DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Reply Under 37 CFR 1.111
The submission of the reply filed on 4/13/2026 to the non-final Office action of 2/26/2026 is acknowledged. Claims 1-12 and 14-20 currently pending. The Office action follows.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of 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, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of 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, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 1 and 16 recites the limitations “a retainer for holding a PCI (a computer) card”. The specification does not explain how the aforementioned functionality is accomplished.
Furthermore, claims 2 and 17 recite the limitations “the lever is operably connected to a release button, the release button for releasing the lever from a first position to a second position”. Likewise, the specification does not explain how the aforementioned functionality is accomplished.
Furthermore, claim 17 recites the limitations “wherein the lever and release button permit a release of the housing from the desktop workstation by hand without a use of a tool”. Likewise, the specification does not explain how the aforementioned functionality is accomplished.
Furthermore, claims 15 and 20 recite the limitations “the lever is operable for insertion of the peripheral component interconnect into the printed circuit board and for removal of the removal of the peripheral component interconnect from the printed circuit board”. Likewise, the specification does not explain how the aforementioned functionality is accomplished.
Accordingly, all of the aforementioned claimed functionality is not enabled. After considering all of the Wands factors, and specifically, that there is no adequate direction provided by the inventor/applicant, the Office has concluded that the quantity of experimentation needed to make or use the invention based on the content of the instant disclosure will be high and undue to a person of the ordinary skill, and therefore, such a person will not be able to make and use the claimed invention without resorting to undue experimentation. See In re Brown, 477 F.2d 946, 177 USPQ 691 (CCPA 1973); In re Ghiron, 442 F.2d 985, 169 USPQ 723 (CCPA 1971).
All remaining dependent claims have been also rejected since they inherit the aforementioned problems of the parent claims.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 5, 6, 10-12, 14-16, 19, and 20, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 9, 996, 124 to Ent et al. (hereafter “Ent”).
Regarding claims 1, 10-12, 16, and 19, as best understood, Ent discloses a peripheral component interconnect (PCI) (col. 2, ll. 49-54; Figs. 1-3, 5, and 6) for a desktop workstation (100) comprising: a housing (350); a lever (695-1) attached to a first side of the housing; a compartment (within (350)) configured to house one or more fans (357); a retainer (355) for holding a PCI (col. 2, ll. 49-54) card (650); and one or more electrical couplings (652) (col. 2, ll. 43-48) on an underside of the housing, the one or more electrical couplings comprise floating tolerance (inherently, some tolerance is present, and it can be interpreted as “floating”, since it will inherently provide some play in the electrical couplings) and configured for direct coupling to a printed circuit mother board (PCB) (320) on the workstation (100) without a use of cables (col. 2, ll. 35-67).
Regarding claims 5, as best understood, Ent discloses that the electrical couplings comprise control signal couplings and power couplings (col. 2, ll. 35-67).
Regarding claim 6, as best understood, Ent discloses a baffle (the housing (350) forms the baffle, also see vents on front plate) for receiving air flows from the one or more fans (357).
Regarding claim 14, as best understood, Ent discloses a second lever (695-2) attached to a lateral side of the housing, the second side of the housing opposite the first side of the housing (Figs. 5, 6, 9, 10).
Regarding claims 15 and 20, as best understood, Ent discloses that the lever (695-1) is operable for insertion of the peripheral component interconnect (350) into the printed circuit board (320) and for removal of the peripheral component interconnect from the printed circuit board (see “locked” and “unlocked” states in col. 7-8).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 7-9, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Ent.
Regarding claims 7, 8, and 18, Ent discloses that the compartment (within (350)) configured to house one or more fans (357) is removable as a single unit (Figs. 3, 5), but does not disclose that the compartment comprises one or more sub-compartments removable as single unit.
