Ex Parte BURANT

Patent Trials and Appeals Board

Mar 19, 2019

14247335 - (D) (P.T.A.B. Mar. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/247,335 04/08/2014
7590 03/19/2019
B URANT, Richard J
N56W30676 County Road K
Hartland, WI 53029
FIRST NAMED INVENTOR
RICHARD BURANT JR.
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.
SKJRD26032014 4242
EXAMINER
CHOWDHURY, ROCKSHANA D
ART UNIT PAPER NUMBER
2835
MAIL DATE DELIVERY MODE
03/19/2019 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 RICHARD BURANT JR.
Appeal2018-001329
Application 14/247,335
Technology Center 2800
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY,
and MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the non-final rejection
of claims 1-12. We have jurisdiction under 35 U.S.C. § 6.
We affirm.
Appeal2018-001329
Application 14/247,335
The invention is directed to an enclosure for electronic devices and
batteries where the enclosure is capable of supporting simultaneous dual
voltage requirements of multiple electronic hardware platforms and having
means to stack the enclosures. Spec. ,r 28. Claim 1 illustrates the invention
( formatting added):
1. A modular enclosure for housing electronic devices
and power banks at a telecommunications site, said enclosure
comprising a plurality of stackable cabinet modules (000)
characterized in having integrated means for allowing:
a. stacking to provide increasingly large storage capacity
within a diminutive footprint;
b. provision of user-selectable backup power output
among +24V and/or--48V in single voltage, simultaneous dual
voltage and single voltage per shelf configurations;
c. ambient air-assisted active management of
temperatures within said modular enclosure;
d. ambient air-assisted passive management of emissions
resultant from said modular enclosure; and
e. detection and generation of alarm upon fault in either
among the electrical I/0 of the modular enclosure, the means
for managing the temperatures and emissions of the modular
enclosure and furthermore in event of intrusion into said
modular enclosure for housing electronic devices and power
banks at a telecommunications site.
2
Appeal2018-001329
Application 14/247,335
Appellant1 (see generally App. Br.)2 requests review of the following
rejections3 from the Examiner's Final Office Action dated November 22,
2016:
I. Claims 1-12 rejected under 35 U.S.C. 112(b) as indefinite for
failing to particularly point out and distinctly claim the subject matter which
the inventor or a joint inventor regards as the invention.
II. Claims 1-12 rejected under 35 U.S.C. 112(a) as failing to
comply with the written description requirement.
III. Claims 1-5, 9, and 10 rejected under 35 U.S.C. § 103 as
unpatentable over Rowan (US 5,806,948, issued September 15, 1998) and
Miller (US 5,140,744, issued August 25, 1992).
IV. Claims 6, 7, 11, and 12 rejected under 35 U.S.C. § 103 as
unpatentable over Rowan, Miller, and Scheucher (US 7,948,207 B2, issued
May 24, 2011).
V. Claim 8 rejected under 35 U.S.C. § 103 as unpatentable over
Rowan, Miller, and Wright (US 2010/0290605 Al, published Nov. 18,
2010).
1 The Real Party in Interest is the pro se Applicant/ Appellant, Richard
Burant Jr. App. Br. 1.
2 The pages of the Appeal and Reply Briefs are not paginated. However, all
paragraphs in these documents are enumerated and, for ease of reference, we
refer to the respective paragraphs when citing to these documents.
3 We cite to the AIA versions of the applicable sections of 35 U.S.C. because
the effective filing date for the application from which this appeal is taken is
after the effective date of the AIA legislation of March 16, 2013.
3
Appeal2018-001329
Application 14/247,335
OPINION
REJECTION UNDER§ l l 2(b) - Indefiniteness
The text of 35 U.S.C. § 112(b) requires "[t]he specification shall
conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the inventor or a joint inventor regards as
the invention." "As the statutory language of 'particular[ity]' and
'distinct[ ness]' indicates, claims are required to be cast in clear-as opposed
to ambiguous, vague, indefinite-terms." In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). Claims are in compliance with 35 U.S.C. § 112,
second paragraph, if "the claims, read in light of the specification,
reasonably apprise those skilled in the art both of the utilization and scope of
the invention, and if the language is as precise as the subject matter permits."
