Ex parte Gebhart

Board of Patent Appeals and Interferences

Sep 29, 2000

08485161 (B.P.A.I. Sep. 29, 2000)

The hearing set for November 1, 1999 was waived by1
appellant (Paper No. 37).
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BENJAMIN GEBHART
____________
Appeal No. 1997-3678
Application No. 08/485,161
____________
ON BRIEF1
____________
Before COHEN, JOHN D. SMITH, and JENNIFER D. BAHR,
Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 3
through 7, 9, and 34 through 36. These claims constitute all
of the claims remaining in the application.
Appeal No. 1997-3678
Application No. 08/485,161
2
Appellant’s invention pertains to a method of cooling a
surface by nucleate boiling. A basic understanding of the
invention can be derived from a reading of exemplary claim 1,
a copy of which appears in the APPENDIX to the amended brief
(Paper No. 28).
As evidence of anticipation and obviousness, the examiner
has applied the documents listed below:
Chu et al. 4,050,507 Sep. 27,
1977
(Chu)
Reeber et al. 709,574 May 18,
1965
(Reeber)
Hesketh, Peter J., “THE EMITTANCE OF HEAVILY DOPED
MICROCONFIGURED SILICON SURFACES”, A DISSERTATION IN
ELECTRICAL ENGINEERING, UNIVERSITY OF PENNSYLVANIA, CHAPTER 2,
pages 42 through 53, 1987. (the Hesketh dissertation)
Marto, P. J. and Lepere, Lt. V. J., “Pool Boiling Heat
Transfer From Enhanced Surfaces to Dielectric Fluids”,
Transactions of the ASME, Journal of Heat Transfer, Vol. 104,
pages 292 through 299, May 1982. (the Marto and Lepere
article)
Appeal No. 1997-3678
Application No. 08/485,161
We have corrected the claims specified in the rejection2
to cover the pending claims obviously intended to be under
rejection, consistent with appellant's understanding (amended
brief, page 7).
3
The following rejections are before us for review.
Claims 1, 3 through 7, 9, and 34 through 36 stand2
rejected under 35 U.S.C. § 103 as being unpatentable over
Reeber in view of Chu, and vice versa, and the Marto and
Lepere article and, optionally, the Hesketh dissertation.
Claims 1, 3 through 7, 9, and 34 through 36 stand
rejected under 35 U.S.C. § 102(b) as being anticipated or, in
the alternative, under 35 U.S.C. § 103 as obvious over the
Marto and Lepere article (aged surfaces C and D in Figures 6
through 8).

The full text of the examiner’s rejections and response
to the argument presented by appellant appears in the answer
Appeal No. 1997-3678
Application No. 08/485,161
A reply brief submitted by appellant was denied entry3
for the reasons set forth in the examiner’s communication
dated July 21, 1999 (Paper No. 35). It follows, of course,
that the content of the reply brief is not before us for
consideration.
Claim 3, as it appears in the appendix to the brief as4
well as in the application file, improperly depends from
canceled claim 2. For purposes of this appeal, we shall view
claim 3 as if it depended from claim 1. We note that
appellant (brief, page 4) describes claim 3 as depending from
claim 1. The matter of this improper dependency will be
further treated below. Additionally, certain words of degree
in the claims may pose an issue of indefiniteness, as further
pointed out, infra. Nevertheless, we do understand the
claimed invention to the extent that we can assess the prior
art rejections on appeal.
In our evaluation of the applied prior art, we have5
considered all of the disclosure of each document for what it
(continued...)
4
(Paper No. 29), while the complete statement of appellant’s
argument can be found in the amended brief (Paper No. 28).3

OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellant’s specification and claims, the applied teachings,4 5
Appeal No. 1997-3678
Application No. 08/485,161
(...continued)5
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into
account not only the specific teachings, but also the
inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
5
and the respective viewpoints of appellant and the examiner.
As a consequence of our review, we make the determinations
which follow.
Appeal No. 1997-3678
Application No. 08/485,161
6
The rejection under 35 U.S.C. § 103
We reverse this rejection of appellant’s claims.
Our focus, in particular, will be upon the particular
features of independent claim 1, evaluated relative to the
evidence of obviousness.
Claim 1 is drawn to a method of cooling a surface by
nucleate boiling comprising, inter alia, providing a polished,
photo etched surface containing discrete nucleation sites
having a conical cross section, immersing the surface in a
refrigerant having a liquid contact angle of less than 5° and
a preselected boiling point so that the nucleation sites
become substantially flooded by the refrigerant, wherein the
conical cross-section has a cavity cone angle, 2, which is
greater than the liquid contact angle, K, of the refrigerant,
and permitting the surface to heat up to a temperature of at
least the preselected boiling point, with said heating
initiating nucleate boiling of the refrigerant with a reversal
Appeal No. 1997-3678
Application No. 08/485,161
As argued (brief, page 11), appellant understands the6
claimed subject matter to recite flooding of nucleation sites
with the refrigerant prior to heating the surface to a
preselected boiling point of the refrigerant.
7
of trend of less than 2°C and without a temperature overshoot
on the initial ascent.6
As the answer readily reveals (pages 5 through 15), the
examiner has in detail carefully assessed the features of
independent method claim 1 relative to the respective
teachings of Reeber, Chu, the Marto and Lepere article, and
the Hesketh dissertation. Like the examiner, we appreciate
the relevance of particular teachings of the evidence of
obviousness, as well as deficiencies therein with respect to
the overall method of claim 1; more specifically, the
deficiency that concerns the recitation in step (c) of claim 1
requiring a reversal of trend of less than 2°C (answer, pages
7 through 10). As candidly acknowledged by the examiner
(answer, page 8), “clause (c) of claim 1 represents one of the
most troubling aspects of the case.” The examiner also brings
to our attention (answer, page 8) that claim 1 has evolved to
its present form during its prosecution history. We find that
Appeal No. 1997-3678
Application No. 08/485,161
8
method claim 1 on appeal is now quite detailed in requiring
the specific step limitations thereof highlighted earlier in
this decision.
As indicated above, we fully appreciate from our reading
of each of the proffered references the relevant teachings
thereof. The Reeber method increases heat transfer from a
substrate surface in liquefied helium gas, relying upon the
formation of bubbles in conical imperfections in the surface
(Fig. 2); the imperfections being made by treating the surface
with some tool or molding the imperfections into the surface
(page 5). The Chu method customizes nucleate boiling heat
transfer wherein boiling is started at a predetermined
temperature so that temperature overshoot or hysteresis is
prevented (column 2, lines 50 through 54) and column 7, lines
44 through 67); the method relies upon specially shaped
nucleation cavities (Fig. 12) effected by a laser beam or E
beam equivalent (column 6, lines 39 through 44). As explained
by patentee Chu, liquid will fill cavities and no vapor will
remain under a specified condition (column 5, lines
Appeal No. 1997-3678
Application No. 08/485,161
9
4 and 5). The Marto and Lepere article focuses upon pool
boiling heat transfer from machined enhanced surfaces (surface
cavities) to dielectric fluids. The article explains (page
297) that Thermoexcel E surfaces, in particular, exhibit very
little temperature overshoot and hysteresis following surface
aging C and D. Comparison Figures 6 through 8 in the article
(page 296) address data derived for the alternative procedures
of surface aging A, B, C, and D (page 294). The Hesketh
dissertation teaches wafers with a polished side, wherein
microconfigured structures (the hexagonal microcavities of
Figure 2.1; page 44 of the dissertation) are etched into the
polished side using standard photolithography.
Notwithstanding, the clear relevance of the above
reference disclosures to the method of claim 1, akin to the
examiner’s understanding of the evidence of obviousness, we
perceive a lack of indication or suggestion in the applied
prior art for the claimed method feature of the heating of the
surface initiating nucleate boiling of the refrigerant with a
reversal of trend of less than 2°C and without a temperature
overshoot on the initial ascent. Figure 16 graphically
Appeal No. 1997-3678
Application No. 08/485,161
10
reveals what is intended by this claimed limitation during the
initial ascent. Appellant makes us aware in Table 1
(specification, page 20) that, compared to the measured
reversal of trend for the present invention, the reversal of
trend with Thermoexcel-E of the Marto and Lepere article
(1982) is significantly higher. As this Table indicates
appellant’s invention yields reversals of trend less than 2°C,
as now claimed. The examiner’s concern (answer, page 11)
regarding what additional testing, vis-a-vis the teachings in
the Marto and Lepere, might reveal can only be fairly viewed
as speculation. Thus, based upon the evidence before us, we
conclude that as to the important specific limitation of a
reversal of trend less than 2°C in claim 1, we find that the
applied teachings neither teach the limitation nor would have
been reasonably suggestive thereof. It follows, therefore,
that the rejection under
35 U.S.C. § 103 cannot be sustained.
The rejection under 35 U.S.C. § 102(b) and
alternatively under 35 U.S.C. § 103
Appeal No. 1997-3678
Application No. 08/485,161
11
We reverse the rejection of appellant’s claims on each of
the specified statutory grounds.
This panel of the board fully considered the entirety of
the disclosure of the Marto and Lepere article, supra.
Consistent with that assessment, which we incorporate herein,
the reasonable conclusion that we can reach is that this
document alone neither teaches (35 U.S.C. § 102) nor suggests
(35 U.S.C. § 103) a reversal of trend less than 2°C on the
initial ascent, a particular feature of appellant’s method of
cooling a surface by nucleate boiling as expressly set forth
in claim 1.
REMAND TO THE EXAMINER
This application is remanded to the examiner to consider
the following matters and take appropriate action.
1. Claim 3 improperly depends from canceled claim 2.
Appeal No. 1997-3678
Application No. 08/485,161
12
2. Claim 5 appears to be drawn to a double inclusion of
subject matter already present in claim 1.
3. The claims in a number of instances include words of
degree, e.g., in claim 1, line 9, “substantially” flooded; in
claim 3, lines 2,3 and claim 34, lines 2,3, “significant”
portion; claim 35, line 2, “substantially” 60 µm; and claim
36, line 2, “substantially” 40 µm. When a word of degree is
used, it must be determined whether an underlying
specification provides some standard for measuring that
degree. See Seattle Box Co., Inc. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed.
Cir. 1984). The examiner should assess each of the noted
terms in the context used, and as they might be understood by
one skilled in the art at issue, to ascertain whether they are
each definite in meaning.
In summary, this panel of the board has:
reversed the rejection of claims 1, 3 through 7, 9, and
Appeal No. 1997-3678
Application No. 08/485,161
13
34 through 36 under 35 U.S.C. § 103 as being unpatentable over
Reeber in view of Chu, and vice versa, and the Marto and
Lepere article and, optionally, the Hesketh dissertation; and
reversed the rejection of claims 1, 3 through 7, 9, and
34 through 36 under 35 U.S.C. § 102(b) as being anticipated
or, in the alternative, under 35 U.S.C. § 103 as obvious over
the Marto and Lepere article.
Additionally, we have remanded the application to the
examiner to assess matters discussed above.
Appeal No. 1997-3678
Application No. 08/485,161
14
The decision of the examiner is reversed.
REVERSED AND REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN D. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1997-3678
Application No. 08/485,161
15
PETER J. CRONK
DUANE MORRIS & HECKSCHER LLP
ONE LIBERTY PLACE
PHILADELPHIA, PA 19103-7396