Ex Parte Kim

Patent Trial and Appeal Board

Dec 12, 2013

11327486 (P.T.A.B. Dec. 12, 2013)

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.
11/327,486 01/09/2006 Won-nyun Kim 49775 2307
1609 7590 12/13/2013
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
LE, BAO-LUAN Q
ART UNIT PAPER NUMBER
2878
MAIL DATE DELIVERY MODE
12/13/2013 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 WON-NYUN KIM
____________
Appeal 2011-009858
Application 11/327,486
Technology Center 2800
____________
Before CHARLES F. WARREN, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2011-009858
Application 11/327,486
2
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting under 35 U.S.C. §103(a): (1) claims 1, 2, 7, 8, 12, 15, 17, and 21-
25 as unpatentable over Morgan (US 2005/0128441 A1, published Jun. 16, 2005)
in view of Katsui (US 6,227,286 B1, issued May 8, 2001); and (2) claims 5, 6, 13,
14, and 20 as unpatentable over the same references, further in view of Shimura
(US 2004/0037039 A1, published Feb. 26, 2004).2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Independent claim 1 is representative of the invention, and is reproduced
below from the Claims Appendix to the Appeal Brief:
1. A cooling apparatus for a projector having at least two light
emitting diode (LED) modules projecting red, green and blue rays,
comprising:
a first cooling member mounting a first LED module;
a second cooling member mounting a second LED module, the
second cooling member being substantially planar and having first
and second oppositely facing surfaces;
a heat pipe thermally connecting the first and second cooling
members and having an end disposed between the first and second
surfaces of the second cooling member;
a cooling fin member mounted to only the second cooling
member on a first surface thereof; and
a fan mounted to the first surface of the second cooling member
laterally adjacent the cooling fin member and cooling the cooling fin
member.
Appellant’s arguments in support of patentability as to all appealed claims
are based on limitations common to the independent claims, i.e., claims 1, 7, and

1 Final Office Action mailed Dec. 29, 2009.
2 Appeal Brief filed Sep. 27, 2010 (“App. Br.”).
Appeal 2011-009858
Application 11/327,486
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15. (See generally, App. Br. 14-19.) The sole issue raised by Appellant3 is: did
the Examiner reversibly err in finding Katsui discloses a cooling apparatus having
a fan mounted in the manner recited in claims 1, 7, and 15? (See id. at 14.) We
answer this question in the negative.
Figure 3A of Katsui is reproduced below:
Katsui Fig. 3A, above, is a perspective view of a box 15 accommodating a
heat sink body 10 (see Figs. 1A-D) having cooling fins 14 attached perpendicularly
onto the heat sink body. (Katsui col. 13, ll. 1-2; col. 12, ll. 12-14.) The heat sink
body includes a cutaway portion into which a cooling fan 12 is embedded. (Id. at

3 We decline to consider the new arguments advanced by Appellant on pages 4-6
of the Reply Brief (filed Mar. 21, 2011), as they are not responsive to arguments
made for the first time by the Examiner in the Answer (filed Jan. 21, 2011
(“Ans.”)). See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(Informative) (“The reply brief is not an opportunity to make arguments that could
have been made during prosecution, but were not. Nor is the reply brief an
opportunity to make arguments that could have been made in the principal brief on
appeal to rebut the Examiner's rejections, but were not”).
Appeal 2011-009858
Application 11/327,486
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ll. 10-12.) The cooling fan 12 is supported on a printed circuit board 18 which
serves as an upper lid of the box 15. (Id. at col. 13, ll. 45-46; col. 14, ll. 3-5.)
The Examiner finds Katsui discloses a cooling fin member (cooling fins 14)
mounted to a first surface of a second cooling member (box 15), and a fan (fan 12)
mounted laterally adjacent the cooling fin member (cooling fins 14). (Ans. 4.)
Appellant argues Katsui’s cooling fan 12 is mounted above the fins 14 of the
heat sink body 10, rather than on the same surface as the fins 14 as required by the
claims. (App. Br. 17.) Appellant further argues that because Katsui’s cooling fan
12 and fins 14 are not on the same surface of the heat sink body 10, they cannot be
mounted laterally adjacent one another as required by the claims. (Id.)
The Examiner contends Katsui’s fan (fan 12) is mounted in the empty space
“among/between the fins 14” and, therefore, is laterally adjacent to the cooling fin
member (fins 14) and mounted to the same surface of the second cooling member
(box 15) as the cooling fin member (fins 14). (Ans. 8-9.) In support of this
position, the Examiner relies on a dictionary definition of “lateral” as “of or
relating to the side” and a dictionary definition of “mount” as “to attach to a
support” or “to set on something that elevates,” contending “[t]here is nothing in
the definition of ‘mounted’ that requires the fan 12 to be in direct and immediate
contact with the surface to which the fan 12 is mounted.” (Id. (citing the Merriam
–Webster online dictionary).)
As noted by the Examiner, the issue in this case turns on our interpretation
of the claim terms “mounted to” and “laterally adjacent.” (See Ans. 8.)
During examination, claim terms are given their broadest reasonable
construction consistent with the Specification. In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). Our reviewing court permits the PTO to use
dictionary definitions to enlighten the broadest reasonable interpretation of a claim
Appeal 2011-009858
Application 11/327,486
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term. See In re Trans Tex. Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007)
(citing Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc)).
However, “dictionary definitions must give way to the meaning imparted by the
specification.” In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006).
We do not find any disclosure in the Specification which warrants a
narrower claim interpretation than that advanced by the Examiner. (See, e.g.,
Spec. [0030] (“The cooling fin member 50 may be integrally formed with the
second cooling member 320 or separately formed and attached to the second
cooling member 320.”)(emphasis added); id. at [0031] (“[T]he fan 60 is preferably
disposed adjacent to the second cooling member 320 having the cooling fin
member 50.”).) Moreover, Appellants have not identified evidence which supports
a narrower claim interpretation. See In re Morris, 127 F.3d 1048, 1057 (Fed. Cir.
1997) (explaining that an applicant seeking a narrower claim construction must
either show why the broader construction is unreasonable or amend the claim to
expressly state the scope intended).
Katsui’s board 18 forms the upper lid of box 15 and is, therefore, attached to
and supported by the walls and bottom surface of box 15. Because Katsui’s fan 12
is supported on board 18, it is also attached to and supported by all surfaces of box
15, i.e., “mounted to” the same, bottom surface of box 15 (the second cooling
member) as fins 14 (the cooling fin member) as we interpret the claim terms
“mounted to.” Further, because Katsui’s fan 12 is embedded in a cutaway portion
such that fins 14 are positioned around the sides thereof, fan 12 is reasonably
viewed as “laterally adjacent” fins 14 (the cooling fin member) as we interpret the
claim terms “laterally adjacent.” In other words, we are not convinced of error in
the Examiner’s finding that Katsui discloses a cooling apparatus having a fan
mounted in the manner recited in claims 1, 7, and 15.
Appeal 2011-009858
Application 11/327,486
6
In view of the foregoing, we affirm the Examiner’s decision to reject claims
1, 2, 5-8, 12-15, 17, and 20-25.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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