Ex Parte Flynn

Patent Trial and Appeal Board

Oct 21, 2015

10355992 (P.T.A.B. Oct. 21, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/355,992 0113112003 Michael Patrick Flynn
45457 7590 10/23/2015
SCHWEGMAN LUNDBERG & WOESSNER/Intel
c/o CPA Global
P.O. Box 52050
MINNEAPOLIS, MN 55402
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.
P74526 3743
EXAMINER
LY,NGHIH
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
10/23/2015 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):
uspto@slwip.com
SLW@blackhillsip.com
Inteldocs _ docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte MICHAEL PATRICKFLYNN1
Appeal2013-007995
Application 10/355,992
Technology Center 2600
Before JOHN G. NEW, JEFFREY A. STEPHENS, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 2-8, 10-15, 18-26, 28-38, 43, 44, 46-53, and 55-76. Claims 1, 9,
16, 17, 27, 39--42, 45, and 54 have been canceled. Br. 4. We have
jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Introduction
Appellant's invention is directed to "transmission station installations
for wireless telecommunications networks and, more particular, to track
1 Appellant identifies Powerwave Technologies, Inc. as the real party in
interest. Br. 2.
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systems and methods of use that facilitate the optimization of transmission
station site space." Spec. i-f 2. In a disclosed embodiment, a cabinet
containing communications equipment (such as a base transceiver station or
radio base station) is installed on a track system. Spec. i-f 8. According to
the Specification, this disclosed embodiment minimizes lease space
requirements while allowing sufficient access to the equipment by
technicians. Spec. i-fi-1 8, 10.
Claim 18 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
18. A method for minimizing space requirements for
electronic equipment installation sites comprising the steps of
installing a track system on flooring of the space,
installing a plurality of cabinets for receiving electronic
equipment on the space,
moveably mounting at least one of the plurality of
cabinets on top of the track system wherein said cabinet is
transversely rnovable on the track systern while remammg
within a containment space, and
coupling a flexible track to at least one of the plurality of
cabinets that is moveably mounted on the track system, said
flexible track for routing cable to at least one of the plurality of
cabinets that is moveably mounted on the track system.
The Examiner's Rejections
1. Claims 2-7, 10, 11, 15, 18-23, 25, 26, 28-32, 34--38, and 43
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Inamasu
et al. (US 4,197,434; Apr. 8, 1990) ("Inamasu") and Vander Park (US
5,988,076; Nov. 23, 1999). Ans. 3-7.
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2. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Inamasu, Vander Park, and McCurry (US
5,579,918; Dec. 3, 1996). Ans. 7-8.
3. Claims 14, 44, and 66-69 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Inamasu, Vander Park, and Sumpter
(US 6,589,002 B2; July 8, 2003). Ans. 8-9.
4. Claims 24, 33, and 46 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Inamasu, Vander Park, and Tanaka et al. (US
5,934,368; Aug. 10, 1999) ("Tanaka"). Ans. 9-10.
5. Claims 71-74 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inamasu, Vander Park, and Krawczyk (US 6,299,184 Bl;
Oct. 9, 2001). Ans. 10-11.
6. Claims 8, 47--49, and 52 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Inamasu, Vander Park, and Davison et
al. (US 5,205,627; Apr. 27, 1993) ("Davison"). Ans. 11-14.
7. Claims 50 and 51 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Inamasu, Vander Park, Davison, and McCurry.
Ans. 14--15.
8. Claims 53 and 70 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Inamasu, Vander Park, Davison, and Sumpter. Ans.
15-16.
9. Claim 55 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inamasu, Vander Park, Davison, and Tanaka. Ans. 16-
17.
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10. Claim 75 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inamasu, Vander Park, Davison, and Krawczyk. Ans. 17-
18.
11. Claim 56 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inamasu and Lindquist et al. (US 6,443,542B1; Sept. 3,
2002) ("Lindquist"). Ans. 18-19.
12. Claims 57-59, and 62 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Inamasu, Lindquist, and Davison. Ans. 19-21.
13. Claims 60 and 61 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Inamasu, Lindquist, Davison, and McCurry. Ans.
21.
14. Claim 63 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inamasu, Lindquist, Davison, and Sumpter. Ans. 22.
15. Claim 64 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inamasu, Lindquist, Davison, and Vander Park. Ans. 23.
16. Claim 65 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inamasu, Lindquist, Davison and Tanaka. Ans. 24.
17. Claim 76 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inamasu, Lindquist, and Krawczyk. Ans. 24-25.
Issues on Appeal
1. Did the Examiner err in finding the combination of Inamasu
and Vander Park teaches or suggests a "cabinet is transversely movable on
the track system," as recited in independent claims 18, 26, 34, and 38?
2. Did the Examiner err in relying on, or by combining with other
references, Vander Park and Krawczyk?
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3. Did the Examiner err by failing to consider the evidence in
support of commercial success presented by Appellant?
