Ex Parte Martin et al

Board of Patent Appeals and Interferences

Sep 10, 2010

11037918 (B.P.A.I. Sep. 10, 2010)

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.
11/037,918 01/18/2005 Yves Martin YOR920040581US1 7350
48355 7590 09/10/2010
WALL & TONG, LLP
IBM CORPORATION
25 James Way
Eatontown, NJ 07724
EXAMINER
LEO, LEONARD R
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
09/10/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte INTERNATIONAL BUSINESS MACHINES CORPORATION
____________________

Appeal 2009-007534
Application 11/037,918
Technology Center 3700
____________________

Before SALLY GARDNER LANE, JAMESON LEE, and RICHARD
TORCZON, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, International
Business Machines Corporation (“IBM”) under 35 U.S.C. § 134(a) from a
rejection of claims 1-3, 5-15, 17-26, and 33-35. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

References Relied on by the Examiner
Yamada et al. (“Yamada”) 4,686,606 Aug. 11, 1987
Yamamoto et al. (“Yamamoto”) 4,729,060 Mar. 1, 1988
Anderson et al. (“Anderson”) 5,761,037 Jun. 2. 1998
Boissele et al. (“Boissele”) US 6,644,385 B2 Nov. 11, 2003
Thayer et al. (“Thayer”) US 7,044,199 B2 May 16, 2006

Jairazbhoy et al. (“Jairazbhoy”) US 2005/0083655 A1 Apr. 21, 2005
East US 2005/0224212 A1 Oct. 13, 2005

The Rejections on Appeal
The Examiner rejected claims 1-3, 5, 6, 9-15, and 19-21 under 35
U.S.C. § 103(a) as unpatentable over East and Jairazbhoy.
The Examiner rejected claims 1, 5, 6, 9-15, 17, 19-24, and 33 under
35 U.S.C. § 103(a) as unpatentable over Thayer and Jairazbhoy.
The Examiner rejected claims 7, 8 and 34 under 35 U.S.C. § 103(a) as
unpatentable over East, Jairazbhoy, and Yamada.
The Examiner rejected claims 7, 8, and 18 under 35 U.S.C. § 103(a)
as unpatentable over Thayer and Jairazbhoy.
The Examiner rejected claims 22, 25, 26, and 35 under 35 U.S.C.
§ 103(a) as unpatentable over East, Jairazbhoy, and Anderson.
The Examiner rejected claims 22, 25, 26, and 35 under 35 U.S.C.
§ 103(a) as unpatentable over Thayer, Jairazbhoy, and Anderson.
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The Examiner rejected claims 23 and 24 under 35 U.S.C. § 103(a) as
unpatentable over East, Jairazbhoy, and Boissele.
The Examiner rejected claims 23 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Thayer, Jairazbhoy, and Boissele.
The Examiner rejected claim 35 under 35 U.S.C. § 103(a) as
unpatentable over East, Jairazbhoy, and Yamamoto.
The Examiner rejected claim 35 under 35 U.S.C. § 103(a) as
unpatentable over Thayer, Jairazbhoy, and Yamamoto.

The Invention
The invention relates to a heat exchanger for cooling integrated circuit
chips. (Spec. 2: ¶ 0002.)
Independent claim 1 is reproduced below (App. Br. 42 Claims
App’x.):
1. A heat exchanger, comprising:

a channel for receiving a coolant, the channel having a first
surface and an opposing second surface;

a mesh plug disposed in the channel for turbulently mixing the
coolant within the channel, wherein the first surface of the channel is
disposed proximate a semiconductor heat source, the semiconductor
heat source being: an integrated circuit chip, a portion of an integrated
circuit chip, a plurality of integrated circuit chips, or a circuit board;
and

