Ciena Corporation

Patent Trials and Appeals Board

Feb 1, 2021

2020003627 (P.T.A.B. Feb. 1, 2021)

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.
15/906,431 02/27/2018 Peter Saturley 10.2546 2304
22474 7590 02/01/2021
Clements Bernard Walker
4500 Cameron Valley Parkway
Suite 350
Charlotte, NC 28211
EXAMINER
ROJOHN III, CLAIRE E
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
02/01/2021 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):
cjones@worldpatents.com
cwright@worldpatents.com
patlaw@worldpatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER SATURLEY, BONNIE MACK, TREVOR MEUNIER,
and CHRISTIAN POULIOT
____________

Appeal 2020-003627
Application 15/906,431
Technology Center 3700
____________

Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and
WILLIAM A. CAPP, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Aug. 2, 2019, hereinafter “Final
Act.”) rejecting claims 1–20. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Ciena Corporation is identified as the real party in interest in
Appellant’s Appeal Brief (filed Jan. 3, 2020, hereinafter “Appeal Br.”).
Appeal Br. 2.
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SUMMARY OF DECISION
We AFFIRM IN PART.

INVENTION
Appellant’s invention is directed to “heat sinks and heat pipes for
cooling high powered electrical and/or optical components.” Spec. para. 1.
Claims 1, 10, and 15 are independent, illustrative of the claimed
invention, and read as follows:
1. A method of installing an asymmetric heat pipe in a heat
sink, the method comprising:
providing an asymmetric heat pipe with additional
material on one side;
forming a cavity in a base of the heat sink leaving
additional base material on a component side of
the heat sink;
inserting the asymmetric heat pipe in the cavity; and
removing the additional material on the asymmetrical
pipe and the additional base material on the heat sink to form a
smooth contact surface on the component side.

10. A heat sink with a heat pipe located a component side
of the heat sink prepared by a process comprising the steps
of:
providing an asymmetric heat pipe with additional
material on the component side; forming a cavity in a base
on the heat sink leaving additional base material on the
component side of the heat sink;
inserting the asymmetric heat pipe in the cavity; and
removing the additional material on the flattened
asymmetric heat pipe and the additional base material on the
heat sink to form a machined contact surface on the
component side.

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15. An apparatus comprising:
a component;
a heat sink with a cavity; and
a flattened heat pipe inserted into the cavity;
wherein the heat sink and the flattened heat pipe have a
smooth surface on the side proximal to the component and the
flattened heat pipe has a thickness which is the same size on a
component side and an opposite side.

REJECTIONS
I. The Examiner rejects claims 1–4 and 8–13 under 35 U.S.C.
§ 102(a)(2) as being anticipated by Lin.2
II. The Examiner rejects claims 5, 6, 14, 19, and 20 under
35 U.S.C. § 103 as being unpatentable over Lin and Kamath.3
III. The Examiner rejects claim 7 under 35 U.S.C. § 103 as being
unpatentable over Lin and Qin.4
IV. The Examiner rejects claims 15–18 under 35 U.S.C. § 103 as
being unpatentable over Lin and Whitney.5

ANALYSIS
Rejection I
Claims 1–4, 8, and 9
Independent claim 1 requires, inter alia, “providing an asymmetric
heat pipe with additional material on one side . . . and removing the

