Ex Parte Brunschwiler et al

Patent Trial and Appeal Board

Oct 28, 2014

11957576 (P.T.A.B. Oct. 28, 2014)

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.
11/957,576 12/17/2007 Thomas J. Brunschwiler CH920070069US1 9573
48062 7590 10/29/2014
RYAN, MASON & LEWIS, LLP
1175 Post Road East
2nd Floor
Westport, CT 06880
EXAMINER
HAN, JONATHAN
ART UNIT PAPER NUMBER
2818
MAIL DATE DELIVERY MODE
10/29/2014 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
____________________

Ex parte THOMAS J. BRUNSCHWILER,
RYAN J. LINDERMAN, and ERICH M. RUETSCHE
____________________

Appeal 2012-007113
Application 11/957,576
Technology Center 2800
____________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants seek review of the Examiner’s decision to reject claims 1–
25.1 We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).

1 Although Appellants list only claims 1–9, 12, 13, 15–21, 23, and 25 as
appealed in the “Status of the Claims” section of the Appeal Brief, the
“Statement of the Grounds of Rejection to be Reviewed on Appeal” lists all
of the rejections of all the pending claims, i.e., claims 1–25. Normally, an
appeal of less than all the rejected claims requires cancellation of the non-
appealed claims. However, because of the ambiguity created by the
statement of the rejections on review, rather than direct the Examiner to
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We AFFIRM-IN-PART.
Appellants’ invention relates to an assembly including a layer of
particle-filled viscous material pressed between two members, where at least
one of the members includes channels (see, e.g., claim 1), and a method of
forming channels in one of the members and pressing the layer of particle-
filled viscous material between the channel-containing member and another
member (see, e.g., claims 13 and 25).
The claims require the channels be in the form of a series of
hierarchical channels (claims 1, 13, and 25; Spec. 3:9–16). One example of
the hierarchical channels is depicted in Figure 2, reproduced below:

Figure 2 depicts a series of hierarchical channels

Figure 2 shows a first level of hierarchy (largest channels 204), a
smaller second level hierarchy (channels 206) halfway between the first
level channels 204, and a still smaller third level hierarchy (channels 208)
halfway between the second level channels 206 (Spec. 4:24–31). Other
hierarchical arrangements are possible. See Figure 5. The key is that

cancel claims 10, 11, 14, 22, and 24 as non-appealed, we treat the rejection
of those claims as appealed, but not separately argued. If Appellants do not
wish to pursue claims 10, 11, 14, 22, and 24, they still have the option of
canceling those claims upon return of jurisdiction of the case to the
Examiner.
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channels in one level of hierarchy have different width and depth dimensions
than channels in another level of hierarchy as seen in Figures 2 and 5.
The series of hierarchical channels have a specific purpose in
Appellants’ invention. According to the Specification, when a particle-filled
material is squeezed between two members, the material “spreads out” and
will bifurcate at a line central to the bifurcation that Appellants term the
stacking line (Spec. 4:7–23; see also Fig. 1 at 112). This results in a
simplified particle stacking pattern as shown in Figure 1. Appellants’
hierarchical channel design is intended to provide good control of particle
stacking as the members press together and spread the particle-filled
material (Spec. 4:24–27). The flow of the particle-filled material is shown
in Figure 4, which is reproduced below:
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Figure 4 shows a series of views illustrating the transition of bifurcation
zones through sequential filling of each channel hierarchy

