Jon Brian. Ehlen

Patent Trials and Appeals Board

Aug 22, 2019

13657602 - (D) (P.T.A.B. Aug. 22, 2019)

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.
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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).
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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.
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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
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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
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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
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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.
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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
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“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
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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
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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.
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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