Ex Parte Roth

Patent Trial and Appeal Board

Jun 29, 2016

12243213 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/243,213 10/01/2008
73325 7590 07/01/2016
Matthew G, McKinney
Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
255 South Orange A venue
Suite 1401
Orlando, FL 32801
FIRST NAMED INVENTOR
Jason Todd Roth
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.
0122790 (555-02) 9872
EXAMINER
THOMPSON, JASON N
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
mmckinney@addmg.com
creganoa@addmg.com
skemraj@addmg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON TODD ROTH
Appeal2014-003497
Application 12/243,213
Technology Center 3700
Before MICHELLE R. OSINSKI, JILL D. HILL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Jason Todd Roth (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's final decision rejecting claims 1-5, 7-13, and 20. Claim 6 is
cancelled, and claims 14--19 are withdrawn. Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2014-003497
Application 12/243,213
THE CLAIMED SUBJECT MATTER
Claims 1 and 20 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
1. A system for cooling electronic equipment, the system
compnsmg:
a cabinet adapted to house a plurality of electronic
equipment racks, the cabinet having an inlet port and an exit port;
at least one thermal barrier substantially dividing the
cabinet into at least two internal portions, wherein the inlet port
located in a first portion and the exit port located in a second
portion;
a front barrier proximate to the front portion of the cabinet
and interposed between each rack of the plurality of electronic
equipment racks;
a rear barrier proximate to the rear portion of the cabinet
interposed between each rack of the plurality of electronic
equipment racks; and
an air space formed between the front barrier and the rear
barrier. 1
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Matsushima
Koike
Sekhar
Adair
Rasmussen
Sharp
Coglitore
us 5,428,503
us 5,544,012
US 7,059,400 B2
US 2007 /0034082 Al
US 2007/0167125 Al
US 7,309,279 B2
US 7,508,663 B2
June 27, 1995
Aug. 6, 1996
June 13, 2006
Feb. 15,2007
July 19, 2007
Dec. 18, 2007
Mar. 24, 2009
1 We note that the claim refers to "the front portion" and "the rear portion"
of the cabinet, but contains no earlier recitation of these portions of the
cabinet.
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Application 12/243,213
REJECTIONS
I. Claims 1-5, 7-13, and 20 stand rejected under 35 U.S.C. 112, first
paragraph, as failing to comply with the enablement requirement.
Final Act. 2--4.
II. Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Sharp and Matsushima. Id. at 4--7.
III. Claims 2, 3, 4, 7, 8, and 10-12 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sharp, Matsushima, Rasmussen, and
Coglitore. Id. at 7-10.
IV. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Sharp, Matsushima, Rasmussen, and Koike. Id. at 11.
V. Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Sharp, Matsushima, and Sekhar. Id. at 11-12.
VI. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sharp, Matsushima, and Adair. Id. at 12.
VII. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sharp, Coglitore, and Matsushima. Id. at 13-14.
OPINION
Rejection I
The enablement provision of 35 U.S.C. § 112, first paragraph,
requires the specification of a patent application to describe the invention,
and the manner and process of making and using it, "in such full, clear,
concise, and exact terms as to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make and use the
same." "The enablement requirement ensures that the public knowledge is
enriched by the patent specification to a degree at least commensurate with
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Application 12/243,213
the scope of the claims." Nat'! Recovery Techs., Inc. v. Magnetic Separation
Sys., Inc., 166 F.3d 1190, 1195-96 (Fed. Cir. 1999).
Accordingly, the specification must provide sufficient teaching such
that one skilled in the art could make and use the full scope of the invention
without undue experimentation. CFMT, Inc. v. Yieldup Int'! Corp., 349 F.3d
1333, 1338 (Fed. Cir. 2003); Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d
1361, 1365 (Fed. Cir. 1997); In re Wands, 858 F.2d 731, 736-37 (Fed. Cir.
1988). "The key word is 'undue,' not 'experimentation."' Wands, 858 F.2d
at 737 (quoting In re Angstadt, 537 F.2d 498, 504 (CCPA 1976)). That is,
the specification need only teach those aspects of the invention that one
skilled in the art could not figure out without undue experimentation. See,
e.g., Nat'! Recovery Techs., 166 F.3d at 1196 ("The scope of enablement ...
is that which is disclosed in the specification plus the scope of what would
be known to one of ordinary skill in the art without undue
experimentation."); Wands, 858 F.2d at 736-37 ("Enablement is not
precluded by the necessity for some experimentation such as routine
screening").
Factors to be considered in determining whether a disclosure would
require undue experimentation include "( 1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, ( 6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the
claims." Wands, 858 F.2d at 737.