Figure 4 shows three successive views 480, 482, and 484 of the
pressing process (Spec. 6:21–22). View 480 shows the start of the pressing
process (Spec. 6:24–25). At the start of the process, the flow of material 102
bifurcates substantially midway between channels 204, 206, and 208 as
shown by arrows 462 (Spec. 6:23–25). The stacking line is midway between
the arrows as shown at 1402. As pressing progresses, the particle-filled
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material fills the smallest channels 208 and flow bifurcates over channels
208 as shown by arrows 464 of view 482 (Spec. 6:25–28). As shown by a
comparison of view 480 and 482, the stacking line moves from between
channels 206 and 208 to a location over channels 208. In the final
bifurcation of view 484, the second level channels 206 collect large particles
and flow bifurcates over channels 206 as shown by arrows 466 (Spec. 6:28
to 7:2).
In the process of Figures 2 and 4, as the pressing process progresses
and the material flows, the stacking regions are pushed to a new location or
diffused (Spec. 7:3–7). The hierarchical series of channels of Figures 2 and
4 reduce stacking of the particles.
In contrast to the channel design of Figures 2 and 4, the series of
hierarchical channels shown in Figure 5 creates regions of higher particle
concentration or stacking at specific locations, rather than reduced
concentration and reduced stacking (Spec. 7:22–26).
Appellants’ broadest claims encompass both types of hierarchical
channels, i.e., those that are configured to reduce stacking and those
configured to increase stacking (see claims 1, 13, and 25).
To further illustrate the claimed invention, we reproduce claim 1 with
the limitations at issue italicized:
1. An assembly comprising:
a first member having a first member surface;
a second member having a second member surface; and
a layer of particle-filled viscous material pressed between
said first member surface and said second member surface;
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wherein at least one of said surfaces is formed with a
series of hierarchical channels configured to control stacking
of said particles during pressing together of said surfaces, said
hierarchical channels being substantially parallel, said at least
one of said surfaces being substantially free of any other
hierarchical channels formed thereon, and wherein each level of
said hierarchy is characterized by a distinct combination of
channel width and channel depth.
(Claims Appendix at Appeal Br. 15.)
The Examiner rejects the claims as follows:
A. claims 1, 2, 6, 8–11, 13, 15, 18, and 20–242 under 35 U.S.C.
§ 102(b) as anticipated by Colgan3;
B. claim 25 under 35 U.S.C. § 102(b) as anticipated by Daikoku4;
C. claim 12 under 35 U.S.C. § 103(a) as obvious over Colgan in view
of Daikoku;
D. claims 3–5, 7, 16–17, and 19 under 35 U.S.C. § 103(a) as obvious
over Colgan in view of Michel5;
E. claim 14 under 35 U.S.C. § 103(a) as obvious over Colgan in view
of McCutcheon.6
We address each rejection below.

2 The Examiner omits claims 15, 18, and 20–24 from the statement of the
rejection (Final Office Action 2; Ans. 4, but the Examiner discusses these
claims in the body of the rejection (Final Office Action 4–5; Ans. 6–7).
Appellants understand claims 15, 18, and 20–24 to be rejected (Appeal Br.
1–2). Therefore, the error is harmless.
3 Colgan et al., US 6,774,482 B2, patented Aug. 10, 2004.
4 Daikoku et al., US 5,345,107, patented Sept. 6, 1994.
5 Michel et al., US 2005/0263879 A1, published Dec. 1, 2005.
6 McCutcheon et al., US 2005/0077618 A1, published Apr. 14, 2005.
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OPINION
Interpretation of Distinct
There is a question with regard to the meaning of the word “distinct”
in the context of the claim language “a series of hierarchical channels . . .
wherein each level of said hierarchy is characterized by a distinct
combination of channel width and channel depth.” Because “the first
inquiry must be into exactly what the claims define,” In re Wilder, 429 F.2d
447, 450 (CCPA 1970), we begin by determining the meaning of “distinct.”.
The Examiner states that “distinct” means “‘distinguishable to the eye
or mind as discrete,’” but does not provide a citation to the dictionary
containing this definition (Ans. 14).
Appellants cite dictionary.com definitions. According to the
definitions cited by Appellants “distinct” means “distinguished as not being
the same; not identical; separate” and “not alike; different.” (Appeal Br. 6.)
When interpreting the words of a claim, one must look at how the
words are used together. Appellants’ claims use the word “distinct” with the
word “combination.” The phrase “distinct combination” refers to channel
width and channel depth. Moreover, the phrase is referring to levels of
hierarchy in a series of hierarchical channels. Together, the words of the
claim indicate that “distinct combination of channel widths and channel
depths” is referring to combinations of widths and depths that are distinct
from one another. The definition “distinguishable to the eye or mind as
discrete,” does not fit the use of the word “distinct” in the context of the
claims. Rather, in order to be distinct, the combination of width and depth
of one level of hierarchy must be different from the other combinations of
width and depth of other levels of hierarchy.
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Rejection A
With regard to the rejection of claims 1, 2, 6, 8–11, 13, 15, 18, and
20–24 under 35 U.S.C. § 102(b) as anticipated by Colgan, the issue on
appeal is whether the Examiner has established that Colgan describes the
distinct combination of channel width and channel depth required by the
claims (compare Appeal Br. 5–6 and Reply Br. 2–4 with Ans. 4–5 and 14–
15).
According to the Examiner, “Colgan clearly discloses different
combinations of channel widths and depths that would constitute a distinct
combination of channel width and depth.” (Ans. 14.) In support, the
Examiner reproduces Figure 13 of Colgan. The Examiner also relies upon
Colgan’s description of the height and widths of the channels as related to
the size of the particles within the paste, stating that “[i]f a smaller particle is
introduced, R would be varied as well, indicating the ability the change the
depths as well” (Ans. 15).
Appellants contend that Colgan does not describe hierarchical
channels where “each level of said hierarchy is characterized by a distinct
combination of channel width and channel depth” (Reply Br. 3). According
to Appellants, the channels of any single embodiment of Colgan have the
same channel width and depth (id.).
A preponderance of the evidence supports Appellants contention. In
every embodiment discussed by Colgan, the channels have the same width
and depth. Figure 13 shows an example pattern of recesses (col. 6, ll. 41–
44). Although the various series of channels may have different lengths as
depicted (see, e.g., Fig. 13), the widths and depths are always of the
dimensions shown in Figure 8. The widths and depths are proportional to
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the maximum particle size R following the dimensions set forth in Figure 8.
In any one embodiment, the maximum particle size is the same. Therefore,
the R is the same for each channel and hence the depths and widths are the
same for each channel as well.
We do not sustain the claims 1, 2, 6, 8–11, 13, 15, 18, and 20–24
under 35 U.S.C. § 102(b) as anticipated by Colgan.

