Ex Parte 7099981 et al

Patent Trial and Appeal Board

Oct 28, 2013

95001310 (P.T.A.B. Oct. 28, 2013)

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
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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
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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;
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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;
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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).
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“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.”
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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
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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
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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
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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
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“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.
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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
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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.
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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

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PATENT OWNER:

COOLEY LLP
ATTN: PATENT GROUP
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Suite 700
WASHINGTON, DC 20004

THIRD PARTY REQUESTER:

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