Ex Parte Rasmussen et al

Patent Trial and Appeal Board

Jul 31, 2013

11335874 (P.T.A.B. Jul. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NEIL RASMUSSEN, JOHN H. BEAN, GREG R. UHRHAN, and
SCOTT D. BUELL
____________

Appeal 2011-007741
Application 11/335,874
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/335,874

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STATEMENT OF THE CASE
Neil Rasmussen, John H. Bean, Greg R. Uhrhan, and Scott D. Buell
(“Appellants”) appeal under 35 U.S.C. § 134 from the Examiner’s decision
rejecting claims 1-44. We have jurisdiction under 35 U.S.C. § 6(b).
The Claimed Subject Matter
Claims 1, 18, 27, and 41 are independent. Claim 1 is illustrative of
the claimed subject matter and is reproduced below.
1. A system for cooling a data center having a
volume of space designed to house a plurality of electronic
equipment racks, each equipment rack being adapted to support
at least one piece of electronic equipment and including a
housing having a front, a back, two sides, a bottom and a top,
the distance between the two sides of the housing of each
equipment rack defining a width of the housing of the
equipment rack, the housing of each equipment rack having an
industry-standard width, the system comprising:
at least one cooling rack comprising a housing having a
front, a back, two sides, a bottom and a top, the distance
between the two sides of the housing of the cooling rack
defining a width of the housing of the cooling rack, the width of
the housing of the cooling rack being one-half the width of each
of the plurality of equipment racks, the cooling rack being
constructed and arranged to be positioned next to the equipment
rack in such a manner that a side of the cooling rack is adjacent
to a side of the equipment rack; and
cooling system components supported by the housing.
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References
The Examiner relies upon the following prior art references:
Guillemot US 5,158,132 Oct. 27, 1992
Baer US 2001/0042616 A1 Nov. 22, 2001
Chu US 6,819,563 B1 Nov. 16, 2004
Staben US 2005/0237715 A1 Oct. 27, 2005
Nicolai1 WO 2005/081091 A2 Sept. 1, 2005

Rittal Catalogue 31/System Climate Control, Friedhelm LOH Group,
front page and page 672, Rittal (indicating “04/05” on last page) (“Rittal
Catalogue 31”).
Two-page PDF of Rittal “Brochures download” webpage, identifying
a website URL of
http://www.rittal.com/services_support/downloads/brochures.asp (dated
May 20, 2010), Friedhelm LOH Group, © 2010, Rittal (“Rittal Brochure
Download Page”).
Rejections
The Examiner makes the following rejections:2
I. Claims 1-3, 18, 19, 22, 23, 27-31, 41, and 42 are rejected under
35 U.S.C. § 103(a) as unpatentable over Nicolai and Rittal
Catalogue 31 (page 672);

1 The Examiner relies upon U.S. Patent No. 7,319,594 B2 (“Nicolai ’594”)
(issued Jan. 15, 2008), which issued from a national stage application from
WO 2005/081091 A2. See U.S. Patent No. 7,319,594. The Examiner relies
upon Nicolai ’594 for citation purposes. See Ans. 4 (“For figures and line
number of NICOLAI refer to patent 7,319,594.”).
2 The Examiner’s Answer identified these rejections as new grounds of
rejection. Ans. 2-3.
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II. Claims 6-8, 11, 16, 20, 21, 35-37, and 43 are rejected under 35
U.S.C. § 103(a) as unpatentable over Nicolai, Rittal Catalogue
31 (page 672), and Baer;
III. Claims 4, 5, and 32-34 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nicolai, Rittal Catalogue 31 (page 672), and
Staben;
IV. Claims 17 and 40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nicolai, Rittal Catalogue 31 (page 672), and
Chu;
V. Claims 12, 13, and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nicolai and Rittal Catalogue 31 (page 672);
VI. Claims 9, 10, 38, 39, and 44 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nicolai, Rittal Catalogue 31
(page 672), Baer, and Guillemot; and
VII. Claims 14, 15, 25, and 26 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Nicolai, Rittal Catalogue 31 (page 672),
and Baer.
SUMMARY OF DECISION
We REVERSE.
OPINION
The Examiner’s Answer includes seven new grounds of rejection
(Ans. 2-3) in which the Examiner “modified” the rejections as stated in the
Final Office Action, mailed Mar. 10, 2010 (id. at 13). Each new ground of
rejection relies upon page 672 of Rittal Catalogue 31. Ans. 2-13.3 The

