Ex Parte Zhang et al

Patent Trial and Appeal Board

Jan 3, 2014

11421825 (P.T.A.B. Jan. 3, 2014)

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.
11/421,825 06/02/2006 Fan Zhang 2006P03304US 3174
28524 7590 01/03/2014
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
PAPE, ZACHARY
ART UNIT PAPER NUMBER
2835
MAIL DATE DELIVERY MODE
01/03/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FAN ZHANG
and ROBERT E. HENRY, JR.
____________________

Appeal 2011-012312
Application 11/421,825
Technology Center 2800
____________________

Before ROMULO H. DELMENDO, GEORGE C. BEST, and
BRIAN P. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/421,825

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final Office Action
rejecting1 claims 1, 3-7, and 10-19 under 35 U.S.C. § 103(a).2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
BACKGROUND
Appellants’ invention is directed to systems, devices, and methods for
increasing the current carrying capacity of a “basepan” (electrical panel)
from a first predetermined level (e.g. 200 amps) to a second predetermined
level (e.g. 400 amps). (Spec. Title, Fig. 2, ¶¶ 4, 51, and 89-933).
Appellants’ system uses a “banding stud” to “releasably attach” (e.g., uses a
nut and bolt to attach) a heat sink and/or connection spacer to the electrical
panel. (Id.). A heat sink and/or connection spacer increases surface area for
heat dissipation thereby increasing current carrying capacity of the electrical
panel. (Id.).
Representative claim 1 on appeal is reproduced below from the
Claims Appendix (emphasis added):
1. A system comprising:
a heat sink;
a connection spacer; and
a basepan comprising a banding stud, said banding stud releasably
attaching said heat sink and said connection spacer to said basepan,
said heat sink configured to increase a current carrying capacity of a

1 Final Office Action mailed November 2, 2010.
2 Appeal Brief filed April 27, 2011 (“App. Br.”).
3 Specification filed June 2, 2006, as amended July 30, 2008 (“Spec.”).
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system associated with said basepan from a first predetermined level
to a second predetermined level.

REJECTIONS
The Examiner maintains the following rejections:4
Claims 1, 3-6, and 12-19 stand finally rejected under 35 U.S.C.
§ 103(a) as obvious over Rose5 in view of Webber.6 (Ans. 4). Claims 10
and 11 stand finally rejected under 35 U.S.C. § 103(a) as obvious over Rose
in view of Webber and further in view of the Examiner’s Official Notice.
(Id. at 7). Claim 7 stands rejected under 35 U.S.C. § 103(a) as obvious over
Rose in view of Webber and further in view of Stolz.7
ANALYSIS
The determinative issue on appeal is whether the Examiner has erred
in finding that Rose discloses a “heat sink” as defined and claimed by
Appellants. The Examiner cites Rose Figure 7 (and Figures 1 and 20 by
implication) and states the bus bar (400) in Rose is Appellants’ claimed heat
sink. (Ans. 4, 5, 8). Appellants contend the Examiner erred because Rose
consistently and repeatedly describes feature 400 as a bus bar and does not
disclose or suggest any type of heat sink function. (App. Br. 5, 7; Rose Col.
7:1-2, Col. 9:66-Col. 10:1, Col. 12:16-49, and Col. 13:19). Appellants
explain that bus bars are conventional power terminals to which multiple
circuits are connected through circuit breakers or fuses. (App. Br. 5). Bus

4 Examiner’s Answer filed June 3, 2011(“Ans.”).
5 US 5,969,937 to Rose et al. issued October 19, 1999 (“Rose”).
6 US 5,450,282 to Webber et al. issued September 12, 1995 (“Webber”).
7 US 6,226,184 to Stolz et al. issued May 1, 2001 (“Stolz”).
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bars connect line power supply with distribution circuit breakers on an
electrical panel, and Appellants argue a bus bar is not the claimed heat sink.
(Id.). Appellants further argue the Examiner erred by failing to cite any
portion of Rose or Webber to support the Examiner’s finding that the
limitation “said heat sink configured to increase a current carrying capacity
of a system associated with said basepan from a first predetermined level to
a second predetermined level” is disclosed by the cited prior art. (Id. at 7).
The Examiner acknowledges the bus bar terminology of Rose but
finds that such bus bars are “inherently” made of a conductive material
which is “inherently thermally conductive,” thereby rendering the bus bar
(400) of Rose a “heat sink” as claimed by Appellants. (Ans. 4, 5, 8). The
Examiner further finds Rose’s bus bar (400) will carry current through the
basepan and therefore will (inherently) increase the current carrying capacity
“from a first predetermined level (i.e. 0 amps when the heat sink (400) is
absent) to a second predetermined level (i.e. 20 amps when the heat sink
(400) is present and in use).” The Examiner cites Rose’s bus bar (400) to
support these findings and relies on the doctrine of inherent disclosure.
Appellants act as their own lexicographer and define “heat sink” as “a
device that absorbs and/or dissipates heat generated by a system” and a “bus
bar” as “a common electrical power terminal to which multiple circuits are
electrically coupled through either fuses or circuit breakers.” (Spec. 51, 28
respectively). Appellants illustrate the difference between a heat sink and a
conventional bus bar in Figures 2, 4, and 7 and the associated descriptions in
the Specification. (Spec. Figs. 2, 4, 7, and ¶¶ 89-100). Referring to Figures
2 and 7, a heat sink and bus bar are thermally coupled such that heat can
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Application 11/421,825

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flow between them. (Id.) The heat sink adds substantial surface area to
permit more efficient heat flow away from the circuit breakers thereby
increasing the current carrying capacity of the system. (Id.).
We agree with Appellants; Rose has not been shown to inherently
describe or disclose bus bar (400) as a “heat sink” absorbing and/or
dissipating heat generated by the circuit breakers. Appellants’ claimed heat
sink must provide a heat absorption/dissipation function as recited in
Appellants’ express definition of “heat sink.” Appellants distinguish a heat
sink from a bus bar in their figures, descriptions, and definitions, but the
Examiner does not address these distinctions and instead relies on the
doctrine of inherent disclosure to find the claim limitation in Rose. See In re
Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations omitted). Rose,
however, discloses nothing more than a conventional bus bar, which does
not support the Examiner’s finding that a heat sink as defined by Appellants
is inherently disclosed in Rose. While the inherent disclosure of a prior art
reference must be considered, “[t]he legal conclusion of obviousness must
be supported by facts . . . . The Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not, because it may doubt
that the invention is patentable, resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies in its factual basis.” In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967); see also KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)). We conclude Appellants have identified prejudicial
error—the Examiner has not cited sufficient support in the record with
respect to Appellants’ claimed “heat sink” to establish a prima facie case of
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obviousness. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (citing
Ex parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential).
We also agree with Appellants the bus bar (400) in Rose has not been
shown to inherently “increase a current carrying capacity of a system
associated with the basepan from a first predetermined level to a second
predetermined level,” as recited in independent claims 1, 15, and 16. (Reply
Br. 3). The Examiner’s rationale, that current carrying capacity is increased
when a bus bar is present in comparison to a system where the bus bar is
absent, is not persuasive. See KSR Int’l Co. v. Teleflex, 550 U.S. at 418
(“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” (citation
omitted)). If the bus bar is absent the circuit breakers will not receive any
current from the line power supply and the system will not function. Even
so, the circuit breaker will still have the same current carrying capacity as
when the bus bar is present. (Reply Br. 3). Appellants’ Specification, in
contrast, describes the claimed increased current carrying capacity with
multiple examples, such as an increase from a first predetermined level of 20
amps to a second predetermined level of 40 amps. (Spec. ¶ 91). Therefore,
we conclude the bus bar (400) in Rose has not been shown to increase
current carrying capacity of the system from a first predetermined level to a
second predetermined level as claimed by Appellants, and Appellants have
satisfied their burden of establishing error in the Examiner’s prima facie
case obviousness.
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DECISION
For the above reasons, the Examiner’s rejection of claims 1, 3-7, and
10-19 is reversed.

REVERSED

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