Mika Silvennoinen et al.

Patent Trials and Appeals Board

Dec 30, 2019

15133391 - (D) (P.T.A.B. Dec. 30, 2019)

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.
15/133,391 04/20/2016 Mika Silvennoinen OYAB-36 7908
129925 7590 12/30/2019
ABB Inc.
Taft, Stettinius & Hollister LLP
One Indiana Square
Suite 3500
Indianapolis, IN 46204-2023
EXAMINER
HOFFBERG, ROBERT JOSEPH
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
12/30/2019 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):
taft-ip-docket@taftlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKA SILVENNOINEN, JORMA MANNINEN, and
JUHA MARTINMAA
Appeal 2018-008609
Application 15/133,391
Technology Center 2800
Before LINDA M. GAUDETTE, MONTÉ T. SQUIRE, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11 and 13–20.
We have jurisdiction. 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as ABB Technology
OY. Appeal Br. 2.
Appeal 2018-008609
Application 15/133,391

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CLAIMED SUBJECT MATTER
The claims are directed to power electronic assemblies and methods
of producing such assemblies. See, e.g., Claims 1 and 14. Claim 1 is
illustrative of the claimed subject matter, and is reproduced below with key
limitations at issue in this appeal italicized:
1. A power electronic assembly comprising a power
electronic module having multiple of semiconductor power
electronic switch components, the power electronic module
comprising a base plate,
the power electronic assembly comprising further a
cooling arrangement for cooling the power electronic module,
the cooling arrangement comprising a cooling surface adapted to
be attached against the base plate of the power electronic module,
wherein
the cooling arrangement comprises further one or more
heat pipes formed in the cooling surface for spreading the heat in
the cooling arrangement and removing the heat from the cooling
arrangement, and
wherein the power electronic assembly comprises further
a carbon based material layer arranged between the base p[l]ate
of the power electronic module and the cooling surface of the
cooling arrangement, the carbon based material layer being
adapted to spread the heat generated by the semiconductor power
electronic switch components and to transfer the heat from the
power electronic assembly to the cooling arrangement.
REJECTIONS
On appeal, the Examiner maintains the anticipation rejection of claims
1, 3, 5–7, 14, and 16 under 35 U.S.C. § 102(a)(2) over Hammel.2 Ans. 3;
Final Act. 9–11. The Examiner also maintains obviousness rejections of

2 Hammel, US 8,559,475 B2, issued October 15, 2013.
Appeal 2018-008609
Application 15/133,391

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remaining claims 2, 4, 8–11, 13, 15, and 17–20 under 35 U.S.C. § 103 over
Hammel combined with other prior art. Ans. 3–4; Final Act. 11–20.
OPINION
We address the claims separately to the extent they are so argued by
Appellant.
Claim 13
The Examiner finds that Hammel discloses the structure recited in
claim 1. Final Act. 9–10. Appellant disagrees, and asserts the Examiner
erred by finding Hammel discloses “a base plate,” “one or more heat pipes
formed in the cooling surface,” and “a carbon based material layer arranged
between the base plate . . . and the cooling surface of the cooling
arrangement.” Appeal Br. 6–9. We address these arguments in turn.
“a base plate”
To evince the recited “base plate,” the Examiner relies on Hammel’s
element 2 which is described as “a ceramic-metal substrate” that is “made of
a ceramic layer” that is “provided on both sides with a metallization 4 or 5”
“by copper foils, which are applied full-surface to the respective top surface
side of the ceramic layer 3 by means of [direct copper bond] technology.”
Hammel 4:57–62; Final Act. 9.
Appellant asserts this finding is erroneous because Hammel’s
ceramic-metal substrate is not a “base plate” because it is “not a metallic
plate.” Appeal Br. 6. Appellant asserts the Specification sets forth the

