Jon Brian. EhlenDownload PDFPatent Trials and Appeals BoardAug 22, 201913657602 - (D) (P.T.A.B. Aug. 22, 2019) Copy Citation 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. 13/657,602 10/22/2012 Jon Brian Ehlen 26295-20578/US 2562 87851 7590 08/22/2019 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 EXAMINER AYRES, TIMOTHY MICHAEL ART UNIT PAPER NUMBER 3637 NOTIFICATION DATE DELIVERY MODE 08/22/2019 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): fwfacebookpatents@fenwick.com ptoc@fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JON BRIAN EHLEN ____________ Appeal 2019-000028 Application 13/657,602 Technology Center 3600 _______________ Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 2, 4–6, 9–11, 13, 15, 16, and 22–26.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Facebook, Inc. is identified as the real party in interest. Appeal Br. 1. 2 Appeal is taken from the Final Office Action dated July 10, 2017. Appeal 2019-000028 Application 13/657,602 2 CLAIMED SUBJECT MATTER Claims 1 and 11 are the independent claims on appeal. Claim 1, reproduced below, is exemplary of the subject matter on appeal. 1. A server cabinet for housing rack-mounted computing assets comprising: a plurality of chassis configured to house one or more of the rack-mounted computing asset, each chassis having a pair of opposing sides; a front spring loaded pin and a rear spring loaded pin on each opposing side of the chassis, each spring loaded pin having a protruding element and a spring configured to push the protruding element outside of the chassis; and a rack comprising a pair of opposing side panels each formed from a flat single continuous metal sheet, each opposing side panel having a plurality of slots, each slot configured to receive the protruding elements of the front spring loaded pin and the rear sprin[g] loaded pin and support the chassis in the rack, the slots being spaced at a multiple of one half of a rack unit and perpendicular to an opening of the rack and parallel to each opposing side of the chassis, each slot being formed as a cutout of the flat single continuous metal sheet forming each of the opposing side panels. THE REJECTIONS I. Claims 1, 2, 4–6, 10, 11, 13, 16, and 22–26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hegrenes (US 6,622,873 B2; issued Sept. 23, 2003) and Mushan (US 7,857,145 B2; issued Dec. 28, 2010). II. Claims 1, 2, 4–6, 9–11, 13, 15, 16, and 22–26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Pagliaccio (US 5,549,375; issued Aug. 27, 1996) and Schmidtke (US 7,810,653 B2; issued Oct. 12, 2010). Appeal 2019-000028 Application 13/657,602 3 III. Claims 1, 2, 4–6, 9–11, 13, 15, 16, and 22–26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Westphall (US 2011/0284706 A1; published Nov. 24, 2011) and Schmidtke. ANALYSIS Rejection I Regarding independent claim 1, the Examiner finds, inter alia, that Hegrenes discloses a chassis (i.e., rail assemblies 22) having pins 42 on a pair of opposing sides of the chassis. Final Act. 2; see, e.g., Hegrenes Fig. 1. The Examiner also finds Hegrenes discloses a rack comprising a pair of opposing side panels (i.e., “the face of the posts” 16a, 16b), which have slots (i.e., mounting apertures 18), wherein each of the side panels are formed from a flat single continuous metal sheet, as claimed. Id. The Examiner determines that “[t]he post and flange (20) are formed from continuous metal that is considered to be/have been in flat sheet form before being processed.” Id.; see also Ans. 33 (finding that Hegrenes discloses side panels formed from a flat single continuous metal sheet, because Hegrenes’ posts 16a, 16b and flange are formed from flat, single continuous metal sheets in the process of being made). Claim 1 recites “side panels,” and an ordinary definition of the claim term “panel,” in view of the Specification, is “a usually rectangular piece of construction material (such as plywood or precast masonry) made to form part of a surface.” http://merriam-webster.com/dictionary/panel (last visited Aug. 12, 2019). Appellant argues that “neither Hegrenes nor Mushan have 3 We refer to the Examiner’s Answer dated Sept. 13, 2018. Appeal 2019-000028 Application 13/657,602 4 side panels at all” (Appeal Br. 7), and we are persuaded by Appellant’s argument. In other words, we agree with Appellant that it is unreasonable to find that a single face of one of Hegrenes’ posts 16a, 16b discloses one of the claimed pair of side panels, wherein each side