Ex Parte KedemDownload PDFBoard of Patent Appeals and InterferencesSep 5, 200710634871 (B.P.A.I. Sep. 5, 2007) Copy Citation The opinion in support of the decision being entered today is not binding precedent of the Board. UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte NOAM KEDEM ____________ Appeal 2007-2450 Application 10/634,871 Technology Center 2800 ____________ Decided: September 5, 2007 ____________ Before ANITA PELLMAN GROSS, HOWARD B. BLANKENSHIP, and SCOTT R. BOALICK, Administrative Patent Judges. GROSS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kedem (Appellant) appeals under 35 U.S.C. § 134 from the Examiner's Final Rejection of claims 3, 4, 8 through 10, 13, 16, and 18 through 22, which are all of the claims pending in this application. Appellant's invention relates to a connector for connecting peripheral devices to host devices, wherein the connector has opposite-facing ports. Claim 13 is illustrative of the claimed invention, and it reads as follows: Appeal 2007-2450 Application 10/634,871 13. A system board comprising: (a) a connector that includes: (i) a first port situated at an exterior edge of the system board and facing outward from said exterior edge, and (ii) a second port, facing inward to an interior of the system board; and (b) a peripheral device operationally connected to said inward-facing port. The prior art reference of record relied upon by the Examiner in rejecting the appealed claims is: Meng US 6,231,399 B1 May 15, 2001 Claims 3, 4, 8 through 10, 13, 16, and 18 through 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Meng. We refer to the Examiner's Answer (mailed May 4, 2006) and to Appellant's Brief (filed March 9, 2006) for the respective arguments. SUMMARY OF DECISION As a consequence of our review, we will reverse the obviousness rejection of claim 4 and affirm the obviousness rejection of claims 3, 8 through 10, 13, 16, and 18 through 22. OPINION The Examiner asserts (Answer 3) that Meng's connector 10 with port 14 facing in the opposite direction to port 16 satisfies all of the limitations of independent claim 13 except for the first port being at an exterior edge of the 2 Appeal 2007-2450 Application 10/634,871 system board and facing outward from the exterior edge. The Examiner asserts that the placement of the connector would have been obvious in view of Meng's statement that "changes may be made in detail, especially in matters of shape, size and arrangement of parts within the principles of the invention." Appellant contends (Br. 13-14) that the connector in Meng is for connections inside the computer only, and that moving the connector to an exterior edge would be contrary to the principles of Meng's invention. Accordingly, Appellant contends that Meng fails to teach a connector as claimed with a first port at an exterior edge of the system board. The issue, therefore, is whether Meng discloses placing the connector or whether it would have been obvious in view of the teachings of Meng to place the connector at an exterior edge of the system board. In The American Heritage Dictionary of the English Language,1 definition 1h of "edge" is "[t]he area or part away from the middle." According to this definition, the word "edge" encompasses more than merely the line that forms an outermost boundary. Thus, a portion of the system board of Meng that is not directly in the middle can be considered an edge of the system board. Although we agree with Appellant that Meng requires the connector to be inside the computer, we disagree that the claims require the connector to be located at the outermost boundary of the system board. Since Meng suggests that the connector can be arranged anywhere within the computer, as long as the connector is to one side of the middle of the system board and has one port facing the middle, the connector is at an exterior edge of the system board with one port facing inward and a second port facing 1 The American Heritage Dictionary of the English Language, Fourth Edition, 2006, Houghton Mifflin Company. 3 Appeal 2007-2450 Application 10/634,871 outward. We note that the claims do not recite that the first port is an external port or that a peripheral device external to the computer is operationally connected to the first port. The claims merely require that the first port faces outward. Accordingly, we will sustain the obviousness rejection of claims 8 through 10, 13, 16, and 18 through 22, all of which have been argued together as a single group. With respect to claim 3, Appellant contends (Br. 15) that the ports being substantially functionally identical, as recited in claim 3, is "contrary to conventional wisdom." Thus, Appellant contends that claim 3 is non- obvious over Meng. The Examiner asserts (Answer 3 and 8) that Meng's two ports are substantially identical. The second issue, therefore, is whether the ports of Meng are substantially functionally identical. Appellant's argument (Br. 15) that conventionally an exterior port differs from an interior port is not commensurate in scope with the claim. Claim 3 does not recite an interior port and an exterior port. As explained supra, the claims merely require that one port faces towards the interior and one faces towards the exterior of the system board, but not that one port actually connects to something exterior to the computer. Meng discloses (col. 2, ll. 23-26) that a description of the second receiving space is omitted because the structure and function of the second receiving space is similar to the first receiving space. Thus, Meng's ports are substantially functionally identical, and we will sustain the obviousness rejection of claim 3. As to claim 4, the Examiner asserts (Answer 3-4) that it would have been obvious to substitute a USB connector for the ports of Meng "base[d] on environmental requirements/preferences, in order to provide a space efficient assembly." Appellant contends (Br. 16) that as of the priority date 4 Appeal 2007-2450 Application 10/634,871 of the application, USB ports were used for connecting peripheral devices to a computer, not for connecting components within the computer.2 Thus, Appellant contends (Br. 16-17) that it would not have been obvious to substitute USB ports for the ports of Meng. The last issue, therefore, is whether it would have been obvious to use USB ports in the connector of Meng. Although Appellant has not presented any convincing evidence that USB ports were not used for connecting elements within the computer, we find that since Meng is directed to connecting two daughter boards to a motherboard, USB ports would not apply. Accordingly, it would not have been obvious to substitute USB ports for Meng's ports, and we will not sustain the obviousness rejection of claim 4. ORDER The decision of the Examiner rejecting claims 3, 4, 8 through 10, 13, 16, and 18 through 22 under 35 U.S.C. § 103(a) is reversed as to claim 4 and affirmed as to the remaining claims. 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). 2 Appellant should note that Wikipedia, the source of evidence provided by Appellant, is considered unreliable because it is a source that "anyone" can edit. 5 Appeal 2007-2450 Application 10/634,871 AFFIRMED-IN-PART eld MARK M. FRIEDMAN C/O DISCOVEY DISPATCH, 9003 FLIRIN WAY UPPER MARLBORO, MD 20772 6 Copy with citationCopy as parenthetical citation