Ex Parte PeschlDownload PDFPatent Trial and Appeal BoardFeb 26, 201311243287 (P.T.A.B. Feb. 26, 2013) Copy Citation 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. 11/243,287 10/04/2005 Hans Peter Peschl 3644-009 6487 24112 7590 02/26/2013 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 EXAMINER LEO, LEONARD R ART UNIT PAPER NUMBER 3744 MAIL DATE DELIVERY MODE 02/26/2013 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 HANS PETER PESCHL ____________________ Appeal 2010-005384 Application 11/243,287 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, BENJAMIN D. M. WOOD and JOHN W. MORRISON, Administrative Patent Judges. MORRISON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005384 Application 11/243,287 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to convective heat sink, such as may be used for semiconductor cooling. Spec., para. [0001]. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A heat sink, comprising: a base having a slot, the slot having first and second sidewalls; a fin having an end press-fitted into the slot, the fin end comprising a first surface conformally engaged with the first sidewall and a second surface having one or more protrusions cold- welded to the second sidewall, said one or more protrusions extending laterally along a length of the second surface. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kizaki Wroblewski Bock (EP) Hess Bock (US) Mira Brendel Nielsen Enquist Gailus US 4,266,156 US 4,327,311 EP 0 483058 A1 US 5,014,776 US 5,682,948 US 5,709,263 US 5,905,627 US 6,493,227 B2 US 6,500,694 B1 US 6,520,248 B2 May 5, 1981 Apr. 27, 1982 Oct. 4, 1991 May 14, 1991 Nov. 4, 1997 Jan. 20, 1998 May 18, 1999 Dec. 10, 2002 Dec. 31, 2002 Feb. 18, 2003 Appeal 2010-005384 Application 11/243,287 3 REJECTIONS The Examiner made the following rejections1: 1. Claims 1-7 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claim 1-7 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 3. Claims 1, 2, 5, 6, 8-10, 15, 18, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bock (EP) and Bock (US). 4. Claims 3, 4, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bock (EP), Bock (US), and Mira. 5. Claims 6, 7, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bock (EP), Bock (US), and Gailus. 6. Claims 14 and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bock (EP), Bock (US) and Hess. 7. Claims 15-17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bock (EP), Bock (US) and Nielsen. ANALYSIS 1. Written Description Addressing claims 1-7, the Examiner determines that a fin being press-fitted so that a surface of that fin is cold-welded as called for in claim 1 is not supported by Appellant’s disclosure. Ans. 3, 9-10. In this respect, the Examiner believes there is a difference between ‘press-fitting’ and ‘cold welding,’ both processes of which, are encompassed by the generic term 1 Appellant has also requested review of objections to Figure 9. App. Br. 30-31. Appeal 2010-005384 Application 11/243,287 4 ‘pressing.’” Ans. 9-10. The Examiner further cites paragraphs [0009]- [0011] for support that 2 sided cold welding is an alternative to conical press fitting which requires “precision and finishing.” Ans. 10; Spec., paras. [0009], [0011]. Appellant contends that the Examiner’s determination rests on the same proposition that the terms cold- welded and press-fitted in claim 1 are mutually exclusive process limitations, and that Applicant's specification describes press fitting and cold welding as alternative processes that cannot be done together. The filed application makes clear that forcible insertion of a fin end into a base slot results in a press-fitted fin end. However, the application also makes clear that forced pressing of a fin end having one side configured for conformal engagement and one side configured for cold welding results in a fin that, as a result of forcible insertion into a base slot, has a conformally engaged side and a cold welded side. App. Br. 11. We are persuaded by Appellant’s argument. The joint formed clearly has 2 surfaces. One surface is conformally engaged, similar to the conical press fit described in paragraph [0009] and the other surface has protrusions that are “cold welded” as described in paragraph [0011]. Both types of bonds would be formed by a single press fitting of the fin into the slot in the base of the heat sink. Thus, one skilled in the art would conclude that Appellant was in possession of the claimed invention at the time of filing. Therefore, we do not sustain the written description rejection under U.S.C. § 112, first paragraph, of claims 1-7. Appeal 2010-005384 Application 11/243,287 5 2. Indefiniteness Addressing claims 1-7, the Examiner concedes “if the rejection under 35 U.S.C. [§] 112, first paragraph[,] is reversed, then the rejection under 35 U.S.C. [§] 112, second paragraph[,] would be withdrawn.” Ans. 9. Therefore, we do not sustain the indefiniteness rejection under U.S.C. § 112, second paragraph, of claims 1-7. 3. Obviousness over Bock (EP) and Bock (US) Addressing Claims 1-2, 5-6, 8-10, 15, 18 and 20-21, the Examiner has concluded [i]t would have been obvious at the time the invention was made to a person having ordinary skill in the art to employ in Bock (EP) a joint having a first end with a conforming first surface and a grooved second surface received in slot for the purpose of achieving a desired mechanical connection as recognized by Bock (US). Ans. 5. Appellant counters that [t]he smooth-on-one side/rough-on-one side features taken from Bock US come from joints between flanking walls 16 of interconnected heat sink bases 14, and not from heat sink fins in those bases. Bock US does not teach that these joints are press fitted, or that they have a conformally- engaged side and a cold-welded side. These structural features are not inherent in the arrangement shown in Bock US. App. Br. 12. We agree with Appellant. The Examiner makes no finding that the joints of the proposed combination would have a conformally engaged side and a cold-welded side as required by independent claims 1 and 8. Appeal 2010-005384 Application 11/243,287 6 The Examiner then determines that “press-fitted” and “cold welded” were deemed to be product-by-process recitations. “In this respect, the process recitations were afforded limited patentable weight.” Ans. 11 Appellant counters that [w]ithin the context of claim 1, press fitting a fin end having the claimed end surfaces-one smooth, one with protrusions-produces key structural distinctions that are not found in any combination of the cited references: (1) the smooth surface of the press-fitted fin end is conformally engaged with one slot sidewall; and (2) the protuberances on the other fin end surface are cold-welded to the other slot sidewall. App. Br. 17. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See In re Garnero, 412 F.2d 276, 279 (CCPA 1969). In this case, the manufacturing processes of conformal engagement and cold welding impart distinct structural characteristics, including “thermal advantages.” App. Br. 15. The thermal performance of the joint between a heat sink and a fin is a distinctive structural characteristic that must be considered. The Examiner has not found this structure in the prior art. Thus, for the above reasons, we cannot affirm the obviousness rejection of claims 1-2, 5-6, 8-10, 15, 18 and 20-21. Appeal 2010-005384 Application 11/243,287 7 Rejections 4-7 Rejections 4-7 rely on additional references of Mira, Gailus, Hess, and Nielson, respectively, to address limitations of various dependent claims. However, none of these references cures the underlying deficiency of the combination of Bock (EP) and Bock (US) which fails to render the underlying independent claims 1 or 8 obvious. As such, we cannot affirm rejections 4-7. Objection to the Drawings Appellant has requested “[i]f appropriate for resolution by the BPAI, Applicant would appreciate having the record settled in that the originally disclosed Fig. 9 amply illustrates the bevel features at issue in claims 3, 4, 12, and 13.” App. 30-31. Ordinarily, an objection is a petitionable matter, and not an appealable one. See Manual of Patent Examining Procedure (MPEP) §§ 706.01 and 1201 (8th ed., Rev. 9, Aug. 2012); see also Ex Parte Frye, 94 USPQ2d 1072, 1077-78 (BPAI 2010) (precedential) (similarly determining an objection to the drawings was outside of the Board’s jurisdiction). Further, addressing the rejections before us does not require consideration of the bevel feature of described in Figure 9. In other words, the objection does not relate to the rejections. See In re Hengehold, 440 F.2d 1395, 1404 (CCPA 1971) (“the kind of adverse decisions of examiners which are reviewable by the board must be those which relate, at least indirectly, to matters involving the rejection of claims”). In this case, we do not need to address the objections to Figure 9 to reach a decision on the rejections. Appeal 2010-005384 Application 11/243,287 8 DECISION For the above reasons, the Examiner’s rejection of claims 1-21 is reversed. REVERSED hh Copy with citationCopy as parenthetical citation