Ex Parte Feldman et al

Patent Trial and Appeal Board

Dec 29, 2015

12011646 (P.T.A.B. Dec. 29, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/011,646 01129/2008
7590
FELDMAN MICHAEL
148 CARL TENNEN ST.
THORNHILL, ON L4J7Bl
CANADA
12/29/2015
FIRST NAMED INVENTOR
Michael Feldman
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.
6795
EXAMINER
CHEN, XIAOLIANG
ART UNIT PAPER NUMBER
2847
MAILDATE DELIVERY MODE
12/29/2015 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
Ex parte MICHAEL FELDMAN, ALEXANDER FELDMAN, and
BORIS FELDMAN
Appeal2013-010864
Application 12/011,646
Technology Center 2800
Before JEFFREYS. SMITH, DANIEL N. FISHMAN, and
ADAM J. PYONIN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2013-010864
Application 12/011,646
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1--4, 7, 10, and 11, which are all the claims remaining in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Illustrative Claim
Claim 1. A motherboard expansion device for use in non-portable
computer, wherein said computer comprises a computer housing, a
motherboard, a power source, and at least one bay that is built-in inside said
computer housing, is its mechanical (structural) part of said computer
housing and includes a group of wall guides for receiving said device;
said motherboard expansion device comprising:
- one or more printed circuit boards (PCBs) connected together and
placed inside said computer into one of said bays,
- a data processing unit placed on said PCBs,
- a high speed interface connector group mounted on said PCBs,
connecting said data processing unit and a corresponding socket placed on
said motherboard via cable directly or through one or more adapters,
- a connector block, including one or more communication connectors
that are connected to said data processing unit, and said connectors are
intended for connection to external devices via one or more external cables;
- said communication connectors are intended to provide connection
to external devices via at least one non-simple analog Audio, non-Video,
non-USB and non- IEEE 1394 communication interface;
said high speed interface can be chosen from the group comprising at
least following interfaces: PCI-express, Rapid I/O, SATA family, PCI, PCI-
X·
'
said external communication interfaces of one or more types are
chosen from a group including at least following telecommunication
interfaces: DS-M interfaces, E-M interfaces, JI interface, STS-M
interfaces, STM-M interfaces, OC-M interfaces, xDSL interface family,
ISDN interface, POTS (plain old telephone service) includes FXO (foreign
exchange station) and FXO (foreign exchange office) interfaces, RS-M
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Appeal2013-010864
Application 12/011,646
interfaces excluding RS-232 interface, 56K modem interface, HSSI
interface, where M is an integer;
said motherboard expansion device comprising further: only non-
mechanical non-rotating memory components.
Longerbeam
Sa
Karstens
Prior Art
US 2002/0161929 Al
US 6,717,802 B2
US 2008/0291624 Al
Examiner's Rejections
Oct. 31, 2002
Apr. 6, 2004
Nov. 27, 2008
Claims 1--4, 7, 10, and 11 stand rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
The Examiner also objects to the Specification under 35 U.S.C. § 132(a) for
introducing new matter into the disclosure. 1
Claims 1--4, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sa and Longerbeam.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Sa, Longerbeam, and Karstens.
ANALYSIS
We adopt the Examiner's findings of fact made in the Final Rejection
and Examiner's Answer as our own. We concur with the conclusions
1 Because the Examiner deems the amendment to the Specification to affect
the scope of the claims, and the objection is accompanied by a rejection of
the claims under 35 U.S.C. § 112, first paragraph, the objection under 35
U.S.C. § 132(a) is appealable subject matter. See MPEP § 2163.06, Heading
II.
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Appeal2013-010864
Application 12/011,646
reached by the Examiner for the reasons given in the Examiner's Answer.
We highlight the following for emphasis.
Section 112, first paragraph rejection of claims 1--4, 7, 10, and 11 and
new matter issue
Appellants2 have not provided arguments to rebut the rejection of
claims 1--4, 7, 10, and 11under35 U.S.C. § 112, first paragraph or the
objection under 35 U.S.C. § 132(a). We summarily affirm the rejection of
claims 1--4, 7, 10, and 11 under 35 U.S.C. § 112, first paragraph and the 35
U.S.C. § 132(a) objection.
Section 103 rejection of claims 1--4, 10, and 11
Appellants contend the combination of Sa and Longerbeam does not
teach a high-speed connection to support a bandwidth of 5 to 128 Gbit/sec.
Br. 11. However, claim 1 recites a "high speed interface connector group,"
and a "high speed interface." The high speed bandwidth of 5 to 128 Gbit/sec
is not recited in claim 1. The term "high speed" by itself is a relative term,
which changes over time, thus, encompassing speeds that are now
considered slow, such as the speeds of the connectors taught by Sa and
Longerbeam. Appellants' Specification provides no limiting definition of
"high-speed," and Appellants have not provided persuasive evidence or
argument to show the speeds of the connectors taught by Sa and
2 Appellants appear to be independent inventors. In the event of further
prosecution, Appellants may wish to consider resources for inventors and
entrepreneurs found here: http://www.uspto.gov/leaming-and-
resources/ inventors-entrepreneurs-resources.
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Appeal2013-010864
Application 12/011,646
Longerbeam were, at the time of Appellants' invention, not "high speed" to
a person of ordinary skill in this field.
Appellants contend Sa does not teach a data processing unit, and the
bridge of Longerbeam cannot do data processing operations or unload a
computer processor. Br. 11. However, claim 1 does not recite "unload a
computer processor." Also, the term "data processing unit" recited in claim
1 is broad enough to encompass any device that performs any processing to
any type of data, such as the computer, communication devices, port
devices, and peripheral devices taught by Sa, and the data routing devices,
interface chip, and computer devices taught by Longerbeam.
Appellants contend the combination of Sa and Longerbeam does not
teach a package that includes one or more printed circuit boards and a front
panel fastened together. Br. 12. The scope of the claim term "one or more
printed circuit boards" is broad enough to include the prior art references Sa
and Longerbeam that teach one printed circuit board. Also, the front panel is
not recited in claim 1.
Appellants contend the combination of Sa and Longerbeam does not
teach positioning the motherboard expansion device partially outside the
computer housing for cooling. Br. 12. However, this limitation is not
recited in claim 1.
Appellants contend the combination of Sa and Longerbeam does not
teach an additional connector group that allows connecting an additional
motherboard expansion device using only one high speed connection to the
computer motherboard. Br. 12-13. However, this limitation is not recited in
claim 1.
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Appeal2013-010864
Application 12/011,646
We sustain the rejection of claim 1 under 35 U.S.C. § 103. Appellants
do not present arguments for separate patentability of claims 2--4, 10, and
11, which fall with claim 1.
Section 103 rejection of claim 7
Appellants contend Sa and Longerbeam disclose a single circuit
board, not one or more PCBs. Br. 12. However, the term "one or more
PCBs" includes disclosures that teach a single circuit board.
Appellants contend the combination of Sa, Longerbeam, and Karstens
does not teach a package that includes one or more PCBs and a front panel
fastened together. Br. 12. However, neither dependent claim 7 nor the
corresponding independent claim 1 recite a package that includes one or
more PCBs and a front panel fastened together. In particular, "said front
panel and said package," recited in claim 7 lack antecedent basis in claim 1.
The scope of the claimed "package" is broad enough to include any physical
thing attached to a panel, such as the touch screen display attached to the
mounting panel of Karstens.
Appellants contend the electronic components of Karstens that need
cooling are located inside the computer. Br. 14. However, Karstens shows
an electronic component extended 10 cm away from the computer housing.
See Fig. IA. The function of extending a motherboard away from the
housing to allow cooling the motherboard is not recited in claim 7.
We sustain the rejection of claim 7 under 35 U.S.C. § 103.
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Appeal2013-010864
Application 12/011,646
DECISION
The rejection of claims 1--4, 7, 10, and 11under35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement and
the objection to the Specification under 35 U.S.C. § 132(a) are affirmed.
The rejection of claims 1--4, 10, and 11 under 35 U.S.C. § 103(a) as
unpatentable over Sa and Longerbeam is affirmed.
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over Sa, Longerbeam, and Karstens 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). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
kis
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