Ex Parte Liang

Patent Trial and Appeal Board

Oct 7, 2016

13189682 (P.T.A.B. Oct. 7, 2016)

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.
13/189,682 07/25/2011 Fu-Sheng LIANG VIC-21 US 1718
30499 7590 10/07/2016
CLIFFORD B. PERRY
270 N. El Camino Real
No. F-347
ENCINITAS, CA 92024
EXAMINER
GRAYBILL, DAVID E
ART UNIT PAPER NUMBER
2894
MAIL DATE DELIVERY MODE
10/07/2016 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 FU-SHENG LIANG1
____________

Appeal 2015-003321
Application 13/189,682
Technology Center 2800
____________

Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 2, 5–7, and 9–11. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a heat sink module. E.g., Spec.
¶ 2; Claim 1. Claim 1 is reproduced below from page 13 (Claims Appendix)
of the Appeal Brief:

1 According to the Appellant, the real party in interest is Victory Industrial
Corporation. Br. 3.
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1. A heat sink module, comprising:
a main body having an outer periphery provided with outwardly
extending mounting brackets, wherein each said mounting
bracket has a through hole, the main body further having a
backside formed with a plurality of engaging holes and a front
side provided with an upright fin array, the fin array comprising
a plurality of alternately arranged first fins and second fins,
wherein each said first fin extends between an inner periphery
and the outer periphery of the main body, and each said second
fin extends from the outer periphery of the main body toward
the inner periphery but is spaced from the inner periphery; and
at least a diode provided in the engaging holes of the main
body, wherein each said diode is peripherally provided with
engaging ribs and has an end connected with wires,
wherein each said engaging hole has an inner surface formed
with at least a vent slot in communication with the each said
engaging hole.
REJECTIONS ON APPEAL2
1. Claims 9 and 11 stand rejected under 35 U.S.C. § 112, ¶ 1, for
failure to comply with the written description requirement.
2. Claims 1, 2, 5–7, and 9–11 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Admitted Prior Art (“APA”), Mori
et al. (US 5,828,564, issued Oct. 27, 1998), Smith et al. (US 6,847,525 B1,
issued Jan. 25, 2005), and Schneider et al. (US 5,963,795, issued Oct. 5,
1999).