In calling into question the enablement of an applicant's disclosure,
the Examiner has the initial burden of advancing acceptable reasoning
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Application 12/243,213
inconsistent with enablement so as to shift the burden to the applicant to
show that one of ordinary skill in the art could have practiced the claimed
invention without undue experimentation. In re Strahilevitz, 668 F.2d 1229,
1232 (CCPA 1982).
The Examiner determines that the disclosure in the present application
is insufficient to enable one of ordinary skill in the art to make and/or use the
invention of claims 1-5, 7-13, and 20 because (1) "it is unclear what [e]ffect
the barriers have on airflow passing from cabinet inlet to cabinet outlet;" and
(2) "it is unclear how the barriers prevent cool supply air from mixing (i.e.[,]
backflow of air) with warm exhaust air." Final Act. 2-3.
As to the effect of the barriers on airflow from inlet to outlet, the
Examiner points to: (1) an inconsistency within the original specification as
to whether air moves "over" electronic equipment racks or "through" them;
(2) uncertainty as to whether the barriers are permeable or impermeable; and
(3) the depiction in the Figures where the nozzles of the diffuser connected
to the cabinet supply line are in front of the barriers, rather than the racks.
Id. (citing Spec. i-fi-120, 25, Fig. 2).
Appellant counters that Appellant "previously amended the
Specification ... to clarify that the nozzles blow supply air to the electronic
equipment racks" as opposed to over them. Br. 4 (emphasis added).
Appellant further counters that the barriers are simply "capable to function
to force supply air through the equipment rack," which the bristle brush is
capable of, and the barriers are neither described, nor claimed, as requiring
any particular amount of permeability. Id. at 4--5. Appellant additionally
counters that the nozzles are describe to "control the volume, velocity and
direction of supply air distributed throughout each cabinet," but are not
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Application 12/243,213
described, nor claimed, to be in any particular location in front of the
electronics racks. Id. at 4 (citing Spec. i-f 20). The subject claims state no
standards regarding the permeability of the barrier and state no specifics as
to the airflow from cabinet inlet to cabinet outlet or the location of the
nozzles. Therefore, it is not necessary that the Specification disclose these
features in the detail desired by Examiner, and the Examiner's position that
the Specification must be precise as to these features is unfounded. See
CFMT, 349 F.3d at 1338 (supporting that to comply with 35 U.S.C. § 112,
first paragraph, it is not necessary to "enable one of ordinary skill in the art
to make and use a perfected, commercially viable embodiment absent a
claim limitation to that effect").
As to the prevention of cool supply air from mixing with warm
exhaust air, the Examiner asserts that ( 1) the Specification provides little to
no explanation as to how the barriers prevent mixing; and (2) it is unclear
how barriers would assist in preventing mixing because a positive pressure
system will inherently prevent or limit mixing. Final Act. 3 (citing Spec.
i-fi-1 10, 17, 23, 26). Appellant counters that "insulating air space 216 between
the front and rear barriers is not required to be cooled and assists in
preventing the cool air supply from mixing with the relatively warmer
exhaust air." Br. 5 (citing Spec. i-f 23).
The Examiner's assertions that the Specification does not provide
sufficient teaching such that one skilled in the art could make and/ or use the
invention because it is unclear how the barriers prevent cool supply air from
mixing with warm exhaust air are not supported on the record by sufficient
analysis of the Wands type factors enumerated above. The Examiner does
not articulate any findings as to the quantity of experimentation that would
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be necessary to assess the barrier's ability to prevent the mixing of cool
supply air with warm exhaust air, the state of the prior art, the relative skill
of those in the art, or the predictability or unpredictability of the art. Thus,
the Examiner does not advance adequate reasoning to call into question
whether those of ordinary skill in the art would be able, without undue
experimentation, to assess the effect of the barriers on preventing the mixing
of supply air with exhaust air.
In summary, the Examiner fails to discharge the initial burden of
advancing acceptable reasoning inconsistent with enablement so as to shift
the burden to Appellant to show that one of ordinary skill in the art could
have practiced the claimed invention without undue experimentation.
Accordingly, we do not sustain the rejection of claims 1-5, 7-13, and 20
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.
Rejection II
The Examiner finds that Sharp teaches cabinet 312 housing a plurality
of electronic equipment racks (vertical housing array 315), inlet port 340,
exit port 338, and at least one cabinet supply line 390 fluidically connected
to inlet port 340. Final Act. 4 (citing Sharp, 4:14--27). The Examiner also
finds that Sharp teaches a thermal barrier substantially dividing the at least
one cabinet 312 into at least two internal portions, inlet port 340 located in a
first portion and exit port 338 located in a second portion. Id. (citing
annotated Figure 14 of Sharp on page 6 of the Final Action).
