Ex Parte Modica

Board of Patent Appeals and Interferences

Oct 27, 2005

10200828 (B.P.A.I. Oct. 27, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEVE MODICA
____________
Appeal No. 2005-2569
Application No. 10/200,828
____________
ON BRIEF
____________
Before BARRETT, RUGGIERO, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-3,
6-12 and 14-20, which are all of the claims pending in this application. The examiner
has indicated that claims 4, 5 and 13 would be allowable if rewritten in independent
form.
We AFFIRM-IN-PART.
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BACKGROUND
Appellant's invention relates to an external fan and method for exchanging air
with modular bricks in a computer system. An understanding of the invention can be
derived from a reading of exemplary claim 1, which is reproduced below.

1. A modular computing system comprising:
an enclosure;
a rack mounted inside the enclosure;
a modular brick that includes electronic components, the modular brick
being supported by the rack; and
a primary fan outside the enclosure, the primary fan exchanging air with
the modular brick to cool the electronic components in the modular brick.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Bishop et al. (Bishop) 6,535,382 Mar. 18, 2003
(Filed Apr. 12, 2001)
Benavides 6,185,098 Feb. 6, 2001
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the answer
(mailed Nov. 29, 2004) for the examiner's reasoning in support of the rejections, and to
the brief (filed Sep. 24, 2004) for appellant's arguments thereagainst.
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OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
Appellant has argued that the claims should be considered separately and
presented arguments to these groupings. Therefore, we will address appellant’s
groupings as the arguments are set forth in the brief. (Brief at page 5.) After reviewing
the examiner's analysis, it is our opinion that the stated position is sufficiently
reasonable that we find that the examiner has at least satisfied the burden of presenting
a prima facie case of obviousness. The burden is, therefore, upon appellant to come
forward with evidence and/or arguments which persuasively rebut the examiner's prima
facie case. Only those arguments actually made by appellant have been considered in
this decision. Arguments which appellant could have made but chose not to make in
the brief have not been considered and are deemed to be waived (see 37 CFR §
41.37(c)(1)(vii).
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532,
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28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art having the references before him to
make the proposed combination or other modification. See In re Lintner, 458 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be supported by evidence, as
shown by some objective teaching in the prior art or by knowledge generally available to
one of ordinary skill in the art that would have led that individual to combine the relevant
teachings of the references to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on § 103 must
rest on a factual basis with these facts being interpreted without hindsight reconstruction
of the invention from the prior art. The examiner may not, because of doubt that the
invention is patentable, resort to speculation, unfounded assumption or hindsight
reconstruction to supply deficiencies in the factual basis for the rejection. See In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968). Our reviewing court has repeatedly cautioned against employing
hindsight by using the appellant's disclosure as a blueprint to reconstruct the claimed
invention from the isolated teachings of the prior art. See, e.g., Grain Processing
Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed.
Cir. 1988).
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When determining obviousness, “the [E]xaminer can satisfy the burden of showing
obviousness of the combination `only by showing some objective teaching in the prior
art or that knowledge generally available to one of ordinary skill in the art would lead
that individual to combine the relevant teachings of the references.’” In re Lee, 277
F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch,
972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). "Broad conclusory
statements regarding the teaching of multiple references, standing alone, are not
'evidence.'” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). "Mere denials and conclusory statements, however, are not sufficient to establish
a genuine issue of material fact." Dembiczak, 175 F.3d at 999-1000, 50 USPQ2d at
1617, citing McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27
USPQ2d 1129, 1131 (Fed. Cir. 1993).
Further, as pointed out by our reviewing court, we must first determine the scope of
the claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d
1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the
limitations of independent claim 1. Appellant argues that neither applied reference
teaches or suggests a fan outside an enclosure that exchanges air inside the enclosure
to cool the modular bricks that contain electronics. The examiner maintains that the
fans in Figure 2 of Benavides are outside of the enclosure and that appellant has not
