Ex Parte Chen et al

Board of Patent Appeals and Interferences

Nov 24, 2009

11205306 (B.P.A.I. Nov. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVE XU CHEN and BRUCE PETERSON
____________

Appeal 2009-003183
Application 11/205,306
Technology Center 2800
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Decided: November 25, 2009
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and BRADLEY
W. BAUMEISTER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

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STATEMENT OF THE CASE
Appellants invented a pluggable optoelectronic transceiver with
rotatably-mounted lever. One portion of the lever includes a user-actuable
arm that is larger than the other portion of the lever. This structure makes it
easier to unplug transceivers from host devices with recessed areas.1 Claim
1 is illustrative:
1. A device comprising:

a housing having a surface, the housing having a tab projecting from
the surface; a printed circuit board mounted to the housing, the printed
circuit board having contact traces;

a member positioned near the tab, the member having an actuation
surface, the member moveable relative to the tab and to the surface of the
housing in only a translational direction and not a rotational direction, the
member made of a substantially rigid material; and

only one lever rotatably mounted to the housing, the only one lever
having a rotatably mounted portion, a free end, a first portion, and a second
portion, the second portion including an arm for actuation by a user, the
rotatably mounted portion having a bump, the free end forming a handle, the
first portion having a height and a width, and the second portion having a
height and a width, and wherein the height of the second portion is greater
than the height of the first portion, and wherein the width of the second
portion is greater than the width of the first portion, and wherein,

in a locked position of the only one lever, the handle is positioned
adjacent to the housing and the bump is positioned away from the housing,
and the bump contacts the actuation surface of the member, and wherein the
member is separated from the tab by a first distance, and wherein,

in an un-locked position of the only one lever, the handle is positioned
away from the housing and the bump is positioned adjacent to the housing,
and the bump contacts the actuation surface of the member, and wherein the

1 See generally Abstract; Spec. ¶¶ 0001, 0018-23; Figs. 11-16.
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member is separated from the tab by a second distance, and wherein the first
distance is greater than the second distance.

The Examiner relies on the following as evidence of unpatentability:
Killian US 4,787,858 Nov. 29, 1988
Medina US 6,778,399 B2 Aug. 17, 2004

THE REJECTION
The Examiner rejected claims 1-14 under 35 U.S.C. § 103(a) as
unpatentable over Medina and Killian. Ans. 3-4.2
Regarding representative claim 1,3 the Examiner finds that Medina in
Figures 1 and 2 discloses a device including a single lever 12 with a
rotatably-mounted portion having a “bump” 30. Ans. 3-5. According to the
Examiner, the lever 12 has first and second portions on its left and right
sides, respectively, as shown in the annotated detail view of Medina’s device
on Page 5 of the Answer reproduced below:

2 Throughout this opinion, we refer to the Appeal Brief filed March 11, 2008
and the Examiner’s Answer mailed June 20, 2008.
3 Although Appellants argue independent claim 1 separately from the other
claims on appeal (dependent claims 2-6, independent claim 7, and dependent
claims 8-14) (Br. 12-19), Appellants’ arguments with respect to claims 2-14
reiterate the same arguments made in connection with claim 1. See Br. 18-
19. Accordingly, we group all claims together and select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii).

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Examiner’s Annotated Detail View of Medina’s Device Showing First
and Second Portions of Lever 12

The Examiner finds that Medina discloses all of the claimed subject
matter except for the second portion to have a height and width greater than
that of the first portion, and cites Killian’s Figure 5 as teaching this feature.
Ans. 5-6. Specifically, the Examiner refers to the structure of operating arm
38 in Figure 5 of Killian, and takes the position that skilled artisans could
have added such an arm to the “second portion” (i.e., right side) of Medina’s
lever such that the second portion would have a greater height and width
than the “first portion” (i.e., the opposite side of the lever). Ans. 3-8.
Appellants argue that Killian does not disclose (1) a device with only
one lever having a bump as claimed, and (2) a member as defined in the
Specification. Br. 13. Appellants add that Killian is not analogous to
Appellants’ technology, nor is there any motivation to combine Killian and
Medina as proposed since Medina pertains to pluggable optoelectronic
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transceivers, and Killian is directed to passive electrical connectors. Br. 14-
15.
Appellants add that even if these references were combined, the
resulting combination would still not teach or suggest the claimed invention
since applying Killian’s latches to Medina’s host device, faceplate, or
transceiver would not result in the recited structure of a single lever as
claimed. Br. 15-16. Lastly, Appellants contend that the Examiner has
engaged in impermissible hindsight in combining the references to arrive at
the claimed invention. Br. 16-17.
The issues before us, then, are as follows:

ISSUES
(1) Under § 103, have Appellants shown that the Examiner erred in
rejecting claim 1 by finding that Medina and Killian collectively teach or
suggest a single rotatably-mounted lever with a bump, where the lever’s
second portion has a height and width greater than that of its first portion?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion? This
question turns on whether Killian constitutes analogous art.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:

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Medina
1. Medina discloses a pluggable transceiver module 10 with a release
lever or bail actuator 12 located at a first end 14 of the module. The
module’s first end is located opposite a second end 16 to be plugged into a
host device or receptacle. A printed circuit board 20 is exposed at the
second end. Medina, col. 3, ll. 13-23; Figs. 1-3. Medina’s transceiver
module is shown in Figure 1 reproduced below:

Transceiver Module in Medina’s Figure 1

2. To remove the module from a host device, the free end of the bail
12 is rotated outward away from face 38 which drives the member or wedge
28 towards tab 26. An operator can then use the exposed free end as a
handle to manually pull out the module from within the host device.
Medina, col. 3, ll. 32-59; Figs. 1-3.

