Ex Parte Tucker et al

Board of Patent Appeals and Interferences

Aug 31, 2010

11068694 (B.P.A.I. Aug. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SEAN W. TUCKER, ARLEN L. ROESNER,
and ERICK J. TUTTLE
____________________

Appeal 2009-003552
Application 11/068,6941
Technology Center 2800

____________________

Before KENNETH W. HAIRSTON, MARC S. HOFF,
and CARLA M. KRIVAK, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Hewlett-Packard Development Co., L.P.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-003552
Application 11/068,694

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 30-45. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention relates to a computer chassis having an internal
cavity designed to hold a first media device of a first external width
dimension and a second media device of a second external width dimension,
wherein the first and second width dimensions are different. The first and
second media devices may be reoriented within the internal cavity to align
with a desk-side orientation and a desktop orientation of the chassis. (Spec.
6:5-7:18)
Claim 30 is exemplary:
30. A computer chassis, comprising:
a first portion of an internal cavity having a first transverse dimension;
and
a second portion of the internal cavity having a second transverse
dimension different from the first transverse dimension, wherein the
computer chassis is adapted to hold a first media device having a first width
dimension and a second media device having a second width dimension
different from the first width dimension in a plurality of orientations relative
to the computer chassis.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Toor US 5,748,442 May 5, 1998
Mills US 6,075,694 Jun. 13, 2000
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Tucker US 6,906,915 B2 Jun. 14, 20053

Claims 30-35, 38. and 39 stand rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1, 2,
13, 14, and 23-25 of Tucker.
Claims 30-43 stand rejected under 35 U.S.C. 102(b) as being
anticipated by Toor.
Claims 44 and 45 stand rejected under 35 U.S.C. 102(b) as being
anticipated by Mills.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Appeal Brief (filed May 29, 2007), the Reply Brief
(filed October 15, 2007), and the Examiner’s Answer (mailed August 9,
2007) for their respective details.

ISSUES
Appellants contend that the rejection based on Toor is erroneous
because the term "chassis” as disclosed by Toor does not encompass a
detachable drive unit 100 that mounts to a computer chassis , as claimed
(App. Br. 9). Appellants argue that one of ordinary skill in the art would not
interpret the term "chassis" as claimed to refer to the aggregate of the chassis
1 and the removable drive unit 100 of Toor (App. Br. 14). Appellants
further contend that Toor lacks a chassis adapted to hold media devices of
differing widths since Toor requires an adapter to hold narrower drives
(App. Br. 15-16). Appellants assert that Toor lacks a computer chassis

3 Although the Tucker reference is not recited in the section entitled
“Evidence Relied Upon,” the Examiner cites the reference within the
“Grounds of Rejection” (Ans. 3).
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comprising a non-rectangular internal cavity; rather, Toor discloses a chassis
having a rectangular internal cavity (App. Br. 24).
Regarding the orientation of the media devices within the computer
chassis, Appellants argue that the Examiner’s finding that Toor discloses a
chassis that is adapted to hold a first and second media device in a plurality
of orientations is erroneous because the drive unit 100 disclosed in Toor
must be separated from its chassis 1 in order to reorient its drives relative to
the chassis 1 (App. Br. 10, 16, and 17). Appellants contend that the chassis
22 disclosed in the Specification gives a user the option of individually
removing each drive and individually reinstalling each drive (App. Br. 11).
Appellants’ contentions present us with the following two issues:
1. Do the references disclose a computer chassis adapted to hold a
first media device having a first width dimension and a second media device
having a second width dimension different from the first width dimension in
a plurality of orientations relative to the computer chassis?
2. Do the references disclose a computer chassis having a non-
rectangular internal cavity defined by a plurality of walls?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. The cavity 28 of chassis 22 is defined by a plurality of cavity
walls 34. Specifically, cavity walls 34 define the main cavity portion 36 and
the first and second cavity extensions 38 and 40 that are configured to hold a
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first and a second media device 24 and 26, respectively (Fig. 3; Spec. 7:20-
25).
Toor
2. Toor discloses a removable media and/or hard disk drive unit
100 which can be installed in a computer chassis 1. The drive unit 100 may
hold more than one drive -- for example, a media drive of a first transverse
dimension and a second media drive of a second transverse dimension. The
drive unit 100 can be installed in a first orientation for a desk-top orientation
of the computer chassis and in a second orientation for a desk-side
orientation of the computer chassis 1 (Figs. 1-3; col. 5, l. 56-col. 6, l. 25).
Mills
3. Mills discloses a computer chassis 300 having a drive bay 200
which accommodates drives 392, 394, and 396, wherein drives 394 and 396
have the same transverse dimension which differ from the transverse
dimension of drive 392. The drives may be separately removed from drive
bay 200 and reoriented in a second position corresponding to a desk-top
orientation and a desk-side orientation. The drives include various rails 393
and 395 allowing the drives to be mounted into the bay 200 using the drive
mounting features (Fig. 4, col. 4, ll. 25-44).

