Ex Parte 7422053 et al

Patent Trial and Appeal Board

Feb 9, 2015

95001749 (P.T.A.B. Feb. 9, 2015)

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.
95/001,749 09/08/2011 7422053 0375.0001L3 7311
27896 7590 02/10/2015
EDELL, SHAPIRO & FINNAN, LLC
9801 Washingtonian Blvd.
Suite 750
Gaithersburg, MD 20878
EXAMINER
CLARKE, SARA SACHIE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
02/10/2015 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 PATENT TRIAL AND APPEAL BOARD
____________________

TAIWAN MICROLOOPS CORPORATION and
HEWLETT PACKARD COMPANY
Requester, Cross-Appellant, Respondent

v.

CONVERGENCE TECHNOLOGIES (USA)1
Patent Owner, Appellant, Respondent
____________________

Appeal 2014-008202
Inter partes Reexamination Control 95/001,749
Patent US 7,422,053 C12
Technology Center 3900
____________________

Before JOHN C. KERINS, DANIEL S. SONG and BRETT C. MARTIN,
Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Convergence Technologies is the Patent Owner and the real party in
interest (Appeal Brief of Patent Owner 1).
2 Patent US 7,422,053 B2 (hereinafter "the ’053 patent") issued September 9,
2008, to Siu. Inter Partes Reexamination Certificate US 7,422,053 C1 was
issued May 8, 2012, which cancelled claims 8, 11–17 and 22.
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STATEMENT OF THE CASE
Claims 1–5, 9, 18–20 and 24 are subject to reexamination and stand
rejected (Appeal Brief of Patent Owner (hereinafter "ABPO") 1). Claims 6,
7, 10, 21, 23 and 25 are not subject to reexamination (id.). The Patent
Owner appeals under 35 U.S.C. §§ 134 and 315 from the rejection of claims
1–5, 9, 18–20 and 24 (ABPO 4) as discussed infra under the section
heading: I. APPEAL OF THE PATENT OWNER. The Requester cross-
appeals under 35 U.S.C. §§ 134 and 315 from the Examiner's refusal to
enter, or the withdrawal of previously adopted, proposed rejections of claims
1–5, 9, 18–20 and 24 (Cross-Appeal Brief of Requester (hereinafter
"CABR") 2–3) as discussed infra under the section heading: II. CROSS-
APPEAL OF THE REQUESTER.
We have jurisdiction under 35 U.S.C. §§ 134 and 315 (2002). An oral
hearing with the representatives of the Patent Owner and the Requester was
held before the Patent Trial and Appeal Board on January 21, 2015, and a
transcript thereof will be entered into the electronic record in due course.
The ’053 patent was the subject of prior Reexamination Control
95/000,534, which resulted in Inter Partes Reexamination Certificate issued
May 8, 2012, cancelling claims 8, 11–17 and 22 (ABPO 1; CABR 2). We
are also informed that the ’053 patent is involved in the legal action
Convergence Technologies USA, LLC v. Microloops Corporation et al.,
Case No. 5:10-cv-02051-EJD (ND Ca.), which has been stayed pending the
outcome of the present reexamination (ABPO 1; CABR 2).
Preliminarily, we note that only those arguments timely made in the
briefs of record have been considered. Other arguments not made or those
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not properly presented have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.67(c)(1)(vii).
We AFFIRM as to both the Appeal and the Cross-Appeal.

THE INVENTION
The ’053 patent is directed to a vapor augmented heatsink3 with multi-
wick structure wherein a fluid is evaporated and condensed to carry away
heat (Title; col. 6, ll. 17–27). Figures 4A and 4B of the ’053 patent are
reproduced below.

Figure 4A shows a side sectional view of one embodiment of a multi-
wick wicking structure of the vapor-augmented heatsink, while Figure 4B
shows a top section view thereof (col. 5, ll. 9-14; Figs. 4A, 4B). The vapor
augmented heatsink dissipates heat from heat source 101, and includes:
internal wall 102; evaporation zone/contact portion 103; base chamber 110;
wick structure layer 111; higher wicking region 112; fin chamber 120; wick

3 A "heatsink" is a type of "heat transfer device," both of these terms being
used in the Specification of the ’053 patent.
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structure layer 121; and region close to evaporation zone 122 (see generally,
col. 7, ll. 1–22).
Exemplary independent claim 1 reads as follows (ABPO, Claims
App'x, emphasis added):
1. A heat transfer device, comprising:
at least one chamber containing a condensable fluid, the
chamber including: an evaporation region configured to be
coupled to a heat source for vaporizing the condensable fluid,
and a condensation region comprising condensation surfaces
configured to permit the vaporized condensable fluid to collect
as condensate, wherein the at least one chamber is configured to
cause the condensate to flow through increasingly less area in
the vicinity of the evaporation region, giving rise to a
converging flow condition as the condensate approaches the
evaporation region; and
a multi-wick structure comprising a plurality of
hydraulically interconnected wick structures extending from the
evaporation region into the condensation region for facilitating
flow of the condensate toward the evaporation region, wherein
a wicking power of the multiwick structure increases with
decreased flow distance to the evaporation region to facilitate
an increased flow rate of the condensate as the condensate
approaches the evaporation region.

