Ex Parte 6,289,975 et al

Board of Patent Appeals and Interferences

May 30, 2012

95001072 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,072 07/29/2008 6,289,975 GN-4521-US 1694
7590 05/30/2012
EASTWIND CONSULTANTS COMPANY LIMITED
7F, NO. 1, ALLEY30, LANE358, RUEIGUANG ROAD
NEIHU DISTRICT
TAIPEI, 114
TAIWAN
EXAMINER
CLARKE, SARA SACHIE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/30/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Zalman Tech Co.
Requester

v.

Ching-Sung Kuo
Patent Owner and Appellant
____________

Appeal 2012-004599
Reexamination Control 95/001,072
Patent 6,289,975 B2
Technology Center 3900
____________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and
JOSIAH C. COCKS, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-004599
Reexamination Control 95/001,072
Patent 6,289,975 B2

2

Patent Owner Ching-Sung Kuo (“Patent Owner”) appeals under 35
U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject claims 1 and
2.1 Third-Party Requester Zalman Tech Co. (hereinafter “Requester”) urges
that the Examiner’s decision must be affirmed.2 We have jurisdiction under
35 U.S.C. §§ 134(b) and 315(a). We affirm the Examiner’s decision to
reject claims 1 and 2.

STATEMENT OF THE CASE
United States Patent 6,289,975 B2 (hereinafter the “‘975 Patent”),
which is the subject of the current inter partes reexamination, issued to
Ching-Sung Kuo on September 18, 2001.
The ‘975 Patent relates to a heat dissipating device having an
enhanced heat dissipating effect. (Col. 1, ll. 11-13.) Claim 1, which is
illustrative of the appealed subject matter, reads as follows (paragraphing
added for clarity, emphasis added):
1. A heat dissipating device, comprising:
a plurality of heat dissipating plates having stack plate
portions disposed in close contact with one another to form a
stack part, each of said plate portions including
a bottom edge adapted to contact a heating generating
article,

1 See Patent Owner’s Appeal Brief 5 (filed September 20, 2010) (hereinafter
“App. Br.”) Examiner’s Answer (mailed August 24, 2011) (hereinafter
“Ans.”); Right of Appeal Notice 6-7 (mailed June 30, 2010) (hereinafter
“RAN.”).
2 See Requester’s Respondent Brief (filed October 19, 2010) (hereinafter
“Req. Resp. Br.”).
Appeal 2012-004599
Reexamination Control 95/001,072
Patent 6,289,975 B2

3
a top edge opposite to said bottom edge, and
two opposite side edges respectively extending from two
opposite ends of said top edge toward said bottom edge,
each of said heat dissipating plates further having a pair
of fin plate portions respectively connected to and extending in
opposite outward directions from said opposite side edges of a
corresponding one of said stack plate portions,
said fin plate portions being bent from a plane of the
corresponding one of said stack plate portions toward the same
side of said plane,
said fin plate portions of said heat dissipating plates
having top ends higher than said top edge and bottom ends
which extend to a level lower than said top edge without
converging.

(App. Br. 23 Claims App’x.)

Patent Owner contests the Examiner’s decision to reject claims 1 and
2 under 35 U.S.C. § 103(a) as being obvious over Robbins (U.S. 3,688,159,
issued August 29, 1972) in view of Böhm (U.S. 3,095,037, issued June 25,
1963).

ISSUE
In rejecting the claims on appeal, the Examiner found that Robbins
disclosed the claimed limitations of the heat dissipating device including
irregularly shaped heat sinks with exposed bottom edges that are capable of
contacting a heat generating article. (RAN 6.) The Examiner found that
Robbins does not disclose heat dissipating plates with fin plate portions
having top ends higher than the top edge of stack plate portions. (RAN 6.)
The Examiner found that Böhm discloses fin plate portions 9 having top
Appeal 2012-004599
Reexamination Control 95/001,072
Patent 6,289,975 B2

4
ends higher than the top edge. (RAN 6.) The Examiner concluded that it
would have been obvious to provide Robbins with fin plate portions having
top ends higher than said top edge in order to provide larger fin plate
portions for improved heat dissipation. (RAN 6.)
Patent Owner argues that the Examiner’s findings with respect to the
top, bottom, and side edges of the plates in Robbins are incorrect. (App. Br.
12.) Patent Owner contends that Robbins discloses one flat plate contacting
a heat generating article, that the flared plates shown in Figure 1 of Robbins
alone cannot make a heat sink, and that Robbins fails to disclose that each of
the plate portions includes a bottom edge adapted to contact a heat
generating article as claimed. (App. Br. 12, 13, 15-16.) Patent Owner
additionally contends that Robbins does not disclose stack plate portions in
close contact with one another, because heat sinks 2 and 4 are separated by a
heat source and rubber boot 6. (App. Br. 13.) Patent Owner contends that
the Examiner has not identified the top end portion of the fin plates in Böhm,
and has misinterpreted Figure 3 of Böhm, such that Böhm would not have
suggested an enlarged fin plate portion. (App. Br. 10, 17-18, 20-21.)
Appellant also argues that one of ordinary skill in the art would not have
combined Robbins and Böhm because Böhm’s cooling fins are
perpendicular to the heat generating article, which is opposite to Robbins
where the metal plates are parallel to the heat source. (App. Br. 20-21.)
Requester argues that whether the flat plates disclosed in Robbins
contact a heat generating article is not relevant as to what the edges of the
heat sinks 2 and 4 are. (Req. Resp. Br. 12.) Requester contends that the top
ends of the fin plate portions in Böhm are identified in the Request. (Req.
Appeal 2012-004599
Reexamination Control 95/001,072
Patent 6,289,975 B2

