Ex Parte Hodes

Patent Trial and Appeal Board

Feb 25, 2016

12172396 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/172,396 07/14/2008 Marc S. Hodes
47394 7590 02/29/2016
HITT GAINES, PC
ALCA TEL-LUCENT
PO BOX 832570
RICHARDSON, TX 75083
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.
HODES 28 4898
EXAMINER
PILLAY, DEVINA
ART UNIT PAPER NUMBER
1755
NOTIFICATION DATE DELIVERY MODE
02/29/2016 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):
docket@hittgaines.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC S. HODES
Appeal2014-004364
Application 12/172,396
Technology Center 1700
Before PETER F. KRATZ, GEORGE C. BEST, and JULIA HEANEY,
Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 seeks our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1-16, and 18-21 of Application
12/172,396. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
BACKGROUND
The subject matter on appeal relates to an apparatus for heat transfer
between thermally conductive bodies having interdigitated fingers which are
1 Appellant identifies the real party in interest as Alcatel-Lucent USA Inc.
Br. 3.
Appeal2014-004364
Application 12/172,396
in thermal contact with thermoelectric modules located between the fingers.
Spec. 1-2.
Representative claim 1 is reproduced from the Claims Appendix of
the Appeal Brief as follows (emphasis added):
1. An apparatus, comprising:
a first thermally conductive body having at least one finger;
a second thermally conductive body having a plurality of
fingers, configured such that at least a first finger and a second
finger of said plurality of fingers include a portion of a same
vapor chamber and said second body provides a path for vapor
transport from said first finger to said second finger, and
further configured such that said at least one finger of said first
thermally conductive body is interdigitated with said first finger
and said second finger of said second thermally conductive
body; and
a plurality of thermoelectric modules located between said first
thermally conductive body and said second thermally
conductive body, each thermoelectric module having at least
one semiconducting pellet located entirely between a first major
surface and an opposing second major surface thereof, one of
said first major surfaces being in thermal contact with said at
least one finger of said first thermally conductive body and one
of said second major surfaces being in thermal contact with said
first finger or said second finger of said second thermally
conductive body.
2
Appeal2014-004364
Application 12/172,396
THE REJECTIONS
I. Claims 1---6 and 8-13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Ghoshal, 2 Stachurski, 3 and Suzuki. 4
II. Claims 7 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ghoshal, Stachurski, Suzuki, and DiSalvo. 5
III. Claims 15, 16, 18, 20, and 21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ghoshal, Stachurski, Suzuki, and
Nakanishi. 6
IV. Claim 19 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ghoshal, Stachurski, Suzuki, Nakanishi, and
DiSalvo.
DISCUSSION
Appellant argues that the Examiner failed to establish a prima facie
case of unpatentability because it would not have been obvious for a person
of ordinar; skill in the art to modif; Ghoshal with Suzuki in the manner set
forth in the final rejection. 7 App. Br. 9-14. Appellant argues for reversal of
all rejections on the basis of the limitation italicized supra in claim 1, and
which independent claims 8 and 15 also recite. Further, Appellant argues
only against the Ghoshal and Suzuki references. Therefore, we need not
2 US 2002/0062648 Al published May 30, 2002 (hereinafter "Ghoshal").
3 US 4,125,122 issued November 14, 1978 (hereinafter "Stachurski").
4 US 4,020,399 issued April 26, 1977 (hereinafter "Suzuki").
5 DiSalvo, Thermoelectric Cooling and Power Generation, SCIENCE Vol.
2 8 5' WYY.:~Y~_§fi~_n-~-~m-~_g_&rg ( 1999).
6 US 6,525,934B1 issued February 25, 2002.
7 Final Act. (June 6, 2013).
3
Appeal2014-004364
Application 12/172,396
address any of the other references cited by the Examiner, and limit our
analysis to the sole limitation of claims 1, 8, and 15 argued by Appellant.
Dependent claims 2-7, 9-14, 16, and 18-21 stand or fall with their
respective parent independent claims.
The Examiner finds that Ghoshal discloses a second thermally
conductive body having a plurality of fingers interdigitated with fingers of a
first thermally conductive body, but does not disclose that the fingers of the
second thermally conductive body are interconnected with a portion of a
vapor chamber, in order to provide a vapor transport path between the
fingers. Ans. 2-3, 12-13. The Examiner further finds that Suzuki discloses
connecting heat pipes with a portion of a vapor chamber, and that
modification of Ghoshal to include the common condensing and vapor
chamber of Suzuki between Ghoshal's thermally conductive fingers would
increase the amount of heat transfer area and thus the heat exchanger
efficiency. Ans. 13.
Appellant argues that the combination of Ghoshal and Suzuki is
improper because it would render Suzuki's device "unsuitable for its
intended purpose," or alternatively, destroy "the intended functionality of
Ghoshal's heat pipes." App. Br. 12. Appellant further argues that the
Examiner has not provided "reasons with evidentiary underpinnings" to
show why the modification of Ghoshal would have been obvious. Id. 14.
We have considered Appellant's arguments, but do not find them persuasive.
Appellant's argument that reorienting Suzuki's device "would significantly
degrade the performance" does not establish that the device would
necessarily be unsuitable for its purpose; Appellant himself characterizes the
problem as a loss of efficiency. Id. 13. Loss of efficiency does not
necessarily render a device inoperable. See In re Gordon, 733 F .2d. 900,
4
Appeal2014-004364
Application 12/172,396
902 (Fed. Cir. 1984). Further, Appellant's argument with respect to
destroying the intended functionality of Ghoshal' s heat pipes is not
persuasive because Appellant's have not adequately explained how adding a
heat pipe to interconnect the fingers of the condensing section would destroy
Ghoshal's device, and Appellant's have provided no evidence in support.
Indeed, as the Examiner finds, adding an interconnecting heat pipe to
Ghoshal would "simply add more heat transfer area so that the vapor can
condense and the heat sink will perform more efficiently." Ans. 15. This is
sufficient reasoning to support the Examiner's determination of obviousness.
Accordingly, we affirm the rejection.
SUMMARY
We affirm the rejection of claims 1-16, and 18-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
5