Ex Parte Li et al

Patent Trial and Appeal Board

Sep 14, 2018

13722408 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/722,408 12/20/2012
102469 7590 09/18/2018
PARKER JUSTISS, P.C./Nvidia
14241 DALLAS PARKWAY
SUITE 620
DALLAS, TX 75254
FIRST NAMED INVENTOR
ZhiLi
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.
SZ-12-0125-USl 1592
EXAMINER
CHOWDHURY, ROCKSHANA D
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
09/18/2018 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):
docket@pj-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHI LI, QIANG CHEN,
and CHARLIE J. SHU
Appeal2018-000367
Application 13/722,408
Technology Center 2800
Before JAMES C. HOUSEL, DEBRA L. DENNETT, and
JANEE. INGLESE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision rejecting claims 1-20. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision refers to the Specification ("Spec.") filed December 20, 2012,
the Examiner's Final Office Action ("Final Act.") dated December 13, 2016,
Appellants' Appeal Brief ("Appeal Br.") filed June 13, 2017, the Examiner's
Answer ("Ans.") dated August 11, 2017, and Appellants' Reply Brief
("Reply Br.") filed October 11, 2017.
2 Appellant is the Applicant, NVIDIA Corporation, which is identified in the
Appeal Brief as the real party in interest (Appeal Br. 3).
Appeal 2018-000367
Application 13/722,408
STATEMENT OF THE CASE
The invention relates to a bracket of an add-in card of a computer
(Spec. ,r 2). The Inventors disclose bracket 200, 3 as depicted in Figures 2
and 3 below, includes sheet body 210 having at least one opening 220 for
engaging with interface adapter 310 of an add-in card and conductive
component 230 extending downwardly from an area above the opening for
electrically connecting with housing 320 of the interface adapter and with
chassis 350 of the computer, thereby grounding the interface adapter through
the bracket and the chassis.
-:~H%~r%~~tlw~1
·--:·
.FlG. 3
Appellant's Figures 2 and 3, depicting an add-in card of a computer
3 Throughout this Opinion, for clarity, we present labels to elements in
figures in bold font, regardless of their presentation in the original document.
2
Appeal 2018-000367
Application 13/722,408
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitation at issue
is italicized.
1. A bracket of an add-in card system of an electronic device,
compnsmg:
a body in a shape of a sheet, wherein the body is
provided with an opening, the opening configured to
correspond to an interface adapter on the add-in card and
expose an interface part of the interface adapter in an installed
state when the bracket is installed to the add-in card; and
a conductive component in electrical connection with the
body, the conductive component extending downwards from an
area above the opening, the conductive component configured
to electrically connect with a housing of the interface adapter in
the installed state, wherein at least a portion of the body is made
of a conductive material so that the conductive component is
electrically connected with a chassis via the body when
installed.
Independent claim 8 recites an add-in card system comprising a
bracket as recited in claim 1 and an add-in card with the interface adapter.
Independent claim 16 recites a computer comprising a bracket as recited in
claim 1, an add-in card with the interface adapter, and a chassis with an add-
in card installing port.
REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection under 35 U.S.C. § 103(a): 4
4 Because this application was filed before the 16 March 2013 effective date
of the America Invents Act, we refer to the pre-AIA version of the statute.
3
Appeal 2018-000367
Application 13/722,408
1. Claims 1, 2, 5, 6, 8, 9, 12, 13, 16, and 18 as unpatentable over
Malone5 in view of Haga; 6
2. Claims 3, 4, 7, 10, 11, 14, 17, and 19 as unpatentable over
Malone in view of Haga, and further in view of Chen; 7 and
3. Claims 15 and 20 as unpatentable over Malone in view of
Haga, and further in view of Noyes. 8
ANALYSIS
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record. Appellant does not challenge the
prior art status of the references applied by the Examiner in support of the
rejections under 35 U.S.C. § 103(a).
After review of the opposing positions articulated by Appellant and
the Examiner, and the applied prior art, we determine that Appellant's
arguments are insufficient to identify reversible error in the Examiner's
obviousness rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we affirm the stated obviousness rejections for substantially
the fact findings and the reasons set forth by the Examiner in the Examiner's
Answer and the Final Office Action. We offer the following for emphasis
only.
