Ex Parte Glover et al

Patent Trial and Appeal Board

Jul 6, 2017

13302729 (P.T.A.B. Jul. 6, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/302,729 11/22/2011 Troy W. Glover XRPS920110082US1 2297
127893 7590 07/06/2017
Streets & Steele - Lenovo (Singapore) Pte. Ltd.
13100 Wortham Center Drive
Suite 245
Houston, TX 77065
EXAMINER
THOMPSON, JASON N
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
07/06/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TROY W. GLOVER, CHUNJIAN NI,
WHITCOMB R. Ill SCOTT, and MARK E. STEINKE
Appeal 2016-000523
Application 13/302,7291
Technology Center 3700
Before WILLIAM V. SAINDON, NATHAN A. ENGELS, and
BRENT M. DOUGAL, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, 4, 5, 8—12, and 14—20. Claims 3, 6, 7, and 13 are withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Lenovo Enterprise Solutions (Singapore) Pte. Ltd. as
the real party in interest. Appeal Br. 2.
Appeal 2016-000523
Application 13/302,729
ILLUSTRATIVE CLAIM
Independent claims 1 and 14, reproduced below, are illustrative of the
claimed subject matter:
1. A heat sink, comprising:
a first thermally conductive base having a first face
securable to a heat-generating electronic device and a second
face opposite the first face;
a second thermally conductive base having a first face
with a plurality of fins and a second face to engage the second
face of the first base;
a biasing member disposed generally central to the
second face of the first base and the second face of the second
base to bias the second face of the first base against the second
face of the second base in a first orientation or in a second
orientation;
an alignment member extending from at least one of the
first base and the second base to prevent relative rotation
therebetween from the first orientation and from the second
orientation except during separation of the first and second
bases;
wherein the second base is movable relative to the first
base 90 degrees from the first orientation to the second
orientation by overcoming the biasing member to remove the
second face of the second base from engagement with the
second face of the first base, rotating the second base 90
degrees relative to the first base from the first orientation to the
second orientation, and re-engaging the second face of the first
base with the second face of the second base.
14. A heat sink comprising:
a first thermally conductive base having a first face to
engage a heat-generating electronic component and a second
face;
a second thermally conductive base having a first face to
support at least one fin and a second face to conductively
engage the second face of the first base;
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Application 13/302,729
a biasing member having a first portion attached to the
second face of the first base and a second portion attached to
the second face of the second base to bias the second face of the
second base against the second face of the first base;
an alignment structure disposed on one of the first base
and the second base to impair the second face of the second
base from full engagement with the second face of the first base
in orientations other than a first orientation and a second
orientation 90 degrees out of phase with the first orientation.
THE REJECTIONS
Claims 1, 2, 4, 5, and 8—12 stand rejected under pre-AIA 35 U.S.C.
§112, second paragraph.
Claims 1, 8, 9, and 10 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Mertol (US 5,898,571; issued Apr. 27, 1999).
Claims 2, 4, and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Mertol and Stutzman (US 6,829,144 Bl; issued Dec.
7, 2004).
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Mertol and Lee (US 2006/0274503 Al; published
Dec. 7, 2006).
Claims 14—19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Too (US 7,203,065 Bl; issued Apr. 10, 2007) and
Stutzman.
ANALYSIS
The Examiner’s Rejections of Claim 1
In rejecting claim 1 as anticipated by Mertol, the Examiner finds
Mertol discloses the claimed “biasing member disposed generally central to
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. . . the first base and ... the second base” with Mertol’s spring clip 104 and
slots 62. Ans. 4 (citing Mertol Fig. 5); accord Final Act. 4. Those structures
are depicted in Mertol’s Figure 5, reproduced below.
Mertol Fig. 5 (depicting a perspective view of a
semiconductor assembly, including a heat sink 100,
spring clip 104, slots 62, and lid 50).
The Examiner states that “Mertol’s biasing member (62 and 104 as a
whole)” satisfies the “disposed generally central” requirement of claim 1 in
that Mertol’s biasing member “extends across a middle portion (i.e. across a
central portion, or centerline) of the first and second bases.” Ans. 4 (citing
Mertol Fig. 5).
The Examiner additionally rejects claim 1 as indefinite, finding “the
term ‘generally’ is a relative term of degree, where it is unclear if the biasing
member is central or is not central to the second face of the first base and the
second face of the second base.” Final Act. 3. The Examiner states that
“[w]hen a term of degree is used, there must be some standard for measuring
that degree” and neither Appellants’ Specification nor a recognized standard
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Application 13/302,729
in the art clarifies “where a biasing member would have to be located to be
‘generally’ central to the second face of the first base.” Ans. 2—3.
