Ex Parte Kelaher et al

Patent Trial and Appeal Board

Aug 29, 2018

14856459 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/856,459 09/16/2015 Daniel P. Kelaher
50548 7590 08/31/2018
ZILKA-KOTAB, PC- IBM
1155 N. 1st St.
Suite 105
SAN JOSE, CA 95112
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.
TUC1P039A/TUC920100054US2 9215
EXAMINER
CARLEY, JEFFREY T.
ART UNIT PAPER NUMBER
3729
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL P. KELAHER,
DEREK I. SCHMIDT, and JAMES S. WOMBLE
Appeal2017-010050
Application 14/856,459
Technology Center 3700
Before JENNIFER D. BAHR, JEREMY M. PLENZLER, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-010050
Application 14/856,459
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § I34(a), Appellant1 appeals from the
Examiner's decision, as set forth in the Final Office Action dated September
2, 2016 ("Final Act."), rejecting claims 1-11 under 35 U.S.C. § 102 as being
anticipated by Agha (US 6,545,877 Bl, issued April 8, 2003). 2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
THE CLAIMED SUBJECT MATTER
The claims are directed to an internal peripheral component
interconnect (PCI) adapter card carrier. Claim 1, the only independent claim
on appeal, is reproduced below with disputed limitations italicized for
emphasis:
1. A method for placing an adapter card on a system board
of a computer system, the method comprising:
aligning a tool having an adapter card secured therewith to
a first slot on a system board of a computer system using a
positioning member; and
seating the adapter card into the first slot on the system
board, wherein the tool comprises:
a carrier for supporting the adapter card;
at least one lower retaining member extending from
a lower portion of the carrier for securing the adapter card
to the carrier;
at least one upper retaining member extending from
an upper portion of the carrier for securing the adapter card
International Business Machines Corporation ("Appellant") is the
applicant pursuant to 37 C.F.R. § 1.46, and is identified as the real party
in interest. Appeal Brief, dated January 17, 2017 ("Appeal Br."), at 2.
2 Claims 12-20 are withdrawn from consideration. Appeal Br. 16-18
(Claims App.)
2
Appeal2017-010050
Application 14/856,459
to the carrier; and the positioning member coupled to the
carrier;
wherein the positioning member is configured to
engage a feature of the computer system and prevent
movement of the adapter card in a horizontal direction
while seating the adapter card into the first slot; and
wherein the feature is a vertical slot formed in a
chassis of the computer system.
DISCUSSION
Rejection 1: Claims 1-11 as Anticipated By Agha
The Examiner finds that Agha discloses all of the limitations in claims
1-19. Final Act. 3-7; Answer, dated May 15, 2017, ("Ans."), at 5-7. With
respect to independent claim 1, the Examiner, in particular, finds that Figure
2 of Agha's discloses side walls 212 which correspond to the recited
"positioning member" and cartridge 206 overlays an expansion slot (not
shown in Figure 2) in motherboard 208 which corresponds to the recited
"feature/vertical slot" recited in claim 1. Id. at 3--4; Ans. 6-7. According to
the Examiner, Agha's slot is "a vertical slot formed in a chassis of the
computer system." Ans. 7 (emphasis added). The Examiner explains that
"any slot that is within the chassis is 'in a chassis"', and "[i]t is clear that
the slot formed by 206 is on the motherboard which is contained within the
chassis of the computer system." Id.
Appellant asserts that the Examiner's finding is erroneous because
"Agha's SEC cartridges 206 are not 'formed in a chassis of the computer
system' and therefore do not anticipate the claimed 'feature', i.e., 'vertical
slot formed in a chassis of the computer system."' Reply Brief, dated July
17, 2017 ("Reply Br."), at 4. Appellant asserts that the Examiner
3
Appeal2017-010050
Application 14/856,459
erroneously finds that "any slot that is within the chassis is 'in a chassis."'
Reply Br. 6 ( citing Ans. 7). We agree.
Appellant's proposed interpretation that "a feature formed in a chassis
refers to a feature that is part of the chassis is consistent with both the
general knowledge available at the time and examples from Appellant's
descriptions and figures." Reply Br. 6. As Appellant correctly explains
in the context of computer hardware and computer system
manufacture/maintenance, skilled artisans understand the chassis
is the structural framework into which the functioning parts of
the computer are placed. Such components ( e.g. motherboard,
memory, processor, etc.) are generally considered part of the
overall computer system of which the chassis is a component, not
part of the chassis itself. Instead, the motherboard, memory,
processor, etc. are considered individual components placed
in/housed by the chassis. No skilled artisan in the field of
computer hardware maintenance/ system manufacture would
describe a processor installed on a motherboard, which is in tum
located within a chassis, to be "a processor formed in the chassis"
simply because the processor is positioned within the chassis. In
order for the processor to be "formed in the chassis" a skilled
artisan would expect the processor to be integrated as a part of
the chassis, e.g. welded or otherwise permanently affixed.
Id. at 7-8. Consistent with Appellant's explanation, Figures 4--5 of the
Specification, for example, show that slot 504 is formed in a wall of chassis
506, not system board 502. See Spec. Figs. 4--5, ,r,r 31, 33; Reply Br. 8.
Thus, we agree with Appellant that "claim 1 requires the 'feature' is a
vertical slot formed in (i.e. a part of) a chassis of a computer system, not a
vertical slot formed in other components of a computer system, such as a
motherboard, memory, adapter card or other tool." Reply Br. 11. Because
Agha discloses that slot 206 is formed in motherboard 208, not the chassis, it
4
Appeal2017-010050
Application 14/856,459
does not anticipate independent claim 1 or dependent claims 2-11. The
Examiner's rejection cannot be sustained.
DECISION
For the above reasons, the Examiner's rejection of claims 1-11 under
35 U.S.C. § 102 is REVERSED.
REVERSED
5