‒12. Br. 2. Claims 1‒6 have been withdrawn. Br. 2.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter relates to “computer equipment racks for
data communications and power distribution.” Spec. 1:12. Independent
claim 7, the sole independent claim on appeal, is illustrative of the claims on
appeal and is reproduced below:
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7. A computer equipment rack, the computer equipment
rack comprising:
a plurality of servers mounted horizontally, each server
having a power distribution connection and one or more switch
connections;
one or more power distribution units (‘PDUs’) mounted
vertically; and
one or more network switches mounted vertically, each
network switch comprising one or more rows of switch
connections.
REFERENCE RELIED ON BY THE EXAMINER
Broome US 6,516,954 B2 Feb. 11, 2003

THE REJECTION ON APPEAL
Claims 7‒12 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Broome. Ans. 4.
ANALYSIS
Appellants argue independent claim 7 and also present separate
arguments for dependent claims 8‒12. Br. 4‒6. We address each grouping
separately.
Claim 7
Appellants disagree that Broome renders obvious all the limitations of
claim 7. Br. 4‒5. More specifically, Appellants contend that Broome “does
not teach or suggest” the limitation of “a computer equipment rack
comprising one or more network switches mounted vertically, each network
switch comprising one or more rows of switch connections.” Br. 4; see also
Br. 5. This is because, according to Appellants, “Broome’s rack element
does not include one or more network switches mounted vertically.” Br. 5;
see also Br. 4.
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We first note that Appellants’ above recitation of the claim limitation
in dispute is not wholly accurate. A review of claim 7 (see supra) indicates
that the computer equipment rack comprises (a) “a plurality of servers
mounted horizontally . . .;” (b) “one or more power distribution units
(‘PDUs’) mounted vertically;” and, (c) “one or more network switches
mounted vertically . . . .” Claim 7 does not expressly recite that only
structure of the rack itself (as contrasted with a combination of separate
components mounted on the rack) must include the network switches.
Appellants do not dispute that servers contain network switches and the
Examiner references Broome Figure 13, which discloses an array of servers
50, finding that “[i]t can be seen that the PDU’s are in one ‘column’ and the
switches are in another.” Ans. 4; see also Ans. 7. The Examiner also
annotates Broome Figure 13 to better illustrate this finding. Ans. 6.
Appellants do not persuasively explain how or why the entire combination
depicted in Broome Figure 13, illustrating a rack populated with vertically
mounted servers, fails to teach or suggest the limitation directed to “network
switches mounted vertically.” See also Ans. 7. Regarding the limitation of
the servers themselves being “mounted horizontally,” Broome states that
Figure 13 is “a partial view” of Figure 12 and Figure 12 illustrates servers
arranged both horizontally and vertically. See also Ans. 7.
Appellants further contend that because Broome does not describe its
rack as a “computer equipment rack, as claimed here,” that Broome fails to
disclose such a structure. Br. 4. We are instructed that, even with respect to
a rejection based on anticipation, a reference does not fail “merely because it
does not contain a description of the subject matter of the appealed claim in
ipsissimis verbis.” In re May, 574 F.2d 1082, 1090 (CCPA 1978). In this
regard, we agree with the Examiner that the test for obviousness is not
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whether the claimed invention is expressly described in the reference, but
“[r]ather, the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.” Ans. 5; see also In re
Keller, 642 F.2d 413, 425 (CCPA 1981). In view of the above, Appellants’
contention that because Broome fails to explicitly refer to the illustrated rack
as “a computer equipment rack,” that Broome somehow fails to disclose
such a rack, is not persuasive.
Appellants also assert “that [Appellants] are not relying on an
intended use of the claimed apparatus to distinguish the claimed apparatus
from what is taught in Broome.” Br. 5. Because such a rationale is not
being relied on by Appellants (or, for that matter, apparently asserted by the
Examiner), such matter will not be further investigated by the Board. See
Ans. 5‒6.
In view of the above, we are not persuaded of Examiner error in
rejecting claim 7 as being unpatentable over Broome. Accordingly, we
sustain the Examiner’s rejection of claim 7.
Claims 8‒12
Regarding claims 8‒12, Appellants contend that “the Office Action
literally includes no mention at all of the limitations recited in claims 8‒12,
or any assertion that these claims are taught or suggested by Broome.” Br.
5. We agree with Appellants that nowhere does the Examiner expressly
address each of these dependent claims or indicate how their additional
limitations may be rendered obvious by Broome. See generally Ans. The
PTO fails to carry its procedural burden of establishing a prima facie
rejection when the rejection is so “uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011), citing Chester
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v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). Accordingly, we must
reverse the Examiner’s rejection of claims 8‒12 as failing to set forth a
prima facie rejection with respect to these claims. See also Br. 6.
DECISION
The Examiner’s rejection of claim 7 is affirmed.
The Examiner’s rejection of claims 8‒12 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)(iv).

AFFIRMED-IN-PART

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