Ex Parte McIntosh et al

Patent Trial and Appeal Board

Sep 29, 2016

11942800 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111942,800 11120/2007
126453 7590 10/03/2016
International Business Machines Corporation - IT
Rich Lau - IPLaw Department
2455 South Road, B/008-2
Poughkeepsie, NY 12601
Steven C. Mcintosh
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.
POU920070205US 1 2281
EXAMINER
MYERS, GLENN F
ART UNIT PAPER NUMBER
3652
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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):
poiplaw2@us.ibm.com
ituchman@tuchmanlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN C. MCINTOSH,
BUDY D. NOTOHARDJONO, KEVIN R. QUAL TERS, and
HOWARDP. WELZ
Appeal2014-007439
Application 11/942,800
Technology Center 3600
Before LINDA E. HORNER, CHARLES N. GREENHUT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants, Steven C. Mcintosh et al., 1 appeal under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1-3, 5-9, 12, and 17-19.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants identify International Business Machines Corporation as
the real party in interest. Appeal Br. 1.
2 Claims 4, 10, 11, 13-16, and 20 are cancelled. Appeal Br. 2.
Appeal2014-007439
Application 11/942,800
THE CLAIMED SUBJECT MATTER
The claims are directed to "packaging of computing systems and more
particularly to packaging of large computing systems having racks for
housing electronic components." Spec. ,-i 1. Claims 1 and 19 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An assembly used for disposing electronic components
onto or away from a computer rack comprising:
at least one lift rail attachable to said computer rack, the
lift rail including a channel and a series of notches, the lift rail
including a plurality of interlocking segments attachable to each
other to substantially span the entire height of the computer rack;
a lift platform for carrying the electronic components;
a lift mechanism housed by the lift platform, the lift
mechanism including a sprocket and roller bearings compatible
with the channel and the series of notches such that a drive shaft
coupled to the sprocket causes the lift platform to move up and
down the lift rail; and
a transport dolly configured to carry the interlocking
segments and the lift platform.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Lovie
Saul
Ohkoshi
Horan
Anderson
us 3,826,099
us 3,945,510
us 4,269,285
us 4,920, 781
us 6,065,821
2
July 30, 1974
Mar. 23, 1976
May 26, 1981
May 1, 1990
May 23, 2000
Appeal2014-007439
Application 11/942,800
REJECTIONS
The Examiner made the following rejections: 3
1. Claims 1-3, 9, 12, and 17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Anderson, Ohkoshi, and Lovie.
2. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anderson, Ohkoshi, Lovie, and Saul.
3. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anderson, Ohkoshi, Lovie, and Horan.
4. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anderson, Ohkoshi, Lovie, and Saul.
5. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ohkoshi, Anderson, Horan, and Lovie.
Appellants seek our review of the rejections.
ANALYSIS
The Rejection of Claims 1-3, 9, 12, and 17
as Unpatentable Over Anderson, Ohkoshi, and Lovie
Appellants argue claims 1-3, 9, 12, and 17 as a group. Appeal Br. 5-
10. We select claim 1 as the representative claim, and claims 2, 3, 9, 12, and
17 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Anderson teaches an assembly for disposing
electronic components substantially as called for in claim 1, Ohkoshi teaches
a transport dolly, and "Lovie teaches a lift rail (15, Fig. 1) including a
plurality of interlocking segments attachable to each other. (Fig. 5 shows the
3 The rejection of claim 17 as being indefinite under 35 U.S.C. § l 12(b)
is withdrawn. Ans. 9.
3
Appeal2014-007439
Application 11/942,800
interlocking)." Final Act. 4-5. The Examiner also determines that it would
have been obvious "to add a transport dolly ... in the assembly of
Anderson" and that it "would have been obvious to one having ordinary skill
in the art at the time the invention was made to use lift rails including
interlocking segments attachable to each other in the assembly of Anderson
et al. as taught by Lovie in order to easily transport the lift rails." Id. at 5-6.
