Ex Parte Moore et al

Board of Patent Appeals and Interferences

Mar 30, 2010

10867526 (B.P.A.I. Mar. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EARL W. MOORE and MARK S. TRACY
____________

Appeal 2009-014222
Application 10/867,526
Technology Center 2800
____________

Decided: March 30, 2010
____________

Before MAHSHID D. SAADAT, THOMAS S. HAHN,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-014222
Application 10/867,526

2
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-28. See App. Br. 4. We have jurisdiction under 35
U.S.C. § 6(b) (2002). We affirm.

STATEMENT OF THE CASE
Appellants invented a thermal management system for a portable
computing device having ventilation formed in the housing, a thermal
module adapted to dissipate the thermal energy generated by the portable
computing device, and a sealing element engaging the housing of the
thermal module and portable computing device.1

Claim 1, which further illustrates the invention, follows:

1. A thermal management system for a portable computing device,
comprising:
at least one vent formed in a housing of the portable computing device; a
thermal module adapted to dissipate thermal energy from within an interior
area of the housing via the at least one vent, the thermal module comprising
a heat exchanger disposed within a housing of the thermal module, the heat
exchanger comprising a plurality of fins; and
a sealing member engaged by facing surfaces of the housing of the thermal
module and the housing of the portable computing device to prevent
moisture from migrating from the at least one vent to the interior area of the
housing of the portable computing device, the sealing member disposed
about a periphery of the at least one vent.

1 See generally App. Br. 6-7.
Appeal 2009-014222
Application 10/867,526

3

The Prior Art and the Rejections
O’Connor US 5,966,286 Oct. 12, 1999
Laughlin US 6,013,179 Jan. 11, 2000
Nakamura US 6,353,536 B1 Mar. 5, 2002

Claims 1, 2, 4-8 and 10-27stand rejected under 35 U.S.C. § 103(a)
over O’Connor and Nakamura (Ans. 3-9).
Claims 3 and 28 stand rejected under 35 U.S.C. § 103(a), as being
unpatentable over O’Connor, Nakamura and Laughlin (Ans. 10).
Claim 9 stand rejected under 35 U.S.C. § 103(a), as being
unpatentable over O’Connor, Nakamura and Watanabe (Ans. 10).

Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Appeal Brief (filed March 23, 2009), the Reply Brief (filed July
13, 2009), and the Answer (mailed May 12, 2009) for their respective
details. In this decision, we have considered only those arguments actually
made by Appellants. Arguments which Appellants could have made but did
not make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).

PRINCIPLES OF LAW

Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
Appeal 2009-014222
Application 10/867,526

4
subject matter pertains.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and discussed circumstances in which a patent might be determined to
be obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416. The
Court noted that “[c]ommon sense teaches … that familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle.” Id. at 420. “A person of ordinary skill is also a
person of ordinary creativity, not an automaton.” Id. at 421.

FINDINGS OF FACT
Nakamura
1. Figure 10 of Nakamura is reproduced below:
Appeal 2009-014222
Application 10/867,526

5

Figure 10 discloses an embodiment of Nakamura wherein the tip of the seal
member 80 elastically contacts the bottom wall 5a of the portable computer
housing without clearance so that the gap 38 is separated from an exhaust
passage 61 (not shown) with airtightness (Nakamura; col. 16, ll. 40-49).

2. Nakamura discloses that the seal member 80 is formed of a rubber-like
elastic body which can be deformed elastically (col. 16, ll. 37-39).

O’Connor
3. Figure 7 of O’Connor is reproduced below:

Appeal 2009-014222
Application 10/867,526

6
Figure 7 discloses a computer system enclosure 140 having a heat exchanger
130 and heat pipe 132 (O’Connor; col. 5, ll. 20-31).

4. O’Connor discloses that many changes and modification can be made to
the cooling system without departing from the spirit and scope of the
invention for example; the size and shape of the heat exchanger 130, air
duct, fins, intake and exhaust ports may be altered (col. 6, ll. 12-18).

Specification
5. Appellants’ Specification discloses:

For example, in the embodiment illustrated in FIGURE 3,
sealing member 80 comprises a flexible gasket or O-ring-type
member 82 disposed about a periphery of thermal module 30 to
prevent moisture from migrating beyond thermal module 30.
Sealing member 80 may be formed as an integral component of
thermal module 30, for example, as illustrated in FIGURE 3.
However, it should be understood that sealing member 80 may
also comprise a discrete or separate element of system 12. In
some embodiments, sealing member 80 comprises a flexible
rubber-type material to form a moisture-proof seal between
intake vent 50 and/or exhaust vent 40 and interior area 32 of
housing 24. However, it should be understood that sealing
member 80 may also be constructed from other materials.

Specification ¶ [0013].

Appellants argue that Nakamura’s seal member 80 appears to direct a
flow of heated air through the exhaust passageway 61 away from the
computer device 1 and the extension device 2 but fails to prevent moisture
from migrating to the interior area of the housing of the computer device 1
(App. Br. 18, Reply Br. 3; see also FF 1). Appellants further argue that
Nakamura’s seal member 80 never engages a thermal module. Id.
Appeal 2009-014222
Application 10/867,526

7
Appellants conclude that the combination of O’Connor and Nakamura does
not render the claimed invention obvious because the combination only
teaches a heat exchanger (thermal module) 130 that removes heat from a
portable computer and fails to disclose the employment of a sealing member
that prevents moisture from migrating to the interior of the computer device
(App. Br. 18).
The Examiner contends that Nakamura was relied on to teach that
using a sealing member between two devices was conventional in the art
which, in combination with O’Connor’s thermal module 130, renders the
claimed invention obvious. See Ans. 11-12; FF 1, 3.