2 Lin, US 2017/0151641 Al, published June 1, 2017.
3 Kamath et al., US 2008/0055855 Al, published Mar. 6, 2008.
4 Qin et al., US 2009/0321054 Al, published Dec. 31, 2009.
5 Whitney et al., US 8,286,693 B2, issued Oct. 16, 2012.
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additional material on the asymmetric heat pipe.” Appeal Br. 13 (Claims
App.).
The Examiner finds Lin discloses “providing an asymmetric heat pipe
with additional material on one side (Fig. 6, additional material 124 on one
side of heat pipe 11),” wherein “heat pipe 11 is asymmetric and is in heat
sink 12.” Final Act. 2 (citing Lin, Figs. 1–3).
Appellant argues that Lin’s heat pipe 11 “is one of flat-plate heat pipe,
D-shaped heat pipe and circular heat pipe,” and, thus, does not constitute “a
pipe with additional material on one side.” Appeal Br. 8. Appellant notes
that when Lin’s heat pipe 11 is placed into channel 123 of heat sink base 12,
“there is no additional material extending into the perforations 124.” Id.
(citing Lin, paras. 30–33, Fig. 5).
The Examiner responds that Lin’s Figures 1 and 3 illustrate “heat
pipe 11 with a protrusion on one side which meets [A]ppellant’s definition
of additional material.” Examiner’s Answer (dated Mar. 11, 2020,
hereinafter “Ans.”) 9. In particular, the Examiner notes that Lin’s
“[F]igure 1 shows the protrusions on the heat pipe 11” and Figure 3 “clearly
shows the protrusion part of the heat pipe 11 extending towards the
surface 121 which makes the pipe asymmetric with the additional material.”
Id. The Examiner adds that because “[A]ppellant defines additional material
as the material that is removed” and Lin discloses that “surfaces of the base
seat 12 and the heat pipe 11 . . . [as being] further processed by means of [a]
cutting process,” Lin discloses the “removing” limitation of independent
claims 1 and 10. Id. at 10 (citing Lin, para. 39, Fig. 8).
In the context of anticipation, a prior art reference anticipates the
claimed invention under 35 U.S.C. § 102(b) only if every element of a
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claimed invention is identically shown in that single reference, arranged as
they are in the claims. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). In
this case, Lin’s Figures 1–3 illustrate a first embodiment in which
protrusions located along heat absorption section 111 of heat pipe 11 are
received within perforations 124 of base seat 12. See Lin, paras. 22–25. Lin
further discloses that the protrusions received by perforations 124 of base
seat 12 are flush with first side 121 of base seat 12, whereas the remainder of
heat pipe 11, which received in channel 123 of base seat 12, is flush with
second side 122. See id., paras. 26, 27, Fig. 3. Lin also discloses that “[t]he
sections of the base seat 12 where the perforations 124 are formed are in
direct contact with at least one heat source 2 to conduct heat.” Lin, para. 26
(emphasis omitted).
In regards to Figures 4–6, Lin discloses a second embodiment in
which circular heat pipe 11 is placed into channel 123 of base seat 12 and
mechanically forced (pressing or rolling) into perforations 124 such that
portions of heat pipe 11 extends from first side 121. Id. at para. 28. Lin
further discloses an additional mechanical processing step to force the
portions of pipe 11 protruding from first side 121 of base seat 12 back into
perforations 124 such that both sides of heat pipe 11 are flush with first and
second sides 121, 122 of base seat 12. Id. Finally, Lin discloses cutting the
surfaces of base seat 12 and heat pipe 11 in order “to enhance the flatness of
the surface of the protruding platform.” Id. at para. 39.
As such, although we appreciate that Lin’s first embodiment includes
heat pipe 11 having protrusions, which the Examiner equates to the claimed
“additional material,” Lin’s first embodiment does not include a step of
removing such protrusions, as called for by independent claim 1.
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Nonetheless, we appreciate that Lin’s second embodiment includes
removing material from the surface of heat pipe 11; however, heat pipe 11 of
the second embodiment does not include protrusions, and, thus, does not
constitute “an asymmetric heat pipe with additional material,” as per
independent claim 1. As such, the Examiner’s position appears to have
relied on two distinct embodiments in Lin, and, thus, the elements of the
claimed invention are not identically shown in the reference, arranged as
they are in the claims.
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 102(a)(2) of independent claim 1, and its respective
dependent claims 2–4, 8, and 9, as anticipated by Lin.