The Examiner acknowledges that Sharp fails to teach barriers located
between electronic equipment racks and turns to Matsushima's teaching of
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Application 12/243,213
"a plurality of barriers ... located between a plurality of electronic
equipment racks (1 ), where the barriers comprise apertures (7) that focus
airflow directly on the racks via jet[] streams ... which will inherently
prevent supply air from mixing with exhaust air." Id. at 4--5. The Examiner
concludes that it would have been obvious "to add barriers as taught by
Matsushima between electronic racks as disclosed by Sharp to apply cooling
airflow directly over electrical components within an electronics rack." Id.
at 5.
Appellant argues that the Examiner-identified thermal barrier of Sharp
"is simply underneath the brackets 314 and laying on the bottom of the
housing and is not a divider." Br. 6 (citing Sharp, Fig. 14 ). The Examiner
responds that Sharp's identified thermal barrier "separates supply side
airflow from exhaust side airflow by dividing the cabinet into first (326) and
second (324) internal portions (i.e., sections), thereby preventing mixing of
said supply an[d] exhaust airflows." Ans. 17. The Examiner further
responds that Sharp's basic structure is substantially similar to the instant
application because "[A]ppellant's thermal barrier (210) is also positioned
between a server element (208) and housing wall (Figure 2)" and "[t]here
does not appear to be any claim recitations that structurally distinguish the
thermal barrier [in] the instant application from Sharp." Id.
We are not persuaded that Appellant has shown error in the
Examiner's finding as to the thermal barrier. Merely because the element of
Sharp is on the bottom of the housing underneath the brackets does not mean
that it fails to meet the broad functional claim language of substantially
dividing the cabinet into a first portion having the inlet port and a second
portion having an outlet port. In particular, we determine that nothing in the
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Application 12/243,213
claim, as written, requires the first and second portions to be separated along
the entire height of the cooling device. We determine that the element of
Sharp identified by the Examiner as the thermal barrier (see annotated
Figure 14 on page 6 of Final Action) does divide the cabinet into a first
portion having the inlet port, and a second portion having an outlet port, at
least along a segment of the height of the cooling device. Moreover, neither
the claim as written, nor the Specification, requires the "thermal barrier" to
be comprised of the front and rear barriers interposed between each rack.
Therefore, the "thermal barrier," as claimed, encompasses an element
separate from the front and rear barriers. Accordingly, we agree with the
Examiner that the element of Sharp identified as the thermal barrier (see
annotated Figure 14 on page 6 of Final Action) is structurally similar to
foam element 210 illustrated in Figure 2 of the Specification in that both
extend between an end surface of the cooling device and a first electronic
equipment rack, and would require additional barriers interposed between
the racks in order to divide the cooling device along the entire height of the
cooling device.
Appellant also argues that Matsushima fails to teach or suggest front
and rear barriers interposed between each rack of a plurality of racks with an
air space formed between the front and rear barriers. Br. 6. More
particularly, Appellant argues that the Examiner-identified "air space"
"simply is an open area," rather than an air space formed between front and
rear barriers. Id. Moreover, Appellant argues that the Examiner-identified
front and rear barriers are in alignment so as to be "incapable of forming an
air space" and instead have an "intermediate 'barrier' ... interposed between
them." Id. The Examiner responds that "[t]here is no claimed structure
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Application 12/243,213
drawn to the relationship between barriers and air spaces in a way that
structurally defines over the references of record (e.g., spaces substantially
insulated from airflow)" and "[a]s a result, positioning an element (6)
comprising barriers as taught by Matsushima reads on the instant claim
language." Ans. 17.
We are not persuaded that Appellant has shown error in the
Examiner's findings merely because Matsushima' s identified front and rear
barriers are in alignment, include intermediate barriers, and have an open
area therebetween. These features do not prevent Matsushima's barriers
from meeting the broad claim language of a front barrier proximate to the
front portion and interposed between each rack, a rear barrier proximate to
the rear portion and interposed between each rack, and an air space formed
between the front and rear barriers. The Examiner's findings with respect to
Sharp and Matsushima adequately support the Examiner's rejection. In
particular, we determine the broadest reasonable interpretation of "air space"
is its ordinary and customary meaning of" [ s ]pace for the use or passage of
air" (Oxford English Dictionary, available at
http://www.oed.com/view /Entry /2697 45?redirectedFrom=air+space#eid
(last visited June 23, 2016)), which is consistent with Appellant's
Specification. The Examiner has adequately shown how Matsushima
includes space for the passage of air between front and rear barriers.
