Ex Parte DeCesaris et al

Patent Trial and Appeal Board

Mar 29, 2018

13719499 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
131719,499 12/19/2012
127893 7590 04/02/2018
Streets Lawfirm, PC - Lenovo (Singapore) Pte. Ltd.
20319 Corbin Creek Drive
Cypress, TX 77433
Michael DeCesaris
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
XRPS920120089US1 1067
EXAMINER
PARVEZ,AZMA
ART UNIT PAPER NUMBER
3729
NOTIFICATION DATE DELIVERY MODE
04/02/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
j streets@streetsiplaw.com
jstreets@patent-law.cc
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL DeCESARIS, LUKE D. REMIS,
STEVEN L. VANDERLINDEN, and JOHN K. WHITZEL
Appeal2016-005065
Application 13/719 ,499 1
Technology Center 3700
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-16. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Lenovo Enterprise
Solutions (Singapore) Pte. Ltd. (Appeal Br. 2.)
Appeal 2016-005065
Application 13/719,499
CLAIMED SUBJECT MATTER
Appellants' claimed invention "relates generally to dual inline
memory modules (DIMMs) and more specifically to an extraction tool for
removing dual inline memory modules from a DIMM socket." (Spec. i-f 1.)
Claims 1, 8, and 14 are the independent claims on appeal. Claim 1
(Appeal Br. 20) is illustrative. It recites (emphasis added):
1. A DIMM extraction tool for extracting a DIMM from a
DIMM socket, comprising:
a frame adapted for use as an air baffle within the DIMM
socket;
a first arm and a second arm pivotably connected to the
frame;
wherein when the frame, the first arm and the second arm
are in a resting position, the first arm and the second arm
respectively engage a first portion of the frame to prevent
pivotable rotation of the first arm and second arm;
wherein when the frame, the first arm and the second arm
are in a working position, the first arm and the second arm
respectively are adapted to releasably engage the DIMM and bias
resilient latching arms of the DIMM socket; and
wherein the resting position of the frame is a vertically
inverted orientation relative to the working position of the frame.
REJECTION
Claims 1-16 are rejected under 35 U.S.C. § 103(a) in view of Chen
(US 5,479,669, iss. Jan. 2, 1996) and Peterson (US 7,379,297 B2, iss.
May 27, 2008).
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Appeal 2016-005065
Application 13/719,499
ANALYSIS
Chen discloses a multi-purpose tool for straightening the feet/legs of
an integrated circuit ("IC"), for engaging an IC with a seat/socket, and for
disengaging an IC from a seat/ socket. (Chen, co 1. 1, 11. 15-2 5.) Peterson
discloses an airflow regulation device. (Peterson, col. 1, 11. 55-56.)
Peterson discloses that the airflow regulation device has legs "configured to
mate with a connector on a substrate such as, e.g., a circuit board." (Id. at
col. 1, 11. 64---67 .) Peterson further discloses that the connector may be a
DIMM socket. (Id. at col. 2, 11. 36-37 .)
The Examiner finds:
Chen discloses almost all of the limitations of the claimed
inventions of a tool but is silent about a frame adapted for use as
an air baffle within the DIMM socket. However Peterson shows
that airflow regulation device 100 is used as an air baffle when
installed in a DIMM socket (Fig. 2; 1 OOa-d).
It would have been obvious to one with ordinary skill in
the art at the time of invention to modify Chen by providing a
frame adapted for use as an air baffle within the DIMM socket,
as taught by Peterson, since such a modification of a frame
adapted for use as an air baffle within the DIMM socket is well
known to those skilled in the art.
(Answer 3.)
Appellants disagree and argue that the rejection "fails to state how
Chen is being asserted to be modified," and that "[i]t is not at all obvious
how Chen could be modified to include a frame adapted for use as an air
baffle." (Appeal Br. 15.) Appellants further argue "that no part of
Peterson's airflow regulation device is ever 'within the DIMM socket."' (Id.
at 16.) Specifically, Appellants assert that "Peterson's device 100 does not
extend within a DIMM socket." (Reply Br. 6, emphasis omitted.)
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Appeal 2016-005065