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limited the claimed invention to exclude fan assemblies that are mounted to the
enclosure. (Answer at pages 4 and 5.) We agree with the examiner.
Appellant argues that the fans of Benavides are “integrated with the top of the
cabinet and are part of the enclosure. (Brief at page 7.) We disagree with appellant
and find that Figure 2 of Benavides is one embodiment that has these four additional
fans attached to the exterior of the enclosure and are separate and distinct from the
enclosure. Therefore, this argument is not persuasive. Appellant argues that the
examiner has not provided a showing for a motivation to combine the teachings of
Bishop and Benavides. (Brief at pages 12-14.) We find that the examiner has set forth
a sufficient analysis of the teaching of Bishop which has a lack of detail as to the source
of the air flow and that it would have been obvious to one of ordinary skill in the art at
the time of the invention look to the teachings of Benavides with respect to the use of
fans as oriented therein. Therefore, this argument is not persuasive, and we will sustain
the examiner’s prima facie case of obviousness of independent claim 1 and dependent
claims 2 and 3 which have not been separately argued.
With respect to dependent claims 6 and 8, appellant argues that appellant
“cannot find in the cited combination” where the primary fan is part of the floor tile that
supports the enclosure of the computing system or where the floor tile includes plural
fans. (Brief at pages 8-9.) The examiner maintains that it would have been obvious to
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one of ordinary skill in the art at the time of the invention to have modified the teachings
of Benavides in light of the teachings of Bishop with respect to the supply of cooling air
from the floor to motivate skilled artisans to move the fans from the top of the enclosure
of Benavides to the bottom (we assume into the tile). While we would find the
modification to be a reasonable modification, if the fans were relocated to the bottom of
the enclosure which is supported or suggested by the teachings of Bishop, we can not
agree with the examiner’s conclusion that the supporting floor tile would contain the fan
or fans. We would agree with the examiner’s premise in the rejection that the fans
would have then been reversed to push cool air into the enclosure rather than to pull the
hot air out of the enclosure. Here, we find no teaching or suggestion that the fans would
be removed from the enclosure/rack and placed into the floor support. While we could
speculate as to the variations of obtaining and moving cool air through the floor, it would
be mere unsupported speculation, which we will not do. Therefore, we agree with
appellant that the examiner has not shown in the prior art a teaching or provided a
convincing line of reasoning as why it would have been obvious to one of ordinary skill
in the art to have placed the fan in the support tile, and we find that the examiner has
not established a prima facie case of obviousness of dependent claims 6 and 8 and
claims 7 and 9 which depend therefrom.
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With respect to dependent claim10, appellant argues that appellant “cannot find
in the cited combination” where the primary fan is connected to the modular brick by
conduits. (Brief at page 9.) The examiner maintains that Bishop teaches and suggests
the use of conduits to supply cooling air to the electronics. (Answer at page 4.) We
agree with the examiner that Bishop fairly suggests the use of conduits to supply
cooling air from the floor into the enclosure.
With respect to independent claim 11, appellant again argues that the fans of
Benavides are not outside the enclosure. (Brief at page 10.) Again, we do not find this
argument persuasive as discussed above, and we will sustain the rejection of
independent claim 11 and dependent claims 12, 14, 15, and 19 which appellant has not
set forth separate arguments for patentability.
With respect to dependent claims 16-18, appellant argues that appellant “cannot
find in the cited combination” where the “the primary fan located outside the enclosure
to exchange air with the modular brick includes positioning the enclosure above a floor
tile that includes the primary fan.” (Brief at page 11.) As discussed above with respect
to claim 6, we agree with appellant and do not find that the examiner has established a
prima facie case of obviousness, and we cannot sustain the rejection of claims 16-18.
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With respect to independent claim 20, appellant argues that appellant argues that
appellant “can not find [in, sic] the Bishop and/or Benavides” a floor tile supporting the
enclosure that includes a plurality of fans. (Brief at page 11.) As discussed above with
respect to claims 6 and 16, we agree with appellant and do not find that the examiner
has established a prima facie case of obviousness, and we cannot sustain the rejection
of claim 20.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-3, 10-12, 14, 15,
and 19 under 35 U.S.C. § 103 is affirmed, and the decision of the examiner to reject
claims 6-9, 16-18 and 20 under 35 U.S.C. § 103 is reversed.
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JLD/dpv
Appeal No. 2005-2569
Application No. 10/200,828
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