Ex Parte Schwager et al

Patent Trial and Appeal Board

Apr 26, 2017

13280916 (P.T.A.B. Apr. 26, 2017)

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.
13/280,916 10/25/2011 Mark A. Schwager 016295.4313 7762
31625 7590
BAKER BOTTS L.L.P.
PATENT DEPARTMENT
98 SAN JACINTO BLVD., SUITE 1500
AUSTIN, TX 78701-4039
EXAMINER
CUNNINGHAM, XANTHIA C
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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):
juli.luong@BakerBotts.com
tracy. engberg @ bakerbott s. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK A. SCHWAGER and MICHAEL T. MILLER
Appeal 2016-002208
Application 13/280,916
Technology Center 2800
Before PETER F. KRATZ, DONNA M. PRAISS, and
N. WHITNEY WILSON, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1—18. We have jurisdiction pursuant to
35 U.S.C. §6.
Appellants’ claimed invention is directed to an information handling
system that can include a chassis and a storage resource assembly including
a chassis with a bezel coupled thereto via a connector. A shock isolation cap
is coupled to the storage resource via an interference fit; that is the coupling
is maintained via “friction or compression rather than a third component
such as a screw” (Spec. 14,11. 3-8).
Appeal 2016-002208
Application 13/280,916
Claim 1 is illustrative and reproduced below:
1. An information handling system comprising:
a chassis;
a storage resource assembly comprising:
a bezel coupled to the chassis by a first connector, the bezel
coupled to a storage resource by a second connector; and
a shock isolation cap coupled to the storage resource through an
interference fit, the shock isolation cap comprising a proximal end
proximate to the bezel and a distal end opposite the proximal end.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Smithson US 5,654,873 Aug. 5, 1997
Jung US 6,069,789 May 30,2000
The Examiner maintains the following grounds of rejection:
Claims 1, 4, 6—10, 12, 13, and 15—18 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Jung. Claims 2, 3, and 11 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Jung. Claims 5 and 14
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jung in
view of Smithson.
We reverse the stated rejections for substantially the reasons argued
by Appellants (App. Br. 5—12; Reply Br. 2—3). We add the following for
emphasis.
For each of the stated rejections, the Examiner bears the initial burden
of presenting a prima facie case establishing the non-patentability of the
rejected claims. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
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Appeal 2016-002208
Application 13/280,916
Anticipation Rejection
In order for the Examiner to carry the burden of establishing a prima
facie case of anticipation, the Examiner must establish where each and every
element of the claimed invention, arranged as required by the claim, is found
in a single prior art reference, either expressly or under the principles of
inherency. See generally, In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997).
Here, the Examiner has not established that Jung describes an
apparatus corresponding to the claimed apparatus/device, by specifying how
the cited portions of Jung describe an apparatus/device that includes
elements/features corresponding to all of the recited elements/features of
either of the independent claims 1 and 10, and arranged as required by either
of these claims.
In particular, Appellants argue, inter alia, that the Examiner’s reliance
on guide element 52 of Jung as corresponding to Appellants’ claimed
isolation cap is in error because the guide 52 of Jung slides along guide rail
24 of Jung for sliding an auxiliary storage resource 30 into a computer case
and Jung does not describe using an interference fit for coupling guide 52 to
auxiliary storage resource 30 of Jung, which is fixed to a body retainer 50 by
screws 70 (App. Br. 7—8; Jung Fig. 2; see Final Act. 2, 6).
Appellants contend that the Examiner erred in asserting that Jung
provides an interference fit between storage device 30 and guide 52 (App.Br.
7—9). This is because screws 70 couple Jung’s guide 52 to auxiliary storage
device 30 (id.). Thus, Appellants urge the Examiner’s rejection falls short of
establishing that Jung provides an arrangement wherein guide 52 is coupled
with storage device 30 through an interference fit in a manner corresponding
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Appeal 2016-002208
Application 13/280,916
to the coupling arrangement for Appellants isolation cap and storage
resource as required by claims 1 and 10 (App. Br. 9; Reply Br. 2; see Final
Act. 12—13; Ans. 4).
We agree with Appellants.
Jung discloses that the storage device 30 and guides 52 are
fixed/coupled by a screw 70 (col. 3,11. 15—19; Fig. 2). On the other hand,
Appellants’ claimed interference fit is a coupling maintained via “friction or
compression rather than a third component such as a screw” (Spec. 14,11. 3—
8).
Consequently, the Examiner has not established that Jung describes a
storage resource assembly including a shock isolation cap coupled to a
storage resource via an interference fit, as required by claims 1 and 10 when
Appellants’ claims are read in light of the subject Specification as they
would be interpreted by one of ordinary skill in the art.
In sum, the evidence of record supports Appellants’ arguments and
indicates that the Examiner has not carried the burden to establish that Jung
describes an apparatus/device wherein each and every element of the
claimed invention, arranged as required by claim 1 and/or claim 10, is found
such that Jung anticipates these claims, the only independent claims subject
to the anticipation rejection.
It follows that we reverse the Examiner’s anticipation rejection.
Obviousness Rejections
Certain dependent claims are subject to an obviousness rejection over
Jung taken alone and other dependent claims are subject to an obviousness
rejection over Jung taken with Smithson. All of these separately rejected
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Appeal 2016-002208
Application 13/280,916
dependent claims require the features of independent claim 1 or independent
claim 10. In the stated obviousness rejections, the Examiner addresses the
additional feature(s) required by the separately rejected dependent claims
without further specifying how Jung taken alone or with Smithson would
have suggested the features of the independent claims (Final Act. 9—12). For
reasons discussed above, the Examiner’s separate rejections of certain
dependent claims fall short because the Examiner has not articulated how the
obviousness position advocated for the additional features added by these
dependent claims overcomes the deficiencies in the base anticipation
rejection upon which the obvious rejections are predicated.
Accordingly, we reverse the Examiner’s obviousness rejections on
this appeal record.
CONCLUSION
The Examiner’s decision to reject the appealed claims is reversed.
REVERSED
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