Ex Parte Solomon et al

Board of Patent Appeals and Interferences

Mar 29, 2010

10901815 (B.P.A.I. Mar. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARK SOLOMON and KEVIN MASSARO
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Appeal 2009-002394
Application 10/901,8151
Technology Center 2800
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Decided: March 29, 2010
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Before JOHN C. MARTIN, MARC S. HOFF, and CARLA M. KRIVAK,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Hewlett-Packard Development Company, L.P.
Appeal 2009-002394
Application 10/901,815

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-32. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention relates to thermal energy dissipation for a
portable hard disk drive device (¶ 0001). The portable drive’s enclosure
assembly has at least one thermal dissipation opening formed therein
(¶ 0002). A cover is disposed over the at least one thermal dissipation
opening, and is adapted to convectively dissipate thermal energy received
from the drive via the opening (¶ 0003).
Claim 1 is exemplary of the claims on appeal:
1. A portable drive system, comprising:
an enclosure assembly disposed about a drive device, the enclosure
assembly having at least one thermal dissipation opening formed in a lid
portion of the enclosure assembly; and
a cover disposed over the at leas one thermal dissipation opening, the
cover adapted to convectively dissipate thermal energy received via the at
least one thermal dissipation opening from the drive device.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Koyanagi US 5,491,608 Feb. 13, 1996
Shimada US 6,283,438 B1 Sep. 4, 2001
Lin US 2004/0174673 A1 Sep. 9, 2004
Claims 1-6, 8-18, and 20-32 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Shimada in view of Lin.
Claims 7 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shimada in view of Lin and Koyanagi.
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Application 10/901,815

Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed December 3, 2007), the Reply Brief (“Reply Br.,” filed
April 22, 2008) and the Examiner’s Answer (“Ans.,” mailed March 7, 2008)
for their respective details.

ISSUE
Appellants argue that the Examiner erred in rejecting the claims
because placing the heat sink of Lin over the opening of Shimada as
proposed would provide little if any heat transfer, perhaps even impeding
heat dissipation through the opening (App. Br. 5-6). Appellants also contest
the Examiner’s rationale that the combination would dissipate thermal
energy away from the drive device of Shimada in lieu of a fan, arguing that
Shimada does not contain a fan (App. Br. 6).
Appellants’ contentions present us with the following issue:
Did the Examiner err in finding that the combination of Shimada and
Lin teach or suggest a cover disposed over the thermal dissipation opening
formed in a lid portion of the enclosure assembly, the cover adapted to
convectively dissipate thermal energy received via the opening from the
drive device?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, the invention concerns thermal energy
dissipation for a portable hard disk drive device (¶ 0001). The portable
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Application 10/901,815

drive’s enclosure assembly has at least one thermal dissipation opening
formed therein (¶ 0002). A cover is disposed over the at least one thermal
dissipation opening, and is adapted to convectively dissipate thermal energy
received from the drive via the opening (¶ 0003).
Shimada
2. Shimada teaches a space Hr in case H for dissipating heated air
from the cooling concave portion Ra provided on the shock absorbing holder
unit SAHB (col. 16, ll. 33-36).
Lin
3. Lin teaches a heat conducting seal 40 disposed over hard disk
drive 20, and heat sink 80 disposed over the heat conducting seal and over
open center 64 of the sound absorbing frame 60 (¶¶ 0016-0018).

PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
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ANALYSIS
CLAIMS 1-6 AND 8-10
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that the Examiner’s proposed modification of
Shimada to include a cover over the thermal dissipation opening, as taught
by Lin, is improper because placing the heat sink 80 of Lin over the opening
Hr of the Shimada device would provide little if any heat transfer and
possibly impede heat dissipation, whereas Shimada teaches that opening Hr
is ‘for dissipating heated air’ (App. Br. 5-6; see FF 2).
We disagree with Appellants’ position. Initially, we observe that
representative claim 1 does not recite any quantitative dimension to the
amount of thermal energy to be dissipated through the use of the claimed
cover. Second, we agree with the Examiner’s finding that Lin teaches an
enclosure assembly for enclosing a disk drive device, having a thermal
dissipation opening and a cover disposed thereover (Ans. 4).
Figure 8 of Shimada is reproduced below:

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Application 10/901,815

Figure 8 is a perspective view showing a shock absorbing holder unit
for a hard disk drive, including a thermal dissipation opening Hr.
Figure 1 of Lin is reproduced below:

Figure 1 of Lin is an exploded perspective view of a hard disk drive
heat sink and sound absorbing frame.
Lin teaches that heat conducting seal 40 is disposed over (as well as
under) hard disk drive 20, and heat sink 80 is disposed over the heat
conducting seal and over open center 64 of the sound absorbing frame 60
(FF 3). We agree with the Examiner’s conclusion that it would have been
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obvious to modify Shimada to include a heat sink such as that taught by Lin
disposed over thermal dissipation opening Hr of Shimada, because the heat
sink of Lin would propagate heat away from the hard disk drive (Ans. 9).
The Examiner’s proposed modification of Shimada in view of Lin would
thus be adapted to convectively dissipate (i.e., be capable of dissipating)
thermal energy received via the thermal dissipation opening Hr of Shimada,
as recited in representative claim 1. Appellants’ allegations that the proposed
modification would impede heat dissipation, and thus that the Examiner is
using improper hindsight reconstruction (App. Br. 6), are not supported by
evidence, and thus are not persuasive to show that the Examiner’s rejection
is erroneous.
Last, Appellants’ remarks that the Examiner proposes to add a fan to
the device of Shimada and then replace such a fan with a heat sink (App. Br.
6) are not germane to the rejection of record, because the Examiner’s
rejection does not propose to add a fan to Shimada.
As a result, we find no error in the Examiner’s combination of
Shimada and Lin to arrive at the invention recited in claims 1-6 and 8-10,
and we will sustain the § 103 rejection.
CLAIMS 11-18 AND 20-32
Independent claims 11, 16, 25, and 29 recite limitations nearly
identical to those recited in claim 1, directed to a “thermal dissipation
opening” and a cover disposed thereover adapted to convectively dissipate
thermal energy received via the opening from the drive device. Appellants
present the same arguments for the patentability of independent claims 11,
16, 25, and 29 that were presented with respect to claim 1. As discussed
supra, we do not consider those arguments to be persuasive to show that the
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Examiner erred. Therefore, we will sustain the rejection of claims 11-18 and
20-32 under § 103, for the same reasons expressed with respect to claim 1,
supra.
CLAIMS 7 AND 19
Appellants present no separate argument for the patentability of
claims 7 and 19, asserting that these claims are patentable for the same
reasons as parent claims 1 and 16 respectively. Therefore, because we
sustain supra the rejection of parent claims 1 and 16, we will also sustain the
rejection of claims 7 and 19 under § 103, for the same reasons expressed
with respect to parent claims 1 and 16 supra.

CONCLUSION
The Examiner did not err in finding that the combination of Shimada
and Lin teaches or suggests a cover disposed over the thermal dissipation
opening formed in a lid portion of the enclosure assembly, the cover adapted
to convectively dissipate thermal energy received via the opening from the
drive device.

ORDER
The Examiner’s rejection of claims 1-32 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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AFFIRMED

ELD

HEWLETT-PACKARD COMPANY
INTELLECTUAL PROPERTY ADMINISTRATION
3404 E. HARMONY ROAD
MAIL STOP 35
FORT COLLINS, CO 80528
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