QUANTA COMPUTER INC.

Patent Trials and Appeals Board

Mar 29, 2022

2022000017 (P.T.A.B. Mar. 29, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/949,423 04/10/2018 Chao-Jung CHEN 077369-106113USPT 8496 143588 7590 03/29/2022 Nixon Peabody LLP 799 Ninth Street NW Suite 500 Washington, DC 20001 EXAMINER KOSANOVIC, HELENA ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 03/29/2022 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): ipairlink@nixonpeabody.com nppatent@nixonpeabody.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHAO-JUNG CHEN, YU-NIEN HUANG, HERMAN TAN, and CHIH-WEI LIN ____________ Appeal 2022-000017 Application 15/949,423 Technology Center 3700 ____________ Before JOHN C. KERINS, MICHAEL L. WOODS, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review, under 35 U.S.C. § 134(a), of the Examiner’s decision, as set forth in the Final Office Action dated October 20, 2020, rejecting claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Quanta Computer, Inc. as the real party in interest. Appeal Br. 1. Appeal 2022-000017 Application 15/949,423 2 BACKGROUND The disclosed subject matter “relates to an apparatus for suppressing noise emanating from individual electronic units within a server device.” Spec. ¶ 2. Claims 1 and 10 are independent. Claim 1 is reproduced below: 1. A noise suppressing apparatus for heat dissipating electronic units within a server device, the apparatus comprising: a first distal end and a second distal end; a first connecting member located at the first distal end; a second connecting member located at the second distal end; at least one bracket secured within at the first and second connecting members, the at least one bracket oriented perpendicularly to the first and second connecting members and comprising a plurality of flow guiding depressions and a plurality of micro pores; and a plate configured to abut the bracket within the apparatus; wherein first and second connecting members are configured to connect the noise suppressing apparatus within the server device. REJECTIONS 1. Claims 1-12 and 14-21 stand rejected under 35 U.S.C. § 103 as unpatentable over Tang (US 2008/0065245, published March 13, 2008)2 and Roach (US 4,050,913, issued September 27, 1977).3 2 The Examiner mistakenly identifies “Tang” as US 2008/0055245. Final Act. 2. The correct pre-grant publication number is US 2008/0065245. See Notice of References Cited, dated June 24, 2020. 3 The Examiner expresses alternative rejections under this combination of prior art under five separate lead paragraphs. See Final Act. 2-6, 8-12. Appeal 2022-000017 Application 15/949,423 3 2. Claims 1, 10, 22,4 and 23 stand rejected under 35 U.S.C. § 103 as unpatentable over Tang and Wang (US 6,457,554 B1, issued October 2, 2002).5 3. Claim 13 stands rejected under 35 U.S.C. § 103 as unpatentable over Tang, Roach, and Van Pelt (US 2014/0268551 A1, published September 18, 2014). DISCUSSION Rejection 1 - The rejection of claims 1-12 and 14-21 under 35 U.S.C. § 103 Appellant argues the patentability of the two independent claims in this Rejection-claims 1 and 10-as a group and does not separately argue any dependent claims. Appeal Br. 5-8. We select independent claim 1 as representative, with the remaining claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2020). For claim 1, the Examiner relied on Tang for certain limitations but stated that “Tan[g] is silent for the rest of the limitations regarding noise suppressing apparatus as claimed in claim 1.” Final Act. 3. The Examiner found, however, that Roach teaches the remaining limitations. Id. at 3-4. According to the Examiner, It would have been obvious to one of ordinary skill in the art at the time of the invention to substitute the Tang noise suppression member [with] the Roach noise suppression 4 The Examiner lists claim 23 in the first lead paragraph for Rejection 2 (Final Act. 6), but discusses claim 22 in the body of the Rejection (id. at 8). As such, we consider the “23” in the lead paragraph a typographical error. 5 The Examiner expresses the rejections under this combination of prior art under two lead paragraphs. See Final Act. 6-8, 13-15. Appeal 2022-000017 Application 15/949,423 4 member, because the substitution of one known element for another would have yielded predictable results of suppressing the noise within the electronic equipment in order to provide comfort to the occupant. Id. at 4. First, Appellant argues that the Examiner fails to provide a reasonable explanation why a person having ordinary skill in the art (i) would have had a reason to combine the acoustic attenuator in the vortex air cleaner for the gas turbine engine of Roach with the server system of Tang (ii) to arrive at the subject matter recited in the claims, and (iii) that the combination would have had a reasonable expectation of success (e.g., predictable success). Appeal Br. 5-6. This argument does not apprise us of error. As to (i), and as summarized above, the Examiner does provide a reason to combine the relied-upon aspects of Tang and Roach. See Final Act. 4. Appellant, however, does not address substantively the specific reasoning provided. We determine that the Examiner’s reasoning supports a prima facie case of obviousness for claim 1. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). By not addressing the reasoning provided, Appellant has not shown error in the relevant findings or the conclusion as to obviousness, which we determine to be supported by rational underpinnings. See id. (discussing how, if an examiner presents a prima facie case, “the burden of coming forward with evidence or argument shifts to the applicant”). As to (ii), Appellant does not identify any limitations in claim 1 that would not be present in the proposed combination. See Ans. 5 (“Examiner noted that the Appellant did not argue any structural differences between the claimed attenuator and applied prior art attenuators. Therefore, applied prior Appeal 2022-000017 Application 15/949,423 5 arts (Rauch and Wang) properly show elements of noise attenuator as clamed.”). And as to (iii), Appellant has not provided sufficient evidence or technical reasoning to support the position that the proposed modification would have been beyond the level of ordinary skill in the art and does not challenge specifically that success in the proposed combination would have been reasonably expected. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (stating that the obviousness analysis “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”); see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Second, Appellant contends that the Examiner “fails to provide any reasonable or rational underpinning for the combination of Roach’s gas turbine engine air vortex cleaners with Tang’s server system, let alone how this would teach a noise suppressing apparatus for a server or computing device, as recited in the claims.” Appeal Br. 7; see also id. at 5 (noting that “the combination of Tang and Roach improperly combines the server technology of Tang with an acoustic attenuator in a vortex air cleaner for a gas turbine engine”). We are not apprised of error based on this argument. As to how the proposed combination would result in a noise suppressing apparatus “within a [or the] server device” as recited in claim 1, we note that Appellant does not dispute the Examiner’s finding that Tang discloses a noise suppressing apparatus “within a [or the] server device.” Final Act. 3. After the proposed modification of Tang with the noise suppression apparatus of Roach (Final Act. 4; Ans. 3), the modified device will still be within the server of Tang. Appeal 2022-000017 Application 15/949,423 6 In addition, to the extent Appellant argues that one of ordinary skill in the art would not have combined Tang and Roach as proposed because the two are nonanalogous art to the claimed invention, we disagree. “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). We determine that Tang is in the same field as the claimed invention-noise suppression within servers-as found by the Examiner. See Spec. ¶ 2; Final Act. 3; Ans. 3 (stating that “Tang teaches the server apparatus with sound suppressor”); see also Tang ¶ 10 (“Embodiments of the present invention are directed to efficient systems and apparatuses for reducing and suppressing noise emissions related to forced air computer cooling systems.”). As to Roach, we determine that it is reasonably pertinent to the claimed invention because, as found by the Examiner, both relate to the same purpose: suppressing noise. See Ans. 3; Spec. ¶ 2; see also Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359 (Fed. Cir. 2020) (discussing how whether a reference is reasonably pertinent “rests on the extent to which the reference of interest and the claimed invention relate to a similar problem or purpose”). Appellant focuses not on the purpose or problem at issue, but on the specific application or use in Roach-i.e., in an air cleaner for a gas turbine engine. Appeal Br. 5, 7. The scope of analogous art, however, is not so limited. See Graham v. John Deere Co., 383 U.S. 1, 35 (1966) (rejecting the argument that the cited references were Appeal 2022-000017 Application 15/949,423 7 not “pertinent prior art” and stating that “[t]he problems confronting [the patentee] and the insecticide industry were not insecticide problems; they were mechanical closure problems”). Third, Appellant