Ex Parte Dangelo

Board of Patent Appeals and Interferences

Feb 23, 2009

10762666 (B.P.A.I. Feb. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARLOS DANGELO
____________

Appeal 2009-0076
Application 10/762,666
Technology Center 2800
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Decided:1 February 23, 2009
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Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY,
and KARL D. EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 28-32. The Examiner withdrew claims 1-21 pursuant to
a restriction requirement and Appellant’s subsequent election (see Office
Action, mailed May 9, 2005). Appellant canceled claims 22-27. No other
claims are pending. (App. Br. 3).2 We have jurisdiction under 35 U.S.C. §
6(b).
We affirm.
Appellant’s invention relates to heat conductive media within vias of
an integrated circuit structure, thereby cooling the structure. In one
embodiment, the media comprises carbon nanotubes, and in another, copper.
(Spec. 5: 1-10; 9: 11-15; Fig. 1).
Claim 28, illustrative of the invention,3 follows:
28. An integrated circuit die having enhanced power dissipation,
comprising:
a substrate, having a top surface upon which power generating-
devices of said integrated circuit die are fabricated, said substrate having a
backside surface essentially parallel to said top surface;
at least one cavity, extending from said backside surface a
predetermined distance toward said top surface, said predetermined distance

2 Appellant’s Brief (filed Feb. 14, 2007) (“App. Br.”) and Reply Brief (filed
Jul. 17, 2007) (“Reply Br.”), and the Examiner’s Answer (mailed May 17,
2007) (“Ans.”), detail the parties’ positions.
3 Claim 29 differs from claim 28 only in the material of the heat conducting
media recited - “carbon nanotubes” in place of “copper.”
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being less than the distance between said top surface and said backside
surface; and
a heat conductive media contained within said at least one cavity, said
media having a thermal conductivity greater than a bulk thermal
conductivity of said substrate, such that heat produced by said power
generating devices is transferred to the backside surface via said heat
conductive media, wherein said heat conducting media comprises copper.

The Examiner relies on the following prior art references:
Cromwell US 5,926,370 Jul. 20, 1999
Dahl US 2002/0130407 A1 Sept. 19, 20024
Montgomery US 2003/0117770 A1 Jun. 26, 2003 (filed Dec. 20, 2001)5

The Examiner rejected claim 28 as obvious under 35 U.S.C. § 103(a)
based upon the teachings of Dahl and Cromwell.
The Examiner rejected claims 29-32 as obvious under 35 U.S.C.
§ 103(a) based upon the teachings of Dahl and Montgomery.

ISSUES
Appellant contends that the references neither enable nor motivate
skilled artisans to arrive at the particular heat conducting media materials,
respectively copper and carbon nanotubes, as recited in claims 28 and 29.
(App. Br. 9-19). The issues before us on appeal are:

4 Dahl’s published application matured into a patent, US 6,783,589 B2 (Aug.
31, 2004).
5 Montgomery’s published application matured into a patent, US 6,965,513
B2 (Nov. 15, 2005).
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Did Appellant demonstrate that the Examiner erred in finding that
Dahl and Cromwell collectively teach a heat conducting media comprising
copper as set forth in claim 28?
Did Appellant demonstrate that the Examiner erred in finding that
Dahl and Montgomery collectively teach heat conducting media comprising
carbon nanotubes as set forth in representative claim 29?6

FINDINGS OF FACT (FF)
1. Appellant states: “A number of deposition techniques are known
for growing carbon nanotubes. Preferably, the carbon nanotubes are grown
using plasma enhanced chemical vapor deposition (PECVD), as has been
recently reported in the scientific literature and is known to those skilled in
the art.” (Spec. 9:26-29).
2. Appellant also states: “The current art uses multiple metal layers,
insulated by dielectrics, and connected layer to layer by vias. Innerconnect
conductors are made of metals such as tungsten, aluminum and/or copper.”
(Id. at 2:26-28).
3. Dahl discloses heat conducting conduits 631, 632 embedded into a
back surface of an integrated circuit chip 601 with circuits on the top
surface. The heat conducting conduits may be flexible fibers or rigid rods,
made of diamondoid-containing materials. (Dahl ¶¶ [0117], [0121], [0122];
Figs. 6B, 6C).

