Ex Parte Goh

Board of Patent Appeals and Interferences

Jan 28, 2008

11096489 (B.P.A.I. Jan. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KOK SOON GOH
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Appeal 2007-2393
Application 11/096,489
Technology Center 2800
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Decided: January 28, 2008
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Before TERRY J. OWENS, JENNIFER D. BAHR, and
DAVID B. WALKER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Kok Soon Goh (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-19 and 21, the only pending claims.
We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
Appeal 2007-2393
Application 11/096,489

Appellant’s claimed invention is directed to an organizing apparatus
for use with the numerous cables and accessories in a computer or audio-
video system (Spec. ¶ 1). Further understanding of Appellant’s invention
can be gleaned from claim 1, which reads as follows:
1. A system comprising:
a computer casing having a front and a back
and having a plurality of drive bays, at least one of
the drive bays being capable of being accessed
from the front of the casing;
a computer cable having first and second
opposite ends, and computer connectors at each of
the ends, the second end of the cable being routed
interior of the computer casing;
a frame selectively and removably attached
to the first end of the computer cable, the frame
being selectively and removably attached to a
single computer cable end;
a frame selectively and removably attached
to an end of a computer cable of a different type
than the first cable; and
an organizing apparatus including a housing
sized to be received in one of the drive bays, the
housing of the organizing apparatus having a front
side accessible from the front of the computer
casing, when the housing of the organizing
apparatus is received in the drive bay, the housing
of the organizing apparatus being removably
mountable in the one of the drive bays, the housing
of the organizing apparatus further being
configured to support the first end of the computer
cable, wherein, after the organizing apparatus is
received in the drive bay, the computer connector
of the first end of the computer cable is accessible
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Appeal 2007-2393
Application 11/096,489

from the front of the computer housing[ ]1 , wherein
the front side of the organizing apparatus has a
plurality of selectively usable slots for respective,
selective, removable sliding receipt of the first and
second mentioned frames, into selected ones of the
slots, with a tongue and groove engagement
between each frame and each slot, the first
mentioned frame being slidable into any of the
slots in a tongue and groove manner.
The Examiner relies upon the following as evidence of
unpatentability:
Volansky US 5,807,139 Sep. 15, 1998
Schubring2 DE 296 07 853 Sep. 5, 1996

Appellant seeks review of the Examiner’s rejection of claims 1-19 and
21 as unpatentable over Schubring in view of Volansky.3
The Examiner provides reasoning in support of the rejection in the
Answer (mailed April 18, 2006). Appellant presents opposing arguments in
the Appeal Brief (filed January 26, 2006).

1 This instance of “housing” should be changed to “casing” for consistency
throughout the claim.
2 We rely on the translation provided by the USPTO and contained in the
electronic record of this application for our understanding of this document.
3 Appellant additionally seeks review of the Examiner’s objection to claims
1-9 on the basis that certain terminology lacks antecedent basis (Br. 5). That
issue is not within the jurisdiction of the Board, being reviewable by petition
under 37 C.F.R. § 1.181. In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
See Manual of Patent Examining Procedure (MPEP) §§ 1002 and 1201.
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Appeal 2007-2393
Application 11/096,489

OPINION
Appellant’s Brief includes separate arguments for claims 1, 7, 10, 11,
and 19. We observe, however, that Appellant’s representative has made
absolutely no effort to comply with the provision in 37 C.F.R. § 41.37(c)
(1)(vii) that “[a]ny claim argued separately should be placed under a
subheading identifying the claim by number.” Inasmuch as there is no
ambiguity as to which claims are separately argued, we will nevertheless
consider each of Appellant’s arguments. Appellant’s representative is
strongly advised to review the provisions of 37 C.F.R. § 41.37 and to
comply with these provisions in the future.
Claims 1-9
Appellant argues that, as best seen in Figure 6, Schubring’s cable ends
are slid into connection holder 3 along a generally horizontal axis, “contrary
to the language of Appellant’s claim 1” (Br. 6). This argument is not
persuasive for several reasons. First, Appellant does not specify to which
“language of Appellant’s claim 1” the arrangement of Schubring is
“contrary.” Second, the Examiner’s rejection does not rely on the
connection holder 3 of Schubring as the “organizing apparatus.” Rather, the
Examiner relies on the embodiments illustrated in Figures 8-10 and 16 of
Schubring, with Schubring’s connection box 40 corresponding to the
“organizing apparatus” of claim 1 (Ans. 3). Further, Appellant’s argument
appears to attack Schubring individually, rather than the combination of
Schubring and Volansky proposed by the Examiner. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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Appeal 2007-2393
Application 11/096,489

As pointed out by the Examiner (Ans. 4), Volansky teaches an
organizing apparatus (enclosure 2) having a front side having a plurality of
slots (channels 95; fig. 18) therein for respective, selective, removable
sliding receipt of the first end of a plurality of cables, frames (bezels 32)
selectively and removably attached to the first end of the computer cables,
the bezels 32 being slidable in a direction parallel to the front side of
enclosure 2 (col. 4, ll. 21, 50-51; col. 8, ll. 52-57). The Examiner contends
that it would have been obvious to a person of ordinary skill in the art at the
time of Appellant’s invention to form the housing (connection box 40) of
Schubring with a slot for removable sliding receipt of a frame of a cable in a
direction parallel to the front side, as taught by Volansky, to simplify the
assembly of the system (Ans. 4). Appellant does not specifically dispute this
contention.
“[If] a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” See KSR Int’l. Co. v. Teleflex Inc.,
127 S.Ct. 1727, 1740 (2007). The relevant inquiry is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
In essence, the modification of Schubring proposed by the Examiner
is to replace the face plate 40a or face plate and adaptor plate 58 (figs. 8 and
16) arrangement for securing cable end connectors to the housing of the
organizing apparatus with an arrangement using bezels 32 having tongues
(bezel edges 30) that slide into channels 29 or 95 formed in the front face of
the housing (enclosure 2 having a base 4 and cover 6) as taught by Volansky
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Application 11/096,489

(col. 4, ll. 19-24 and 50-65; col. 10, ll. 37-43; figs. 7, 10, 12-14, 14a, and
18), to simplify the assembly of the cables/connectors to the housing. As
such, the proposed modification is nothing more than “the simple
substitution of one known element for another” and thus would have been
obvious to a person of ordinary skill in the art. KSR, 127 S.Ct. at 1740. We
thus conclude that it would have been obvious to a person of ordinary skill
in the art at the time of Appellant’s invention to use the bezel and channel
securement technique taught by Volansky to secure the variety of different
connectors and jacks of Schubring (Translation 4 and 12) to simplify the
assembly. When so modified, the manner of connection of the
cables/connectors of Schubring to the housing of the organizing apparatus
would appear to satisfy the requirements of claim 1.
Appellant also argues that Volansky’s bezel 32 “is different from the
frames recited in claim 1” (Br. 6). It is not apparent, and Appellant has
made absolutely no attempt to explain, why this is the case. The argument is
thus not persuasive.
Appellant additionally appears to be arguing that each bezel 32 taught
by Volansky is attached to a pair of connectors and that, consequently, the
combination of Schubring and Volansky does not teach or suggest the frame
(bezel) being “selectively and removably attached to a single computer cable
end” as called for in claim 1 (Br. 6). This argument fails to take into account
the totality of the teachings of Schubring and Volansky. While the specific
embodiment of bezel 32 described by Volansky includes two ports (col. 1, ll.
44-45), a person of ordinary skill in the art would readily appreciate that
bezels having only a single port are also possible, especially in light of
Volansky’s teaching that embodiments including from one to six ports fall
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Appeal 2007-2393
Application 11/096,489

within the disclosed invention (col. 1, ll. 38-39). “A person of ordinary skill
is also a person of ordinary creativity, not an automaton.” KSR, 127 S.Ct. at
1742. Such a person would also appreciate the advantages in versatility
afforded by the use of single port bezels or frames to maximize the options
available to the user in customizing the configuration of various connectors
or jacks in the front panel of the computer as taught by Schubring
(Translation 4 and 12). We thus conclude that the use of single port bezels
each selectively and removably attached to a single computer cable end to
slidingly secure the diverse types of cables/connectors in Schubring’s
computer front panel would have been obvious to a person of ordinary skill
in the art at the time of Appellant’s invention. Appellant’s argument thus is
not persuasive of error in the Examiner’s rejection.
For the reasons set forth above, Appellant’s arguments fail to
demonstrate the Examiner erred in rejecting claim 1 as unpatentable over
Schubring in view of Volansky. The rejection of claim 1, and claims 2-6, 8,
and 9, which Appellant has not separately argued apart from claim 1, is
sustained.
Appellant argues that dependent claim 7 is patentable over the
combination of Schubring and Volansky for the additional reason that
neither reference shows switches having tongues for sliding receipt in slots,
as called for in claim 7 (Br. 6). This argument is not persuasive, because it
does not address the position articulated by the Examiner (Ans. 5). The
Examiner’s rejection is not grounded on a finding that either Schubring or
Volansky shows switches having tongues for sliding receipt in slots. Rather,
the Examiner contends that it would have been within the skill of the
ordinary worker in the art at the time of Appellant’s invention to use the
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Appeal 2007-2393
Application 11/096,489

