10529633 (P.T.A.B. Aug. 23, 2016)

Ex Parte Wort et al

Patent Trial and Appeal BoardAug 23, 2016

10529633 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 10/529,633 08/26/2005 Christopher John Howard Wort 22850 7590 08/25/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 266485US6PCT 1368 EXAMINER MILLER, DANIEL H ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 08/25/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER JOHN HOWARD WORT and CHARLES SIMON JAMES PICKLES Appeal2014-007647 Application 10/529,633 Technology Center 1700 Before CHUNG K. PAK, TERRY J. OWENS, and JENNIFER R. GUPTA, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 39--45, 47-56, and 78-82. We have jurisdiction under 35 U.S.C. Â§ 6(b). The Invention The Appellants claim a unit comprising a device requiring thermal management and a heat spreader. Claim 39 is illustrative: Claim 39: A unit, comprising a device requiring thermal management and a heat spreader, the heat spreader comprising: Appeal2014-007647 Application 10/529,633 a layer of CVD diamond grown onto a diamond loaded (DL) material, the DL material comprising a mass of diamond particles in a matrix and having a surface with exposed diamond particles on which the layer of CVD diamond is grown, wherein the matrix consists of a mixture of silicon, and silicon carbide, wherein the layer of CVD diamond is bonded to the exposed diamond particles of the DL material at least in part by epitaxy, and the grown layer of CVD diamond has an exposed surface with at least 30% of the exposed surface being occupied by diamond grains with a grain size of at least four times a thickness of the layer of CVD diamond. McCune Imai Sikka The References us 4,919,974 us 5,499,601 US 6,292,367B1 The Rejection Apr. 24, 1990 Mar. 19, 1996 Sept. 18, 2001 Claims 39--45, 47-56, and 78-82 stand rejected under 35 U.S.C. Â§ 103 over Sikka in vie\'l/ of !vfcCune and Imai. OPINION We reverse the rejection. We need address only the independent claims, i.e., claims 39 and 54. Those claims require a layer of chemical vapor deposition (CVD) diamond on a diamond loaded (DL) material comprising exposed diamond particles in a matrix consisting of silicon and silicon carbide. Sikka deposits onto a semiconductor wafer (30) a heat spreader which can be a diamond layer on a silicon carbide layer (col. 1, 11. 8-18; col. 2, 11. 27-32; col. 4, 11. 51-54). 2 Appeal2014-007647 Application 10/529,633 McCune deposits onto a tool substrate CVD diamond particles adhered by a metal binder (col. 3, 11. 3-30). The substrate can be Si or SiC and the binder can be Si (col. 3, 11. 52-59). Imai deposits onto a substrate, which can be a tool or a semiconductor and can be Si or SiC, vapor phase-deposited diamond particles in a metal matrix, where "[t]he metal should have the melting point of at most 1,400Q C., since the diamond become[s] graphite at about 1,400Q C." and can comprise silicon (col. 1, 11. 7-11; col. 5, 11. 20-24; col. 6, 11. 37-38; col. 8, 11. 56-59). The Examiner asserts that McCune's "substrate can be Si or SiC and can further comprise a binder forming around the particles of diamond and the binder consisting of Si and, meeting appellant's claims to a matrix consisting of Si or SiC or mixtures of the two" (Ans. 9). McCune's SiC substrate and diamond particle-containing Si binder are separate layers (col. 3, 11. 6-30, 52-59; col. 11, 11. 36-61; Fig. 3b). The Examiner does not point out, and it is not apparent, where the applied references disclose or would have suggested a diamond particle-containing matrix comprising SiC. Thus, the Examiner has not set forth a factual basis which is sufficient to support a prima facie case of obviousness of the Appellants' claimed invention. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art"). Accordingly, we reverse the rejection. 3 Appeal2014-007647 Application 10/529,633 DECISION/ORDER The rejection of claims 39--45, 47-56, and 78-82 under 35 U.S.C. Â§ 103 over Sikka in view of McCune and Imai is reversed. It is ordered that the Examiner's decision is reversed. REVERSED 4