3 Appellant argues the anticipation rejection as a group. Appeal Br. 6–9.
Pursuant to our rules, we select claim 1 for disposition of the appeal of this
rejection. 37 C.F.R. § 41.37(c)(1)(iv).
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structure and function of the base plate, noting that power electronic module
components “are typically mounted on a substrate that is thermally
connected to the base plate of the module. The base plate is a metallic piece
integrated to the bottom of the module and it is intended to be attached to a
surface of a cooling member, such as heat sink.” Id. (citing Spec. 1:18–22).
Appellant also asserts Hammel’s substrate is not a “base plate” because
“Hammel’s substrate/cooling element attachment suffers from the problem
of different thermal expansion coefficients,” and “the problems presented by
the two alternative designs of Hammel and the present inventions are
distinguishable.” Id. at 6–7. Appellant also alleges that the Examiner
applied an unreasonably broad claim construction of the term “base plate” in
view of the Specification’s identification of base plates as metallic, and
because “base plates are understood in the art as being metallic.” Reply Br.
2.
We discern no persuasive merit in Appellant’s arguments regarding
the claimed “base plate.” First, we are unpersuaded by Appellant’s
argument that the Examiner’s claim construction of “base plate” is
unreasonably broad in view of the Specification and how this term would be
understood by the skilled artisan. While the “Background of the Invention”
portion of the Specification indicates the base plate is metallic, another
portion of the Specification is not as restrictive as to the base plate’s
makeup. See Spec. 5:2–3 (“The base plate is [an] integral part of the module
and is typically metallic to enable to transfer heat via the base plate.”
(emphasis added)). Moreover, we observe that Appellant points us to no
special definition of the term “metallic” in the Specification. Appeal Br. 6–
9; Reply Br. 2–3. We, therefore, apply the ordinary usage of the term
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“metallic,” noting it may be defined as “containing or yielding metal.”4
Thus, the term “metallic” in its ordinary and customary usage does not
necessarily describe an item that is 100% metal. Here, Hammel’s “ceramic-
metal substrate 2” undisputedly contains metal in the form of “copper foils,
which are applied full-surface to the respective top surface side of the
ceramic layer 3.” Hammel, 2:57–61.
We also are unpersuaded by Appellant’s assertions of purported
functional differences between Hammel and the claimed device. As
correctly noted by the Examiner, “Hammel anticipates the claimed invention
because Hammel discloses all claimed elements . . . and the structural
relationships between claimed elements that the Appellant’s claimed
invention requires.” Ans. 5.
“one or more heat pipes formed in the cooling surface”
The Examiner relies on Hammel’s elements 11.1 and 11.2, defining
pipe 11, to evince the “one or more heat pipes formed in the cooling
surface.” Final Act. 9. Appellant disputes this finding, asserting that
Hammel’s heat pipe “extends through” the cooling arrangement, rather than
being “formed in” the cooling surface as claimed. Appeal Br. 7; see also
Reply Br. 3 (asserting Hammel’s passage 11 “passes ‘through’ the middle of
the cooling element”).
This argument is not persuasive because Appellant does not embellish
this argument with an explanation regarding how––precisely––Hammel’s
heat pipe 11 is not “formed in” the cooling surface, and thus structurally
different than the claimed assembly. To the extent Appellant is arguing that

4 Dictionary.com (accessed Dec. 11, 2019),
https://www.dictionary.com/browse/metallic.
Appeal 2018-008609
Application 15/133,391

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the term “formed in” must mean “at the surface,” i.e., not “through” the
cooling surface, the Specification, at page 5, is informative on this point:
According to the present invention, the cooling
arrangement comprises one or more heat pipes. The heat pipes
are formed in the cooling surface of the cooling arrangement for
spreading the heat in the cooling arrangement and for removing
the heat.
At least one of the heat pipes is preferably arranged at the
surface of the cooling surface, that is, the surface of the heat pipe
forms part of the cooling surface of the cooling arrangement.
The at least one heat pipe is thus visible in the surface of the
cooling arrangement. As it is preferred to have the cooling
surface even, the at least one heat pipe is formed such that the
surface of the heat pipe is even with the rest of the surface leaving
no gaps that could hinder the thermal connection.
Spec. 5:10–20 (emphases added).
Thus, although the Specification indicates that a heat pipe may be
“formed in” the cooling surface by being arranged preferably “at the surface
of the cooling surface,” such an arrangement is not necessary for the heat
pipe to be “formed in” the cooling surface. Indeed, claim 5, dependent from
claim 1, further requires “wherein at least one of the one or more heat pipes
is arranged at the surface of the cooling surface of the cooling element.”
Appeal Br. 13 (Claims Appendix, emphasis added). See 35 U.S.C. § 112(d)
(“[A] claim in dependent form shall contain a reference to a claim
previously set forth and then specify a further limitation of the subject matter
claimed.”).
“a carbon-based material layer arranged between the base plate . . . and the
cooling surface of the cooling arrangement”
The Examiner finds that Hammel’s layer 13 meets this limitation.
Final Act. 9. Appellant’s argument regarding this limitation essentially
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Application 15/133,391

