Ex Parte Costello et al

Patent Trial and Appeal Board

Oct 25, 2012

11271293 (P.T.A.B. Oct. 25, 2012)

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.
11/271,293 11/10/2005 David Costello 7339-005U 9198
29973 7590 10/25/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE LLP
ATTN: STEVEN M. GREENBERG, ESQ.
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
THOMAS, BRADLEY H
ART UNIT PAPER NUMBER
2835
MAIL DATE DELIVERY MODE
10/25/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID COSTELLO and MICHAEL PERRI
____________

Appeal 2011-006096
Application 11/271,293
Technology Center 2800
____________

Before CARL W. WHITEHEAD, JR., JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006096
Application 11/271,293

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1 and 4-20 (App. Br. 2). Claims 2-3 were canceled (id.). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary claim 1 follows:
1. A chassis for an electronic device, comprising:

a plurality of fans, each of the fans directing a fluid into
an interior of the chassis;

wherein a positive pressure exists between the interior of
the chassis and an exterior of the chassis at all openings,
excluding fan openings, within the chassis an open to outside
the chassis, wherein

the plurality of fans are attached to a single face of the
chassis, and

the fluid outputted by the plurality of fans is directed
toward a second face of the chassis, and

the second face of the chassis having a greatest total area
of the openings, excluding the fan openings

Claims 1 and 4-20 stand rejected under 35 U.S.C. 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention
(Ans. 3-4).
Appeal 2011-006096
Application 11/271,293

3
Claims 1, 4-7, 11, 14, and 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Rolls (U.S. 6,750,562) in view of Shao (U.S.
2002/0015287) (Ans. 4-10).
Claims 8-10 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rolls in view of Shao and Kammersqart (U.S. 5,505,533)
(Ans. 11-13).
Claims 12-13, 15-16, and 19-20 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Rolls in view of Shao and Fujimori (U.S.
2005/0019165) (Ans. 13-14).

ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
1. Did the Examiner err in finding that the claim limitation that “a
positive pressure exists . . . at all openings, excluding fan openings . . .” is
indefinite in rejecting claims 1 and 4-20 under 35 U.S.C. 112, second
paragraph?
2. Did the Examiner err in finding that the combination of Rolls
and Shao teaches or suggests “a positive pressure exists between the interior
of the chassis and an exterior of the chassis at all openings, excluding fan
openings, within the chassis and open to outside the chassis,” as recited in
independent claim 1, and as similarly recited in independent claims 14 and
19?

Appeal 2011-006096
Application 11/271,293

4
ANALYSIS
Issue 1
The Examiner rejected claims 1 and 4-20 under 35 U.S.C. 112, second
paragraph on the basis that the claim limitation “a positive pressure exists . .
. at all openings, excluding fan openings . . .” is indefinite (Ans. 3). The
Examiner reasoned that “[i]t is currently unclear how some of the openings
affect the positive pressure but not others” (id. at 4). Appellants contend that
the Examiner’s “characterization of the claimed invention is incorrect”
(App. Br. 5). Appellants argue that “[a]n opening, per se, has no effect on
the ability of the chassis to have a positive pressure inside” (id.). Appellants
further argue that “the claimed invention refers to a characteristic at all the
openings, excluding fan openings – not how the openings affect the
characteristics” (id.). We agree with Appellants. The claims clearly recite
that there is a positive pressure at all the openings of the chassis excluding
the fan openings. Accordingly, we find that the Examiner erred in rejecting
claims 1 and 4-20 under 35 U.S.C. 112, second paragraph.

Issue 2
We disagree with Appellants’ assertions regarding the Examiner’s
obviousness rejections of claims 1 and 4-20. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the Answer
(Ans. 4-14 and 16-28) in response to arguments made in Appellants’ Appeal
Brief. We concur with the conclusion reached by the Examiner. We
highlight and address certain findings and arguments below.
Appeal 2011-006096
Application 11/271,293

5
Appellants contend that the Examiner erred in rejecting claim 1 as
obvious because Shao does not teach that “a positive pressure exists between
the interior of the chassis and an exterior of the chassis at all openings,
excluding fan openings within the chassis and open to outside the chassis”
(App. Br. 11). But the recitation of pressure levels at various openings is
just a property of a prior art structure and therefore, cannot be given any
patentable weight. AtlasPowder Co. v. Ireco Inc., 190 F.3d 1342, 1347
(Fed. Cir. 1999) (“[T]he discovery of a previously unappreciated property of
a prior art composition, or of a scientific explanation for the prior art’s
functioning, does not render the old composition patentably new to the
discoverer.”). Accordingly, we find no error in the Examiner’s rejection of
claim 1.
Appellants also contend that the Examiner erred in rejecting claim 14
as obvious because the combination of Rolls and Shao does not teach or
suggest an exhaust velocity of 9 ft/sec (App. Br. 14-16). In addition,
Appellants contend that the Examiner erred in rejecting claim 18 as obvious
because the combination of Rolls and Shao does not teach or suggest a
percentage of the fan area on a face to the total area of the face of greater
than 18% (App,. Br. 18-19). The Examiner found, however, that it would
have been obvious to one of ordinary skill in the art to adjust the exhaust
velocity and fan area by adjusting the size of the fans (Ans. 22-24). We
agree with the Examiner. Shao discloses an exhaust speed of 7.3 ft/sec (¶¶
[0053]-[0057]). In addition, Appellants Specification discloses that the
exhaust air speed can be changed by using fans with different sizes (¶
[0022]). In other words, it would have been obvious to increase the exhaust
speed of Shao from 7.3 ft/sec to 9 ft/sec by using larger fans. Similarly, the
Appeal 2011-006096
Application 11/271,293

6
percentage of fan area could also be adjusted to be greater than 18% by
using larger fans. Accordingly, we find no error in the Examiner’s
obviousness rejections of claims 14 and 18. We also find no error in the
Examiner’s rejection of the remaining claims on appeal (i.e., claims 4-13,
15-17, 19, and 20) because Appellants did not set forth any separate
patentability arguments for them (see App. Br. 20-21).

DECISION
We reverse the Examiner’s decision rejecting claims 1 and 4-20 as
indefinite and affirm the Examiner’s decision rejecting claims 1 and 4-20 as
obvious.
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

pgc