Appellants contend the Examiner’s findings relating to the “biasing
member” of claim 1 are erroneous in both the indefmiteness and anticipation
rejections. Br. 6—8, 14—15. Appellants argue, “[t]he claimed biasing
member is ‘disposed generally central to the second face’ meaning the
biasing member is located near the center of the second face.” Br. 14.
Based in part on that interpretation, Appellants argue (a) a person of
ordinary skill could ascertain the scope of the claimed biasing member
(Br. 7) and (b) the scope of the claimed biasing member does not include
Mertol’s disclosures of slots 62 formed in the sidewalls of a lid 50 and the
spring clamp 104, which extends over the base of Mertol’s heat sink and
engages the slots 62 (Br. 14).
Having considered the Examiner’s rejections in light of Appellants’
arguments and the evidence of record, we agree with Appellants that the
Examiner erred in the rejections of claim 1. The plain language of claim 1
requires that the biasing member is (a) “disposed generally central” to the
second face of the first base and the second face of the second base and (b)
capable of biasing the second base in a first orientation and second
orientation that is rotated 90° relative to the first base.
The center of an object is generally considered to be a “point or place
that is equally distant from the sides or outer boundaries of something.”2
Thus, the central location of a planar shape (such as the base of a heat sink),
2 “center,” The American Heritage Dictionary of the English Language
(2011) (retrieved from http://search.credoreference.com/content/entry/
hmdictenglang/center/O) (last visited July 3, 2017).
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Application 13/302,729
generally would be considered to be at a point rather than along a center/me
as identified by the Examiner. The Examiner has not offered evidence, nor
do we find any of record, supporting an interpretation of “disposed generally
central” to include a centerline rather than a center point. Further,
interpreting the limitation requiring the biasing member that is “disposed
generally central” to be at a point generally equally distant from the sides
(rather than located along a centerline) is consistent with the Specification,
whereas the Examiner’s interpretation has no support in the Specification.
Specifically, Appellants’ Specification describes a second base
capable of disengagement from the first base by overcoming the biasing
force of the biasing member, allowing the second base to rotate 90- relative
to the first base for re-engagement of the second base with the first base in
the second orientation. Spec. 20-23; see also Spec. Figs. 2A—D, 3,4, 8,
9,30—33, 43. Appellants’ Specification also consistently depicts the first
and second bases as having a square shape with the biasing member located
away from each base’s sides, at or near the axis of rotation of the second
base. See, e.g., Spec. Figs. 2A, 2B, 2C (depicting central axis 76 of the
second base 20), 2D, 3, 4, 8, 9, 11, 12, H 32 (“second base 20 is rotated 90
degrees about a central axis 76 while the second base 20 is still in the
separated position”), 34 (“The first portion 33 of the spring clip is illustrated
in FIG. 3 as being disposed generally central to the second face 32, but may
be located at other positions. The second face 32 of the first base 30 is
illustrated in FIG. 3 as being square, but may have other shapes.”); see also
Br. 17 (claim 13 (currently withdrawn from consideration) further defining
the biasing member of claim 1 by reciting “wherein the biasing member
forms a central axis of rotation between the first base and the second base”).
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The biasing member being located at an axis of rotation supports the plain
meaning where the biasing member is located at a point generally equally
distant from the sides expressed above. Lastly, we note that there is no
evidence of record suggesting that a person of ordinary skill in the art would
consider “disposed generally central” in a manner inconsistent from this
location.
Without fully construing the scope of claim 1, in view of the plain
language of claim 1 and relevant disclosures in the Specification, we
determine that the broadest reasonable interpretation of the claimed “bias
member disposed generally central” does not include a spring clip disposed
across the middle of a base and four slots arranged on each of four perimeter
sidewalls of the base, as disclosed in Mertol. See, e.g., Mertol Figs. 4, 6;
compare Spec. Figs. 3, 4, 8, 9, 11, 12, || 34, 37. Because we conclude the
scope of the biasing member of claim 1 does not include the cited structures
of Mertol, we disagree with the Examiner’s finding that Mertol anticipates
claim 1. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed.
Cir. 2008) (to anticipate, a prior art reference must disclose more than
“multiple, distinct teachings that the artisan might somehow combine to
achieve the claimed invention”).
We also disagree with the Examiner’s finding in the indefiniteness
rejection of claim 1 that “the term ‘generally’ is a relative term of degree,
where it is unclear if the biasing member is central or is not central to the
second face of the first base and the second face of the second base.” Final
Act. 3. Relative terms or terms of degree do not need to be defined with
numerical specificity to satisfy the definiteness requirement of § 112.
Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1360 (Fed. Cir. 2003).
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Application 13/302,729
In the context of claim 1 as a whole and consistent with Appellants’
Specification, the term “generally” is used as a term of approximation to
allow some degree of deviation. See e.g., North Am. Container, Inc. v.
PlastipakPackaging, Inc., 415 F.3d 1335, 1346 (2005) (holding “generally”
was used as a term of approximation such that “generally convex” meant
“mostly convex”); see also, e.g., Generally, Webster’s New World College
Dictionary (3rd ed. 1997) (defining “generally” as “3. in a general way or
sense; without reference to details or individual cases; not specifically,”
among other definitions); Center, Webster’s New World College Dictionary
(3rd ed. 1997) (defining “center” as “1. In, at, or near the center 2. of or
forming the center 3. equally distant or accessible from various points,”
among other definitions). Based on the language of claim 1 and the
examples and disclosures of Appellants’ Specification, we agree with
Appellants that a person of ordinary skill would have understood the claimed
requirement of a biasing member “disposed generally central” to the first
and second bases to be sufficiently clear. See In re Packard, 751 F.3d 1307,
1314 (Fed. Cir. 2014) (per curiam) (“A claim is indefinite when it contains
words or phrases whose meaning is unclear.”); North Am. Container, 415
F.3d at 1346.
Accordingly, for the reasons explained above, we reverse the
Examiner’s rejection of claim 1 under 35 U.S.C. § 102(b) and the
Examiner’s rejection of claim 1 under 35 U.S.C. §112, second paragraph.
For the same reasons, we reverse the Examiner’s rejections of claims 2, 4, 5,
and 8—12, each of which depends from claim 1.
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The Examiner’s Rejection of Claim 14
The Examiner’s rejection of claim 14 cites Too for the first base,
second base, and biasing member and combines the teachings of Too with
Stutzman’s teachings of an alignment member. Final Act. 10—11.
Specifically, the Examiner finds that Too teaches the claimed first thermally
conductive base with its disclosure of “chip cover 94” and the claimed
biasing member with its disclosure of “holder 18,” among other findings.
Final Act. 10 (citing Too Fig. 8). Those structures are depicted in Figure 8
of Too, reproduced below.
FIG. 8
Too Fig. 8 (a sectional side view of a heat sink
assembly mounted to a circuit board component,
including a holder 18 arranged across the top of a chip cover 94).
Proposing modification of the teachings of Too, the Examiner concludes it
would have been obvious to add an alignment member as taught by
Stutzman’s “posts 3” to Too’s chip cover 94 (first base). See Final Act. 10-
11. Figure 1 of Stutzman is reproduced below.
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Application 13/302,729
Stutzman Fig. 1 (exploded view of a chip package, including
a heat sink 13, heat spreading lid 5, chip carrier 1, and chip 7).
Appellants argue, and we agree, that a person of ordinary skill would
have understood Too’s chip cover to be part of the “heat generating
component” of claim 1, not a first base of a heat sink to which a person of
ordinary skill would attach alignment members such as those taught by
Stutzman. See Br. 19,21. Too discloses, for example, that its holder
(biasing member) is part of a heat sink assembly designed to slidably engage
a circuit board component. Too Fig. 1 (depicting heat sink assembly 16 as
including a heat sink 20 and holder 18), col. 2,11. 17—20 (“Another aspect of
the present invention comprises a heatsink assembly comprising a holder
slidably engaging a circuit board component to be cooled an a heatsink
secured to the heatsink holder . . . .”); col. 3,11. 43—45 (describing Figure 1
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as depicting “[a] heatsink assembly 16, comprising a holder 18, a heatsink
20 and a fastener 22”), col. 5,11. 16—33 (describing Figure 8 as including a
chip 92, chip cover 94, and heat-sink assembly 16).
Among other reasons, because Too teaches that its holding bracket is
intended to slide over the chip cover, we agree with Appellants that Too’s
chip cover would have been understood to be part of the heat generating
component, not part of the heat-sink assembly. SeeBr. 19. Thus, we do not
agree with the Examiner’s that the chip cover of Too is a “first base” of a
heat sink as required by claim 14.
Accordingly, having considered the Examiner’s rejection of claim 14
in light of Appellants’ arguments and the evidence of record, we reverse the
Examiner’s rejection of claim 14 under 35 U.S.C. § 103(a). For the same
reasons, we also reverse the Examiner’s rejection of claims 15—19, each of
which depends from independent claim 14.
DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
1, 2, 4, 5, and 8—12 under pre-AIA 35 U.S.C. § 112, second paragraph. We
also reverse the Examiner’s rejection of claims 1, 8, 9, and 10 under
35 U.S.C. § 102(b) and the rejections of claims 2, 4, 5, 11, 12, and 14—20
under 35 U.S.C. § 103(a).
REVERSED
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