Ex Parte Albert et al

Board of Patent Appeals and Interferences

Aug 4, 2009

10616018 (B.P.A.I. Aug. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROLAND ALBERT, ANDREAS REKOFSKY, CHRISTIAN
FRITZSCHE, and ULF SCHEUERER
____________

Appeal 2009-001486
Application 10/616,018
Technology Center 3600
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Decided: August 4, 2009
____________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Roland Albert et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1-5, 7-12, 14-16, and 18-22.
Claims 6, 13, and 17 have been canceled. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellants' claimed invention is directed to a control plate that allows
for adequate heat dissipation from heat-generating components.
Specification 3:4-7. Plastic control plate 1 has at least one channel 2
running through the plate for carrying a cooling medium. Specification
6:12, 22-23, fig. 1. Heat conduction body 3 is integrated into the plastic
control plate 1 such that the top surface of conduction body 3 is flush with
the top surface of plastic control plate 1. Specification 6:23-25, fig. 1.
Further, heat conduction body 3 is adjacent to channel 2 and in part forms
channel 2. Specification 20:22, fig. 1.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A plastic control plate for a hydraulic gearbox control
device in a motor vehicle, said plate comprising
- a single piece body having an opening with a bottom
wall having at least a partially flat area;
- at least one channel running through the plastic control
plate for carrying a cooling medium, and
- a heat conduction metal body plate having a top surface
and a bottom surface, said plate at least partially
integrated in the plastic control plate arranged directly
adjacent to the channel, wherein said heat conduction
metal body plate top surface is flush with a top surface of
the plastic plate and wherein said bottom surface rests at
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least partially on said bottom wall of said opening and
wherein said at least one channel is formed by said heat
conduction metal body plate and said integral body[1].

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Chia US 4,868,349 Sep. 19, 1989
Lindberg et al. US 5,504,378 Apr. 2, 1996
Mertol US 5,940,271 Aug. 17, 1999
Bäumel et al. US 5,966,291 Oct. 12, 1999
Loibl et al. US 6,160,708 Dec. 12, 2000

Appellants seek review of the Examiner's rejections under 35 U.S.C.
§ 103(a) of claims 1-5 as unpatentable over Chia in view of Lindberg; claims
1-5, 7-12, 14-16, and 18-22 as unpatentable over Loibl in view of Lindberg2;
and claims 1-5, 7-12, 14-16, and 18-22 as unpatentable over Mertol in view
of Lindberg, Chia, Loibl and Bäumel.

SUMMARY OF DECISION
We AFFIRM.

