FUJITSU LIMITED

Patent Trials and Appeals Board

Sep 22, 2020

14385302 - (D) (P.T.A.B. Sep. 22, 2020)

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.
14/385,302 09/15/2014 Michael Kleineberg FTS.11-00800 5960
79326 7590 09/22/2020
Fujitsu Technology & Business of America
2318 Mill Road, Suite 1420
Alexandria, VA 22314
EXAMINER
ZAMAN, FAISAL M
ART UNIT PAPER NUMBER
2185
NOTIFICATION DATE DELIVERY MODE
09/22/2020 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):
fpc-mailroom@fujitsu.com
pamelabrisky@system.foundationip.com
tiep.nguyen@fujitsu.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte MICHAEL KLEINEBERG, BERNHARD SCHRÄDER, and
VAN SON NGUYEN1
_____________

Appeal 2019-002990
Application 14/385,302
Technology Center 2100
______________

Before JOSEPH L. DIXON, JOHN A. EVANS, and
JUSTIN BUSCH, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of Claims 13–16, 18–23, 27–32, 35, and 36.
Appeal Br. 2. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). The Appeal Brief identifies Fujitsu Technology
Solutions Intellectual Property GmbH, as the real party in interest. Appeal
Br. 3.
Appeal 2019-002990
Application 14/385,302

2

INVENTION
The invention is directed to a modular server system. See Abstract.
Claims 13, 22, 29, and 30 are independent. Claim 13, reproduced below, is
illustrative of the invention.
13. A modular server system comprising:
[a]2 a plurality of server groups, wherein each server group is
adapted to receive a plurality of server modules, and
[b] a plurality of I/O groups, wherein each I/O group is
adapted to receive a plurality of I/O components and comprises
at least one switch element,
[c] wherein, for each given I/O group of the plurality of I/O
groups, the given I/O group is allocated to exactly one given
server group of the plurality of server groups,
[d] each one of the server modules of only the given server
group is directly coupled by a first point-to-point connection to
the at least one switch element of the given I/O group;
[e] each one of the I/O components of the given I/O group is
directly coupled by a second point-to-point connection to the at
least one switch element of the given I/O group,
[f] the at least one switch element of the given I/O group is
coupled by a third point-to-point connection to the at least one
switch of another I/O group of the plurality of I/O groups
allocated to another server group of the plurality of server
groups,
[g] each one of the server modules of the given server group
establishes dedicated first data connections with I/O
components of the given I/O group using only a single switch
element of the given I/O group to directly connect a

2 Limitation designators, e.g., “[a],” added to facilitate discussion. See
Appeal Br. 14.
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Application 14/385,302

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corresponding first point-to-point connection to a
corresponding second point-to-point connection, and
[f] each one of the server modules of the given server group
establishes shared second data connections with I/O
components of the other I/O group using the at least one switch
element of the given I/O group and the at least one switch
element of the other I/O group to indirectly connect the
corresponding first point-to-point connection via the third
point-to-point connection to a corresponding second point-to-
point connection.

PRIOR ART
Name3 Reference Date
Uehara US 2009/0265501 A1 Oct. 22, 2009
Felton US 8,005,999 B1 Aug. 23, 2011

REJECTIONS4 AT ISSUE5
1. Claims 13–16, 18–23, 27, 28, 30–32, 35, and 36 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Uehara. Final Act. 2–9.
2. Claim 29 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Uehara and Felton. Final Act. 9–12.

3 All citations herein to the references are by reference to the first named
inventor/author only.
4 The present application was being examined under the pre-AIA first to
invent provisions. Final Act 2.
5 Throughout this Decision, we refer to the Appeal Brief (“Appeal Br.”) filed
November 1, 2018, the Reply Brief (“Reply Br.”) filed March 5, 2019, the
Final Office Action (“Final Act.”) mailed May 18, 2018, the Examiner’s
Answer mailed January 8, 2019, and the Specification (“Spec.”) filed
September 15, 2014.
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Application 14/385,302

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ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejections.