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed.
Cir. 1986) (citing Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758
F.2d 613, 624 (Fed. Cir. 1985)). Thus, the test for determining
indefiniteness may be formulated as whether the claims "set out and
circumscribe a particular area with a reasonable degree of precision and
particularity." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). With
regard to the reasonableness standard, one must consider the language in the
context of the circumstances. Packard, 751 F.3d at 1313. Language is an
imprecise method of drawing boundaries delineating patent rights, thus
unreasonable precision cannot be demanded. Id. On the other hand, the
claims must notify the public of what they are excluded from making and
using. Id. For this reason, while exact precision is not required, an applicant
is required to use language as precise as the subject matter reasonably
permits. Id.
4
Appeal2018-001329
Application 14/247,335
The Examiner finds that claims 1, 3, 6, 8, and 10-12 include phrases
that render them indefinite.
After careful review of the record before us, we determine that the
Specification does not provide guidance as to what some of the disputed
language means. That is, we find that some of the above-noted phrases in
the claims do not reasonably apprise those skilled in the art both of the
utilization and scope of the invention.
Claim 1
1. We agree with the Examiner's determination that the following
language in claim 1 is indefinite.
a. "plurality of stackable cabinet modules (000) characterized in
having integrated means for allowing"
This contested phrase in the preamble of the claim describes means
for a number of functions that are integrated into the cabinet module. The
Examiner finds the phrase indefinite because of the language "integrated
means for allowing" because there is no structure defined in the
Specification to perform the various functions. Final Act. 3; Ans. 34.
Appellant argues that of the features listed in the scope of Claim 1
have been particularized with specificity in dependent claims 2-12, the
drawings, and detailed description in the Specification. App. Br. ,r,r 30, 31,
50.
We are unpersuaded of Examiner error by this argument for the
reasons provided in the Answer. Final Act. 3; Ans. 34--35. While Appellant
argues that there is support for the contested means plus function limitation,
Appellant has not directed us to adequate portions of the Specification that
5
Appeal2018-001329
Application 14/247,335
disclose specific structures that perform the claimed functions. Furthermore,
"integrated means for allowing" the plurality of functions listed is similar to
a single means claim which has been held to be nonenabling. Cf In re
Hyatt, 708 F.2d 712, 714-715, (Fed. Cir. 1983) (A single means claim which
covered every conceivable means for achieving the stated purpose was held
nonenabling for the scope of the claim because the specification disclosed at
most only those means known to the inventor.). Thus, the Examiner's
position that it is not clear what is meant by "integrated means for allowing"
the plurality of listed functions is reasonable. See Noah Sys., Inc. v. Intuit
Inc., 675 F. 3d 1302, 1314 (Fed. Cir. 2012) (requiring that the corresponding
structure "address both [ or all] aspects of this functional language").
Appellant has not directed us to corresponding structure in the Specification
that corresponds to all aspects of the functional language listed in clauses a
toe.
b. "per shelf configurations"
The Examiner finds the above language unclear because it does not
specify what the shelf configurations are. Final Act. 4. According to the
Examiner, the claim language "per shelf' must be interpreted as broadly as
the term reasonable allows. And the term must be given its plain meaning
"rack, frame or frame work". Ans. 13.
Appellant contends that paragraph 59 of the Specification establishes
the flexibility of placing different voltage power batteries per shelf and allow
the user to benefit of a single or a dual voltage module configuration. App.
Br. ,I 8.
6
Appeal2018-001329
Application 14/247,335
We first note that the entirety of the claim language including the
disputed phrase reads: "provision of user-selectable backup power output
among +24V and/or--48V in single voltage, simultaneous dual voltage and
single voltage per shelf configurations." In this context, the disputed
language states that shelf configurations involve providing a desired voltage
for operation.
We have reviewed the cited portion of the Specification and disagree
with Appellant's argument. While Appellant contends that the language
"shelf configuration" as a configuration that provides the desired
arrangement of batteries to yield a desired voltage power, it is unclear
whether that language indicating the voltage arrangements of "single
voltage, simultaneous voltage and single voltage" is directed to shelf
configurations that accommodate only backup power outputs of just +24V,
just --48V, or both in the same shelf. Based on this, we agree with the
Examiner that the disputed term is indefinite.
c. "the electrical I/0"
We have considered Appellant's arguments with respect to this
disputed language. App. Br. ,r,r 62-64. Appellant's arguments do not direct
us to any antecedent basis for the term within claim 1. Therefore, we agree
with the Examiner's determination that the lack of antecedent basis for the
disputed language renders claim 1 indefinite. Ans. 14.