It would have been obvious to one of the ordinary skill in related arts before the effective filing date of the claimed invention to have provided as many sub-compartments as needed within the compartment of Ent, in order to optimize cooling efficiency (i.e., the air flow path, etc.), since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Also, all claimed elements were known in the prior art and one skilled in the art could have combined / modified the elements as claimed by known methods with no change in their respective functions, and the combination / modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Regarding the 35 USC 112(a) rejections of claims, Applicant provided only conclusory statements, e.g., “A person of ordinary skill would understand how to implement such a retainer using known mechanical retention structures (e.g., clip, latch, bracket, or spring feature) in view of the disclosed configuration and the conventional PCI card form factor”, or, “A person of ordinary skill would understand that the claimed "operably connected" relationship encompasses direct or indirect mechanical coupling (e.g., a pivoting lever with a detent released by the button), which is consistent with the disclosed lever/button arrangement”, or “Such mechanisms are routinely implemented in tool-less chassis/PCI retention systems, and the present disclosure provides sufficient structural context (housing, levers, release button, and engagement with the workstation) to enable this functionality”, or “The specification describes the lever(s) as being used to insert the PCI assembly into engagement with the workstation PCB and to remove it therefrom, which a person of ordinary skill would understand as converting manual lever motion into insertion/removal motion of the assembly and/or its electrical couplings relative to a mating connector”.
The aforementioned conclusory statements are not persuasive. Accordingly, the rejection still stands as explained in the body of the rejection above.
Furthermore, regarding the anticipatory art rejection of the independent claims 1 and 16, Applicant contends that allegedly, “Independent claims 1 and 16 recite (among other features) "one or more electrical couplings ... the one or more electrical couplings configured for coupling to a printed circuit board (PCB) on the workstation." Applicant respectfully submits that Ent does not disclose each and every limitation of the independent claims as arranged.”
The aforementioned Applicant’s statement is conclusory and without merits. On the contrary, Ent discloses: “one or more electrical couplings (652) (col. 2, ll. 43-48) on an underside of the housing, the one or more electrical couplings …configured for direct coupling to a printed circuit mother board (PCB) (320) on the workstation (100)”, as explained in the body of the rejection above.
Furthermore, regarding the depdnednmd claims 10 and 19, Applicant contends that, allegedly, “the presence of some manufacturing tolerance in any mechanical/electrical assembly is not the same as the claimed "floating tolerance" as recited in the claims and understood in light of the present disclosure. Ent does not describe any structure or mounting arrangement that provides a floating or compliant coupling, nor does Ent disclose that the electrical couplings are configured to accommodate misalignment by a floating/compliance feature. The Office Action's inherency position is therefore improper because it does not establish that a "floating tolerance" is necessarily present in Ent's electrical couplings. At most, Ent could be read to reflect ordinary dimensional tolerance, which is legally and technically insufficient to meet the claimed limitation”.
In response, the Office would like to direct the Applicant’s attention to the fact that claims 10 and 19 only broadly recite that “the one or more electrical couplings are configured to provide a floating tolerance for coupling to the printed circuit board”. The claims do not recite any “electrical couplings [that] are configured to accommodate misalignment by a floating/compliance feature” as argued by the Applicant. Claims are broader than argued. Again, the “tolerance” is inherently present in Ent as explained in the rejection above.
Furthermore, contrary to the Applicant’s position, the specification does not provide any explanation pertained to said “floating tolerance”, so one can understand what it is and how exactly it works in the alleged “light of the present disclosure”. The specification does not provide any alleged “light”, but just broadly states: “Example No. 10 includes all the features of Example Nos. 1-9, and optionally includes a PCI wherein the one or more electrical couplings comprise a floating tolerance for coupling to the printed circuit board” (par. [0021]), and “Example No. 19 includes all the features of Example Nos. 16-18, and optionally includes an apparatus wherein the one or more electrical couplings comprise a floating tolerance for coupling to the printed circuit board” (par. [0030]).
Thew specification does not explain whether said “floating tolerance” is just a dimensional tolerance, or it’s a special mechanical arrangement that provides intentional mechanical freedom, or it’s implemented as floating mount(s), or it’s implemented as spring-loaded coupling(s), or it’s implemented as lead-in chamfer(s), etc.
Again, the “tolerance” is inherently present in Ent as explained in the rejection above, and it can be interpreted as “floating”, since it will inherently provide some play in the electrical coupling(s) of Ent.
Furthermore, regarding the depdnednmd claims 12 and 19, Applicant contends that, allegedly, “Ent's disclosure of a PCI card and motherboard connection does not necessarily disclose the particular claimed integration of the fan cage/PCI housing electrical couplings that directly couple to the workstation PCB without intervening cabling, as recited. Ent does not clearly and unambiguously teach that the claimed housing-level electrical couplings (as opposed to a conventional edge connector of a PCI card) directly couple to the workstation PCB without cables, as required by the claims when read as a whole.”
