Ex Parte Ofoma et al

Patent Trial and Appeal Board

Apr 19, 2017

13220329 (P.T.A.B. Apr. 19, 2017)

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.
13/220,329 08/29/2011 Uchenna Ofoma 14025-021 1571
80711 7590 04/19/2017
ROT /Ann Arhnr
EXAMINER
524 South Main Street CRUM, JACOB R
Suite 200
Ann Arbor, MI 48104 ART UNIT PAPER NUMBER
2835
MAIL DATE DELIVERY MODE
04/19/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte UCHENNA OFOMA and BART DEAN HIBBS1
Appeal 2016-000788
Application 13/220,329
Technology Center 2800
Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—3, 5—16, 28, and 29. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
BACKGROUND
The subject matter on appeal relates to systems for managing heat to
improve cooling of electronics within equipment bays for aircraft. E.g.,
1 According to the Appellants, the real party in interest is Aerovironment,
Inc. App. Br. 2.
Appeal 2016-000788
Application 13/220,329
Spec. 11; Claim 1. Claim 1 is reproduced below from page 18 (Claims
Appendix) of the Appeal Brief:
1. A system for managing heat transfer comprising:
a cavity having an inner wall portion;
at least one heat-generating component disposed within the
cavity; and
a plurality of heat conducting members disposed adjacent one
another, each heat conducting member comprising:
a resilient core; and
an outer shell wrapped around at least a portion of the
resilient core, the outer shell comprising a material having a
relatively high thermal conductivity,
wherein the plurality of heat conducting members are
positioned between the heat-generating component and the
inner wall portion of the cavity and the outer shells of the heat
conducting members are in physical contact with each other in
order to provide improved heat transfer characteristics of the
heat conducting members to transfer heat away from the heat­
generating component.
REJECTIONS ON APPEAL
1. Claims 1, 6, and 9-12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Barker et al. (US 5,175,613, issued Dec. 29, 1992) in view
of Dietrich et al. (US 7,470,866 B2, issued Dec. 30, 2008) and Yu et al. (US
7,492,599 Bl, issued Feb. 17, 2009).
2. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Barker in view of Dietrich and Yu, further in view of
Corti et al. (US 2005/0017350 Al, published Jan. 27, 2005).
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3. Claims 5 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Barker in view of Dietrich and Yu, further in view of
Samo et al. (US 2002/0172010 Al, published Nov. 21, 2002).
4. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Barker in view of Dietrich and Yu, further in view of Kim
(US 6,653,556 B2, issued Nov. 25, 2003).
5. Claims 13—16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Barker in view of Dietrich, Yu, Corti, and Samo.
6. Claim 28 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Samo in view of Fehlmann (US 4,139,670, issued Feb. 13, 1979).
7. Claim 29 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Samo in view of Fehlmann and Fust (US 2001/0002528 Al, published
June 7, 2001).
ANALYSIS
The Appellants present several arguments in opposition to the
Examiner’s rejections. We address those arguments below. All arguments
not raised in the Appeal Brief are deemed to be waived absent a showing of
good cause. See 37 C.F.R. § 41.41(b)(2); cf. In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (explaining that, even if the examiner had failed to
make a prima facie case, the Board would not have erred in framing the
issue as one of reversible error because “it has long been the Board’s
practice to require an applicant to identify the alleged error in the examiner’s
rejections”). For reasons set forth below, we determine that the Appellants
have not identified reversible error in Rejections 1—5. Accordingly, we
affirm those rejections for reasons set forth below, in the Final Action, and
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in the Examiner’s Answer. See generally Final Act. 2—22; Ans. 3—14.
However, as discussed below, we reverse as to Rejections 6 and 7.
Rejection 1
The Appellants present arguments concerning limitations that appear
in claim 1. Claims 6 and 9—12 will stand or fall with claim 1.
The Examiner finds that Barker teaches each element of claim 1,
including a heat conducting member, but that Barker does not disclose
(1) that the heat conducting member comprises a resilient core, (2) an outer
shell wrapped around at least a portion of the resilient core, or (3) a plurality
of heat conducting members that are in contact with each other. Final Act.
2-3.
