Ex Parte Barr et alDownload PDFPatent Trial and Appeal BoardJun 6, 201310641365 (P.T.A.B. Jun. 6, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ANDREW HARVEY BARR, STEPHAN KARL BARSUN, and ROBERT WILLIAM DOBBS ____________________ Appeal 2011-004060 Application 10/641,365 Technology Center 3700 ____________________ Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004060 Application 10/641,365 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the final rejection of claims 1-3 and 5-7.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and ENTER A NEW GROUND OF REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b). The rejected claims are directed to an integrated circuit packaging, with an integrally formed chip lid and heat sink (Spec. 2). Claim 1, which is reproduced below, is the sole independent claim. 1. An integrated circuit packaging comprising: a chip lid portion; a heat sink portion integral with said chip lid portion, wherein said heat sink portion is formed from said chip lid portion; a vapor chamber formed in said heat sink portion; a single pedestal formed in said chip lid portion and separate from said vapor chamber formed in said heat sink portion, said single pedestal is opposite said heat sink portion of said integrated circuit packaging and wherein said single pedestal having a first side opposite a second side, and wherein said vapor chamber is greater in size and height than said single pedestal formed in said heat sink portion; and 1 Our decision will refer to Appellants’ Specification (“Spec.,” filed Aug. 13, 2003), Appeal Brief (“App. Br.,” filed Mar. 23, 2010), and Reply Brief (“Reply Br.,” filed Nov. 3, 2010), as well as the Examiner’s Answer (“Ans.,” mailed Sep. 3, 2010). Appeal 2011-004060 Application 10/641,365 3 wherein said chip lid portion comprises a first side opposite a second side, wherein said single pedestal is centrally located between said first side and said second side of said chip lid portion, each of said first and second sides of said chip lid portion are parallel with said first side and second sides of said single pedestal, wherein said first side and said second side of said chip lid portion, and said single pedestal define a die receptacle that is integrally formed in said chip lid portion, said die receptacle for receiving a die, wherein said die having a top surface that extends laterally past said first and second sides of said single pedestal, and wherein a thermal medium is not required to be located between said die top surface and said single pedestal. EXAMINER’S REJECTIONS The following rejections are under appeal: Claims 1-3 and 5-7 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; Claim 7 is rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim subject matter Appellants regard as the invention; Claims 1-3, 6, and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Appellants’ admitted prior art in view of Yamamoto (US 6,082,443, iss. Jul. 4, 2000); Claims 1-3, 6, and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Appellants’ admitted prior art in view of Yamamoto, Appeal 2011-004060 Application 10/641,365 4 Prasher (US 6,661,660 B2, iss. Dec. 9, 2003), and JP 2001-339026 (pub. Jul. 12, 2001); Claims 1-3 and 5-7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Appellants’ admitted prior art in view of Prasher, JP 2001-339026, and Xie (US 5,880,524, iss. Mar. 9, 1999); and Claims 1-3 and 5-7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Xie in view of Yamamoto, and optionally in view of Garcia (US 6,535,388, iss. Mar. 18, 2003). ANALYSIS Rejection under 35 U.S.C. § 112, First Paragraph Each of the pending claims is rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement (Ans. 4-7). Specifically, the Examiner states that the limitations “said vapor chamber is greater in size and height than said single pedestal formed in said heat sink portion” in independent claim 1 are not described in the Specification in such a way as to convey Appellants had possession of the claimed invention at the time the application was filed (id.). We agree with the Examiner, and further find that the meaning of one of the limitations of the claims cannot be determined from the Specification and drawings. The factual inquiry for determining whether a Specification provides sufficient written description for the claimed invention is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, Appellants were in possession of the invention as currently claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, Appeal 2011-004060 Application 