Ex parte Price et al.

Board of Patent Appeals and Interferences

Oct 27, 1998

08417303 (B.P.A.I. Oct. 27, 1998)

Application for patent filed April 5, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DONALD C. PRICE, RICHARD M. WEBER, GARY J. SCHWARTZ
JOSEPH McDANIEL and JOSE' L. LAGE
_____________
Appeal No. 97-2414
Application 08/417,3031
______________
ON BRIEF
_______________
Before ABRAMS, FRANKFORT and CRAWFORD, Administrative Patent
Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal
to allow claims 1 through 19 as amended subsequent to the
final rejection in a paper filed August 15, 1996 (Paper No.
Appeal No. 97-2414
Application 08/417,303
Our understanding of this foreign language document is based on a2
translation prepared for the U.S. Patent and Trademark Office. A copy of that
translation is attached to this decision.
2
5). Claims 1 through 19 are all of the claims pending in the
application.
Appellants’ invention relates to a cold plate for use in
a thermal management system and to a method of thermal
management using said cold plate. Independent claims 1 and 17
are represen-tative of the subject matter on appeal and a copy
of those claims appears in the Appendix to appellants’ brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Valyi 3,396,782 Aug. 13, 1968
Chao-Fan Chu et al. (Chao-Fan Chu) 5,170,319 Dec. 08,
1992
Suzumura 1-247991 Oct. 03, 19892
(Japanese Kokai)
Claims 1, 4, 7, 8, 12, 13, 17 and 18 stand rejected under
35 U.S.C. § 103 as being unpatentable over Chao-Fan Chu in
view of Valyi. On pages 4 and 5 of the final rejection, the
Appeal No. 97-2414
Application 08/417,303
3
examiner has taken the position that Chao-Fan Chu discloses
the invention as claimed except that it does not disclose a
porous metallic matrix filling the fluid passageways therein.
The examiner goes on to indicate that
Valyi teaches a porous metal matrix 177 filling a
fluid passage in a cold plate (col. 1, line 55). It
would have been obvious to one having ordinary skill
in the art at the time the invention was made to
substitute the passages of Chao-Fan Chu et al. for
the metal matrix of Valyi in order to have an equal
flow rate through the fluid passage (cot. [sic,
col.] 1, lines 45-48).
Claims 2, 5, 9, 14 and 19 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Chao-Fan Chu in view of
Valyi as applied above, and further in view of Suzumura.
Claims 3, 6, 11 and 16 also stand rejected under 35
U.S.C. § 103 as being unpatentable over Chao-Fan Chu in view
of Valyi as applied above, and further in view of Suzumura.
Claims 10 and 15 also stand rejected under 35 U.S.C. §
103 as being unpatentable over Chao-Fan Chu in view of Valyi.
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
Appeal No. 97-2414
Application 08/417,303
4
anticipated by Valyi. On page 3 of the examiner’s answer, the
examiner explains this new ground of rejection thusly:
Valyi discloses a cold plate comprising a plurality
of fluid passages 175 (col. 6, lines 3-13) having a
common cooling fluid inlet region 179 and a common
cooling fluid outlet region 178 and a metallic
porous matrix 177 filling each of the fluid passages
between the fluid inlet region and the fluid outlet
region to maintain a uniform pressure differential
(col. 1, lines 48+) across each of the passages.
On page 2 of Paper No. 11 (Response to the Reply Brief), the
examiner has taken the somewhat inconsistent position that
In response to whether it is clear that Valyi
discloses fluid passages having a common inlet and
outlet, it is the examiners position that the
reference clearly discloses passages 175 and a
common inlet 178 and a common outlet 179.
In response to the passages being filled, it is
the examiners position that the Valyi reference
discloses the passages being filled with the porous
material, since the fluid must enter the porous
metal matrix for the device of Valyi to be operable,
and it can only enter the porous metal matrix if the
passages are in fluid communication with the porus
metal matrix.
Rather than reiterate the examiner's full statement of
the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellants regarding those
rejections, we make reference to the examiner's answer (Paper
No. 9, mailed December 4, 1996) and the “Response to Reply
Appeal No. 97-2414
Application 08/417,303
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Brief” (Paper No. 11, mailed January 28, 1997) for the
examiner's reasoning in support of the above-noted rejections,
and to appellants’ brief (Paper No. 8, filed September 10,
1996) and supplemental reply briefs (Paper Nos. 10 and 12) for
appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants’ specification and claims,
to
the applied prior art references, and to the respective
positions articulated by appellants and the examiner. As a
consequence of our review, we have made the determinations
which follow.
Turning first to the examiner's rejection of claim 1
under 35 U.S.C. § 102(b), we share appellants’ view as
expressed on pages 2 and 3 of Paper No. 12 that Valyi does not
teach or suggest “a metallic porous matrix filling each [of a
plurality] of the fluid passages between said fluid inlet
region and said fluid outlet region” as set forth in
Appeal No. 97-2414
Application 08/417,303
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appellants’ claim 1 on appeal. The examiner’s position as
stated on page 2 of Paper No. 11 that the passages in Valyi
Figure 6 are the channels (175) and that such
