Ex Parte 7099981 et alDownload PDFPatent Trial and Appeal BoardOct 28, 201395001310 (P.T.A.B. Oct. 28, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,310 02/09/2010 7099981 ACQI-010/12US 310578-2058 3473 58249 7590 10/29/2013 COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Avenue, NW Suite 700 Washington, DC 20004 EXAMINER BANANKHAH, MAJID A ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 10/29/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ HEWLETT-PACKARD COMPANY and INTERNATIONAL BUSINESS MACHINES CORP. Requesters v. ACQIS LLC Patent Owner ____________ Appeal 2013-005300 Reexamination Control 95/001,310 Patent 7,099,981 B2 Technology Center 3900 ____________ Before STEPHEN C. SIU, BRUCE R. WINSOR, and STANLEY M. WEINBERG, Administrative Patent Judges. SIU, Administrative Patent Judge DECISION ON APPEAL Appeal 2013-005300 Reexamination Control 95/001,310 Patent 7,099,981 B2 2 Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s decision to reject claims 25, 26, 33-40, 46-55, 61-70, and 76-85. Claims 1- 24, 27-32, 41-45, 56-60, 71-75, and 86-91 were cancelled. We have jurisdiction under 35 U.S.C. §§ 134 and 315. An oral hearing was conducted on June 12, 2013. STATEMENT OF THE CASE This proceeding arose from a request by David L. McCombs on behalf of Hewlett-Packard Company and International Business Machines Corporation for an inter partes reexamination of U.S. Patent 7,099,981 B2, titled “Multiple Module Computer System and Method,” and issued to William W.Y. Chu on August 29, 2006 (the ’981 patent). The ’981 patent describes multi-module computing (col. 3, l. 4). Claim 25 reads as follows: 25. A computer system comprising: a console comprising a first coupling site, a second coupling site, and a serial communication hub controller, each coupling site comprising a connector, the console being an enclosure that is capable of housing each coupling site and said serial communication hub controller; and a plurality of computer modules mated with said console, each coupled to the connector and comprising, a processing unit, a main memory coupled to the processing unit, a hard disk drive coupled to the processing unit, and a serial communication controller coupled to said serial communication hub controller serving as the primary high Appeal 2013-005300 Reexamination Control 95/001,310 Patent 7,099,981 B2 3 speed direct communication with the other computer modules within the console, wherein each of the computer modules is substantially similar in design to each other to provide independent processing of each of the computer modules in the computer system. The Examiner cites the following references: Gallagher US 6,742,068 B2 May 25, 2004 Coulson US 5,862,350 Jan. 19, 1999 Bourgeois US 5,965,957 Oct. 12, 1999 Jlchatcom, Inc., www.jlchatcom.com, 1997 (“Chatcom”). QuantumNet Product Overview, QuantumNet – Next Generation Computing and Networking Concentrators, www.quantumnet.com, 1997 (“QuantumNet”). CAPserver Product Guide, 1995 (“CAPserver”). Eversys Corporation, Products, 1996 (“Eversys”). Robert Grow, XLNT Designs, Inc., Gigabit Media Independent Interface Proposal, Retrieved from IEEE 802 LAN/MAN Standards Committee, 1996 (“Gigabit”). Intel Pentium II Processor at 350 MHz, 400 MHz, and 450 MHz Datasheet, 1998 (“Intel”). Appellant appeals the following rejections: Claims 25, 26, 33-35, 39, 61-63, 65-70, 76, 77, 80-83, and 85 under 35 U.S.C. § 102(b) as anticipated by Gallagher or under 35 U.S.C. § 103(a) as unpatentable over Gallagher; Appeal 2013-005300 Reexamination Control 95/001,310 Patent 7,099,981 B2 4 Claims 46, 48-51, and 53-55 under 35 U.S.C. § 103(a) as unpatentable over Intel and any one of Gallagher, QuantumNet, Chatcom, or Eversys; Claims 36, 37, 64, 79, and 84 under 35 U.S.C. § 103(a) as unpatentable over Gigabit and any one of Gallagher or QuantumNet; Claims 47 and 52 under 35 U.S.C. § 103(a) as unpatentable over Intel, Gigabit, and any one of Gallagher, QuantumNet, or the combination of CAPServer and any one of Eversys or Chatcom; Claims 