Ex Parte Kedem

Board of Patent Appeals and Interferences

Sep 5, 2007

10634871 (B.P.A.I. Sep. 5, 2007)

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today is not binding precedent of the Board.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
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Decided: September 5, 2007
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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
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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.
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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
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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.
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Application 10/634,871

AFFIRMED-IN-PART

eld

MARK M. FRIEDMAN
C/O DISCOVEY DISPATCH,
9003 FLIRIN WAY
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