Rejection 1: Obviousness over Malone and Haga
Appellant argues independent claims 1, 8, and 16 together as a group
and does not separately argue dependent claims 2, 5, 6, 9, 12, 13, and 18
5 Malone et al., US 6,508,653 B2, issued January 21, 2003 ("Malone").
6 Haga et al., US 7,219,404 B2, issued May 22, 2007 ("Haga").
7 Chen et al., US 7,314,379 B2, issued January 1, 2008 ("Chen").
8 Noyes, US 4,688,868, issued August 25, 1987.
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Application 13/722,408
(Appeal Br. 6-9). Accordingly, we select claim 1 as the representative claim
on which we focus in deciding the appeal as to this rejection (37 C.F.R.
§ 4I.37(c)(l)(iv)).
The Examiner finds Malone discloses a bracket substantially as
recited in claim 1, except wherein the conductive element extends
downwardly from an area above the opening (Final Act. 3--4). For this
feature, the Examiner finds Haga teaches a conductive component of a
bracket body that extends downwardly from an area above an opening (id. at
4). In this regard, the Examiner further finds that Haga discloses such
conductive components
provide both a locking mechanism for holding an electrical
connector in place when inserted through an aperture in the case
of an electronic device such as a computer and also provides
electromagnetic shielding by grounding a wide surface area of
the electrical connector to the outer surface of the casing
(Ans. 3, emphasis removed).
The Examiner concludes it would have been obvious to modify Malone's
bracket to provide the conductive component extends downwardly from an
area above the opening in order to maintain even contact between the
conductive component and the interface adapter (Final Act. 4 ).
Appellant argues that neither Malone nor Haga teach or suggest a
conductive component in electrical connection with the bracket body that
extends downwards from an area above the opening (Appeal Br. 7).
Appellant argues that Haga also fails to teach or suggest a bracket body in
the shape of a sheet (id.; Reply Br. 2). Appellant contends that Haga is
directed to a retaining clip for securing a connector within a panel, rather
than a bracket for an add-in card (Appeal Br. 7).
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Application 13/722,408
In addition, Appellant argues that there is no motivation to combine
the downwardly extending fingers of Haga' s retaining clip into Malone's
bracket body, but if one might be motivated to do so, these fingers would be
added to an outer surface of Malone's bracket (Appeal Br. 8). Appellant
alleges that because the Examiner's motivation to combine changed during
prosecution from maintaining contact over the surface when in a locked
position to acting as a ground to the electrical connector across a wide area,
the combination only results from improper hindsight (id. at 8-9).
Appellant's arguments are not persuasive of reversible error. Initially,
we note that Malone teaches each of the conductive components or flange
elements 48a-d forms an angle with respect to the bracket that is less than
180°, although an angle of substantially 90° is preferred (Malone 5 :41--49).
As such, Malone suggests angles greater than 90° and less than 180°, which
would provide that conductive component 48a would extend downwards
from an area above opening 50. Moreover, Malone teaches that the
conductive components provide increased contact area with a peripheral
component connector (interface adapter) affixed to a printed circuit board
(add-in card) for improved electromagnetic shielding (id. at 6:15-22).
Notwithstanding Malone's teaching, as the Examiner finds, Haga
teaches conductive components or fingers 15 which extend downwards from
an area above an opening 12 for the purpose of grounding an electrical
connector 21 across a wide area with respect to a casing 31 and a receptacle
connector 41, for electromagnetic shielding to prevent escape of EM
radiation from the electronic device (Haga 2:64--3:5, 4:3---6). Haga also
teaches that each of these conductive components or fingers 15 includes an
arced second portion 18 which first curves into the region above opening 12
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Application 13/722,408
and then away from that region such that this arced portion 18 acts as a
contacting surface (id. at 2:41--45). The Examiner concludes that modifying
Malone's conductive components in view of Haga' s teaching of arced
conductive fingers would have been obvious to the ordinary artisan in order
to improve the contact area and EM shielding with the interface adapter and
chassis.
Appellant's arguments appear to misapprehend this rejection. While
Appellant urges that Raga's retaining clip does not have a body in the shape
of a sheet, Malone's bracket clearly has a body in the shape of a sheet and
the Examiner is not relying on Haga for this feature. In addition, although
Appellant argues that Haga fails to teach conductive components which
extend downwards from an area above the opening, Haga clearly teaches
that the fingers above the opening extend downwards from an area above the
opening (Ans. 2-3, 5, 7; Haga Fig. 2).