7
Appeal2018-001329
Application 14/247,335
d. "active management of temperature" and "passive management
of emission"
The Examiner finds the above disputed phrases unclear. Final Act. 4;
Ans. 13.
Appellant argues that paragraphs 64 and 70 of the Specification
explain the disputed phrases. App. Br. ,r,r 13, 19-20.
We have reviewed the cited portions of the Specification, but are
unpersuaded of Examiner error.
With respect to the passive management of emissions, the claim
language including the disputed phrase reads: "ambient air-assisted passive
management of emissions resultant from said modular enclosure." Thus, in
this context, "ambient air-assisted passive management" requires some sort
of air flow assistance to manage the emission. Air flow assistance appears
to be opposite or contrary to passive management.
With respect to "active management of temperature," this disputed
phrase, like the disputed "passive management of emission," also requires
some sort of air flow assistance to perform the intended function. Thus, it is
not clear how "active management" and "passive management" are
distinguished from each other.
Therefore, we agree with the Examiner's determination of
indefiniteness.
e. "detection and generation" of alarm
The Examiner finds the language "detection and generation of alarm
upon fault in either among ... " because it does not state how the detection
8
Appeal2018-001329
Application 14/247,335
and generation of alarm works for the modular enclosure. Final Act. 4; Ans.
14.
Appellant contends that paragraphs 10, 60, and 65 of the Specification
establishes the flexibility of placing different voltage power batteries per
shelf to allow the user to benefit of a single or a dual voltage module
configuration. App. Br. ,r 8.
The contested language, when read within the context of the claim and
the Specification, recites: "detection and generation of alarm upon fault in
either among the electrical I/0 of the modular enclosure, the means for
managing the temperatures and emissions of the modular enclosure and
furthermore in event of intrusion in said modular enclosure." Thus, while
the contested language indicates that the integrated means for detection and
generation of alarm operates when a fault occurs in one of the conditions
listed, it is unclear what is the relationship between the "integrated means for
allowing" the functions listed in claim 1 and the newly referred to "means
for managing the temperatures and emissions." Appellant does not explain
adequately why the disputed language is definite. Therefore, we agree with
Examiner that the disputed language is indefinite.
2. However, we disagree with the Examiner's determination that
the following language in claim 1 is indefinite.
a. "diminutive"
The Examiner finds the language "increasingly large storage capacity
within a diminutive footprint" ambiguous because "what the appellant is
trying to claim reciting that diminutive footprint which provide increasingly
large storage capacity." Ans. 11.
9
Appeal2018-001329
Application 14/247,335
We agree with Appellant that the language is not indefinite. As
Appellant explains, "[ s ]tacking increases the storage capacity and therefore
increases the storage percentage thus providing, by default, a diminutive
footprint when compared to modules that do not employ stacking and
increase their footprint by placing a plurality of cabinet modules next to one
another." App. Br. ,r 5. The Examiner has not addressed this argument by
Appellant.
Claim 3
a. "each among the stackable cabinet modules has outward surface
artifacts mated"
The Examiner finds the noted language unclear because there is
insufficient antecedent basis for this limitation "outward surface artifacts" in
the claim. Final Act. 4; Ans. 19.
We disagree. The Examiner has not explained adequately why the
disputed language is indefinite. It not clear why antecedent basis is needed
as this is first occurrence of this phrase.
Claim 6
a. "exhaust fan affixed to the hatch acting as a heat sink"
The Examiner finds that it is not clear how the fan acts as a heat sink.
Final Act. 5. However, the Examiner is not reading the disputed language in
context with the language of the claim. The pertinent portion of the claim
reads:
an exhaust fan affixed operatively to the hatch
(001) of each stackable cabinet module which,
when operated upon buildup of heat beyond a
predefined limit, causes a draft of cool air to flow
10
Appeal2018-001329
Application 14/247,335
within the running void spaces between inner walls
of the external (009) and chassis (004) of each
among the plurality of stackable cabinet modules
(000) thereby acting as a heat sink for dissipation
of the excess heat within said modular
enclosure ... " ( emphasis added).
