Ex Parte 8245764 et al

Patent Trial and Appeal Board

Apr 29, 2016

95002386 (P.T.A.B. Apr. 29, 2016)

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.
95/002,386 09/15/2012 8245764 COOL-1.012 7254
22852 7590 04/29/2016
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
04/29/2016 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
____________________

CoolIT SYSTEMS, INC.,
Third Party Requester, Respondent,

v.

ASETEK A/S,
Patent Owner, Appellant.
____________________

Appeal 2015-007934
Reexamination Control 95/002,386
Patent US 8,245,764 B21
Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, BRETT C. MARTIN,
JON M. JURGOVAN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued to André Sloth Eriksen on August 21, 2012 (hereinafter the ’764
patent).
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(b) from a rejection of claims
1–30. We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a). Oral
arguments were heard in this matter on April 13, 2016.
We are informed that the ’764 patent is currently involved in the
following litigations: 1) Asetek Holdings, Inc. v. CoolIT Systems, Inc., Civil
Action No. 3:12-CV-04498-EMC, and 2) Asetek Holdings, Inc. v. CMI
USA, Inc., Civil Action No. 3:13-CV-00457-JST. Both the litigations are
pending in the U.S. District Court for the Northern District of California.
We REVERSE.

CLAIMED SUBJECT MATTER
The claims are directed to “a cooling system for a central processing
unit (CPU) or other processing unit of a computer system.” Spec. col. 1, ll.
11–13. Claims 1, 10, and 15 are independent. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A cooling system for a heat-generating component,
comprising:
a double-sided chassis adapted to mount a pump
configured to circulate a cooling liquid, the pump comprising a
stator and an impeller, the impeller being positioned on the
underside of the chassis and the stator being positioned on the
upper side of the chassis and isolated from the cooling liquid;
a reservoir adapted to pass the cooling liquid therethrough,
the reservoir including:
a pump chamber including the impeller and formed
below the chassis, the pump chamber being defined by at
least an impeller cover having one or more passages for
the cooling liquid to pass through;
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a thermal exchange chamber formed below the
pump chamber and vertically spaced apart from the pump
chamber, the pump chamber and the thermal exchange
chamber being separate chambers that are fluidly coupled
together by the one or more passages; and
a heat-exchanging interface, the heat-exchanging
interface forming a boundary wall of the thermal exchange
chamber, and configured to be placed in thermal contact
with a surface of the heat-generating component; and
a heat radiator fluidly coupled to the reservoir and
configured to dissipate heat from the cooling liquid.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Koga US 7,544,049 Jun. 9, 2009

REJECTIONS
Claims 1–19, 21–23, 25–27, 29, and 30 stand rejected under 35 U.S.C
§ 102(b) as being anticipated by Koga. RAN 3–4.
Claims 20, 24, and 28 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Koga. RAN 5.

ISSUE
The issues in this appeal can be narrowed to one dispositive issue,
namely whether or not Koga teaches a “thermal exchange chamber” as
claimed. All of the claims rejected over Koga require such a thermal
exchange chamber and thus resolution of this issue will affect all pending
rejections.

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FINDINGS OF FACT
Koga describes a centrifugal pump 1 for cooling an electronic
component such as an integrated circuit chip configured as a central
processing unit 2. Col. 4, ll. 3–7. Centrifugal pump 1 is enclosed in a pump
casing 15 that rests on a top surface of chip 2. Pump casing 15 defines a
pump room 15A enclosing an impeller 11. When energized, a ring magnet
13 and a stator 14 induce impeller 11 to rotate in a horizontal plane about a
vertical axis. When rotating, impeller 11 draws liquid coolant 41 into pump
room 15A through a sucking channel 19 and discharges the coolant from the
pump room through a tangential discharging channel 20. Col. 4, ll. 27–37,
51–58 and 61–67; col. 7, ll. 39–42; col. 8, ll. 4–11; see also Figs. 3 and 5.
Referring to Figures 3 and 5, Koga describes the lower surface of
pump room 15A as follows:
On radially outer wall surface 15C of the pump room 15A, a
large number of dimples 21 are formed. A recess (recessed area)
15E defines a radially inner wall surface on a bottom of the pump
room 15A that faces toward impeller 11, and has a large number
of protrusions 24 projected from the radially outer wall surface
and toward impeller 11. Recess 15E, slope 27, and radially outer
wall 15C together define an inner wall face 50 of casing 15. Col.
4, ll. 43–51.
The portion of Koga’s pump casing 15 contacting the top surface of
chip 2 defines a heat-receiving plane 15B. Heat-receiving plane 15B
collects heat evolved by chip 2. Col. 4, ll. 38–43. Koga states that
“[s]ucking channel 19 is disposed between heat-receiving plane 15B and
inner wall face 50.” Col. 4, ll. 58–60; see also Fig. 3. Koga teaches that
“the heat generated from component 2 travels to casing 15 and is transferred
to protrusions 24 projected from recess 15E [on the inner wall face 50
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defining the lower boundary of the pump room 15A], so that the coolant 41
collects the heat when [the coolant] hits against protrusions 24.” Col. 8, ll.
11–15. In other words, “the heat generated from component 2, i.e. the heat
stored in protrusions 24 and casing 15, is collected by coolant 41, and
discharged through discharging channel 20 together with coolant 41 by
spinning blades 12 [of impeller 11].” Col. 8, ll. 32–36.
Koga also teaches that:
The shape of heat-receiving plane 15B and the shape of an upper
surface of component 2 complement each other three-
dimensionally, so that sucking channel 19 does not extend over
component 2. This structure allows heat-receiving plane 15B
and the upper surface of component 2 to solidly contact with each
other, so that heat can be transferred efficiently. Col. 8, ll. 47–
53.
Koga does not appear to describe any significant heat exchange between
chip 2 and coolant 41 flowing through the sucking channel 19. See Tilton
Dec. ¶ 12.

