Ex Parte Greenwald et al

Board of Patent Appeals and Interferences

Jun 30, 2009

10692839 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WILLIAM B. GREENWALD and RICHARD C. EVANS
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Appeal 2008-004685
Application 10/692,839
Technology Center 3600
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Decided: 1 June 30, 2009
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Before WILLIAM F. PATE, III, JENNIFER D. BAHR and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

Opinion for the Board filed by McCARTHY, Administrative Patent Judge.

Opinion Dissenting filed by BAHR, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 (2008), begins to run from the
Decided Date shown on this page of the decision. The time period does not
run from the Mail Date (paper delivery) or the Notification Date (electronic
delivery).

Appeal 2008-004685
Application 10/692,839

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The Appellant appeals under 35 U.S.C. § 134 (2002) from the 1
Examiner’s decision finally rejecting claims 1-17 and 20-23 under 35 U.S.C. 2
§ 103(a) (2002) as being unpatentable over Brock and Lauchner; finally 3
rejecting claims 18, 19, 26, 27 and 31 under § 103(a) as being unpatentable 4
over Brock, Lauchner and Cheng; and finally rejecting claims 24, 25 and 28-5
30 under § 103(a) as being unpatentable over Brock, Lauchner, Cheng and 6
Klakovich. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 7
We REVERSE. 8
The claims on appeal relate to a telescoping slide assembly of a type 9
permitting technicians to gain access to a chassis mounted on the assembly 10
in a rack of computer equipment. (Spec. 5, ll. 3-6). Claim 1 is typical of the 11
claims on appeal: 12
13
1. A telescoping slide assembly 14
comprising: 15
interconnected load-carrying, intermediate, 16
and stationary slides movable relative to one 17
another to extend and retract the load-carrying and 18
intermediate slides relative to the stationary slide, 19
the load-carrying slide being formed to include a 20
keyhole-shaped slot providing an enlarged-21
diameter entry and exit portion and a narrow-width 22
post-retainer portion, the keyhole-shaped slot 23
being adapted to receive a mounting post coupled 24
to a piece of equipment to be carried on the load-25
carrying slide, and 26
a post retainer including a base coupled to 27
the load-carrying slide and an arm formed to 28
include a retention aperture and being coupled to 29
the base to move relative to the load-carrying slide 30
between a slot-opening position lying away from 31
the load-carrying slide to allow movement of the 32
mounting post into the enlarged-diameter entry and 33
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exit portion of the keyhole-shaped slot and a slot-1
closing position receiving the mounting post in the 2
retention aperture upon movement of the mounting 3
post from the enlarged-diameter entry and exit 4
portion into the narrow-width post-retainer portion 5
of the keyhole-shaped slot. 6
7
Thus, claim 1 recites a post retainer including an arm formed to 8
include a retention aperture. The arm is coupled to the base to move relative 9
to the load-carrying slide between a slot-opening position and a slot-closing 10
position. In the slot-closing position, the arm receives a mounting post in 11
the retention aperture. Claims 18, 20 and 23 similarly recite a post retainer 12
coupled to the load-carrying slide and formed to include a retention aperture 13
adapted to receive a mounting post. The post is movable relative to the load-14
carrying slide between a slot-closing position and a slot-opening position. 15
The slot-closing position is adapted to retain the mounting post in a slot in 16
the load-carrying slide and the retention aperture at the same time. Claim 26 17
recites a post retainer including a body formed to include a retention 18
aperture. The body is arranged to move from a slot-closing position to a 19
slot-opening position. The body in the slot-closing position blocks a 20
mounting post located in a rearward slot in a load-carrying slide and in the 21
retention aperture from exiting the rearward slot. The remaining claims on 22
appeal depend ultimately from one of claims 1, 18, 20, 23 and 26. 23
The Examiner concludes that: 24
25
[I]t would have been obvious to modify the 26
structure of Brock et al by providing the arm of the 27
post retainer formed to include a retention aperture 28
(instead of a raised portion as disclosed by Brock 29
at al) for the purpose of providing a secured 30
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engagement between the mounting post and the 1
post retainer, as taught by Lauchner et al, since 2
both teach alternate conventional drawer slide 3
locking structure, used for the same intended 4
purpose of locking/holding one member relative to 5
another, thereby providing structure as claimed. 6
Further, it would have been obvious to substitute 7
one known locking structure (i.e., the retention 8
aperture of Lauchner et al) for another locking 9
structure (i.e., the raised portion 263 of Brock et 10
al), because one of ordinary skill in the art would 11
have been able to carry out such a substitution, and 12
the results were reasonably predictable. 13
14
(Ans. 4-5; accord Ans. 8). With respect to the rejection of claims 24, 25 and 15
28-30, as well as the rejection of claim 31, the Examiner does not rely on 16
