Ex Parte Burrell et al

Patent Trial and Appeal Board

Aug 18, 2016

12717628 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121717,628 03/04/2010
5073 7590
BAKER BOTTS LLP,
2001 ROSS A VENUE
SUITE 600
DALLAS, TX 75201-2980
08/22/2016
FIRST NAMED INVENTOR
Gary Richard Burrell
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.
064731.0777 3177
EXAMINER
JORDAN, ANDREW
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
08/22/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY RICHARD BURRELL and BRIAN O'DONNELL
Appeal 2015-001816
Application 12/717,628
Technology Center 2800
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JULIA HEANEY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-7, 9 and 11-16 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Chiu (Chiu et al., US 2006/0029332 Al,
published February 9, 2006) and Chamy (Chamy et al., US 7,234,880 Bl,
issued June 26, 2007). 2 We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
WE AFFIRM.
1 The real party in interest is Fujitsu Limited. (App. Br. 3).
2 The rejection of dependent claims 3-5 and 12-14 also includes Nguyen (US
2008/0031634 Al, published February 7, 2008) (Final Action 8-11).
Appellants do not present any additional arguments for these claims (App.
Br. 11).
Appeal2015-001816
Application 12/717,628
Claim 9 is illustrative of the claimed subject matter:
9. A system for connecting optical modules in an optical
network, the system comprising:
a circuit board comprising electronic circuitry and a
plurality of electronic components, the circuit board having a
component side and a solder side, the circuit board being
enclosed in a casing and having an input/output (I/O) panel;
two cages mounted back-to-back on opposite sides of the
circuit board such that each cage is disposed partially within the
casing and extends through the I/O panel outside of the casing,
each cage having a connector end and an I/O end, the I/O end
disposed outside the casing;
each of the two cages configured to receive an optical
module through the I/O panel and electrically couple the optical
module to the electronic circuitry of the circuit board; and
each of the two cages mounted at an angle from the
respective surface of the circuit board such that the respective
I/O ends of the two cages are farther apart than the respective
connector ends of the two cages.
App. Br. 15 (Claims Appendix).
Appellants' arguments focus on limitations common to both claims 1
and 9 (App. Br. 6-11 ). We choose independent claim 9 as representative
(App. Br. 11 (Appellants state that claim 9 is allowable for similar reasons as
claim 1) ). Appellants do not present any arguments to the dependent claims,
including those claims separately rejected (e.g., App. Br. 11 ).
ANALYSIS
Upon consideration of the evidence on this appeal record and each of
Appellants' contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that the subject matter of
Appellants' claims is unpatentable over the applied prior art. We sustain the
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Appeal2015-001816
Application 12/717,628
Examiner's§ 103 rejections essentially for the reasons set out by the
Examiner in the Answer.
We add the following for emphasis.
Appellants' only argument is that "there is no motivation to modify the
system in Figure 17 of Chiu such that that [sic] cages are angled as in
Chamy" (App. Br. 8) because Chiu' s pluggable modules are inserted through
openings in a faceplate to the cages whereas Chamy's cages are not (App. Br.
8-10; Reply Br. generally). Appellants further point out that Chamy's prior
art Figure 1 shows a cage inserted through a faceplate like that of Chiu, and
de facto argue that Chamy teaches away from the use of its angled cages in
any embodiment wherein the modules are inserted via a fixed faceplate (id).
These arguments are not persuasive. Whether the prior art teaches away
from the claimed invention is a question of fact. DyStar Textilfarben GmbH
v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006); In re Harris, 409
F.3d 1339, 1341 (Fed. Cir. 2005); cf Para-Ordnance Mfg. v. SGS Importers
Int'!, 73 F.3d 1085, 1090 (Fed. Cir. 1995) (to teach away, a reference must
state that a feature "should not" or "cannot" be used in combination with
other features in the prior art). As the Examiner has pointed out, Chamy
exemplifies that angled cages (e.g., 1° to 3°; Chamy col. 3, 11. 20-21) on a
circuit board have numerous advantages (Ans. 5-7). Indeed, Chamy' s Figure
2 also uses a faceplate 26, and the rejection may be fairly viewed to
encompass that it also would have been obvious to use the angled cages of
Chamy in a configuration as depicted in Figure 1 7 of Chiu, that is, one cage
on either side of a printed circuit board with a (detachable) faceplate as in
Figure 2 of Chamy (Ans. generally). Appellants' claims encompass any
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Appeal2015-001816
Application 12/717,628
cages angled at any angle, including "between 0 and 2 degrees" as recited in
dependent claims 6 and 15.
It has also been established that the reason for combining references
does not have to be identical to that of the applicant in order to establish
obviousness. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). In KSR
Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 419--420 (2007) the Supreme Court
observed that:
In determining whether the subject matter of a ...
claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to
what is obvious, it is ... [ unpatentable] under § 103.
Appellants have not shown error in the Examiner's determination that
one of ordinary skill in the art, using no more than ordinary creativity, would
have used angled cages, as exemplified in Chamy, for their known functions,
on opposite sides of a printed circuit board as exemplified in Chiu (e.g., Ans.
5-7; App. Br. generally; Reply Br. generally). In re Kubin, 561F.3d1351,
1360 (Fed. Cir. 2009) (obviousness only requires a reasonable expectation of
success). See also, In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art."); In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) ("Combining the teachings of references does not involve
an ability to combine their specific structures.").
As the Supreme Court has noted, "[ t ]he combination of familiar
elements according to known methods is likely to be obvious when it does no
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Appeal2015-001816
Application 12/717,628
more than yield predictable results." KSR Int'!., 550 U.S. at 416. Appellants
have not persuaded us that the Examiner erred in concluding that the claimed
combination of familiar steps/elements is such a case of obviousness.
Appellants' mere assertion that the "reduction of interference between
neighboring modules mounted back-to-back on opposite sides of a PCB
amounts to more than predictable results" (Reply Br. 4) is not persuasive of
error.
Accordingly, we affirm the Examiner's rejections.
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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