Ex Parte Coglitore et al

Patent Trial and Appeal Board

Mar 22, 2013

10678006 (P.T.A.B. Mar. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GIOVANNI COGLITORE, NIKOLAI GALLO,
and JACK RANDALL
____________

Appeal 2010-004163
Application 10/678,006
Technology Center 2800
____________

Before DENISE M. POTHIER, JEFFREY S. SMITH, and
DANIEL N. FISHMAN, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-51.1 We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 Throughout this opinion, we refer to the Appeal Brief (Br.) filed February
23, 2007; and (2) the supplemental Examiner’s Answer (Ans.) mailed
November 4, 2009.
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Invention
Appellants’ invention relates to a configuration for computers to
conserve space and deal with cooling. See Abstract. Illustrative claim 1 is
reproduced below:
1. A set of computers comprising:
at least two computers, each computer comprising at least one
heat-generating component; and
a rack configured for the at least two computers to be placed in a
back-to-back configuration, wherein
air is permitted to flow through each computer such that airflow
goes through, over, or adjacent to the at least one heat-generating
component, and
the rack and computers will cooperate to direct the airflow
through the computers (1) up to exit the rack through an upper
section of the rack, (2) down to exit the rack through a lower
section of the rack, or (3) both.

The Examiner relies on the following as evidence of unpatentability:
Matouk US 4,691,274 Sept. 1, 1987
Dubin US 5,971,506 Oct. 26, 1999
Wrycraft US 6,011,689 Jan. 4, 2000

The Rejections
Claims 1-6, 8-14, 16-22, 24-30, 32-34, 38-43, and 46-51 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Matouk and Dubin.
Ans. 4-16.
Claims 7, 15, 23, 31, 35-37,2 44, and 45 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Matouk, Dubin, and Wrycraft.
Ans. 16-20.

2 While not listed in the heading (Ans. 16), the Examiner states this claim is
newly rejected and it is discussed in the rejection’s body (Ans. 3, 18-19).
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OBVIOUSNESS REJECTION OVER MATOUK AND DUBIN
Regarding representative claim 1, the Examiner finds that Matouk
teaches all the limitations, except for the devices being placed in a
back-to-back configuration being computers. Ans. 4-5, 21. The Examiner
cites to Dubin to teach this missing limitation and provides a reason to
combine the references. Ans. 5, 21-22, 27-28.
Appellants argue that: (1) there is no motivation to combine Dubin’s
teaching with Matouk; (2) there is no suggestion to substitute Matouk’s
modules with Dubin’s computers; (3) any modification would require
substantial changes and would change Matouk’s operation; and (4) the
modification would not yield the claimed “back-to-back” framework for two
computers. Br. 7-11. Appellants also contend that the combination does not
result in the recited cooperation between the rack and computers to direct
airflow as claimed. Br. 14-16.