When the disputed language is read in context, it becomes clear that it is the
draft of cool air that acts as a heat sink and not the exhaust fan. This is
consistent with paragraph 70 of the Specification. App. Br. ,r 74.
Accordingly, we do not find the language indefinite.
b. "custom fitted heating pad"
The Examiner finds that it is not clear how the custom fitted heating
pad is fitted in the plurality of stackable cabinet. Final Act. 5.
Appellant contends that the Specification teaches one skilled in the art
that the custom fitted heating pad is simply placed /juxtaposed within the
lumen of the cabinet module, as determined by the individual model of
cabinet module. App. Br. ,r 125.
We note that the Examiner does not repeat the rejection of this
disputed language nor addresses Appellant's argument in the Appeal Brief.
See generally Ans. Therefore, we interpret this as the Examiner conceding
that this disputed language is not indefinite.
Claim 8
a. "as illustrated in the figures 11 (a to c)", "as illustrated in the
figures 12 ( a to c )", "as illustrated in the figures 14 ( a to b )" and
"as illustrated in the figures 14 ( c to d)"
11
Appeal2018-001329
Application 14/247,335
The Examiner finds the noted language indefinite because, by relying
on the figures, the claim fails to point out what is included or excluded by
the claim language. Ans. 5.
Appellant asserts that that circuitry, including the alternative ways of
routing and return of DC power cable and configuration of bus bar
connections to achieve the aforementioned simultaneous dual voltage
capability cannot be explained solely in words and that circuit drawings/
figures are the best modality for this purpose. App. Br. ,r 54. Appellant
relies on MPEP 2173.05(s) in support of this assertion. Id. Appellant also
contends the reference drawings have been included in the claims to ensure
complete understanding of the claimed invention. Id.
We have considered Appellant's arguments but are unpersuaded of
error in the Examiner's determination that claim 8 is indefinite.
Incorporation by reference in a claim to a specific figure or table "is
permitted only in exceptional circumstances where there is no practical way
to define the invention in words and where it is more concise to incorporate
by reference than duplicating a drawing or table into the claim.
Incorporation by reference is a necessity doctrine, not for applicant's
convenience." Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App.
& Inter. 1993) ( citations omitted).
Appellant has not explained adequately why the invention cannot be
described by words alone. Appellant has also not directed us to any
evidence that the claimed invention falls under an exceptional circumstances
where there is no practical way to define the invention in words.
12
Appeal2018-001329
Application 14/247,335
b. "power and return cables being connected to hot bus
bar and return cables"
The Examiner finds a lack of antecedent basis for the noted phrase.
Final Act. 6; Ans. 23. However, we disagree with the Examiner's
determination because a fair reading of the claim would lead one skilled in
the art to understand that "power" in claim 8 refers to power cables and not
back-up power as the Examiner asserts. Ans. 26.
c. "the return side"
The Examiner finds a lack of antecedent basis for the noted phrase.
Final Act. 6.
Appellant argues that the "the return side" is the opposite cable needed
to match the power cable when wiring the batteries together on the shelf.
App. Br. ,I 85.
We have considered Appellant's argument but are unpersuaded by it
because it does not address the Examiner's rejection. Appellant's argument
does not explain why the disputed language does not lack antecedent basis.
Claims 11 and 12
a. "flow-through ventilation panels"
The Examiner finds the noted language indefinite because it is not
clear how the flow-through ventilation panels are passing air between
pluralities of stackable cabinets. Final Act. 6; Ans. 30.
Appellant argues that paragraph 70 of the Specification teaches one
skilled in the art that the placement of multiple cabinet modules stacked on
13
Appeal2018-001329
Application 14/247,335
top of each other offers the ability to isolate the ventilation of one cabinet
from the other. App. Br. ,r,r 129-130.
The pertinent language of the claim reads "comprising.flow-through
ventilation panels that are left in place to prevent the air from passing
between each among the plurality of stackable cabinet modules (000)
thereby isolating the thermal dynamics of each among the plurality of
stackable cabinet modules (000) to thereby result in an isolative cabinet-
specific method of managing the temperatures and emissions of said
modular enclosure" ( emphasis added).
