Ex Parte Chauhan et alDownload PDFPatent Trial and Appeal BoardDec 11, 201814676241 (P.T.A.B. Dec. 11, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/676,241 04/01/2015 6147 7590 12/13/2018 GENERAL ELECTRIC COMPANY GPO/GLOBAL RESEARCH 901 Main Avenue 3rd Floor Norwalk, CT 06851 FIRST NAMED INVENTOR Shakti Singh Chauhan 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 276920-2 8770 EXAMINER FENG, ZHENGFU J ART UNIT PAPER NUMBER 2835 NOTIFICATION DATE DELIVERY MODE 12/13/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): haeckl@ge.com gpo.mail@ge.com Lori.e.rooney@ge.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHAKTI SINGH CHAUHAN, JAMES NEIL JOHNSON, BRIAN PATRICK RODEN, and GRAHAM CHARLES KIRK Appeal2017-009639 Application 14/676,241 Technology Center 2800 Before CATHERINE Q. TIMM, WLIA HEANEY, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1-20 of Application 14/676,241 under 35 U.S.C. § 103. Final Act. (Nov. 14, 2016) 2-8. Appellant 1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we AFFIRM-IN-PART. In addition, we issue a NEW GROUND OF REJECTION. 1 The Appellant is the Applicant, General Electric Company, which is also identified as the real party in interest. Appeal Br. 2. Appeal2017-009639 Application 14/676,241 BACKGROUND The present application generally relates to an electronic device (such as a silicon chip) coupled to a heat sink by a heat spreader. Spec. ,r 7. The application teaches that, in such an arrangement, there may be a "leakage current" between the electronic device and the heat sink. Id. ,r,r 14--15. The flow of the leakage current in the heat sink is undesirable as it may generate electrical noise which affects the performance of the electronic device. Id. ,r 15. To prevent such leakage current yet permit the dissipation of heat, the application teaches the use of "a highly electrically resistive but highly thermally conducting coating on at least one of the electronic device, metallic heat spreader or the heat sink." Id. ,r 16. The application further teaches that the coating material "may include disordered form[ s] of carbon that can be deposited on metallic substrate." Id. ,r 18. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. An electronic device assembly comprising: an electronic device; a heat sink coupled to the electronic device to dissipate the heat produced by the electronic device; a heat spreader coupled between the electronic device and the heat sink to transfer heat from the electronic device to the heat sink; and a disordered carbon coating disposed on at least one of the electronic device, the heat spreader, and the heat sink. Appeal Br. 10 (Claims App.). 2 Appeal2017-009639 Application 14/676,241 REJECTIONS The Examiner maintains the following rejections: 1. Claims 1-12 are rejected under 35 U.S.C. § 103 as obvious over Tolchinsky et al. 2 in view ofMertol. 3 Final Act. 2-5. 2. Claims 13-20 are rejected under 35 U.S.C. § 103 as obvious over Tolchinsky in view of Takashima et al. 4 Id. at 5-8. DISCUSSION Rejection 1. The Examiner rejected claims 1-12 as obvious over Tolchinsky in view of Mertol. Id. at 2-5. In support of this rejection, the Examiner found that Mertol teaches the "disordered carbon coating" required by claim 1. Id. at 2-3. Mertol teaches that various techniques may be employed to apply a suitable diamond coating to a semiconductor package. Mertol, 6:57-58. One such technique is chemical vapor deposition ("CVD"). Id. at 6:57-59. Mertol teaches that methods of applying a diamond coating by CVD may differ somewhat but "share common features. For example, growth of diamond (rather than deposition of other less, well-defined forms of carbon) normally requires that the substrate be maintained at a temperature in the range of 1000-1400 K, and that the precursor gas be diluted in an excess of hydrogen." Id. at 7:3-8. Mertol subsequently teaches that, under certain conditions, "the crystalin [sic] morphology disappears altogether and the film becomes an aggregate of diamond nanocrystals and disorder[ ed] 2 US 2005/0070048 Al, published Mar. 31, 2005 ("Tolchinsky"). 3 US 5,907,189, issued May 25, 1999 ("Mertol"). 4 US 2008/0298024 Al, published Dec. 4, 2008 ("Takashima"). 3 Appeal2017-009639 Application 14/676,241 graphite." Id. at 7:21-23. The Examiner relies upon such disclosure as teaching the claimed "disordered carbon coating." Appellant argues that the foregoing portion of Mertol teaches a coating made of a "mixture of diamond nanocrystals and disorder[ ed] graphite and not of the disorder[ ed] graphite itself." Appeal Br. 5 ( emphasis in original). This requires us to consider the scope of the term "disordered carbon" to determine whether such a mixture would fall outside the scope of the claim. The Specification teaches an embodiment where the carbon coating is described as follows: The disordered form of carbon is a disordered diamond material but not diamond itself. Examples of such coatings include high SP3 content DLC coatings and Nano/Micro-crystalline [ d]iamond coating. In one embodiment, high SP3 DLC films which have equal to or greater than 95% SP3 content is used for the coating. Spec. ,r 18 ( emphasis added). The Specification similarly teaches the following: The disordered form of carbon is a diamond like carbon (DLC) material. Examples of such coatings include high SP3 content DLC coatings and Nano/Micro-crystalline [d]iamond coating. In one embodiment, the thickness of the coating may be in the range of 0.008 - 0.015 mm, whereas the thermal conductivity of the coating may be greater than 10 W /mk. Id. ,r 22 ( emphasis added). In view of the foregoing teachings from the Specification, the term "disordered carbon" may include both disordered graphite and nanocrystals. Further, Appellant has not rebutted the Examiner's finding that the "carbon atoms in this mixture as a whole do not have long-range repetitive order like 4 Appeal2017-009639 Application 14/676,241 in a pure diamond material," Answer 5, and therefore comprise a disordered coating. See Reply Br. 3. Nor does Appellant provide support for its contention that "the properties of a film of disorder graphite will be different from properties of a film of the mixture of disorder graphite and diamond nanocrystals and thus, the two cannot be equated." Appeal Br. 5. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) ("[U]nswom attorney argument ... is not evidence and cannot rebut ... other admitted evidence .... "); Estee Lauder, Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (an argument made by counsel in a brief does not substitute for evidence lacking in the record). Appellant further argues that "the entire specification of Mertol is geared towards applying diamond coating." Appeal Br. 6. Appellant contends that "Mertol specifically suggests which CVD technique should be chosen such that to have a diamond layer and not disordered carbon layer." Id. The essence of this argument is that, while Mertol includes a description of disordered carbon in its specification, it lacks a teaching to use such material to coat an electronic device. Rather, Appellant argues, Mertol teaches to employ a diamond coating. The overall thrust of Mertol is to use a "diamond coating" to enhance thermal transfer. See, e.g., Mertol, 4:40-42. Mertol's teaching that "growth of diamond (rather than deposition of other less, well-defined forms of carbon) normally requires that the substrate be maintained at a temperature in the range of 1000-1400 K, and that the precursor gas be diluted in an excess of hydrogen" (id. at 7 :3-7 ( emphasis added)), for example, suggests that Mertol contemplates the use of diamond rather than other forms of carbon. Accordingly, we find Appellant's argument that Mertol does not teach a disordered graphite coating to be persuasive. 5 Appeal2017-009639 Application 14/676,241 In view of the foregoing, we determine that Appellant has shown reversible error in the rejection of claims 1-12. Rejection 2. The Examiner rejected claims 13-20 as obvious over Tolchinsky in view of Takashima. Appellant argues that because both Tolchinsky and Takashima "advise[] against disordered carbon coating, one skilled in the art won't combine these two references in a way to come up with the claim 13." Appeal Br. 8. With regard to Appellant's first contention, regarding Tolchinsky, we adopt the reasoning of the Examiner as stated in the Answer. See Answer 3- 4. With regard to Appellant's second contention, that Takashima advises against the use of disordered carbon, we again consider the scope of the term "disordered carbon coating." The Specification teaches that "[e]xamples of [ disordered carbon] coatings include high SP3 content DLC coatings and Nano/Micro-crystalline Diamond coating." Spec. ,r 18 ( emphasis added). The Specification further teaches that "[t]he disordered form of carbon is a diamond like carbon (DLC) material." Id. ,r 22. This is similar to the teachings of Takashima. In the Background of the Invention section, Takashima discusses prior art that teaches an embodiment employing diamond-like carbon film. [I]t is proposed that an Al (Aluminum) coating layer whose foremost surface is coated with an oxide film caused by natural oxidation of Al is formed [see JP 10-284643 A (1998)], or a diamond-like carbon film is formed [see JP 2004-104074 A], in place of the Ni plating layer, on at least a connection surface of a base substrate. 6 Appeal2017-009639 Application 14/676,241 Takashima ,r 13 ( emphasis added). The diamond-like carbon ("DLC") film described in Takashima falls within the scope of the "disordered carbon coating" of the claims, which is taught to include "a diamond like carbon (D LC) material." In its Reply Brief, Appellant contends that Takashima teaches the diamond-like carbon film on a "base substrate" rather than on the heat spreader or heat sink. Reply Br. 4. This argument fails as Takashima teaches that "[t]he present invention is directed to a heat spreader 4 including a base substrate 1." Takashima ,r 36. Accordingly, Appellant has failed to show error in the rejection of claims 13-2 0. NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1-12 under 35 U.S.C. § 103 over Tolchinsky in view of Takashima. We adopt the analysis of the Examiner regarding Tolchinsky as set forth in the Final Office Action. Final Act. 2, 6. We additionally adopt the Examiner's finding that Takashima teaches providing a disordered carbon coating disposed on a heat spreader. Id. at 6. We further adopt the Examiner's stated analysis regarding reason to combine the teachings of Tolchinsky and Takashima. Id. In view of the foregoing, we determine that claims 1-12 are obvious over Tolchinsky in view of Takashima. 7 Appeal2017-009639 Application 14/676,241 CONCLUSION For the reasons stated above as well as the reasons set forth by the Examiner in the Final Office Action and the Examiner's Answer, the rejection of claims 1-12 as obvious over Tolchinsky in view of Mertol is reversed and the rejection of claims 13-20 over Tolchinsky in view of Takashima is affirmed. We enter a new ground of rejection for claims 1-12 under 35 U.S.C. § 103 as explained above. TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the 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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. 8 Appeal2017-009639 Application 14/676,241 (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the MPEP § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b) 9 Copy with citationCopy as parenthetical citation