Independent claim 5 is similar to claim 1 while independent claim 19 is
directed to a method of manufacturing a heat transfer device.
We set forth the following enumerated Findings of Fact (FF) with
respect to the Specification of the ’053 patent, which:
1. A. Discloses:
The multi-wick structure can include at least one
bridging wick structure to provide multiple liquid-flow-
path. Alternatively, the multi-wick structure can include
a combination of a groove, a mesh, an aggregated powder
wick, or a foam wick. Or, the multi-wick structure can
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include a combination of a layered structure, a bar
structure, or a bridging wick structure. In another
alternative, the multi-wick structure can include a wick
structure with varying porosity or varying pore size. The
wick can have a varying cross-sectional geometry or
varying dimensions.
(Col. 4, ll. 5–14).

B. Discloses specifically in reference to the configuration
shown in Figures 4A and 4B:
As the liquid is pulled closer to the evaporation zone 103,
the flow rate can increase since the liquid converges from
a large surface area to a smaller evaporation area.
Therefore, at most of surfaces, only an ordinary wick
structure (e.g., wire mesh, grooves, sintered powder
layer, or foam structure layer) can be applied for the wick
layers 111, 121 and can pull the liquid flow toward the
evaporation zone 103. On the other hand, at regions 112,
122 close to the evaporation zone, a higher wicking-
power structure, such as many layers of wire mesh,
grooves, powders, foam structure, or a combination
thereof, can be used.
(Col. 7, ll. 12–22).

C. Discloses:
The condensed liquid can be pulled along the wick
structure layer 111 and 121 by capillary force. As the
liquid is pulled closer to the evaporation zone 103, the
mass flow rate can increase since the liquid can converge
from a large surface area to a small evaporation area.
Therefore, at most of the surfaces, an ordinary wicking
structure, such as wire mesh, groove, sintered powder,
foam structure, can be used for the wicking layers 111
and 121, and can pull the liquid. At the regions 112, 122
close to the evaporation zone 103, a higher wicking-
power structure, such as many layers of wire mesh,
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grooves, powders, foam structure, any combination of
them, can be used.
(Col. 8, ll. 55–66).

I. APPEAL OF THE PATENT OWNER
A. Examiner's Rejections
The Examiner rejects the reexamined claims of the ’053 patent under
35 U.S.C. § 103(a) as being unpatentable as follows:
1. Claims 1–5, 18–20 and 24 over JP ’3794 in view of Sehmbey5
(Ground 3: Action Closing Prosecution (hereinafter "ACP") 2–8).6
2. Claim 9 over JP ’379 in view of Sehmbey and Yamamoto7
(Ground 4: ACP 8–9).

B. Issues
The following issues have been raised in the appeal of the Patent
Owner:
1. Whether the principle of operation of the heat pipe of JP ’379 is
based on inhibiting flow of fluid in heat transfer body 20 as asserted
by the Patent Owner.
2. Whether the Examiner erred in concluding that the combination
of JP ’379 with Sehmbey results in "a multi-wick structure . . . to

4 Japanese Patent Application 2002-22379A, January 13, 2002 (citations to
the English translation of record).
5 Patent No. US 6,460,612 B1 issued October 8, 2002.
6 The Examiner's Answer mailed May 12, 2014 incorporates the Right to
Appeal Notice mailed October 9, 2013, which in turn, incorporates the
Action Closing Prosecution mailed May 1, 2013.
7 Patent No. 6,082,443 issued July 4, 2000.
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facilitate an increased flow rate of the condensate as the condensate
approaches the evaporation region" as required by the claims.

C. Prior Art Findings of Fact
2. JP ’379:
A. Discloses heat pipe 10 for cooling external heating
element H (JP ’379, Abstract). Figure 1 of JP ’379 is
reproduced below.

Figure 1 of JP ’379 illustrates a side section view of one
embodiment of heat pipe 10 including indentation 13a in
the interior of mounting area 13 for mounting external
heating element H, porous heat transfer body 20 and
porous wick 21 (JP ’379, Abstract, Simple Descriptions
of the Drawings).