panel has a plurality of slots, as claimed, because one skilled in the art would consider the entirety of the post 16a, 16b and flange 20, as corresponding to the claimed side panel, because flange 20 is the structure in Hegrenes having the slots (or mounting apertures 18). Notably, the Examiner does not propose modifying Hegrenes’ posts 16a, 16b and flange 20 to be a side panel. See Hegrenes 4:11–17 (“although a particular design and configuration of the rack 14, posts 16 and mounting apertures 18 are shown and described herein, it should be readily understood by one of ordinary skill in the art that this invention is application to a rack of any design and configuration”); Schmidtke, 3:4–6, Fig. 2 (depicting rail 200 coupled to rack system 110 between adjacent posts 121, 122, wherein rail 200 is a rectangular piece of construction material made to form part of a surface). The Examiner’s reliance on Mushan for disclosing spring loaded pins does not cure the deficiencies in the Examiner’s reliance on Hegrenes as discussed supra. Final Act. 3–4 (citing Mushan Figs. 8, 31). Accordingly, we do not sustain the Examiner’s rejection of independent claim 1 and claims 2, 4–6, 10, and 22–24 depending therefrom under 35 U.S.C. § 103(a) as unpatentable over Hegrenes and Mushan. The Examiner relies on the same findings from Hegrenes for the same claim recitations in independent claim 11, and therefore, for essentially the same reasons as set forth supra, we also do not sustain the Examiner’s rejection of Appeal 2019-000028 Application 13/657,602 5 claims 11, 13, 16, 25, and 26 under 35 U.S.C. § 103(a) as unpatentable over Hegrenes and Mushan. Final Act. 2–3. Rejection II Appellant argues claims 1, 2, 4–11, 13, 15, 16, 23, 24, and 26 as a group. Appeal Br. 8–10. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (2015). The Examiner finds, inter alia, Pagliaccio discloses a rack (i.e., housing 18) with a pair of opposing side panels (i.e., at reference numeral 25) having slots (i.e., holes 24) that receive pins (i.e., screws 23) from a chassis (i.e., drawer 13). Final Act. 3–4; see e.g., Pagliaccio, Fig. 1. The Examiner relies on Schmidtke for disclosing spring-loaded pins (hangers 300, springs 400). Final Act. 3; see, e.g., Schmidtke, Fig. 4a, 4b. The Examiner reasons that it would have been obvious to a person of ordinary skill in the art to modify Pagliaccio’s server cabinet (or more correctly, computer storage drawer system) by “adding spring loaded pins,” as taught by Schmidtke, “to make [it] easier to remove the chassis from the rack.” Id. at 4; see also Ans. 6 (reasoning that modifying Pagliaccio’s pins to be spring-loaded, as taught by Schmidtke, “would be within the level of one of ordinary skill in the art to make it easier to withdraw the chassis due to not needing tools”). Appellant submits that Pagliaccio discloses “a housing for a single desktop computer that houses disk drives and other components of a standard desktop computer to which one attaches a monitor, mouse, and keyboard,” and not “a server cabinet,” as claimed, which “in contrast to a housing for a desktop computer, is much larger, houses many computing Appeal 2019-000028 Application 13/657,602 6 devices, and must therefore be constructed to support much more relative weight.” Appeal Br. 8–9; Reply Br. 3. Appellant argues that “modifying a housing for a single desktop computer as taught by Pagliaccio with the teachings of the Schmidtke server rack would not yield predictable results nor the claimed server rack,” and “[n]either would it be obvious to try.” Id. at 9. The Examiner responds that claims do not “preclude or distinguish” between the structures as relied on and disclosed by Pagliaccio, in comparison to the claimed structures. Ans. 5–6. We are not persuaded by Appellant’s argument. Notably, the claim term “server cabinet,” and specifically, “cabinet” does not appear in the Specification or claims as originally filed. Cf. http://www.merriam- webster.com/dictionary/cabinet (last visited Aug. 12, 2019) (defining “cabinet” as “a case or cupboard usually having doors and shelves). We decline to read into the claim term “server cabinet” inherent qualities such as a construction that supports more weight relative to a standard desktop computer. Further, the recitation “for housing rack-mounted computing assets,” which appears in the preamble of claim 1, is a recitation of the intended use of the claimed server cabinet, which we decline to give patentable weight. Generally, a preamble is not limiting where an applicant defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention. See Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). We are also not persuaded by Appellant’s argument that providing a spring-loaded pin does not yield a predictable result (i.e., a tool-less assembly), as reasoned by the Examiner supra. Rather, Appellant’s Appeal 2019-000028 Application 13/657,602 7 argument amounts to unsupported attorney argument, and therefore we give it little weight. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (it is well settled that unexpected results must be established by factual evidence). Appellant also recites certain claim language and concludes that the Examiner’s combination fails to disclose it.4 Appeal Br. 9–10; Reply Br. 3. However, the Appeal Brief does not provide any substantive arguments to support this position, or to rebut the specific findings made by the Examiner in the Final Action, or provide any analysis of the cited specific textual portions of the cited references upon which the Examiner relied in the rejections. Attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (stating “the Board reasonably interpreted Rule 41.37 to require 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”). Accordingly, we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Pagliaccio and Schmidtke and claims 2, 4–6, 10, 11, 13, 16, and 22–26 fall therewith. 4 Notably, Pagliaccio discloses that “[t]he housing and the drawer may be constructed of metal,” wherein “[t]he housing functions as an outer sleeve for the drawer, it is five sided, open at the face and has seams that are air tight,” which implies that the opposing side panels may each be formed from a flat single continuous metal sheet. Pagliaccio 2:1–8, Figs. 1, 4. Appeal 2019-000028 Application 13/657,602 8 Rejection III Appellant argues claims 1, 2, 4–11, 13, 15, 16, 23, 24, and 26 as a group. Appeal Br. 8–10. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (2015). The Examiner finds, inter alia, that Westphall discloses a rack with a pair of opposing side panels having slots that “create flanges to hold the chassis.” Final Act. 3–4 (citing Westphall Fig. 5); Ans. 6 (“Westphall teaches using a single integral panel that is stamped to support multiple chassis”). The Examiner relies on Schmidtke for disclosing a chassis with four spring-loaded pins (hangers 300, springs 400), wherein each pin slides in a slot formed on a side panel 200 (i.e., openings formed through rail 200 to receive hangers 300). Final Act. 3 (citing Schmidtke, Fig. 2); see also Schmidtke 3:9–12). The Examiner also relies on Schmidtke for disclosing a server cabinet (i) that “allow[s] for different height[s] of multiple chassis” (id. (citing Schmidtke 2:35–42)); (ii) is “designed for use with standardized sized equipment known as a rack unit” (id. (citing Schmidtke 2:43–51)); and (iii) “could be adjusted to other sizes”) (id. (citing Schmidtke 2:58–67). The Examiner reasons that it would have been obvious to a person of ordinary skill in the art to modify Westphall’s server cabinet “by replacing the shelf flanges with . . . slots and adding spring loaded pins to the chassis,” as taught by Schmidtke, “to make [it] easier to remove the chassis from the rack.” Id. at 4. Alternatively, the Examiner finds, inter alia, that Schmidtke discloses a rack and a chassis, wherein the chassis has spring loaded pins (i.e., hangers 300, springs 400). Final Act. 6. The Examiner relies on Westphall for disclosing a pair of opposing side panels (i.e., rack side walls 20) with Appeal 2019-000028 Application 13/657,602 9 “numerous slots that create numerous flanges to hold multiple chassis in many different positions.” Id. at 7. The Examiner reasons that it would have been obvious to a person of ordinary skill in the art to modify Schmidtke’s rack system “by making the panels bigger with multiple slots,” as taught in Westphall, “to allow for minimal hardware to be used in the installation when multiple chassis are used in the rack and since it has been held that the use of one-piece construction instead of multi piece structure would be merely a matter of obvious engineering choice.” Id. (citing MPEP § 2144.04(V)(B). Appellant argues that Westphall’s cutouts in the side wall … “are merely the result[] of the creation of the ‘subshelves 34’” for the purpose of “reduc[ing] an amount of material used to construct the Westphall design.” Appeal Br. 10–11. However, Appellant’s