Concerning (1) the resilient core and (2) the outer shell, the Examiner
finds that Dietrich discloses a heat conducting member comprising a
resilient core and an outer shell wrapped around at least a portion of the
resilient core. Id. at 3. The Examiner acknowledges that Dietrich teaches
electrically conductive materials but finds that “[electrically conductive
materials generally have a relatively high thermal conductivity,” and that a
person of ordinary skill therefore would have understood Dietrich’s outer
shell to have relatively high thermal conductivity, as claimed. Id. The
Examiner concludes that it would have been obvious to substitute Barker’s
heat conducting cushions with the heat conducting members of Dietrich “in
order to provide a thermally and/or electrically conductive seal between the
heat-generating component(s) and the inner wall portion of the cavity.” Id.
Concerning (3) the plurality of heat conducting members in contact
with each other, the Examiner finds that Yu discloses two heat conducting
members wherein the outer shells are in physical contact with each other.
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Id. at 4. The Examiner finds that “[pjlacing the heat conducting members in
direct physical contact (and therefore thermal contact) with each other would
generally homogenize the distribution of heat between them.” Id. The
Examiner concludes that it would have been obvious in view of Yu to utilize
a plurality of heat conducting members that are in contact with each other
“in order to homogenize the distribution of heat between the heat conducting
members.” Id.
In view of those and other findings, the Examiner concludes that the
subject matter of claim 1 would have been obvious in view of the prior art.
Id. at 2-4.
We address the Appellants’ challenges to the Examiner’s reasoning
below. In addition, we note that the Appellants do not challenge the prior art
status of any reference relied upon by the Examiner or argue that a person of
ordinary skill in the art would not have been aware of the references relied
upon by the Examiner.
1. The Appellants argue that the Examiner’s analysis is conclusory
and fails to provide any supporting rationale for the proposed modifications
to Barker. See App. Br. 8—9, 12 (citing In re Kotzab, 55 USPQ2d 1313
(Fed. Cir. 2000)). We disagree. As set forth above, the Examiner expressly
provides a rationale for each proposed modification. See Final Act. 2—\\ cf.
Jung, 637 F.3d at 1365.
2. The Appellants argue that Barker’s heat sink, not the cushion relied
upon by the Examiner, transfers heat away from Barker’s heat-generating
component. App. Br. 10; see also Barker Fig. 2 (depicting thermally
conductive cushion 52 and heat sink 14). They conclude that, “because the
feature that transfers heat away from the chips 24 in Barker is the heat sink
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14, and the gasket assembly 110 of Dietrich [i.e., what the Examiner relies
on as Dietrich’s heat conducting member] is for electrical conduction, not
heat, Applicant submits that one skilled in the art would not be motivated to
combine the teachings of Dietrich with Barker.” App. Br. 10.
We are not persuaded by this argument. Barker’s cushions are
described as “thermally conductive compliant cushions” and “insure[] that
good thermal contact will be made between chips 24 and heat sink 14.”
Barker at 3:33—41. It is clear, contrary to the Appellants’ assertions and as
explained by the Examiner, see Ans. 5, that Barker’s cushions and heat sink
work together to transfer heat away from the chips. Cf. App. Br. 12
(conceding that Barker’s cushion 52 “is intended to function for . . . thermal
contact.”).
Concerning Dietrich’s gasket assemblies 110, the Appellants do not
acknowledge or persuasively challenge the Examiner’s determination that a
person of ordinary skill would have understood them to be suitable for
thermal conduction, notwithstanding the fact that they are also taught as
being electrically conductive. See Final Act. 3; Ans. 5—6. On this record,
we have no persuasive basis to reject that finding.
Accordingly, the Appellants’ conclusion that a person of ordinary skill
in the art would not have been motivated to combine Dietrich with Barker is
based on factual assertions that do not support the conclusion drawn by the
Appellants. In that regard, we note that, on this record, the Examiner’s
proposed modification is simply the substitution of one known heat
conducting member for another. Such substitutions typically do not result in
nonobvious subject matter. The Appellants’ arguments do not persuade us
otherwise in this case. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416—
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21 (2007) (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”); see also id. at 416 (“[W]hen a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.”); cf. Jung, 637 F.3d at 1365.
3. The Appellants argue that, “[e]ven if Barker were modified as
suggested in the Final Office action, such a modification would draw heat in
an opposite direction from that which Barker is trying to achieve . . . which
would change the operation of Barker.” App. Br. 10 (emphasis in original).
