Ex Parte Carr et al

Board of Patent Appeals and Interferences

Jun 28, 2012

11287994 (B.P.A.I. Jun. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/287,994 11/28/2005 Brian A. Carr CE14791E 3366
27572 7590 06/29/2012
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
CERULLO, JEREMY S
ART UNIT PAPER NUMBER
2111
MAIL DATE DELIVERY MODE
06/29/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN A. CARR and PAUL A. MOAKES
____________

Appeal 2010-002177
Application 11/287,9941
Technology Center 2100
____________

Before HOWARD B. BLANKENSHIP, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Application filed November 28, 2005. The real party in interest is
Emerson Network Power – Embedded Computing Inc. (Br. 2.)

Appeal 2010-002177
Application 11/287,994

2
Invention
Appellants’ invention is directed to a subrack where AMC modules
can be inserted from the front and the rear. (Spec. ¶¶ [0021], [0022];
Abstract (Spec. 26).)2
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitation emphasized, further illustrates the invention:
1. A subrack having a front side and a rear side, wherein the
subrack is configured to receive a plurality of Advanced
Mezzanine Card (AMC) modules, the subrack comprising:
a backplane having a first side and a second side,
wherein the first side is opposite the second side;
a first slot open to the front side, wherein the first slot is
configured to receive a first AMC module inserted via the front
side and connect the first AMC module directly to the first side
of the backplane;
a second slot open to the rear side, wherein the second
slot is configured to receive a second AMC module inserted via
the rear side and connect the second AMC module directly to
the second side of the backplane;
an AMC connector at each of the first slot and the second
slot, wherein each AMC connector is configured to directly
connect a respective one of the first AMC module and the
second AMC module to the backplane; and
a virtual carrier manager configured to be coupled to the first
AMC module and the second AMC module, wherein the virtual
carrier manager provides a control management function, a central
switching function, and a power control function when coupled to
each of the first AMC module and a second AMC module.

2 We refer to Appellants’ Specification (“Spec.”) and “Appeal Brief (“Br.”)
filed Oct. 22, 2008. We also refer to the Examiner’s Answer (“Ans.”)
mailed Jan. 23, 2009.
Appeal 2010-002177
Application 11/287,994

3
Rejection on Appeal
The Examiner rejects claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over Applicants Admitted Prior Art (AAPA) (Figs. 1-2, Spec.
4-7, ¶¶ [0015]-[0020]) and Uzuka (U.S. Patent No. 6,392,142 B1, May 21,
2002).
Grouping of Claims
Based on Appellants’ arguments in their Principal Brief, we will
decide the appeal on the basis of representative claims 1 and 16. See 37
C.F.R. § 41.37(c)(1)(vii).

ISSUE
1. Under § 103, did the Examiner err in concluding that the
combination of AAPA and Uzuka would have collectively taught or
suggested “a backplane having a first side and a second side, wherein the
first side is opposite the second side,” within the meaning of representative
claim 1?
2. Under §103, did the Examiner err in concluding that the cited
combination of AAPA and Uzuka would have collectively taught or
suggested “a backplane comprising:” “a first portion” and “a second
portion,” “wherein the first portion and second portion are offset from one
another,” within the meaning of representative claim 16?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows.
Appeal 2010-002177
Application 11/287,994

4

ANALYSIS
Claims 1-15
Appellants contend, inter alia, that “neither AAPA or Uzuka disclose
a subrack or computer system with a first slot open to a first side and a
second slot open to a second side, wherein the first side is opposite the
second side” (emphasis added), as recited in independent claim 1. (Br. 7.)
We note that Appellants essentially argue why AAPA and Uzuka
individually do not disclose the limitation at issue. (Id.) We do not find this
type of argument to be persuasive in rebutting a prima facie case of
obviousness.3 We agree with Examiner that the collective teachings of
AAPA and Uzuka would have taught or at least suggested the limitation at
issue. (Ans. 6.) Further, we note that Appellants failed to file a Reply Brief
to rebut the findings and responsive arguments made by the Examiner in the
Answer.
Based on this record, we conclude that Appellants did not
persuasively show the Examiner erred in concluding that the cited references
would have taught or suggested “a backplane having a first side and a
second side, wherein the first side is opposite the second side,” as recited in
claim 1. Accordingly, we affirm the Examiner’s rejection of representative
claims 1-15.

3 One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck &
Co., Inc., 800 F.2d 1091(Fed. Cir. 1986); In re Keller, 642 F.2d 413 (CCPA
1981).

Appeal 2010-002177
Application 11/287,994

5
Claims 16-20
Appellants contend that AAPA and Uzuka fail to disclose a first
portion and a second portion of a backplane, “wherein the first portion and
second portion are offset from one another,” as recited in independent claim
16. (Br. 8.) We note that Appellants rely on Fig. 4 as an illustration of what
is meant by the first and second portions being “offset.” (Id.) However, we
will not read these limitations into claim 16. We find that the Examiner’s
construction of the term “offset” is reasonable in light of Appellants’
Specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (internal citations omitted).
Appellants further contend that Uzuka teaches away from the present
invention. (Br. 8). However, we do not find, nor have Appellants
established, that Uzuka criticizes, discredits, or otherwise discourages a
configuration of a backplane where the first portion and a second portion are
offset from one another. In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(citations and internal quotation marks omitted). See also In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) (noting that merely disclosing more than
one alternative does not teach away from any of these alternatives if the
disclosure does not criticize, discredit, or otherwise discourage the
alternatives). Further as noted above, Appellants did not file a Reply Brief
to rebut the Examiner’s findings in the Answer.
Based on this record, we conclude that Appellants have not shown the
Examiner erred in concluding that the cited references would have taught or
suggested “a backplane comprising:” “a first portion” and “a second
portion,” “wherein the first portion and second portion are offset from one
Appeal 2010-002177
Application 11/287,994

6
another,” as recited in representative claim 16. Accordingly, we affirm the
Examiner’s rejection of claims 16-20.

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-20 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-20 under 35 U.S.C.
§ 103(a).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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