either Cheng or Klakovich as providing one of ordinary skill in the art 17
reason to make this substitution. (See Ans. 5-6 and 9-11 (relying on “Brock 18
et al., as modified” in view of Lauchner)). 19
This appeal turns on one issue: 20
Have the Appellants shown that the Examiner failed to 21
articulate reasoning with some rational underpinning sufficient 22
to support the conclusion that the teachings of Brock and 23
Lauchner would have provided one of ordinary skill in the art 24
reason to substitute a retention aperture for a raised portion in a 25
lock arm, as taught by Brock, for locking a mounting pin 26
projecting from a chassis in place on a load-carrying slide? 27
(See App. Br. 7-8, 10 and 11-12; Reply Br. 1.) 28
Brock discloses a mounting apparatus for mounting a computer server 29
in a server rack structure. (Brock, col. 1, ll. 52-54). Brock’s mounting 30
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apparatus includes telescoping portions 14. (Brock, col. 3, ll. 58-60). 1
Figures 1A and 14 of Brock depict each telescoping portion 14 as having 2
relatively movable intermediate and load-carrying slides. Brock further 3
discloses forming L-shaped slots 254 in the inner surfaces of the load-4
carrying slides. (Brock, col. 7, ll. 8-13). 5
Brock discloses riveting one end of a lock arm 256 to one of the load-6
carrying slides so that the other end of the lock arm 256 extends across one 7
of the L-shaped slots 254. The lock arm 256 has a raised portion 263 8
defining an inclined surface extending into the L-shaped slot 254 and toward 9
the riveted portion of the lock arm 256. (Brock, col. 7, ll. 28-34 and Figs. 10
16-17). 11
Brock discloses coupling the chassis 250 of one of the computer 12
servers to the load-carrying slide by means of mounting pins 252. Each 13
mounting pin 252 has a stem portion 253 and a head portion 255. (Brock, 14
col. 7, ll. 3-7). Brock discloses positioning the chassis 250 of the computer 15
server over the load-carrying slides so that the mounting pins 252 on the 16
chassis 250 align with transversely extending portions 262 of the L-shaped 17
slots 254. Brock further discloses lowering the chassis onto the load-18
carrying slide so that the mounting pins extend into the L-shaped slots 254. 19
Brock further discloses moving the chassis rearwardly to move the mounting 20
pins 252 into longitudinally extending portions 260 of the L-shaped slots 21
254. (Brock, col. 7, ll. 14-22). Once the mounting pins 256 move into 22
position in the longitudinally extending portions 260 of the adjacent L-23
shaped slots 254, the raised portion 263 locks the adjacent mounting pin 252 24
in place in the L-shaped slot 254. (Brock, col. 7, ll. 35-44). 25
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Lauchner discloses an assembly including a spring portion 100 1
attached to a first member 105 of a telescopic quick disconnect slide. As 2
shown in Fig. 4 of Lauchner, the spring portion 100 takes the form of a leaf 3
spring. A base or mounting portion 115 of the spring portion 100 appears to 4
be riveted as at 120 to the first member 105 while a ramp portion or arm 112 5
extends from the base portion 115. (See Lauchner, col. 3, ll. 30-38 and 52-6
54). 7
A second member 205 of Lauchner’s telescopic quick disconnect slide 8
includes a tab portion 210 acting as a raised catch capable of stopping 9
motion of the first member 105. (Lauchner, col. 4, ll. 21-25). The ramp 10
portion or arm 112 of Lauchner’s spring portion 100 includes a slot portion 11
114. (Lauchner, col. 3, l. 66 – col. 4, l. 2). Engagement between the tab 12
portion 210 and the slot portion 114 removably couples the first and second 13
members 105, 205 to stop the sliding motion of the first member 105 relative 14
to the second member 205. (Lauchner, col. 6, ll. 26-35). 15
“[W]hen a patent claims a structure already known in the prior art that 16
is altered by the mere substitution of one element for another known in the 17
field, the combination must do more than yield a predictable result.” KSR 18
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Modifying Brock’s 19
structure to meet the claim limitations would have required more than the 20
mere substitution of a retention aperture for Brock’s raised portion 263, 21
however. 22
As the Appellants point out (App. Br. 7-8; Reply Br. 1), one of 23
ordinary skill in the art could not have substituted a slot similar to that 24
disclosed by Lauchner for Brock’s raised portion 263 without also 25
lengthening the adjacent mounting pin 252 so that at least the head portion 26
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255 of the mounting pin 252 extended into the slot to lock the chassis 200 in 1
place. Lengthening the adjacent mounting pin 252 likely would require 2
further modifications to the L-shaped slot 254 in the load-carrying slide and 3
to the lock arm 256 in order to accommodate the increased length of the pin 4
252. Where, as here, the proposed modification to the assembly of the 5
primary reference would require a substantial reconstruction and redesign of 6
the elements shown in the primary reference, the modification is likely 7
unobvious. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959). The 8
Examiner’s reasoning that it would have been obvious to substitute a slot 9
similar to Lauchner’s slot portion 114 for Brock’s raised portion 263 lacks 10
rational underpinning and does not suffice to support the conclusion of 11
obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). 12
Therefore, the Appellants have shown that the Examiner failed to 13
articulate reasoning with some rational underpinning sufficient to support 14
the conclusion that the teachings of Brock and Lauchner would have 15
provided one of ordinary skill in the art reason to substitute a retention 16
aperture for a raised portion in a lock arm, as taught by Brock, for locking a 17
mounting pin projecting from a chassis in place on a load-carrying slide. 18
The Appellants have shown that the Examiner erred in rejecting claims 1-17 19
and 20-23 under § 103(a) as being unpatentable over Brock and Lauchner. 20
The Examiner does not point to any teaching or suggestion in either of 21
the secondary references, Cheng or Klakovich, that would have provided 22
one of ordinary skill in the art reason to make this substitution. Therefore, 23
the Appellants have shown that the Examiner erred in rejecting claims 18, 24
19, 26, 27 and 31 under § 103(a) as being unpatentable over Brock, 25
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Lauchner and Cheng; and in rejecting claims 24, 25 and 28-30 under § 1
103(a) as being unpatentable over Brock, Lauchner, Cheng and Klakovich. 2
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DECISION 4
We REVERSE the decision of the Examiner to reject claims 1-31. 5
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REVERSED 7
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BAHR, Administrative Patent Judge, DISSENTING. 1
I cannot join in the majority opinion. Quite simply, I do not share the 2
view of my colleagues that the modifications of Brock required to 3
accommodate the substitution of one conventional slide locking mechanism 4
for another, as proposed by the Examiner (Ans. 4-5), amount to “substantial 5
reconstruction and redesign of the elements shown in the primary reference.” 6
Rather, “lengthening the adjacent mounting pin 252 so that at least the head 7
portion 255 of the mounting pin 252 extended into the slot to lock the 8
chassis 200 in place” and “further modifications to the L-shaped slot 254 in 9
the load-carrying slide and to the lock arm 256 in order to accommodate the 10
increased length of the pin 252” strike me as relatively simple and 11
predictable mechanical modifications, well within the technical grasp of a 12
person of ordinary skill in the art. 13
In order to support a conclusion of obviousness, all of the features of 14
the secondary reference need not be bodily incorporated into the primary 15
reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, the 16
artisan is not compelled to blindly follow the teaching of one prior art 17
reference over the other without the exercise of independent judgment. Lear 18
Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). 19
“A person of ordinary skill is also a person of ordinary creativity, not 20
an automaton.” KSR, 550 U.S. at 421. An improvement that is nothing 21
more than the predictable use of prior art elements according to their 22
established functions is likely to be obvious. Id. at 417. The majority has 23
not convinced me that the modification of Brock proposed by the Examiner 24
is anything more than that. 25
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The majority states that “[t]he Examiner’s reasoning that it would 1
have been obvious to substitute a slot similar to Lauchner’s slot portion 114 2
for Brock’s raised portion 263 lacks rational underpinning and does not 3
suffice to support the conclusion of obviousness.” I do not agree. The 4
Examiner points out that Lauchner and Brock teach alternative conventional 5
drawer slide locking structures, used for performing the same function of 6
locking/holding one member relative to another. Ans. 5. Neither the 7
majority nor Appellant has specifically contested that finding. As noted 8
above, a modification, such as the one proposed by the Examiner, which is 9
nothing more than the predictable use of prior art elements according to their 10
established functions, is likely to be obvious. 11
The majority appears to require the Examiner to point to a “teaching 12
or suggestion in [the applied references] that would have provided one of 13
ordinary skill in the art reason to make” the proposed substitution. 14
However, the Supreme Court has stated that a rigid insistence on teaching, 15
suggestion, or motivation is incompatible with its precedent concerning 16
obviousness. KSR, 550 U.S. at 419. Rejections on obviousness grounds 17
must be supported by “some articulated reasoning with some rational 18
underpinning” to combine the known elements in the manner required in the 19
claim at issue. Id. at 418. However, “the analysis need not seek out precise 20
teachings directed to the specific subject matter of the challenged claim, for 21
a court can take account of the inferences and creative steps that a person of 22
ordinary skill in the art would employ.” Id. The Examiner articulates a 23
reason for the substitution supported by some rational underpinning in the 24
paragraph bridging pages 4 and 5 of the Answer. Inasmuch as the majority’s 25
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analysis has not persuaded me that the rejections should be reversed, I 1
respectfully dissent. 2
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BARNES & THORNBURG LLP 13
11 SOUTH MERIDIAN 14
INDIANAPOLIS, IN 46204 15