10328302 (B.P.A.I. Sep. 16, 2008)

Ex Parte Krassowski et al

Board of Patent Appeals and InterferencesSep 16, 2008

10328302 (B.P.A.I. Sep. 16, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1 ____________________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ____________________ 6 7 Ex parte DANIEL W. KRASSOWSKI, GARY G. CHEN, 8 THOMAS W. BURKETT, BRIAN M. FORD, JING-WEN TZENG, 9 JULIAN NORLEY, and MARTIN D. SMALC 10 ____________________ 11 12 Appeal 2008-1223 13 Application 10/328,302 14 Technology Center 3700 15 ____________________ 16 17 Decided: September 16, 2008 18 ____________________ 19 20 Before: MURRIEL E. CRAWFORD, DAVID B. WALKER, and JOHN C. 21 KERINS, Administrative Patent Judges. 22 23 CRAWFORD, Administrative Patent Judge. 24 25 26 DECISION ON APPEAL 27 28 STATEMENT OF THE CASE 29 Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection 30 of claims 12, 14, 18 and 20. Claims 1 to 11, 13, 15 to 17 and 19 have been 31 withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b) 32 (2002).33 Appeal 2008-1223 Application 10/328,302 2 Appellants invented a thermal management device which includes a 1 substantially fluid impermeable shell comprised of particles of exfoliated 2 graphite (Specification 1, 6). 3 Claim 12 under appeal reads as follows: 4 5 12. A thermal management device comprising: 6 7 a. a substantially fluid impermeable shell, 8 wherein a material of construction of said 9 shell comprises compressed particles of exfoliated 10 graphite; and 11 12 b. a working fluid circulating inside said shell. 13 14 The Examiner rejected claim 12 under 35 U.S.C. § 102(e) as being 15 anticipated by Norley. 16 The Examiner rejected claims 14 and 18 under 35 U.S.C. § 103(a) as 17 being unpatentable over Norley in view of Hamburgen. 18 The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as being 19 unpatentable over Camarda in view of Norley and Levedahl. 20 The prior art relied upon by the Examiner in rejecting the claims on 21 appeal is: 22 Levedahl US 3,528,494 Sep. 15, 1970 23 Camarda US 4,838,346 Jun. 13, 1989 24 Hamburgen US 4,966,226 Oct. 30, 1990 25 Norley US 2002/0166658A1 Nov. 14, 2002 26 27 Appellants contend that Norley does not disclose the formation of a 28 shell formed of compressed particles of exfoliated graphite, a substantially 29 fluid impermeable shell or a working fluid circulating inside the shell. 30 Appeal 2008-1223 Application 10/328,302 3 Appellants further contend that the Norley does not disclose an 1 enclosure which can be made vacuum tight. 2 Appellants finally contend that there is no motivation to substitute the 3 material disclosed in Norley for the material disclosed in Camarda. 4 5 ISSUES 6 The first issue is whether the Appellants have shown that the 7 Examiner erred in finding that Norley discloses the formation of a shell 8 formed of compressed particles of exfoliated graphite, a substantially fluid 9 impermeable shell and a working fluid circulating inside the shell. 10 The second issue is whether the Appellants have shown that the 11 Examiner erred in combining the teachings of Norley and Hamburgen so as 12 to include an enclosure which is vacuum tight. 13 The third issue is whether the Appellants have shown that the 14 Examiner erred in holding that there was a reason to modify the device 15 disclosed in Camarda so as to be formed by the material disclosed in Norley. 16 17 FINDINGS OF FACT 18 Appellants’ Specification teaches that a heat pipe is essentially a 19 closed system of heat transfer in which a small amount of liquid within a 20 sealed and evacuated enclosure is cycled through an evaporation and 21 condensation cycle (Specification 1:[0002]). Appellants disclose that the 22 heat pipe of the invention is comprised of a substantially fluid impermeable 23 shell and that the shell is a vacuum tight enclosure (Specification 24 13:[00048]). 25 Appeal 2008-1223 Application 10/328,302 4 Norley discloses a heat pipe which is an enclosure that is effective for 1 transferring heat from a heat source such as an electronic component [0009]. 2 Norley teaches that there are problems related to heat dissipation and weight 3 associated with forming the heat pipe of metals such as copper [0008]. 4 Norley forms the therein disclosed heat pipe of compressed particles of 5 exfoliated graphite [0022, 0047]. 6 Hamburgen discloses a heat pipe with fins comprised of graphite and 7 that the heat pipe may be vacuum cleaned to cause the atmospheric gases to 8 be evacuated (col. 2, ll. 62 to 65; col. 3, ll. 33 to 34). 9 Camarda discloses a composite heat pipe with a metal interior 10 enclosed in a carbon/carbon layer. Camarda teaches that carbon-carbon is a 11 composite material that has structural integrity above 3000° F (col. 2, ll. 39 12 to 40). 