Ex Parte Zappacosta

Board of Patent Appeals and Interferences

Sep 23, 2003

09361514 (B.P.A.I. Sep. 23, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ELISA E. ZAPPACOSTA
__________
Appeal No. 2002-0555
Application 09/361,514
___________
ON BRIEF
___________
Before COHEN, FRANKFORT, and STAAB, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 12, all of the claims pending in
this application. In the examiner’s answer (Paper No. 10, page
3), the examiner has withdrawn the rejections of claims 2 and 5
through 12, indicating that claims 5 through 12 now stand allowed
and that claim 2 is now objected to, but contains allowable
Appeal No. 2002-0555
Application 09/361,514
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subject matter and would be allowed if rewritten in independent
form. In accordance with the foregoing, only claims 1, 3 and 4
remain for our consideration on appeal.
As noted on page 1 of the specification, appellant’s
invention relates to a computer expansion card retainer assembly
bracket and, more specifically, to the assembly of a computer
housing and computer expansion cards utilizing such a retainer
bracket. The retaining bracket is shown as element (22) in
Figures 1 and 2 of the application drawings and includes a planar
portion (24) having a plurality of tabs or fingers (26) depending
therefrom. As noted in the paragraphs bridging pages 5 and 6 of
the specification,
[o]nce flange 32 and mounting bracket 18 are properly
positioned relative to mounting panel 10, retaining bracket
22 may be disposed over flange 32, and both bracket ends 28
with fastener openings 38 may be aligned with fastener
openings 16. In aligning fastener openings 38 with fastener
opening 16, tabs or fingers 26 will engage the surface of
brackets 18 through which connector 40 extends.
The forcing of bracket 22 to such a position whereby
fastener openings 38 are aligned with the fastener openings
16, finger 26 will urge and retain bracket 18 into its
proper position.
A copy of claims 1, 3 and 4 on appeal may be found in
Appendix A of appellant’s brief.
Appeal No. 2002-0555
Application 09/361,514
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The sole prior art reference of record relied upon by the
examiner in rejecting claims 1, 3 and 4 is:
Lee 5,757,618 May 26, 1998
Claims 1, 3 and 4 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Lee.
Rather than attempt to reiterate the examiner's commentary
with regard to the above-noted rejection and the conflicting
viewpoints advanced by appellant and the examiner regarding that
rejection, we make reference to the examiner's answer (Paper No.
10, mailed July 3, 2001) for the reasoning in support of the
rejection, and to appellant’s brief (Paper No. 9, filed June 11,
2001) and reply briefs (Paper Nos. 11 and 13) for the arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims, to
the applied prior art Lee patent, and to the respective positions
articulated by appellant and the examiner. As a consequence of
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Application 09/361,514
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our review, we have made the determination that the examiner’s
rejection of claims 1, 3 and 4 under 35 U.S.C. § 103(a) will not
be sustained. Our reasons follow.
The examiner’s position (answer, pages 4-5) is that Lee
discloses a computer assembly including all of the subject matter
of claims 1, 3 and 4, except that it does not teach a circuit
board assembly with a connector that extends through the
elongated opening of a mounting panel as required in claim 1. To
account for this difference, the examiner asserts that such a
connector arrangement is an “expedient in the art” (answer, page
5) and that it would have been obvious to one of ordinary skill
in the art to provide such an arrangement (presumably in the
computer assembly of Lee) so as to permit connections between the
electronic circuit board assembly and a peripheral device to be
made without taking the computer assembly apart.
In addition to disputing the examiner’s above-noted
treatment of the connector arrangement limitation in claim 1 on
appeal, appellant points out that claim 1 defines the computer
assembly therein as including a retention bracket (22) having an
elongated panel (24), a plurality of fastener openings (38) and a
Appeal No. 2002-0555
Application 09/361,514
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plurality of depending force exerting members (26), wherein the
depending force exerting members engage the mounting bracket of
the at least one electronic circuit board set forth in the claim
when the retention bracket is secured to the mounting panel by
fasteners (50), and argues that the examiner’s reading of the
above-noted “depending force exerting members” on the alignment
or fixing protrusions (30c) of cover member (30) of Lee is in
error. More particularly, appellant urges that the pins (30c) of
Lee are not force exerting members but only pass through the
groove (26c) of the mounting bracket/support member (26) as
locating pins and act solely to align and prevent the
disengagement of the mounting bracket (26) from the mounting
panel (16) after assembly.
Like appellant, our review of the Lee patent reveals that
the protrusions or pins (30c) on the cover (30) therein extend
through the grooves (26c) of the mounting brackets (26) and into
holes (16c) of the mounting panel/receptacle (16) and act
primarily as locating and alignment pins for proper positioning
of the mounting brackets (26), particularly end portions (26a)
thereof, relative to the mounting panel/receptacle (16). There is
no indication and apparently no need in the arrangement seen in
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Application 09/361,514
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Figures 5 and 7 of Lee for the pins (30c) to engage and apply a
force to the end portions (26a) of the mounting brackets (26). In
fact, Lee notes in column 4, lines 39-44, that although the
number of protrusions or pins (30c) of Figure 5 are equal to the
number of expansion boards (20) that can be mounted to the
receptacle (16), there does not necessarily need to be a
corresponding number, and the cover member (30) can be formed
having a smaller number of pins/protrusions (30c).
It is rank speculation on the examiner’s part to urge that
the pins/protrusions (30c) of Lee are “force exerting members”
which engage the mounting brackets (26) when the cover (30) is
secured to the mounting panel (16) by fasteners (30a, 32). In our
view, when the “plurality of depending force exerting members” of
appellant’s claim 1 is given its broadest reasonable
interpretation consistent with the specification, and it is
remembered that claim language cannot be read in a vacuum, but
instead must be read in light of the specification as it would be
interpreted by one of ordinary skill in the pertinent art (See In
re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983); In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed.
Cir. 1990) and In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023,
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Application 09/361,514
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1027 (Fed. Cir. 1997)), such force exerting members must be
interpreted to be members that are specifically designed and
intended to apply a force against the mounting brackets of the
electronic circuit board assemblies associated therewith in the
computer assembly defined in claim 1 and as urging such mounting
brackets and their associated electronic circuit board components
into their proper position in the mounting panel of the computer
assembly.
It is clear to us that the alignment and fixing
protrusions/pins (30c) of Lee are not specifically designed and
intended to apply a force against the mounting brackets of the
electronic circuit board assemblies associated therewith. As
appellant has argued on page 3 of the reply briefs, the
disclosure in Lee of a pin/protrusion (30c) projecting through a
groove (26c) does not require or imply any force being exerted on
the mounting bracket portion (26a) by the pin/protrusion.
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Application 09/361,514
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In light of the foregoing, it is our determination that the
examiner has not made out a prima facie case of obviousness, and
that the decision of the examiner rejecting claims 1, 3 and 4
under 35 U.S.C. § 103(a) must be reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 2002-0555
Application 09/361,514
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CEF:pgg
Laurence R. Letson
P.O. Box 4129
Lexington, KY 40544-4129