Ex Parte Lakin et al

Patent Trial and Appeal Board

Sep 24, 2012

11741550 (P.T.A.B. Sep. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ERIC D. LAKIN and PAUL BONSTROM
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Appeal 2010-004815
Application 11/741,550
Technology Center 2800
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Before ST. JOHN COURTENAY III, CARL W. WHITEHEAD, JR., and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004815
Application 11/741,550

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-6 and 8-20 (App. Br. 4). Claim 7 was cancelled (id.). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary Claim 1 follows:
1. An electronic assembly comprising:

a substrate that includes a first side and a second side;

a first electronic component mounted on the first side of the substrate;

a second electronic component mounted on the first side of the
substrate, the first electronic component extending a different height above
the first side of the substrate as the second electronic component; and

a heat sink that includes a base and fins extending from the base, the
base of the heat sink including a formation which engages the second
electronic component in order to maintain the base of the heat sink
substantially parallel to the substrate when the heat sink is mounted in
thermal contact with the first and second electronic components, wherein the
heat sink and the substrate form an enclosure that encloses the first
electronic component and the second electronic component.

Claims 1-6 and 8-12 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Vinson (U.S. 6,982,877) (Ans. 3-4).
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Vinson (Ans. 4-5).
Claims 15-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Vinson in view of Chiou (U.S. 7,023,700) (Ans. 5).
Appeal 2010-004815
Application 11/741,550

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ISSUE
Appellants’ responses to the Examiner’s positions present the
following issue:
Did the Examiner err in finding that Vinson discloses that “the heat
sink and the substrate form an enclosure that encloses the first electronic
component and the second electronic component,” as recited in independent
claim 1?

ANALYSIS
We disagree with Appellants’ assertions regarding the Examiner’s
rejection of the claims on appeal. We adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer (Ans. 3-6) in response to arguments made in the Appellants’ Appeal
Brief and Reply Brief. We concur with the conclusion reached by the
Examiner. We highlight and address certain findings and arguments below.
Appellants argue that the Examiner erred in finding that independent
claim 1 is anticipated because Vinson’s Figs. 3 and 5 “clearly illustrate the
disclosed heat sink 12 does not form an enclosure with substrate 14 when the
heat sink 12 is mounted to the substrate 14” (App. Br. 8). The Examiner
found, however, that the heat sink 12 and substrate 14 of Vinson’s device
“enclose the electronic components 16” (Ans. 5). We agree with the
Examiner. Our reviewing Court requires us to give a claim its broadest
reasonable meaning consistent with the Specification. In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997). Appellants’ Specification states that
“[a]lthough FIGS. 1 and 2 show that the heat sink 30 and the substrate 12
Appeal 2010-004815
Application 11/741,550

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may fully enclose the first electronic component 20 and the second
electronic component 22, it should be noted that in some embodiments the
heat sink 30 and the substrate 12 may only partially enclose the first
electronic component 20 and the second electronic component 22” (p. 5, ll.
5-9). In addition, claim 1 does not require the heat sink and substrate to
form a full enclosure; it instead recites only that they form an enclosure.
Vinson shows that the heat sink 12 and the substrate 14 at least form a
partial enclosure around the electronic components 16 by surrounding the
components (FIG. 5). Accordingly, under the proper claim construction,
Vinson’s disclosure of a heat sink and substrate surrounding electronic
components qualifies as the claimed forming of an enclosure.
Thus, we find no error in the Examiner’s rejection of independent
claim 1 as well as the claims dependent therefrom (i.e., claims 2-6 and 8-20)
because Appellants did not set forth any separate patentability arguments for
the dependent claims (see App. Br. 9-10).

DECISION
We affirm the Examiner’s decision rejecting claims 1-6 and 8-20.
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)(iv).

AFFIRMED

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