B. Discloses:
Said heat transfer body (20) and wick (21) are each a
porous structure, but selected with different
characteristics. One with relatively superior heat transfer
performance must be used as said heat transfer body (20),
for the purpose of quickly evaporating the liquid
operation fluid with heat input from the external heating
element (H). Meanwhile, said wick (21) is selected with
favorable reflux taking priority over heat transfer
performance, for the purpose of quickly refluxing the
condensed liquid to the heat transfer body.
(JP ’379 ¶0017).
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C. Discloses:
One example of these selection criteria is the void ratio
of the porous structure. A porous structure with a
relatively small void ratio has superior evaporation
efficiency of the operation fluid, because of superior heat
transfer performance which performs heat flow quickly.
On the other hand, liquid passage becomes more
difficult, which worsens condensed liquid return.
Meanwhile, a porous structure with a relatively large
void ratio will reflux condensed liquid quickly, because
liquid passes through easily. On the other hand, heat
flow speed is slow, which worsens operation fluid
evaporation efficiency. Based on this phenomenon, it is
preferable to use a porous structure with a relatively
small void ratio as the heat transfer body (20) which
prioritizes favorable heat transfer performance, and to
use a porous structure with a relatively large void ratio as
the wick (21) which prioritizes favorable condensed
liquid reflux.
(JP ’379 ¶0018).

3. Sehmbey:
A. Discloses a heat pipe with a multi-layer shape memory
alloy (SMA) porous structure (Sehmbey, Abstract).
Figure 1 of Sehmbey is reproduced below.
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Figure 1 of Sehmbey illustrates a partial cross section of
a side view of heat pipe 100 including evaporator section
102, condenser section 104, and multi-layer wick having
inner layer 105 and outer layer 107 that have differing
transformation temperatures (Sehmbey, col. 1, ll. 58–60;
col. 2, ll. 38–col. 3, l. 53; Fig. 1).

B. Discloses:
The preferred embodiment of the present invention
provides a heat pipe and method that utilizes a multi-
layer shape memory alloy (SMA) porous structure having
different transformation temperatures for each layer to
form a complete wick structure. Regardless of where the
local "hot spot" is presented along the heat pipe, the
innermost layer of the SMA begins contracting at the hot
spot locally, thereby maximizing the capillary pressure.
When the temperature at the hot spot increases beyond a
certain temperature, the outer layer of the SMA begins
contracting to further increase the capillary pressure. The
porosity and pore size of the wick are therefore adjusted
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to accommodate the local operating conditions. As a
result, the local pumping pressure is maintained or even
increased to accommodate higher local heat flux and
remove the heat to prevent "dry-out."
(Sehmbey, col. 1, l. 66–col. 2, l. 13, emphasis added).

C. Discloses:
This dry-out condition could result in the total failure of
the heat pipe. Some variable-wick heat pipes are known.
In these heat pipes, a specific wick structure is tailored
for the anticipated heat flux distribution. At locations
where the highest heat fluxes are expected, the pore size
is made small to increase the capillary force. The pore
size in other locations is kept larger to allow low
resistance to liquid flow. These heat pipes do not have
the capability of adjusting the wick structure once the
heat pipe is assembled. Thus, the usefulness of these
known variable wick heat pipes is limited to the exact
heat flux distribution and temperature that they were
designed for.
Thus[,] there is a need for an improved heat pipe
wherein the capillary pressure of the wick can be
adjusted post-assembly to prevent dry-out and failure of
the heat pipe.
(Sehmbey, col. 1, ll. 40–55).

D. Discloses:
In the heat pipe of the present invention, the inner
layer 105 begins contracting at a particular location when
heat is applied along the surface of the heat pipe and the
temperature at that location exceeds a certain
temperature, preferably 60° C. The contraction reduces
the effective capillary radius re of the wick, thereby
maintaining or increasing the capillary pumping
pressure and thus the ability to remove heat. If the
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temperature of the heat pipe at the particular location
continues to rise due to excessive heat input, the inner
layer 105 may eventually experience dry-out. However,
in accordance with the preferred embodiment of the
present invention, when the temperature at the particular
location exceeds 80° C., the outer layer 107 begins
contracting to reduce its capillary radius. This helps to
prevent or delay the total dry-out at the particular
location. Because each layer 105, 107 is thin, preferably
on the order of 0.5 mm, multiple layers can be used to
achieve a continuous temperature/heat flux dependent
wick structure. For simplicity of explanation, only two
layers are shown in FIG. 1.
(Sehmbey, col. 2, l. 65–col. 3, l. 16, emphasis added).

D. Analysis
In rejecting the reexamined claims based on the combination of JP
’379 and Sehmbey, the Examiner stated that "[R]equester's reasoning in
claim chart B is incorporated by reference." (ACP 3). In this regard, Claim
Chart B states:
One of ordinary skill in the art at the time of the ‘053 patent
invention would have substituted the self-adjusting multi-layer
wick structure, including inner layer 105 and outer layer 107, of
Sehmbey ‘612 for at least the wick layer 21 of Fukai ‘379
motivated by a desire to prevent any possible wick dryout of the
wick over heat transfer body 20. This substitution would have
the further advantage of making the design of wick layer 21 of
Fukai ‘379 more forgiving, eliminating the need to rely on a
single pore size and porosity selection under all possible
conditions, while also offering the advantage of reducing pore
size and porosity only when needed to maintain capillary
pressure. This result would tend to improve overall condensate
flow by not restricting flow through increased friction except
when needed.
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Further, the wick structure of Sehmbey could also be
substituted for the heat transfer body 20 of Fukai ‘379, since the
self-regulating property of the Sehmbey ‘612 wick, which can
decrease both the pore size and porosity of the wick, would
effectuate the same purpose of improving heat transfer in this
area as taught in Fukai ‘379. Compare Sehmbey ‘612, col. 2, ll.
9–11, with Fukai ‘379, paragraph 0018.

With the substitution of the wick structure, including wick
layers 105, 107, of Sehmbey ‘612 for either or both the wick
layer 21 and/or heat transfer body 20 of Fukai ‘379, the
resultant device meets all of the limitations of claim 1.
(Request, Claim Chart B, pgs. 10–11).

Thus, the record is clear that the Examiner rejects the claims, inter
alia, based on the combination of JP ’379 and Sehmbey by replacing the
heat transfer body 20 of JP ’379 separately, or in conjunction with wick
layer 21, with the wick layers 105, 107 of Sehmbey.

Principle of Operation of JP ’379
The Patent Owner argues that modifying the heat pipe JP ’379 in view
of Sehmbey as proposed changes the principle of operation of JP ’379, and
thus, such modification would be unobvious (ABPO 6, 9). According to the
Patent Owner, "the heat transfer body 20 [of JP ’379] includes a first pore
volume to permit evaporation and inhibit the flow of fluid, while the
wick 21, 21' includes a second pore volume configured to permit fluid flow
at the expense of heat transfer." (ABPO 10). The Patent Owner asserts
that "[t]he claims of the ‘053 patent recite the exact opposite principle of
operation" because they require "an increased flow rate of the condensate
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as the condensate approaches the evaporation region," but JP ’379 "relies on
a decreased flow rate as the condensate approaches the evaporation region."
(ABPO 11; see also Rebuttal Brief of Patent Owner (hereinafter "Reb. Br.
PO") 3–4, 8–11).
The Requester disagrees and notes that "[n]owhere in JP ‘379[] is it
ever stated that it is desirable or intended to inhibit the flow of fluid in heat
transfer body 20," but instead, JP ’379 merely discloses the side effect of the
smaller void ratio (Respondent Brief of Requester (hereinafter "Resp. Br.
R") 9–10, 13). We agree with the Requester.
The disclosure of JP ’379 does not support the Patent Owner's
assertion that the basic principle of operation of the heat pipe in JP ’379 has,
as its focus, the inhibition of fluid flow in heat transfer body 20. Rather, JP
’379 discloses the desirability of increased heat transfer through heat transfer
body 20, which in the described implementation, may result in heat transfer
body 20 flowing fluid to a lesser degree than wick 21 (FF 2B, 2C). Thus,
the pertinent portions of JP ’379 relied upon merely stand for the proposition
that heat transfer characteristics should be the focus in selection of heat
transfer body 20, not that its principle of operation is through "decreased
flow rate" as asserted by the Patent Owner. Such decreased flow rate is
neither the principle on which heat pipe 1 of JP ’379 operates, nor does JP
’379 mandate such decreased flow rate. Correspondingly, the Patent
Owner's arguments based on principle of operation are unpersuasive.

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Combination of JP ’379 and Sehmbey
The Patent Owner asserts that even if there is no change in the
principle of operation, the combination of JP ’379 with Sehmbey still fails to
teach or suggest the claim limitation "a multi-wick structure . . . to facilitate
an increased flow rate of the condensate as the condensate approaches the
evaporation region." (ABPO 12).
In addition to the incorporation of a portion of the Claim Chart B,
quoted above, the Examiner finds that:
Since the heat flux is higher where the heat energy enters the
heat pipe (i.e., the evaporator section), it follows that when
combined with JP ’379, the wicking power of the wick taught
by Sehmbey's prior art would necessarily increase as it
approaches the evaporator section (heat transfer body 20).
(ACP 5–6).
Thus, the Examiner's apparent position is that incorporating the wick
structure of Sehmbey in the heat pipe of JP ’379 would increase the wicking
power thereof so as to "facilitate an increased flow rate of the condensate as
the condensate approaches the evaporation region" as required by the claims.
The Patent Owner disputes the Examiner's finding, arguing that
although Sehmbey teaches increasing local pumping pressure, this does not
necessarily mean that there is an "increased flow rate," which depends on
resulting balance of pumping pressure and hydrodynamic flow resistance
(ABPO 18; see also Reb. Br. PO 1–3, 11–12). According to the Patent
Owner, because "there is simply no teaching or expectation that the
multilayer wick in Sehmbey would facilitate the recited increased flow rate,"
(ABPO 16) the determination that such increased flow rate is attained is
conclusory (ABPO 18).
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The Requester contends that there is increased flow rate in the SMA
wick of Sehmbey via the increased capillary pumping pressure so that wick
dry out is prevented (Resp. Br. R 16). We agree with the Examiner and the
Requester. There is no substantive dispute as to the Patent Owner's assertion
that "increased flow rate" depends, at least in part, on the resulting balance
of pumping pressure and hydrodynamic flow resistance (ABPO 18).
However, the question is whether the proposed combination of JP ’379 and
Sehmbey attains a balance that would increase the flow rate. The
preponderance of the evidence indicates that it would.
Specifically, an increase in the flow rate can be reasonably inferred in
view of Sehmbey's teaching that the disclosed SMA wick structure functions
by decreasing the void ratio to increase capillary pumping pressure in order
to increase the ability to remove heat and prevent or delay wick dry-out (FF
3B–3D). In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("it is proper to take
into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom."). In this regard, Sehmbey also specifically discloses that
variable-wick heat pipes having both small pore size and large pore size
(such as that disclosed in JP ’379) are known in the art, teaches the
limitations of such heat pipes, and teaches that there is a need for "an
improved heat pipe wherein the capillary pressure of the wick can be
adjusted post assembly." (FF 3C). Sehmbey further discloses a multi-
layered shape memory alloy (SMA) as a wick structure that satisfies such
need (FF 3A). In other words, Sehmbey suggests using the disclosed SMA
wick structure instead of a variable-wick such as that in JP ’379 to improve
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heat transfer for a wider range of heat flux distribution and temperature (FF
3A–3D). It is not apparent how the increased capillary pumping pressure
described in the wick structure of Sehmbey can function to increase the
ability to remove heat and to prevent or delay wick dry-out if the flow rate is
not increased thereby (see also Resp. Br. R 16–17, citing Heat Pipe Science
and Technology, pp. 221–228).
The Patent Owner also argues that such replacement of heat transfer
body 20 of JP ’379 would not be made because JP ’379 discloses that
"excessive density [i.e., a further decrease in pore size] will stop condensed
liquid permeation and actually reduce evaporation efficiency." (ABPO 21,
quoting JP ’379 ¶0020). However, as discussed supra, JP ’379 does not
stand for the proposition that pore size should be decreased, much less that
the pore size should be decreased to the point of stopping condensed liquid
permeation so as to reduce evaporation efficiency.
The Patent Owner further argues that "the proposed modification of
JP ‘379 with the multilayer wick of Sehmbey would render the JP ‘379
device unsuitable for its intended purpose" because in Sehmbey, the wick
structure self-regulates to decrease pore size thereby increasing resistance to
liquid flow and frustrating the intended purpose of JP ’379 of providing a
first wick with relatively large void ratio (ABPO 21–22; see also Reb. Br.
PO 13).
However, we agree with the Examiner and the Requester that the
intended purpose of JP ’379 is set forth therein as "to provide a heat pipe
providing superior heat discharge performance, in which both the condensed
liquid reflux function and the evaporation efficiency are favorable" (JP ’379
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¶0007), and that such purpose is improved by the combination of the heat
sink of JP ’379 with the wick of Sehmbey due to the superior self-regulating
wick feature thereof (ACP 8; see also Third Party Requester's Comments
filed August 20, 2012, pg. 22). In addition to the Patent Owner's
mischaracterization of JP ’379 discussed supra relative to principle of
operation, and the explicit disclosure in JP ’379 regarding the intended
purpose thereof (see JP ’379 ¶0007), Sehmbey specifically discloses that
variable-wick heat pipes like those of JP ’379 known in the art can be
improved by its disclosed SMA wick as also discussed supra (FF 3A–3D).
Thus, the teaching of Sehmbey does not "frustrat[e] the intended purpose of
JP ’379," but instead, is consistent therewith.
As to the claim recitation "a wicking power of the multiwick structure
increases with decreased flow distance to the evaporation region," the
specification of the ’053 patent does not explicitly define what "wicking
power" is. Instead, the specification of the ’053 patent uses the term to
generally describe the ability of a wick structure to perform the function of
wicking a fluid (see, e.g., col. 2, ll. 33-42; col. 6, ll. 49-54). The
specification of the ’053 patent also describes various structures that can be
used to increase "wicking power" such as "many layers of wire mesh,
grooves, powders, foam structure, or a combination thereof." (FF 1B; see
also FF 1C).
As the Examiner finds, the proposed combination of JP ’379 and
Sehmbey satisfies this "wicking power" limitation because, as discussed
supra, it can be reasonably inferred that the multi-layer SMA wick material
of Sehmbey increases the flow rate by increasing capillary pumping pressure
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as the temperature increases. Because the heat flux and temperature
becomes progressively higher closer to the heat source, the combination of
JP ’379 with the SMA wick structure of Sehmbey would exhibit increased
ability to wick (i.e., wicking power) closer to the heat source. Thus, the
wicking ability of such a combination can reasonably be said to "increase[]
with decreased flow distance to the evaporation region to facilitate an
increased flow rate of the condensate as the condensate approaches the
evaporation region" as recited in the claims.8
Finally, as to the claim recitation requiring "converging flow
condition as the condensate approaches the evaporation region," we observe
that the specification of the ’053 patent discloses that such converging flow
occurs as the liquid flows from a large surface area to a smaller evaporation
area (FF 1B, 1C), which can allow for the increased flow rate. The heat pipe
of JP ’379 similarly provides for liquid flow from a large surface area to a
smaller evaporation area (FF 2A, Fig. 1; see also Request, Claim Chart B,
pgs. 5–6). Thus, the proposed combination of JP ’379 and Sehmbey
satisfies this limitation as well.