We are not persuaded by that argument because it is not supported by
evidence or persuasive technical reasoning. See In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the
place of evidence.”). If Barker’s thermally conductive cushions were
replaced by the heat conducting elements of Dietrich, it is unclear how or
why that modification would change the direction of heat flow. It appears
that the heat would continue to flow through the heat conducting element
from the heat generating component to the heat sink.
4. The Appellants argue that “Barker already employs a heat sink 14
in order to dissipate heat from its chips 24, and thus one skilled in the art
would not look to the teachings of Dietrich, or any other art of record, in
order to provide improved heat transfer characteristics.” App. Br. 11.
We are not persuaded by that argument. As noted above, the
proposed rationale is the substitution of one known heat conducting element
for another. Such substitutions typically do not result in nonobvious subject
matter. See KSR, 550 U.S. at 416—21. Moreover, the Examiner finds
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motivation to combine in Dietrich’s teaching of a “seal” and the benefit that
a conductive seal would provide to Barker. See Final Act. 3; see also Dystar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356,
1368 (Fed. Cir. 2006) (“[T]he desire to enhance commercial opportunities
by improving a product or process is universal—and even common-
sensical. . . .”). The Appellants do not meaningfully challenge, or otherwise
identify reversible error in, the Examiner’s findings in that regard. Cf. Jung,
637 F.3d at 1365.
5. The Appellants argue that “Barker includes a sealed area 38 for the
chips 24, and the Examiner has not explained how a plurality of modified
gasket assemblies 110 of Dietrich (being in physical contact with each other
as allegedly taught by Yu) would be configured within this area 38, and
moreover on top of an extremely small chip 24.” App. Br. 11.
That argument is not persuasive. “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference .... Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
The Appellants do not allege that modifying Barker’s heat conducting
cushions to include a resilient core and outer shell, as taught or suggested by
Dietrich, would have been beyond the ordinary level of skill in the art. Nor
do the Appellants allege that employing a plurality of such elements in
contact with each other would have been beyond the ordinary level of skill
in the art or otherwise incompatible with Barker, “ft is well settled that the
mere duplication of parts has no patentable significance unless a new and
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unexpected result is produced.” In re Harza, 274 F.2d 669, 671 (CCPA
1960).
In the Answer, the Examiner provides further explanation as to how
the references could be combined. See Ans. 7. The Appellants do not
meaningfully address or dispute the Examiner’s reasoning in the Reply
Brief.
On this record, the Appellants’ argument concerning how the physical
modification would be carried out does not persuade us of reversible error in
the Examiner’s rejection. Cf. Jung, 637 F.3d at 1365.
6. The Appellants argue that, because the portion of Dietrich cited by
the Examiner as corresponding to the claimed outer shell is described by
Dietrich as a “plated fabric,” it “would reduce the effectiveness of the
‘cushion’ 52 of Barker, which is intended to function for both thermal
contact and to reduce mechanical shock.”
We are not persuaded by that argument because it is not supported by
evidence or persuasive technical reasoning. See Pearson, 494 F.2d at 1405
(“Attorney’s argument in a brief cannot take the place of evidence.”).
Similar to the Appellants’ Specification, see Spec. 130, Dietrich teaches that
the core 112 of its heat conducting member may be made of foam, Dietrich
at 5:46—50. It teaches that the outer shell may be made, for example, of
plated fabric, plated plastic, electrically conductive coated rubber,
electrically conductive foil, electrically conductive woven wire, or
electrically conductive wire mesh. Dietrich at 6:32—52. The Appellants
provide no evidence or persuasive technical reasoning to show that those
materials would have reduced thermal or mechanical performance relative to
Barker’s cushion 52 such that a person of ordinary skill would have been
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dissuaded from combining the references as proposed by the Examiner.
Even assuming, arguendo, that the differing materials would have been
expected to produce somewhat different thermal or mechanical performance,
a person of ordinary skill in the art would have been capable of
understanding those differences and selecting an appropriate material for the
desired application. Cf. Winner Int 7 Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the
expense of another benefit. . . should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”).
7. In the Reply Brief, the Appellants raise new arguments concerning
the Examiner’s reliance on Dietrich for the disclosure of a heat conducting
member comprising a resilient core and a thermally conductive outer shell.
See Reply Br. 2—3 (discussing, e.g., “electrical shorting of the wiring
board”). Those arguments are untimely because the Final Action expressly
relies on Dietrich’s disclosure of electrically conductive materials. See Final
Act. 2—3; see also 37 C.F.R. § 41.41(b)(2). We decline to consider the new
arguments because the Appellants have not established good cause for
failing to present those arguments in the opening Appeal Brief. See 37
C.F.R. §41.41 (b)(2).
* * *
In summary, we have carefully considered the Appellants’ arguments
concerning claim 1, and we are not persuaded of reversible error in the
rejection. We affirm the rejection of claim 1.
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Rejection 2
Claim 2 depends from claim 1 and further comprises “a copper layer
disposed over the heat conducting members proximate the inner wall
portion.” Claim 3 depends from claim 2 and further comprises “a pressure-
sensitive adhesive (PSA) layer disposed over the copper layer and in contact
with the inner wall portion to secure the heat conducting members and the
copper layer to the cavity.”
The Examiner determines that Corti “discloses that it is known to use
a copper layer 96 . . . and pressure-sensitive adhesive layer 98 to connect a
heat conducting member 94 to the inner surface of a housing 93.” Final
Act. 5. The Examiner concludes that it would have been obvious to combine
Corti with Barker, Dietrich, and Yu “in order to securely adhere the heat
conducting members to the inner wall portion of the cavity, and form a
thermally conductive path between the heat conducting members and the
inner wall portion of the cavity.” Id. at 6.
The Appellants argue that Corti “merely describes a bonded metal
strip 96, with no mention of copper or the function of this strip,” and that
Cori “lacks any disclosure of a pressure sensitive adhesive (PSA).” App. Br.
13 (emphasis in original).
For reasons aptly stated by the Examiner, see Ans. 8, which we will
not repeat here, we agree with the Examiner that Corti teaches or suggests
that the bonded metal strip may be copper and that the adhesive may be
pressure sensitive. See, e.g., Corti at Abstract, || 17, 41, claims 1 and 3.
We affirm the Examiner’s rejection of claims 2 and 3. See Ans. 8; cf also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
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not found in the prior art” is unpersuasive); Jung, 637 F.3d at 1365.
Rejection 3
Claim 5 depends from claim 1 and further recites “wherein the outer
shells comprise at least one sheet of pyrolytic graphite sheet (PGS)
material.” Claim 8 depends from claim 1 and further comprises “at least one
thermally conductive element disposed between the heat conducting
members and the heat-generating component.”
Concerning claim 5, the Appellants argue only that the Examiner fails
to provide an “explicit rationale” to support the conclusion of obviousness.
App. Br. 13.
We disagree. The Examiner finds that Samo “discloses that pyrolytic
graphite possesses a thermal conductivity greater than copper.” Final Act. 6.
The Examiner concludes that it would have been obvious to from the outer
shells from PGS “in order to provide the outer shells with high thermal
conductivity.” Id. at 7. The Examiner additionally determines that using
PGS for the outer shells would have been nothing more than the use of a
known material according to its established function. Id. The Examiner’s
rationale is supported by the Examiner’s citations to the record. The
Appellants do not challenge any of the Examiner’s specific findings. We
affirm the rejection. Cf. Jung, 637 F.3d at 1365.
The Appellants do not raise separate arguments concerning claim 8.
Because it depends from claim 1, the rejection of which we affirm above, we
likewise affirm the Examiner’s rejection of claim 8.
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Rejection 4
Claim 7 depends from claim 1, the rejection of which we affirm
above. Because the Appellants raise no separate arguments concerning
claim 7, we likewise affirm the Examiner’s rejection of claim 7.
Rejection 5
Concerning claim 13, the Appellants argue, with no elaboration, that
the Examiner has not provided an explicit rationale for combining the
references. App. Br. 14. We disagree. The Examiner expressly provides a
rationale for the proposed modifications involving each reference. See Final
Act. 9-12. We affirm the rejection of claim 13. Cf. Jung, 637 F.3d at 1365.
Claims 14 and 15 depend from claim 13. The Appellants raise no
separate arguments for those claims. We affirm the Examiner’s rejection of
claims 14 and 15.
Claim 16 depends from claim 13 and further recites “wherein the
sealed cavity is an aircraft equipment bay.” The Examiner finds that Samo
“teaches that modular electronic devices, e.g., housed cavities containing
heat-generating electronic devices and heat conducting members (Fig. 3),
may be used for aircraft electronic modules.” Final Act. 13. The Examiner
concludes that it would have been obvious to use the system rendered
obvious by the prior art in an aircraft equipment bay “in order to dissipate
heat from an aircraft equipment bay.” Id.