argues that “the modification of Tang’s server, fans, and/or noise suppressing components with Roach’s teachings of an acoustic attenuator for a vortex air cleaner for a gas turbine engine would render Tang unsatisfactory for its intended purpose to operate as a server.” Appeal Br. 7. According to Appellant, “Tang’s acoustic attenuator for a vortex air cleaner for a gas turbine engine, where air is pulled into the engine at a high velocity and likely under high pressures, would be expected to destroy the components of Tang’s server and/or would otherwise be expected to fail to attenuate the noise of any remaining operable components within the server.” Id. at 7-8 (citing MPEP § 2143.01 V). We are not apprised of error based on this argument because, for the reasons stated by the Examiner (Ans. 4), the argument does not address the rejection as articulated. Specifically, as stated, the Examiner “applied only the Roach noise attenuator, not the other elements that accelerate the airflow.” Id. Fourth, Appellant argues that “the modification of Tang’s server, fans, and/or noise suppressing components with the acoustic attenuator of a vortex air cleaner for a gas turbine engine of Roach would change the principle of operation of Tang’s server” in that “Tang’s server would malfunction and overheat as the acoustic attenuator of Roach would not be expected to be suitable with any heat-dissipating electronic units in Tang’s server.” Appeal Br. 8 (citing MPEP § 2143.01 VI). Appeal 2022-000017 Application 15/949,423 8 A proposed modification that changes the “basic principles under which the [prior art] was designed to operate” may not support a conclusion of obviousness. In re Ratti, 270 F.2d 810, 813 (CCPA 1959). The “principle of operation” referred to relates to the “basic principles” under which the prior art device was designed to operate. Id. In this context, “a change in the basic principles” refers to change that is fundamental in scope so as to relate to scientific or technical principles under which the invention is designed to operate. Id. Appellant has not demonstrated that modifying Tang with the noise attenuator of Roach would change the basic principle under which Tang operates. Cf. In re Ratti, 270 F.2d at 813 (CCPA 1959) (stating that the proposed modification would “require a substantial reconstruction and redesign of the elements shown in [the prior art] as well as a change in the basic principles under which the [prior art] was designed to operate”). Indeed, just like the noise suppression apparatus in Tang, the noise attenuators in Roach, in the context of the modified device overall, would allow air flow for cooling of the servers in Tang. See Ans. 4 (stating that “it is not clear what malfunction would provide [read - be caused by] exchange of one acoustic attenuator for another”); Tang ¶ 10 (discussing “forced air cooling systems”); see also Roach 7:31-63 (discussing air flow through passages 44 in, e.g., Fig. 4). For the reasons above, we sustain the rejection of independent claim 1. Claims 1-12 and 14-21 fall with claim 1. Rejection 2 - The rejection of claims 1, 10, 22, and 23 under 35 U.S.C. § 103(a) Appellant argues the patentability of the two independent claims in this rejection-claims 1 and 10-as a group and does not separately argue any dependent claims. Appeal Br. 8-9. We select independent claim 1 as Appeal 2022-000017 Application 15/949,423 9 representative, with the remaining claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). For claim 1, the Examiner relied on Tang for certain limitations but stated that “Tan[g] is silent for the rest of the limitations regarding noise suppressing apparatus as claimed in claim 1.” Final Act. 7. The Examiner found, however, that Wang teaches the remaining limitations. Id. at 7-8. According to the Examiner, It would have been obvious to one of ordinary skill in the art at the time of the invention to substitute the Tang noise suppression member [with] the Wang noise suppression member, because the substitution of one known element for another would have yielded predictable results of suppressing the noise within the electronic equipment in order to provide comfort to the occupant. Id. at 8. First, Appellant argues that the Examiner does not provide a reasonable explanation why a person having ordinary skill in the art (i) would have had a reason to combine the acoustic absorber for a wall in a building in Wang with the computing system of Tang (ii) to arrive at the subject matter recited in the claims, and (iii) that the combination would have had a reasonable expectation of success (e.g., predictable success). Appeal Br. 8; see also id. at 8-9 (stating that “nowhere does the reviewing examiner