We do not find the disputed language in the above claim language
indefinite. On the contrary, the claim clearly states that flow-through
ventilation panels, described as separators in paragraph 70 of the
Specification, prevent air flow between the modules.
Therefore, we do not find the language indefinite.
Claims 6 and 10
With respect to claims 6 and 10, the Examiner also raises the issue of
the presence of means plus function language in these claims. Ans. 34--35.
We have addressed this issue in our discussion of claim 1 and, after
consideration of Appellant's arguments (e.g., App. Br. ,r 87 (for claim 10)),
maintain our position that the language is indefinite.
Accordingly, we affirm the Examiner's rejection of claims 1, 6, 8, and
10 for the reasons presented by the Examiner and given above. Further,
based on our determination that some of the language from claim 1 is
indefinite, for reasons presented by the Examiner and given above, and the
fact that all claims are ultimately dependent from claim 1, we affirm the
14
Appeal2018-001329
Application 14/247,335
rejection of claims 1-12 because the scope of the claimed invention cannot
be determined.
REJECTIONS UNDER§ l l 2(a) - Written Description
Our reviewing court stated in In re Kaslow, 707 F.2d 1366, 1375 (Fed.
Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language.
See also Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010). "This inquiry ... is a question of fact. ... [T]he level of detail
required [in the Specification as originally filed] to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology."
Id. Whether the written description requirement is complied with is a
question of fact, judged from the perspective of one of ordinary skill in the
art as of the relevant filing date. See Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991).
The Examiner finds that claims 1, 2 and 8 include language that lacks
adequate written description in the Specification.
After careful review of the record before us, we determine that the
Specification does not provide an adequate written description for some of
the disputed language identified by the Examiner.
15
Appeal2018-001329
Application 14/247,335
Claim 1
a. means for "detection and generation of alarm" upon fault
The Examiner finds the specification does not teach, or disclose or
anticipate the corresponding structure or material of the means for detection
and generation of alarm. Final Act. 8. Citing to Section 2163.03(VI) of the
Manual of Patent Examining Procedure (MPEP) and having found that the
means plus function language for the disputed language is indefinite under
35 U.S.C. § 112 (b ), the Examiner determines that this means plus function
language also lacks written descriptive support under 35 U.S.C. § 112(a)
because an indefinite, unbounded functional limitation would cover all ways
of performing a function and this indicates that the inventor has not provided
sufficient disclosure to show possession of the invention. Final Act. 9.
Appellant contends that the presence of alarm circuits or their
implementation are not themselves inventive and not patentable on their
own. App. Br. ,r 78. Appellant further contends that paragraph 65 of the
Specification discloses routing and attachment of the fuse alarm cable to the
fuse alarm switch. App. Br. ,r 79.
We are unpersuaded by these arguments. As the Examiner points out,
an indefinite "integrated means for allowing" numerous functions as recited
in claim 1 is also not described. Appellant has not explained adequately
how the cited portion of the Specification describes a specific structure that
corresponds to the contested language.
16
Appeal2018-001329
Application 14/247,335
Claim 2
a. "void spaces"
The Examiner finds the specification does not teach, or disclose what
is meant by void spaces. Final Act. 8.
Appellant argues that the nature of the "void spaces" would have been
clear upon reading the Specification. App. Br. ,r 72.
We find this argument unavailing because Appellant does not direct
us to any portion of the Specification that describes a specific structure that
corresponds to the contested language.
Claim 8
a. "hot bus bar, return cables, upper and lower bus bar."
The Examiner finds the Specification does not teach, or disclose the
corresponding structure or material for this limitation. Final Act. 9.
Appellant has not presented any argument addressing this part of the
rejection. See generally App. Br. Accordingly, the Examiner's position that
the language lacks adequate written descriptive support is sustained.
b. "a first configuration as illustrated, a second configuration as
illustrated, a third configuration as illustrated and a fourth
configuration as illustrated"
The Examiner finds the Specification does not teach, or disclose the
corresponding structure as defined by a first configuration as illustrated, a
second configuration as illustrated, a third configuration as illustrated and a
fourth configuration as illustrated. Final Act. 9.