Appellant further argues that "the separate horizontal passages of
Sharp clearly teach away from the barrier installed between each electronic
equipment rack of claim 1." Br. 6. The Examiner responds that
"[i]ncorporating barriers associated with element '6' of Matsushima into the
system as disclosed by Sharp will not alter the overall horizontal (i.e., left-
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to-right) airflow path disclosed by Sharp." Ans. 17. Appellant's argument
is not persuasive because prior art does not teach away from claimed subject
matter unless the prior art criticizes, discredits, or otherwise discourages the
solution claimed, and Appellant has not identified any such passage in Sharp
that does so. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
For the foregoing reasons, we are not persuaded that the Examiner
erred in concluding that the combination of Sharp and Matsushima renders
obvious the subject matter of claim 1, and we sustain the rejection of claim 1
under 35 U.S.C. § 103(a) as unpatentable over Sharp and Matsushima.
Rejections III, IV, V, and VII
Appellant's arguments in support of the patentability of claims 2-5,
7-12, and 20 relate to the perceived deficiencies in the combined teachings
of Sharp and Matsushima. 2 Br. 7-8, 10-11. Because we have found no
2 Claim 5 requires each electronic equipment rack to comprise an internal
fan. Br. 13 (Claims App.). Although Appellant presents "additional
reasons" as to why dependent claim 5 "is allowable'' (id at 8), the additional
reason amounts to a recitation of the claim elements and a "naked assertion"
that the elements are not in the prior art. Such statements do not constitute a
separate argument for patentabiiity of claim 5 pursuant to 37 C.F.R.
§ 4L37(c)(l)(iv). See In re Lovin, 652 F.3d 1349, 1357 Fed. Cir. 2011)
(holding that the Board had reasonably interpreted the same language in the
prior n1le under 37 C.F.R. § 41.37(c)(l)(vii) as requiring "more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art."). Even considering Appellant's statements as a separate
argument, Appellants have not apprised us of error in the Examiner's finding
that Koike teaches that "individual electronic equipment racks (i.e.[,] device
modules 11 contain electronic devices 14) are provided with internal fans
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such deficiencies in the combination of Sharp and Matsushima, we are not
persuaded of error in the Examiner's rejection of claims 2-5, 7-12, and 20.
Accordingly, we sustain the rejections, under 35 U.S.C. § 103(a), of: (1)
claims 2, 3, 4, 7, 8, and 10-12 as unpatentable over Sharp, Matsushima,
Rasmussen, and Coglitore; (2) claim 5 as unpatentable over Sharp,
Matsushima, Rasmussen, and Koike; (3) claim 9 as unpatentable over Sharp,
Matsushima, and Sekhar; and (4) claim 20 as unpatentable over Sharp,
Coglitore, and Matsushima.
Rejection VI
Claim 13 recites that "the distribution unit further compris[ es] an
ionizer unit." Br. 13 (Claims App.). The Examiner acknowledges that
Sharp and Matsushima fail to teach an ionizer, but finds that Adair "teaches
an air purifier that may be used for conditioning air within an enclosed
space, comprising an ionizer for filtering and capturing particulates." Final
Act. 12 (citing Adair i-f 12, 11. 1-11). The Examiner concludes that it would
have been obvious "to provide a single, air cooled, electronics cabinet as
disclosed by Sharp with an ionizer as taught by Adair to remove particulates
from a cooling air stream." Id.
Appellant argues that "Adair describes an air purifier that is designed
to be placed in an open room" such that "Adair teaches away from an ionizer
unit as part of a distribution unit in communication with a cooling unit to
(13a)" or the Examiner's legal conclusion that it would have been obvious to
provide Sharp's already modified electronic equipment racks "with separate
fans as taught by Koi[k ]e to generate even cooling airflow rates over all
electronics assemblies.'' Final Act. 1 L
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blow the supply air through at least one main supply line." Br. 9. The
Examiner responds that "[ w ]hile the air purifier (e.g., the cooling device 100
as a whole) as taught by Adair is designed to be placed in an open room, the
ionizer unit as taught by Adair is located within the housing of the cooling
device housing." Ans. 19. Appellant's argument is not persuasive for the
reason advanced by the Examiner. Moreover, Appellant has not identified
any passage in Sharp that criticizes, discredits, or discourages the use of an
ionizer as part of a distribution unit. See Fulton, 391 F .3d at 1201.
For the foregoing reasons, we are not persuaded that the Examiner
erred in concluding that the combination of Sharp, Matsushima, and Adair
renders obvious the subject matter of claim 13, and we sustain the rejection
of claim 13 under 35 U.S.C. § 103(a) as unpatentable over Sharp,
Matsushima, and Adair.
DECISION
The Examiner's decision to reject claims 1-5, 7-13, and 20 under
35 U.S.C. 112, first paragraph as failing to comply with the enablement
requirement, is reversed.
The Examiner's decision to reject claims 1-5, 7-13, and 20 under
35 U.S.C. § 103(a) 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)(l )(iv).
AFFIRMED
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