Ex Parte Lev

Patent Trial and Appeal Board

Mar 19, 2013

11656833 (P.T.A.B. Mar. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte JEFFREY A. LEV
_____________

Appeal 2010-008855
Application 11/656,833
Technology Center 2800
______________

Before KALYAN K. DESHPANDE, JOHNNY A. KUMAR, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008855
Application 11/656,833

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This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, 4-11, and 13-17. Claims 3, 12, and 18-20 have been
withdrawn.
We affirm.
INVENTION
The invention is directed to an electronic device cooling system with
housing walls and a duct wall extending between the housing walls and a
circuit board disposed within the electronic device to form a duct to enable
cooling air to flow within the duct to dissipate heat from within the
electronic device. See Abstract.
Claims 1 and 5 are representative of the invention and reproduced
below:
1. An electronic device, comprising:
a housing that includes a first side wall, a second side
wall oppositely disposed from the first side wall, a bottom wall,
and a top wall with a keyboard; and
at least one duct formed by a circuit board that extends
from the first side wall to the second side wall, first and second
duct walls that are oppositely disposed from each other, and the
bottom wall, wherein the duct provides a passage to enable
cooling air to flow within the duct to dissipate heat from within
the electronic device.

5. The electronic device of Claim 1, wherein the duct
extends at least partially over an access door disposed on the
bottom wall.

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REJECTIONS AT ISSUE
The Examiner rejected claims 5 and 11 under 35 U.S.C. § 112, second
paragraph, as being indefinite. Ans. 3.
The Examiner rejected claims 1, 2, 5-9, 11, and 14 under 35 U.S.C.
§ 102(b) as being anticipated by Nishii (US 5,872,699, Feb. 16, 1999). Ans.
4-5.
The Examiner rejected claims15 and 17 under 35 U.S.C. § 102(b) as
being anticipated by Sterner (US 6,253,834 B1, Jul. 3, 2001). Ans. 5-6.
The Examiner rejected claims 1, 2, 6-9, and 14 under 35 U.S.C.
§ 102(b) as being anticipated by Ohashi (US 5,694,294, Dec. 2, 1997). Ans.
6-7.
The Examiner rejected claims 4 and 10 under 35 U.S.C. § 103(a) as
being unpatentable over Nishii in view of Moore (US 2005/0276018 A1,
Dec. 15, 2005). Ans. 8.
The Examiner rejected claims 4 and 10 under 35 U.S.C. § 103(a) as
being unpatentable over Ohashi in view of Moore. Ans. 8.
The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Nishii in view of Sterner. Ans. 9.
The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Ohashi in view of Sterner. Ans. 9-10.
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The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as being
unpatentable over Sterner in view of the Examiner’s Official Notice. Ans.
10.1

ISSUES
Rejection under 35 U.S.C. § 112
Do claims 5 and 11 comply with the requirements of 35 U.S.C. § 112,
second paragraph?
Rejections under 35 U.S.C. § 102 (b) and § 103 (a)
Based on Appellants’ arguments in the briefs, the principal and
dispositive issue of whether the Examiner erred in rejecting claims 1, 2, 4-
11, and 13-17 turns on whether Ohashi, Nishii, or Sterner describe a “duct
formed by a circuit board that extends from the first side wall to the second
side wall,” as per claim 1, and the limitations argued in support of claims 2,
4-11, and 13-17.

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellant’s
arguments. We agree with Appellant’s conclusion that the Examiner erred
in rejecting claims 5 and 11 under 35 U.S.C. § 112, however, we disagree

1 Throughout this opinion we refer to Appellant’s Appeal Brief dated
January 22, 2010, Reply Brief dated June 1, 2010, and the Examiner’s
Answer dated April 1, 2010.
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with Appellant’s conclusions’ directed to error in the Examiner’s rejections
based upon prior art.

Rejection under 35 U.S.C. § 112
Dependent claims 5 and 11 recite in pertinent part “wherein the duct
extends at least partially over an access door.” The Examiner found that a
duct “over an access door” is indefinite because “it is unclear how the duct
which includes the bottom wall can be formed over an access door disposed
on the bottom wall.” Ans. 3.
Appellant points to Figure 2 of the disclosure where the duct is
formed by a circuit board and where it “shows an access door 56 with a duct
40 that extends over the access door.” Reply Br. 2; see also App. Br. 9-10.
Appellant contends that “[o]ne skilled in the art would read the specification
and review the figures to see that the access door 56 is disposed opposite
from the circuit board 38 and along the bottom wall”, and as such the
Examiner’s rejection is in error. App. Br. 9.
We agree with Appellant. The test for definiteness under 35 U.S.C.
§ 112, second paragraph, is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
Specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986)(citations omitted). Here, a person with ordinary
skill in the art would have understood that the duct that extends over an
access door refers to the access door being disposed opposite from the
circuit board and along the bottom wall.
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Thus, the recitation in claims 5 and 11 do not render those claims
indefinite. Accordingly, we will not sustain the Examiner’s rejection based
upon 35 U.S.C. § 112.