17
Appeal2018-001329
Application 14/247,335
Appellant presented no arguments in the Appeal or Reply Briefs
addressing the Examiner's findings with respect to the noted contested
language of claim 8. See generally App. and Reply Briefs. Therefore, the
Examiner's position that the language lacks written descriptive support is
sustained.
In light of these circumstances, on this record, the Specification, as
originally filed, does not show that Appellant was in possession of the scope
of the subject matter described in claims 1-12.
REJECTIONS UNDER§ 103
Appellant presents separate substantive arguments only for
independent claim 1 and dependent claims 2, 6, 7, and 11. See generally
App. Br. We select claim 1 as representative of the claimed subject matter.
Claims 8, 9, and 10 stand or fall with claim 1. We address the arguments for
claims 2, 6, 7 and 11 separately. Claims 3-5 stand or fall with claim 2.
Claim 12 currently depends from itself. We are treating this claim as
depending from claim 11 because both claims 11 and 12 involve the use of
flow-through ventilation panels. Accordingly, claim 12 stands or falls with
claim 11.
After consideration of the respective positions provided by Appellant
and the Examiner, we affirm the Examiner's prior art rejections of claims 1-
12 under 35 U.S.C. § 103 essentially for the reasons presented by the
Examiner. We add the following for emphasis.
18
Appeal2018-001329
Application 14/247,335
Claim 1
The Examiner finds Rowan discloses a structure that differs from
claim 1 in that Rowan does not disclose an enclosure comprising a plurality
of stackable cabinet modules having integrated means allowing for stacking
or providing a user-selectable backup power output as claimed. Final Act.
10-11. The Examiner finds Miller teaches the missing features. Final Act.
11-12; Miller Figure 1 (stackable modules 12 a---d), Figure 3 (stackable
modules 30), col. 3, 1. 45---col. 4, 1. 26, col. 4, 1. 61---col. 5, 1. 21. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art to incorporate Miller's features in Rowan's device to provide a
plurality of stacked cabinet modules for a user desired power output. Final
Act. 12.
Appellant argues that Miller's cabinet is not capable of stacking upon
itself in a multiple module configuration or designed to support a shelf
configuration. App. Br. ,r,r 106, 109. Appellant further argues that Rowan
has no provision to stack module enclosures because Rowan is solely an
indoor battery rack supporting individual battery modules. Id. ,r 106. In
addition, Appellant argues Rowan's cabinet module is a complete, one piece
retrofit module installed underneath the customer's telecommunications
cabinet that cannot be disassembled, separating the inner high strength steel
frame from the outer aluminum outer shell or a plurality of battery cabinet
modules be place on top of each other allowing the customer to define the
heating or cooling requirements nor does the Rowan cabinet have the ability
to provide inner airflow between cabinets or selectively not allow airflow
between cabinets. Id. ,r 120. Thus, Appellant contends that the teachings of
19
Appeal2018-001329
Application 14/247,335
these references would not lead one skilled in the art to the claimed
invention. Id.
The arguments do not persuade us of reversible error in the
Examiner's determination of obviousness. The premise of Appellant's
arguments is based on bodily incorporation and this premise does not
address adequately the Examiner's reason for combining the cited art. Final
Act. 10-12; Ans. 12. It is well established that the obviousness inquiry does
not ask "whether the references could be physically combined but whether
the claimed inventions are rendered obvious by the teachings of the prior art
as a whole." In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane); see
also In re Keller, 642 F.2d 413,425 (CCPA 1981) (stating "[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference"). As the
Examiner notes, Rowan teaches a cabinet module for batteries comprising
the claimed air flow and security features and Miller discloses as known to
stack multiple cell modules to form a stacked multicell battery. Ans. 13, 44.
Appellant has not explained adequately why one skilled in the art, using no
more than ordinary creativity, would not have been capable of modifying
Rowan's cabinet (module) to be suitable for stacking multiple modules in
view of the teachings of Miller. See KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) ("A person of ordinary skill is also a person of ordinary
creativity, not an automaton."); see also In re Sovish, 769 F.2d 738, 743
(Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in the
art.). Appellant's arguments, thus, do not address adequately the rejection
presented by the Examiner and do not point to error in the determination of
obviousness.