PRINCIPLES OF LAW
Anticipation pursuant to 35 U.S.C § 102 is established when a single
prior art reference discloses expressly or under the principles of inherency
each and every limitation of the claimed invention. Atlas Powder Co. v.
IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d
1475, 1478-79 (Fed. Cir. 1994).
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ANALYSIS
Claims 30-32
We select claim 30 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 30 recites a first and second portion that forms
an internal cavity and that “the computer chassis is adapted to hold a first
media device having a first width dimension and a second media device
having a second width dimension different from the first width dimension in
a plurality of orientations relative to the computer chassis.”
We do not consider Appellants’ arguments to be persuasive to show
Examiner error. Specifically, we disagree with Appellants’ characterization
of Toor. Toor discloses a computer chassis 1 having a removable media
and/or hard disk drive unit 100 which can be oriented in a desktop or desk-
side arrangement (FF 2). The drive unit 100 may hold a media drive of a
first transverse dimension and a second media drive of a second transverse
dimension (FF 2). The mere fact that Toor’s disclosure includes a drive unit
100 coupled to chassis 1, however, does not mean that Toor does not
disclose a computer chassis adapted to hold first and second media devices.
We agree with the Examiner’s finding that the computer chassis 1 comprises
the drive unit 100, which is equivalent to the computer chassis 22 disclosed
in Appellants’ Specification, that comprises interior cavity walls 34 which
couple to “hold a first media device having a first width dimension and a
second media device having a second width dimension different from the
first width dimension” (Ans. 8, FF 1 and 2). It is clear from the drawings
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that without the cavity walls 34, computer chassis 22 is not adapted to hold a
first or second media device (FF 1).
We further agree with the Examiner’s finding that the reorientation of
the drives relative to the entire cited assembly is not a limitation recited in
the claims (Ans. 10). In addition, we agree with the Examiner’s finding that
none of the claims includes a limitation that a media drive may not be
coupled to an adapter rail or that the computer chassis holds the media drives
without additional elements such as an adapter rail (Ans. 8).
We find that Appellants have not shown that Toor fails to teach any
limitation of representative claim 30. As a result, we will sustain the
Examiner’s § 102 rejection of representative claim 30 and that of dependent
claims 31 and 32.
Claims 33-37
We select claim 33 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 33 recites “forming a chassis comprising an
internal cavity, a first portion of the internal cavity having a first transverse
dimension and having a first perpendicular dimension orthogonal to the first
transverse dimension, and a second portion of the internal cavity having a
second transverse dimension different from the first transverse dimension,
the first perpendicular dimension corresponding to the second transverse
dimension.”
We do not consider Appellants’ arguments to be persuasive to show
Examiner error. As noted supra, we have found that Toor discloses a
computer chassis having an internal cavity formed by drive unit 100 (FF 2).
Similar to the computer chassis of Appellants’ Specification, computer
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chassis 1 includes a first transverse dimension for receiving a first media
drive and a second transverse dimension for receiving a second media drive,
wherein the first and second transverse dimensions differ (FF 2). Noting
Figures 1-3 of Toor, without reliance upon the Examiner’s sketches in
Exhibit A, we agree with the Examiner’s finding that the drive unit 100
includes first and second transverse dimensions that couple to receive media
drives of first and second transverse dimensions (FF 2). Further, we find
that Toor discloses a first perpendicular dimension orthogonal to the first
transverse dimension which corresponds to the second transverse dimension
(FF 2).
Therefore, we find that Toor teaches each and every claim limitation
of representative claim 33. As a result, we will sustain the Examiner’s § 102
rejection of representative claim 33 and that of dependent claims 34-37.
Claim 38
Claim 38 recites “a non-rectangular internal cavity defined by a
plurality of walls.”
We do not consider Appellants’ arguments to be persuasive to show
Examiner error. As noted supra, we have found that Toor discloses an
internal cavity with first and second rectangular portions (FF 2). We have
also found that Toor discloses an internal cavity having a first transverse
dimension that is different from a second transverse dimension, wherein the