Application 13/719,499
Appellants' Specification discloses that Figures 2 and 5 depict the
"DIMM extraction tool ... being utilized as an air baffle situated within a
DIMM socket." (Spec. i-f 24, emphasis added.) Figures 2 and 5 show DIMM
extraction tool 10 positioned between "resilient latching arms 306 and 308
... on DIMM socket 300." (Id. i-f 15, Figs. 2, 5.) Applying a broadest
reasonable interpretation, we construe the term "within the DIMM socket" to
include the space between the latching arms of the DIMM socket, as shown
in Appellant's Figures 2 and 5. See Oatey Co. v. JPS Corp., 514 F.3d 1271,
1276 (Fed. Cir. 2008) ("We normally do not interpret claim terms in a way
that excludes embodiments disclosed in the specification.")
Peterson discloses airflow regulation device 100 comprising second
segment 130 that is "removably connected to the first segment 110 by at
least one breakable tabs 116a, 116b" (Peterson, col. 1, 11. 57-59), and that
"[a] first leg 112a and a second leg 112b are connected to first segment 110"
(id., col. 1, 11. 64---65). Peterson further discloses that "DIMM socket 210
comprises a first bracket 212a that connects to first leg 112a and a second
bracket 212b that connects to second leg 112b." (Id., col. 2, 11. 44--46.) As
shown in Figure 2 of Peterson, second segment 130 of airflow regulation
device 100 is positioned below the tops ofDIMM socket brackets 212a and
212b. In other words, at least a portion of airflow regulation device 100 is
positioned within DIMM socket 210. Therefore, we do not find Appellants'
argument "that no part of Peterson's airflow regulation device is ever 'within
the DIMM socket"' to be persuasive of error. (See Appeal Br. at 16.)
Nonetheless, we agree with Appellants that the Examiner has not
sufficiently explained the proposed modification. Appellants' Specification
discloses that "DIMM extraction tool 10 includes a frame 100, and a first
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Appeal 2016-005065
Application 13/719,499
arm 120 and a second arm 130 pivotably connected thereto, 122 and 132."
(Spec. § 17.) Appellants' Figure 2 shows frame 100 positioned within the
DIMM socket.
The Examiner proposes modifying Chen "by providing a frame
adapted for use as an air baffle." (Answer 3.) The Examiner finds that Chen
discloses "a first arm (Fig. 2; left outer arm 30) and a second arm (Fig. 2;
right outer arm 30) pivotably (Fig. 2; 30 and col. 2; ln. 18-19) connected to
the frame (Fig. 2; 10)." (Final Action 2.) But Chen also includes two inner
arms 20. (Chen, col. 1, 11. 66----67; see also id. Fig 2.) Chen does not disclose
that inner arms 20 pivot. The Examiner has not sufficiently explained how
one would modify frame 10 of Chen, in view of the non-pivoting inner
arms 20, so that frame 10, even if modified for use as an air baffle, would
provide "an air baffle within the DIMM socket," as recited in claim 1. Even
if we assume that the modification of Chen would also include some
modifications to Chen's inner arms 20 and/or outer arms 30, it is not clear
what those modifications would be so that the device would still provide
first and second arms "adapted to releasably engage the DIMM and bias
[the] resilient latching arms of the D IMM socket," as recited in claim 1.
In view of the above, we are persuaded that the Examiner has not
provided sufficient articulated reasoning with rational underpinning to
support the conclusion of obviousness. See KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). Therefore, we are persuaded that the Examiner
erred in rejecting claim 1 and dependent claims 2-7, which depend
therefrom, under§ 103(a).
Independent claims 8 and 14 include similar language and the
Examiner makes similar findings. (See Final Action 5-9.) For the reasons
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Appeal 2016-005065
Application 13/719,499
discussed above, we are similarly persuaded that the Examiner erred in
rejecting independent claims 8 and 14, and dependent claims 9--13, 15,
and 16, which depend therefrom, under§ 103(a).
DECISION
The Examiner's rejection of claims 1-16 under 35 U.S.C. § 103(a) is
reversed.
REVERSED
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