In response to the Examiner's rejection of claim 1, Appellants argue
that "Lovie is not analogous prior art" and, therefore, the rejection is
improper. Br. 8. The analogous art inquiry has developed as a mechanism
to define the scope and content of prior art properly considered in an
obviousness analysis. "To qualify as prior art for an obviousness analysis, a
reference must qualify as 'analogous art,' i.e., it must satisfy one of the
following conditions: (1) the reference must be from the same field of
endeavor; or (2) the reference must be reasonably pertinent to the particular
problem with which the inventor is involved." K-TEC, Inc. v. Vita-Mix
Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (citation omitted).
According to Appellants,
The present invention "relates to packaging of computing
systems and more particularly to packaging of large computing
systems having racks for housing electronic components."
Application, p. 1, lines 11-13. Furthermore, claim 1 recites "an
assembly used for disposing electronic components onto or away
from a computer rack."
Lovie, on the other hand, pertains to offshore drilling
units. Lovie, col. 1, lines 7-8. Lovie addresses problems "[w]hen
traveling from site to site with jack-up rigs of the prior art, the
legs are drawn up within leg wells provided in the hull and the
legs extend upwardly above the hull for almost the entire length
of the legs. This causes the center of gravity of the unit to be
raised during ocean tow resulting in decreased stability." Lovie,
4
Appeal2014-007439
Application 11/942,800
Br. 8.
col. 3, lines 8-11. By all measures, Lovie does not address the
problem of packaging of computing systems having racks for
housing electronic components.
With respect to the second prong of the analogous art test, the
Examiner finds that:
Lovie is recognized as solving the same problem with which the
applicant was concerned. Lovie teaches interlocking lift rails
(15, Fig. 1) that can be taken apart for easier storage or transport
which is the same problem that the Applicant is concerned with.
This was discussed on Page 11, Paragraph 43 of the 10/11 /13
Final Office Action. The interlocking of the rails in Lovie is
shown in Figures 5 and 8.
Ans. 10. The Examiner further explains that: "Lovie teaches long rails that
can be joined by interlocking segments to create a unified rail. The
interlocking rails allow for ease of transport and assembly." Final Act. 11,
i143.
Arguing that the Specification addresses "the problem of packaging of
computing systems having racks for housing electronic components" (Br. 8),
Appellants focus on the differences between the specific field of endeavor
described in the Specification and the field of endeavor of Lovie.
Appellants, however, do not address the Examiner's findings about the
similarities in the problem facing Appellants, as described in the
Specification, and the problem addressed by Lovie - both address the
problem of storing, transporting, and assembling interlocking rail segments
used to form racks/frames. The Specification, for example, discloses that:
The racks can be defined as cage like structures that provide the
frame or housing of these systems. During installation and
maintenance operations and procedures, the electronic
books/nodes are hoisted into and outer of these racks.
5
Appeal2014-007439
Application 11/942,800
The continuous increase in the number of these
components in recent years, have made this process difficult.
The racks are often tall and the books/nodes are heavy.
Sometimes, the size and depth of the racks themselves, designed
to hold optimum number of components, is difficult to reach. In
most cases, because of these issues more than one person needs
to be employed for installation and maintenance procedures.
Furthermore, a variety of equipments, such as cranes and hoists,
may be necessary to complete these procedures. Not only the
use of this equipment add delay and cost to the operation, but
they increase the degree of complexity of the procedure itself
which have become cumbersome to complete. In addition, the
use of such equipment involves locating them, transporting them
and storing them. The above mentioned dependencies have
greatly affected the cost of the service and installation of these
systems. Moreover, the difficulty in performing these
installation and service procedures have caused unwanted delays
and affected system availability at crucial times.
Spec. ,-i,-i 3--4 (emphasis added). With respect to the "interlocking segments
attachable to each other to substantially span the entire height of the
computer rack" recited in claim 1, the Specification :farther discloses that
"the rails are segmented so that they can easily fit on the Transport Dolly
without driving an increase in the effective size of the kit" (Spec. ,-i32), and
"[ e Jach lift rail 520 may either be single unit that spans the entire height of
the rack, or can alternatively be broken up into multiple interlocking
segments which are smaller and easier to store and handle" (Spec. ,-i33).
