Ex Parte McCullough

Board of Patent Appeals and Interferences

Sep 25, 2007

10288027 (B.P.A.I. Sep. 25, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte KEVIN A. MCCULLOUGH
______________

Appeal 2007-3874
Application 10/288,027
Technology Center 1700
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Decided: September 25, 2007
_______________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 7 and 8 in the Office Action mailed
October 19, 2004. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a)
(2006).
We reverse the decision of the Primary Examiner.

Appeal 2007-3874
Application 10/288,027
Claim 7 illustrates Appellant’s invention of a net-shaped molded heat
sink, and is representative of the claims on appeal:1
7. A net-shaped molded heat sink for dissipating heat away from a
heat generating object with a contact surface, said heat sink comprising:
a core plate of carbon-carbon matrix material having an outer surface;
a thermally conductive main body having a top surface and a bottom
interface surface and being molded of a thermoplastic polymer composition
having a base polymer matrix and a thermally conductive filler material
uniformly distributed throughout said base polymer matrix; the thermally
conductive main body being positioned about the core plate of carbon-
carbon matrix material thereby completely surrounding the outer surface of
core plate [sic], a portion of the thermally conductive main body being an
interface layer including the bottom interface surface, wherein the bottom
interface surface of the interface layer is in thermal communication with the
contact surface fo [sic] the heat generating object; and
a plurality of thermally conductive fins integrally connected to and
emanating from said top surface and being made of a polymer composition
molded with thermally conductive filler material interdispersed therein.
The Examiner relies upon the evidence in these references:
Ruechardt US 3,564,109 Feb. 16, 1971
Ross US 5,572,070 Nov. 5, 1996
Unger US 5,834,337 Nov. 10, 1998
Mahulikar US 5,939,214 Aug. 17, 1999
Appellant requests review of the grounds of rejection of claims 7 and
8 advanced on appeal (Br. 3-4): under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement (Answer 3); and
under 35 U.S.C. § 103(a) as unpatentable over Mahulikar in view of Unger,
further in view of Ruechardt and Ross (id.).

