Ex Parte Obermaier

Board of Patent Appeals and Interferences

Apr 18, 2005

09390824 (B.P.A.I. Apr. 18, 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is not binding precedent of the Board.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 HANNSJORG OBERMAIER

_____________

Appeal No. 2005-0324
Application No. 09/390,824
______________

ON BRIEF
_______________

Before: THOMAS, DIXON and NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 of the final rejection of
claims 1, 3 through 15, 17 through 19 and 23 through 30. For the reasons stated
infra, we will sustain the examiner’s rejection of these claims.

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Invention

The invention relates to a system for on-line replacement of cards in a
computer system in which laterally installable cards are installed longitudinally
through an opening in an external wall of a computer system chassis. See
appellant’s abstract.
Claim 1 is representative of the invention and a copy of the claim is

appended to this decision.

References

The references relied upon by the examiner are:
Welsh 4,935,847 Jun. 19, 1990
Beak 5,496,185 Mar. 05, 1996
Cranston, III et al. (Cranston) 5,708,563 Jan. 13, 1998

Clements 5,963,681 Oct. 05, 1999

Moss 6,185,093 Feb. 06, 2001
(Filed Nov. 12, 1997)

Rejection at Issue

Claims 1, 3, 4, 6 through 9, 13, 14,17 through 19 and 23 through 28 stand
rejected under 35 U.S.C. § 103 as being obvious over Moss in view of Cranston.
Claim 5 stands rejected under 35 U.S.C. § 103 as being obvious Moss in view of
Cranston and Welsh. Claims 10, 12, 15, 29 and 30 stand rejected under 35
U.S.C. § 103 as being obvious over Moss in view of Cranston and Clements.
Claim 11 stands rejected under 35 U.S.C. § 103 as being obvious over Moss in

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view of Cranston and Beak. Throughout the opinion we make reference to the
briefs and the answer for the respective details thereof.
Opinion

We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of obviousness relied upon by the
examiner as support for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant’s arguments set forth in
the briefs along with the examiner’s rationale in support of the rejections and
arguments in rebuttal set forth in the examiner’s answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejections and the arguments of appellant and the examiner, and for
the reasons stated infra we will sustain the examiner’s rejection of claims 1, 3
through 15, 17 through 19 and 23 through 30.
Grouping of the Claims
At the outset, we note that appellant states, on page 3 of the brief, that:
With regards to Issues (A) to (D), above, independent claims 1, 8, 13, 17,
and dependent claims 3-7, 9-12, 14, 15, 18, 19 and 23-30 stand or fall
together.

37 C.F.R. § 1.192(c) (7) (July 1, 2003) as amended at 62 Fed. Reg. 53196
(October 10, 1997), which was controlling at the time of appellant filing the brief,
states:
For each ground of rejection which appellant contests and which
applies to a group of two or more claims, the Board shall select a
single claim from the group and shall decide the appeal as to the

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ground of rejection on the basis of that claim alone unless a
statement is included that the claims of the group do not stand or
fall together and, in the argument under paragraph (c) (8) of this
section, appellant explains why the claims of the group are believed
to be separately patentable. Merely pointing out differences in what
the claims cover is not an argument as to why the claims are
separately patentable.

Accordingly, for the rejections based upon 35 U.S.C. § 103, we will group
all the claims together and treat claim 1 as the representative claim.
Rejections under 35 U.S.C. § 103.
Appellant argues, on page 5 of the brief, that “[t]he Examiner fails to
identify any explicit suggestion to combine the references. Instead, the Examiner
asserts that it would have been obvious to combine the features of the disclosed
devices, ‘to provide an external connection to the card.’” Further, the appellant
argues that:
The central problem addressed by Moss is providing a device that
protects and aligns an expansion card during insertion and removal of the
card from a live chassis. The Moss device is configured to surround and
protect the card rather than allow any external access to the card. Moss
fails to provide any suggestion to combine the references.
Cranston III, et al. pertains only to a card cage that contains both a
planar circuit board that includes a CPU (i.e. a motherboard), and various
accessory boards that plug into the motherboard. The motherboard is the
heart of the computer system, containing devices essential to the
operation of the computer. The Cranston III, et al. device is not a card
carrier assembly, but rather an insertable computer. Cranston III et al.
fails to provide any suggestion to combine the references. (emphasis
original, citations omitted).