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Killian
3. Killian discloses a latch 28 that can lock a computer plug 10 into
an associated socket 12. The latch comprises a pivotal body portion 32 and
an operating arm 38 extending therefrom alongside the plug 10. Thus, the
body portion 32 can be moved between first and second (i.e., locked and
unlocked) positions by using the operating arm 38 from the plug’s opposite
end. Killian, col. 3, l. 59 − col. 4, l. 43; Figs. 4-8. The plug and associated
latch are shown in Killian’s Figure 4 reproduced below:

Killian’s Plug and Associated Latch in Figure 4

4. In Figure 10, Killian discloses another embodiment that replaces
the front wire latch 14 with a latch 28’ having a shorter operating arm 38’.
Killian, col. 6, ll. 5-13; Fig. 10.
5. Killian’s Figure 11 is directed to another embodiment where the
latch 28” has no operating arm 38. Killian, col. 6, ll. 13-19; Fig. 11.

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PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). If the
Examiner’s burden is met, the burden then shifts to the Appellants to
overcome the prima facie case with argument and/or evidence. Obviousness
is then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).
To be patentable under § 103, an improvement must be more than the
predictable use of prior art elements according to their established functions.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Moreover, if a
technique has been used to improve one device, and an ordinarily skilled
artisan would recognize that it would improve similar devices in the same
way, using the technique is obvious unless its application is beyond his or
her skill. Id.
According to the Federal Circuit:
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed, and (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.

In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citation omitted).

ANALYSIS
The appeal before us turns on one fundamental question: would it
have been obvious to add a structure similar to Killian’s operating arm 38 to
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the right side of Medina’s lever such that this modified “second portion”
would have a greater height and width than the “first portion” (i.e., the
opposite side of the lever)?
Despite Appellants’ contentions to the contrary, we are not persuaded
of error in the Examiner’s position in this regard. First, we see no error in
the Examiner’s equating Medina’s rightmost portion of the lever 12 to the
recited “second portion”—a portion that is said to constitute an actuation
arm. Ans. 5. This position reasonably comports with the function of
Medina’s lever 12 which is rotated outwardly and used as a handle to
manually pull out the transceiver module from within a host device. See FF
1 and 2.
Although the height and width of the lever’s first and section
“portions” appear to be the same (see FF 1), we nevertheless see no reason
why skilled artisans could not have added an arm to the “second portion”
(i.e., right side) of Medina’s lever as the Examiner proposes (Ans. 7) such
that the second portion would have a greater height and width than the “first
portion” (i.e., the opposite side of the lever).
The very function of the operating arm 38 of Killian’s latch is to move
the associated body portion between locked and unlocked positions. FF 3.
Adding such an arm to one side of Medina’s lever 12 to extend that portion
of the lever as the Examiner proposes would only enhance its movability by,
among other things, making it easier to grasp and move. Such an
enhancement is tantamount to the predictable use of prior art elements
according to their established functions—an obvious improvement. See
KSR, 550 U.S. at 417.
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Appellants’ arguments regarding two other ways to combine the
references (Br. 15-16) are not germane to the Examiner’s position which is
simply predicated on adding an arm to one side of Medina’s single lever
(Ans. 7). Notably, such an improvement would merely extend Medina’s
single lever via an operating arm, and would not require adding levers or
latches as Appellants contend (Br. 15-16).
Appellants’ contention that Killian is non-analogous art (Br. 14-15) is
likewise unavailing. Even if we assume, without deciding, that Killian is not
within Appellants’ field of endeavor of pluggable optoelectronic
transceivers, Killian is nonetheless reasonably pertinent to Appellants’
problem, namely facilitating user actuation of a lever. See Bigio, 381 F.3d at
1325. Although Appellants’ lever actuation structure is in conjunction with
a pluggable transceiver, we nevertheless see no reason why skilled artisans
could not have looked to other electrical devices with associated levers, such
as Killian’s plug and latch (FF 3), when confronted with the problem of
enhancing manual actuation of a lever associated with an electrical device.
Lastly, Appellants’ arguments regarding Killian’s failure to disclose
only one lever and a member (Br. 13) are not germane to the reason that
Killian was cited. Rather, the Examiner cited Medina—not Killian—for
these features. See Ans. 4-6. And while Appellants’ description of Killian’s
two latches 28, 28’ (Br. 13) is directed to an embodiment of Figure 10
different than that of Figures 4-8 (compare FF 3 with FF 4), we nonetheless
see no reason why Killian’s fundamental teaching of extending a pivotal
member via an operating arm in either embodiment could not be applied to
Medina’s lever. That Killian also provides an alternative embodiment
without such an extension (FF 5) only bolsters this conclusion.
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For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of representative claim 1. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 2-14 which fall
with claim 1.

CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
1-14 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-14 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)(1)(iv).

AFFIRMED

erc

Karl D. Kovach
Emerson Network Power Connectivity Solutions, Inc.
Suite 308N
3000 Lakeside Drive
Bannockburn IL 60015