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relies on Appellant’s unpersuasive argument regarding the base layer––
namely, “Hammel does not disclose a carbon based material layer between a
base plate and a cooling surface” because “Hammel does not disclose a base
plate.” Appeal Br. 8. Notably, Appellant does not dispute the Examiner’s
finding that Hammel discloses a carbon based material layer, but rather
makes an assertion about the placement of such a layer. Id. This argument
fails to reveals reversible error in the Examiner’s finding that Hammel
discloses the recited “base plate” [Hammel, element 2], “cooling
arrangement” [Hammel, element 11, defined by elements 11.1 and 11.2],
and a carbon based material layer therebetween [Hammel, element 13].
Final Act. 9; Hammel, Fig. 5.
Therefore, for these reasons and those provided by the Examiner in
the Final Action and Answer, we sustain the rejection of claim 1, as well as
the rejections of claims 3–11 and 13–20 not separately argued.
Claim 2
Claim 2, dependent from claim 1, requires the carbon-based material
layer to be “a separate layer of natural graphite, pyrolytic graphite or
synthetic graphite.” The Examiner finds that Hammel does not disclose
such a carbon-based material and relies on Jang for this disclosure. Final
Act. 12. The Examiner determines the skilled artisan would have been
motivated to modify Hammel’s layer 13 with the graphite of Jang to achieve
“a corrosion-resistant coating” that may also “increase contact resistance.”
Id.
Appellant argues that Hammel does not disclose a carbon based
material layer that is a “separate layer” as recited in claim 2. Appeal Br. 9.
For support, Appellant points to Hammel’s disclosure that discusses how
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Application 15/133,391

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layer 13 is applied via “a suitable surface process” thus making it “part of
the cooling element 11” and not a “separate layer.” Id. at 9–10.
Appellant’s argument is not persuasive. As correctly noted by the
Examiner, Hammel’s “Figure 5 clearly illustrates element 13 . . . as a
separate layer because element 13 is distinct from Hammel’s cooling
element 11.” Ans. 8. Furthermore, Hammel assigns different element
numbers to compensating layer 13 and cooling element 11, and expressly
states that layer 13 “is applied . . . directly to the cooling element 11,” which
further supports layer 13 as being distinct from element 11. Hammel, 4:23–
24 (emphasis added).
For these reasons and those provided by the Examiner, Appellant does
not persuade us of reversible error in the rejection of claim 2.
CONCLUSION
We affirm the Examiner’s rejections of claims 1–11 and 13–20.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 3, 5–7,
14, 16
102(a)(2) Hammel 1, 3, 5–7,
14, 16

2, 19 103 Hammel, Jang  2, 19
17, 18, 20 103 Hammel, Jang, Zarrabi 17, 18, 20
4 103 Hammel, Zarrabi 4
8, 9 103 Hammel, Annacchino 8, 9
10 103 Hammel, Buffenbarger 10
11 103 Hammel, Akita 11
13 103 Hammel, Silvennoinen 13
15 103 Hammel, Schulz-Harder 15
Overall
Outcome
1–11, 13–
20

Appeal 2018-008609
Application 15/133,391

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

Notice of References Cited

Application/Control No.
15/133,391
Applicant(s)/Patent Under
Reexamination

Examiner

Art Unit

Page 1 of 1

U.S. PATENT DOCUMENTS

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1 A US- 1 1
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K US-
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M US-
FOREIGN PATENT DOCUMENTS

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NON-PATENT DOCUMENTS
* Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)

U

Dictionary.com (accessed Dec. 11, 2019), https://www.dictionary.com/browse/metallic.

V

W

X

*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.

U.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
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