Ex Parte Foster et al

Board of Patent Appeals and Interferences

Dec 10, 2010

11326566 (B.P.A.I. Dec. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIMMY G. FOSTER, SR., DONNA C. HARDEE,
DON S. KEENER, and ROBERT R. WOLFORD
____________

Appeal 2009-008944
Application 11/326,566
Technology Center 3700
____________

Before: LINDA E. HORNER, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Jimmy G. Foster, Sr., et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-7, which are
all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.
THE INVENTION
Appellants’ claimed invention is a heat sink for distributing a thermal
load. Spec. 1, para. [0001]. Claim 1, reproduced below, is representative of
the subject matter on appeal.
1. A heat sink for distributing a thermal load, the heat sink
comprising:
a base receiving the thermal load, the base having a front
surface, a back surface, an inner surface, and an outer surface,
the outer surface shaped generally as a cylinder and having a
flat mounting region, and the inner surface shaped as a cylinder
so as to define a cylindrical receiving space;
a cylindrical thermal transport connected to the inner
surface of the base so as to distribute the thermal load along the
inner surface of the base; and
heat-dissipating fins connected to the cylindrical thermal
transport and extending from the cylindrical thermal transport
towards a central axis of the cylindrical receiving space.
THE REJECTIONS
Appellants seek review of the following Examiner’s rejections:
1. Rejection of claims 1, 6, and 7 under 35 U.S.C. § 102(b) as anticipated
by Li (US 6,315,033 B1, issued November 13, 2001).
2. Rejection of claims 1, 5, and 6 under 35 U.S.C. § 102(e) as anticipated by
Wang (US 7,163,050 B2, issued January 16, 2007).
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3. Rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over either
Li or Wang, and Quisenberry (US 7,147,045 B2, issued December 12,
2006).
4. Rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable
over either Li or Wang, and Moore (US 2006/0185831 A1, published
August 24, 2006).
ISSUES
1. Does Li disclose a base as called for in independent claim 1?
2. Does Wang discloses a base as called for in independent claim 1?
3. Was the Examiner’s determination of obviousness of the subject matter
of claims 2, 3, and 4 based on the factual inquires set forth in Graham v.
John Deere Co., 383 U.S. 1 (1966)?
ANALYSIS
Claim Construction
Independent claim 1 is directed to a heat sink comprising a base, a
cylindrical thermal transport, and heat-dissipating fins.
Independent claim 1 calls for the base to receive the thermal load, to
include a cylindrical inner surface, and to include an outer surface shaped
generally as a cylinder and having a flat mounting region. Appellants’
Specification describes the base 102 as including an outer surface 110
shaped generally as a cylinder, and having a flat mounting region 112.
Spec. 4, para. [0013]; fig. 1. Appellants’ Specification provides an example
of a flat mounting region 112 as being formed by milling a rounded portion
of the generally cylindrical outer surface 110 so that it is flat. Spec. 5,
para. [0015]. Appellants’ Specification provides no definition or description
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of the “base” that would necessitate the base being formed as a single
unitary element.
We construe independent claim 1 as calling for the base to receive the
thermal load, to include a cylindrically shaped inner surface, and to have a
generally cylindrically shaped outer surface that includes a flat mounting
region. However, claim 1 does not require that the base, including its flat
mounting region, be formed from a single unitary element.
Rejection of claims 1, 6, and 7 under 35 U.S.C. § 102(b) as anticipated by Li
Appellants argue claims 1, 6, and 7 as a group. Br. 4-7. We select
claim 1 as the representative claim, and claims 6 and 7 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found that Li discloses a base (hood 3) that includes an
inner surface, and a generally cylindrical outer surface that includes a flat
mounting region (heat-conducting block 5). Ans. 3-4. We agree with this
finding.
Li discloses a heat dissipating conduit 1 that includes a heat-
conducting block 5 connected to a thermal source. Li, col. 2, ll. 57-59;
figs. 1, 2. Li discloses a wind hood 3 that surrounds wrapped heat pipe 12 (a
specific embodiment of heat dissipating conduit 1) and that connects to each
side of heat-conducting block 5. Li, col. 3, ll. 14-16, 38-39; figs 8, 8A. Li’s
heat-conducting block 5 and hood 3 together form a cylindrical inner surface
and a generally cylindrical outer surface that includes a flat mounting region.
Li, figs. 8, 8A.
Given the scope and content of the prior art, and our interpretation
that claim 1 does not require that the flat mounting surface and the base be
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formed from a single unitary element, Li’s heat-conducting block 5 and
