Ex Parte Costello et al

Patent Trial and Appeal BoardOct 25, 2012

11271293 (P.T.A.B. Oct. 25, 2012)

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. 11/271,293 11/10/2005 David Costello 7339-005U 9198 29973 7590 10/25/2012 CAREY, RODRIGUEZ, GREENBERG & O''KEEFE LLP ATTN: STEVEN M. GREENBERG, ESQ. 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER THOMAS, BRADLEY H ART UNIT PAPER NUMBER 2835 MAIL DATE DELIVERY MODE 10/25/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DAVID COSTELLO and MICHAEL PERRI ____________ Appeal 2011-006096 Application 11/271,293 Technology Center 2800 ____________ Before CARL W. WHITEHEAD, JR., JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. GONSALVES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006096 Application 11/271,293 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the rejection of claims 1 and 4-20 (App. Br. 2). Claims 2-3 were canceled (id.). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The Invention Exemplary claim 1 follows: 1. A chassis for an electronic device, comprising: a plurality of fans, each of the fans directing a fluid into an interior of the chassis; wherein a positive pressure exists between the interior of the chassis and an exterior of the chassis at all openings, excluding fan openings, within the chassis an open to outside the chassis, wherein the plurality of fans are attached to a single face of the chassis, and the fluid outputted by the plurality of fans is directed toward a second face of the chassis, and the second face of the chassis having a greatest total area of the openings, excluding the fan openings Claims 1 and 4-20 stand rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention (Ans. 3-4). Appeal 2011-006096 Application 11/271,293 3 Claims 1, 4-7, 11, 14, and 18 stand rejected under 35 U.S.C. § 103 as being unpatentable over Rolls (U.S. 6,750,562) in view of Shao (U.S. 2002/0015287) (Ans. 4-10). Claims 8-10 and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rolls in view of Shao and Kammersqart (U.S. 5,505,533) (Ans. 11-13). Claims 12-13, 15-16, and 19-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rolls in view of Shao and Fujimori (U.S. 2005/0019165) (Ans. 13-14). ISSUES Appellants’ responses to the Examiner’s positions present the following issues: 1. Did the Examiner err in finding that the claim limitation that “a positive pressure exists . . . at all openings, excluding fan openings . . .” is indefinite in rejecting claims 1 and 4-20 under 35 U.S.C. 112, second paragraph? 2. Did the Examiner err in finding that the combination of Rolls and Shao teaches or suggests “a positive pressure exists between the interior of the chassis and an exterior of the chassis at all openings, excluding fan openings, within the chassis and open to outside the chassis,” as recited in independent claim 1, and as similarly recited in independent claims 14 and 19? Appeal 2011-006096 Application 11/271,293 4 ANALYSIS Issue 1 The Examiner rejected claims 1 and 4-20 under 35 U.S.C. 112, second paragraph on the basis that the claim limitation “a positive pressure exists . . . at all openings, excluding fan openings . . .” is indefinite (Ans. 3). The Examiner reasoned that “[i]t is currently unclear how some of the openings affect the positive pressure but not others” (id. at 4). Appellants contend that the Examiner’s “characterization of the claimed invention is incorrect” (App. Br. 5). Appellants argue that “[a]n opening, per se, has no effect on the ability of the chassis to have a positive pressure inside” (id.). Appellants further argue that “the claimed invention refers to a characteristic at all the openings, excluding fan openings – not how the openings affect the characteristics” (id.). We agree with Appellants. The claims clearly recite that there is a positive pressure at all the openings of the chassis excluding the fan openings. Accordingly, we find that the Examiner erred in rejecting claims 1 and 4-20 under 35 U.S.C. 112, second paragraph. Issue 2 We disagree with Appellants’ assertions regarding the Examiner’s obviousness rejections of claims 1 and 4-20. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Answer (Ans. 4-14 and 16-28) in response to arguments made in Appellants’ Appeal Brief. We concur with the conclusion reached by the Examiner. We highlight and address certain findings and arguments below. Appeal 2011-006096 Application 11/271,293 5 Appellants contend that the Examiner erred in rejecting claim 1 as obvious because Shao does not teach that “a positive pressure exists between the interior of the chassis and an exterior of the chassis at all openings, excluding fan openings within the chassis and open to outside the chassis” (App. Br. 11). But the recitation of pressure levels at various openings is just a property of a prior art structure and therefore, cannot be given any patentable weight. AtlasPowder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999) (“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.”). Accordingly, we find no error in the Examiner’s rejection of claim 1. Appellants also contend that the Examiner erred in rejecting claim 14 as obvious because the combination of Rolls and Shao does not teach or suggest an exhaust velocity of 9 ft/sec (App. Br. 14-16). In addition, Appellants contend that the Examiner erred in rejecting claim 18 as obvious because the combination of Rolls and Shao does not teach or suggest a percentage of the fan area on a face to the total area of the face of greater than 18% (App,. Br. 18-19). The Examiner found, however, that it would have been obvious to one of ordinary skill in the art to adjust the exhaust velocity and fan area by adjusting the size of the fans (Ans. 22-24). We agree with the Examiner. Shao discloses an exhaust speed of 7.3 ft/sec (¶¶ [0053]-[0057]). In addition, Appellants Specification discloses that the exhaust air speed can be changed by using fans with different sizes (¶ [0022]). In other words, it would have been obvious to increase the exhaust speed of Shao from 7.3 ft/sec to 9 ft/sec by using larger fans. Similarly, the Appeal 2011-006096 Application 11/271,293 6 percentage of fan area could also be adjusted to be greater than 18% by using larger fans. Accordingly, we find no error in the Examiner’s obviousness rejections of claims 14 and 18. We also find no error in the Examiner’s rejection of the remaining claims on appeal (i.e., claims 4-13, 15-17, 19, and 20) because Appellants did not set forth any separate patentability arguments for them (see App. Br. 20-21). DECISION We reverse the Examiner’s decision rejecting claims 1 and 4-20 as indefinite and affirm the Examiner’s decision rejecting claims 1 and 4-20 as obvious. 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 pgc