Rejection B
The Examiner rejects claim 25 under 35 U.S.C. § 102(b) as
anticipated by Daikoku. Claim 25 requires a step of forming a series of
hierarchical channels in a first member surface and, similarly to claims 1 and
13, claim 25 requires each level of hierarchy be characterized by a distinct
combination of channel width and channel depth. Claim 25 is reproduced
below.
25. A method of forming an interface, said method
comprising the steps of:
forming a series of hierarchical channels in a
substantially cylindrical first member surface of a substantially
cylindrical first member, said channels being configured to
control particle stacking, and wherein each level of said
hierarchy is characterized by a distinct combination of channel
width and channel depth; and
pressing said first member to a workpiece with a layer of
particle-filled viscous material between said first member
surface and a surface of said second workpiece.
(Claims Appendix at Appeal Br. 18.)
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The Examiner finds Daikoku teaches the required distinct
combination of channel width and channel depth and cites to Figure 4B of
Daikoku in support (Ans. 7).
Appellants contend that Daikoku teaches non-hierarchical channels in
Figure 4B and does not teach that each level of hierarchy is characterized by
a distinct combination of channel width and channel depth (Appeal Br. 6).
As we explained above, in order to be distinct, different levels of
hierarchical channels must differ in width, depth, or the combination of
width and depth.
Figure 4B of Daikoku depicts channels of the same width and depth.
Given that Daikoku’s Figure 4B does not show channels of different
dimensions, we cannot say that a preponderance of the evidence supports the
Examiner’s finding that Daikoku describes within the meaning of 35 U.S.C.
§ 102 a series of hierarchical channels with each level of hierarchy
characterized by a distinct combination of channel width and depth as
required by claim 25.
We do not sustain the rejection of claim 25 under 35 U.S.C. § 102(b)
as anticipated by Daikoku.

Rejection C
The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as obvious
over Colgan in view of Daikoku. Claim 12 reads:
12. The assembly of Claim 1, wherein said first member
surface is formed with said series of hierarchical channels, said
first member is substantially cylindrical, and said second
member comprises a workpiece.
(Claims Appendix at Appeal Br. 16.)
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As explained above with respect to the rejections for anticipation by
Colgan and Daikoku, neither Colgan nor Daikoku describe the required
levels of hierarchy with distinct combinations of channel width and channel
depth. The Examiner does not rely upon the prior art in a way that cures the
deficiency. Therefore, we do not sustain the rejection of claim 12 over the
combination of Colgan and Daikoku.

Rejection D
The Examiner rejects claims 3–5, 7, 16–17, and 19 under 35 U.S.C.
§ 103(a) as obvious over Colgan in view of Michel. Appellants argue claims
3, 5, 16, and 17 as a group, claim 4 separately, and claims 7 and 19 as a
separate group. We address each grouping below.