20
Appeal2018-001329
Application 14/247,335
While Appellant contends that neither Rowan and Miller disclose
their respective inventions as capable of providing simultaneous dual voltage
configurations (App. Br. ,r 109), Appellant direct us to no portion of either
reference or provide other evidence in support of this contention. Thus,
Appellant, at most, has provided mere arguments and such arguments cannot
take the place of evidence. Cf In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979).
Claim 2
Appellant asserts that Miller's cabinet is not a cabinet with a high
strength steel inner structure encased in a ventilated aluminum housing that
is capable of supporting inner cooling or heating between cabinets as
claimed. App. Br. ,r,r 119-121. Appellant additionally argues that neither
Miller nor Rowan has the ability to manage separate thermal requirements
simultaneously within the same enclosure or rack area. Id. ,r 122.
The arguments do not persuade us of Examiner error. It is well-
established that nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986); see Keller, 642 F.2d at 425-26. Appellant's arguments are
unavailing because they do not address the rejection before us for review on
appeal. Appellant points to no portion of Miller or any other evidence that
supports the assertion that Miller's cabinet is not capable of supporting inner
cooling or heating between cabinets. Thus, Appellant has failed to explain
adequately why one skilled in the art, using no more than ordinary creativity,
would not have been capable of modifying Rowan's cabinet (module),
21
Appeal2018-001329
Application 14/247,335
which includes the means for heating and cooling, to be suitable for stacking
multiple modules, as taught by Miller, and reasonably expect that the
stacked cabinets to provide the requisite heating and cooling for the stacked
cabinets. In re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) ("For
obviousness under § 103, all that is required is a reasonable expectation of
success.").
With respect to the argued ability to manage separate thermal
requirements simultaneously within the same enclosure or rack area, we
agree with the Examiner's determination that claim 2, or claim 1 for that
matter (from which claim 2 depends), does not require such an ability. Ans.
13.
Claims 6, 7 and 11
For these claims, Appellant again argues that neither Miller nor
Rowan has the ability to manage separate thermal requirements
simultaneously within the same enclosure or rack area. App. Br. ,r,r 113,
117, 122, 126, 132, 134. We maintain that this argument is unavailing and
refer to our previous discussion on this issue.
Appellant additionally argues that Scheucher's teaching of monitoring
and managing the environment within a battery cabinet is a simplex design
with the ability to either cool or heat the battery cabinet environment does
not provide simultaneous thermal control of each battery cabinet module.
App. Br. ,r 134. However, the argument is unpersuasive because the
Examiner relies on Scheucher for the teaching of a custom-fitted heating pad
as a known device and not for management of separate thermal requirements
simultaneously within an enclosure or rack area. Final Act. 15.
22
Appeal2018-001329
Application 14/247,335
With respect to claim 11, Appellant additionally argues that Miller
focuses on the stacking and keying of 2-volt battery multi cell modules
having keyed connector means such that the modules can be connected only
in selected orientations that facilitates the electrical connection of terminals
and simplify battery assembly. App. Br. ,r 134. According to Appellant,
there is no reference or claim that Miller's design supports a battery cabinet
stack, or a cooled or heated environment because Miller has no battery
cabinet enclosure or means to simultaneously manage the battery rack
environment. Id.
We are unpersuaded because the premise of the arguments is again
based on bodily incorporation and does not address adequately the
Examiner's reason for combining the cited art. Final Act. 14--17. Appellant
has not explained adequately why one skilled in the art, using no more than
ordinary creativity, would not have been capable of modifying Rowan's
cabinet (module) to be suitable for stacking multiple modules in view of the
teachings of Miller. Appellant's arguments, thus, do not point to error in the
determination of obviousness.
Accordingly, we affirm the Examiner's prior art rejections of claims
1-12 for the reasons presented by the Examiner and given above.
ORDER
The Examiner's rejections under 25 U.S.C. §§ 112 (a) and 112(b) are
affirmed.
The Examiner's prior art rejections of claims 1-12 under 35 U.S.C.
§ 103 are affirmed.
23
Appeal2018-001329
Application 14/247,335
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l).
AFFIRMED
24