Ex Parte Salamon

Patent Trial and Appeal Board

Jan 24, 2017

12577148 (P.T.A.B. Jan. 24, 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.
12/577,148 10/09/2009 Todd R. Salamon ALU09001USU 3621
51029 7590
Jay M. Brown
JAY BROWN LAW FIRM
P.O. Box 1407
Cary, NC 27512
01/26/2017 EXAMINER
AVILES BOSQUES, ORLANDO E
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
01/26/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
j aybrownlaw @ gmail. com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD R. SALAMON
Appeal 2015-0031171
Application 12/577,1482
Technology Center 3700
Before MICHAEL W. KIM, PHILIP J. HOFFMANN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1—10, 23—25, and 30—33. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellant’s Specification (“Spec.,” filed Oct. 9,
2009), Appeal Brief (“Appeal Br.,” filed Sept. 9, 2014), and Reply Brief
(“Reply Br.,” filed Jan. 12, 2015), as well as the Examiner’s Answer
(“Answer,” mailed Nov. 10, 2014).
2 According to Appellant, “[t]he real parties in interest are . . . Lucent
Technologies Inc., its successor entity, Alcatel-Lucent USA Inc., and its
parent company Alcatel-Lucent.” Appeal Br. 3.
Appeal 2015-003117
Application 12/577,148
According to Appellant, the “invention generally relates to thermal
interface devices, systems that include thermal interface devices, and
methods that include forming thermal interfaces between objects.” Spec.
11. Claims 1 and 23 are the only independent claims. See Appeal Br.,
Claims App. We reproduce both claims, below, as representative of the
appealed claims.
1. A device, comprising:
an enclosure;
a matrix material;
a plurality of particles formed of a material having
substantial bulk thermal conductivity of at least about one watt
per meter-Kelvin (1 W/[mK]) at a standardized measurement
temperature of about 68°F;
the plurality of particles being dispersed in the matrix
material and being encapsulated in the enclosure;
wherein upon deformation, the enclosure is configured to
allow a portion of the matrix material to escape from the
enclosure while retaining at least a portion of the plurality of
particles within the enclosure.
23. A system, comprising:
an enclosure having first and second exterior surfaces and
encapsulating a plurality of particles formed of a material having
substantial bulk thermal conductivity of at least about one watt
per meter-Kelvin (1 W /[mK]) at a standardized measurement
temperature of about 68°F and being dispersed in a matrix
material; and
a first object having a first object surface and a second
object having a second object surface, the enclosure being
located between the objects with the first exterior surface of the
enclosure facing toward the first object surface and with the
second exterior surface of the enclosure facing toward the second
object surface;
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Appeal 2015-003117
Application 12/577,148
wherein the enclosure has through-pores communicating
between an interior of the enclosure and an exterior of the
enclosure, at least a portion of the plurality of particles having
diameters being larger than a maximum diameter of the through-
pores.
REJECTIONS AND PRIOR ART3
The Examiner rejects claims 1—5, 8, 23, 24, and 30-32 under
35 U.S.C. § 103(a) as unpatentable over Chiu (US 6,150,195, iss. Nov. 21,
2000), Mann (US 6,404,634 Bl, iss. June 11, 2002), and Norell
(US 5,561,590, iss. Oct. 1, 1996).
The Examiner rejects claims 6 and 33 under 35 U.S.C. § 103(a) as
unpatentable over Chiu, Mann, Norell, and Deeny (US 5,783,862, iss.
July 21, 1998).4
The Examiner rejects claims 7, 10, and 25 under 35 U.S.C. § 103(a) as
unpatentable over Chiu, Mann, Norell, and McCullough (US 6,367,541 B2,
iss. Apr. 9, 2002).5
3 The Examiner withdraws an indefiniteness rejection. Answer 12.
4 Inasmuch as these dependent claims depend from independent claims 1
and 23, which are rejected based on Norell, we treat the dependent claims
also as rejected based on Norell.
5 Inasmuch as these dependent claims depend from independent claims 1
and 23, which are rejected based on Norell, we treat the dependent claims
also as rejected based on Norell.
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Application 12/577,148
The Examiner rejects claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Chiu, Mann, Norell, and Sung (US 2005/0250250 Al,
pub. Nov. 10, 2005).6
ANALYSIS
With respect to the rejection of independent claim 1, we will assume,
arguendo, that Appellant is correct in each of the following: the claim
recitation of “wherein upon deformation, the enclosure is configured to
allow a portion of the matrix material to escape from the enclosure while
retaining at least a portion of the plurality of particles within the enclosure”
(Appeal Br., Claims App.) is not a conditional limitation (see, e.g., Reply
Br. 2; see also, e.g., Appeal Br. 7—9); the claim recitation “the plurality of
particles being dispersed in the matrix material and being encapsulated in the
enclosure” (Appeal Br., Claims App.) requires that the matrix material is
enclosed in the enclosure (see, e.g., Reply Br. 2—3; see also, e.g., Appeal
Br. 9—12); and neither Chiu nor Mann discloses a matrix material enclosed
in an enclosure (see, e.g., Reply Br. 4). Regardless, the Examiner finds that
Norell, in column 2, lines 62[—]66 explicitly discloses that the
compliant body (12) is represented with zig-zagged lines that
represent the body itself, and the spaces between the lines
represent the microscopic voids which hold the liquid metal alloy.
Therefore, the structure of Norell also discloses at least some of
the matrix material being enclosed by the compliant body 12 of
Norell.
6 Inasmuch as this dependent claim depends from independent claim 1,
which is rejected based on Norell, we treat the dependent claim also as
rejected based on Norell.
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Appeal 2015-003117
Application 12/577,148
Answer 15. Based on our review, we determine that the Examiner’s finding
is adequate. In particular, we note that this portion of Norell states that “the
microscopic voids . . . hold the liquid metal alloy” (i.e., the liquid metal
alloy is held in the voids within the enclosure), thereby meeting the specific
requirement that the material is, in fact, enclosed in an enclosure. Norell
col. 2,11. 64—66. Further, Appellant does not submit arguments addressing
this finding to the extent necessary to persuade us that the Examiner errs or
that Norell otherwise does not disclose a material enclosed in an enclosure.
Finally, we will also assume, arguendo, that Appellant is correct that
neither Chiu nor Mann discloses the claim limitation of “the enclosure is
configured to allow a portion of the matrix material to escape from the
enclosure while retaining at least a portion of the plurality of particles within
the enclosure.” Appeal Br., Claims App.; see also Reply Br. 4. The
Examiner does find, however, that “Norell teaches the use of a compliant
body (12) between a heat source (11) and a heat sink (15) and depending on
how much the elements are compressed the compliant body (12) is squeezed
and a liquid metal alloy (12a) is intentionally squeezed out of the compliant
body (12).” Answer 3^4. Consistent with the Examiner’s finding, Norell’s
Figures 2A—2D show compliant body 12 compressed different amounts,
which results in different amounts of liquid metal alloy 12a escaping from
and being retained in body 12. See Norell Figs. 2A—2D. As a result, we find
that Norell does teach an enclosure that allows a portion of the material to
escape while retaining a portion of the material, contrary to Appellant’s
argument.
Based on the foregoing, we sustain the rejection of independent
claim 1. Further, inasmuch as Appellant argues the rejections of dependent
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Application 12/577,148
claims 2—10 are erroneous because the rejection of claim 1 is erroneous, we
sustain the rejections of claims 2—10.
With respect to the rejection of independent claim 23, however, the
Examiner does not find that any reference discloses the claim recitation of
“the enclosure has through-pores communicating between an interior of the
enclosure and an exterior of the enclosure, at least a portion of the plurality
of particles having diameters being larger than a maximum diameter of the
through-pores.” Appeal Br., Claims App.; see also Answer 6—8. As
discussed in detail below, none of the Examiner’s reasons for modifying the
references applied in the rejection is adequate, and, thus, we do not sustain
the rejection of claim 23.
Specifically, we disagree with the Examiner that
[i]t would have been an obvious matter of design choice to
further modify . . . Chiu by having at least a portion of the
plurality of particles having diameters being larger than a
maximum diameter of the through-pores, since [Appellants]
ha[ve] not disclosed that having at least a portion of the plurality
of particles having diameters being larger than a maximum
diameter of the through-pores solves any stated problem or is for
any particular purpose and it appears that the device would
perform equally well with the plurality of particles having
diameters larger or smaller than a maximum diameter of the
through-pores.
Answer 7—8. Conversely, we agree with Appellant that the Specification
describes reasons for sizing a portion of the plurality of particles to have
diameters larger than the maximum diameter of the enclosure’s through-
pores—i.e., to retain, after deformation of the enclosure, a majority of the
particles within the enclosure while permitting some of the particles and the
matrix material to escape from the enclosure. Appeal Br. 12—13 (citing
Specification 135).
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Application 12/577,148
The Examiner reasons that
it would have been an obvious matter of design choice to further
modify the device of Chiu by having the diameters of at least a
portion of the plurality of particles being larger than a maximum
diameter of the through-pores, in order to prevent the particles
from falling off while the device is being assembled.
Answer 7—8. The Examiner provides no evidence, such as a citation to Chiu
or otherwise, showing that increasing the diameter as proposed would
“prevent the particles from falling off while the device is being assembled.”
Thus, we determine that this reasoning given by the Examiner is insufficient
to establish that sizing a portion of the plurality of particles to have
diameters larger than the maximum diameter of the enclosure’s through-
pores is an obvious variation of Chiu.
Finally, the Examiner reasons that
as discussed ... in the rejection of claim 9, a person skilled in
the art would have found [it] obvious to have the plurality of
particles to include first particles having a first diameter and
second particles having a second diameter being smaller than the
first diameter, in view of the teachings of Sung, in order to
improve the conductive heat transfer in the overall device, since
the smaller diameter particles can fill voids that the larger particle
diameters cannot fill.
Answer 17. First, the Examiner’s rejection of claim 23 is not based on Sung,
and, thus, it is not clear how Sung may provide the rationale to modify the
other references actually used in the rejection of claim 23. Further, we note
that the Examiner does not establish that Sung teaches anything other than
particle diameters of different sizes, as opposed to particles having diameters
bigger and smaller than through-pores of an enclosure. Therefore, even if
the Examiner had rejected claim 23 based on Sung, the Examiner’s
reasoning would have been insufficient to establish that sizing a portion of
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Application 12/577,148
the plurality of particles to have diameters larger than the maximum
diameter of the enclosure’s through-pores is an obvious variation of Chiu
and the other references used in the rejection.
Based on the foregoing, we do not sustain the rejection of independent
claim 23. Further, inasmuch as the Examiner does not establish that any
other reference remedies the deficiency in the rejection of claim 23, we do
not sustain any of the rejections of dependent claims 24, 25, and 30—33.
DECISION
We AFFIRM the Examiner’s obviousness rejections of claims 1—10.
We REVERSE the Examiner’s obviousness rejections of claims 23—
25, and 30-33.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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