6 Appellant does not separately argue that claims 30-32 are patentable, but
focuses on independent claim 29 (App. Br. 16-18), hereby selected as
representative of the group, pursuant to 37 C.F.R. § 41.37(c)(1)(vii).
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4. Dahl states that such diamondoid materials, whether in the form of
rods 630 or a film 620, can be deposited to create the configurations of either
Figure 6B or 6C by CVD techniques, or by “self-assembly techniques.” (Id.
¶ [0122]).
5. Dahl discloses that diamondoids and carbon nanotubes are forms
of carbon. (Id. ¶¶ [0014], [0019]). Referring to fullerines “and their counter
parts carbon nanotubes,” Dahl states (id. ¶ [0014]): “Though discovered
recently, these materials already have a potential role in microelectronics
applications.” Dahl describes diamondoids as “[a] form of carbon not
discussed extensively in the literature.” (Id. ¶ [0019]).
6. Cromwell discloses a heat management device to cool an
integrated computer apparatus that includes a CPU or VLSI module
connected to a printed circuit board, a power converter, cables, and
supporting structure (Abstract). An array of copper pipes 31 cools the
components of the integrated device structure by transferring heat to heat
fins. (Cromwell, Fig. 4a, col. 10, ll. 13-32).
7. Montgomery discloses “a thermal interface structure . . . formed
from an array of aligned carbon nanotubes.” (Montgomery, ¶ [0013]). Due
to their high thermal conductivity, “using them in a thermal interface
structure will substantially increase its thermal conductivity.” (Id.). “Such
arrays are available from Nano-Lab, Inc., which manufactures them using a
chemical vapor deposition process described in an article of Dr. Z.F. Ren in
Science, 282, 1105 (1998).” (Id. ¶ [0014], Figs. 2, 3). The arrays (of
bundles 24 of nanotubes 26) are grown on a variety of substrates 28,
including glass and silicon, from which they project. (Id.). Montgomery
discloses that the arrays can be grown to project from either a
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“semiconductor die” or “heat sink” to produce “a particularly strong thermal
bond.” (Id. ¶ [0023]).
8. Dahl’s and Montgomery’s published applications issued as United
States patents prior to the Examiner’s Office Action, mailed July 17, 2006
(see nn. 4, 5, supra), from which Appellant appeals.

PRINCIPLES OF LAW
“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). “On appeal to the Board, an applicant
can overcome a rejection by showing insufficient evidence of prima facie
obviousness . . . .” Id. at 985-86 (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 127 S.Ct. 1727, 1740 (2007)
(quoting Sakraida v. Ag. Pro. Inc., 425 U.S. 273, 282 (1976)). “[W]hen a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.” Id. (citing
United States v. Adams, 383 U.S. 39, 50 (1966)).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of those
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references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
“[T]he interaction of multiple components means that changing one
component often requires the others to be modified as well.” KSR, 127 S.Ct
at 1744. “A person of ordinary skill is also a person of ordinary creativity,
not an automaton.” Id. at 1742.
Inventions disclosed in the applied prior art references enjoy a
statutory presumption of validity if the applied prior art references are U.S.
patents. 35 U.S.C. § 282 (1999); In re Spence, 261 F.2d 244, 246 (CCPA
1958). The enablement requirement under 35 U.S.C. § 112 is a prerequisite
to validity. Cf. Spence, 261 F.2d at 246. It follows that prior art patents are
presumed enabling absent clear and convincing evidence to the contrary.

ANALYSIS
Appellant’s assertions (App. Br. 9-16), with respect to claim 28, that
Dahl and Kumar do not teach a copper heat conductive media within the
cavity of the die, lack merit. As the Examiner found (Ans. 4-5), Dahl
teaches all of the claimed subject matter (FF 3) except the specific type of
heat conductive material recited, copper. Appellant does not seasonably
dispute this finding. As the Examiner also found (Ans. 5), Cromwell simply
teaches the recited material, copper, as a conventionally employed heat
transfer conduit for integrated circuit packages (FF 6). Substituting
Cromwell’s heat-conducting copper conduits for Dahl’s heat conducting
diamondoid conduits (FF 3), as the Examiner proposed (Ans. 5), “with each
performing the same function it had been known to perform and yield[ing]
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no more than one would expect from such an arrangement”, would have
been obvious. KSR, 127 S.Ct. at 1740.
Appellant’s reliance (App. Br. 9) on enablement requirements
outlined in In re Kumar 418 F.3d 1361, 1368 (Fed. Cir. 2005) lacks merit.
Appellant asserts (App. Br. 11, see also App. Br. 13) that Dahl or Cromwell
fail to enable a skilled artisan as to: “(1) how to make copper (or even
diamondoid) conduits in fiber form . . . (2) how to insert from about 1 to 100
copper (or even diamondoid) conduits into the chip; or (3) how copper (or
even diamondoid) conduits would ‘communicate’ with thermal vias . . . .”
As the Examiner reasoned (Ans. 7-9), Dahl was not applied to teach
copper, and neither Dahl nor Cromwell were applied to teach each and every
particular item Appellant lists.7 In any case, Cromwell, a valid patent, and
Dahl’s published application, which matured into a valid patent at the time
the Examiner employed its teachings (FF 8), are presumed to be enabling for
what they disclose, contrary to Appellant’s assertions. See Spence, 261 F.2d
at 246.
As such, Appellant’s conclusory remarks, devoid of the type of
rebuttal evidence addressed in Kumar, fail to rebut the Examiner’s prima
facie case of enablement for such a simple substitution of prior art elements
or materials. “The applicant has the burden of coming forward with

