Ex Parte Sarraf et alDownload PDFPatent Trial and Appeal BoardDec 29, 201613074987 (P.T.A.B. Dec. 29, 2016) 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. 13/074,987 03/29/2011 David Sarraf 022232-9044-06 1812 23409 7590 01/03/2017 MICHAEL BEST & FRIEDRICH LLP (Mke) 100 E WISCONSIN AVENUE Suite 3300 MILWAUKEE, WI 53202 EXAMINER FLANIGAN, ALLEN J ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 01/03/2017 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): mkeipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID SARRAF, JOHN HARTENSTINE, JEROME TOTH, and SCOTT GARNER 1 Appeal 2015-003652 Application 13/074,987 Technology Center 3700 Before JOSEPH A. FISCHETTI, ROBERT L. KINDER, and BRUCE T. WIEDER, Administrative Patent Judges. KINDER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s rejection of claims 21—24, 27—32, and 35—37. Claims 1—20, 25— 26, 33—34, and 38-45 have been cancelled. App. Br. 6, 22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Thermal Corp. App. Br. 3. Appeal 2015-003652 Application 13/074,987 Appellants ’ Invention Appellants’ “invention relates to heat sinks having mounting surfaces for semiconductors, and more particularly to such heat sinks which include one or more mounting surfaces having a coefficient of thermal expansion that matches or nearly matches silicon.” Spec. 12. Independent Claims on Appeal Claims 21 and 29 are the independent claims on appeal. Claim 21 is illustrative of the claimed subject matter and reads: 21. A heat transfer device comprising: an interior chamber defined at least in part by an integral layered- composite wall, the integral layered-composite wall including a first layer of material comprising a coefficient of thermal expansion that is substantially similar to the coefficient of thermal expansion of silicon, the first layer disposed between second layers of material comprising a coefficient of thermal expansion greater than the coefficient of thermal expansion of silicon, wherein the wall has a periphery that is out of plane with respect to a remainder of the wall, and wherein the periphery of the wall and the remainder of the wall are at least partially defined by the first and second layers of the integral layered- composite wall. App. Br. 22 (Claims App’x). Examiner’s Rejections Claims 21—24, 27—32, and 35—37 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yamamoto (US 6,397,935 Bl, iss. June 4, 2002), Wong (US 2004/0218363 Al, pub. Nov. 4, 2004), North (US 2002/0185726 Al, pub. Dec. 12, 2002), andKamezos (US 6,373,131 Bl, iss. Apr. 16, 2002). Ans. 4. 2 Appeal 2015-003652 Application 13/074,987 ANALYSIS As an initial matter, Appellants argue all claims of the § 103 rejection as a single group (App. Br. 9—19); we select claim 21 as representative of the group and decide the appeal as to all rejections based on claim 21 alone. See 37 C.F.R. § 41.37(c)(l)(iv) (“When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone.”). For the first time in Reply, Appellants argue that claim 21 and claim 29 are different in scope and claim 29 has limitations that would distinguish it from claim 21 and the prior art of record. See Reply Br. 3 (“Departing even further from the prior art teachings, independent claim 29 requires . . . .”), id. at 6 (“Thus, while claim 21 does not require that an entire heat pipe wall be formed from CTE-matched material like claim 29 . . . .”); id. at 13 (“an entire heat pipe wall (claim 29)”). Appellants failed to raise these distinctions and arguments in their Appeal Brief. See App. Br. 9—19; 37 C.F.R. § 41.37(c)(iv) (“any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal”). We therefore consider these arguments waived pursuant to 37 C.F.R. § 41.41(b)(2) because Appellants have not explained why, nor is it apparent that, these arguments were necessitated by a new point in the Examiner’s Answer2 or any other circumstance constituting “good cause” 2 In the Answer, the Examiner addressed Appellants’ argument related to claim 21. See Ans. 7 (“First, the above argument is not commensurate in scope with claim 21 . . . .”). 3 Appeal 2015-003652 Application 13/074,987 for its belated presentation. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). We affirm the Examiner’s rejections of claims 21—24, 27—32, and 35— 37 under 35 U.S.C. § 103(a). We disagree with Appellants’ contentions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the Non-Final Office Action (Office Act. 3—5, mailed July 11, 2013) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 4—10). We concur with the conclusions reached by the Examiner. We add the following for emphasis. Claim 21 Claim 21 requires, in pertinent part, “[a] heat transfer device comprising: an interior chamber defined at least in part by an integral layered-composite wall” and “wherein the wall has a periphery that is out of plane with respect to a remainder of the wall, and wherein the periphery of the wall and the remainder of the wall are at least partially defined by the first and second layers of the integral layered-composite wall.” App. Br. 22 (Claims App’x) (emphases added). The heart of Appellants’ contentions is that “neither Wong nor North teaches constructing an entire integral, composite layered wall of the Yamamoto heat pipe from CTE-matched material such as that disclosed in Kamezos.” Id. at 11 (emphasis added). As seen, however, in the emphasized claim 21 language above, there is no requirement that a complete match of the entire wall occur. Thus, we find Appellants’ contention that 4 Appeal 2015-003652 Application 13/074,987 both Wong and North teach that only a small, localized portion of CTE- matched material should be interposed between a heat pipe and the electronic component to be cooled without