Further, on page 3 of the reply brief, appellant argues:

More particularly, the Moss device is intended to create a
connection to a live motherboard, whereas the Cranston III et al. device is

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effectively an insertable computer in and of itself. There is no suggestion
in Cranston III et al. to arbitrarily use features from an insertable computer
to augment an existing card carrier. Thus, when these references are
considered as a whole, they fail to provide a suggestion to combine the
cited references to form the claimed invention. The attempt to combine
the features from these entirely distinct devices amounts to nothing more
than hindsight reconstruction, picking and choosing among isolated
disclosures in the prior art. (emphasis original).

In response to the appellant’s arguments, the examiner states, on page 9
of the answer:
Cranston teaches the use of a bulkhead for providing an external
connection means to electrically connect the circuit board to an external
component (col. 4, lines 58-62). Thus, it would have been obvious to a
person having ordinary skill in the art at the time of the invention was
made to use a card including a bulkhead in the device of Moss as taught
by Cranston, to provide an external connection to the card.

We agree with the examiner and find that it would have been obvious to
one of ordinary skill in the art to use a card with a bulkhead in the expansion card
carrier of Moss. In rejecting claims under 35 U.S.C. § 103, the Examiner bears
the initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See
also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
It is the burden of the examiner to establish why one having ordinary skill in the
art would have been led to the claimed invention by the express teachings or
suggestions found in the prior art, or by the implication contained in such
teachings or suggestions. In re Sernaker 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). “The motivation, suggestion or teaching may come explicitly
from statements in the prior art, the knowledge of one of ordinary skill in the art,

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or, in some cases the nature of the problem to be solved.” In re Huston 308 F.3d
1267, 1278, 64 USPQ2d 1801, 1810 (Fed. Cir. 2002, citing In re Kotzab 217
F.3d 1365, 1370, 55 USPQ 1313, 1317 (Fed. Cir. 2000)).
We find that Moss teaches that prior methods of inserting expansion cards
into a computer chassis required the chassis to be opened and the cards to be
vertically inserted onto the motherboard. See column 1, line 9-15 and column 2,
line 45-59. Moss teaches that an improvement to this method is to use an
expansion card carrier, which is inserted into the chassis horizontally. See
column 3, line 53 to 65, and figure 7 and 10. While we concur with appellant that
Moss discloses one of the advantages of the horizontally inserted expansion card
carrier is that it has the ability to replace cards in a live chassis, we do not find
that this is the only problem to be solved. Moss also discloses that the problem
with vertical insertion is that it is time consuming because it requires removal of
the chassis cover.
Moss teaches that the system to horizontally insert cards can be used with
PCI expansion cards. However, Moss does not teach how the PCI expansion
cards are secured to the carrier. See Column 3, lines 11-15. We note that Moss
does not define a PCI card, however appellant’s specification, on page 1,
identifies that one industry standard for expansion cards is Peripheral
Component Interconnect (PCI). We find that a skilled artisan would recognize
that in a computer system, many peripheral components, such as a printer,
monitor, scanner, etc., are located outside of the computer chassis, as such PCI

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cards which interface with external components require an external connector.
We note that figures 4, 6, 7, and 8 depict an aperture on the handle item 38 side
of the card carrier. While, we do not find that the aperture teaches that there is
an external connection, we consider that the aperture, in combination with the
expansion circuit board of Cranston, as discussed infra, permits the external
connection to the printed circuit board.
We find that Moss’s statement “Additional means (not shown) may be
used to secure the expansion card 28a in carrier 46 if deemed necessary”
(column 3, lines 14-16) provides evidence that Moss anticipates that additional
structure not depicted or described is associated with the card to card carrier
connection.1
We concur with appellant’s assessment that Cranston teaches a computer
with a card cage. We find that Cranston teaches that the circuit boards are
vertically inserted into a board within the card cage. See Cranston Figure 1 and
column, 4 lines 51-52. We concur with the examiner’s finding that circuit board,
item 71, has an external connector, item 73, depicted in figure 4 as having a flat
surface perpendicular to both the vertical circuit board and the riser circuit board,
item 61. See Cranston, column 4, lines 58-63. We find that Cranston’s external

1 We note that Moss’s expression of the desirability of using additional means to secure the card
and appellant’s discussion of a typical installation of PCI cards, on page 2 of the specification,
that “[n]ormally the card is held in place by the system connector, and by a screw that secures
the bulkhead to the chassis” may also render the claim unpatentable. However, since we concur
with the examiner’s rejection, we do not enter a new grounds of rejection, as it would be
cumulative to the examiner’s rejection.