channels/passages are “filled” with the porous material is
somewhat incomprehensible given the clear disclosure in Valyi
(col. 6, lines 3-13) that the channels (175) are provided
“between” the porous component (177) and the solid component
(176) and the clear showing in Figure 6 of Valyi that the
channels (175) are open channels/passageways allowing
communication between the manifold channel (178) and the
porous matrix material (177) of the burner/heating unit
therein. Likewise, the examiner‘s position that Valyi includes
“a common
outlet 179" (Paper No. 11, page 2) is clearly erroneous given
that Valyi expressly discloses (col. 6, lines 3-13) that the
element (179) is a rod which acts as a valve means in the
burner unit therein that may be manually shifted by the handle
(180) to open and close gas supply ports to the channels
(175). For these reasons, we will not sustain the examiner’s
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Application 08/417,303
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rejection of claim 1 on appeal under 35 U.S.C. § 102(b) as
being anticipated by Valyi.
We next review the examiner’s rejection of claims 1, 4,
7, 8, 12, 13, 17 and 18 under 35 U.S.C. § 103 as being
unpatentable over Chao-Fan Chu in view of Valyi. In this
instance, we find the examiner’s explanation of the rejection
in the final rejection (incorporated into the answer by
reference on page 3 of the examiner’s answer) to be somewhat
unclear. On page 5 of the final rejection, the examiner has
taken the position that it would have been obvious to one of
ordinary skill in the art at the time appellants’ invention
was made “to substitute the passages of Chao-Fan Chu et al for
the metal matrix material [177] of Valyi in order [sic] have
an equal flow rate through the fluid passage.” Given the
disclosure in Valyi at column 5, line 46+ that the porous
matrix material (177) therein will have gas
supplied thereto and act to provide heat over a large area of
the burner, we find the examiner’s proposed substitution of
the passages of Chao-Fan Chu for the porous matrix material of
Appeal No. 97-2414
Application 08/417,303
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Valyi to be entirely without merit. Moreover, we note, as
appellants have, that such a modification would not result in
a “cold plate” or “cold plate system” as set forth in
appellants’ independent claims 1 and 7 on appeal, or teach or
suggest a method as set forth in independent claim 17 on
appeal.
In addition, contrary to the examiner’s statements on
pages 4-5 of the answer, when we consider the collective
teachings of Chao-Fan Chu and Valyi, we find nothing therein
which would have been suggestive to one of ordinary skill in
the art of providing the passages/channels (e.g., 1704 of Fig.
17) of Chao-Fan Chu with a metallic porous matrix like that
seen in Valyi at (177).
In our opinion, the examiner’s above position is based on
impermissible hindsight gleaned from appellants’ own
disclosure and not from any fair teaching or suggestion found
in the applied patents themselves. Absent the disclosure of
the present application, it is our opinion that one of
ordinary skill in the art would not have been motivated by the
teachings of the applied
Appeal No. 97-2414
Application 08/417,303
However, we strongly suggest that both the examiner and appellants3
review the translation of Suzumura, particularly as it relates to using a
metallic porous matrix material (e.g., 30 of Figures 3 and 4) in the passages
9
prior art to modify the integrated cooling structure of Chao-
Fan Chu in the manner urged by the examiner so as to arrive at
the subject matter set forth in appellants’ independent claims
1, 7 and 17 on appeal. Thus, the examiner's rejection of
appellants’ claims 1, 4, 7, 8, 12, 13, 17 and 18 under 35
U.S.C. § 103 as being unpatentable over Chao-Fan Chu in view
of Valyi will not be sustained.
We have also reviewed the Japanese patent to Suzumura
applied by the examiner in the § 103 rejection of dependent
claims 2, 5, 9, 14 and 19. However, while the examiner has
relied upon this reference to teach an aluminum metallic
porous material, we note that Valyi (col. 3, lines 3-6)
already indicates that the porous material therein may be
formed of aluminum. Thus, in this regard, we find Suzumura to
be merely surplusage. Accordingly, the examiner's rejection
of claims 2, 5, 9, 14 and 19 on appeal under 35 U.S.C. § 103
will likewise not be sustained.3
Appeal No. 97-2414
Application 08/417,303
of a heat exchanger (perhaps one like that of Chao-Fan Chu, Figure 17).
10
With respect to the examiner’s rejections of dependent
claims 3, 6, 10, 11, 15 and 16 under 35 U.S.C. § 103 relying
on obvious design choice, we agree with appellants’ position
as set forth on pages 11-14 of the brief, and for those
additional reasons will not sustain the examiner’s rejections
of claims 3, 6, 10, 11, 15 and 16.
As should be apparent from the foregoing, the decision of
the examiner rejecting claims 1 through 19 of the present
application is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
Appeal No. 97-2414
Application 08/417,303
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)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )

vsh
Appeal No. 97-2414
Application 08/417,303
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Glenn H. Lenzen
Raytheon Company
Office of General Counsel
141 Spring Street Mail Stop 1-1
Lexington, MA 02173