Ex Parte Merrow et al

Patent Trial and Appeal Board

Nov 16, 2016

12815085 (P.T.A.B. Nov. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/815,085 06/14/2010
139353 7590 11/18/2016
CHOATE I TERADYNE
TWO INTERN A TI ON AL PLACE
BOSTON, MA 02110
FIRST NAMED INVENTOR
Brian S. Merrow
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.
18523-0116001 I
2226-US/H
CONFIRMATION NO.
1638
EXAMINER
POLO,GUSTAVOD
ART UNIT PAPER NUMBER
2695
NOTIFICATION DATE DELIVERY MODE
11/18/2016 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):
patentdocket@choate.com
jnease@choate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN S. MERROW,
PETER MIGUEL MARTINO, and RHONDA LYNN ALLAIN
Appeal2015-001085
Application 12/815,085
Technology Center 2600
Before JASON V. MORGAN, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the non-final
rejection of claims 1, 4--9, 12-15, and 17-19. We have jurisdiction under
35 U.S.C. § 6(b). Claims 2, 3, and 10 are cancelled. App. Br. 13, 14.
Claims 11, 16, and 20-22 are withdrawn from consideration. Non-Final
Act. 1.
We reverse and institute a new ground of rejection under the
provisions of 37 C.F.R. § 41.50(b) (2013).
1 The real party in interest identified by Appellants is Teradyne, Inc. App.
Br. 1.
Appeal2015-001085
Application 12/815,085
STATEMENT OF THE CASE
Appellants' disclosed invention "relates to management of air-borne
vibrations, and particularly, to the management of air-borne vibrations in
storage device testing systems." Spec. 1 :3--4. Claims 1 and 12, which are
illustrative, read as follows:
1. A storage device testing system comprising:
a rack comprising at least one test slot comprising a test
slot housing, the test slot housing configured to receive a
storage device for testing, wherein the test slot housing is
substantially exposed to air on at least one side; and
a vibration management material applied, at least
indirectly, to the surface of a structural component of the
system having a composition to absorb and/or diffuse air-borne
vibration, wherein the vibration management material is
disposed so as to attenuate air-borne vibration before the air-
borne vibration is coupled to the test slot.
12. A storage device testing system comprising:
a rack comprising a test slot configured to receive a
storage device for testing, wherein the test slot is substantially
exposed to air on at least one side;
a source of a flow of air; and
a vibration management material disposed within the
flow of air without completely blocking the flow, wherein the
vibration management material has a composition to absorb
and/or diffuse air-borne vibration before the air-borne vibration
is coupled to the test slot.
2
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Application 12/815,085
Claims 1and4--7 stand rejected under 35 U.S.C. §§ 102(a) and 102(e)
as being anticipated by Merrow et al. (US 2009/0153994 Al; published June
18, 2009) (herein, Merrow '9942). 3 See Non-Final Act. 3.
Claims 1, 8, 9, 12-15, and 17-19 stand rejected under 35 U.S.C.
§§ 102(a) and 102(e) as being anticipated by Merrow (US 2009/0262455
Al; published Oct. 22, 2009) (herein, Merrow '4554). See Non-Final Act.
4--6.
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed Apr. 30, 2014; "Reply Br." filed Oct. 16, 2014) and the
Specification ("Spec." filed June 14, 2010) for the positions of Appellants
and the Non-Final Office Action ("Non-Final Act." mailed Nov. 29, 2013)
and Answer ("Ans." mailed Aug. 27, 2014) for the reasoning, findings, and
conclusions of the Examiner.
ISSUES
The dispositive issues presented by Appellants' arguments are as
follows: 5
Whether the Examiner errs in finding the spring clamp dampeners
disclosed by Morrow '994 comprise "a vibration management material ...
2 Merrow '994 is also referred to as the "'994 publication" in the record.
See, e.g., Non-Final Act. 3.
3 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the America Invents Act of 2011. Non-Final Act. 2.
4 Merrow '455 is also referred to as the "' 455 publication" in the record.
See, e.g., Non-Final Act. 4.
5 Appellants' arguments present additional issues. Because the identified
issues are dispositive of the appeal, we do not reach the additional issues.
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Application 12/815,085
disposed so as to attenuate air-borne vibration before the air-borne vibration
is coupled to the test slot," as recited in claim 1.
Whether the Examiner errs in finding the blower vibration mounts
disclosed by Morrow '455 comprise "a vibration management material ...
disposed so as to attenuate air-borne vibration before the air-borne vibration
is coupled to the test slot," as recited in claim 1.
Whether the Examiner errs in finding the blower vibration mounts
disclosed by Morrow '455 comprise "a vibration management material
disposed within the flow of air ... ha[ ving] a composition to absorb and/or
diffuse air-borne vibration before the air-borne vibration is coupled to the
test slot," as recited in claim 12.
ANALYSIS
Claim Construction
Claim construction is an issue of law that we review de nova. Cordis
Corp. v. Boston Scientific Corp., 561F.3d1319, 1331 (Fed. Cir. 2009).
During prosecution we give claims their broadest reasonable interpretation
in light of the Specification, In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997), without importing limitations from the Specification into the claims,
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Appellants'
Specification distinguishes between mechanically transmitted vibrations and
vibrations transmitted through the air. See Spec. 1 :21-23. The ordinary
meaning of "air-borne vibrations" encompasses vibrations carried through
the air, which, according to Appellants' Specification, "may be acoustic or
fluid in nature," Spec. 1 :24. Appellants' Specification also discloses that
vibrations transmitted through the air maybe transmitted to a component
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being tested through intermediate mechanical connections. Spec. 1 :23-25.
We conclude the broadest reasonable interpretation of air-borne vibrations is
the ordinary meaning, i.e., vibrations carried through the air, but does not
encompass vibrations transmitted mechanically.
Anticipation of Claim 1 by Merrow '994
The Examiner maps "a vibration management material ... disposed
so as to attenuate air-borne vibration before the air-borne vibration is
coupled to the test slot," as recited in claim 1, to the engagement member
472 having a dampener 474 disclosed by Merrow '994. Non-Final Act. 3
(citing Merrow '994 i-f 117, Fig. lOA). Examiner explains "[t]he dampener
of Merrow '994 dampens the test slot itself thereby attenuating a vibration
before or after coupling." Ans. 2.
Appellants contend the engagement member 4 72 and the dampener
474 are
contained within spring clamps .... However, the spring clamps
described are positioned within a disk drive transporter, which
itself is placed within a test slot. And therefore, the dampers are
not "disposed so as to attenuate air-borne vibration before the air-
borne vibration is coupled to the test slot."
App. Br. 6; see Merrow '994 i-fi-1126-27, Figs. 17B, 19A.
We agree with Appellants. Because the dampeners 4 7 4 disclosed by
Merrow '994 are located within the test slot, any dampening of the effects of
air-borne vibration coupled to the test slot will occur after the vibrations are
coupled to the test slot, not before. We also note, for emphasis, that while
the dampeners 474 disclosed by Merrow '994 may dampen the mechanical
effects caused by air-borne vibrations coupled to the test slot, they are not of
a composition or disposed to absorb, diffuse, or attenuate the air-borne
vibration itself, as recited in the claim.
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Application 12/815,085
Regarding claim 1, the Examiner has not demonstrated that "each and
every element as set forth in the claim is found [in Merrow '994], either
expressly or inherently described," Verdegaal Bros., Inc. v. Union Oil Co. of
Cal., 814 F.2d 628, 631 (Fed. Cir. 1987), "in as complete detail as is
contained in the ... claim," Richardson v. Suzuki Motor Co., 868 F.2d 1226,
1236 (Fed. Cir. 1989), "arranged as in the claim," In re Bond, 910 F.2d 831,
832 (Fed. Cir. 1990). Accordingly, we do not sustain the rejection for
anticipation by Merrow '994 of claim 1 or claims 4--7, which depend,
directly or indirectly, from claim 1.
Anticipation of Claim 1 by Merrow '455
The Examiner maps "a vibration management material ... disposed
so as to attenuate air-borne vibration before the air-borne vibration is
coupled to the test slot," as recited in claim 1, to the vibration mounts 37 that
the blower 816 is mounted upon, as disclosed by Merrow '455. Non-Final
Act. 4 (citing Merrow '455 i-f 187, Fig. 1 lB). The Examiner explains that
the blower 816 is a major source of air-borne vibrations and that the
vibration "mounts [37] attenuate vibrations from the blower." Ans. 3.
Appellants contend as follows:
While the vibrational mounts "isolate vibrations
originating at the blower" there is nothing to suggest that they
attenuate these (or any air-borne) vibrations. For example, the
vibration mounts could be springs which allow for the movement
of the blower but inhibit the transfer of vibrations from the
blower to the test rack. Such a mount would not attenuate the
airborne vibration, but instead may enable the air-borne vibration
to be larger than it would have been had the blower been directly
mounted to the rack. In so far as air-borne-vibrations are caused
by the mechanical vibrations, air-borne vibrations occur when
the mechanical vibration of the blower disturbs the surrounding
air. In so far as the air-borne vibrations are caused by the
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Appeal2015-001085
Application 12/815,085
blowing air, there is nothing to suggest that the vibration mounts
would attenuate the air-borne vibrations.
App. Br. 10 (referring to Merrow '455 i-f 187, Fig. 1 lB).
We agree with Appellants for the reasons stated by Appellants. We
agree with the Examiner that one of ordinary skill in the art would
understand the blower to be a major source of air-borne vibrations. See Ans.
3; see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) (In establishing
anticipation under 35 U.S.C. § 102(b), "it is proper to take into account not
only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.").
Further, the vibration mounts 37 disclosed by Merrow '455 "isolate
vibrations originating at the blower 816 from the test rack 100, and ... from
disk drives being tested in the test rack 100." Merrow '455 i-f 187.
However, one of ordinary skill in the art would understand the vibrations so
isolated are mechanical vibrations created by the blower and not air-borne
vibrations in the air flow 815 created by blower 815, or any other air-borne
vibrations. See Merrow '455 Fig. 1 lB; see also Preda, 401 F.2d at 826.
Regarding claim 1, the Examiner has not demonstrated that "each and
every element as set forth in the claim is found [in Merrow '994], either
expressly or inherently described," Verdegaal, 814 F .2d at 631, "in as
complete detail as is contained in the ... claim," Richardson, 868 F.2d at
1236, "arranged as in the claim," Bond, 910 F.2d at 832. Accordingly, we
do not sustain the rejection for anticipation by Merrow '994 of claim 1 or
claims 8 and 9, which depend, directly or indirectly, from claim 1.
Anticipation of Claim 12 by Merrow '455
Similar to the mapping for claim 1, the Examiner maps "a vibration
management material disposed within the flow of air . . . ha[ ving] a
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Appeal2015-001085
Application 12/815,085
composition to absorb and/or diffuse air-borne vibration before the air-borne
vibration is coupled to the test slot," as recited in claim 12, to the vibration
mounts 3 7 that the blower 816 is mounted upon, as disclosed by Merrow
'455. Non-Final Act. 5 (citing Merrow '455 i-f 187, Fig. 1 lB).
For the same reasons as for the rejection of claim 1 as anticipated by
Merrow '455, we do not sustain the rejection as anticipated by Merrow '455
ofclaim 12 or claims 13-15and17-19, which depend, directly or indirectly,
from claim 12.
NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claims 1 and 12 are rejected on a new ground of rejection under
35 U.S.C. § 102(a) as anticipated by Merrow '455.
Claim 1
We adopt as our own the Examiner's following findings:
As per claim 1, . . . [Merrow '455] discloses a rack (Fig.
llB, 700) comprising at least one test slot (500) comprising a
test slot housing, the test slot housing configured to receive a
storage device for testing, wherein the test slot housing is
substantially exposed to air on at least one side (protruding
portion).
Non-Final Act. 4 (emphasis omitted).
