Ex Parte DeCesaris et alDownload PDFPatent Trial and Appeal BoardMar 29, 201813719499 (P.T.A.B. Mar. 29, 2018) Copy Citation 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). 2 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.) 3 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 4 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 5 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 6 Copy with citationCopy as parenthetical citation