CLAIMS 13–16, 18–23, 27, 28, 30–32, 35, AND 36:
OBVIOUSNESS OVER UEHARA.
Appellant argues the claims as a group in view of the limitations of
Claim 13. See Appeal Br. 15.
Claim 13 recites, inter alia:
[E]ach one of the server modules of the given server group
establishes dedicated first data connections with I/O
components of the given I/O group using only a single switch
element of the given I/O group to directly connect a
corresponding first point-to-point connection to a
corresponding second point-to-point connection.
Claim 13 (Limitation [g]).
The Examiner finds this limitation is not taught by Uehara. Final Act.
4. The Examiner finds:
[I]t would have been obvious to one having ordinary skill in the
art at the time the invention was made to have utilized a single
switch in place of two switches (e.g., using only a single switch
300e in place of both switches 300c and 300e), since it has been
held that omission of an element and its function in a
combination where the remaining elements perform the same
function as before involves only routine skill in the art.
Id. (citing Ex parte Wu, 10 USPQ2d 2031 (Bd. Pat. App. & Inter. 1989); In
re Kuhle, 526 F.2d 553 (CCPA 1975)).
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Appellant contends: using only a single switch 300e in place of both
switches 300c and 300e does not result in an omission of an element, where
the remaining elements perform the same function as before. Appeal Br. 16.
Appellant argues in addition to failing to teach Limitation [g], Uehara
further fails to teach Limitations [d], [f], and [h]. Id. Specifically, with
respect to Limitation [d], Appellant contends active servers 100a through
100d and the standby servers 110e and 110f are not coupled directly to a
switch element of a given I/O group, i.e. the I/O side switches 300e or 300f.
Id.
Appellant contends:
In order to maintain the same functionality as provided in the
original system disclosed in Figure 25 of Uehara, the skilled
person would have to provide four connections between the
“left” switch 300e and the “right” switch 300f. This is due to
the fact that the original system architecture of Uehara allows
two cross-connections from each of the server side switches
300c and 300d to each of the I/O side switches 300e and 300f,
effectively allowing up to two dedicated data connections from
the active servers 100a to 100c to any of the I/O devices
connected to the I/O side switch 300f. Inversely, the system
disclosed by Uehara also discloses up to two cross-connections
from the servers 100d, l00e and 100f to any of the I/O devices
connected to the left I/O side switch 300e. Such a functionality
can only be implemented by providing at least four independent
point-to-point connections between the left and right switches
300e and 300f.
Appeal Br. 18–19. Appellant argues:
Moreover, the applicant notes that the required 3x4x8 port
switches of such a hypothetical, vertically combined system
would greatly increase the complexity of the switch elements.
Not only would they result in switches having a great number
of ports, but it would also result in a significantly more
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complicated internal switching circuitry for providing five
parallel channels per switch, each with a large number of
independent data lanes in case of PCI express connections.
Appeal Br. 19.
The Examiner does not respond to Appellants analysis of the
Examiner’s proposed modification of Uehara. Rather, the Examiner finds:
“[t]he only modification of the Uehara system would be omitting the switch
300e. As stated in the Final Office action (see page 4), this modification is
supported by relevant case law.” Ans. 3; see Final Act. 4 (citing Kuhle, 526,
F.2d 553).
Kuhle found a prior art switch, and its function, could be omitted
where the deleted function was provided by other members. See Kuhle, 526
F.2d at 555.
Appellant argues with evidence that the Examiner’s proposed
modification would result in the omission of a claimed function. See Appeal
Br. 18–26. Rejections based on obviousness must be supported by “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(citation omitted) (quoted in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007)). The Examiner does not substantively reply to Appellant’s
argument. Here, the Examiner has not provided an “articulated reasoning
with some rational underpinning” to support modifying Uehara. Rather, the
Examiner merely states: “this modification is supported by relevant case
law.” Ans. 3. The Examiner merely speculates that “it would have been
obvious to one having ordinary skill in the art at the time the invention was
made to have utilized a single switch in place of two switches (e.g., using
only a single switch 300e in place of both switches 300c and 300e).” Final
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Act. 4. “The Patent Office . . . may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.” In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967).
In view of the foregoing, we decline to sustain the rejection of Claims
13–16, 18–23, 27, 28, 30–32, 35, and 36 under 35 U.S.C. § 103(a).
CLAIM 29: OBVIOUSNESS OVER UEHARA AND FELTON.
Appellant contends Claim 29 is patentable in view of Claim 13.
Appeal Br. 31. The Examiner does not separately discuss Claim 29. See
Answer.
In view of the foregoing, we decline to sustain the rejection of Claim
29 under 35 U.S.C. § 103(a).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
13–16, 18–
23, 27, 28,
30–32, 35,
36
103(a) Uehara 13–16, 18–
23, 27, 28,
30–32, 35,
36
29 103(a) Uehara, Felton 29
Overall 13–16, 18–
23, 27–32,
35, 36.

REVERSED