any suggestion that an entire wall of the heat pipe can or should be constructed from CTE-matched material as in [Appellants’] claimed invention is not commensurate in scope to what is actually claimed, and therefore not persuasive. Id. at 11. See In re Self 671 F.2d 1344, 1348—50 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). The Examiner similarly finds “the above argument is not commensurate in scope with claim 21, which recites only that the chamber is ‘defined at least in part by an integral layered composite wall’ (emphasis added). This claim recitation clearly does not require the entire wall of a heat pipe be so constructed.” Ans. 7. The Examiner also persuasively establishes that Wong teaches a layer of material for CTE matching purposes which extends along heat dissipation device 300, including its periphery. Id. at 8 (citing Wong Fig. 3, layer 390). The Examiner further finds that although certain embodiments of Wong disclose “specific projecting ‘studs’ meant to engage particularly shaped components,” the claim scope does not prohibit such additional elements. Id. “Thus,” according to the Examiner, “a wall of Yamamoto et al.’s planar heat pipe, provided with the CTE-matching layer 390 of Wong’s Fig. 3 embodiment, and formed with the bulging projection intended to contact a component, would clearly read on the rejected claims.” Id. Based on the record before us, the Examiner’s findings are persuasive. Further, based on the Examiner’s proposed combination, Yamamoto’s planar heat pipe wall provided with the CTE-matching layer (390) of Wong would be formed as an integral layered-composite wall as required by the claims. As such, we 5 Appeal 2015-003652 Application 13/074,987 disagree with Appellants’ contentions to the contrary. See App. Br. 19—20 (arguing the CTE matching material must be an integral part of the heat sink itself as an entire composite-layered wall). Appellants also contend the prior art teaches away from the claimed device and the Examiner fails to provide a rationale for the combination. Id. at 11. Appellants argue the Examiner ignores the claimed invention and prior art as a whole, as well as portions of the prior art that teach away from the claimed invention. Id. at 11—12. Much of Appellants’ teaching away argument is again premised upon the non-existent requirement that the claimed invention requires an entire wall and that the combination of Wong and North “direct one of ordinary skill in the art in the opposite direction.” Id. at 12. Specifically, Wong describes “an application specific heat sink’ in which a ‘customized heat-dissipating stud 120 may be fabricated to specific size, thermal conductivity requirements, etc.’” Id. (quoting Wong 132). According to Appellants, “Wong thus teaches away from [Appellants’] claimed heat transfer device in which the interior chamber is formed by an integral layered-composite wall.” Id. at 13, 14 (“[B]oth Wong and North teach away from [Appellants’] claimed invention where an entire wall of an interior chamber of a heat sink is constructed from CTE-matched material, including portions of the wall not in contact with the electronic component to be cooled.”). First, we find these contentions unpersuasive because they are not commensurate in scope to what is actually claimed as explained above. Next, we find persuasive the Examiner’s rationale for combining the references. The Examiner finds “it would have been obvious to one of ordinary skill in the art, attempting to improve the planar heat pipe of 6 Appeal 2015-003652 Application 13/074,987 Yamamoto et al., to use the known technique of employing copper/molybdenum/copper laminate materials taught in Wong and Kamezos to improve planar heat pipes in the same way.” Ans. 5. Further, the Examiner finds “it would have been obvious to make at least a part, or all, of one of the walls 20, 22 of Yamamoto et al. (whichever wall was intended to contact a silicon-based component to be cooled) out of a copper/molybdenum/copper laminate.” Id. Based on these findings the Examiner determines that Appellants’ teaching away arguments are unpersuasive because Neither North et al. or Wong “criticize, discredit, or otherwise discourage the solution claimed” (i.e. the application of copper/molybdenum/copper laminate material to a greater proportion of the envelope of a heat pipe device than a specific region meant to contact a heat generating component). Id. at 8. Appellants also argue that the Examiner engaged in improper hindsight reconstruction. App. Br. 11—13, 15, 17; Reply Br. 11, 13. We have considered these arguments, but find them unpersuasive for the reasons set forth by the Examiner. The Examiner finds that “both the problem addressed by the claimed invention and the proposed solution are clearly found in the prior art, as discussed above.” Ans. 7. The Examiner provides a persuasive rationale as to why a person of ordinary skill in the art would have combined the known features of each prior art reference to teach the invention as a whole. See id. at 4—7, 9 (“the technique of using copper/molybdenum/copper laminates to improve various types of heat sink devices, including heat pipes, is known” and “use of this technique in the known design of Yamamoto et al. to improve it in the same way would have 7 Appeal 2015-003652 Application 13/074,987 been obvious to one of ordinary skill in the art”). Accordingly, we sustain the Examiner’s rejection of claim 21 under 35 U.S.C. § 103(a), as well as the rejection of claims 22—24, 27—32, and 35— 37 for the reasons set forth above and because these claims were not argued separately. DECISION We AFFIRM the Examiner’s rejection of claims 21—24, 27—32, and 35-37. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation