Ex parte Lucey

Board of Patent Appeals and Interferences

Sep 28, 2000

08413521 (B.P.A.I. Sep. 28, 2000)

1
The opinion in support of the decision being entered today was
not written for publication in a law journal and is not
binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GEORGE K. LUCEY JR
__________
Appeal No. 1998-0912
Application 08/413,521
___________
ON BRIEF
___________
Before THOMAS, FLEMING, and HECKER, Administrative Patent
Judges.
HECKER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final
rejection of claims 1 through 10, all claims pending in this
application.
The invention relates to protecting an electronic
circuit from detrimental contaminants. In particular,
referring to Figure 2, integrated circuit 18 is positioned on
Appeal No. 1998-0912
Application 08/413,521
2
pedestal 20 in container 21. The container is filled with a
hydrophobic liquid completely immersing the circuit, and
forming a bubble 26 at the top. In view of the differences in
specific gravity between the hydrophobic liquid and the
condensate (e.g., water), the latter gravitates toward the
bottom of the container and the elevated pedestal segregates
the circuit from the condensate regardless of the container
orientation.
Representative independent claim 1 is reproduced as
follows:
1. A method for extending a life cycle of a high
density electronic circuit by isolation from detrimental
contaminants, comprising the steps of:
providing a container capable of being sealed,
providing pedestal means positioned on the interior
of the container,
adding a hydrophobic liquid in an amount sufficient
to immerse the electronic circuit and to form a compressible
bubble at the top of the container, and
sealing the container.
so that on the contamination of the container, the
elevated pedestal segregates the electronic circuit from the
condensate regardless of the container orientation.
The Examiner relies on the following references:
Appeal No. 1998-0912
Application 08/413,521
All discussion of this reference relates to a1
translation obtained by the USPTO, copy enclosed.
3
Bolton et al. 3,229,023 Jan. 11, 1966
Carlson et al. 4,953,005 Aug. 28, 1990
Chardine 2,518,812 Jun. 24, 19831
(French Patent)
Claims 1, 2, 5 through 7 and 10 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Chardine in view
of Bolton.
Claims 3, 4, 8 and 9 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chardine in view of
Bolton, and further in view of Carlson.
Rather than reiterate the arguments of Appellant and
the Examiner, reference is made to the brief and answer for
the respective details thereof.
As a preliminary matter, we note that the Examiner
is correct regarding the noted errors of the claims appearing
in the Appendix to the brief (answer-pages 3 and 4). In
addition, we note that the “.” after “container” in claim 1,
Appeal No. 1998-0912
Application 08/413,521
4
line 10, should be a “,”. In claim 1, last line, “the
condensate” has no antecedent. In claim 6, “top of the
package” should be “top of the container”, “so that on the
contamination” should be “so that on contamination”, and “by a
condensate,” should be “by the condensate,”. We also note the
amendment to claim 2, changing “assembly” to “circuit” has not
been physically entered.
OPINION
After a careful review of the evidence before us, we
will not sustain the rejection of claims 1 through 10 under 35
U.S.C. § 103.
The Examiner has failed to set forth a prima facie
case. It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the reasonable teachings or suggestions
found in the prior art, or by a reasonable inference to the
artisan contained in such teachings or suggestions. In re
Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
Appeal No. 1998-0912
Application 08/413,521
5
recognizable ‘heart’ of the invention." Para-Ordnance Mfg. v.
SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995) (citing W. L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984)).
With regard to claim 1, the Examiner reasons that
Chardine teaches the claimed invention except for using the
hydrophobic liquid 10 in an amount sufficient to form a
compressible bubble at the top of the container. The Examiner
notes that Bolton uses a hydrophobic liquid with an electronic
circuit in an amount sufficient to submerge the circuit, yet
leave a compressible bubble at the top of the container to
permit volumetric thermal expansion and contraction of the
liquid 11 (answer-page 5). The Examiner states:
Therefore, it would have been obvious to
one having ordinary skill in the art at the time the
invention was made to provide the package for hybrid
electronic circuits of Chardine with a bubble at the
top 20 of the package to provide for volumetric
thermal expansion and contraction of Chardine’s
liquid 10 in view of the teaching of Bolton et al.
[Answer-page 6.]
Appeal No. 1998-0912
Application 08/413,521
6
Appellant argues that the air space of Bolton, about
15% of the volume, would not allow a “bubble” to form at the
top of the container (brief-pages 3 and 4). Also, Appellant
contends, Bolton is not designed to protect the electronic
circuit regardless of orientation of the container (brief-page
4).
We agree with Appellant. Bolton never recites a
bubble, or anything similar thereto. Bolton’s “gas space or
cushion 12", as depicted in Figure 1, appears nothing like a
bubble. The only suggestion that Bolton’s space 12 might be
broadly considered as a bubble, is the fact that Appellant’s
claims call for such, i.e. hindsight.
Claim 1's requirement that “the elevated pedestal
segregates the electronic circuit from condensate regardless
of the container orientation” (emphasis added), has never been
addressed by the Examiner. To the contrary, Bolton suggests
that the orientation of the container remains vertical. At
column 4, lines 24-28, Bolton states:
When gas insulation rather than liquid
insulation is used there is, of course, no liquid
level in the tank above which the port 13 should be
placed and consequently the port and its covering
Appeal No. 1998-0912
Application 08/413,521
7
me[m]brane can be placed anywhere in the tank wall.

This means that when liquid is used in Bolton, port
13 must be kept above the liquid, thus severely limiting
container orientation. Nor can port 13 be eliminated. Column
3, lines 20-32 indicate that sealing port 13 would weaken the
tensile strength of the kraft paper from 90% of its initial
strength to 70%.
Furthermore, if Bolton’s air space were used in
Chardine, Chardine’s purpose would be destroyed. Chardine
totally fills its container with liquid to make the circuit
“capable of resisting significant [external] pressures”
(translation-page 2). An air space would detract from this
pressure capability. Moreover, Chardine provides for liquid
thermal expansion via elastic deformation of the container.
Note page 5 of the translation wherein it states, “a variation
if the volume of the fluorocarbon due to a later temperature
variation will be absorbed by an elastic deformation of the
hood.” Thus Chardine already provides for thermal expansion
of the liquid.
Appeal No. 1998-0912
Application 08/413,521
8
The Examiner has not shown (or even alleged) that this is
deficient, nor that Bolton’s air space is superior.
The Federal Circuit states that "[t]he mere fact
that the prior art may be modified in the manner suggested by
the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may
not be established using hindsight or in view of the teachings
or suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W.
L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-13.
In view of the forgoing, we will not sustain the
Examiner’s rejection of claim 1. Independent claim 6 recites
the same unmet limitations, and likewise we will not sustain
the Examiner’s rejection of claim 6.
The remaining claims on appeal, all dependent, also
contain the above limitations discussed in regard to claims 1
Appeal No. 1998-0912
Application 08/413,521
9
and 6 and thereby, we will not sustain the rejection as to
these claims.
We have not sustained the rejection of claims 1
through 10 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
STUART N. HECKER )
Administrative Patent Judge )
Appeal No. 1998-0912
Application 08/413,521
10
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