3 The Final Office Action relied upon pages 115 and 140 of a different Rittal
catalogue. See Final Office Action (mailed Mar. 10, 2010) at 3-5. Every
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Examiner relies upon three items in the record as supporting the finding that
Rittal Catalogue 31 is a printed publication that was sufficiently publicly
accessible prior to January 19, 2006, the effective date of the application at
issue:
(1) an indication of “04/05” on the last page of Rittal Catalogue 31 as
reflecting a publication date for the catalogue (id. at 13-14);
(2) Rittal Brochure Download Page, accessed on May 20, 2010,
indicating that “Catalogue 31,” in “English,” with a “Date” of “04/2005”
was available for download (id. at 14); and
(3) a summary of an interview with Kristin VanMeter, who is
identified therein as a “marketing specialist,” which states that
Ms. VanMeter confirmed “the date on the Rittal brochures on the last page is
the date the brochure was available to the public” (id.).
Appellants’ sole challenge on appeal is whether Rittal Catalogue 31
was publicly accessible prior to January 19, 2006. Reply Br. 1-3; see also
App. Br. 7-10 (arguing that the Rittal reference upon which the Examiner
based the rejections in the Final Office Action was not publicly accessible).
Appellants assert that the Examiner failed to satisfy the initial burden of
establishing that Rittal Catalogue 31 was publicly accessible as of April
2005. E.g., Reply Br. 2. Appellants contend that the catalogue may have
been an internal document and may have subsequently been edited before
publication. Id. Appellants also assert that the interview summary of
Ms. VanMeter is directed to the prior Rittal reference relied upon by the

reference to page 115 of the Rittal catalogue relied upon in the Final Office
Action was changed (with the exception of one that appears to have been an
oversight by the Examiner (see Ans. 7)) to page 672 of Rittal Catalogue 31.
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Examiner in the final office action, and not Rittal Catalogue 31, which the
Examiner relies on for the new grounds of rejection. Id.
For Rittal Catalogue 31 to “qualify as a printed publication within the
meaning of § 102, [it] ‘must have been sufficiently accessible to the public
interested in the art.’” In re Lister, 582 F.3d 1307, 1311 (Fed. Cir. 2009)
(quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). “Whether a
reference is publicly accessible is determined on a case-by-case basis based
on the ‘facts and circumstances surrounding the reference’s disclosure to
members of the public.’” Id. (quoting In re Klopfenstein, 380 F.3d 1345,
1350 (Fed. Cir. 2004)). A reference is considered publicly accessible if “it
‘has been disseminated or otherwise made available to the extent that
persons interested and ordinarily skilled in the subject matter or art,
exercising reasonable diligence, can locate it.’” Cordis Corp. v. Boston
Scientific Corp., 561 F.3d 1319, 1333 (Fed. Cir. 2009) (quoting In re Wyer,
655 F.2d 221, 226 (CCPA 1981)). The PTO carries the initial burden of
demonstrating public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed.
Cir. 1986) (“The proponent of the publication bar must show that prior to the
critical date the reference was sufficiently accessible . . . .”); In re Lister, 583
F.3d at 1317 (rejecting the position that the burden shifted from the PTO to
the applicant to show inaccessibility where there was a lack of substantial
evidence that the reference was publicly accessible as of the critical date).
The question before us is whether the Examiner has established by a
preponderance of the evidence that Rittal Catalogue 31 was sufficiently
publicly accessible prior to January 19, 2006. The Examiner’s position, as
explained above, is that the indications “04/05” (from the last page of the
catalogue) and “04/2005” (identified as “Date” on the Rittal Brochure
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Download Page) reflect the publication date of Rittal Catalogue 31. The
dates themselves, however, do not explicitly indicate whether they are
publication dates or some other dates, such as dates for internal use. The
interview summary, upon which the Examiner heavily relies, is directed to a
different Rittal document—one which contained 140 pages and which,
according to Ms. VanMeter was publicly available as of August 2005—not
Rittal Catalogue 31, which includes at least 672 pages and is alleged to have
been publicly available in April 2005. See Interview Summary (dated Feb.
25, 2010) at 1 (indicating that the “publication titled ‘The Future of Climate
Control’ and the ‘Rittal liquid cooling package’ found on page 115 was
printed and made available to the public in August of 2005 as shown on
page 140”).4 Thus, the record does not contain any direct evidence
supporting the Examiner’s position that Rittal Catalogue 31 was publicly
accessible as of April 2005. Nor do we find that the indications “04/05” and
“04/2005” on the last page of Rittal Catalogue 31 and the Rittal Brochure
Download Page constitute sufficient evidence that Rittal Catalogue 31 was
actually published and hence publicly accessible as of April 2005.
Additionally, although the Examiner has not contended to the
contrary, we do not find that the interview summary provides sufficient
evidence of a routine business practice to establish that Rittal Catalogue 31
was publicly accessible before January 19, 2006, because the interview
summary speaks to only one specific document and its publication date, and

4 While the Examiner asserted that Ms. VanMeter “confirmed the date on the
Rittal brochures on the last page is the date the brochure was available to the
public,” (Ans. 14) (emphasis added), as noted above, the interview summary
was specific to the Rittal document relied upon in the final office action, and
not Rittal Catalogue 31 upon which the new grounds of rejection are based.
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is thus insufficient to establish or suggest a routine practice. See Constant v.
Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568-69 (Fed. Cir. 1988)
(“Intel presented extensive uncontroverted evidence of business practice that
was sufficient to prove that Exhibit 5 was widely available and accessible to
the interested public before October 14, 1979.”) (emphasis added) (citing In
re Hall, 781 F.2d at 899).
Accordingly, because the Examiner failed to establish by a
preponderance of the evidence that Rittal Catalogue 31 was sufficiently
publicly accessible prior to January 19, 2006, it does not qualify as a printed
publication under 35 U.S.C. § 102(a). Thus, because each rejection is based
upon Rittal Catalogue 31, we do not sustain Rejections I-VII.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1-44.

REVERSED

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