Ex Parte Behl

Board of Patent Appeals and Interferences

Apr 27, 2005

09775881 (B.P.A.I. Apr. 27, 2005)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte SUNNY BEHL

Appeal No. 2005-0460
Application No. 09/775,881

ON BRIEF

Before KIMLIN, PAK and JEFFREY T. SMITH, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-20.
Claims 1, 7 and 19 are illustrative:
1. A device for removably mounting a hard disk drive in a
memory storage housing, comprising:
a carrier for holding a hard disk drive, the carrier
being removably mountable in a memory storage device
housing; and
a heat sink mounted on the carrier.
7. A device for removably mounting a hard disk drive in a
memory storage housing, comprising:
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Application No. 09/775,881
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a carrier for holding a hard disk drive, the carrier
being removably mountable in a memory storage device
housing; and
fins mounted on the carrier.
19. A device for removably mounting a hard disk drive in a
memory storage housing, comprising:
a first means for holding a hard disk drive, the first
means being removably mountable in the memory storage device
housing; and
a second means for convective cooling mounted on the
first means.
The examiner relies upon the following references in the
rejection of the appealed claims:
Ende 4,642,715 Feb. 10, 1987
Wyler 5,510,954 Apr. 23, 1996
Lin 5,514,036 May 7, 1996
Chang 5,694,290 Dec. 2, 1997
Grouell 5,892,655 Apr. 6, 1999
Claims 1, 2, 5, 6, 13, 14, 17 and 18-20 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Chang. The claims on
appeal also stand rejected under 35 U.S.C. § 103(a) as follows:
(a) claims 3, 4, 15 and 16 over Chang in view of Lin;
(b) claims 7 and 8 over Chang in view of Wyler or Ende; and
(c) claims 9-12 over Chang in view of Wyler and Lin.
Appellant submits at page 4 of the Brief that "[a]ll claims
at issue stand or fall together." Accordingly, the claims as
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grouped by the examiner in the separate rejections stand or fall
together.
We consider first the examiner's rejection of claims 1, 2, 5
6, 13, 14, 17 and 18-20 under § 102 over Chang. Claims 1, 2, 5,
6, 13, 14, 17 and 18 define a device for removably mounting a
hard disk drive in a memory storage housing comprising, inter
alia, a heat sink mounted on the carrier for holding the hard
disk drive. The examiner takes the position that upper cover 60
of Chang meets the claim requirement for a heat sink. The
examiner accepts appellant's definition of a heat sink as a
device that absorbs and dissipates heat, and maintains that
element 60 of Chang meets this definition by being a device
comprising slots which "enhance the dissipation of heat of the
hard disk," citing column 4, lines 3-4 of the reference (page 5
of Answer, lines 1-3). However, while Chang teaches that the
slots of element 60 enhance the dissipation of heat, the examiner
seems to ignore the other requirement for a heat sink, namely,
that it absorb heat. The examiner has pointed to no teaching in
Chang that supports the conclusion that the reference describes
element 60 as a heat absorbing material. Although the examiner
states that Chang "nowhere suggests plastic as the material for
element 60 or the carrier" (page 5 of Answer, second paragraph),
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it is the examiner's burden in the first instance to establish
that Chang describes all the features of the claimed invention
within the meaning of § 102. Here, the examiner has not
satisfied his burden of demonstrating that Chang describes
element 60 as an element which dissipates and absorbs heat.
Consequently, we are constrained to reverse the examiner's § 102
rejection of claims 1, 2, 5, 6, 13, 14, 17 and 18.
Claims 19 and 20 do not require a heat sink. Rather, the
claims call for a convective cooling means mounted on the means
for holding a hard disk drive. The requirements of claims 19 and
20 seem to have been overlooked by appellant who argues "Claims
1, 2, 5, 6, 13, 14, 17, and 18-20 are allowable over Chang since
Chang neither teaches nor suggests a heat sink mounted on a
carrier for holding a hard disk drive" (page 6 of Brief, second
paragraph, emphasis added). Since appellant acknowledges that
cover 60 of Chang "includes ventilating slots 62" (page 4 of
Brief, penultimate paragraph), we find that Chang describes means
for convective cooling on the holder for the hard disk drive.
Accordingly, we will sustain the examiner's § 102 rejection of
