Ex Parte Yoshida et al

Patent Trial and Appeal Board

Feb 8, 2017

12293469 (P.T.A.B. Feb. 8, 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.
12/293,469 09/18/2008 Tadafumi Yoshida Q110041 1253
23373 7590 02/10/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
FLANIGAN, ALLEN J
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
02/10/2017 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TADAFUMI YOSHIDA, YUTAKA YOKOI,
and HIROSHI OSADA
Appeal 2016-005185
Application 12/293,469
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
BRENT M. DOUGAL, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 8, and 17 as unpatentable under 35 U.S.C. § 103(a)
over Eisele (US 2005/0143000 Al, pub. June 30, 2005), Campbell
(US 7,184,269 B2, iss. Feb. 27, 2007), and Inoue (US 2006/0011332 Al,
pub. Jan. 19, 2006).1 We have jurisdiction under 35 U.S.C. § 6(b).2
We AFFIRM.
1 Claims 2—7 and 9—16 have been cancelled. Appeal Br. 9.
2 The instant case came before the Board for regularly scheduled oral
hearing on January 23, 2017. Citations to the hearing transcript are
abbreviated “Tr.”
Appeal 2016-005185
Application 12/293,469
THE INVENTION
Appellants’ invention relates to coolers for electric power converters.
Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A cooler for cooling an inverter comprising:
a substrate for disposing said inverter on one surface
thereof;
a heat radiating member fixed to an other surface of said
substrate;
a first flow path configuring member configuring a first
flow path formed to allow a first coolant to contact said heat
radiating member; and
a second flow path configuring member configuring a
second flow path formed to jet a second coolant toward said
other surface at an opposing region opposite to a region having
said inverter disposed therein, wherein said second coolant
jetted from said second flow path flows through a third flow
path toward an exhaust port as said second coolant cools said
substrate, and
within a region just below said inverter, said second flow
path and said third flow path are completely separated from said
first flow path, and
a coolant supply device is formed to supply said first
coolant to said first flow path and supply said second coolant to
said second flow path, and to supply said second coolant to said
third flow path via said second flow path.
OPINION
Claim 1 is an independent claim and claims 8 and 17 depend
therefrom. Claims App. Appellants argue claim 1 and acknowledge that
claims 8 and 17 stand or fall with claim 1. Appeal Br. 8.
The Examiner finds that Eisele discloses all of the elements of claim 1
except for having a first flow path that is completely separated from the
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Application 12/293,469
second and third flow paths and, in addition, the Examiner concedes that
Eisele is silent regarding whether its electronic component 5 is an inverter.
Final Action 5—8. The Examiner relies on Campbell as disclosing a cooler
where the second and third flow paths are completely separated from the
first flow path. Id. at 7. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to modify Eisele by separating the first flow path from the second and
third flow paths, as taught by Campbell. Id. According to the Examiner, a
person of ordinary skill in the art would have done this to increase the heat
exchange capacity of the cooler. Id.
The Examiner relies on Inoue as establishing that it is old and well
known in the art that a cooling device may be used for different types of
electronics components, including inverters. Id. (citing Inoue 144). The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time the invention was made to substitute an inverter for
Eisele’s electronic component 5. According to the Examiner, a person of
ordinary skill in the art would have done this for the cooler to maintain the
operability of an industrial motor. Id.
Appellants traverse the Examiner’s rejection by first arguing that
Eisele lacks a third flow path. Appeal Br. 6. Appellants argue that Eisele’s
area adjacent cooling plate 6 discharges to drain outlets 10, which
Appellants’ distinguish from a flow that is “toward an exhaust port.” Id.
In response, the Examiner explains that Eisele discloses three plates
aligned and spaced from each other to form a distributing device comprising
three distinctive flow paths. Ans. 7. With respect to Appellants’ “toward an
exhaust port” argument, the Examiner explains that, after striking the lower
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Application 12/293,469
surface of the substrate (cooling member 6), the coolant necessarily travels