chassis is adapted to hold media devices of differing transverse widths (FF
2). We have also found that Toor discloses that the media devices may be
held in at least two orientations (FF 2).
Specifically, Figures 1-3 disclose a non-rectangular internal cavity
wherein drive unit 100 forms the internal cavity walls of chassis 1 (FF 2).
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We agree with the Examiner that it is similar to the cavity walls 34 that form
the non-rectangular internal cavity of chassis 22 disclosed in the
Specification (FF 1).
Therefore, we find that Toor teaches each and every claim limitation
of claim 38. As a result, we will sustain the Examiner’s § 102 rejection of
claim 38.
Claims 39-43
We select claim 39 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 39 recites the same claim limitation of claim 38:
“a non-rectangular internal cavity defined by a plurality of walls.” Similar
to the claim limitation of claim 33, representative claim 39 also recites first
and second rectangular portions of the internal cavity having first and second
transverse dimensions, respectively, wherein the first transverse dimension
is different from the second transverse dimension. Similar in scope to claim
33, representative claim 39 also recites that the first portion of the internal
cavity has a first perpendicular dimension orthogonal to the first transverse
dimension, wherein the first perpendicular dimension corresponds to the
second transverse dimension. Independent claim 40 recites a claim limitation
similar in scope.
We do not consider Appellants’ arguments to be persuasive to show
Examiner error. As noted supra, we have found that Toor discloses a non-
rectangular internal cavity, first and second transverse dimensions and a first
perpendicular dimension orthogonal to the first transverse dimension.
Therefore, we find that Toor teaches each and every claim limitation
of representative claim 39. As a result, we will sustain the Examiner’s
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§ 102 rejection of representative claim 39 and that of independent claim 40
and dependent claims 41-43.
Claims 44 and 45
We select claim 44 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 44 recites “a first portion configured to mount to
a stack of media devices in a first orientation relative to the computer
chassis; and a second portion configured to mount to the stack of media
devices in a second orientation that is substantially orthogonal to the first
orientation, wherein the stack of media drives comprises media drives
having different respective widths, and wherein the first portion is different
from the second portion.” Independent claim 45 recites a claim limitation
similar in scope.
We do not consider Appellants’ arguments to be persuasive to show
Examiner error. Specifically, Mills discloses a computer chassis 300 having
a drive bay 200 which accommodates drives 392, 394, and 396, wherein
drives 394 and 396 have the same transverse dimension which differ from
the transverse dimension of drive 392 (FF 3). The drives may be separately
removed from drive bay 200 and reoriented in a second position
corresponding to a desk-top orientation and a desk-side orientation (FF 3).
The drives include various rails 393 and 395 allowing the drives to be
mounted into the bay 200 using the drive mounting features (FF 3).
Therefore, we find that Mills teaches each and every claim limitation
of representative claim 44. As a result, we will sustain the Examiner’s § 102
rejection of representative claim 44 and that of claim 45.
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Claims 30-35 and 38-39
Appellants present no separate argument for the patentability of
claims 30-35, 38, and 39 with respect to the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1, 2,
13, 14, and 23-25 of Tucker. The Examiner notes that the double patenting
rejection was not addressed by Appellants, and that he has not withdrawn the
rejection (Ans. 7). We therefore sustain pro forma the rejection of claims
30-35 and 38-39 under the ground of nonstatutory obviousness-type double
patenting as being unpatentable over claims 1, 2, 13, 14, and 23-25 of
Tucker.

CONCLUSIONS
The references disclose a computer chassis adapted to hold a first
media device having a first width dimension and a second media device
having a second width dimension different from the first width dimension in
a plurality of orientations relative to the computer chassis.
The references disclose a computer chassis having a non-rectangular
internal cavity defined by a plurality of walls.
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ORDER
The Examiner’s rejection of claims 30-45 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD

HEWLETT-PACKARD COMPANY
INTELLECTUAL PROPERTY ADMINISTRATION
3404 E. HARMONY ROAD
MAIL STOP 35
FORT COLLINS, CO 80528
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