an aperture formed through the first surface for receiving the
heat source therein such that the heat source is placed in direct contact
with the mesh plug and the coolant.
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B. ISSUE
Has IBM persuaded us that the Examiner incorrectly determined that a
skilled artisan would have recognized from the teachings of the prior art that
a heat source formed as “an integrated circuit chip, a portion of an integrated
circuit chip, a plurality of integrated circuit chips, or a circuit board” may be
cooled by direct contact with the interior of a cooling channel?
D. PRINCIPLES OF LAW
A reference does not teach away if it merely expresses a general
preference for one embodiment and does not “criticize, discredit, or
otherwise discourage” other structures or ways. Depuy Spine Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314. 1327 (Fed. Cir. 2009)
(quoting In re Fulton, 391 F.3d 1195, 1201 (Fed Cir. 2004)).
A prior art reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention it is
describing and attempting to protect. EWP Corp. v. Reliance Universal Inc.,
755 F.2d 898, 907 (Fed. Cir. 1985).
E. FACTS and ANALYSIS
The Examiner rejected claims 1-3, 5-15, 17-26, and 33-35 over prior
art.
Claim 1
Claim 1 is the sole independent claim. Claim 1 calls for a heat
exchanger having a channel for receiving a coolant where the channel is
defined by a first surface and an opposing second surface. The channel also
contains a mesh plug for mixing the coolant within the channel. An aperture
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is formed in the channel’s first surface which receives a heat source such
that the heat source is in direct contact with each of the mesh plug and the
coolant. The claim also recites that the heat source is “an integrated circuit
chip, a portion of an integrated circuit chip, a plurality of integrated circuit
chips, or a circuit board.”
The Examiner rejected claim 1 as unpatentable over East and
Jairazbhoy and alternatively over Thayer and Jairazbhoy. The Examiner
determined that each of East and Thayer discloses all of the above-noted
features of claim 1 including the circuit chips as heat sources with the
exception of an aperture within the first surface of a channel and configured
to place the circuit chip into direct contact with the mesh plug and coolant.
IBM does not dispute those determinations.
To make up for the deficiency in each of East and Thayer, the
Examiner turned to Jairazbhoy. The Examiner found that Jairazbhoy
discloses a heat source that is formed by elements 100 and 114 taken
together. (Ans. 4:19-20; 6:15-16.) Element 100 is disclosed as an electronic
power module (Jairazbhoy 2: ¶ 0023) and element 114 is a chamber of a heat
sink that forms part of the module (id. at 2: ¶ 0024). The Examiner
determined that elements 100 and 114 are disposed in an aperture 131 within
a first surface 130 of channel 128 and are in contact with a porous plug 142
and a flow of coolant within the channel. (Ans. 4:18-22; 6:14-18.)

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Jairazbhoy’s Figure 6 is reproduced below:

The figure above depicts a system for dissipating the heat of a
power module according to Jairazbhoy’s invention.