hood 3 correspond to a base as called for in independent claim 1.
Appellants argue that Li does not disclose a base that includes an
outer surface shaped generally as a cylinder and an inner surface shaped as
cylinder as called for in independent claim 1, but rather Li “merely discloses
a heat-conducting block that is connected to a thermal source.” Br. 5-6.
This argument is unpersuasive. Appellants have failed to address the
Examiner’s finding as to the structure in Li that corresponds to the claimed
“base.” In particular, the Examiner did not find that Li’s heat-conducting
block 5 alone corresponds to the claimed base. See Ans. 3-4. Rather, the
Examiner found that Li’s heat-conducting block 5 and hood 3 together form
a base as called for in independent claim 1. Id. We agree with the Examiner
that claim 1 is written broadly to encompass this prior art structure of Li.
We sustain the rejection of claim 1. Claims 6 and 7 fall with claim 1.
Rejection of claims 1, 5, and 6 under 35 U.S.C. § 102(e) as anticipated by
Wang
Appellants argue claims 1, 5, and 6 as a group. Br. 7-11. We select
claim 1 as the representative claim, and claims 5 and 6 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found that Wang discloses a base (fan cover 50) that
includes an inner surface, and a generally cylindrical outer surface that
includes a flat mounting region (chassis 10) Ans. 4-5. We agree with this
finding.
Wang discloses a heat dissipating device that includes a chassis 10
and a fan cover 50. Wang, col. 2, ll. 21-25; fig. 1. Wang discloses that
chassis 10 absorbs and transmits heat generated by the CPU. Wang, col. 3,
ll. 30-31. Wang discloses that fan cover 50 has a circular cross section, and
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includes legs 56 that are secured to chassis 10. Wang, col. 2, ll. 38-39; col.
3, ll. 15-17; figs. 1, 4. Wang discloses that chassis 10 and fan cover 50
together form a cylindrical inner surface and a generally cylindrical outer
surface that includes a flat mounting region. Wang, fig. 4.
Given the scope and content of the prior art, and our interpretation
that claim 1 does not require that the flat mounting surface and the base be
formed from a single unitary element, Wang’s chassis 10 and fan cover 50
correspond to a base as called for in independent claim 1.
Appellants argue that Wang does not disclose that fan cover 50 is
capable of receiving a thermal load and that Wang does not disclose that fan
cover 50 has a flat mounting region. Br. 8-9. Similar to our analysis of the
rejection of claim 1 as anticipated by Li, supra, here Appellants have also
failed to address the Examiner’s finding as to the structure in Wang that
corresponds to the claimed “base.” The Examiner did not find that Wang’s
fan cover 50 alone corresponds to the claimed base. Rather, the Examiner
found that Wang’s fan cover 50 and chassis 10, taken together, form a base
as called for in independent claim 1. See Ans. 4-5. We agree with the
Examiner that claim 1 is written broadly to encompass this prior art structure
of Wang.
Appellants further argue that because Wang does not disclose a base
as called for in independent claim 1, Wang also cannot disclose a thermal
transport connected to the inner surface of the base. Br. 9-10. Because
Wang discloses a base as called for in independent claim 1, this argument is
unconvincing.
We therefore sustain the rejection of claim 1. Claims 5 and 6 fall with
claim 1.
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Rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over either Li
or Wang, and Quisenberry
Claim 2 depends from independent claim 1.
The Examiner rejected claim 2 using either Wang or Li as articulated
in the anticipation rejections, with a modification for the limitation added by
dependent claim 2 based on Quisenberry. Appellants repeat the arguments
used against the anticipation rejections of Li and Wang (Br. 11-12). For the
reasons articulated in the analysis of the rejections of claim 1 as anticipated
by Li and as anticipated by Wang, supra, those arguments are also
unconvincing here.
Appellants further argue that the Examiner did not evaluate the
obviousness of claim 2 using the four-part analysis of Graham. Br. 12
(citing Graham v. John Deere Co., 383 U.S. 1 (1966)). Appellants’ general
assertion that the Examiner failed to perform the requisite analysis is not
accompanied by an adequate explanation of how the Examiner’s analysis is
deficient.
The Examiner found that either Li or Wang discloses all the
limitations of claim 2 except a flat heat pipe, and that Quisenberry discloses
a flat heat pipe. Ans. 5-6. As such, the Examiner made findings as to the
scope and content of the prior art and differences between the prior art and
the claimed invention under Graham. Though the Examiner did not make a
specific finding regarding the level of skill in the art, Appellants have not
argued that the proposed modification was beyond the level of skill in the art
(Br. passim), and we consider the prior art2 to be reflective of the level of