1 We reproduce claim 7 as it stands of record as of the Amendment filed
July 26, 2004, in view of the errors in the claim as presented in the Claim
Appendix to the Brief. Br. 12.
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Appeal 2007-3874
Application 10/288,027
The issues in this appeal are whether the Examiner has carried the
burden of establishing a prima facie case in each of the grounds of rejection
advanced on appeal.
The plain language of claim 7 specifies a net-shaped molded heat
sink, the heat sink comprising at least a thermally conductive main body
molded of a thermoplastic polymer composition having a base polymer
matrix with uniformly distributed thermally conductive material; having
integrally connected to and emanating from its top surface a plurality of
thermally conductive fins molded of the same kind of thermoplastic
composition; having a bottom interface surface being an interface layer for
thermal communication with the contact surface of a heat generating object;
and completely surrounding the outer surface of a core layer plate of carbon-
carbon matrix material. The transitional term “comprising” opens claim 7 to
include net-shaped molded heat sinks which contain additional structural
elements and materials. See, e.g., Exxon Chem. Pats., Inc. v. Lubrizol Corp.,
64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir. 1995); In re Baxter,
656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981).
On this record, we determine the preambular language “for dissipating
heat away from a said heat generating object with a contact surface” and the
recitation in the body of claim 7 that the article has “a portion of the
thermally conductive main body being an interface layer including the
bottom interface surface, wherein the bottom interface surface of the
interface layer is in thermal communication with the contact surface fo [sic]
the heat generating object,” requires only that the claimed article must be
capable of interfacing with a contact surface of any heat generating structure,
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Application 10/288,027
and does not otherwise specify any additional structure. See, e.g., Corning
Glass Works v. Sumitomo Elect. U.S.A., Inc., 868 F.2d 1251, 1257, 9
USPQ2d 1962, 1966 (Fed. Cir. 1989); In re Stencel, 828 F.2d 751, 754-55, 4
USPQ2d 1071, 1073 (Fed. Cir. 1987).
With respect to the ground of rejection under § 112, first paragraph,
written description requirement, the Examiner contends the claim language
“thermally conductive filler material uniformly distributed throughout said
base polymer matrix” is without basis in the Specification which “does not
explicitly disclose this language” and “without an explicit disclosure . . . one
of ordinary skill in the art would have no guidance of the type of filler
material distribution, since different types of distributions achieve different
desired heat transfer characteristics.” (Answer 3 and 6.) Appellant contends
“[i]t is well known and accepted within the relevant art that a filled polymer
is a polymer that includes a filler material that is well dispersed throughout
the matrix of the polymer material.” (Br. 4.)
We agree with Appellant. The determination of the optimum
distribution of thermally conductive filler in a resin used to mold a heat sink
is within the ordinary skill in this art and need not be specifically set forth in
the Specification. See, e.g., In re Howarth, 654 F.2d 103, 105, 210 USPQ
689, 691 (CCPA 1981) (“An inventor need not . . . explain every detail [of
the invention] since he is speaking to those skilled in the art. What is
conventional knowledge will be read into the disclosure.”). Thus, the
Examiner has not shown that the claims encompass an embodiment outside
of the scope of the written description in the Specification and, therefore, has
not established a prima facie case of non-compliance with this statutory
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Application 10/288,027
provision. See, e.g., In re Alton, 76 F.3d 1168, 1175-76, 37 USPQ2d 1578,
1583 (Fed. Cir. 1996).
In the absence of a prima facie case, we reverse the rejection of claims
7 and 8 under 35 U.S.C. § 112, first paragraph, written description
requirement.
Turning now to the ground of rejection under § 103(a), we find
Mahulikar would have disclosed to one of ordinary skill in this art the
embodiment illustrated in Fig. 5 thereof showing package 78 comprises
plastic housing 62 that, in addition to microelectronic device 22 on bonding
pad 66 and leadframe 18, has molded into its bottom surface heat spreader
76 that consists of metal layers 80,82,84, wherein leadframe 18 can be a
composite which is thermally conductive. Mahulikar col. 8, ll. 58-67.
Mahulikar discloses heat spreader 76 can be completely encapsulated within
plastic housing 62. Id. col. 9, ll. 1-7.
We find Unger would have disclosed to one of ordinary skill in this
art the embodiment illustrated in Fig. 5 thereof showing heat transfer plate
element 6 is mounted on heat sink 4, which has conductive fin structures
integrally connected to and emanating from a surface, wherein both element
6 and heat sink element 4 can be “a single, one-unit piece” manufactured
using the disclosed thermally conductive resin/fiber compound carbon-
carbon matrix composite material. Unger, e.g., col. 2, ll. 9-44; col. 3,
ll. 19-26 and 49-64; and col. 4, ll. 20-24. Unger discloses that after forming
the combination of elements 4 and 6, IC device 8 is positioned on top of
element 6. Id. col. 3, ll. 21-26.
A discussion of Ruechardt and Ross is not necessary to our decision.
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Application 10/288,027
The Examiner concludes it would have been obvious to one of
ordinary skill in this art to, among other things, “employ in [Mahulikar] a
core plate composed of carbon-carbon matrix for the purpose of improving
heat exchange as recognized by Unger.” Answer 5. In response to
Appellant’s contentions, the Examiner contends, among other things, “[t]he
claims recite a subcombination, namely a heat sink not in combination with
a heat generating object.” Id. 6. In this respect, the Examiner contends
“[a]rguendo, [Mahulikar] (Figure 5 . . .) discloses a heat sink having an
interface surface . . . [in the area below the bottom of bonding pad 66] in
contact with heat generating object 22.” Id. The Examiner further contends
Mahulikar “discloses a core plate/heat spreader 76 separate from the
semiconductor 22 and is completely surrounded by the plastic main body.”
Id. 7, citing Mahulikar col. 9, ll. 1-4. The Examiner determines “the device
of [Mahulikar] is structurally similar to the claimed invention” because
“[t]he open-ended claims do not preclude the Examiner’s reading of
[Mahulikar] on the present invention.” Id. 7. The Examiner contends Unger
is relied on only for the disclosure “heat spreader plate 6 is composed of a
carbon-carbon matrix.” Id. 8.
Appellant contends, as claimed, the “invention is a unitary heat sink
that is it self [sic] a free standing structure, which is then applied as an
accessory to any heat generating object,” and “does not include an integrated
circuit assembly that is formed within the heat structure itself.” Br. 5; see
also 6. Appellant contends Mahulikar “discusses the placement of a metallic
spreader plate relative to a plastic package that also contains an IC device.”
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Application 10/288,027
Id. 6. Appellant contends Unger would not have disclosed surrounding core
plate 6 so as to separate the core plate from IC chip 8. Id. 8.
The threshold issues with respect to this ground of rejection are the
construction to be given claim 7 with respect to whether an IC chip can be
incorporated in the claimed heat sink because of the transitional term
“comprising,” and whether the combined teachings of Mahulikar and Unger
would have suggested surrounding a carbon-carbon matrix material core
plate with a thermally conductive polymer composition to form a heat sink
having a thermally conductive surface which can interface with the contact
surface of a heat generating object. Considering first the positions of the
parties with respect to the interpretation of claim 7, based on the language of
the claim and the interpretation in light of the Specification as it would be
interpreted by one of ordinary skill in this art, we agree with Appellant that
the “net-shaped molded heat sink” as claimed is a standalone article that is
not connected to a heat generating object with which it must have the
capability to be employed. It is within this context that the open-ended term
“comprising” must be interpreted. We are of the opinion that on this record,
a heat sink dissipates heat from an object and thus, would not include within
its confines, a heat generating device such as an IC chip. Accordingly, the
term “comprising” does not open the claims to encompass a molded article
having an IC chip and a part that dissipates heat molded together therein.
See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364,
70 USPQ2d 1827, 1830 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372,
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Application 10/288,027
54 USPQ2d 1664, 1666-67 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048,
1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319,
321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Thus, with respect to the second issue, even if one of ordinary skill in
the art would have substituted Unger’s carbon-carbon matrix material 4, 6
for Mahulikar’s heat spreader 76 as encapsulated within plastic housing 62
as disclosed by the latter with respect to Fig. 5, the result is not an
embodiment that falls within the claims. Indeed, we cannot agree with the
Examiner that one of ordinary skill in the art would have found in Mahulikar
any teachings of inference2 suggesting that the part of plastic housing 62
below bonding plate 66 constitutes a separate heat sink. Furthermore, as
Appellant points out, there is no disclosure in Unger which would have
suggested encapsulating the single one-piece unit of heat sink 4 and heat
transfer plate 6, which has conductive fin structures, in a thermally
conductive filler containing thermoplastic material. Thus, the combined
teachings of Mahulikar and Unger would not result in the basic structure of
the claimed heat sink encompassed by the claims.
Accordingly, on this record, the Examiner has not established a prima
facie case of obviousness, and therefore, we reverse the ground of rejection
under 35 U.S.C. § 103(a).

2 It is well settled that a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in this art would have
reasonably been expected to draw therefrom, see In re Fritch, 972 F.2d
1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir. 1992); In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774
(Fed. Cir. 1985).
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Appeal 2007-3874
Application 10/288,027
The Primary Examiner’s decision is reversed.
REVERSED

clj

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