ANALYSIS2
Transversely Movable on the Track System
Appellant argues the combination of Inamasu and Vander Park fails to
teach or suggest the limitation "wherein said cabinet is transversely movable
on the track system," as recited in independent claims 18, 26, 34, and 38.
Br. 15-16. In support of this position, Appellant contends: "As is well
known in the art, the phrase 'transversely movable' is generally defined as
an object moving in the direction at right angles to the long axis of the
body." Br. 16. Appellant further argues that the cabinet as illustrated in
Inamasu (and relied upon by the Examiner) is not transversely movable, but
rather, moves in a direction parallel with the width of the frame and,
therefore, perpendicular to a transverse motion. Id. Additionally, Appellant
argues the track system of Inamasu includes a top track as well as a bottom
track such that the cabinet moves between upper and lower rails in a track
system rather than moving on top of a track system as claimed. Id.
Appellant concludes, therefore, Inamasu teaches away from the claimed
invention because the top track in Inamasu is necessary to prevent the
cabinets from tipping over. Br. 16-17.
We find Appellant's arguments unpersuasive of Examiner error. As
an initial matter, we observe that dependent claims 71 through 74 (which
2 Throughout this opinion we have considered the Appeal Brief filed
November 29, 2012 ("Br."); the Examiner's Answer mailed on March 13,
2013 ("Ans."); and the Office Action mailed on December 30, 2011, from
which this Appeal is taken ("Final Act.").
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Application 10/355,992
depend from independent claims 18, 26, 34, and 38, respectively) recite the
further limitation "wherein transversely moveable [sic] comprises back and
forth and side to side mobility." Claims 71-74. "Under the doctrine of
claim differentiation, dependent claims are presumed to be of narrower
scope than the independent claims from which they depend." AK Steel Corp.
v. Sollac and Ugine, 344 F.3d 1234, 1242 (Fed. Cir. 2003) (internal citation
omitted). Thus, contrary to Appellant's contention, "transversely movable"
is not limited to "an object moving in the direction at right angles to the long
axis of the body." See Br. 16.
The Examiner finds at least Figure 8 of Inamasu teaches a cabinet that
is transversely movable on the track system as claimed. Ans. 27. We
additionally note that Inamasu describes as an object of the invention that
"the movable frames are movable transversely to the maintenance path
arranged in front thereof." Inamasu, col. 3, 1. 68---col. 4, 1. 2 (emphasis
added). Thus, we agree with the Examiner's findings and conclusion that
Inamasu teaches the disputed limitation "wherein said cabinet is transversely
movable on the track system."
Additionally, we disagree with Appellant's conclusion that Inamasu
teaches away from Appellant's invention because Inamasu includes a top
track in addition to a bottom track system. As the Examiner correctly
explains, the claim language does not preclude the use of a top track. Ans.
30. We agree with the Examiner's findings and conclusions that Inamasu
teaches a cabinet transversely movable on a track system. Id.
Appellant also makes a number of arguments that the other prior art
references (i.e., other than Inamasu and Vander Park), alone or in various
combinations, do not teach or suggest the limitation of "said cabinet is
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transversely movable on the track system," as set forth in independent
claims 18, 26, 34, and 38. See Br. 19-28 (emphasis omitted). We are not
persuaded by Appellant's arguments because, as discussed supra, we agree
with the Examiner's findings that Inamasu teaches the disputed limitation.
Further, the Examiner does not rely on the other references to teach this
limitation. Accordingly, Appellant's argument is not responsive to the
Examiner's finding and is not persuasive of Examiner error.
Analogous Art Inquiry
Appellant contends "Vander Park is non-analogous art because
Vander Park is in a different field of endeavor." Br. 18. Appellant argues
the claimed invention is directed to developing telecommunications
transmission stations whereas Vander Park is directed to work stations in an
office wherein the office desk is movable and coupled to a wall via a flexible
cable. Br. 18. Appellant further argues that "[ o ]ne of ordinary skill in the
art practicing Appellant's field of endeavor [i.e., developing
telecommunications transmission stations] would not logically look to the
simpler office work stations [of Vander Park] which have much less
complexity in terms of mechanical and electrics considerations." Br. 19.
We are not persuaded by Appellant's argument. Under the analogous
art test, a reference is analogous art if it is "either in the field of the
applicant's endeavor or is reasonably pertinent to the problem with which
the inventor was concerned." In re Kahn, 441F.3d977, 986-87 (Fed. Cir.
2006). Both of Appellant's contentions relate to the first inquiry, i.e.,
whether Vander Park shares the same field of endeavor as Appellant.
However, as the Examiner correctly explains, Vander Park is "reasonably
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pertinent to the particular problem with which the Appellant was
concerned," namely, addressing issues related to flexible cables connected
between a fixed end (i.e., to a wall) and movable equipment (whether a
telecommunications cabinet or office work station). Ans. 32. Accordingly,
we agree with the Examiner's findings and conclusions that Vander Park is
analogous art.