2 The level of skill in the art is disclosed in the cited prior art of Li, Wang,
and Quisenberry. See Ans. 5-6.
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skill in the art.3 Against this background, the Examiner determined the
obviousness of claim 2.4 Ans. 6. Hence, contrary to Appellants’ assertion,
the Examiner analyzed claim 2 in light of the factual inquires set forth in
Graham.
We thus sustain the rejection of claim 2.
Rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over
either Li or Wang, and Moore
Claims 3 and 4 depend, directly or indirectly, from independent
claim 1. The Examiner rejected claims 3 and 4 using either Wang or Li as
articulated in the anticipation rejections, with a modification for the
limitations added by dependent claims 3 and 4 based on Moore. With
respect to claims 3 and 4, Appellants repeat the arguments used against the
anticipation rejections of Li and Wang (Br. 12-13). For the reasons
articulated in the analysis of the rejections of claim 1 as anticipated by Li
and as anticipated by Wang, supra, those arguments are also unconvincing
here.
Appellants further argue that the Examiner did not evaluate the
obviousness of claims 3 and 4 using the four-part analysis of Graham.
Br. 13. As with the argument against the rejection of claim 2, Appellants’
general assertion that the Examiner failed to perform the requisite analysis is

3 See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“The person of
ordinary skill in the art is a hypothetical person who is presumed to know
the relevant prior art.” (citing Custom Accessories, Inc. v. Jeffrey-Allan
Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). See also Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific
findings on the level of skill in the art does not give rise to reversible error
where the prior art itself reflects an appropriate level and a need for
testimony is not shown.” [Internal quotation marks omitted]).
4 Appellants presented no evidence of secondary considerations. Br. passim.
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not accompanied by an adequate explanation of how the Examiner’s analysis
is deficient.
The Examiner found that either Li or Wang discloses all the claimed
limitations except a central axis thermal transport, and that Moore discloses
a central axis thermal transport. Ans. 6. As such, the Examiner made
findings as to the scope and content of the prior art and differences between
the prior art and the claimed invention under Graham. Though the
Examiner did not make a specific finding regarding the level of skill in the
art, Appellants have not argued that the proposed modification was beyond
the level of skill in the art (Br. passim), and we consider the prior art5
reflective of the level of skill in the art. Against this background, the
Examiner determined the obviousness of claims 3 and 4.6 Ans. 6. Hence,
contrary to Appellants’ assertion, the Examiner analyzed claims 3 and 4 in
light of the factual inquires set forth in Graham.
We therefore sustain the rejection of claims 3 and 4.
CONCLUSIONS
Li discloses a base as called for in independent claim 1.
Wang discloses a base as called for in independent claim 1.
The Examiner’s determination of obviousness of the subject matter of
claims 2, 3, and 4 was based on the factual inquires set forth in Graham.
DECISION
We AFFIRM the Examiner’s decision to reject claims 1-7.

5 Li, Wang, and Quisenberry. See Ans. 5-6.
6 Appellants presented no evidence of secondary considerations. Br. passim.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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