ANALYSIS
According to the Examiner, Koga teaches the recited “thermal
exchange chamber” receiving coolant via “sucking channel” 19. RAN 6.
The Patent Owner argues that, “even if sucking channel 19 is considered a
‘chamber,’ [the sucking channel] still cannot be equated to a ‘thermal
exchange chamber’ because Koga does not disclose or suggest that sucking
chamber 19 is configured or intended to perform any heat transfer function.”
App. Br. 10 (italics suppressed).
The parties’ main disagreement lies with whether and to what extent
thermal exchange must occur in channel 19 in order to qualify as the claimed
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“thermal exchange chamber.” The Requester argues that the broadest
reasonable interpretation would allow for channel 19 to meet this limitation
because it allegedly “is clearly configured to perform thermal exchange” due
to the fact that the walls surrounding the chamber are made of a “highly
conductive casing.” Resp. Br. 5. We do not disagree that some thermal
exchange may occur in channel 19, but we disagree with the Requester’s
characterization that the channel is configured to perform thermal exchange.
As the Patent Owner points out, “the USPTO, in applying the broadest
reasonable interpretation of claim elements, is bounded by what would be
reasonable from the perspective of one of ordinary skill in the art.” App. Br.
12 (citing In re Buszard, 504 F.3d 1365, 1365–66 (Fed. Cir. 2007)). Both
parties appear to agree that, in order to be reasonably considered a thermal
exchange chamber, channel 19 must be configured to perform thermal
exchange. See Resp. Br. 5, App. Br. 12. We agree with the Patent Owner
that the mere fact of thermal exchange occurring does not cause any
chamber or channel where some small amount of thermal exchange occurs
to be considered configured to perform thermal exchange. App. Br. 12.
Koga teaches a combined pump and heat exchange chamber 15.
Chamber 15 is clearly designed to be a heat exchange chamber having
specific features, namely protrusions 24, to enhance the heat exchange from
component 2 to chamber 15. Channel 19, however, is merely a conduit to
supply cooling liquid to chamber 15 and is not specifically described as
being intended to perform any cooling function. As stated above, we do not
deny that some heat exchange may occur in channel 19, but it is clear from
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Koga that the purpose of channel 19 is to direct fluid into chamber 15 where
the heat exchange is specifically designed to occur.
Further, the Patent Owner has provided unrebutted evidence in its
favor in the form of a Declaration of Donald Tilton stating that “the sucking
channel cannot be reasonably said to function as a heat exchanging
chamber.” Tilton Dec. ¶ 12. Additionally, we note that the Examiner does
not address the issue of thermal exchange in the Remarks portion of the
RAN and merely explains that channel 19 is a chamber without explaining
how channel 19 is configured so as to perform thermal exchange. See, e.g.,
RAN 6–7. We conclude that the mere fact of thermal exchange does not
make a chamber a heat exchange chamber and that the evidence in this case
supports the conclusion that in order for one of ordinary skill in the art to
reasonably conclude that a chamber is a “thermal exchange chamber,” the
chamber must be configured to perform heat exchange, such as in Koga’s
chamber 15. Because all of the claim rejections rely on the Examiner’s
faulty interpretation and application of “thermal exchange chamber,” we do
not sustain any of the rejections of claims 1–30 over Koga.
The Patent Owner further raises the issue of the priority date of the
present application. This issue is moot in light of our finding that Koga does
not anticipate claims 1–19, 21–23, 25–27, 29, and 30; and, as such, does not
include adequate teachings to serve as a primary reference in rejecting
claims 20, 24, and 28. For this reason, we do not reach the issue of priority
in this appeal.
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DECISION
The Examiner’s rejections of claims 1-30 are reversed. More
specifically, we reverse the Examiner’s decision rejecting claims 1–19, 21–
23, 25–27, 29, and 30 under 35 U.S.C § 102(b) as being anticipated by
Koga; and the Examiner’s decision rejecting claims 20, 24, and 28 under 35
U.S.C § 103(a) as being unpatentable over Koga.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 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.

REVERSED

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