Claims 3, 5, 16, and 17
For the group of claims 3, 5, 16, and 17, we select claim 3 as
representative. Claim 3 depends from claim 2. Claim 2 requires the
hierarchical channels be “configured to reduce said stacking of said
particles.” (Claims Appendix at Appeal Br. 15.)
Claim 3 reads:
3. The assembly of Claim 2, wherein said hierarchical
channels comprise a first substantially uniformly spaced series
of channels and a second series of channels substantially
intermediate said first channels, said second series of channels
being smaller in cross-section than said first series of channels.
(Claims Appendix at Appeal Br. 15.)
The Examiner recognizes that Colgan does not describe channels of
the spacing and dimensional requirements of claim 3 (Ans. 8). The
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Examiner finds that Michel teaches a series of hierarchicial channels with
the first series of channels at 3 and the second series at 4 as shown in Figure
2 (id.). The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to use the channel
orientation of Michel in the assembly of Colgan “in order to produce a
thermally conducting surface, thereby improving the thermal conductivity
between both plates” (Ans. 8–9, citing Michel ¶ 60).
Appellants contend that, “as argued above, the cited prior art does not
disclose or suggest hierarchical channels.” (Appeal Br. 8.) Appellants
further contend that the combination of Colgan and Michel does not teach
every element of the independent claims, and the combination/modification
suggested by the Examiner is not appropriate because it is based upon
inappropriate hindsight (Appeal Br. 8–9).
Michel describes a thermal interface with conducting material
between two faces (Michel ¶ 7). Both Colgan and Michel seek to reduce
thermal resistance between the faces by reducing the space between the
faces (id.).
Michel’s channels 4 have a larger width and a larger depth than
second grooves 3 (Michel ¶ 58). The larger first grooves improve the flow
of the fluid material 9 squeezed out of the interface between plates 2 and 8.
The smaller width of the second grooves 3 improves the thermal
conductivity between the first plate 2 and second plate 8 (Michel ¶ 62).
Michel suggests that more levels of hierarchy (nesting) may be used (Michel
¶ 65).
A preponderance of the evidence supports the Examiner’s finding that
Michel teaches or suggests using a series of hierarchical channels wherein
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each level of hierarchy is characterized by a distinct combination of channel
width and channel depth. A preponderance of the evidence further supports
the Examiner’s underlying factual findings in support of the conclusion that
it would have been obvious to one of ordinary skill in the art to configure the
channels of Colgan so they have the distinct combinations of width and
depth taught by Michel in order to improve the thermal conductivity
between the members 1 and 2 of Colgan. This is so because both Colgan
and Michel are concerned with reducing thermal resistance at the interface
between the members. Both Colgan and Michel flow a particle-filled
material between the plates. Thus, both references are concerned with the
same problems, and one of ordinary skill in the art would have recognized
that Michel’s channel hierarchy (nesting) would have been useful in the
assembly and process of Colgan.
At the end of their arguments against the group of claims, Appellants
state that neither Colgan nor Michel, nor their combination, discloses or
suggests the third series of hierarchical channels required by claims 5 and
17. To the extent Appellants are arguing claims 5 and 17 separately, we are
not persuaded that Appellants have identified a reversible error in the
rejection. Michel teaches that three or more levels of nesting (hierarchy) can
be used (Michel ¶¶ 65, 69, 72, and 73; Figs. 5A and 5B).
Claim 3 is narrower than claims 1 and 2. Claim 16 depends from
claims 15 and 13. Claim 16 is, therefore, narrower than claims 13 and 15.
The Examiner’s rejection of claims 3 and 16 constitutes an implied rejection
of the broader claims 1, 2, 13, and 15. Ex parte Janakiraman, 2009 WL
1270322 (BPAI 2009) (Informative); see also Ormco Corp. v. Align Tech.,
Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007) (When the subject matter of
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dependent claims is determined to have been obvious, the broader subject
matter of the claims from which they depend must also be determined to
have been obvious.); In re Muchmore, 433 F.2d 824, 824–25 (CCPA 1970)
(“Since we agree with the board's conclusion of obviousness as to these
narrow claims, the broader claims must likewise be obvious.”).
Therefore, we sustain the rejection of claims 3, 5, 16, and 17 under
35 U.S.C. § 103(a) and the implied rejection of claims 1, 2, 13, and 15.