8 Although we do not rely on the following, we also observe that this
limitation is also satisfied by the proposed combination of JP ’379 and
Sehmbey because of the increased amount of multi-layer SMA wick
material of Sehmbey that would be present within indentation 13a of the
heat pipe of JP ’379 as compared to the remaining bottom portion thereof
(see FF 2A). Such increased amount of wicking material would increase the
ability of the wick to perform the function of wicking a fluid, and because
the indentation 13a is larger than the mounting area 13 for mounting external
heating element H (FF 2A), such ability to wick would increase toward
mounting area 13.
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In view of the above, we find no error in the Examiner's rejection of
claims 1–5, 18–20 and 24 as being obvious over the combination of JP ’379
and Sehmbey, and affirm the rejection. The Patent Owner relies on the
arguments submitted with respect to claim 1 for patentability of dependent
claim 9 (ABPO 22). Hence, the Examiner's rejection of claim 9 based on the
combination of JP ’379, Sehmbey and Yamamoto is also affirmed.

E. Conclusions With Respect to Appeal of the Patent Owner
The Examiner's rejections of claims 1–5, 9, 18–20 and 24 are
AFFIRMED.

II. CROSS-APPEAL OF THE REQUESTER
A. Examiner's Non-Adoption/Withdrawal
The Requester cross-appeals the Examiner's non-adoption or
withdrawal of the following proposed rejections:
1. Claims 1, 3, 5, 19, 20 and 24 under 35 U.S.C. § 102(b) as
anticipated by Lomolino9 (Ground 1: ACP 1–2).
2. Claims 2, 4, 9 and 18 under 35 U.S.C. § 103 as obvious over
Lomolino alone (Ground 2: ACP 2).
3. Claims 1–5, 9, 18–20 and 24 under 35 U.S.C. § 103 as obvious
over Mochizuki10 in view of Sehmbey (Ground 5: ACP 9).

9 Patent No. 5,427,174 issued June 27, 1995.
10 Patent No. 5,694,295 issued December 2, 1997.
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B. Issues
The following issues have been raised in the present cross-appeal of
the Requester:
1. Whether the Examiner erred in interpreting the limitation
"hydraulically interconnected wick structures" as requiring a
connection that allows fluid to pass from one wick structure to
another.
2. Whether the Examiner erred in finding that the heat pipe of
Mochizuki fails to disclose the limitation requiring increasing wicking
power with decreased flow distance.

C. Prior Art Findings of Fact
4. Mochizuki:
A. Discloses a heat pipe for cooling CPU 16 (Mochizuki,
Abstract; col. 7, ll. 52–54). Figure 9 of Mochizuki is
reproduced below.

Figure 9 of Mochizuki illustrates a schematic section
showing a heat pipe having inner face 12a, sloped side
wall portions 12c, working fluid 13, spray coating 35,
spacer wicks 36, evaporating portion 38, and condensing
portion 29 (Mochizuki, col. 7, l. 52–col. 8, l. 24).

B. Discloses that:
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With the aforementioned wicks, most of the
working fluid in liquid phase, as has wetted the inner face
of the radiating portion, is conveyed to the inner face of
the heating portion directly not along the inner faces of
the sloped side walls by the capillary pressure of the
wicks.
(Mochizuki, col. 2, l. 66–col. 3, l. 3).

C. Discloses that:
As a result, the individual spacer wicks 36 are caused by
the capillarity pressure to act as the liquid passages for
conveying the working fluid 13 in liquid phase from the
heating portion 12a to the radiating portion 12b or from
the radiating portion 12b to the heating portion 12a. On
the other hand, cavities 37, as left between the spacer
wicks 36, act as vapor passages.
(Mochizuki, col. 7, ll. 29–36).

D. Discloses that:
On the other hand, the working fluid 13 having
restored the liquid phase is sucked to the lower end
portions of the individual spacer wicks 36 through the
spray coating 35 formed on the inner face of the radiating
portion 12b so that it is fed to the inner face of the
heating portion 12a by the capillarity pressures of the
individual spacer wicks 36. In short, the working fluid
13 is conveyed to the inner face of the heating portion l2a
not through the inner faces of the sloped side wall
portions 12c.