Appellant also argues Krawczyk is non-analogous art because
Krawczyk is in the field of "delivery truck methods for delivering consumer
items from distributors to retail stores." Br. 21-22. Appellant further
argues, without sufficient evidence or argument, that "the teachings of
Krawczyk are not reasonably pertinent to the problems and solutions to
which the present application is directed." Br. 22.
We are not persuaded by Appellant's argument because both
Krawczyk and Appellant's application address the problem of providing
improved access by a worker to either carts of products (as in Krawczyk, see
Krawczyk, Abstract) or cabinets of equipment (see Spec. i-f 10) by moving
the carts or cabinets. As relied on by the Examiner, Krawczyk addresses the
problem of also moving carts/cabinets in a back and forth motion, similar to
Appellant's invention. Ans. 34. Accordingly, we agree with the Examiner's
findings and conclusions that Krawczyk is reasonably pertinent to a problem
with which the Appellant (i.e., inventor) was concerned and is, therefore,
analogous art.
Secondary Considerations of N onobviousness
Appellant argues "[t]he Examiner erred by failing to consider the
evidence in support of commercial success presented to the Examiner." Br.
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29. Appellant submitted a declaration of Mr. Arbab to rebut the Examiner's
obviousness rejection. Br. 30, Ex. A ("Arbab Deel."). Mr. Arbab declares,
inter alia, that assignee and real party in interest Powerwave Technologies,
Inc. ("Powerwave") sells a line of enclosures "that embody the invention."
Arbab Deel. i-f 1. According to Mr. Arbab, the enclosures "include a
plurality of cabinets moveably mounted on top of a track system where the
cabinets are moveable on the track system while remaining within the
enclosure containment area." Id. Further, Mr. Arbab declares customers of
Powerwave' s enclosures can increase equipment capacity within existing
lease footprints, "a benefit that flows directly from having a plurality of
cabinets moveably mounted on top of a track system." Arbab Deel. i-f 2.
Additionally, Mr. Arbab declares Powerwave achieved over $15 million of
sales in the first year on the market and further states "[t ]his dramatic sales
figure is believed to be due to the merits of the product." Arbab Deel. i-f 4.
The Examiner explains the Declaration of Mr. Arbab is insufficient to
overcome the obviousness rejection "because the evidence submitted is not
enough to support a nexus between the claimed features and the commercial
success of the invention. The submitted declaration and product brochure do
not support that commercial success was sorely [sic] achieved due to the
claimed features." Ans. 41--42.
The burden rests with Appellant to establish that the "asserted
commercial success of the product must be due to the merits of the claimed
invention beyond what was readily available in the prior art." See Asyst
Tech., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008); quoting J.
T. Eaton & Co., Inc. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed.
Cir. 1997). A primary consideration in demonstrating actual commercial
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success is if sales of the claimed invention have produced a substantial share
of the marketplace. See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).
On this record, the Appellant has not shown what percentage of the market
has been acquired. Consequently, we cannot gauge whether the proffered
sales show commercial success of the allegedly covered product. See In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("Information
solely on numbers of units sold is insufficient to establish commercial
success."); see also In re Huang, 100 F.3d at 140 ("Declining to find
evidence of commercial success because '[a]though [the inventor's] affidavit
certainly indicates that many units have been sold, it provides no indication
of whether this represents a substantial quantity in this market.'").
Moreover, even if the evidence proffered sufficiently demonstrates
commercial success, that success is only relevant in the obviousness context
if there is proof that the success results from the unique characteristics of the
claimed invention-as opposed to other economic and commercial factors
unrelated to the quality of the claimed invention. In re Huang, 100 F.3d at
140.
As an initial matter, Mr. Arbab does not establish that the Powerwave
enclosures even practice the claimed invention. Mr. Arbab declares that the
cabinets are "moveably mounted" on the track system and that the "cabinets
are moveable on the track system." Arbab Deel. ,-r 1. However, the claimed
invention requires the cabinet be "transversely movable on the track
system." See, e.g., claim 18. As Appellant concedes, Inamasu teaches
cabinets that are movable on a track system. See Br. 15. Thus, any
commercial success of cabinets that are movable on a track system stems
from what was known in the prior art so that there can be no nexus. Takai
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Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) ("If
commercial success is due to an element in the prior art, no nexus exists.");
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)
("[I]f the feature that creates the commercial success was known in the prior
art, the success is not pertinent."). Accordingly, we determine the Examiner
considered the submitted evidence and correctly found it to be insufficient to
overcome the obviousness rejection.
For the reasons discussed, supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejections of claims 2-8, IO-
15, 18-26, 28-38, 43, 44, 46-53, and 55-76.
DECISION
We affirm the Examiner's decision to reject claims 2-8, 10-15, 18-
26, 28-38, 43, 44, 46-53, and 55-76.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
Klh
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