13 14 ANALYSIS 15 Rejection of claim 12 16 We are not persuaded of error on the part of the Examiner by 17 Appellants’ argument that Norley does not disclose the formation of a shell 18 formed of compressed particles of exfoliated graphite, a substantially fluid 19 impermeable shell or a working fluid circulating inside the shell. As we 20 found above, Norley clearly discloses a heat pipe and Appellants’ own 21 disclosure defines a heat pipe as a closed system of heat transfer in which a 22 small amount of liquid within a sealed and evacuated enclosure is cycled 23 through an evaporation and condensation cycle. Appellants define a shell as 24 an enclosure, therefore the Norley heat pipe is a shell as so defined. In 25 Appeal 2008-1223 Application 10/328,302 5 addition, we agree with the Examiner that any heat pipe must contain a 1 working fluid and must necessarily be sealed to function, because if it were 2 not sealed, the working fluid would leak out. 3 In view of the foregoing, we will sustain the Examiner’s rejection of 4 claim 12. 5 6 Rejection of claims 14 and 18 7 We are also not persuaded by Appellants’ argument that Norley does 8 not disclose an enclosure which can be made vacuum tight. Appellants’ own 9 disclosure teaches that a heat pipe by definition is an evacuated enclosure. 10 Norley discloses a heat pipe. In addition, Hamburgen specifically discloses 11 an evacuated heat pipe. 12 In view of the foregoing, we will sustain the Examiner’s rejection of 13 claims 14 and 18. 14 15 Rejection of claim 20 16 We are not persuaded by Appellants’ argument that there is no 17 motivation to substitute the material disclosed in Norley for the material 18 disclosed in Camarda. To the extent Appellants are looking for an explicit 19 motivation, suggestion, or teaching in the art, this rigid test has been 20 foreclosed by the Supreme Court's recent holding in KSR Int'l Co. v. Teleflex 21 Inc., 127 S. Ct. 1727 (2007). In KSR, the Court characterized the teaching, 22 suggestion, motivation test as a “helpful insight” but found that when it is 23 rigidly applied, it is incompatible with the Court's precedents. KSR, 127 S. 24 Ct. at 1741. The holding in KSR makes clear that it is no longer absolutely 25 Appeal 2008-1223 Application 10/328,302 6 necessary to find motivation in the references themselves. See KSR, 127 S. 1 Ct. at 1741. 2 The Supreme Court emphasized that “the principles laid down in 3 Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.” 4 KSR, 127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12 5 (1966) (emphasis added)), and reaffirmed principles based on its precedent 6 that “[t]he combination of familiar elements according to known methods is 7 likely to be obvious when it does no more than yield predictable results.” Id. 8 The Court explained: 9 When a work is available in one field of endeavor, 10 design incentives and other market forces can 11 prompt variations of it, either in the same field or a 12 different one. If a person of ordinary skill can 13 implement a predictable variation, §103 likely bars 14 its patentability. For the same reason, if a 15 technique has been used to improve one device, 16 and a person of ordinary skill in the art would 17 recognize that it would improve similar devices in 18 the same way, using the technique is obvious 19 unless its actual application is beyond his or her 20 skill. 21 Id. at 1740. The operative question in this “functional approach” is thus 22 “whether the improvement is more than the predictable use of prior art 23 elements according to their established functions.” Id. 24 In the instant case, the use of the graphite disclosed in Norley yields 25 no more than predictable results when used in the Carmada heat pipe. 26 Appellants argue that one of ordinary skill in the art would not be motivated 27 to substitute the graphite material disclosed in Norley because nothing in 28 Norley indicates that the carbon sheets therein disclosed are capable of 29 Appeal 2008-1223 Application 10/328,302 7 withstanding the temperatures, up to about 3000° F, of Camarda because the 1 graphite material does not have the same melting point. This argument is 2 not persuasive because we agree with the Examiner that consultation of 3 extrinsic evidence reveals that the melting point of graphite is approximately 4 3500° C which corresponds to approximately 6300° F. See 5 http://www.webelements.com/webelements/elements/text/C/heat.html. 6 In view of the foregoing, we will sustain the rejection of claim 20. 7 The decision of the Examiner is affirmed. 8 No time period for taking any subsequent action in connection with 9 this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 10 11 AFFIRMED 12 13 14 15 16 17 18 19 hh 20 WADDEY & PATTERSON, P.C. 21 1600 DIVISION STREET, SUITE 500 22 NASHVILLE, TN 37203 23 24 25