10/641,365 5 1563-64 (Fed. Cir. 1991). Appellants may show possession of the claimed invention by describing the invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Appellants point to the Specification at page 14, lines 7-9, as well as Figures 2 and 4, as providing support for the above limitations of claim 1 (App. Br. 9-11, Reply Br. 1-3). However, this portion of the Specification does not state anything regarding the height of the vapor chamber relative to the height of the pedestal, and does not state anything about the “size” of the vapor chamber or pedestal, and thus does not state for example whether “size” refers to height, volume, or cross-sectional area. Regarding Figure 2, even assuming arguendo that the figure shows the height of the vapor chamber being greater than the height of the pedestal as Appellants argue, Figure 2 still does not show “said vapor chamber is greater in size . . . than said single pedestal formed in said heat sink portion,” as it is unclear whether “size” refers to height, volume, or cross-sectional area, for example. Appellants also argue that Figure 4 shows the length of the vapor chamber being greater than the length of the pedestal, that “size” is understood to refer to volume, and that dimensions from Figures 2 and 4 show the claimed relative sizes of the vapor chamber and pedestal (id.). Even assuming arguendo that Figure 4 shows the lengths of the vapor chamber and pedestal and that “size” refers to volume, as stated by the Examiner, Figures 2 and 4 are directed to different embodiments (Ans. 18- Appeal 2011-004060 Application 10/641,365 6 19). Thus, the dimensions of the vapor chamber and pedestal of the embodiment shown in Figure 2 may or may not be similar to the embodiment shown in Figure 4. Therefore, we find Appellants still have not demonstrated possession of “said vapor chamber is greater in size . . . than said single pedestal formed in said heat sink portion.” For these reasons, we sustain the Examiner’s rejection of claim 1-3 and 5-7 under 35 U.S.C. § 112, first paragraph. Rejection under 35 U.S.C. § 112, Second Paragraph Appellants do not argue against the rejection of claim 7 under 35 U.S.C. § 112, second paragraph, as the claim depends from a canceled claim (App. Br. 11). We therefore sustain the Examiner’s rejection of claim 7 under 35 U.S.C. § 112, second paragraph. Rejections under 35 U.S.C. § 103(a), and a New Ground of Rejection under 35 U.S.C. § 112, Second Paragraph Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1-3 and 5-7 under 35 U.S.C. § 112, second paragraph, as being indefinite. For the reasons discussed above, we find that the Specification does not adequately describe “said vapor chamber is greater in size . . . than said single pedestal formed in said heat sink portion” in each of the claims. Because the Specification fails to disclose this limitation such that one of ordinary skill in the art could determine the scope of the claims, we reject claims 1-3 and 5-7 under 35 U.S.C. § 112, second paragraph, as being indefinite. Appeal 2011-004060 Application 10/641,365 7 Because claims 1-3 and 5-7 are rejected under 35 U.S.C. § 112, second paragraph as being indefinite, in comparing the subject matter of claims 1-3 and 5-7 with the applied prior art, it is apparent to us that considerable speculations and assumptions are necessary in order to determine what is in fact being claimed. As a rejection based on prior art cannot be based on speculations and assumptions, see In re Steele, 305 F.2d 859, 862 (CCPA 1962), we are constrained to reverse, pro forma, the Examiner's rejections of the claims under 35 U.S.C. § 103(a). We add that this is a procedural reversal rather than one based upon the merits of the rejections. DECISION The Examiner’s rejection of claims 1-3 and 5-7 under 35 U.S.C. § 112, first paragraph, is AFFIRMED. The Examiner’s rejection of claim 7 under 35 U.S.C. § 112, second paragraph, is AFFIRMED. The Examiner’s rejections of claims 1-3 and 5-7 under 35 U.S.C. § 103(a) are REVERSED, pro forma. This decision contains a new ground of rejection of claims 1-3 and 5-7 under 35 U.S.C. § 112, second paragraph, pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the Appeal 2011-004060 Application 10/641,365 8 following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: • (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner . . . . • (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . 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). AFFIRMED; 37 C.F.R. § 41.50(b) hh Copy with citationCopy as parenthetical citation