Manish Arora et al.

Patent Trials and Appeals Board

Jan 7, 2021

2020000467 (P.T.A.B. Jan. 7, 2021)

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.
14/194,701 03/01/2014 Manish Arora 120674-US-NP 1184
163037 7590 01/07/2021
Advanced Micro Devices, Inc.
c/o Kennedy Lenart Spraggins LLP
301 Congress Avenue
Suite 1350
Austin, TX 78701
EXAMINER
CLARKE, ADAM S
ART UNIT PAPER NUMBER
2867
NOTIFICATION DATE DELIVERY MODE
01/07/2021 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):
eofficeaction@appcoll.com
kate@klspatents.com
office@klspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANISH ARORA and NUWAN JAYASENA
Appeal 2020-000467
Application 14/194,701
Technology Center 2800
Before TERRY J. OWENS, JEFFREY T. SMITH, and
DEBRA L. DENNETT, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6–13, and 15–21. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant identifies the real party in interest as Advanced Micro
Devices, Inc. (Appeal Br. 1).
Appeal 2020-000467
Application 14/194,701

2
CLAIMED SUBJECT MATTER
The claims are directed to a circuit board with phase change material.
Claim 1 and 10, reproduced below, are illustrative of the claimed subject
matter:
1. An apparatus, comprising:
a circuit board having a first means for holding a phase
change material;[2] and
plural pins projecting into the circuit board to make thermal
contact with the first means for holding the phase change
material and projecting out of the circuit board to make thermal
contact with a component configured to be mounted on the
circuit board.

10. A method of manufacturing, comprising:
providing a circuit board;
forming an internal space in the circuit board; and
after forming the internal space positioning a phase change
material in the internal space to contact a surface of the circuit
board.

REFERENCES
The prior art relied upon by the Examiner is:

2 Such means include the corresponding structure disclosed in the
Appellants’ Specification and equivalents thereof. See In re Donaldson Co.,
16 F.3d 1189, 1195 (Fed. Cir. 1994). The corresponding structure in the
Appellant’s Specification is phase change material pockets (Spec. ¶¶ 28, 29).

Appeal 2020-000467
Application 14/194,701

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Name Reference Date
Im US 2012/0280382 A1 Nov. 8, 2012
Gavillet US 2014/0369005 A1 Dec. 18, 2014
REJECTION
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–4, 6–13, 15–21 103 Im, Gavillet
OPINION
We need address only the independent claims (1, 10, and 18).
Claims 1 and 18
Claims 1 and 18 require pins projecting into a circuit board to make
thermal contact with a means for holding a phase change material (claim 1)
or with a phase change material pocket (claim 18), and projecting out of the
circuit board to make thermal contact with a component on the circuit board.
Im discloses a semiconductor package comprising, between a
substrate (100) and a chip (110), an under filler (140) having scattered
therein temperature control members (192) including phase change materials
(M1, M2) (¶ 84; Fig. 6C).
Gavillet discloses an electrical component thermal management
device (2) comprising a monocrystalline silicon support (14) having
cavities (16) enclosed by a cover (18) and “comprising cells containing a
solid/liquid phase-change material [(12)], where the walls [(10)] of the cells
are formed by carbon nanotubes [(8)], and where the nanotubes [(8)] form a
thermal short-circuit between the heat source [(SC)] and the thermal
dissipator [(SF)]” (¶¶ 10, 49, 50; Figs. 1A, 2A, 2B). The thermal
management device (2) can include through-silicon vias (TSVs) (19)
between the support (14) and the heat source (SC) (¶ 60; Fig. 1C). “The
Appeal 2020-000467
Application 14/194,701

4
thermal management device [(2)] is transferred on to an electronic
component by microelectronic techniques well known to those skilled in the
art” (¶ 130).
The Examiner finds that “Gavillet teaches carbon nanotubes [(]as a
heat transfer pin) projecting into the circuit board to make thermal contact
with the first means for holding the phase change material (Gavillet; Fig 2A',
Element 12) and projecting out of the circuit board to make thermal contact
with a component configured to be mounted on the circuit board (Gavillet;
Fig 2A', Element 18 and Par 0123)” (Final Rej. 5).
Gavillet’s nanotubes (8) project into and out of a monocrystalline
silicon substrate (14), not into and out of a printed circuit board (Fig. 2B).
The Examiner finds that Gavillet’s monocrystalline silicon
support (14) “is the substrate for the hot source, Fig 1C, Element SC, which
can be an electronic chip, as stated in paragraphs [0059] and [0060]”
(Ans. 4), “[a]s several electronic chips, Fig 1C, Element SC, are mounted to
the substrate and electrically connected, this substrate can be considered a
printed circuit board to one of ordinary skill in the art” (id.), and “printed
circuit boards are known to one of ordinary skill in the art to use
monocrystalline silicon in their construction (id.).3
Gavillet’s hot source (SC) can be an electronic system and is in
contact with the first face (4) of a monocrystalline silicon support (14)
having cavities (16) containing carbon nanotubes (8) and phase change
material (12) (¶¶ 46–50; Fig. 1A). Having a face (4) in contact with an

3 The Examiner’s reliance upon two additional references in support of the
last of these findings (Ans. 4) is improper because those references are not in
the statement of the rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3
(CCPA 1970).
Appeal 2020-000467
Application 14/194,701

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electronic system does not make the monocrystalline silicon support (14) an
electronic system. Also, even if printed circuit boards use monocrystalline
silicon in their construction, that does not make the monocrystalline silicon a
printed circuit board.
The Examiner finds that Gavillet’s “electronic chips has [sic] TSVs
(Through-silicon Vias) connecting them electronically through the
support 14, as stated in paragraph [0060]” (Ans. 4).
Gavillet discloses that “TSV (Through-Silicon Via)
interconnections 19 are produced between the hot sources, for example
microelectronic devices of the electronic chip type, and the heat exchange
device” (¶ 60). The Examiner does not establish that Gavillet’s disclosure
that the TSVs are between hot sources and a heat exchange device would
have indicated to one of ordinary skill in the art that the TSVs function as
conductors of electricity rather than heat.
Claim 10
Claim 10 requires forming an internal space in a circuit board and
then positioning a phase change material in the internal space to contact a
surface of the circuit board.
The Examiner finds that “Gavillet teaches forming an internal space in
the circuit board (Gavillet; Fig 1A, Element 16, Par 0050 and 0110)” (Final
Rej. 8).
Gavillet forms an internal space (16) in a monocrystalline silicon
support (14), not in a circuit board (¶ 49; Figs. 2A, 2B).
CONCLUSION
The Examiner has not set forth a factual basis that is sufficient to
support a conclusion of obviousness of the Appellant’s claimed invention.
Appeal 2020-000467
Application 14/194,701

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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.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–13,
15–21
103 Im, Gavillet 1–4, 6–13,
15–21
Overall
Outcome
1–4, 6–13,
15–21

REVERSED