Like Appellants' Specification, Lovie addresses the problem of
storing, transporting, and assembling interlocking legs used to form cage-
like frames. Lovie, for example, discloses:
One disadvantage of self-elevating platform units is that
the length of the legs contribute to raising the center of gravity
of the unit when the legs are in the drawn up position for ocean
tow. This contributes to instability of the unit when moving from
6
Appeal2014-007439
Application 11/942,800
site to site and often requires removal of upper portions of the
legs prior to ocean tow or making it necessary to lower the legs
partially in severe storm conditions. Such removal or partial
lowering of the legs is expensive and inconvenient . ... Since such
units are the largest and the most expensive to operate, the
inconvenience and expense of partial leg removal is great.
Lovie 1 :37-50 (emphasis added). Lovie's invention also "avoids the
problems associated with making and breaking joints in the legs." Id. at
2: 13-15. Lovie discloses that, when "having long legs, it is common to
remove the upper portion of the legs so that they might be laid on the hull ..
. . Such removal of the legs is expensive and requires that, before getting on
location, the removed legs portions be reconnected by welding or other
means to the rest of the leg." Id. at 3: 14-19.
Appellants do not address the Examiner's findings about the
similarities between the problems addressed by the Specification and Lovie,
or explain why a person of ordinary skill in the art would be unable to apply
Lovie's teachings of interlocking rails/segments to Anderson's frame. Thus,
Appellants do not show error in the Examiner's determination that the
Specification and Lovie address similar problems with respect to storing,
transporting, and assembling large racks/frames, that Lovie is reasonably
pertinent to the particular problem with which the inventor is involved, and
that Lovie is analogous art.
Appellants also argue the "Office makes no finding as to the particular
problem that the present invention is addressing." Br. 8-9. As discussed
above, the Examiner discussed the problems addressed by the Specification.
See, e.g., Ans. 10, Final Act. 11.
Finally, Appellants argue that the Examiner does not identify where
Lovie "teaches long rails that can be joined by interlocking segments to
7
Appeal2014-007439
Application 11/942,800
create a unified rail." Br. 9. In response, "the Examiner notes that
Paragraph 14 of the latest Office Action points to element 15, Fig. 1 as the
lift rail and points to Fig. 5 to show the interlocking. Figure 5 shows knobs
41 of rail 15 that interlock with a mating portion of another segment of rail."
Ans. 10. Appellants further argue that "there is no mention of 'rails'
anywhere in Lovie." Br. 9. Appellants are correct that elements 15 of Lovie
are referred to as "support legs" and that Lovie does not refer to these
elements as "rails." Lovie, col. 3, 11. 5-7. Lovie's use of different
terminology for elements 15, however, does not persuade us of error in the
Examiner's finding that Lovie discloses rails. Cf In re Bond, 910 F .2d 831,
832 (Fed. Cir. 1990) (The elements must be arranged as required by the
claim, but this is not an ipsissimis verbis test.). Appellants do not
demonstrate a structural difference between Lovie's support legs 15 and the
claimed "rails," and we do not discern any structural difference. As such,
Appellants do not show error by the Examiner.
For these reasons, we sustain the rejection of claim 1, and claims 2, 3,
9, 12, and 17 fall with claim 1.
The Rejections of Claims 5-8 and 18
In response to the rejections of claims 5-8 and 18 which depend from
independent claim 1, Appellants argue that "[a ]s discussed above, claim 1 is
patentable over the cited art. Dependent [claims 5-8 and 18 recite] yet
further distinguishing features and [are] also not obvious over the prior art."
Br. 10 (claims 5-8) and 11 (claim 18). Br. 10-11. For the reasons discussed
above, claim 1 is not patentable over the cited prior art. Because Appellants
do not identify any patentable features of these claims over claim 1, we
8
Appeal2014-007439
Application 11/942,800
sustain the rejections of claims 5-8 and 18. See also Jn re Lovin, 652 F .3d
1349, 1357 (Fed. Cir. 2011) (37 C.F.R. § 41.37 requires "more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.").
The Rejection of Claim 19 as Unpatentable
Over Ohkoshi, Anderson, Horan, and Lovie
In response the Examiner's rejection of claim 19, Appellants present
the identical arguments presented with respect to claim 1. Br. 11-14. For
the same reasons discussed above with respect to claim 1, we sustain the
Examiner's rejection of claim 19.
DECISION
For the above reasons, the Examiner's rejections of claims 1-3, 5-9,
12, and 17-19 are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
9