As illustrated in Jairazbhoy’s Fig. 6, module 100 includes a
semiconductor die 102 attached to a heat sink (115, not labeled in Fig. 6)
which includes fluid chamber 114. Heat produced by die 102 is drawn away
from the die by operation of the attached heat sink. (Jairazbhoy 2: ¶ 0024.)
The heat sink in turn heats up and is itself cooled by the operation of a
cooling fluid 134 which contacts surface 120 of chamber 114 that is
arranged within an aperture in the top wall surface 130 of channel 128. (Id.
at 2: ¶ 0026.) The Examiner reasoned that in view of the teachings of
Jairazbhoy, it would have been obvious to incorporate an aperture in a first
surface of each of the cooling channels disclosed in East and Thayer in order
to cool a circuit chip heat source by directly contacting the heat source with
the cooling fluid contained in the channel. (Ans. 5:1-4; 7:1-5.)
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IBM challenges the Examiner’s determination and reasoning on the
basis that Jairazbhoy does not disclose an integrated circuit chip or portion
thereof that is in direct contact with cooling fluid within channel 128. IBM
contends that Jairazbhoy’s semiconductor die 102 is the equivalent of the
claimed integrated circuit chip or circuit board heat source and is shown
separated from the interior of channel 128. IBM concludes that Jairazbhoy
thus “teaches away” from placing a heat source in direct contact with a flow
of coolant. (App. Br. 5:22-24; Reply Br. 6:26-29.)
IBM’s argument is unpersuasive. A reference does not teach away if
it merely expresses a general preference for one embodiment and does not
“criticize, discredit, or otherwise discourage” other structures or ways.
Depuy Spine Inc., 567 F.3d at 1327 (quoting In re Fulton, 391 F.3d 1195,
1201 (Fed Cir. 2004)). Here, that Jairazbhoy prefers to cool its
semiconductor die through one type of mechanism does not mean that it
regards as unworkable other mechanisms for cooling the die. Jairazbhoy
does not “teach away” from everything that is not its invention.
Moreover, while IBM’s claims call for a particular kind of heat
source, i.e., “an integrated circuit chip, a portion of an integrated circuit
chip, a plurality of integrated circuit chips, or a circuit board,” IBM’s
specification describes that those are but some types of structures that
constitute heat sources. Other disclosed types of heat sources include “any
material that is heated through the operation of a semiconductor device or
devices.” (Spec. 4: ¶ 0016.) Thus, IBM’s specification describing what
forms a heat source in the art is consistent with the disclosure of the prior art
as to known heat sources. East and Thayer disclose that known heat sources
in the art include “a die for a microprocessor or other electronic chip” (East
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5:¶ 0072) and “semiconductor circuits” (Thayer 1:21). Jairazbhoy discloses
that a module formed of a semiconductor die and an attached heat sink that
is heated by the semiconductor die is also a known configuration for a heat
source.
A prior art reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention it is
describing and attempting to protect. EWP Corp., 755 F.2d at 907. Here,
Jairazbhoy’s invention involves cooling one type of heating source, i.e.,
module 100, by inserting the source into an aperture within a surface of
channel containing cooling fluid such that the source directly contacts
components on the interior of the channel including the coolant flow. One
with ordinary skill in the art would not have viewed those teachings as being
limited solely to the cooling of Jairazbhoy’s module. Rather, a person of
ordinary skill in the art, who is also one of ordinary creativity, KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 421 (2007), would have readily appreciated
that other types of known heat sources, such as the chips and circuits
disclosed in East and Thayer, may also be cooled by the same technique of
directly contacting those sources with components on the interior of a
cooling channel. IBM has also articulated no reason why one with ordinary
skill would regard other types of heat sources as not appropriate for direct
contact with components on the interior of a cooling channel.
For the foregoing reasons, we are not persuaded of any error in the
Examiner’s determination that IBM’s claim 1 would have been obvious over
either East or Thayer in view of the teachings of Jairazbhoy. We sustain the
rejection of claim 1 over East and Jairazbhoy and the rejection of claim 1
over Thayer and Jairazbhoy.
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Claims 2, 3, 5-15, 17-26, and 33-35
Claims 2, 3, 5-15, 17-26, and 33-35 are ultimately dependent on claim
1 and were each rejected over East and/or Thayer along with Jairazbhoy and
one of Yamada, Anderson, Boissele, and Yamamoto.
IBM first argues that each of those dependent claims are patentable
for the same reasons that it advanced in connection with claim 1. For the
reasons discussed above with respect to claim 1, we reject IBM’s arguments
as applied to each of claims 2, 3, 5-15, 17-26, and 33-35.
IBM also challenges the rejection of those claims separately by
reproducing the features of each claim and generally alleging that the prior
art does not disclose those features. A statement of what a claim recites
coupled simply with a general allegation that the prior art does not disclose
the features of the claim does not constitute an argument for the separate
patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii).
In any event, the Examiner described in detail how the features of
each of dependent claims 2, 3, 5-15, 17-26, and 33-35 are found in the prior
art or are accounted for in light of the teachings of the prior art. (E.g., Ans.
pp. 5, 7-12, and 14-21.) IBM does not address any of the Examiner’s
findings or determinations, much less demonstrate how or why they are
incorrect. On this record, we are not persuaded of any error in the
Examiner’s rejections of claims 2, 3, 5-15, 17-26, and 33-35 over the prior
art. We sustain the Examiner’s rejections of those claims.
F. CONCLUSION
IBM has not persuaded us that the Examiner incorrectly determined
that a skilled artisan would have recognized from the teachings of the prior
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art that a heat source formed as “an integrated circuit chip, a portion of an
integrated circuit chip, a plurality of integrated circuit chips, or a circuit
board” may be cooled by direct contact with the interior of a cooling
channel.
G. ORDER
The rejection of claims 1-3, 5, 6, 9-15, and 19-21 under 35 U.S.C.
§ 103(a) as unpatentable over East and Jairazbhoy is affirmed.
The rejection of claims 1, 5, 6, 9-15, 17, 19-24, and 33 under 35
U.S.C. § 103(a) as unpatentable over Thayer and Jairazbhoy is affirmed.
The rejection of claims 7, 8 and 34 under 35 U.S.C. § 103(a) as
unpatentable over East, Jairazbhoy, and Yamada is affirmed.
The rejection of claims 7, 8, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Thayer and Jairazbhoy is affirmed.
The rejection of claims 22, 25, 26, and 35 under 35 U.S.C. § 103(a) as
unpatentable over East, Jairazbhoy, and Anderson is affirmed.
The rejection of claims 22, 25, 26, and 35 under 35 U.S.C. § 103(a) as
unpatentable over Thayer, Jairazbhoy, and Anderson is affirmed.
The rejection of claims 23 and 24 under 35 U.S.C. § 103(a) as
unpatentable over East, Jairazbhoy, and Boissele is affirmed.
The rejection of claims 23 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Thayer, Jairazbhoy, and Boissele is affirmed.
The rejection of claim 35 under 35 U.S.C. § 103(a) as unpatentable
over East, Jairazbhoy, and Yamamoto is affirmed.
The rejection of claim 35 under 35 U.S.C. § 103(a) as unpatentable
over Thayer, Jairazbhoy, and Yamamoto is affirmed.

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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2009).

AFFIRMED

WALL & TONG, LLP
IBM CORPORATION
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Eatontown NJ 07724