The working fluid 13 is then sucked up from the
upper end faces of the individual spacer wicks 36 by the
capillarity pressure of the spray coating 35 and is
distributed all over the evaporating portion 38.
(Mochizuki, col. 7, l. 66–col. 8, l. 11, emphasis added).
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D. Analysis
Proposed Rejections Based on Lomolino
The claims at issue require "a multi-wick structure comprising a
plurality of hydraulically interconnected wick structures." The Examiner
declines to adopt the proposed rejections of the Requester finding that:
there is no indication that the meshes of columns 449, 447, and
445 [of Lomolino] are connected in some way such that fluid
can pass from one mesh to another. The description at col. 19
and Fig. 6 only appears to indicate that the meshes pass fluid to
stage 410 and not between each other.
(ACP 2).

The Requester does not dispute the finding that, in the heat exchanger
of Lomolino, there is no fluid flow from one mesh to another. However, the
Requester asserts that the Examiner erred by not applying the broadest
reasonable interpretation, and instead, applied an overly narrow
interpretation of the limitation because the language of the claims does not
require fluid flow from one mesh to another (CABR 11, 22–24). The
Requester notes that the dictionary meaning of "hydraulic" merely means
"relating to water or other liquid in motion." (CABR 24, quoting Webster's
New Collegiate Dictionary 555 (1st ed. 1979). Based on this dictionary
definition, the Requester argues that the pertinent limitation "should be
interpreted as covering multiple wick structures that are 'interconnected' via
the working fluid liquid itself," which is satisfied by the heat exchanger of
Lomolino (CABR 24, emphasis added). Thus, the position of the Requester
appears to be that the pertinent limitation is satisfied because each of the
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columns in Lomolino returns liquid coolant to the bottom plate 420 and the
returned coolant from different columns would all come into contact with
each other at the bottom plate.
The Patent Owner agrees with the Examiner's construction of the
claims and finding with respect to Lomolino (Respondent Brief of Patent
Owner (hereinafter "Resp. Br. PO") 16), and notes that the term
"interconnected" is defined as "having internal connection between the parts
or elements" so that when the terms "hydraulically interconnected" are taken
together, the Examiner's interpretation is correct (id. at 18, citing
www.merriam-webster.com/dictionary/interconnected). The Patent Owner
further argues that the Requester's interpretation is not reasonable in view of
the Specification (Resp. Br. PO 18).
We generally agree with the Examiner and the Patent Owner. Firstly,
we observe that even the Requester's proffered definition of "hydraulic"
makes clear that the liquid is "in motion." In addition, the interpretation of
the limitation does not hinge on the dictionary meaning of "hydraulic" alone,
but rather, that meaning in combination with the meaning of
"interconnected." Thus, when the definitions of the individual terms are
considered in combination, it is clear that "hydraulically interconnected"
means that the fluid moves or flows through the internal connections
between recited multiple wick structures.
The Requester also notes that when the claims were amended during
the original prosecution to add the term "hydraulically," the Patent Owner
argued that while the "wick structures are arranged to permit fluid flow
among the structures, [] the claims are not limited to any particular
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attachment, connection, or interlocking mechanism to provide a fluid flow
path between the wick structures (e.g., the wick structures are not
necessarily soldered together or affixed to each other in any specific
manner)." (CABR 23–24). However, even the reproduced argument of the
Patent Owner makes clear that the wick structures "permit fluid flow among
the structures," thereby clearly undermining the Requester's assertion. (See
Resp. Br. PO 18). It is clear that the reproduced argument of the Patent
Owner elaborates that the hydraulic interconnection of the wick structures
need not be attained via a specific type of connection such as soldering.
However, it does not state that there need not be any connection between the
wicks, or fluidic flow therebetween.
Therefore, in view of the above, we discern no error in the Examiner's
decision to not adopt the Requester's proposed rejections based on
Lomolino, and affirm the same.

