Ex Parte OBERMAIER - Page 6



                Appeal No. 2005-0324                                                                           
                Application No. 09/390,824                                                                     


                or, in some cases the nature of the problem to be solved.” In re Huston 308 F.3d               
                1267, 1278, 64 USPQ2d 1801, 1810 (Fed. Cir. 2002, citing In re Kotzab 217                      
                F.3d 1365, 1370, 55 USPQ 1313, 1317 (Fed. Cir. 2000)).                                         
                      We find that Moss teaches that prior methods of inserting expansion cards                
                into a computer chassis required the chassis to be opened and the cards to be                  
                vertically inserted onto the motherboard. See column 1, line 9-15 and column 2,                
                line 45-59.  Moss teaches that an improvement to this method is to use an                      
                expansion card carrier, which is inserted into the chassis horizontally.  See                  
                column 3, line 53 to 65, and figure 7 and 10.  While we concur with appellant that             
                Moss discloses one of the advantages of the horizontally inserted expansion card               
                carrier is that it has the ability to replace cards in a live chassis, we do not find          
                that this is the only problem to be solved.  Moss also discloses that the problem              
                with vertical insertion is that it is time consuming because it requires removal of            
                the chassis cover.                                                                             
                      Moss teaches that the system to horizontally insert cards can be used with               
                PCI expansion cards. However, Moss does not teach how the PCI expansion                        
                cards are secured to the carrier.  See Column 3, lines 11-15.  We note that Moss               
                does not define a PCI card, however appellant’s specification, on page 1,                      
                identifies that one industry standard for expansion cards is Peripheral                        
                Component Interconnect (PCI).  We find that a skilled artisan would recognize                  
                that in a computer system, many peripheral components, such as a printer,                      
                monitor, scanner, etc., are located outside of the computer chassis, as such PCI               

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