argument does not address the Examiner’s rejection, which modifies Westphall’s subshelves 34 for supporting computing assets with Schmidtke’s slots for receiving pins of a chassis to support computing assets, to make it easier to remove the chassis from the rack, as set forth supra. Notably, Westphall’s shelves are intended to function to support servers. See, e.g., Westphall ¶ 17 (“bulk rail bracket 10 . . . has support shelf rows 12 . . . configured such that each pair of rows is positioned so that the two support shelf rows in the pair are spaced by a height 14 that is approximately a multiple of a rack unit size”). In other words, the Examiner is substituting Westphall’s shelves with Schmidtke’s slots, and where “a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” In Appeal 2019-000028 Application 13/657,602 10 re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Appellant also argues that “it is unclear how the design of Westphall and Schmidtke are compatible, let alone obvious to combine.” Appeal Br. 12. In support, Appellant submits that “[w]hile both the hangers of Schmidtke . . . and the subshelves of Westphall support the weight of a chassis, the cutouts in the side wall created by forming the subshelves of Westphall do not run the length of the Westphall cabinet,” such that “[the] portions of the side wall would bar movement of the ‘hangers 300’ of Schmidtke and prevent the chassis from being fully inserted into the cabinet.” Id. at 12–13. The Examiner correctly responds that, according to the Examiner’s modification, which modifies Westphall by substituting Schmidtke’s slots in place of Westphall’s shelves, as set forth supra, “[t]he slots, gaps, and shel[v]es of Westphall are no longer present in the combination since they are replaced with the alternative structures (slots and pins) as taught by Schmidtke.” Ans. 6–7. Appellant further argues that “Westphall is not motivated by making it ‘easier to remove the chassis form the rack,’” and therefore, the Examiner’s proposed modification lacks a motivation to combine the references, other than by improper hindsight. Appeal Br. 13. However, the Examiner’s reasoning is factually supported by Schmidtke, which discloses that rack systems that permanently mount devices using conventional fasteners “make[] it difficult to replace devices” (Schmidtke 1:18–21), wherein releasable hangers for engaging rails “enables the device 100 to readily slide in and out of the rack system” (id. at 3:63–67). Appellant’s hindsight argument is of no moment where, as here, the Examiner provided a Appeal 2019-000028 Application 13/657,602 11 sufficient, non-hindsight reason to combine the references. See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016). Regarding Appellant’s final argument that the Examiner erred by determining that claim 1 recites a product-by-process claim, Appellant’s argument does not apprise us of error in the Examiner’s reliance on either Westphall or Schmidtke for disclosing that side panels of the rack may be formed from a flat single continuous metal sheet. Appeal Br. 13; Final Act. 6; see Westphall ¶ 1 (“[t]he present invention relates generally to brackets used within rack mount systems, and more specifically to sheet metal brackets used to guide and secure servers into server rack mount systems”), Fig. 5 (depicting bulk rack bracket 10 as a side panel); Schmidtke 3:9–12 (“rail 200 may comprise an opening formed through the rail 200), 3:20 (“rail 200 may comprise a flat face 220”), 3:30 (“rail 200 . . . may also be manufactured from steel”), Fig. 2. Accordingly, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Westphall and Schmidtke and claims 2, 4–11, 13, 15, 16, 23, 24, and 26 fall therewith. We decline to consider Appellant’s arguments addressing the Examiner’s alternative reliance on Schmidtke as a primary reference, modified in view of Westphall. Appeal Br. 14–16; Final Act. 6–8. DECISION The Examiner’s rejection of claims 1, 2, 4–6, 10, 11, 13, 16, and 22– 26 under 35 U.S.C. § 103(a) as unpatentable over Hegrenes and Mushan is REVERSED. Appeal 2019-000028 Application 13/657,602 12 The Examiner’s rejection of claims 1, 2, 4–6, 9–11, 13, 15, 16, and 22–26 under 35 U.S.C. § 103(a) as unpatentable over Pagliaccio and Schmidtke is AFFIRMED. The Examiner’s rejection of claims 1, 2, 4–6, 9–11, 13, 15, 16, and 22–26 under 35 U.S.C. § 103(a) as unpatentable over Westphall and Schmidtke 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation