Ex Parte Nilsson et al

Patent Trial and Appeal Board

Aug 11, 2014

11550915 (P.T.A.B. Aug. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte KRISTER NILSSON,
MARIA HUGOSSON, ANDREAS RYDEN, TORBJORN KARLELID,
FLORIN VANTU, and TARO TAKAMOTO1
__________

Appeal 2011-006371
Application 11/550,915
Technology Center 3700
__________

Before JOSIAH C. COCKS, MICHAEL R. ZECHER, and
TRENTON A. WARD, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Sony Ericsson Mobile Communications AB.
Appeal 2011-006371
Application 11/550,915

2
I. STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1, 3–6, 8, 10, 11, 13–15, 17, and 22.2 Claims 2, 7, 9, 12, 16, and
18–21 were cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. References Relied on by the Examiner
Shum US 4,182,412 Jan. 8, 1980
Sanborn et al. (“Sanborn) US 4,359,086 Nov. 16, 1982
Menet FR 2722276 A1 Jan. 12, 1996

B. The Rejections on Appeal
The Examiner rejected claims 1, 3–6, and 8 under 35 U.S.C. § 103(a)
as unpatentable over Shum and Sanborn. Ans. 4–5.
The Examiner rejected claims 10, 11, 13–15, 17, and 22 under
35 U.S.C. § 103(a) as unpatentable over Menet, Shum, and Sanborn. Id. at
6–8.

C. The Invention
The invention relates to heat dissipating surfaces of electronic devices,
which help dissipate heat into the ambient atmosphere. Spec. ¶¶ 1, 3. The

2 In this opinion, we make reference to: the Appeal Brief filed July 27, 2010
(“App. Br.”); the Examiner’s Answer mailed November 9, 2010 (“Ans.”);
and the Reply Brief mailed January 10, 2011 (“Reply Br.”).
Appeal 2011-006371
Application 11/550,915

3
heat dissipating surface has an “uneven profile to aid in the dissipation of
heat.” Id. at Abstract.
Figure 2 is reproduced below and illustrates an embodiment of a heat
dissipating surface according to the invention.

As shown in Figure 2 above, “dual function surface 115” is formed
from “thermally conductive layer 210” and has a “wave-like profile that
includes peak portions 216 that are higher than valley portions 217.” Id. at ¶
35. The peak portions may include “non-thermal conductive areas 215.” Id.
at ¶ 36. The peak and valley portions are separated by a distance “D,” which
“may range from approximately 0.2-0.5 millimeters to a few millimeters or
greater (e.g., 3 millimeters or more).” Id. at ¶ 37.
Appeal 2011-006371
Application 11/550,915

4
Claim 1 is representative and is reproduced below:
1. A device including an outer surface, the outer surface
comprising:

a thermally conductive layer that includes an uneven
surface and at least one other surface that is thermally coupled
to a heat source, the uneven surface including a plurality of first
areas that are higher than other areas of the uneven surface,
where the first areas of the uneven surface are separated from
lower areas of the uneven surface by a distance of
approximately 3 millimeters; and

a plurality of second layer areas located only on the first
areas of the uneven surface, where the plurality of second layers
are non-thermally conductive.

App. Br. 25.

II. ISSUES
1. Did the Examiner correctly determine that one of ordinary skill
in the art would have appreciated that a distance of “approximately 3
millimeters” between upper and lower areas of an uneven surface of a heat
transfer device may be selected based on the teachings of the prior art?
2. Did the Examiner correctly determine that the claim features of
“acts like a heat sink” (claim 5) and “enables the plurality of second layer
areas to be gripped by a user” (claims 8 and 17) do not distinguish
patentably the claims over the prior art of record?

