Ex Parte Smith et al

Board of Patent Appeals and Interferences

Jan 13, 2012

11152984 (B.P.A.I. Jan. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/152,984 06/14/2005 James David Blackhall Smith 2005P09159US 7718
7590 01/13/2012
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
CHANG, VICTOR S
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
01/13/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAMES DAVID BLACKHALL SMITH,
GARY STEVENS, and JOHN WILLIAM WOOD

__________

Appeal 2010-008057
Application 11/152,984
Technology Center 1700
___________

Before LINDA M. GAUDETTE, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008057
Application 11/152,984

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an
Examiner’s decision finally rejecting claims 5, 9, 10, 22-27, and 29-30. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Claim 5, reproduced below, is illustrative of the subject matter on
appeal.
5. A continuous organic-inorganic highly structured resin comprising:
a host highly structured resin network comprising a plurality of
mesogenic groups; and
inorganic high thermal conductivity fillers being evenly dispersed in
said host highly structured resin network, wherein said inorganic high
thermal conductivity fillers comprise surface functional groups that
covalently bond said high thermal conductivity fillers directly to said host
highly structured resin network;
wherein said high thermal conductivity fillers have a length of
between 1-1000 nm and an aspect ratio of 10-50;
wherein said plurality of mesogenic groups and said thermal
conductivity fillers are in substantial alignment with one another in a
uniform direction; and
wherein the continuous organic-inorganic highly structured resin
comprises minimal to no interfacial gaps or microvoids formed therein and
is effective to reduce an amount of phonon scattering and to increase an
amount of phonon transport in the resin.

Claims 5, 9, 10, 22-27, and 30 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Chopra1 in view of McCullough2 and Jackson3.

1 US 2005/0116336 a1, Pub. Jun. 2, 2005
2 6,048,919, issued Apr. 11, 2000
3 4,361,661, issued Nov. 30, 1982
Appeal 2010-008057
Application 11/152,984

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Claim 29 stands rejected under 35 U.S.C. § 103 over these same references
with admitted prior art (APA) (Spec. paras. [0006]-[0007]).
The Examiner has withdrawn the rejections under 35 U.S.C. § 112,
first and second paragraphs of all the claims (Ans. 2).
B. DISCUSSION
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
After review of the respective positions provided by Appellants and
the Examiner, we agree with Appellants that the Examiner has not met the
burden in this case for substantially the reasons set forth by Appellants in
their Briefs. We add the following for emphasis.
The Examiner relies upon Jackson to establish that it would have been
obvious to add silane coupling agents to the combined prior art of Chopra
and McCullough so as to result in the limitation that the “fillers comprise
surface functional groups that covalently bond said high thermal
conductivity fillers directly to said host highly structured resin network”
(Claim 45). Appellants point out that Jackson, as well as the other
references relied upon, are “wholly silent as to [this] subject limitation”
(App. Br. 7; see also Reply Br. 4). Appellants state that the coupling agents
of Jackson are intermediate structures that would not result in a direct
covalent bond as claimed (App. Br. 7; also Reply Br. 4), and further that
“coupling agents may just as well function by forming an ionic bond . . . as
Appeal 2010-008057
Application 11/152,984

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well as by Van der Waals or attractive molecular forces, and not necessarily
by forming covalent bonds (Reply Br. 5; emphasis in original).
An inherent characteristic must be inevitable, and not merely a
possibility or probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA
1981). The Examiner merely concludes that providing “a workable amount
of covalent bond forming coupling agents” would have been obvious (Ans.
5) and that “coupling agents forms strong covalent bonds” (Ans. 7). The
Examiner has not established with any evidence or provided any explanation
on this record why the use of the silane coupling agents of Jackson in the
combined prior art of Chopra and McCullough would inevitably, or
necessarily, result in a direct covalent bond as claimed.
For the foregoing reasons, and those presented by Appellants in the
Briefs, the Examiner has not satisfied the initial burden of presenting a prima
facie case of obviousness.
In light of these circumstances, a preponderance of the evidence
supports the Appellants’ position, and the § 103(a) rejection is reversed.
C. DECISION
The decision of the Examiner is reversed.
REVERSED

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