5
Resp. Br. 11.) Requester argues that Böhm’s reason of optimizing direct
contact of the cooling fans with the heat source “is not mutually exclusive
with the fact that Böhm discloses larger fin plate portions for improved heat
dissipation.” (Req. Resp. Br. 13.)
Accordingly, the dispositive issue on appeal is: did the Examiner err
in concluding that the heat dissipating device claimed in claim 1 would have
been obvious over Robbins in view of Böhm?

FINDINGS OF FACT (“FF”)
1. Figure 4 of the ‘975 Patent is reproduced below:

Figure 4 is a perspective view of one embodiment of the heat
dissipating device according to the ‘975 Patent including heat
dissipating plates 21, 22 having stack plate portions 23, 24 and
fin plate portions 25, 26. (Col. 2, ll. 9-11; col. 3, ll. 6-23.)
Appeal 2012-004599
Reexamination Control 95/001,072
Patent 6,289,975 B2

6
2. Figure 6 of the ‘975 Patent is reproduced below:

Figure 6 depicts a front view of one embodiment of the heat
dissipating device according to the ‘975 Patent including a
plurality of heat dissipating plates 2 having a flat contact face 1
disposed on a heat generating article 3. (Col. 2, ll. 15-18, col.
3, ll. 9, 64-67.)
3. The ‘975 Patent discloses that “fin plate portions 25, 26 [] form
a flat contact face 1 that is adapted to be placed on a heat
generating article 3.” (Col. 3, ll. 47-49.)
4. Figure 1 of Robbins is reproduced below:

Appeal 2012-004599
Reexamination Control 95/001,072
Patent 6,289,975 B2

7
Figure 1 depicts an end elevational view of a compression
mounted SCR (silicon or semiconductor controlled rectifier)
clamp including rubber boot 6, and heat sinks 2 and 4, where
heat sinks 2 and 4 are made up of a plurality of metal plates of
rectangular shape, the first plate being planar and each
additional plate being bent away from the first plate in order to
afford maximum heat radiation into the atmosphere. (Col. 1, ll.
52-54, col. 3, l. 61 – col. 4, l. 10.)
5. Figure 3 of Böhm is reproduced below:

Figure 3 depicts a cross-sectional view of an air cooler for an
electron tube in a plane normal to the axis of the cylindrical
body, the air cooler including cooling fins 9 that are directly
affixed to electron tube body 4 at 16. (Col. 2, ll. 3-5, 16-36.)
6. Böhm discloses that in cooling an electron tube, it is well
known that the rate of cooling airflow required depends on the
total cooling fin area as well as the separation of neighboring
cooling fins. (Col. 1, ll. 15-19.)

Appeal 2012-004599
Reexamination Control 95/001,072
Patent 6,289,975 B2

8
PRINCIPLES OF LAW
A prima facie case of obviousness is established where the Examiner
demonstrates that the invention is nothing more than the predictable result of
a combination of familiar elements according to known methods. KSR Int'l
Co. v. Teleflex, Inc., 550 U.S. 398, 416-17 (2007). “[I]f a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” Id. at 417.

ANALYSIS
Upon reviewing the evidence of record, we are not convinced that the
Examiner erred in rejecting the claims on appeal over Robbins in view of
Böhm. The thrust of Patent Owner’s argument with respect to the edges of
the heat sinks of Robbins appears to be that the heat sinks of Robbins are
oriented differently than the claimed heat dissipating plates such that the
Examiner’s correlation of the edges in Robbins to the claimed edges is
incorrect. However, we agree with the Examiner and Requester that
Robbins discloses top, bottom, and side edges as claimed by virtue of the
rectangular shape of the plates making up the heat sink as identified by the
Examiner and Requester. (FF 4; RAN 6, Request, 28, 29, 31.)
In this regard, we do not subscribe to Patent Owner’s view that the
bottom edge of the plates in Robbins corresponds to the face of the plate in
contact with the heat generating article by virtue of the language in claim 1,
which recites “each of the plate portions including a bottom edge adapted to
Appeal 2012-004599
Reexamination Control 95/001,072
Patent 6,289,975 B2