Rejections under 35 U.S.C. § 102 (b)
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken and (2) the
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief. We concur with the conclusions reached by the
Examiner. We highlight and address specific findings and arguments for
emphasis as follows.
As discussed above, independent claim 12 recites that the duct is
formed by a circuit board that extends from the first side wall to the second
side wall.
The Ohashi reference (anticipation of claims 1, 2, 6-9, and 14)
Figures 1 and 7 of Ohashi are reproduced below:

2 Independent claims 8 and 15 recite similar subject matter. Appellant
references the arguments of claim 1 for purposes of the rejection of these
claims. Except for our ultimate decision, these claims are not discussed
further herein.
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Figure 1 illustrates a partially cut-away perspective view of a
personal computer (labels added for emphasis).

Figure 7 illustrates a longitudinal sectional view of a personal
computer (labels added for emphasis).

As depicted above, the Examiner finds that the housing (30) includes
a first side wall (that which 9 is formed in), a second side wall oppositely
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disposed from the first side wall, a duct formed by a circuit board (3) that
extends from the first side wall to the second side wall. The first wall (7) and
the second wall (8) are oppositely disposed from each other and which
extend from the first side wall to the second side wall (see Fig 1), wherein
the duct provides a passage to enable cooling air to flow within the duct to
dissipate heat from within the electronic device. Ans. 6-7.
We are therefore satisfied that the cited disclosure of Ohashi describes
the disputed limitations. Regarding claims 2, 6-9, and 14, while Appellant
raised additional arguments for patentability of the cited claims, we find that
the Examiner has rebutted in the Answer each and every one of those
arguments by a preponderance of the evidence. Ans. 7, 14-15. Therefore,
we adopt the Examiner’s findings and underlying reasoning, which are
incorporated herein by reference. Consequently, we have found no error in
the Examiner’s rejections of claims 1, 2, 6-9, and 14 as being anticipated by
Ohashi.
The Nishii reference (anticipation of claims 1, 2, 5-9, 11, and 14)
Figure 6 of Nishii is reproduced below:
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Figure 6 shows a cross sectional view of the housing structure of
a notebook-type personal computer (labels added for emphasis).

As shown above, the Examiner finds a duct formed by circuit board
(30) that extends from the first side wall (22) to the second side wall (22),
where the first and second walls are oppositely disposed from each other,
where the duct extends from the first side wall to the second side wall. Ans.
4. We are therefore satisfied that the cited disclosure of Nishii describes the
disputed limitations. Regarding claims 2, 5-9, 11, and 14, while Appellant
raised additional arguments for patentability of the cited claims, we find that
the Examiner has rebutted in the Answer each and every one of those
arguments by a preponderance of the evidence. Ans. 4-5 and 12-13.
Therefore, we adopt the Examiner’s findings and underlying reasoning,
which are incorporated herein by reference. Consequently, we have found no
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error in the Examiner’s rejections of claims 1, 2, 5-9, 11, and 14 as being
anticipated by Nishii.
The Sterner reference (anticipation of claims 15 and 17)
Figure 3A of Sterner is reproduced below:

Figure 3A illustrates an air duct in an electronic device (labels
added for emphasis).

As depicted above, the Examiner finds Sterner discloses a first side
wall with an air inlet (260) and a second side wall with an air outlet
(adjacent to 100), an air duct that extends from the inlet to the outlet, the
duct being formed by the four walls that include a circuit board (300)
extending from the inlet to the outlet, where the first duct wall and the
second duct wall are oppositely disposed from each other. Ans. 5-6. We are
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therefore satisfied that the cited disclosure of Sterner describes the disputed
limitations.
Consequently, we have found no error in the Examiner’s rejections of
claims 15 and 17 as being anticipated by Sterner.
Accordingly, we sustain the Examiner’s anticipation rejection of
claims 1, 2, 5-9, 11, 14, 15, and 17 under 35 U.S.C. § 102(b).

Rejections under 35 U.S.C. § 103 (a)- claims 4, 10, 13, and 16
The Appellant presents several arguments that the cited prior art fails
to teach or suggest the limitations of claims 4, 10, 13, and 16. App. Br. 14-
14 and Reply Br. 5-6. The Examiner responds that the cited prior art is not
deficient and teaches or suggests the limitations of claims 4, 10, 13, and 16.
Ans. 8-10 and 15-16. We specifically find that the Examiner has articulated
(id.) how the claimed features are met by the reference teachings with some
rational underpinning to combine the teachings of the cited prior art. See
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
We agree with and accordingly adopt the Examiner’s findings of fact
and analysis, and reach the same legal conclusions as in that response. Ans.
8-10 and 15-16.

CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 5 and 11 under 35 U.S.C. § 112 as being indefinite.
(2) The Examiner did not err in rejecting claims 1, 2, 5-9, 11, 14, 15,
and 17 under 35 U.S.C. § 102(b).
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(3) The Examiner did not err in rejecting claims 4, 10, 13, and 16
under 35 U.S.C. § 103(a).
(4) Claims 1, 2, 4-11, and 13-17 are not patentable.

DECISION
The decision of the Examiner to reject claims 1, 2, 4-11, and 13-17 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)(1)(iv).

AFFIRMED

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