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Matouk and Dubin collectively would have taught or suggested:
(a) a rack configured for two computers to be placed in a back-to-back
configuration, wherein air is permitted to flow through each
computer such that the airflow goes through, over, or adjacent
to the at least one
heat-generating component; and
(b) the rack and computers will cooperate to direct the airflow through
the computers: (1) up to exit the rack through an upper section
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of the rack, (2) down to exit the rack through a lower section of
the rack, or (3) both?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of claim 1 which calls for a rack configured for two computers to
be placed in a back-to-back configuration, wherein air is permitted to flow
through each computer such that the airflow goes through, over, or adjacent
to the at least one heat-generating component. Appellants assert this
limitation is not taught or suggested by the combination of Matouk and
Dubin. Br. 8-10. We disagree.
Regarding independent claims 1, 9, and 51 and contrary to
Appellants’ contentions (see Br. 8), neither reference needs to show modules
41-43 are computers installed in place of the modules. That is, the above
limitation includes a functional or intended use recitation, reciting the “rack
[is] configured for the at least two computers . . . ” (emphasis added). As
such, when construing claim 1 broadly, but reasonably, the prior art need
only show the ability to place two computers in a back-to-back
configuration. See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir.
1997).
Matouk teaches various-shaped modules (e.g., 41-43) mounted or
placed in a back-to-back to configuration within a framework 12 (e.g., a
rack). See Ans. 4 (citing Figs. 1, 3-4); see also col. 3, ll. 46-49; col. 3, l. 65–
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col. 4, l. 4; col. 4, ll. 16-19. Appellants have not disputed that Matouk
teaches modules in a back-to-back configuration. Br. 8-10. Also, given that
computers are known to be various sizes, an ordinarily skilled artisan would
have recognized that Matouk’s framework is configured or sized such that
the rack permits two computers to be placed in such a back-to-back
configuration. Matouk further teaches that the modules are interchangeable.
See Ans. 21; see also col. 1, ll. 53-55. All these teachings further suggest
that various devices, including two computers, are capable of being placed
within Matouk’s framework.
Even so and to the extent other independent claims, such as claims 17
and 25, positively recite the back-to-back configuration, the Examiner
additionally cites to Dubin to support the conclusion that the prior art
collectively teaches or suggests the recited configuration. Ans. 5, 21-22.
Dubin shows that rack-mounted computers were known to artisans, further
suggesting that computers can be placed within a framework or rack that
holds electrical devices, such as Matouk’s. See Ans. 5 (citing Figs. 3-5); see
also Dubin, Abstract. Also, the Examiner has not necessarily proposed a
substitution of the computers for the modules (Br. 9) but rather including
computers within an electrical device rack like Matouk’s. See Ans. 5.
Appellants dispute these findings and conclusion by attacking Matouk
alone (Br. 8-10) and argue that neither reference (Br. 8 (stating “[n]either
Matouk nor Dubin . . . ”)) teaches or suggests placing a computer in the
recited configuration. However, attacking reference individually does not
show nonobviousness where the rejection is based on combinations of
references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants have thus not sufficiently shown that the teachings of Matouk
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and Dubin when combined (Br. 9) fail to teach or suggest a rack that is
capable of having or has two computers in a back-to-back configuration.
Appellants repeatedly argue that Matouk is a “customized” modular
power supply with customized framework and components and is not a
computer rack. Br. 8-9, 14. We are not persuaded by this argument. First,
claim 1 does not recite a “computer” rack but rather a “rack configured for
the at least two computers.” Second, Matouk does not state the framework
and modules are customized. See generally Matouk. Third, even assuming
Matouk is customized, Matouk and Dubin as discussed above teach and
suggest how the rack has the ability to place computers as broadly as recited.
Appellants further assert that there is insufficient motivation to
dispose computers within Matouk’s rack. See Br. 7, 10-11, 13-14. We
disagree and adopt the Examiner’s explanation. The Examiner notes (Ans.
21-22):
Dubin does, however, suggest an environment in which his
invention is to be used. In the background section, column 1
lines 17-21, Dubin suggest [sic] using the computers in a
laboratory and repair shops where electrical equipment is often
mounted in racks. Dubin goes on to state that computers are
not readily insertable in electrical equipment racks as a problem
in the art. It is this very problem, which the invention of Dubin
overcomes. Dubin clearly suggest [sic] that his rack mountable
computer is to be mounted in an electrical equipment rack when
it becomes necessary to use a computer in conjunction with
other components typically mounted in racks. Matouk et al.
clearly teaches a framework (rack) with electrical equipment
mounted thereon and being used in conjunction with computers.
It is this very knowledge, which would provide one of ordinary
skill in the art the proper motivation or suggestion to combine
the teachings of Dubin with the teachings of Matouk et al. as