9
contact a heat generating article.” As pointed out by the Examiner, the
“adapted to” language in claim 1 does not require that each plate portion
include a bottom edge physically touching a heat generating article. (RAN
7.) Indeed, the ‘975 Patent discloses that the portion of the bottom edge
“adapted to” contact a heat generating article is merely a flat contact face,
and no other structural feature is disclosed as being necessary in order for
the bottom edge to be adapted to contact a heat generating article. A similar
flat surface is clearly defined by the stack of rectangular metal plates of the
heat sinks disclosed in Robbins. (FF 1-4; see also Robbins Fig. 2 showing
the alignment of the rectangular metal plates to define a flat surface.)
Accordingly, we discern no error in the Examiner’s findings regarding the
edges in Robbins corresponding to the edges recited in the claims.
Therefore, we also agree with the Examiner and Requester that Robbins
discloses bottom edges “adapted to” contact a heat generating article as
claimed.
We also do not agree with Patent Owner, that the presence of planar
plates, the separation of heat sinks 2 and 4, and the presence of insulating
boot 6 as disclosed in Robbins patentably distinguishes the claims on appeal.
(App. Br. 12-13.) Claim 1 recites a heat dissipating device “comprising” a
plurality of heat dissipating plates. Therefore, claim 1 does not exclude the
presence of additional structure within the heat dissipating device, including
heat sinks having a planar plate and additional heat sinks separated from
each other by other structural elements. As a result, we disagree with Patent
Owner that the heat dissipating plates of claim 1 do not read on flared out
arrangement of either heat sink 2 or heat sink 4 in Robbins, as each of the
Appeal 2012-004599
Reexamination Control 95/001,072
Patent 6,289,975 B2

10
heat sinks 2 and 4 independently include a plurality of heat dissipating plates
as recited in claim 1. (FF 4.)
Regarding Böhm, we disagree with Patent Owner’s contentions that
the Examiner did not sufficiently identify a fin plate portion having a top end
higher than a top edge of a stack part, and that the shape of the cooling fin in
Böhm is only a result of the orientation of the cooling fin relative to the
electron tube and does not have the configuration recited in the claims. The
Examiner pointed to cooling fin portion 9 in Figure 3 of Böhm. (RAN 6; FF
5.) Figure 3 of Böhm depicts a cooling fin 9 on the right side of the Figure.
(FF 5.) As can be readily discerned from Figure 3 of Böhm, the upper
portion of cooling fin 9 on the right side of the figure does not merely extend
tangentially straight across from the point where cooling fin 9 is affixed to
electron tube body 4 at 16 to the outer edge of cooling fin 9, but rather
extends up and away from the electron body at an incline until leveling off at
the top end of cooling fin 9 so as to form an upwardly extended portion that
extends beyond the top tangential boundary of the electron tube body 4. (FF
5.) As such, contrary to Patent Owner’s argument, Böhm does not merely
disclose the shape of the cooling fin in relation to the contact area of the
electron tube, but Böhm also discloses that the top end of the cooling fin
extends above the other portions of the cooling fin including the top edge of
the stack portion as is recited in claim 1 on appeal.
In addition, we are unpersuaded by Patent Owner’s argument that one
of ordinary skill in the art would not have combined Robbins with Böhm.
Although Robbins and Böhm disclose different orientations in attaching
cooling fins to a heat generating article, Böhm discloses that the cooling fin
Appeal 2012-004599
Reexamination Control 95/001,072
Patent 6,289,975 B2

11
area influences the rate of air flow necessary to cool the heat generating
article and illustrates an exemplary arrangement of cooling fins that would
perform this function. (FF 5, 6.) The Examiner has articulated a reason why
one of ordinary skill in the art would modify the heat sink of Robbins, that
is, to improve heat dissipation, which is rational and sufficient to establish a
prima facie case of obviousness. We have not been provided with
persuasive argument or directed to persuasive evidence that one of ordinary
skill would have been incapable of applying the teachings of Böhm relating
to cooling fin structure and the disclosed cooling fin structure to the fin plate
portions of the plates in the heat sinks of Robbins in an effort to increase the
cooling fin area thus resulting in a fin plate portion with a top end higher
than the top edge of stack plate portion as recited in the claims.
Patent Owner does not offer separate arguments with respect to the
patentability of claim 2. (PO App. Br. 21.) Accordingly, we affirm the
Examiner’s rejection of claim 2 for the same reasons.

CONCLUSION
On this record, the Examiner did not err in concluding that the heat
dissipating device claimed in claim 1 would have been obvious over
Robbins in view of Böhm.

DECISION
The Examiner’s decision to reject claims 1 and 2 is affirmed.

Appeal 2012-004599
Reexamination Control 95/001,072
Patent 6,289,975 B2

12
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).

AFFIRMED

cu

Appeal 2012-004599
Reexamination Control 95/001,072
Patent 6,289,975 B2

13
PATENT OWNER:

EASTWIND CONSULTANTS COMPANY LIMITED
7F, NO. 1, ALLEY30, LANE358, RUEIGUANG ROAD
NEIHU DISTRICT
TAIPEI 114
TAIWAN

THIRD-PARTY REQUESTER:
LADY & Y. PARRY LLP
224 SOUTH MICHIGAN AVENUE
SUITE 1600
CHICAGO, IL 60604