7 “Even if a reference discloses an inoperative device, it is prior art for all
that it teaches.” Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547,
1551 (Fed. Cir. 1989)(citations omitted). “[A] non-enabling reference may
qualify as prior art for the purpose of determining obviousness under § 103.”
Symbol Techs. Inc. v. Opticon Inc. 935 F.2d 1569, 1578 (Fed. Cir. 1991)
(citing id. at 1551, another citation omitted). Thus, items not germane to the
claimed invention need not be enabled, contrary to Appellant’s remarks.
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evidence in rebuttal, when the prior art includes a method that appears, on its
face, to be capable of producing the claimed composition.” Kumar, 418
F.3d at 1368 (emphasis added).
Dahl’s method, “appears, on its face, to be capable of producing”
diamondoid conduits emanating from a semiconductor substrate cavity. (FF
2-4). Each protruding conduit defines “at least one cavity,” as required by
claim 28; i.e., each cavity surrounds a conduit in the circuit die substrate.
Appellant admits that making metal vias of copper was standard in the art
(FF 2). Replacing Dahl’s diamondoid heat transfer conduits with copper
conduits, using either known copper via fill techniques (FF 2) or Dahl’s
“self-assembly techniques” (FF 4), would have been well within the skilled
artisan’s expertise.
Appellant’s arguments (App. Br. 14-16) directed to an alleged lack of
motivation also fail to demonstrate error. Either of the Examiner’s
rationales for replacing Dahl’s diamondoid heat transfer conduits with
Cromwell’s standard copper heat transfer conduits, with each conduit type
generally employed in semiconductor integrated packages (FF 3, 6),
including such rationales as simplicity of fabrication, and/or functional
equivalents (see App. Br. 15, quoting the Examiner’s dual rationales),
satisfies the Examiner’s obviousness burden under KSR and Kumar. Dahl’s
diamondoid pipes, representing an advancement in the art (FF 5) over
copper vias or pipes, logically implies that copper represents a simpler
alternative. Appellant has failed to rebut the Examiner’s supported finding.
Appellant’s argument (App. Br. 13-14) that the Examiner’s proposed
combination would involve a substantial reconstruction and redesign of
Dahl’s system, due to Cromwell’s “macroscopic heat pipes,” also lacks
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persuasive merit. Replacing one pipe or conduit for another, as the
Examiner proposed, involves no such reconstruction or redesign. Even if the
modification required a redesign, under KSR, 127 S.Ct at 1742, ordinarily
skilled artisans are not automatons who lack the ability to make simple size
alterations or other similar adjustments as required to combine
interconnected components. Moreover, under Keller, 642 F.2d at 425, a
bodily incorporation of Cromwell’s copper pipes into Dahl’s semiconductor
is not the test for obviousness.
With respect to claim 29, Appellant makes similar arguments, based
primarily on an alleged lack of enablement, and contends that Dahl and
Montgomery fail to teach carbon nanotubes as heat conductive media within
the cavity of a die. (App. Br. 16-19; Reply Br. 11-13). Appellant’s
arguments fail for similar reasons as outlined above.
Montgomery, “on its face” (Kumar, 418 F.3d at 1368), enables skilled
artisans to produce what Montgomery discloses: carbon nanotube conduit
arrays embedded into semiconductor substrates (FF 7). Moreover, under
Spence, 261 F.2d at 246, Montgomery’s application, which matured into a
valid patent (FF 8), is presumed to be an enabling reference. Additionally,
Appellant admits that techniques for making such carbon nanotubes were
well known (FF 1). Under Kumar, Appellant’s conclusions, based on
alleged deficiencies of enabling references, are devoid of any supportable
evidence as required to rebut the Examiner’s prima facie case of obviousness
(Ans. 5-7).
Contrary to Appellant’s further arguments (App. Br. 18-19), as noted
supra, Montgomery specifically discloses heat conductive carbon nanotubes
arrays embedded within a semiconductor die, produced by using standard
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industry practice or obtained on the market (FF 7). As discussed supra,
Dahl similarly discloses embedded heat conductive conduits made of a
similar carbon material, albeit, a diamondoid carbon material, produced by
standard techniques (FF 3-5). As the Examiner generally reasoned (Ans. 6-
7), and under KSR, such a simple substitution of one element for another,
each providing a specific desired thermal conductivity for cooling or heat
transfer, would have been obvious. Such a simple replacement also, would
have been, on its face, enabled.
Accordingly, Appellant’s arguments do not convince us of error.
Therefore, we sustain the Examiner’s rejections of independent claims 28
and 29, and dependent claims 30-32, which were not separately argued.

CONCLUSION
Appellant did not demonstrate that the Examiner erred in finding that
Dahl and Cromwell, or Dahl and Montgomery, collectively teach a heat
conducting media comprising copper or carbon nanotubes as set forth,
respectively, in claims 28 and 29.

DECISION
We affirm the Examiner's decision rejecting claims 28-32.
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

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