Claims 10–13
In regards to independent claim 10, Appellant argues that “Lin does
not teach the features of ‘providing an asymmetric heat pipe with
additional material on one side’ and ‘removing the additional material on
the asymmetric heat pipe and the additional base material on the heat sink to
form a smooth contact surface on the component side’ of claim . . . 10.”
Appeal Br. 9–10.
We are not persuaded by Appellant’s arguments because the
Examiner is correct that claim 10 “contain[s] product by process
limitations.” Final Act. 4. In particular, independent claim 10 recites, inter
alia, “[a] heat sink with a heat pipe located [at] a component side of the heat
sink prepared by a process comprising the steps of.” Appeal Br. 14 (Claims
App.) (emphasis added).
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It is well settled that the patentability of a product does not depend on
its method of production. If the product in a product-by-process claim is the
same as or obvious from a product of the prior art, the claim is unpatentable
even though the prior art product was made by a different process. In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Once the PTO has made out a
prima facie case that the applicant’s claimed product and the product of the
prior art reasonably appear to be the same, the burden shifts to the applicant
to prove otherwise. Id. The burden of proof on the PTO in making out a
case of prima facie obviousness for product-by-process claims is less than
when a product is claimed in the more conventional fashion. In re
Fessmann, 489 F.2d 742, 744 (CCPA 1974). In this case, the structural
features of the claimed “heat sink with a heat pipe” of independent claim 10
are an asymmetric heat pipe inserted into a cavity of a base and having a
machined contact surface. Lin discloses heat dissipation unit 1 including
asymmetric heat pipe 11 inserted into cavity 123 of base seat 12 and having
a machined contact surface facing component 2. See Lin, paras. 28, 39,
Fig. 6.
As Appellant does not separately argue dependent claims 11–13, we
sustain the rejection under 35 U.S.C. § 102(a)(2) of independent claim 10,
and its respective dependent claims 11–13, as anticipated by Lin.

Rejection II
Claims 5 and 6
The Examiner’s use of the disclosure of Kamath does not remedy the
deficiency of Lin, as discussed supra. See Final Act. 4–5. Therefore, for the
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same reasons discussed above, we do not sustain the rejection under
35 U.S.C. § 103 of claims 5 and 6 as unpatentable over Lin and Kamath.

Claims 14, 19, and 20
Appellant does not argue claims 14, 19, and 20 separate from
independent claim 10. See Appeal Br. 6 (“The present Appeal Brief focuses
on the subject matter in independent Claims 1, 10, and 15 and dependent
claims 3, 9, and 17.”). Therefore, for the same reasons discussed supra, we
also sustain the rejection under 35 U.S.C. § 103 of claims 14, 19, and 20 as
unpatentable over Lin and Kamath.6

Rejection III
Claim 7
The Examiner’s use of the disclosure of Qin does not remedy the
deficiency of Lin, as discussed supra. See Final Act. 6. Therefore, for the
same reasons discussed above, we do not sustain the rejection under
35 U.S.C. § 103 of claim 7 as unpatentable over Lin and Qin.

Rejection IV
Claims 15, 16, and 18
The Examiner finds that Lin’s first embodiment discloses most of the
limitations of independent claim 15, but “does not disclose [that] the
flattened heat pipe has a thickness which is the same size on a component
side and an opposite side.” Final Act. 6 (citing Lin, Figs. 1–3).

6 We note that claims 19 and 20 depend from independent claim 15, which is
rejected under 35 U.S.C. § 103 as unpatentable over Lin and Whitney.
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Nonetheless, the Examiner finds that Whitney discloses “a flattened heat
pipe [40] that has a uniform thickness around the entire pipe.” Id. at 7
(citing Whitney, col. 5, ll. 31–50, Fig. 6). Thus, the Examiner concludes that
it would have been obvious for a skilled artisan “to have modified the larger
thickness portion of Lin to have a smaller thickness and uniform throughout
the heat pipe as taught by Whitney to improve heat transfer.” Id. (citing
Whitney, col. 2, ll. 58–67).
Relying on the limitation of claim 9, Appellant states that “[c]laim 15
requires a similar feature,” and argues that a person of ordinary skill in the
art “would not be motivated to combine the teachings of Lin with the
teachings of Whitney.” Appeal Br. 10–11. According to Appellant, “[t]o
achieve a uniform thickness of the heat pipe 11 of Lin,” the combination
would have to remove perforations 124 and protrusions on heat pipe 11, and,
thus, “Lin teach[es] away from having a uniform thickness on both sides of
the heat pipe.” Id.
We are not persuaded by Appellant’s arguments because unlike
claim 9, independent claim 15 does not recite the limitation “subsequent to
the removing [step], a thickness of the asymmetric heat pipe is the same on
a component side and an opposite side,” as Appellant argues. See Reply Br.
4 (emphasis added). Rather, claim 15 merely requires that “the flattened
heat pipe ha[ve] a thickness which is the same size on a component side and
an opposite side.” See Appeal Br. 15 (Claims App.). As such, we agree
with the Examiner that “claim [15] does not require the entire heat pipe to be
a uniformed thickness.” Ans. 11. As stated by our reviewing court in In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is
the claim.” It is well established that limitations not appearing in the claims
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cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348
(CCPA 1982). In this case, to better understand the Examiner’s position, we
reproduce below the Examiner’s annotated Figure of a portion of Lin’s
Figure 3 (first embodiment):