provide any detail of how the teaching of wall unit for building in Wang would be incorporated into a Tang’s computing system where the combination would be expected to teach claims 1 or 10”). This argument does not apprise us of error. As to (i), and as summarized above, the Examiner does provide a reason to combine the relied-upon aspects of Tang and Wang. See Final Act. 8. Appellant, however, does not address Appeal 2022-000017 Application 15/949,423 10 substantively the specific reasoning provided, except to imply, without explanation, that the reasoning is inadequate. See Appeal Br. 8 (stating that “nowhere does the reviewing examiner provide any rational underpinning as to why or how a person of ordinary skill in the art would have combined the computing system described by Tang with an acoustic absorber for a building to arrive at the claimed invention, other than to say it would have been done ‘in order to provide comfort to the occupant’”). We determine that the Examiner’s reasoning supports a prima facie case of obviousness for claim 1. See In re Oetiker, 977 F.2d at 1445. By not addressing the reasoning provided, Appellant has not shown error in the relevant findings or the conclusion as to obviousness, which we determine to be supported by rational underpinnings. See id. As to (ii), Appellant does not identify any limitations of claim 1 that would not be present in the proposed combination. See Ans. 5 (“Examiner noted that the Appellant did not argue any structural differences between the claimed attenuator and applied prior art attenuators. Therefore, applied prior arts (Rauch and Wang) properly show elements of noise attenuator as clamed.”). And as to (iii), Appellant has not provided sufficient evidence or technical reasoning to support the position that the proposed modification would have been beyond the level of ordinary skill in the art and does not challenge specifically that success in the proposed combination would have been reasonably expected. See KSR, 550 U.S. at 418, 421. Second, Appellant contends that Tang and Wang “(i) address fundamentally different problems of noise attenuation for (ii) unrelated systems” in that “the combination of Tang with Wang improperly combines Appeal 2022-000017 Application 15/949,423 11 the server technology of Tang with an acoustic absorber in a wall for absorbing noises in buildings.” Appeal Br. 5. To the extent Appellant argues that one of ordinary skill in the art would not have combined Tang and Wang as proposed because the two are nonanalogous art to the claimed invention, we disagree. As discussed in the context of Rejection 1, we determine that Tang is in the same field as the claimed invention-noise suppression within servers-as found by the Examiner. See Spec. ¶ 2; Final Act. 3; Ans. 3; Tang ¶ 10. As to Wang, we determine that it is reasonably pertinent to the claimed invention because, as found by the Examiner, both relate to the same purpose: suppressing noise. See Ans. 5; Spec. ¶ 2; see also Donner Tech., 979 F.3d at 1359 (discussing how whether a reference is reasonably pertinent “rests on the extent to which the reference of interest and the claimed invention relate to a similar problem or purpose”). Appellant focuses not on the purpose or problem at issue, but on the specific application or use in Wang-i.e., in the wall of a building. Appeal Br. 5. The scope of analogous art is not so limited. See Graham, 383 U.S. at 35. For the reasons above, we sustain the rejection of independent claim 1. Claims 10, 22, and 23 fall with claim 1. Rejection 3 - The rejection of claim 13 under 35 U.S.C. § 103(a) Claim 13 depends from claim 10. See Appeal Br. 14 (Claims App.). Appellant argues that claim 13 is allowable based on its dependence from claim 10, discussed above in the context of Rejection 1. See id. at 10. Appellant does not provide additional arguments for claim 13. For the reasons above, we are not apprised of error in the rejection of claim 10. See supra Rejection 1. As such, we sustain the rejection of claim 13. Appeal 2022-000017 Application 15/949,423 12 CONCLUSION We affirm the Examiner’s rejection of claims 1-23. More specifically, we (1) affirm the decision to reject claims 1-12 and 14-21 under 35 U.S.C. § 103 based on Tang and Roach, (2) affirm the decision to reject claims 1, 10, 22, and 23, under 35 U.S.C. § 103 based on Tang and Wang, and (3) affirm the decision to reject claim 13 under 35 U.S.C. § 103 based on Tang, Roach, and Van Pelt. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-12, 14-21 103 Tang, Roach 1-12, 14-21 1, 10, 22, 23 103 Tang, Wang 1, 10, 22, 23 13 103 Tang, Roach, Van Pelt 13 Overall Outcome 1-23 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED