Ex Parte Kuhlmann et alDownload PDFBoard of Patent Appeals and InterferencesFeb 26, 200910063814 (B.P.A.I. Feb. 26, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte CHARLES EDWARD KUHLMANN, FRANCIS E. NOEL, JR. and NORMAN CLARK STROLE ____________ Appeal 2009-0461 Application 10/063,814 Technology Center 3600 ____________ Decided: 1 February 27, 2009 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING and JOSEPH A. FISCHETTI, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1-9, 12-25 and 27-29. We have jurisdiction under 35 U.S.C. § 6(b). (2002). 1 The two month time period for filing an appeal or commencing a civil action, as recited in 37 CFR § 1.304 (2008), begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or the Notification Date (electronic delivery). Appeal 2009-0461 Application 10/063,014 2 We AFFIRM-IN-PART. THE INVENTION Appellants claim a method of obtaining equipment installed in a custom assembly, tested and ready to operate. (Specification 2:¶[0004]). Claims 1 and 16, reproduced below, are representative of the subject matter on appeal. 1. A method for providing a customer with equipment installed in a rack assembly, the method comprising: providing the rack assembly at a manufacturer location; installing the equipment in the rack assembly to create an assembly, wherein the equipment includes an uninterruptible power supplier, a network management console, a network router, and a network server; testing the assembly; and sending the assembly to the customer. 16. A method for providing a customer with interconnected electronic components installed in a rack assembly, where the electronic components and the rack assembly are according to customer requirements, the method comprising: providing the rack assembly at a manufacturer location; installing the electronic components in the rack assembly, wherein the electronic components include a network router and a network management console; connecting the electronic components one to another according to their function to create an assembly; testing the assembly for fire safety; and sending the assembly to the customer. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Appeal 2009-0461 Application 10/063,014 3 Henson 6,167,383 Dec. 26, 2000 Dell Computer Corporation “Dell.com” Servers & Storage June 8, 2001, http://web.archive.org/web/20010608095925/www.dell.com/us/en/esg/topics/segto pic_server_storage.htm The following rejections are before us for review. The Examiner rejected claims 1, 4, 13, and 14 as unpatentable under 35 U.S.C. § 102(b) as being anticipated by Dell.com. The Examiner rejected claims 2-3, 5-9, 12, 16-25, and 27-28 under 35 U.S.C. § 103(a) as being unpatentable over Dell.com. The Examiner rejected claims 15 and 29 as unpatentable under 35 U.S.C. § 103(a) over Dell.com in view of Henson. ISSUE Have Appellants shown that the Examiner erred in rejecting claims 1, 4, 13, and 14 on appeal as being anticipated under 35 U.S.C. § 102 (b) by Dell.com on the grounds that an assembled rack means that equipment, namely, an uninterruptible power supplier, a network management console, a network router, and a network server are part of the assembled device. Have Appellants shown that the Examiner erred in rejecting claims 2-3, 5-9, 12, 16-25, and 27-28 under 35 U.S.C. § 103(a) as being unpatentable over Dell.com. on the grounds that a person with ordinary skill in the art would know from the Dell.com disclosure of a single assembly process to effect such assembly Appeal 2009-0461 Application 10/063,014 4 at the manufacturer site rather than at the customer site. FINDINGS OF FACT 1. We find the following facts by a preponderance of the evidence: Dell.com discloses Once you're satisfied with your CFI solution design, all manufacturing and custom integration is handled in the same place as part of the same process. This saves an incredible amount of time in the manufacturing cycle. Instead of systems being built twice, boxed twice, and shipped twice, (like with most resellers), everything happens just once…. (Dell.com, p.8) 2. Dell.com discloses Rack Installation includes on-site quality inspection and assembly of the various Dell rack hardware (stabilizer bracing, pre-configured side rails and leveling screws). Also included are the positioning of Power Distribution Units, UPS, switch boxes, monitor, mouse and keyboard into the rack. (Dell.com p. 9) 3. Dell.com discloses rack installation which … provides on-site installation of a Dell PowerEdge Rack by a Dell- certified field engineer, including attachment of leveling screws, stabilizer bracing, side rails and rack mounting kits. Also included are the positioning of Power Distribution Units (PDUs), Uninterruptable Power Supply (UPS), switch boxes, monitor, and keyboard into the rack. Power-on, Appeal 2009-0461 Application 10/063,014 5 integration, and testing of products are not included in the rack installation services, as these activities are part of the installation services for each of these Dell products….(Dell.com, p. 13) Key Service Steps: 1. Unpack systems and components and inspect condition of equipment 2. Locate and follow the Rack Configuration document shipped with the rack. 3. Position rack in accordance with customer instructions. 4. Attach leveling screws and stabilizer bracing. 5. Install and position PDUs (Power Distribution Units). 6. Install UPS (Uninterruptable Power Supply). 7. Attach server side rails to rack. 8. Attach rack-mounting kits to server and storage components (if applicable). 9. Install all applicable Dell products into the rack. (e.g. monitor, keyboard, switch boxes) 10. Connect all units including the UPS to appropriate power connections. 11. Remove all packaging to a customer-designated area within the facility. (Dell.com, p.13) 4. Merriam Webster’s Collegiate Dictionary Tenth Edition defines assembly, inter alia, as: 5 a: the fitting together of manufactured parts into a complete machine, structure or unit of a machine. 5. Dell.com discloses a Appeal 2009-0461 Application 10/063,014 6 Dell Custom Factory Integration service provides a range of custom built, factory installed solutions helping you eliminate installation hassles. After determining your exact needs, Dell performs the custom Configuration during the initial system build. It's a 'one-touch', high quality, custom integration; which means that systems are not twice built and twice shipped via the channel. This ensures your high quality Dell products are Custom configured to your specification and delivered to you from our ISO 9002-certified factory. The CFI Process helps you Lower Your TCO. (Dell.com, p.7) 6. Dell.com discloses that Premier Enterprise Consulting Services, delivered by Dell Technology Consulting, provides robust services to design, test, validate, tune, and deploy IT solutions based on Dell server and storage technologies. Premier Enterprise Deployment Services tailors systems to specific customer requirements through custom factory integration of hardware and software as an integrated part of Dell's manufacturing process. Other deployment services include migration and on-site system installation. (Dell.com. p. 36) 7. The Examiner found that … the origin of the equipment does not affect the outcome of the claimed invention. One of ordinary skill in the art would have known from where to acquire the equipment in order to better meet a customer's needs as well as improving cost efficiency. It would have been obvious that there are customers that require very specific equipment that only other sources specialize in. Appeal 2009-0461 Application 10/063,014 7 As a result, one skilled in the art would have found it obvious to only provide generic to satisfactory equipment since the majority of people cannot afford higher end products. At which point, the manufacturer will then special order the higher end products when the time is necessary. This is especially true in the computer industry where high-end equipment can become obsolete in the span of a few months. (Answer 4) 8. The Examiner found: …it would have also been obvious that some type of fire safety check would be performed in order to prevent the assembly from overheating and resulting in a fire, especially since it is well known in the art to have a server and rack assembly located in a central location that is usually away from normal view. (Answer 7) PRINCIPLES OF LAW “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987). ANALYSIS The rejections are affirmed as to claims 16-25, 27-29 and, and reversed as to claims 1-9, 12-15. The Appellants do not provide a substantive argument as to the separate patentability of claims 17, 19-25, 27-29 that depend from claim 16, which is the sole independent claim among those claims. Therefore, regarding the claims whose rejection is affirmed, we address only claims 16 and 18. We affirm the Appeal 2009-0461 Application 10/063,014 8 rejections of dependent claims 17, 19-25, 27-29 since Appellants have not challenged such with any reasonable specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)). The rejection of claims 1, 4, 13, and 14 as unpatentable under 35 U.S.C. § 102(b) as being anticipated by Dell.com. Appellants argue that “…Dell.com does not teach or suggest a method for providing a customer with equipment installed in a rack assembly in which the method comprises providing the rack assembly at a manufacturer location.” (Appeal Br. 6). The Examiner maintains that because “...Dell also provides installation, the installation including server and rack installation at the customer site, which is a separate step from the manufacturing process carried out at the manufacturer location (see at least Dell Page 13)” (Answer 9-10), the rack should be understood as having been assembled at the manufacturer as required by the claims. However, the claims require that the rack assembly as shipped include equipment enumerated as the uninterruptible power supplier, a network management console, a network router, and a network server. The Dell.com publication does not disclose an assembly with these components installed in the rack assembly before sending the assembly to a customer because Dell.com discloses on-site installation of at least the UPS (Uninterruptable Power Supply), the network management console, e.g. monitor, keyboard, and switch boxes (FF 2, 3). Appeal 2009-0461 Application 10/063,014 9 We thus agree with Appellants that Dell.com fails to disclose the step of installing within a rack assembly the specific equipment enumerated in the claims. Since claims 4, 13 and 14 depend from claim 1, and since we cannot sustain the rejection of claim 1, the rejection of claims 4, 13 and 14 likewise cannot be sustained. For the above reasons we will not sustain the rejection of claim 1. As the rejection of claims 2-3 5-9, 12 and 15 fails to cure the deficiency of the rejection of claim 1, we will also not sustain the rejection of these claims. The rejection of claims 2-3, 5-9, 12, 16-25, and 27-28 under 35 U.S.C. § 103(a) a being unpatentable over Dell.com. Appellants repeat their arguments against Dell.com in addressing the 35 U.S.C. § 103(a) rejection asserting that …in Dell.com the rack assembly is at the manufacturer location and, thus, Dell.com does not teach or suggest a method for providing a customer with equipment installed in a rack assembly in which the method comprises providing the rack assembly at a manufacturer location. In addition, Dell.com does not disclose testing the assembly or fire testing. (Appeal Br. 7) Regarding independent claim 16, while we agree that Dell.com fails to disclose installing the enumerated equipment at the manufacturing location, this argument controls an anticipation rejection, but does not control to the same degree an obviousness rejection. Thus, from a standpoint of obviousness, it is not apparent, and Appellants have not cogently explained, why a person with ordinary skill in the art would not simply ship proven rack compatible equipment to a Appeal 2009-0461 Application 10/063,014 10 customer site and assemble the equipment into the rack once on site as taught by Dell.com given that Dell.com discloses that its manufacturing cycle, instead of systems being built twice, boxed twice, and shipped twice, (like with most resellers), builds only once (FF 1, 5). The Examiner further found that “…it would have also been obvious that some type of fire safety check would be performed in order to prevent the assembly from overheating and resulting in a fire, especially since it is well known in the art to have a server and rack assembly located in a central location that is usually away from normal view.” (FF 8) We agree with the Examiner that fire in electrical components is a problem known in the field, and the practice of testing same against fire would have been addressed by a person with ordinary skill in the art. “Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR at 1742, 82 USPQ2d at 1397. Accordingly, Appellants have failed to show error in the Examiner’s prima facie case of obviousness under 35 U.S.C. § 103(a) with respect to claim 16. Claim 18 Appellants argue that …Dell.com is directed towards selling Dell.com® equipment, and is silent with respect to receiving input from a customer as to what supplier of a rack assembly to use and installing electronic components in the rack assembly. Thus, the Office has failed to meet its burden of establishing a prima facie case of obviousness…. Appeal 2009-0461 Application 10/063,014 11 (Appeal Br. 8) The Examiner found however that … the origin of the equipment does not affect the outcome of the claimed invention. One of ordinary skill in the art would have known from where to acquire the equipment in order to better meet a customer's needs as well as improving cost efficiency. It would have been obvious that there are customers that require very specific equipment that only other sources specialize in. As a result, one skilled in the art would have found it obvious to only provide generic to satisfactory equipment since the majority of people cannot afford higher end products. At which point, the manufacturer will then special order the higher end products when the time is necessary. This is especially true in the computer industry where high-end equipment can become obsolete in the span of a few months. (FF 7) We agree with the Examiner that a person with ordinary skill in the art would know where to acquire equipment, including going to the refurbished parts market, in order to better meet a customer's needs as well as improving cost efficiency as a matter of system design. Therefore, the selection of suitable equipment suppliers is no more than a matter of obvious design choice for a person with ordinary skill in the art. See, In re Hopkins, 342 F2d 1010, 1015 (CCPA 1965). CONCLUSIONS OF LAW We conclude the Appellants have shown that the Examiner erred in rejecting claims 1, 4, 13 and 14 under 35 U.S.C. § 102(b) as anticipated by Dell.com, and Appeal 2009-0461 Application 10/063,014 12 claims 2-3, 5-9, 12 and 15 under 35 U.S.C. § 103(a) as unpatentable over Dell.com. We conclude the Appellants have not shown that the Examiner erred in rejecting claims 16-25, 27-29 under 35 U.S.C. § 103(a) as unpatentable over Dell.com, or Dell.com. in view of Hensen. DECISION The decision of the Examiner to reject claims 1-9, 12-15 is REVERSED. The decision of the Examiner to reject claims 16-25, 27-29 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. § 1.136(a)(1)(iv) (2006). AFFIRMED-IN-PART JRG Driggs, Hogg, Daugherty & Del Zoppo Co., L.P.A. 38500 CHARDON ROAD DEPT. IRA WILLOUGBY HILLS, OH 44094 Copy with citationCopy as parenthetical citation