tongue and groove securement arrangement taught by Volansky on a switch
in order to easily mount the switch (Ans. 5). Appellant does not dispute the
Examiner’s statement that a switch is a known component (Ans. 9). Nor
does Appellant allege that a person of ordinary skill in the art would fail to
recognize a switch as a component conventionally found on the front panel
of a personal computer of the type disclosed by Schubring or that the use of
the tongue and groove technique taught by Volansky to secure such a
component to the front panel, via a connection box 40 as taught in
Schubring, would have been beyond the skill in the art.
For the above reasons, Appellant’s arguments fail to demonstrate the
Examiner erred in rejecting claim 7 as unpatentable over Schubring in view
of Volansky. The rejection of claim 7 is sustained.
Claims 10-18
Appellant argues that neither Schubring nor Volansky discloses an
organizing apparatus having an open top, as called for in claim 10 (Br. 6-8).
We do not agree. As pointed out by the Examiner on page 9 of the Answer,
Volansky’s enclosure 2 is made up of a base 4 and a cover 6. As illustrated,
for example, in Figures 7 and 8 and Figure 18 of Volansky, base 4 has an
open top to provide access to both the bays 54 therein and the channels 29 or
95. The base 4 is further provided with a cover 6, much like Appellant’s
optional cover 94, to close the open top. We agree with the Examiner that
the fact that the organizing apparatus taught by Volansky is provided with a
cover to close the open top does not distinguish the apparatus of the applied

4 While Appellant’s Specification and drawings do not specifically show a
hinged cover on the embodiment of Figures 5a, 5b, there is no indication that
the disclosure of a hinged cover does not also apply to that embodiment.
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Appeal 2007-2393
Application 11/096,489

prior art from claim 10 (Ans. 9). Moreover, to the extent that such a cover
would be inappropriate or unwieldy when the organizing apparatus or
housing is inserted into a drive bay of a computer, in the manner disclosed
by Schubring, a person of ordinary skill in the art would possess the skill and
common sense to eliminate such cover. Appellant’s argument therefore does
not persuade us the Examiner erred in rejecting claim 10 as unpatentable
over Schubring in view of Volansky. The rejection of claim 10, and claims
12-18, which Appellant has not separately argued apart from claim 10, is
sustained.
Appellant additionally argues that the combination of Schubring and
Volansky does not satisfy the limitation in claim 11 of a plurality of panels
selectively slidingly received in each slot which does not have a cable end
received therein, to close the slot (Br. 8). Appellant reasons that Volansky
discloses a blank 38 including at least one nub 43 and preferably two nubs
43 projecting from the front surface 45 of blank 38 to mount blank 38 to
close port 34 and that there is no discussion of the blank being slidingly
received. Id. The arrangement alluded to by Appellant is described by
Volansky at column 4, line 66 to column 5, line 14 and illustrated in Figures
13 and 14a. The nub or nubs 43 engage with foramen 39 on bezel 32 to
secure the blank 38 to the bezel. Appellant’s argument, however, does not
highlight any distinction between the claimed subject matter and the
teachings of Volansky. As pointed out by the Examiner (Ans. 9), the blank
38 is attached to bezel 32, which is slidingly received in channel 95. The
use of such blanks in slots in Schubring’s organizing apparatus where cable
ends/connectors are not received to reserve such slots for later use
(Schubring Translation 4 and 12) is nothing more than the predictable use of
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Application 11/096,489

prior art elements according to their established functions and thus would
have been obvious.
For the above reasons, Appellant’s arguments fail to demonstrate error
in the Examiner’s rejection of claim 11 as unpatentable over Schubring in
view of Volansky. The rejection of claim 11 is sustained.
Claims 19 and 21
Appellant argues that claim 19 is patentable over the combination of
Schubring and Volansky because any combination of Schubring and
Volansky would lack (1) providing an organizing apparatus have an open
top and a plurality of slots accessible from the open top, (2) sliding a panel
in each slot which does not have a cable end received therein to close the
slot; and (3) a plurality of slots each having opposed grooves for removable
sliding receipt of opposed tongues of multiple ones of the cables (Br. 9-10).
The first two arguments are unpersuasive for the reasons discussed
above. The third argument is likewise unpersuasive, as Volansky discloses a
plurality of slots having opposed grooves (channels 95) for removable
sliding receipt of opposed bezels 32, which directly support the cable
connectors 130 (col. 10, ll. 36-43). For the reasons discussed above, we find
no error in the Examiner’s determination that it would have been obvious to
use such an arrangement to secure the various cables and connectors of
Schubring to the housing (connection box 40) of the organizing apparatus.
In light of the above, Appellant’s arguments fail to demonstrate error
in the Examiner’s rejection of claim 19 as unpatentable over Schubring in
view of Volansky. The rejection of claim 19, and claim 21, which Appellant
has not separately argued apart from claim 19, is sustained.

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Appeal 2007-2393
Application 11/096,489

CONCLUSION
The decision of the Examiner to reject claims 1-19 and 21 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

vsh

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