2 The Final Action includes rejections of claim 4 under 35 U.S.C. § 112, ¶ 4,
and claim 8 under 35 U.S.C. § 103(a). See Final Act. 4–5. However, the
Appellant has cancelled claims 4 and 8 under 37 CFR § 41.33, see
Amendment, Oct. 10, 2014, and the Examiner has admitted the cancellations
while maintaining the rejection of claims 1, 2, 5–7, and 9–11, see Advisory
Action, Oct. 16, 2014.
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ANALYSIS
Rejection 1
Claim 9 depends from claim 1 and recites:
9. The heat sink module of claim 1, wherein the vent slot extends
vertically along the inner surface of the engaging hole from the
bottom of the surface of the engaging hole to the top of the
inner surface of the engaging hole, and wherein the vent slot
does not extend through the bottom of the inner surface of the
engaging hole into the front side of the heat sink module.
The Examiner finds that the limitation “the vent slot does not extend through
the bottom of the inner surface of the engaging hole into the front side of the
heat sink module” is a negative limitation that lacks written description
support. See Final Act. 2–3. Claim 11 includes the same limitation, and the
Examiner rejects it for the same reason. See id.
We are not persuaded by the Examiner’s rationale. As explained by
the Appellant, see Br. 10–11, paragraph 24 of the Specification describes a
“vent slot 122 on the inner surface” of the engaging hole, and Figure 9
depicts a vent slot 122 that does not extend through the bottom of the inner
surface of the engaging hole. We cannot agree with the Examiner’s finding
that “figure 9 merely illustrates that the vent slot 122 extends at least to the
bottom of the inner surface . . . but does not disclose that vent slot does not
otherwise extend through the bottom of the inner surface . . . ,” as it is
inconsistent with Figure 9. See Spec. Fig. 9. We recognize that “[t]he mere
absence of a positive recitation is not basis for an exclusion.” See MPEP
2173.05(i); Ans. 9–10. However, the combination of Spec. ¶ 24 and Figure
9—which positively depicts a heat sink module with the disputed claim
limitation—sufficiently establishes that the inventors were in possession of
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the claimed subject matter. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (“[T]he test for [compliance with the
written description requirement] is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.”).
We reverse the Examiner’s ¶ 112 rejection of claims 9 and 11.
Rejection 2
The Appellant argues the claims as two groups: (1) claims 1 and 10
and (2) claims 9 and 11. The Appellant presents separate arguments only for
limitations appearing in claims 1 and 9. We limit our discussion to those
claims. Claims 2, 5–7, and 10 will stand or fall with claim 1. Claim 11 will
stand or fall with claim 9.
Claim 1.
The Examiner finds, inter alia, that the APA discloses a heat sink
module comprising each element of claim 1 except (1) a backside formed
with a plurality of engaging holes, and (2) vent slots in communication with
the engaging holes. See Final Act. 6, 8. Concerning the engaging holes, the
Examiner finds that Mori Fig. 2 teaches a backside 304 having a plurality of
engaging holes 304a into which a diode is provided. Id. at 6; Mori Fig. 2,
4:44–55, 5:1–15. The Examiner concludes that it would have been obvious
to combine Mori with the APA “because, as disclosed by Mori as cited, it
would enhance thermal conduction.” Final Act. 6–7. Concerning the vent
slots, the Examiner finds that Schneider teaches gas relief grooves (i.e., vent
slots) in communication with engaging holes. Final Act. 9; Schneider Fig.
6a (groove 640a), 5:56–58, 9:24–31 (“In the process of press-fitting the
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layers together, it is possible that gases (air) will become entrapped in the
recess . . . . [A] groove or hole [may be provided] for permitting entrapped
gases (e.g., air) to escape during the press fit procedure.”). The Examiner
concludes that it would have been obvious to combine Schneider with Mori
and the APA because “it would desirably permit entrapped gases to escape
during the diode press fit process of the applied prior art.” Final Act. 10–11.
The Appellant argues that the APA (Spec. Fig. 3) does not include
engaging holes and therefore “does not provide any motivation to modify its
structure to include a vent for cleaning trapped gases.” Br. 8. The Appellant
argues that the Examiner’s rejection is based on impermissible hindsight. Id.
We are not persuaded by those arguments because they focus only on
the APA and do not address the Examiner’s rationale. See In re Keller, 642
F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references.”). Although the Examiner did not find within
Figure 3 (APA) of the Appellant’s Specification a motivation to include a
vent slot because it depicts no engaging hole, the Examiner proposes (1)
adding an engaging hole in view of Mori to improve conduction between the
diode and the heatsink, and (2) adding a vent slot in view of Schneider to
permit air to escape when the diode is press-fit into the engaging hole. See
Final Act. 6–11. The Examiner’s findings and conclusions are supported by
the record, and the Appellant’s limited argument identifies no reversible
error in the Examiner’s rationale. Cf. In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections . . . .”). We affirm the
Examiner’s rejection of claim 1.
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Claim 9.
Concerning the limitation “wherein the vent slot does not extend
through the bottom of the inner surface of the engaging hole into the front
side of the heat sink module,” the Examiner finds that Schneider’s claim 5
(which recites “a gas relief groove formed in a wall of said recess”
(emphasis added)) “encompasses” the disputed limitation. Final Act. 10.
The Examiner also determines that “it would have been obvious to omit
wherein the vent slot does extend through the bottom of the inner surface . . .
if it is not desired because omission of a step or an element and its function
is obvious if the step or the element and its function are not desired.” Id.
The Examiner concludes that “it would have been obvious to [combine the
prior art to achieve claimed invention because] it would desirably permit
entrapped gases to escape during the diode press fit process of the applied
prior art.” Id. at 10–11.
In opposition to the Examiner’s finding that the scope of Schneider’s
claim 5 encompasses the disputed limitation, the Appellant argues that “the
hypothetical inclusion of a feature within the argued scope of a claim in an
applied reference does not equate to a specific disclosure of that feature for
purposes of negating novelty or non-obviousness of a claim incorporating
said feature.” Br. 9. Thus, the Appellant does not appear to dispute that the
scope of Schneider’s claim 5 encompasses a vent slot that does not extend
through the surface adjacent to it, but instead argues that it nevertheless
would not have been obvious to make such an embodiment. Id.
We are not persuaded by that argument. The vent slots depicted in
Schneider appear to be limited to the walls of the depicted recesses. See
Schneider Fig. 6a; see also Fig. 6b (depicting slot that does not extend into
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adjacent surface). While Schneider does not expressly state that the vent slot
does not extend to adjacent surfaces, a person of ordinary skill in the art
would have understood that extension to other layers is not necessary so
long as the slot achieves venting of gas. See, e.g., id. at Figs. 6a and 6b,
9:23–31, claim 5; see also See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418–19 (2007) (“[T]he [obviousness] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”).
As explained above, the Examiner relies on Mori Fig. 2 for its
disclosure of engaging holes. A person of ordinary skill in the art, through
the use of only ordinary creativity, would have understood that, in order to
vent gas with a slot as taught by Schneider, a slot would be necessary only in
the side wall of the engaging hole, and that the slot would not need to extend
into the bottom of the surface. See, e.g., Mori Fig. 2; Schneider Fig 6a. The
fact that Schneider’s discussion of gas relief grooves does not expressly
teach that they may be limited to sidewalls is not indicative of reversible
error in the Examiner’s rejection. See KSR, 550 U.S. at 418–19.
We affirm the Examiner’s rejection of claim 9.
CONCLUSION
We REVERSE the Examiner’s ¶ 112 rejection of claims 9 and 11.
We AFFIRM the Examiner’s § 103 rejection of claims 1, 2, 5–7, and
9–11.
Because the rejection of every claim on appeal is affirmed under at
least one of the stated grounds of rejection, we AFFIRM the Examiner’s
rejection of claims 1, 2, 5–7, and 9–11.
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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