The Appellants do not dispute the Examiner’s findings concerning
Samo but argue that Samo does not explicitly mention “aircraft equipment
bays,” and that the Examiner’s rejection “is yet another conclusory statement
that does not even arrive at the claimed invention.” App. Br. 14—15.
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We are not persuaded by that argument. Cf. Lovin, 652 F.3d at 1357.
The Appellants provide no basis to believe that a person of ordinary skill in
the art would not have been motivated to use the cooling systems rendered
obvious by the prior art in any appropriate application. In view of Samo’s
teaching of “electronic modules on board aircraft,” e.g., Samo at Abstract, a
person of ordinary skill in the art would have immediately envisaged aircraft
equipment bays or otherwise understood that “electronic modules on board
aircraft” are located in equipment bays, notwithstanding the fact that Samo
does not ipsis verbis use the term “aircraft equipment bay.”
We affirm the Examiner’s rejection of claim 16.
Rejection 6
Claim 28 recites:
28. A system for managing heat transfer comprising:
a cavity having an inner wall portion;
at least one heat-generating component disposed within the
cavity; and a plurality of heat conducting members disposed
adjacent one another, each heat conducting member
comprising:
a resilient core; and
an outer shell wrapped around at least a portion of the
resilient core, the outer shell comprising a material having a
relatively high thermal conductivity,
wherein the plurality of heat conducting members are
positioned between the heat-generating component and the
inner wall portion of the cavity;
a stmctural member disposed proximate the inner wall portion
of the cavity and comprising:
an upper skin;
a lower skin; and
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a foam core disposed between the upper skin and the lower
skin;
at least one heat conducting array extending through the foam
core and between the upper skin and the lower skin, the heat
conducting array defining at least one upper cap, at least one
lower cap, and a wall portion extending between the upper cap
and the lower cap, the upper cap being disposed proximate a
heat source; and
a heat conducting spreader disposed between the lower cap of
the heat conducting array and the lower skin of the structural
member,
wherein the heat conducting array dissipates heat from the heat­
generating component by transferring heat from the at least one
upper cap, through the wall portion, to the at least one lower
cap, to the heat conducting spreader, through the lower skin,
and out to an atmosphere.
The Examiner finds that Samo discloses a system similar to that of
claim 28 but that Samo does not disclose the stmctural member, the heat
conducting array, or the heat conducting spreader. Final Act. 14—15. The
Examiner finds that Fehlmann discloses a stmctural member, a heat
conducting array, and a heat conducting spreader that meet the limitations of
claim 28. Id. at 15—16. The Examiner determines that it would have been
obvious to modify the system of Samo with the stmctural member of
Fehlmann in order to reinforce the inner wall portion of Samo. Id. at 16—17.
For reasons consistent with those argued by the Appellants, see App.
Br. 14, 17, we are not persuaded by the Examiner’s rationale. Samo is
concerned with heat dissipation and cooling, but the Examiner finds that
Fehlmann’s stmctural member includes “insulating” elements. See Final
Act. 16. A person of ordinary skill would have understood that Fehlmann’s
insulating elements would hinder Samo’s stated goal of “improv[ing] the
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cooling of electronic modules.” Samo at Abstract. Moreover, the Examiner
finds motivation to combine the references in alleged structural
reinforcement of Samo’s inner wall portion, but the Examiner does not
persuasively identify any indication in Samo that reinforcement of Samo’s
inner wall portion is necessary or desirable. See Final Act. 16—17.
On this record, we are not persuaded that the Examiner has carried the
Examiner’s burden of showing by a preponderance of the evidence that a
person of ordinary skill in the art would have been motivated to combine
Fehlmann with Samo to achieve the system of claim 28.
Rejection 7
Claim 29 includes limitations similar to those of claim 28, including
“a stmctural member.” The Examiner’s analysis of claim 29 does not
remedy the errors identified above with respect to claim 28. Accordingly,
we also reverse the Examiner’s rejection of claim 29.
CONCLUSION
We AFFIRM the Examiner’s rejections of claims 1—3 and 5—16.
We REVERSE the Examiner’s rejections of claims 28 and 29.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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