claims 19 and 20.
Concerning the examiner's § 103 rejection of claims 3, 4, 15
and 16 over Chang in view of Lin, Lin's disclosure of a removable
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filter does not remedy the deficiency of Chang discussed above.
Hence, we cannot sustain this rejection.
We will sustain the examiner's § 103 rejection of claims 7
and 8 over Chang in view of Wyler or Ende. Claim 7 does not
require a heat sink but, rather, fins mounted on the carrier for
holding a hard disk drive. While claim 8 further recites a heat
sink including fins mounted on the carrier, both Wyler and Ende
disclose such a finned heat sink for a holder of hard disk
drives. Accordingly, we find that it would have been obvious for
one of ordinary skill in the art to select a heat absorbing
material for cover 60 of Chang and to further incorporate fins in
the cover 60 to enhance the dissipation of heat. We are
satisfied that one of ordinary skill in the art, based on the
collective teachings of the prior art, would have found it
obvious to employ a finned heat sink for the carrier of a hard
disk drive, as presently claimed. Appellant contends that "no
teaching, suggestion, or motivation in the cited art as to how
such a conductive heat path would be advantageous in the carrier
of Chang which is taught to already include ventilating slots 62"
(page 8 of Brief, first paragraph). However, we are confident
that it would have been obvious to one of ordinary skill in the
art that the ventilating slots 62 could be substituted for a
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finned heat sink material, or that the heat dissipation can be
improved by adding fins to the cover 60 of Chang made from a heat
absorbable material. Manifestly, both Wyler and Ende evidence
that it was known in the art to use finned heat sinks to remove
heat from the housing of hard disk drives.
We will also sustain the examiner's § 103 rejection of
claims 9-12 over Chang in view of Wyler and Lin for the reasons
set forth above in conjunction with our agreement with the
examiner that Lin evidences the obviousness of including an air
filter on the face of the carrier.
We note that appellant bases no argument upon objective
evidence of nonobviousness, such as unexpected results.
This application is remanded to the examiner to consider a
§ 103 rejection of claims 1-6 and 13-18 over the combined
teachings of Chang, Wyler, Ende and Lin in view of the reasoning
set forth in this opinion.
In conclusion, the examiner's § 102 rejection of claims 1,
2, 5, 6, 13, 14, 17 and 18 is reversed, as is the examiner's
§ 103 rejection of claims 3, 4, 15 and 16. The examiner's § 103
rejections of claims 7, 8 and 9-12 are affirmed. Accordingly,
the examiner's rejection of the appealed claims is affirmed-in-
part. Also, the application is remanded to the examiner for
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consideration of a rejection of claims 1-6 and 13-18 under
35 U.S.C. § 103.
In addition to affirming the examiner's rejection of one or
more claims, this decision contains a remand. 37 CFR § 41.50(e)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004))
provides that:
Whenever a decision of the Board includes a remand,
that decision shall not be considered final for judicial
review. When appropriate, upon conclusion of proceedings on
remand before the examiner, the Board may enter an order
otherwise making its decision final for judicial review.
Regarding any affirmed rejection, 37 CFR § 41.52(a)(1)
provides "[a]ppellant may file a single request for rehearing
within two months from the date of the original decision of the
Board."
The effective date of the affirmance is deferred until
conclusion of the proceedings before the examiner unless, as a
mere incident to the limited proceedings, the affirmed rejection
is overcome. If the proceedings before the examiner do not
result in allowance of the application, abandonment or a second
appeal, this case should be returned to the Board of Patent
Appeals and Interferences for final action on the affirmed
rejections, including any timely request for rehearing thereof.
Appeal No. 2005-0460
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv) (effective Sep. 13, 2004; 69 Fed. Reg. 49960
(Aug. 12, 2004); 1286 Off. Gaz. Pat. Office 21 (Sep. 7, 2004)).
AFFIRMED-IN-PART AND REMANDED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
ECK:clm
Appeal No. 2005-0460
Application No. 09/775,881
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James D. Ivey
3025 Totterdell St.
Oakland, CA 94611-1742