both teach the use of rack mountable devices in conjunction
with computers and a rack.
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See also Ans. 27.
Thus, while Matouk only teaches a rack that is used with computer
equipment (see also col. 1, ll. 7-12, 29-32; col. 3, ll. 53-55), Dubin explains
that there is a need in the art to provide an improved system for mounting
computers in an electrical equipment rack to overcome previous drawbacks.
See col. 1, ll. 33-60. The Examiner also states that such an arrangement
provides for a cooling means. See Ans. 24. As such, combining Dubin’s
teaching with Matouk does no more than predictably yield what one skilled
in the art would expect from such a combination – a rack that is configured
to receive computers and permit cooling – and simply arranges known
elements with each performing the same function it has been known to
perform. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416-17 (2007).
We further disagree that placing computers in Matouk’s rack would
require substantial modification. Br. 7. Appellants assert that such a
modification would result in the computer connectors being located in the
back and would require relocating the connectors to the front of the
computer chassis. Br. 9, 12. No such language is found in claim 1, which
requires relocation of the wires. See Ans. 24. Nonetheless, we do not agree
that such a rearrangement of the connectors and wiring is necessary in order
for the combined system to function and that, without rearrangement, the
proposed combined system would result in unsuitable interference in the
back.
For example, Dubin teaches and suggests placing the computer with
its electrical components and chassis within the mounting system. See col.
2, l. 66–col. 3, l. 4; Fig. 3. Thus, the computer and its components are
mainly contained within the mounting system. However, to the extent that
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such an arrangement would be more difficult to maintain and debug (Br. 11),
Dubin teaches that the arrangement allows for easy access to a computer.
See col. 1, ll. 54-60; see also Ans. 26-27. Moreover, Appellants provide
insufficient evidence that connectors projecting from the back end would
prevent two computers from being in a back-to-back configuration or air
from flowing as recited. Br. 11. Notably, Dubin’s features need not be
bodily incorporated into Matouk to establish obviousness. See In re Keller,
642 F.2d 413, 425 (CCPA 1981). Given all these teachings, we find that one
skilled in the art, employing creative steps and inferences, would have
recognized a rack configured for placing two computers in a back-to-back
configuration and that the prior art provides sufficient motivation for the
recited configuration.
Appellants further contend that the combined teachings of Matouk
and Dubin would not result in the rack and computer cooperating to direct
the airflow through the computers (1) up to exit the rack through an upper
section of the rack, (2) down to exit the rack through a lower section of the
rack, or (3) both. Br. 14-17. Notably, as written and except for independent
claim 42, this is also a functional limitation requiring the ability to direct
airflow through the computers and requiring the airflow to perform only one
of steps (1)-(3).
The Examiner finds that Matouk teaches the concept of directing the
air over or adjacent the mountable devices (e.g., 41-43) that extend into the
intermediate compartments (see Ans. 29), where air flows up to exit the rack
through a rack’s upper section (see Fig. 4), and Dubin teaches that
computers and their mounting compartment have openings to permit air to
pass through (see Ans. 30; see also Figs. 3-5). We find the Examiner’s
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position reasonable. Ans. 5, 29-30. Employing creative steps and inferences
of an ordinarily skilled artisan, we find that an ordinarily skilled artisan
would have known that computers contain several openings to permit heat to
vent away from the electrical components. Moreover, contrary to
Appellants’ contention (Br. 15-16), Matouk’s air straightener illustrates that
air in the intermediate sections (e.g., 18, 22, 26, 29) will flow in many
directions, including through the devices having openings and received in
the rack. Thus, when combining all these teachings and the background
knowledge of an artisan, the prior art suggests that the rack/computer
configuration will direct airflow through at least part of a computer and that
the airflow will, in turn, also flow at least adjacent to a heat-generating
component of the computer, through the computer, and up to exit the rack
through an upper section as recited. Such a combination yields no more than
one would expect from such an arrangement. See KSR, 550 U.S. at 417.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2-6, 8-14, 16-22, 24-30,
32-34, 38-43, and 46-51 not separately argued with particularity (Br. 18-19).

THE REMAINING REJECTION
Claims 7, 15, 23, 31, 35-37, 44, and 45 are rejected under § 103 based
on Matouk, Dubin, and Wrycraft. Ans. 16-20. Appellants argue that
Wrycraft fails to cure the purported deficiencies previously argued. Br. 19.
However, as discussed above, Matouk and Dubin teach and suggest the
recitations in illustrative claim 1 and Wrycraft is not needed to cure this
alleged missing limitation. Accordingly, we will sustain this rejection.
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CONCLUSION
The Examiner did not err in rejecting claims 1-51 under § 103.

DECISION
The Examiner’s decision rejecting claims 1-51 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)(1)(iv).

AFFIRMED

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