We are likewise not persuaded that the Examiner's rejection fails for
lack of consistent motivation to combine. As discussed above, both Malone
and Haga were concerned with both electrical grounding as well as EM
shielding of interface adapters and connectors. As such, improving
Malone's grounding and EM shielding by creating a greater contact area in
view of Raga's teaching of arced conductive components would have been
obvious to one of ordinary skill in the art.
We recognize that Raga's retaining clip, in use, extends outwardly
from the chassis or panel. However, we do not agree that Haga would only
motivate, at best, placement of fingers extending outwardly from Malone's
bracket body. Again, both Malone and Haga teach structures for improved
grounding and EM shielding of interface adapters and connectors. Because
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Malone already teaches conductive components which would assist in this
grounding and EM shielding, there is sufficient basis for the Examiner's
conclusion that it would have been obvious to modify Malone's conductive
components to have the shape of Raga's fingers thereby improving
grounding and EM shielding.
Finally, Appellant argues for the first time, in the Reply Brief, that the
skilled artisan would not be motivated to take only the conductive
components from Raga's clip for modifying Malone's bracket, thereby
discarding the remainder of Raga's clip (Reply Br. 2). Appellant also argues
for the first time, in the Reply Brief, that modifying Malone as suggested by
the Examiner "would clearly change Raga's principle of operation-as a
retaining clip" (id.). Aside from their lack of timeliness, 9 these arguments
are not persuasive as they apply an incorrect standard to the conclusion of
obviousness.
The rejection here is not based upon a bodily incorporation of Raga's
conductive components or retaining clip into Malone or vice versa. See In
re Keller, 642 F.2d 413,425 (CCPA 1981) ("The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference .... Rather, the test is what the
combined teachings of those references would have suggested to those of
ordinary skill in the art.") (citations omitted). It is well established that the
9 Under regulations governing appeals to the Board, any new argument not
timely presented in the Appeal Brief will not be considered when filed in a
Reply Brief, absent a showing of good cause explaining why the argument
could not have been presented in the Appeal Brief. See Ex parte Borden, 93
USPQ2d 1473, 1476-77 (BPAI 2010) (informative); see also 37 C.F.R.
§ 41.37 and§ 41.41.
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Application 13/722,408
obviousness inquiry does not ask "whether the references could be
physically combined but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole." In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985) (en bane); see also In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) ("Combining the teachings of references does not involve
an ability to combine their specific structures.").
Moreover, Appellant does not argue that the Examiner's proposed
modification to Malone would change Malone's principle of operation.
Instead, Appellant argues that doing so would somehow change Raga's
principle of operation. Whether or not Appellant is correct is not relevant.
In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (If the proposed modification or
combination of the prior art would change the principle of operation of the
prior art invention being modified, then the teachings of the references are
not sufficient to render the claims prima facie obvious.); cf In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (Where the modified device operates
on the same principles as before, Ratti does not apply.).
Accordingly, we affirm the Examiner's obviousness rejection of
claims 1, 2, 5, 6, 8, 9, 12, 13, 16, and 18 over Malone in view of Haga.
Rejection 2: Obviousness based on Malone, Haga, and Chen
Appellant traverses this rejection on the basis at least on the
arguments made against Rejection 1 (Appeal Br. 10). In addition, Appellant
contends that Chen does not cure the deficiencies of the combination of
Malone and Haga because Chen is directed to features of dependent claims
(id.). As indicated above, we are not persuaded of any deficiency in the
combination of Malone and Haga requiring curing by Chen. Accordingly,
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Application 13/722,408
we likewise affirm the Examiner's obviousness rejection of claims 3, 4, 7,
10, 11, 14, 17, and 19 over Malone in view of Haga and Chen.
Rejection 3: Obviousness based on Malone, Haga, and Noyes
Appellant traverses this rejection on the basis at least on the
arguments made against Rejection 1 (Appeal Br. 10). In addition, Appellant
contends that Noyes does not cure the deficiencies of the combination of
Malone and Haga because Noyes is directed to features of dependent claims
(id.). As indicated above, we are not persuaded of any deficiency in the
combination of Malone and Haga requiring curing by Noyes. Accordingly,
we likewise affirm the Examiner's obviousness rejection of claims 15 and 20
over Malone in view of Haga and Chen.
DECISION
Upon consideration of the record, and for the reasons given above,
and in the Final Office Action and the Examiner's Answer, the decision of
the Examiner rejecting claims 1-20 under 35 U.S.C. § 103(a) 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)(l ).
AFFIRMED
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