38 and 40 under 35 U.S.C. § 103(a) as unpatentable over the combination of Bourgeois and any one of Gallagher, Chatcom, or QuantumNet or the combination of Eversys, CAPServer, and Bourgeois; Claims 78 and 83 under 35 U.S.C. § 103(a) as unpatentable over the combination of Coulson and any one of Gallagher or QuantumNet or the combination of Eversys, CAPServer, and Gallagher; Claims 25, 26, 33-35, 39, 61, 62, 65-67, 69, 70, 76, 77, 80-83, and 85 under 35 U.S.C. § 103(a) as unpatentable over QuantumNet; Claims 63 and 68 under 35 U.S.C. § 103(a) as unpatentable over QuantumNet and Gallagher; Claims 25, 26, 33-35, 39, 61-63, 65-68, and 70 under 35 U.S.C. § 103(a) as unpatentable over Chatcom; Claims 36, 37, and 64 under 35 U.S.C. § 103(a) as unpatentable over Chatcom and Gigabit; Claim 69 under 35 U.S.C. § 103(a) as unpatentable over Chatcom and CAPServer; Claims 76-78, 80-83, and 85 under 35 U.S.C. § 103(a) as unpatentable over Chatcom and Gallagher; Appeal 2013-005300 Reexamination Control 95/001,310 Patent 7,099,981 B2 5 Claims 79 and 84 under 35 U.S.C. § 103(a) as unpatentable over Gallagher, Gigabit, and any one of Chatcom or the combination of Eversys and CAPServer; Claims 25, 26, 33-35, 39, 61, 62, 65-67, 69, and 70 under 35 U.S.C. § 103(a) as unpatentable over Eversys and CAPServer; Claims 36 and 37 under 35 U.S.C. § 103(a) as unpatentable over Eversys, CAPServer, and Gigabit; Claims 76, 77, 80-83, and 85 under 35 U.S.C. § 103(a) as unpatentable over Eversys, CAPServer, and Gallagher; ISSUE Did the Examiner err in rejecting claims 25, 26, 33-40, 46-55, 61-70, and 76-85? PRINCIPLES OF LAW In rejecting claims under 35 U.S.C. § 102, “[a] single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, and (3) the level of skill in the art. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). Appeal 2013-005300 Reexamination Control 95/001,310 Patent 7,099,981 B2 6 “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). ANALYSIS Gallagher Gallagher discloses an “Ethernet strip transmission line . . . formed on a backplane and used to interconnect modules plugged into the backplane” (col. 4, ll. 1-4) and a “server interconnect printed board 68 . . . [that] has the pair of the redundant Ethernet XCVRs to provide the means in which the communications Ethernet bus 24 is routed to other server/control stations” (col. 10, l. 5-6, 23-25). The Examiner indicates that Gallagher discloses an “Ethernet strip transmission line . . . formed on a backplane and used to interconnect modules plugged into the backplane” (col. 4, ll. 1-4) (RAN 14-15). Gallagher also discloses a “server interconnect printed board 68 . . . [that] has the pair of the redundant Ethernet XCVRs to provide the means in which the communications Ethernet bus 24 is routed to other server/control stations” (3PR Comments, filed October 1, 2010, pp. 4-5, citing Gallagher, col. 10, l. 5-25). Hence, the Examiner and Requester state that because Gallagher discloses a component (i.e., combination of a server interconnect board and a backplane) that enables communication among control stations via buses, Gallagher discloses the claimed “serial communication hub controller.” Appeal 2013-005300 Reexamination Control 95/001,310 Patent 7,099,981 B2 7 Regarding claims 25, 33, 46, 51, 61, 66, 76, and 81, Patent Owner argues that the server interconnect board and a backplane of Gallagher “is inconsistent with the disclosure of the’981 patent (PO App. Br. 8-9). Specifically, Patent Owner argues that the disclosure describes an embodiment in Fig. 2 in which, according to Patent Owner, “an Ethernet hub controller 233 is a device that is distinct from a bus” and that the “Ethernet controller 219 . . . communicates with the Ethernet hub controller 233 through a point-to-point Ethernet link” (PO App. Br. 9). Patent Owner also argues that the Specification discloses in the embodiment illustrated in Fig. 2 that “the Ethernet controllers 219 of the ACM’s 203 and 205 ‘can be a 10/100 Base, such as Intel’s 82559 or the like’” (PO App. Br. 9). Hence, Patent Owner argues that claims 25, 33, 46, 51, 61, 66, 76, and 81 require a serial communication hub controller that communicates with serial communication controllers via a point-to-point Ethernet link, that the serial communication controllers as recited in claims 25, 33, 46, 51, 61, 66, 76, and 81 are “10/100 Base” and are “Intel’s 82559,” and that Gallagher fails to disclose or suggest these features. We note that claim 25, for example, recites a console comprising a serial communication hub controller and that the serial communication hub controller is coupled to a serial communication controller of a computer module. Claim 25 does not recite that the serial communication controller communicates via a “point-to-point Ethernet link” with Ethernet controllers or that the Ethernet controllers are either “10/100 Base” or “Intel’s 82559.” While claims 25, 33, 46, 51, 61, 66, 76, and 81 do not recite the features disputed by Patent Owner, Patent Owner argues that the disputed Appeal 2013-005300 Reexamination Control 95/001,310 Patent 7,099,981 B2 8 features as illustrated in Fig. 2 of the Specification should be imported into the claims but does not persuasively explain why such features should be imported into the claim. In fact, the Specification discloses that the embodiment illustrated in Fig. 2 “is merely an illustration which should not limit the scope of the claims herein” and that “[o]ne of ordinary skill in the art would recognize many other variations, alternatives, and modifications” (col. 6, ll. 5-8). Because the Specification explicitly discloses that the embodiment illustrated in Fig. 2 does not limit the scope of the claims, we decline to import into the claims specific features of the embodiment illustrated in Fig. 2 that are not recited in the claims. We therefore need not consider whether Gallagher discloses a “point-to-point Ethernet link” or an Ethernet controller that is either “10/100 Base” or “Intel’s 82559.” Patent Owner argues that Gallagher fails to disclose “a star topology” and that claims 25, 33, 46, 51, 61, 66, 76, and 81 require a “star topology.” We note that none of claims 25, 33, 46, 51, 61, 66, 76, and 81 recite “star topology.” Patent Owner argues that the Specification discloses a “Gbit Ethernet 1394 and USB 2.0” both of which, according to Patent Owner, require a “star topology” (PO App. Br. 10, Spec., col. 7, ll. 1-3) and that these limitations should be imported into claims 25, 33, 46, 51, 61, 66, 76, and 81. However, Patent Owner does not persuasively explain why such features that are not recited in the claims should be imported into the claims. The Specification discloses that “[o]ther types of network connection devices can also be used. For example, the invention can use Gbit Ethernet 1394, and USB 2.0” (col. 7, ll. 1-3). In other words, the Specification explicitly discloses that a variety of devices can be used and that Gbit Appeal 2013-005300 Reexamination Control 95/001,310 Patent 7,099,981 B2 9 Ethernet 1394 and USB 2.0 are merely non-limiting examples of devices that may be used. As such, we agree with the Examiner and Requester that importing specific features disclosed as mere examples as a required claimed feature would be improper. Therefore, we need not consider whether or not Gallagher discloses or suggests Gbit Ethernet 1394 and USB 2.0. Patent Owner argues that Gallagher fails to disclose or suggest a serial communication hub controller because, according to Patent Owner, Gallagher fails to disclose or suggest “communication with a hub controller through separate and distinct communication links” (PO App. Br. 10). Claim 25, for example, recites a console that comprise a serial communication hub controller and that the serial communication hub controller is coupled to a serial communication controller of a computer module. Claim 25 does not recite that the serial communication hub controller communicates with a serial communication controller through a separate and distinct communication link. Patent Owner also does not persuasively demonstrate that any of claims 33, 46, 51, 61, 66, 76, and 81 recite this feature. Patent Owner argues that interpreting the combination of a server interconnect board and a backplane of Gallagher as a serial communication hub controller “is inconsistent with the understanding of those skilled in the art” because “Gallagher’s bus or strip transmission line is not a hub” (PO App. Br. 11, citing Declaration of William Henry Mangione-Smith (Mangione-Smith Decl.), ¶ 15). Patent Owner further argues that a “hub” is a “star network” that is a configuration “in which each device (node) is Appeal 2013-005300 Reexamination Control 95/001,310 Patent 7,099,981 B2 10 connected to a central computer in a star-shaped configuration (topology)” (PO App. Br. 11). First, as noted above, Patent Owner does not demonstrate that any of claims 25, 33, 46, 51, 61, 66, 76, and 81 recite a “star network” or a “star- shaped configuration.” In any event, Gallagher discloses “data server 10” (e.g., col. 5, l. 7) containing “slots, or compartments . . . into which a number of processing unit modules 28 . . . can be slidably inserted or removed” (col. 5, ll. 20-23). In other words, each of the processing unit modules is connected to a central unit (i.e., the data server 10) via a separate slot or compartment. Patent Owner does not explain how multiple processing unit modules individually connected to a data server 10 via separate “slots or compartments” differs from a “star network” in which each device (or processing unit module) is connected to a central computer (or data server 10) (according to Patent Owner’s explanation of what constitutes a “star network”). Thus, even assuming that any of claims 25, 33, 46, 51, 61, 66, 76, or 81 requires a “star network” or a “star-shaped configuration,” Patent Owner has not persuasively demonstrated that Gallagher fails to disclose or suggest this feature. While Dr. Mangione-Smith states that Gallagher fails to disclose or suggest that each unit is connected to the central computer via “a separate and distinct communication link” (Mangione-Smith Decl. ¶¶ 11-12), neither Patent Owner nor Dr. Mangione-Smith sufficiently explains how each separate link via one of the separate “slots or compartments” of Gallagher (connecting separate processing unit module with the data server 10) differs from a “separate and distinct communication link.” In both cases, a Appeal 2013-005300 Reexamination Control 95/001,310 Patent 7,099,981 B2 11 “separate and distinct link” is utilized in connecting separate modules with a computer. Regarding claims 36, 37, 47, 52, 64, 79, and 84, Patent Owner cites extrinsic evidence1 and argues that it would not have been obvious to one of ordinary skill in the art to have combined the teachings of Gigabit and Gallagher because, according to Patent Owner, the Gigabit disclosure requires a “star topology”2 which is incompatible with Gallagher. Patent Owner argues that “the purported combination [of Gigabit and Gallagher] would change the principle of operation” of Gallagher (PO app. Br. 16). We disagree with Patent Owner for at least the reasons set forth by the Examiner (RAN 212-213). For example, while Patent Owner contends that Gigabit requires a “star topology” that, according to Patent Owner’s extrinsic evidence is a configuration containing “a connection to each [device],” Patent Owner does not persuasively demonstrate that Gallagher fails to disclose a system containing a connection to each device (i.e., a “star topology”). As described above, Gallagher discloses a server with slots or compartments in which individual modules are connected (see e.g., col. 5, ll. 7, 20-23). In other words, Gallagher discloses a server with individual connections to each module. Patent Owner does not persuasively 1 Goff Hill, “The Cable and Telecommunications Professions’ Reference,” Focal Press, 2007 (“Goff Hill”). 2 Patent Owner argues that Goff Hill demonstrates that the “original Ethernet was implemented [such that] [e]ach device . . . had equal status, with no master device” but that “[a] star topology was later adopted . . . [that is] in a star configuration . . . with a connection to each [device]” and that “Gigabit Ethernet . . . always [uses] a star topology” (PO App. Br. 16, citing Goff Hill pp. 228-229. Appeal 2013-005300 Reexamination Control 95/001,310 Patent 7,099,981 B2 12 demonstrate a difference between a device (i.e., a server) with a connection to each module (or device) and the “star topology” of Goff Hill in which a device contains “a connection to each” device. In any event, as previously discussed, Gallagher discloses a device (i.e., a server) that connects to multiple modules via individual slots or compartments. Even assuming Patent Owner’s contention to be correct that Gigabit requires a “star topology” (defined by Patent Owner’s extrinsic evidence (Goff Hill) as a device “with a connection to each [device]”), Patent Owner does not persuasively demonstrate that combining Gigabit’s purported system with a device with a connection to each device (a “star topology”) would, in fact, “change the principle of operation” of Gallagher because the “principle of operation” of Gallagher is also to provide a system with a device (e.g., a server) with a connection to each device (i.e., multiple slots or compartments for connecting to each individual module). Patent Owner does not provide additional arguments with respect to claims 26, 34, 35, 38-40, 48-50, 53-55, 62, 63, 65, 67-70, 77, 78, 80, 82, 82, or 85 or with respect to Gallagher in combination with any of Intel, Bourgeois, Gigabit, and/or Coulson. For at least the above reasons, we affirm the Examiner’s rejection of claims 25, 26, 33-35, 39, 61-63, 65-70, 76, 77, 80-83, and 85 as either anticipated or unpatentable over Gallagher; claims 46, 48-51, 53-55 as unpatentable over Gallagher and Intel; claims 36, 37, 64, 79, and 84 as unpatentable over Gallagher and Gigabit; claims 47 and 52 as unpatentable over Gallagher, Intel, and Gigabit; claims 38 and 40 as unpatentable over Appeal 2013-005300 Reexamination Control 95/001,310 Patent 7,099,981 B2 13 Gallagher and Bourgeois; and claims 78 and 83 as unpatentable over Gallagher and Coulson. Affirmance of the rejection for the above-referenced claims based on Gallagher renders it unnecessary to reach the propriety of the Examiner’s decision to reject those claims on a different basis. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach the propriety of the rejection of those claims over QuantumNet or Chatcom, alone or in combination with Intel, Bourgeois, Coulson, Gigabit, and/or CapServer or the rejection of those claims over Eversys in combination with any of Intel, CapServer, Gigabit, Coulson, and/or Bourgeois. CONCLUSION The Examiner did not err in rejecting claims 25, 26, 33-40, 46-55, 61- 70, and 76-85. DECISION We affirm the Examiner’s decision to reject claims 25, 26, 33-35, 39, 61-63, 65-70, 76, 77, 80-83, and 85 under 35 U.S.C. § 102 as anticipated by Gallagher; claims 25, 26, 33-35, 39, 61-63, 65-70, 76, 77, 80-83, and 85 under 35 U.S.C. § 103 as unpatentable over Gallagher; claims 46, 48-51, 53- 55 under 35 U.S.C. § 103 as unpatentable over Gallagher and Intel; claims 36, 37, 64, 79, and 84 under 35 U.S.C. § 103 as unpatentable over Gallagher and Gigabit; claims 47 and 52 under 35 U.S.C. § 103 as unpatentable over Gallagher, Intel, and Gigabit; claims 38 and 40 under 35 U.S.C. § 103 as unpatentable over Gallagher and Bourgeois; and claims 78 and 83 under 35 U.S.C. § 103 as unpatentable over Gallagher and Coulson. Appeal 2013-005300 Reexamination Control 95/001,310 Patent 7,099,981 B2 14 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. AFFIRMED Appeal 2013-005300 Reexamination Control 95/001,310 Patent 7,099,981 B2 15 PATENT OWNER: COOLEY LLP ATTN: PATENT GROUP 1299 PENNSYLVANIA AVE, NW Suite 700 WASHINGTON, DC 20004 THIRD PARTY REQUESTER: HAYNES AND BOONE, LLP IP SECTION 2323 VICTORY AVENUE SUIT 700 DALLAS, TX 75219 Copy with citationCopy as parenthetical citation