Ex Parte ERIKSSON

Patent Trial and Appeal Board

Feb 15, 2019

15101288 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/101,288 06/02/2016
2292 7590 02/20/2019
BIRCH STEW ART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
FALLS CHURCH, VA 22042-1248
FIRST NAMED INVENTOR
Rolf ERIKSSON
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.
6046-0284 PUS 1 7397
EXAMINER
PAPE, ZACHARY
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLF ERIKSSON1
Appeal2019-001543
Application 15/101,288
Technology Center 2800
Before ALLEN R. MacDONALD, CARLA M. KRIVAK, and
DAVID J. CUTITTA II, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1, 2, 7-15, and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Applicant is identified as ABB Technology LTD, Zurich, Switzerland.
Abstract.
Appeal 2019-001543
Application 15/101,288
STATEMENT OF THE CASE
Appellant's invention is directed "to an electronics module
comprising a thermally conductive panel." Spec. 1 :3--4.
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. An electronics module for coupling to a field terminal
block, the electronics module comprising:
a circuit board comprising electronic equipment;
a housing enclosing the circuit board; and
a thermally conductive panel, the thermally conductive
panel at least partly covering at least two opposite side surfaces
of the housing,
wherein the thermally conductive panel is a U-shaped
cover threaded over the housing from a front side of the
housing, and the front side of the housing is a side of the
housing facing away from the field terminal block when the
electronics module is coupled to the field terminal block,
wherein the housing includes an upper portion and a
lower portion, each of the upper portion and the lower portion
has a size larger than the circuit board, and the upper portion
and the lower portion engage with each other, thereby clamping
the circuit board therebetween, and
wherein the thermally conductive panel opens on two
sides, and has a width shorter than a width of the housing such
that part of the housing is exposed from the two sides of the
thermally conductive panel.
REJECTIONS and REFERENCES
The Examiner rejected claims 1, 2, 7-9, and 11-15 under 35 U.S.C.
§ 103 based upon the teachings of AAPA, Hall (US 2007/0034360 Al, pub.
Feb. 15, 2007), and Jude (US 2010/0097767 Al, pub. Apr. 22, 2010).
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Application 15/101,288
The Examiner rejected claims 10 and 20 under 35 U.S.C. § 103 based
upon the teachings of AAP A, Hall, Jude, and Goto (JP 2003-086979A, pub.
Mar. 20, 2003).
ANALYSIS
Appellant contends the Examiner erred in finding the combination of
AAP A, Hall, and Jude would have been obvious because, according to
Appellant, the cited combination would not result in Appellant's claimed
invention. App. Br. 6. Specifically, Appellant contends Hall's thermally
conductive plate 15 "has to be provided on the side of the electronics module
containing the edge connector or the circuit board," thus an ordinarily skilled
artisan would not be prompted to move Hall's conductive plate to the
opposite side of the housing away from the conductor. Id. Further,
Appellant asserts the principle of operation of Hall would be changed
because Hall's exchanger apparatus 24 and heat pipe 20 would need to be
moved. App. Br. 7. Additionally, Appellant "disagrees that the heat
spreader plates 204 and 210 can be considered as a housing accommodating
the circuit board." App. Br. 7-8.
The Examiner finds, and we agree, AAP A discloses all the claim
limitations except for teaching a thermally conductive panel, which is taught
by Hall. Ans. 4. The Examiner finds Jude teaches the conductive panel
having a front side opposite the side having the connector. Id. That is, the
Examiner finds Jude is used to teach placing a thermally conductive panel
on the side of AAPA's housing opposite the connector, as modified by Hall,
which teaches the thermally conductive panel is U-shaped. Ans. 6. This is
contrary to Appellant's contention Jude is "used to physically move the
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conductive panel ( 15) of Hall onto the opposite side of the container ( 1) of
Hall." Id.
Appellant's arguments do not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in
the art and are therefore ineffective to rebut the Examiner's prima facie case
of obviousness. See App. Br. 5-8; Reply Br. 2--4. As the Court stated in In
re Keller, 642 F.2d 413,425 (CCPA 1981):
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
(Emphasis added) ( citations omitted).
This reasoning is applicable here as Appellant's arguments against
Hall and without considering the teachings of Jude, or vice versa, do not
persuasively rebut the combination made by the Examiner. One cannot
show non-obviousness by attacking references individually, where the
rejections are based on combinations of references. In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Specifically, the Examiner finds AAPA
teaches the housing (Ans. 8), not Jude as Appellant asserts, Hall teaches the
U-shaped thermal conductive panel limitation (Ans. 4, 6), and Jude teaches
the U-shaped thermal conductive panel is threaded over a front side of a
housing that is opposite the side with the connector (id.) (the side of the
housing facing away from the field terminal block). Appellant has not
addressed this combination other than to say, based on an assumption of
bodily incorporation, that the references cannot be combined as the principle
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of operation ( of Hall) would be rendered inoperable for its intended purpose.
App. Br. 7. Appellant's arguments simply attack cited references
individually where the Examiner's rejection is based on a combination of
references. See Keller, 642 F.2d at 425. References must be read, not in
isolation, but for what they fairly teach in combination with the prior art as a
whole. Merck, 800 F .2d at 1097.
The Examiner addresses this argument stating AAP A is the primary
reference, not Hall. Ans. 6-7. Appellant's Reply Brief does not sufficiently
rebut this argument with substantive arguments that specifically and
persuasively address why the Examiner erred; rather, providing mere
attorney argument. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
("[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art."). See also In re Pearson, 494 F.2d 1399, 1405
( CCP A 197 4) ("Attorney's argument in a brief cannot take the place of
evidence."). Based on the above, we sustain the Examiner's rejection of
independent claims 1 and 13, and dependent claim 2, 9-12, 14, 15, and 20
not separately argued, as obvious over the combination of AAP A, Hall, and
Jude.
Appellant separately argues dependent claims 7, 8, and 15, which
recite "the thermally consecutive panel comprises grippers for engaging with
the housing." App. Br. 8-10. The Examiner finds Jude's elements 203 and
209 are "grippers" as the term "merely implies some type of structure which
has a frictional characteristic to it in some way." Ans. 9. Elements "(203,
209) [grippers] are in direct mechanical contact with both the panel (201,
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207) and the housing (204, 210) and thus provides a frictional characteristic
between the" least one gable side of the thermally conductive panel and the
housing. Id. The Examiner finds the term "gable side" means nothing more
than a side of a panel, and thus, Jude's elements 203 and 209 (grippers
shown in Figs. 2a and 2b) are provided on at least one side of the panels 201
and 207 (thermally conductive panels) teaching grippers engaging with the
housing as claimed. Ans. 9--10.
Appellant again is providing attorney argument and arguing the
references separately rather than a combination. Ans. 10-11. Further,
Appellant does not address the Examiner's further findings in the Reply
Brief. Thus, we sustain the Examiner's rejection of dependent claims 7, 8,
and 15 as obvious over the combination of AAP A, Hall, and Jude.
We are not persuaded the Examiner's reading of the claims on the
cited combination of references is overly broad, unreasonable, or
inconsistent with Appellant's Specification. We find the weight of the
evidence supports the Examiner's ultimate legal conclusion of obviousness,
and therefore sustain the Examiner's rejection of claims 1, 2, 7-15, and 20.
DECISION
The Examiner's decision rejecting claims 1, 2, 7-15, and 20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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