ISSUE
Therefore, the issue before us is:
Does the combination of O’Connor and Nakamura disclose a portable
computing device having a thermal dissipation management system
consisting of a thermal module sealed against moisture?

ANALYSIS
Claims 1, 2, 4-8 and 10-27
Nakamura’s sealing member 80 is made of a rubber-like elastic
material (FF 2). Appellants indicate that the claimed sealing member 80 can
also be produced from a flexible rubber-type material to form a moisture-
proof seal between the intake vent 50 and/or exhaust vent 40 and the interior
area 32 of the housing 24 (FF 5). Although Nakamura does not specify that
the disclosed sealing member 80 seals against moisture, it is composed from
the same type of material and is similarly employed as Appellants’ sealing
Appeal 2009-014222
Application 10/867,526

8
member 80 and therefore, is capable of sealing against moisture similar to
Appellants sealing member. For patentability, apparatus claims must be
distinguished from the prior art in terms of structure rather than function. In
re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). Thus, even if a prior
art device is used for a different purpose, it will nevertheless meet the claim
if it expressly or inherently contains all claimed structural features and is
capable of performing the intended function. See Id. Accord In re Simpson,
2004 WL 1375703, at *3 (Fed. Cir. 2004) (unpublished) (noting that
Schreiber affirmed the Board’s inherency decision based on capability)
(emphasis added). Modifying O’Connor’s thermal module or heat
exchanger 130 by incorporating a flexible rubber-type sealing member to
seal against moisture would be well within the purview of an artisan skilled
in the art.
Appellants argue that O’Connor does not teach or even suggest using
a sealing member (Reply Br. 3). However, O’Connor discloses that the heat
exchanger 130 (or the cooling system) can be modified without taking away
from the spirit of the invention, thus, providing impetus for incorporating
Nakamura’s sealing member 80 to prevent moisture damage. See FF 4.
Appellants further argue that because O’Connor has a passageway
that is intentionally open to allow the passage of air and because
Nakamura’s sealing member never engages a thermal module, the
combination of O’Connor and Nakamura cannot disclose providing a seal to
prevent moisture from migrating into the housing. See Reply Br. 3. We do
not find Appellants’ argument persuasive because incorporating Nakamura’s
sealing member 80 within O’Connor’s cooling system 130 is no more than a
simple arrangement of known elements with each performing the same
Appeal 2009-014222
Application 10/867,526

9
function it had been known to perform, yielding no more than what one
would expect from such an arrangement. See KSR, 550 U.S. at 417.
We do not find Appellants’ arguments to be persuasive for the reason
we stated previously and therefore we will sustain the rejection of claims 1,
2, 4-8 and 10-27 over O’Connor and Nakamura.

Claims 3 and 28
Appellants provide several reasons as to why the combination of
O’Connor and Laughlin fails to obviate the claims (App. Br. 19-21).
However, the Examiner relies upon the combination of O’Connor,
Nakamura and Laughlin to render obvious the invention recited in claims 3
and 28 (Ans. 10). Appellants arguments do not address the combination of
the references relied upon by the Examiner. See App. Br. 19-21.
Both claims 3 and 28 recite wherein the sealing member comprises an
integral component of the thermal module. Claims 3 and 28 are obvious
over the combination of O’Connor and Nakamura because once O’Connor’s
cooling system or heat exchanger 130 is modified with the sealing member
80 of Nakamura, the sealing member becomes integral with the cooling
system or heat exchanger in the same manner as Appellants’ invention. See
FF 5. The Examiner’s reliance upon Laughlin to address the integral
limitation of the claims does not distract from the claimed invention being
obvious over combination of O’Connor, Nakamura and Laughlin. Laughlin
merely reinforces that gaskets or sealing members can be considered integral
with other components in the same manner as Appellants’ invention. See
Ans. 10; see also FF 5.
Appeal 2009-014222
Application 10/867,526

10
We do not find Appellants’ arguments to be persuasive for the reasons
we stated previously and therefore we will sustain the rejection of claims 3
and 28 over O’Connor, Nakamura and Laughlin.
Claim 9
Appellants argue that claim 9 is allowable over the combination of
O’Connor, Nakamura and Watanabe because Watanabe fails to cure the
deficiencies O’Connor and Nakamura (App. Br. 21). Appellants further
argue that claim 9 is allowable for the same reasons given with respect to
claim 1. Id.
We do not find the Appellants’ argument to be persuasive for the
reasons we stated previously and therefore we will sustain the rejection of
claim 9 over O’Connor, Nakamura and Watanabe.

CONCLUSION
The combination O’Connor and Nakamura disclose a portable
computing device having a thermal dissipation management system
consisting of a thermal module sealed against moisture.

ORDER
We affirm the Examiner’s decision rejecting claims 1-28.
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

Appeal 2009-014222
Application 10/867,526

11

ke

HEWLETT-PACKARD COMPANY
Intellectual Property Administration
3404 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528