through the third flow path en route to an exhaust port (outlet connector 15).
Id. at 8.
Claim 1 requires that second coolant jetted from the second flow path
flows through a third flow path toward an exhaust port “as said second
coolant cools” the substrate. Claims App. There is no limitation in claim 1
that restricts the distance or direction from the substrate to the exhaust port.
Id. The Examiner’s finding that Eisele’s third flow path flows “toward an
exhaust port” — “as [the] second coolant cools [the] substrate” is supported
by a preponderance of the evidence.
Next, Appellants argue against the combinability of Eisele with
Campbell to achieve the claimed invention. Appeal Br. 7. Appellants
contend that Campbell’s heat exchanger operates between the primary
coolant and the secondary coolant and not between the substrate and the
primary coolant. Id. Appellants contend that Campbell provides no
teaching or suggestion to provide a separated first flow at a location that
would be proximate to its cooling plate. Id. Appellants further argue that
Eisele’s drain outlets 10, which Appellants characterize as an “absolutely
imperative” feature, would need to be omitted in a combination of Eisele and
Campbell. Id. at 7—8. Appellants characterize this situation as a teaching
away from the combination of Eisele and Campbell. Id. at 8.
In response, the Examiner explains that motivation to combine the
references is furnished by Campbell’s disclosure of using two different
coolants having different properties or characteristics. Ans. 9 (citing
Campbell col. 7:41 — col. 9:8). According to the Examiner:
implementing two different coolants for the cooler allows one
of ordinary skill to optimize the heat dissipation effect for the
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Application 12/293,469
particular device needed to be cooled . . ., ultimately increasing
the heat dissipation capacity of the cooler.
Id.
Appellants’ argument is not persuasive. Eisele discloses two coolant
flow paths above and below plate 1 respectively. See Eisele, Figs 2 & 3.
Campbell teaches separated flow paths. See Campbell, Fig. 6. We are not
persuaded that separating Eisele’s flow paths above and below plate 1 so
that they each flow to respective exhaust ports requires more than ordinary
skill. In that regard, we discount Appellants’ argument that the
configuration of Eisele’s plate 1 with drain outlets 10 is “absolutely
imperative.” Appeal Br. 7—8.3 The obviousness inquiry does not ask
“whether the references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings of the prior art as a
whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). It is,
furthermore, well established that “it is not necessary that the inventions of
the references be physically combinable to render obvious the invention
under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). Stated
differently, combining the teachings of references does not involve an ability
to combine their specific structures. In re Nievelt, 482 F.2d 965, 968
(CCPA 1973).
We are persuaded by the Examiner’s reasoning that it would have
been considered advantageous to use separate flow paths with different
coolants, as taught by Campbell, as an improvement over Eisele’s routing of
a single coolant first through outlet openings 9 and then through drain
outlets 10. We consider such an improvement to be no more than the
3 During the oral hearing, Appellants conceded that the term “absolutely
imperative” was probably too strong. Tr. 12:14—22.
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Application 12/293,469
predictable use of prior art elements according to their established functions.
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). If a person of
ordinary skill can implement such a predictable variation, § 103 may bar its
patentability. Id.
We disagree with Appellants’ “teaching away” argument. A reference
does not teach away if it merely discloses an alternative invention but does
not “criticize, discredit, or otherwise discourage” investigation into the
invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed.Cir.2004).
Appellants have not directed us to any language in either Eisele or Campbell
that criticizes, discredits, or otherwise discourages investigation into the
Examiner’s proposed combination.
We have considered Appellants’ other arguments, including those
raised in the Reply Brief, and find them to be without merit.
We sustain the Examiner’s unpatentability rejection of claims 1, 8,
and 17.
DECISION
The decision of the Examiner to reject claims 1, 8, and 17 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)(l)(iv).
AFFIRMED
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