Claim 4
Claim 4 depends from claim 3 and requires that the second series of
channels be smaller in cross-section than said first series of channels by a
factor of about one-half (Claims Appendix at Appeal Br. 15).
The Examiner acknowledges that Michel does not explicitly disclose
that the second grooves 3 are a factor of about one-half smaller than the
larger grooves 4 (Ans. 9). However, the Examiner quotes the passage from
In re Aller, 220 F.2d 454,456 (CCPA 1955) stating that “where the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.”
(Ans. 9.) The Examiner determines that “it would have been obvious to one
of ordinary skill in the art at the time of invention to implement the
necessary cross-sections of the combination of Colgan and Michel in order
to provide for optimum heat conductivity.” (Id.)
Appellants contend that the prior art does not teach the general
conditions because hierarchical channels are not disclosed in the prior art
(Appeal Br. 10). Appellants further contend that there is no indication that
the claimed size would have been discovered by routine experimentation or
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that a person of ordinary skill in the art would have been motivated to use
channels of the claimed size (id.).
As a first matter, Michel discloses hierarchical channels with one
level of channels having dimensions smaller than other levels. Michel
teaches the general conditions of the hierarchical channel dimensions.
As a second matter, as discussed above in connection with the
rejection of claim 3, a preponderance of the evidence supports the
Examiner’s finding of a reason to combine the hierarchical channel
configuration of Michel with the teachings of Colgan.
As a third matter, the channel dimensions are the type of result
effective variable that one of ordinary skill in the art would have understood
to be optimizable through routine experimentation. Michel describes
relationships between the sizes of the channels, the viscosity of the fluid, the
flow of the fluid, and the thermal conductivity achieved by the assembly
(Michel ¶¶ 62–68). Appellants cite to no specific teaching within Michel or
elsewhere that supports the conclusory statement that the ordinary artisan
would not discover the claimed dimensions by routine experimentation.
A preponderance of the evidence supports the Examiner’s findings
and conclusions of law with respect to the rejection of claim 4.

Claims 7 and 19
Appellants argue claims 7 and 19 as a group. We select claim 7 as
representative for resolving the issue on appeal. Claim 7 reads as follows:
7. The assembly of Claim 1, wherein said hierarchical
channels are formed in said first member surface and wherein
said second member surface is formed with a series of channels
positioned substantially orthogonal to said hierarchical channels
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in said first member surface when said first and second surfaces
are assembled.
(Claims Appendix at Appeal Br. 16.)
As we explained above, Michel teaches hierarchical channels in a first
member. The Examiner finds that Michel also discloses orthogonal channels
in the second member when both faces have grooves (Ans. 10, citing Michel
¶ 53).
In addition to arguments already addressed above, Appellants contend
that Michel does not disclose a series of channels in the second member
positioned substantially orthogonal to the hierarchical channels of the first
member (Appeal Br. 11).
Paragraph 53 of Michel states that “at least one of the faces comprises
first grooves and second grooves.” (Michel ¶ 53 (emphasis added).)
Michel suggests that both faces of the members may have first and
second grooves. Michel’s Figure 1 shows a member 2 with grooves running
perpendicularly to each other. When each member contains the grooves, one
series of grooves would be orthogonal to another series of grooves on the
other member.
A preponderance of the evidence supports the findings and
conclusions of the Examiner.

Rejection E
The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as obvious
over Colgan in view of McCutcheon. Appellants advance no arguments
specific to the rejection of claim 14. We determine that Appellants have not
identified a reversible error in the rejection of claim 14.
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CONCLUSION
We do not sustain the rejection of claims 1, 2, 6, 8–11, 13, 15, 18, and
20–24 under 35 U.S.C. § 102(b) as anticipated by Colgan.
We do not sustain the rejection of claim 25 under 35 U.S.C. § 102(b)
as anticipated by Daikoku.
We do not sustain the rejection of claim 12 under 35 U.S.C. § 103(a)
as obvious over Colgan in view of Daikoku.
We sustain the rejection of claims 3–5, 7, 16–17, and 19 under
35 U.S.C. § 103(a) as obvious over Colgan in view of Michel and the
implied rejection of claims 1, 2, 13, and 15 on this grounds.
We sustain the rejection of claim 14 under 35 U.S.C. § 103(a) as
obvious over Colgan in view of McCutcheon.

DECISION
The Examiner’s decision is affirmed-in-part.

TIME PERIOD FOR RESPONSE
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).

AFFIRMED-IN-PART

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