Ex Parte Lim et al

Board of Patent Appeals and Interferences

Jun 4, 2010

10696879 (B.P.A.I. Jun. 4, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SIONG LEE LIM and CHEE YIN CHAN
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Appeal 2010-000612
Application 10/696,879
Technology Center 1700
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Decided: June 04, 2010
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and
MARK NAGUMO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-10 and 12-22.
We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1 and 20 are illustrative:

Appeal 2010-000612
Application 10/696,879

1. A data storage system comprising:

an enclosure configured to house components of the data storage
system, the enclosure having an outer surface and an inner surface;

an aperture extending between the outer surface and the inner surface
of the enclosure, wherein the aperture has a larger cross-section adjacent the
outer surface than adjacent the inner surface and wherein a diameter of the
aperture continuously tapers from the outer surface to the inner surface of
the enclosure; and

a filter disposed within the aperture.

20. The method of claim 19, wherein depositing the filter further
comprises:

mounting a seal layer to the outer surface of the tray and a portion of
the filter, wherein the seal layer includes a liner and a seal; and

fastening the liner to the tray with a fastener to prevent the seal from
adhering to the tray when the filter is removed from the tray.

The Examiner relies upon the following reference as evidence of
obviousness (Ans. 2):
Crowder 6,214,070 B1 Apr. 10, 2001

Appellants’ claimed invention is directed to a data storage system and
a method of removing contaminants from air entering a data storage system.
The system comprises an enclosure having outer and inner surfaces and an
aperture extending between the two surfaces of the enclosure. The aperture
has a larger cross-section adjacent the outer surface than that adjacent the
inner surface of the enclosure. The diameter of the aperture continuously
tapers from the outer surface to the inner surface. A filter for removing the
contaminants is disposed within the aperture.
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Appeal 2010-000612
Application 10/696,879

Appealed claims 1-10 and 12-22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Crowder.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we find ourselves in agreement
with the Examiner that the subject matter of claims 1-10, 12-19 and 22
would have been obvious to one of ordinary skill in the art within the
meaning of § 103 in view of the applied prior art. Accordingly, we will
sustain the Examiner’s rejection of these claims for essentially those reasons
expressed in the Answer. However, we will not sustain the Examiner’s
rejection of claims 20 and 21.
There is no dispute that Crowder, like Appellants, discloses a data
storage system comprising an enclosure configured to house components of
the system, which enclosure has an aperture extending between the outer and
inner surfaces of the enclosure and wherein the diameter of the aperture
continuously tapers from the outer surface to the inner surface. Also, like
Appellants’ data storage system, the system of Crowder has a filter disposed
within the aperture. As recognized by the Examiner, although the aperture
of Crowder tapers from a larger cross-section to a smaller cross-section
between the outer and inner surfaces of the enclosure, the taper of Crowder’s
aperture is not continuous, as presently claimed. However, it is well settled
that it is an obvious matter of design choice to change the general shape or
size of a known element in the absence of a disclosed non-obvious
advantage associated with the change. Gardner vs. TEC Systems Inc., 725
F.2d 1338, 1349-50 (Fed. Cir. 1984); In re Kuhle, 526 F.2d 553, 555 (CCPA
1975); In re Dailey, 357 F.2d 669, 672 (CCPA 1966). In the present case,
Appellants have not set forth any adequate reason for why the claimed
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Appeal 2010-000612
Application 10/696,879

continuous taper of the aperture provides a significant advantage over the
non-continuous taper of Crowder’s aperture that would not have been
obvious to a person having ordinary skill in the art. Appellants submit that
“[a] continuously tapered aperture in an enclosure supports the filter along
its entire periphery resulting in a stably placed filter as well as provides
repeatable accuracy in positioning of the filter” (Br. 8, last sentence).
However, Appellants have not explained why the stated advantages do not
also accrue to the aperture of Crowder. Nor have Appellants presented any
objective evidence which provides a side-by-side comparison between
apertures within the scope of the appealed claims and the aperture fairly
taught by Crowder. It is axiomatic that counsel’s arguments in the Brief are
no substitute for objective evidence.
Appellants also maintain that Crowder fails to teach or suggest a label
adhered to the outer surface of the enclosure and the seal, as recited in claim
8. However, Appellants have not contested the Examiner’s finding that the
data storage system of Crowder includes a seal and a label adhered to its
outer surface. Accordingly, we agree with the Examiner that it would have
been a matter of obvious design choice to place the label on any particular
area of the enclosure’s outer surface.
We are also not persuaded by Appellants’ argument that Crowder
does not teach or suggest transferring the filter from a supplier to an
assembler in a tray whereupon the filter is removed from the tray and placed
in the aperture of the enclosure. The recited term “tray”, as broadly
construed, encompasses any substrate for supporting the filter and we
perceive nothing non-obvious in supplying the filter in or on a carrier
substrate before it is positioned in the aperture.
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Appeal 2010-000612
Application 10/696,879

The rejection of claims 20 and 21 is another matter. These claims
require mounting a seal layer to the outer surface of the tray and a portion of
the filter, wherein the seal layer includes a liner and a seal, and fastening the
liner to the tray with a fastener, etc. The Examiner, however, has cited no
teaching or suggestion in Crowder in support of the conclusion that the
claimed limitations would have been obvious to one of ordinary skill in the
art. Indeed, the Examiner has not addressed these limitations in the Answer.
As a result, we are constrained to reverse the Examiner’s § 103 rejection of
claims 20 and 21.
In conclusion, based on the foregoing, the Examiner’s decision
rejecting claims 1-10, 12-19, and 22 is affirmed. The Examiner’s rejection
of claims 20 and 21 is reversed. Accordingly, the Examiner’s decision
rejecting the appealed claims is affirmed-in-part.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED-IN-PART

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