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connector, item 73, meets appellant’s claimed bulkhead.2 As stated supra we
find that a skilled artisan would recognize that PCI cards often have external
connectors and that Moss teaches apertures in the card carriers. Further, we
find that the skilled artisan would be motivated to use circuit cards such as those
shown in Cranston, which have external connectors on a bulkhead. We note that
as depicted in Cranston’s figure 5 and Moss’s figures 7 & 8, placing Cranston’s
circuit card into Moss’s card carrier would result in the external connector, item
73, being adjacent the aperture in the handle of Moss’s card carrier. Thus, we
find that the examiner’s rejection has set forth sufficient motivation to combine
the references.
Further, we find additional motivation to combine the references in the
nature of the problem to be solved. As stated supra the problem to be solved by
Moss to make installing and removing expansion cards less time consuming by
changing from a vertical insertion method which requires removal of the chassis
cover to a horizontal insertion method. Cranston teaches a card cage, a
chassis, in which the expansion cards are vertically inserted. Thus, we find that
the nature of the problem to be solved in Moss is to change chassis in which
expansion cards are vertically installed, such as the card cage of Cranston’s
device, to allow the cards to be horizontally inserted. Accordingly, we sustain the

2 The term bulkhead is discussed in appellant’s specification, on page 2, as “the bulkheads of
the cards are located on a side of a card that adjoins the lower edge. Thus, the bulkhead is
oriented parallel to the direction of the card’s insertion and extraction and orthogonal to the edge
having the system connector.”

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examiner’s rejection of claims 1, 3, 4, 6 through 9, 13, 14 and 17 through 28
under 35 U.S.C. 103 as being unpatentable over Moss in view of Cranston.
Appellant has not presented additional arguments directed to the
examiner’s rejections of dependent claims 5, 10 through 12, 15, 29 and 30 under
35 U.S.C. 103. Accordingly, we sustain the examiner’s rejections of these claims
for the reasons stated supra.
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 or by filing a reply brief have not been considered and are
deemed waived by appellant [see 37 CFR § 41.37]. Support for this rule has
been demonstrated by our reviewing court in In re Berger, 279 F.3d 975, 984, 61
USPQ2d 1523, 1528-1529 (Fed. Cir. 2002) wherein the Federal Circuit stated
that because the appellant did not contest the merits of the rejections in his brief
to the Federal Circuit , the issue is waived. See also In re Watts, 354 F.3d
1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004).

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In summary, we have sustained the examiner’s rejection of claims 1, 3
through 15, 17 through 19 and 23 through 30 under 35 USC § 103.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a) (1) (iv).
AFFIRMED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

REN/vsh

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APPENDIX
Claim 1

1. A carrier for connecting a planar printed circuit board card to
a chassis, wherein the card has a bulkhead and a lower edge
including a card system connector, wherein the chassis defines an
opening for receiving a card, and wherein the chassis includes a
chassis system connector to be placed in communication with the
card system connector of the received card, the chassis system
connector and opening defining a carrier-insertion direction,
comprising:

a planar body having a front end and a rear end;

a first system connector carried on the body and configured
to mate and communicate with the card system connector in a
card-insertion direction such that the plane of the printed circuit
board card is parallel to the plane of the body; and

a second system connector carried on the body and
configured to mate and communicate with the chassis system
connector, wherein the second system connector is
in communication with the first system connector;

wherein the first and second system connectors are
configured such that the card-insertion direction differs from the
carrier-insertion direction;

wherein the body and the first and second system
connectors are configured such that, with the card system
connector mated to the first system connector, the second system
connector fits insertably through the opening in the chassis-
insertion direction to mate with the chassis system connector; and

wherein the body and first system connector are configured
such that the card bulkhead would be approximately coplanar with
the chassis opening when the card system connector is mated with
the first system connector and the second system connector is
mated with the chassis system connector.

HEWLETT-PACKARD COMPANY

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INTELLECTUAL PROPERTY ADMINISTRATION
P.O. BOX 272400
FORT COLLINS, CO 80527-2400