III. ANALYSIS
The Examiner rejected claims 1, 3–6, and 8 under 35 U.S.C. § 103(a)
as unpatentable over Shum and Sanborn, and claims 10, 11, 13–15, 17, and
Appeal 2011-006371
Application 11/550,915

5
22 under 35 U.S.C. § 103(a) as unpatentable over Menet, Shum, and
Sanborn.
A. Shum and Sanborn
In conjunction with the obviousness rejection based on Shum and
Sanborn, the Appellants argue the claims in three groupings: (1) claims 1, 3,
4, and 6; (2) claim 5; and (3) claim 8.
1. Claims 1, 3, 4, and 6
Claim 1 is independent. Claims 3, 4, and 6 ultimately depend from
claim 1. Claims 3, 4, and 6 are argued collectively with claim 1. As noted
above, claim 1 is drawn to a device including an outer layer with a first
thermally conductive layer coupled to a heat source, and a plurality of
second non-thermally conductive layer areas located on the first thermally
conductive layer. The thermally conductive layer also includes an uneven
surface establishing a plurality of first areas that are “higher” than other
areas (i.e., lower areas). App. Br. 25. Claim 1 further requires that the
higher areas are separated from the lower areas by a distance of
“approximately 3 millimeters.” Id.
Shum is directed to a heat transfer surface for a finned tube. Shum
1:7-9. Shum’s Figures 1 and 2, reproduced below, illustrate cross-sectional
views of a heat transfer surface:
Appeal 2011-006371
Application 11/550,915

6
The Examiner found that, with respect to claim 1, and as depicted in
Figures 1 and 2 above, Shum discloses:
a device (i.e. the tubular member) having an outer surface
comprising a thermally conductive layer (12) having an uneven
surface and is coupled to a heat source (i.e. the tube), the
uneven surface having first areas which are higher than the
other layers if the surface and a plurality of second layers (20)
on the first areas of the uneven surface which are non thermally
conductive (i.e. insulate).

Ans. 4. The Examiner found, however, that Shum does not disclose a
distance of approximately 3 mm separating the higher areas of the uneven
surface from the lower layers. Id. To make up for that deficiency, the
Examiner relied upon a combination of Shum with Sanborn. Id.
Sanborn discloses a heat exchange surface that, like Shum, includes a
plurality of generally parallel fins, and characterizes the fins as having “root
to fin” distances that may be of varying values. Sanborn, 2:45-47; 4:55-68.
Based on the disclosure in Sanborn as to the root to fin distances, i.e.,
distances between the lower and higher areas, the Examiner calculated that
the reference sets an expressly contemplated range of that distance between
“0.2032” and “0.3048” millimeters. Id.
Appeal 2011-006371
Application 11/550,915

7
Taking the above-noted distance disclosure in Sanborn, and when
accounting for the 3 millimeter required by the claims, the Examiner
reasoned the following:
[I]t would have been obvious to one of ordinary skill in the art,
at the time the invention was made, to modify the teachings of
Shum with the distance of Sanborn et al. because this would
produce an economical heat transfer device. . . . Therefore,
since the general conditions of the claim, i.e. that the distance is
0.3048 mm, were disclosed in the prior art by Sanborn et al., it
is not inventive to discover the optimum workable range by
routine experimentation, and it would have been obvious to one
of ordinary skill in the art at the time of the invention to vary
the distance so as to maximize the overall heat transfer
characteristics of the device.

Ans. 4-5. Thus, the Examiner determined that the distance of a heat transfer
fin’s root to its tip is a variable that influences heat transfer characteristics of
an associated surface, and that the discovery and selection of a particular
optimum value would have been accomplished by a skilled artisan as a
matter of routine. See id.
As to claim 1, the Appellants generally challenge the accuracy of the
particular values for the range of distances calculated by the Examiner,
based on Sanborn’s teachings. In that regard, the Appellants place the
calculated range at “0.1524 mm to 0.2032 mm.” App. Br. 11. Irrespective of
which range is correct, there is no dispute that Sanborn contemplates varying
the overall size of the fins that form part of a heat transfer device.
Furthermore, we are satisfied that the Examiner was correct when
concluding that it is understood in the art that the heat transfer characteristics
of a heat transfer device are impacted based on the size of the fins. The
Examiner found that “the recognized result is that depending on the distance
Appeal 2011-006371
Application 11/550,915