Firstly, claims do not recite that “housing-level electrical couplings…directly couple to the workstation PCB without cables”. The claims only recite that “one or more electrical couplings are configured for direct coupling to the printed circuit board without a use of cables”. Again, claims are broader than argued. Secondly, contrary to the Applicant’s possiiton, Ent clearly and explicitly teaches that one or more electrical couplings (652) (col. 2, ll. 43-48) configured for direct coupling to a printed circuit mother board (PCB) (320) on the workstation (100) without a use of cables (Figs. 3, 5; col. 2, ll. 35-67). Ent does not teach any cables whatsoever to interconnect the peripheral component(350)/PCI card (650) with the PCB (320).
Furthermore, regarding obviousness rejection, Applicant contends that, allegedly, “the claimed "sub- compartments" are not simply duplicated "essential working parts" of Ent. Rather, the claims require a specific modular architecture: a fan compartment subdivided into multiple sub- compartments, where (a) the overall compartment is removable as a single unit (claim 8) and (b) each sub-compartment is independently removable as a single unit (claim 9), all as further recited in claim 18. Implementing this architecture would require structural redesign of the fan cage (e.g., partitioning structure, attachment/retention features for each sub-compartment, interface geometry, and potential sealing/airflow management between sub-compartments), and is not the type of straightforward duplication contemplated by Harza.
(2) The stated goal of "optimizing cooling efficiency" is conclusory and does not supply a sufficient motivation. The Office Action does not identify any teaching in Ent suggesting that Ent's removable fan compartment suffers from a problem that would be addressed by subdividing the compartment into removable sub-compartments, nor does it explain why a person of ordinary skill would expect that adding removable sub-compartments (and the attendant additional interfaces, retention structures, and potential leakage paths) would predictably "optimize" airflow. Without a concrete explanation tied to the reference's disclosure and the claim requirements, "optimization" is an impermissible hindsight rationale.
(3) The rejection does not account for the claim-required combination of removability at two levels. Even if one were to subdivide Ent's fan compartment into internal regions, the Office Action does not explain why a person of ordinary skill would further configure each such region as a sub-compartment that is itself removable as a single unit (claims 9 and 18), particularly while still keeping the overall compartment removable as a single unit (claim 8). The Office Action does not identify any structure in Ent that would suggest or facilitate such dual-level modularity. Accordingly, Ent does not render claims 7-9 and 18 obvious, and withdrawal of the § 103 rejection is respectfully requested.”
In response, the Office would like to remind Applicant that KSR v. Teleflex forecloses the argument that a specific teaching, suggestion or motivation is required to support a finding of obviousness. KSR has refocused the obviousness inquiry by reinvigorating the fundamental questions of Graham. Because the Supreme Court clarified that teaching-suggestion-motivation was not the sole test of obviousness, the Graham analysis is not to be carried out in a rigid manner. See also the Board decision Ex parte Smith, --USPQ2d--, slip op. at 20, (Bd. Pat. App. & Inter. June 25, 2007) (citing KSR, 82 USPQ2d at 1396). Furter, the KSR explicitly stated that “a person of ordinary skill has a good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense”. KSR, supra. The United States Supreme Court further commented that obviousness can be found using alternative analyses, those of common sense and of “obvious to try”. The United States Supreme Court said: “Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id at 1742. And “The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was obvious to try. . . . In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.” Id. (emphasis added).
In view of the above, in the instant case the modification of Ent (taken alone) was a “known option” at the time of the invention and would be a result of the “common sense” and “obvious to try” approaches. The modification would yield predictable results as well. It is simple, straightforward and self-explanatory and would have been well “within the technical grasp” of one of ordinary skill in the fuse art at the time of the invention. Accordingly, the Office remains of the opinion that it would have been obvious before the effective filing date of the claimed invention to modify to Ent as explained in the body of the rejection.
Furthermore, in response to Applicant's argument that the Office’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgement on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure (i.e., as in the instant case), such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392; 170 USPQ 209 (CCPA 1971).
In view of the above the rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anatoly Vortman whose telephone number is (571)272-2047. The examiner can normally be reached Monday-Thursday, between 10 am and 8:30 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash N. Gandhi can be reached at 571-272-3740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANATOLY VORTMAN/Primary Examiner, Art Unit 2841
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