The Examiner’s annotated Figure illustrates Lin’s pipe 11 having a portion
with the same thickness at the top and bottom. Id. at 12.
In particular, we agree with the Examiner that at the edge portion of
Lin’s heat pipe 11, the thickness of pipe 11 on the side of component 2
(bottom portion) is the same as the thickness on an opposite side (top
portion). Appellant does not adequately respond to the Examiner’s
construction of independent claim 15 and interpretation of Lin, as discussed
above. See Reply Brief (filed Apr. 10, 2020, hereinafter “Reply Br.”).
In conclusion, for the foregoing reasons, and because Appellant does
not argue claims 16 and 18 separate from independent claim 15, we sustain
the rejection under 35 U.S.C. § 103 of claims 15, 16, and 18 as unpatentable
over Lin and Whitney.

Claim 17
Claim 17 depends from claim 16, which in turn depends from
independent claim 15. As such, claim 17 adds the limitations “wherein the
flattened heat pipe is flattened prior to insertion into the cavity with
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additional material on the component side of the flattened heat pipe” (as per
claim 16) and “the flattened heat pipe comprises an orientation feature on
the component side with the additional material” (as per claim 17). Appeal
Br. 15 (Claims App.).
The Examiner finds Lin discloses the above noted limitation because
“heat pipe 11 is flat and has additional material 124” and “locating holes 124
help orient the additional material into place.” Final Act. 7 (citing Lin,
Figs. 1, 6).
Appellant argues that Lin’s protrusions that are pressed into
perforations 124 “are not provided . . . as additional material . . . and . . . are
not later removed in a subsequent manufacturing step.” Appeal Br. 10.
In response, the Examiner finds that Lin discloses protrusions on
surface 111 that aid to align or orient heat pipe [11] into . . . perforations 124
prior to inserting it,” and, thus, “meets the claim limitation of [an]
orientation feature.” Ans. 10 (citing Lin, Fig. 1).
First, we do not agree with the Examiner’s finding that Lin’s
perforations 124 constitute the claimed “orientation feature on the
component side with the additional material,” as called for by claim 17,
because perforations 124 are not located on flattened heat pipe 11, as
required by claim 17, but rather on base seat 12. See Final Act. 7; see also
Lin, Fig. 1. However, we agree with the Examiner that Lin’s protruding
portions that are received in perforations 124, as per Lin’s first embodiment,
constitute “additional material on the component side of the flattened heat
pipe,” as recited by claim 16, and an “orientation feature on the component
side with the additional material,” as recited by claim 17. See Ans. 10.
Specifically, Lin’s protruding portions on heat pipe 11, which are received in
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perforations 124, constitute “additional material” on heat pipe 11 that
provides an “orientation feature,” namely, a stepped surface, for orienting
heat pipe 11 into perforations 124. See Lin, Figs. 1, 3. Although we
appreciate Appellant’s position that Lin’s protruding portions received in
perforations 124, i.e., “additional material,” as per Lin’s first embodiment,
are “not later removed in a subsequent manufacturing step” (see Appeal Br.
10), we note that a “removing” limitation is not required by claim 17.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103 of claim 17 as unpatentable over Lin and Whitney.

CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 8–13 102(a)(2) Lin

10–13 1–4, 8, 9
5, 6, 14,
19, 20
103 Lin, Kamath

14, 19, 20 5, 6
7 103 Lin, Qin 7
15–18 103 Lin, Whitney 15–18
Overall
Outcome
10–20 1–9

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 IN PART