8
the profile of the device as well as the heat transfer capabilities would be
altered.” Ans. 5. Although the Appellants “respectfully disagree[d]” with
that finding, they presented no further argument explaining the basis of the
disagreement. App. Br. 12. Indeed, Sanborn conveys that its device has “fin
cavities” (i.e. spaces between adjacent fins) and that the size of those
cavities affects the efficiency of heat transfer. Sanborn, 3:2-3; Fig. 1. In
that regard, Sanborn expresses that, dependent on the particular heat transfer
medium employed, “smaller cavities” may be less effective than cavities of
“larger dimension,” and that increasing their size may be required to
improve the performance of the device. Sanborn, 1:35-53.
“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Optimizing a
result-effective variable may be patentable “if the claimed ranges are
‘critical’ and ‘produce a new and unexpected result which is different in
kind and not merely in degree from the results of the prior art.’” Id. (quoting
In re Aller, 220 F.2d 454, 456 (CCPA 1955)). The Examiner found that the
“Appellant has failed to demonstrate any criticality regarding the distance
between the root and fin tip.” Ans. 9. The Appellants did not challenge that
finding. The Appellants also have not offered sufficient argument or
evidence of any new or unexpected results arising from a particular fin
height. In Applied Materials, “there was no indication that obtaining the
claimed dimensions was beyond the capabilities of one of ordinary skill in
the art or produced any unexpectedly beneficial properties.” Id. That is also
the case here. In light of the guidance provided by the prior art, we are
persuaded that a skilled artisan would have realized that fin size may be
Appeal 2011-006371
Application 11/550,915

9
varied in connection with heat transfer devices and, therefore, would have
adequate reason to determine optimum values in that regard for a given heat
transfer surface as a matter of routine experimentation.
We note the Appellants’ argument that Sanborn “teaches away” from
the “approximately 3 millimeters” feature of the claims. App. Br. 13. More
particularly, the Appellants argue that Sanborn “discloses that a distance of
0.1524 millimeters from root to fin tip produces an economical heat transfer
tube, ‘since they allow for a minimum amount of copper to be used
therein.’” Id. (quoting Sanborn, col. 4, ll. 62–66). Appellants further argue
that “changing the root to fin tip distance to approximately 3 millimeters
would change this benefit disclosed.” Id.
We are not persuaded by the Appellants’ arguments. Simply choosing
one of multiple alternatives, however, does not teach away necessarily from
other alternatives. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). To
teach away, the prior art must “criticize, discredit, or otherwise discourage
the solution claimed.” Id; see also In re Peterson, 315 F.3d 1325, 1332
(Fed. Cir. 2003) (a reference must “disparage or otherwise discourage the
use of” to teach away). As previously stated, we find that the distance
between the first and lower areas of the uneven surface is a result effective
variable. Choosing one particular distance, or one range of distances, does
not teach away from others. Although Sanborn may associate a certain
economical benefit with certain dimensions for a given heat transfer device
employing copper material, we are not persuaded that the reference
criticizes, discredits, or otherwise discourages the selection of a distance
from root to fin tip being larger than that expressly disclosed.
Appeal 2011-006371
Application 11/550,915

10
We have considered the record before us, but for the foregoing
reasons, we are not persuaded of error in the Examiner’s obviousness
rejection of claims 1, 3, 4, and 6 based on Shum and Sanborn. We sustain
the rejection.
2. Claims 5 and 8
Claims 5 and 8 depend from claim 1. The claims are reproduced
below:
5. The device of claim 1, where the thermally conductive layer
acts as a heat sink for the device.

***
8. The device of claim 1, where the plurality of second layer
areas are formed of a material that enables the plurality of
second layer areas to be gripped by a user.

There is disagreement between the Examiner and the Appellants as to
whether the two phrases included in claims 5 and 8 are intended use or
functional language. The Appellants argue that the “acts like a heat sink”
phrase of claim 5 is functional language rather than a statement of intended
use as asserted by the Examiner. App. Br. 14. The Appellants also argue
that the “enables the plurality of second layer areas to be gripped by a user”
phrase of claim 8 is functional language rather than a statement of intended
use. Id. at 15.
We are not persuaded by the Appellants’ arguments. A functional
limitation is satisfied when the prior art is capable of performing the claimed
function. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re
Swinehart, 439 F.2d 210, 212–13 (CCPA 1971). Even if the phrases of
“acts like a heat sink” and “enables the plurality of second layer areas to be
Appeal 2011-006371
Application 11/550,915

11
gripped by a user” are functional, we do not discern that the prior art is
somehow incapable of performing those functions, and the Appellants have
not argued otherwise. Therefore, we decline to assess whether the phrases
are intended uses or functional language because it would not affect
materially the outcome of this decision.
We sustain the rejection of claims 5 and 8 for the same reasons as
articulated with respect to claims 1, 3, 4, and 6.
B. Menet, Shum, and Sanborn
With respect to the obviousness rejection based on Shum, Sanborn,
and Menet, Appellants argue the claims in two claims groupings: (1) claims
10, 11, 13–15; and (2) claim 17.
1. Claims 10, 11, 13–15 and 22
Claim 10 is independent. Claims 11, 13–15, and 22 ultimately depend
from claim 10. The dependent claims are argued collectively with claim 10.
Claim 10 is similar to claim 1 and specifies that the involved device is
an “electronic device.” The Examiner relied on Menet as disclosing such an
electronic device and stated as follows:
Regarding claim 10, Menet disclose all the claimed
limitations including the heat source (1) and a thermally
conductive layer which has an uneven surface. Menet does not
disclose a plurality of second layers located only on the raised
areas of the uneven surface or the first areas of the uneven
surface separate from the lower areas by a distance of
approximately 3 mm.

Ans. 6. The Examiner further found that it would have been obvious “to
modify the teachings of Menet with the Second layers of Shum so as to dull
the sharp edges of the thermally conductive layer at the raised areas so as to
reduce the risk of injuring the finger as it touches the device.” Id. The
Appeal 2011-006371
Application 11/550,915

12
Examiner relied on Sanborn to satisfy the “approximately 3 millimeters”
limitation. Id. at 6-7.
Appellants rely upon essentially the same arguments with respect to
claims 1, 3, 4 and 6 to rebut the Examiner’s obviousness rejection of claims
10, 11, 13–15, and 22. App. Br. 16–19. For the same reasons discussed
above regarding claims 1, 3, 4, and 6, we are not persuaded of error in the
rejection of claims 10, 11, 13–15 and 22 based on Menet, Shum, and
Sanborn.
2. Claim 17
Claim 17 depends from claim 10 and adds “where the plurality of
second layer areas are formed of a material that enables the plurality of
second layer areas to be gripped by a user.” App. Br. 27. Appellants argue
that the “enables the plurality of second layer areas to be gripped by a user”
phrase of claim 17 is functional language rather than a statement of intended
use, as asserted by the Examiner. App. Br. 19. This phrase is identical to
the one in claim 8 that we addressed above, and no new argument has been
raised. We are not persuaded of error in the rejection of claim 17 for the
same reasons stated above in connection with claim 8.

IV. CONCLUSION
1. The Examiner correctly determined that one of ordinary skill in
the art would have appreciated that a distance of “approximately 3
millimeters” between upper and lower areas of an uneven surface of a heat
transfer device may be selected based on the teachings of the prior art.
2. The Examiner correctly determined that the claim features of
“acts like a heat sink” (claim 5) and “enables the plurality of second layer
Appeal 2011-006371
Application 11/550,915

13
areas to be gripped by a user” (claims 8 and 17) do not distinguish the claims
patentably over the prior art of record.

V. ORDER
We affirm the Examiner’s decision to reject claims 1, 3–6, 8, 10, 11,
13–15, 17, and 22 under 35 U.S.C. § 103(a).

AFFIRMED

peb