Proposed Rejection Based on Mochizuki in View of Sehmbey
The Requester asserts that the Examiner erred in withdrawing the
previously adopted rejection of the reexamined claims of the ’053 patent
over the combination of Mochizuki and Sehmbey (CABR 16; see also
CABR 14). According to the Requester, the claims are rendered obvious by:
the modification of the Mochizuki ‘295 Figure 9 embodiment
by substituting the multi-layer self-regulating wick structure
(105, 107) disclosed in Sehmbey ‘612 for the spray-on wick
layer (35) of the Mochizuki ‘295 device. Request, pp. 35–40,
46–52; Ex. C, pp. 8–11; 21–24; 39–41. As set forth in the
Request, one of ordinary skill in the art would have been
motivated to make this substitution in order to gain the
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advantages of the self-regulating wick of Sehmbey ‘612 in
preventing wick dry-out in and near the evaporation region. Id.
(CABR 16; see also CABR 14).
The Examiner withdrew the previously adopted rejection based on the
disclosure of Mochizuki (FF 4A, 4C, 4D) that teaches that it is spacer wicks
36 that return working fluid 13 in liquid phase from the heating portion 12a
to the radiating portion 12b, and the fluid is not conveyed by the inner faces
of the sloped side wall portions 12c (ACP 10).
Based thereon, the Examiner finds that:
If coating 35 were replaced with Sehmbey's multi-layer wick
structure 105, 107, as suggested by the requester, then the
resulting combination would include Sehmbey's wick on the
inner faces of Mochizuki's container 12. . . . However, since
the flow direction is from coating 35 to spacer wicks 36, the
wicking power does not increase with decreasing flow distance
to the evaporation region. Thus, the resulting combination
would not be able to perform the required function of the
Wicking Power Limitation.
(ACP 11, emphasis added).
The Requester asserts that the Examiner misconceived how heat pipe
devices actually function because although the disclosure of Mochizuki
discloses that condensate is only returned to the evaporating portion 38
through the spacer wicks 36, this cannot be the case (CABR 18 and marked
up Fig. 9 of Mochizuki). The Requester asserts that the increasing wicking
power limitation is satisfied by the combination because:
[g]iven the geometry of the Mochizuki ‘295 device, however, it
is certain that at least some of the fluid in the wick 35 on the
side walls 12c of the Mochizuki ‘295 device adjacent the
hearing portion 12c [sic, heating portion 12a] will flow directly
toward the heating portion 12a, and not backward along the
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side wall portions 12c and through the coating 35 on radiating
portion 12b so as to be drawn through the lower end of spacer
wicks 36 is as theorized by the Examiner.
(CABR 19; see also CABR 21; Rebuttal Brief of Requester 7).
The Requester further asserts that:
as the temperature of heating portion 12a increases, more
capillary pumping pressure in the wick material on side wall
portions 12c near heating portion 12a would be available. This
would tend to draw the working fluid through the wick material
on side wall portions 12c toward the immediately adjacent
heating portion 12a, and would resist any backward flow
toward the lower ends of spacer wicks 36.
(CABR 20).
The Patent Owner agrees with Examiner and argues that the
Requester's position is contradicted by the explicit disclosure of Mochizuki
that the working fluid does not condense along the sloped sidewall 12c and
that the Requester's assertions are mere attorney argument (Resp. Br. PO 8–
9, 15). We find no error in the Examiner's withdrawal of the rejection based
on the combination of Mochizuki and Sehmbey.
The Examiner's finding that the wicking power does not increase with
decreasing flow distance to the evaporation region is based on the explicit
disclosure of Mochizuki itself (FF 4C–4D), and is not simply a theory of the
Examiner. Rather, it is the theoretical description of the Requester as to how
the device of Mochizuki operates that appears to be in conflict with the
explicit teachings therein. Problematically, the Requester merely relies on
attorney argument in support of its theory, and does not submit persuasive,
objective evidence in support thereof. Attorney argument is no substitute for
such evidence. Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284
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(Fed. Cir. 2005); In re Schulze, 346 F.2d 600, 602 (CCPA 1965) ("Argument
in the brief does not take the place of evidence in the record.").
Based on the additional disclosure in Mochizuki ’295 stating that
"most of the working fluid in liquid phase, . . . is conveyed to the inner face
of the heating portion directly not along the inner faces of the sloped side
walls by the capillary pressure of the wicks" (FF 4B), the Requester asserts
that the understanding of the Examiner is not correct and that "at least some
of the working fluid in the Mochizuki ‘295 device must return to heating
portion 12a through the wick 35 on the side wall portions 12c." (CABR 20–
21). However, we observe that this additional disclosure regarding "most of
the working fluid" in Mochizuki ’295 is actually more consistent with the
remaining explicit disclosure that working fluid 13 is not conveyed via the
inner faces of sloped side wall portions 12c, when the additional disclosure
is understood as suggesting that the fluid at the edge is stagnant or not all
fluid is used during operation (see also Resp. Br. PO 16).
Therefore, in view of the above, we affirm the Examiner's decision to
withdraw the previously adopted rejection based on the combination of
Mochizuki and Sehmbey.

E. Conclusion With Respect to the Cross-Appeal of the Requester
We affirm the Examiner's decision to:
1. Not adopt the proposed rejections of the claims based on
Lomolino.
2. Withdraw the previously adopted rejection of the claims based
on the combination of Mochizuki and Sehmbey.
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III. CONCLUSIONS
1. The Examiner's rejections of the reexamined claims appealed
by the Patent Owner are affirmed.
2. The Examiner's decision to not adopt or withdraw the proposed
rejections cross-appealed by the Requester is affirmed.

AFFIRMED

In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

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PATENT OWNER:
EDELL, SHAPIRO & FINNAN, LLC
9801 Washington Blvd.
Suite 750
Gaithersburg, MD 20878

THIRD PARTY REQUESTER:

PATTERSON THUENTE CHRISTENSEN PEDERSEN, P.A.
4800 IDS Center,
80 South 8th Street
Minneapolis, MN 55402-2100