Ex Parte Rasmussen et al

Patent Trial and Appeal Board

Jun 28, 2016

12490858 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/490,858 0612412009
37462 7590 06/30/2016
LANDO & ANASTASI, LLP
ONE MAIN STREET, SUITE 1100
CAMBRIDGE, MA 02142
FIRST NAMED INVENTOR
Neil Rasmussen
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.
A2000-70472l(APC-0047) 4299
EXAMINER
DATSKOVSKIY, MICHAIL V
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
docketing@LALaw.com
gengelson@LALaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEIL RASMUSSEN, JOHN H. BEAN, JR, GREG UHRHAN, and
SCOTT D. BUELL
Appeal2015-001814
Application 12/490,858
Technology Center 2800
Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and MICHEAL P.
COLAIANNI, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal 1 under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-14. We have jurisdiction pursuant to
35 U.S.C. § 6.
Appellants' claimed invention is directed to a method of manipulating
components of a data center cooling system.
1 In an earlier appeal involving this Application, a previously maintained
obviousness rejection was reversed by the Board in a Decision rendered
February 28, 2014 in Appeal No. 2012-001034. Appellants identify
"SCHNEIDER ELECTRIC IT CORPORATION" as the real party in
interest (App. Br. 3).
Appeal2015-001814
Application 12/490,858
Claim 1, the sole independent claim on appeal, is illustrative and
reproduced below:
1. A method of manipulating components of a cooling system of a
data center of the type comprising rows of equipment racks, the method
compnsmg:
providing components for the cooling system including one or more
sources of coolant adapted to distribute coolant, one or more cooling racks,
and flexible tubing to connect the one or more sources of coolant to the one
or more cooling racks;
designing a cooling system to address cooling needs in the data center,
including selecting components for the cooling system;
assembling the components for the cooling system in the data center;
positioning one or more cooling racks within a row of equipment
racks so that a cooling rack is positioned in between two equipment racks;
operating the cooling system; identifying hot spots within the data
center; and
adjusting the location of one or more cooling racks within the row of
equipment racks by removing a cooling rack that is positioned in between
two equipment racks in the data center and moving the cooling rack to
another position in between two other equipment racks in the data center
based on the indentified [sic] hot spots in the data center.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Day
Fink
WO 03/083631 Al
US 2004/0223300 Al
Oct. 9, 2003
Nov. 11, 2004
The Examiner maintains the following grounds of rejection:
Claims 1-8 and 14 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Fink. Claims 9-13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fink in view of Day.
We reverse the stated rejections. Our reasoning follows.
2
Appeal2015-001814
Application 12/490,858
For each of the stated rejections, the Examiner bears the initial burden
of presenting a prima facie case establishing the non-patentability of the
rejected claims. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Anticipation Rejection
In order for the Examiner to carry the burden of establishing a prima
facie case of anticipation, the Examiner must establish where each and every
element of the claimed invention, arranged as required by the claim, is found
in a single prior art reference, either expressly or under the principles of
inherency. See generally, In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997).
Here, the Examiner has not established that Fink describes a method
corresponding to the claimed method that includes method steps/features
corresponding to all of the recited elements/features of the method of
independent claim 1 and arranged as required by claim 1, including a step of
adjusting the location of one or more cooling racks that is positioned
between two equipment racks in a row of equipment racks in the data center
by removing the cooling rack from the latter position and moving the
cooling rack to another position in between two other equipment racks based
on hot spots identified within the data structure as set forth in claim 1, as
argued by Appellants (App. Br. 5-7).
In responding to Appellants' arguments in the Answer, the Examiner
maintains that (Ans. 5)
It is inherent that in order to move (rearrange or
reposition or adjust the location) cooling units to contain data
center "hot spots" the data center heat generating equipment
(computer servers 18) should be on and running; such a "hot
3
Appeal2015-001814
Application 12/490,858
spot" has to be first identified, as it is disclosed by Fink in
paragraph [0055], and the cooling rack(s) 16 should be removed
from the row of the equipment racks and moved to another
position near newly identified "hot spot(s)".
As argued by Appellants, however, the Examiner has not established
that Fink describes method steps that are the same or substantially the same
as employed in the claimed method so as to furnish a reasonable factual
predicate for the Examiner's inherency assertion (Reply Br. 2). In this
regard, it is well settled that when an Examiner relies upon a theory of
inherency, "the examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art."
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990). In this
case, the Examiner has not provided a factual basis which supports the
Examiner's inherency argument. "Inherency ... may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient." In re Oelrich, 666 F.2d
578, 581(CCPA1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214
(CCPA 1939)).
In particular, and as argued by Appellants, Fink does not particularly
describe identifying a hot spot in paragraph 55 (Reply Br. 2). While Fink
describes that "one or more cooling units may be positioned to be closest to
a rack or racks that generate the greatest heat in the modular data center" in
an embodiment described in paragraph 56, the Examiner has not established
that Fink explicitly or inherently describe details concerning a method
wherein one or more cooling racks are positioned such that a cooling rack is
4
Appeal2015-001814
Application 12/490,858
positioned between two equipment racks and then adjusting the position of
the cooling rack by removing it from the initial position between two
equipment racks and moving the cooling rack to another position in between
two other equipment racks based on identified hot spots as required by claim
1 (Br. 5-7; Reply Br. 2).
It follows that the Examiner's inherency theory falls short of carrying
the burden to establish that Fink provides an anticipating disclosure for the
claimed subject matter.
In sum, the evidence of record supports Appellants' arguments and
indicates that the Examiner has not carried the burden to establish that Fink
describes a method wherein each and every element and step of the claimed
method, arranged as required by claim 1, is described or necessarily required
by the applied disclosures of Fink such that Fink anticipates claim 1, the sole
independent claim on appeal.
It follows that we reverse the Examiner's anticipation rejection.
Obviousness Rejection
Dependent claims 9-13 as subject to the obviousness rejection
maintained by the Examiner requires the features of independent claim 1. In
the stated obviousness rejection over the combined teachings of Fink and
Day, the Examiner addresses the additional features required by these
dependent claims without further specifying how the applied references
would have suggested the features of independent claim 1, which are
included in these separately rejected claims by virtue of their dependency on
claim 1 (Final Office Act. 8-10; App. Br. 8). For reasons discussed above,
the Examiner's separate rejection of dependent claims 9-13 falls short
5
Appeal2015-001814
Application 12/490,858
because the Examiner has not articulated how the obviousness position
advocated for the additional feature added by these claims overcomes the
deficiencies in the base anticipation rejection upon which the obvious
rejection of claims 9-13 are predicated.
Accordingly, we reverse the Examiner's obviousness rejection.
CONCLUSION
The Examiner's decision to reject the appealed claims is reversed.
REVERSED
6