Ex Parte Foster et al

Board of Patent Appeals and Interferences

May 30, 2012

11164576 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIMMY GRANT FOSTER, SR., MICHAEL SEAN JUNE,
ALBERT VINCENT MAKLEY, and JASON AARON MATTESON
____________

Appeal 2010-000918
Application 11/164,576
Technology Center 2800
____________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI,
and ERIC B. CHEN, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1, 4, 5, 7-13, 16, and 18-27. Claims 2, 3, 6, 14, 15, and 17 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to a method, apparatus, and system for
evenly distributing airflow and providing balanced cooling of heat producing
components by using a mechanical air redirection device (see Spec. [para
7]).
Representative claim 1, with the disputed limitations in italics, reads
as follows:
1. A mechanical air redirection device geometrically
configured for installation in at least one vacant memory
module location to circulate airflow among installed memory
devices by providing a continuous surface occupying the same
volume of total empty space between memory devices as that
occupied by individual memory devices otherwise installed in
each vacant memory module location to distribute airflow
within a computer assembly so as to provide substantially
balanced cooling of downstream heat producing components
within the computer assembly so as to improve thermal
distribution and dissipation of heat for a computer memory
system when one or more memory devices are removed or left
uninstalled by minimizing the loss of airflow in at least one
vacant memory module location so as to increase airflow
around memory devices installed in one or more other memory
module locations.
Rejections
The Examiner rejected claims 1, 4, 5, 9-13, 16, and 18-27 under
35 U.S.C. § 102(b) as being anticipated by Robertson (US 2004/0207982
A1) and claims 7 and 8 under 35 U.S.C. § 103(a) as being unpatentable over
Robertson.
1

1
Appellants’ challenging the Examiner’s objection to the Drawings (App.
Br. 7) is not an appealable matter.
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Appellants’ Contentions
With respect to the rejection of claims 1, 4, 5, 10, 11, 13, 16, and 18-
20, Appellants contend that Robertson does not disclose the claimed features
as described in paragraphs 7, 8, 31-33, and 35 of Appellants’ Specification
(App. Br. 10). Appellants specifically assert:
Robertson does not disclose (and instead teaches away from)
these claimed feature(s) requiring “substantially balanced
cooling of downstream heat producing components within the
computer assembly” in stating that “air by-pass in the memory
module environment is minimized” by use of the geometric
configuration(s) of the air-directing unit(s) (105/106/200/300)
disclosed therein (which occupy more volume and thus cause
more downstream airflow to be blocked than would have
otherwise occurred if the occupied locations were instead
populated with memory modules). (See U.S. Patent Application
Publication No. 2004/0207982 @ paragraph [0019] and FIG. 1-
3.) (See also DECLARATION OF JIMMY GRANT FOSTER,
SR. @ ¶ 2(a).)

(App. Br 9).
With respect to the rejection of claims 9, 12, and 21-24, Appellants
contend that the recited configuration for installation of the redirection
device “is not taught or suggested (or enabled) by Robertson due to the
geometric configurations of the coupling element(s) (202/302) used for
attaching air-directing unit(s) (105/106/200/300) to the memory module
connectors (101/102)” (App. Br. 9-10). Additionally, Appellants rely on the
“DECLARATION OF JIMMY GRANT FOSTER, SR. @ ¶ 2(b)” to argue
the patentability of these claims (App. Br. 10).
With respect to the rejection of claims 25-27, in addition to
relying on the “DECLARATION OF JIMMY GRANT FOSTER, SR.
@ ¶ 2(b),” Appellants assert that “the type of coupling arrangement
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disclosed in Robertson is not required for the invention as defined in
claims 25-27” to provide for the recited configuration for installation
(App. Br. 10).
With respect to the rejection of claims 7 and 8, Appellants rely
on arguments similar to those presented regarding claim 1 and further
contend that Robertson does not teach or suggest the claimed features
related to installation configuration (App. Br. 11).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken and (2) the
reasons set forth by the Examiner in the Answer in response to Appellants’
Appeal Brief. However, we highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
With respect to claim 1, we agree with the Examiner’s analysis of
Robertson’s disclosure related to heat dissipation and air by-pass over
unoccupied space instead of passing by the installed memory modules (Ans.
10, citing Robertson ¶¶ [0005] and [0006]). As stated by the Examiner (id.),
Robertson describes improving the cooling and air flow by using air-
directing units installed in the empty spaces (see ¶¶ [0010] and [0017] –
[0021]). Contrary to Appellants’ position (Reply Br. 2-3), Robertson
discloses using the same component as described by Appellants which is
consistent with Appellants’ Specification describing an airflow redirector
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that “occupies at least as much (or more) of the total empty space between
installed memory modules” (see Spec. [para 32]).
In fact, whether a rejection is under 35 U.S.C. § 102 or § 103, when
Appellants’ product and that of the prior art appear to be identical or
substantially identical, the burden shifts to Appellants to provide evidence
that the prior art product does not necessarily or inherently possess the
relied-upon characteristics of Appellants’ claimed product. See In re
Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255
(CCPA 1977); In re Fessmann, 489 F.2d 742, 745 (CCPA 1974). The
reason is that the Patent and Trademark Office is not able to manufacture
and compare products. See Best, 562 F.2d at 1255; In re Brown, 459 F.2d
531,535 (CCPA 1972).
In response to Appellants’ submission of the “DECLARATION OF
JIMMY GRANT FOSTER, SR.,” we also agree with the Examiner’s
evaluation and conclusions (Ans. 12-13) that no comparative data was
provided to indicate unexpected results or any advantages over the
arrangement disclosed in Robertson. Specifically, we find that the features
discussed in paragraph (b) of the Declaration are actually resulting from
using the claimed device in the same manner disclosed in paragraphs 10 and
19 of Robertson. Where the Patent Office has reason to believe that a
claimed functional limitation is an inherent characteristic of the prior art, the
burden shifts to the Appellants to show that the prior art does not possess
that characteristic. See Best, 562 F.2d at 1254-55 (quoting In re Swinehart,
439 F.2d 210, 212-13 (CCPA 1971)). As such, the Examiner’s findings
establish that an inherent characteristic of Robertson’s air-directing units is
to “create an effect on airflow similar to that caused by memory modules
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that would otherwise be installed in the vacant channels,” as stated in
paragraph (a) of the Declaration. Like Appellants’ airflow redirectors,
Robertson’s air-directing units occupy at least the same volume as the
installed memory modules and facilitate cooling airflow around those
memory modules.
Similarly, with respect to the rejection of claims 9, 12, and 21-24, we
also agree with the Examiner’s position (Ans. 11) that the elements 202/302
do not prevent configuring the air-directing units of Robertson “for
installation in a group of two or more adjacent memory module locations,”
as recited in the disputed claims. We also agree with the Examiner’s
findings and conclusion (Ans. 11-12) that Robertson teaches the disputed
features of claims 25-27 and suggests the features recited in claims 7 and 8.

CONCLUSIONS
On the record before us, we conclude that, because Robertson teaches
or suggests all the claim limitations, the Examiner has not erred in rejecting
the claims as being anticipated by Robertson or as obvious over Robertson.
Therefore, we sustain the rejections of claims 1, 4, 5, 7-13, 16, and 18-27.

DECISION
The Examiner’s decision rejecting claims 1, 4, 5, 7-13, 16, and 18-27
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).
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AFFIRMED

ELD