Merrow '455 further discloses:
a vibration management material applied, at least
indirectly, to the surface of a structural component of the
system having a composition to absorb and/or diffuse air-borne
vibration, wherein the vibration management material is
disposed so as to attenuate air-borne vibration before the air-
borne vibration is coupled to the test slot,
as recited in claim 1. In particular Merrow '455 discloses a filter 46 (i-fi-f 109,
188, Fig. 1 lB) applied to the inlet face 817 of the heat exchanger 810.
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Appeal2015-001085
Application 12/815,085
If the prior art reference does not expressly set forth a particular
element of the claim, that reference still may anticipate if that
element is "inherent" in its disclosure .... "Inherency, however,
may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of
circumstances is not sufficient."
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).
Inherency requires that "the allegedly inherent characteristic necessarily
flows from the teachings of the applied prior art." Ex parte Levy, 17
USPQ2d 1461, 1464 (BP AI 1990). Although Merrow '455 discloses that
the purpose of the filter 46 is to reduce dust within the racks 100 (i-f 188),
one of ordinary skill in the art would recognize that the filter 46 will
inherently, i.e., necessarily, absorb, diffuse, and attenuate air-borne vibration
created by blower 816 in air flow 815. See also Preda, 401 F. 2d at 826.
The action of the filter 46 in this regard is similar to the action of
Appellants' diffuser 1020. See Spec. 11:30-12:1, Fig. 9. Furthermore, the
attenuation of air-borne vibration in the air flow 815 occurs before it exits
the rack 100 and, therefore, before it reaches the side of the test slot 500 that
is exposed to the air, i.e., before it is coupled to the test slot 500 (Fig. 1 lB).
Claim 12
We adopt as our own the Examiner's following findings:
As per claim 12, ... [Merrow '455] discloses a rack
comprising a test slot configured to receive a storage device for
testing (Fig. 1 lB, 700), wherein the test slot is substantially
exposed to air on at least one side (exposed side); [and] a source
of a flow of air (i-f 187, II. 5-8 where blower [816] is the source).
Non-Final Act. 5 (emphasis omitted).
Merrow '455 further discloses "a vibration management material
disposed within the flow of air without completely blocking the flow,
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Application 12/815,085
wherein the vibration management material has a composition to absorb and/
or diffuse air-borne vibration before the air-borne vibration is coupled to the
test slot," as recited in claim 12. In particular Merrow '455 discloses a filter
46(i-fi-f109, 188, Fig. llB) disposed within the flowofair415 from the
blower 816. One of skill in the art would understand that the filter 46 allows
the air flow 415 to pass through it and, therefore, does not completely block
the flow of air. Although Merrow '455 discloses that the purpose of the
filter 46 is to reduce dust within the racks 100 (i-f 188), one of ordinary skill
in the art would recognize that the filter 46 will inherently, i.e., necessarily,
absorb, diffuse, and attenuate air-borne vibration created by the blower 816
in air flow 815. See Robertson, 169 F.3d at 745; Levy, 17 USPQ2d at 1464;
Preda, 401 F.2d at 826. The action of the filter 46 in this regard is similar to
the action of Appellants' diffuser 1020. See Spec. 11:30-12:1, Fig. 9.
Furthermore, the attenuation of air-borne vibration in the air flow 815 occurs
before it exits the rack 100 and, therefore, before it reaches the side of the
test slot 500 that is exposed to the air, i.e., before it is coupled to the test slot
500 (Fig. 1 lB).
Dependent Claims
We have entered new grounds of rejection for independent claims 1
and 12. We leave to the Examiner to consider the patentability of dependent
claims 4--9, 13-15, and 17-19 in light of our findings and conclusions supra,
regarding the independent claims. The fact that we did not enter new
grounds of rejection for the dependent claims should not be construed to
mean that we consider the dependent claims to be directed to patentable
subject matter or to be patentable over the prior art of record.
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Application 12/815,085
DECISION
The decision of the Examiner to reject claims 1, 4--9, 12-15, and 17-
19 is reversed.
We enter a new ground of rejection for claims 1 and 12 under
35 U.S.C. § 102(b).
This Decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that "[a] new ground of rejection ...
shall not be considered final for judicial review."
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record.
37 C.F.R. § 41.50(b).
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
REVERSED
37 C.F.R. § 41.50(b)
11