1 We note that the "integral body" element lacks strict antecedent basis in the
claim. However, from context, we consider the integral body to be referring
to the "single piece body."
2 The Appellants’ "Grounds of Rejection to be Reviewed" maintains this
rejection includes Chia (App. Br. 5), as does the Final Rejection mailed June
1, 2006 (Fin. Rej. 3). However, as the Examiner points out (Ans. 8), the
inclusion of Chia is a typographical error because Chia is not used in this
rejection (see Fin. Rej. 3-4, Ans. 4-5).
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ISSUES
In rejecting claims 1-5 as unpatentable over Chia and Lindberg, the
Examiner reasoned that it would have been obvious to modify Chia's power
package by using a heat sink device, as taught by Lindberg, comprising a
plurality of coolant channels, in order to increase heat transfer from, thus
reducing the overheating of, the power package. Ans. 4.
Appellants argue that the subject matter of claims 1-5 is not obvious
in view of Chia and Lindberg. Appellants argue that Chia is not analogous
prior art (App. Br. 6-7), that Lindberg does not teach or suggest that the
control plate is plastic (App. Br. 7), and that combination of Chia and
Lindberg would render Chia unsatisfactory for its intended purpose, because
Chia does not allow for channels being formed between the metal plate and
the body (App. Br. 8-9).
In rejecting claims 1-5, 7-12, 14-16, and 18-22 as unpatentable over
Loibl and Lindberg, the Examiner reasoned that it would have been obvious
to modify the heat transfer technique used in Loibl's control unit by using a
heat sink device, as taught by Lindberg, comprising a plurality of coolant
channels, in order to increase the heat transfer from, thus reducing the
overheating of, the unit. Ans. 5.
Appellants argue that the subject matter of claims 1-5, 7-12, 14-16,
and 18-22 is not obvious in view of Loibl and Lindberg. Appellants argue
that Loibl is not analogous prior art (App. Br. 9), that Lindberg teaches away
from the combination of Loibl and Lindberg proposed by the Examiner
(App. Br. 11), and that the modified Loibl device would not meet all of the
claim limitations, in particular the limitations of "a single piece body having
an opening with a bottom wall having at least a partially flat area" and a heat
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conduction metal body plate surface being flush with a top surface of the
plastic plate, wherein the bottom surface rests at least partially on said
bottom wall of said opening (App. Br. 10-11).
In rejecting claims 1-5, 7-12, 14-16, and 18-22 as unpatentable over
Mertol, Lindberg, Chia, Loibl, and Bäumel, the Examiner reasoned that it
would have been obvious to modify the heat sink used in Mertol's control
unit by adding a plurality of coolant channels, as taught by Lindberg, in
order to increase the heat transfer from, thus reducing the overheating of, the
unit. Ans. 6. Furthermore, the Examiner reasoned that it would have been
obvious to modify the heat sink used in Mertol's control unit to be flush with
the plastic control plate carrying the heat sink, as taught in Chia, Loibl, and
Bäumel, in order to reduce the size and weight of the device. Ans. 5-6.
Appellants argue that the subject matter of claims 1-5, 7-12, 14-16,
and 18-22 is not obvious in view of Mertol, Lindberg, Chia, Loibl, and
Bäumel. Appellants argue that Mertol is not analogous prior art (App. Br.
11-12), that modification of Mertol to flow cooling fluid through a channel
located between the substrate 2 and heat sink 8 would render Mertol's
printed circuit board inoperable (App. Br. 13), and that the modified Mertol
device would not meet all of the limitations of claim 1 (App. Br. 12).
Specifically, Appellants argue stiffener 11 is not a body having an opening
with a bottom wall (App. Br. 14).
Appellants' arguments are only directed to claim 1 (App. Br. 7, see
App. Br. 10, 14, noting the claim language argued - e.g. "flush" - is only
found in claim 1); Appellants do not separately argue claims 2-5, 7-12, 14-
16, or 18-22. Accordingly, we select claim 1 as the representative claim in
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reviewing each of the rejections, with the remaining claims standing or
falling with claim 1.
The issues presented in this appeal are as follows:
(1) Are Chia, Loibl, and Mertol analogous art to Appellants’ invention?
(2) Have Appellants demonstrated that the combination of Chia and
Lindberg proposed by the Examiner would either render Chia
unsatisfactory for its intended purpose or result in a device not
meeting all limitations of claim 1? This issue turns primarily on
whether either claim 1 or the proposed combination would require
formation of channels between the metal plate and the body.
(3) Have Appellants demonstrated either that Lindberg teaches away from
the combination of Loibl and Lindberg proposed by the Examiner or
that the proposed combination would not meet all limitations of claim
1?
(4) Have Appellants demonstrated either that the Examiner's proposed
combination of Mertol, Lindberg, Chia, Loibl, and Bäumel would
render the printed circuit board of Mertol inoperable or that Mertol,
Lindberg, Chia, Loibl, and Bäumel, even if combined, would not
render obvious a plastic body having an opening with a bottom wall
with a partially flat area? This issue turns primarily on whether
Mertol describes a heat sink that sits atop a bottom wall of a plastic
body.

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FACTS PERTINENT TO THE ISSUES
(FINDINGS-OF-FACT (FF))
FF1 Chia describes a device that provides for efficient heat removal of a
printed wiring substrate in a plastic-molded package of electronic
components. Col. 1, ll. 44-50.
FF2 Appellant's invention addresses the problem of maintaining adequate
heat dissipation of electric components, particularly in a gearbox
control device. Specification 4:18-20, 5:11-16.
FF3 Loibl describes a control unit in a hydraulic control plate of an
automatic transmission of a motor vehicle. Col. 3, ll. 30-42.
FF4 Mertol describes a device that makes it easy to attach a heat sink to
any existing or contemplated electronic system to improve the
system's cooling, without risking damage to the underlying
components. Col. 3, ll. 1-11, 33-39.
FF5 The Examiner found that Chia describes a plastic control device with
a single piece body 31 having an opening with a bottom wall having
at least a partially flat area that holds the top of heat conduction metal
body plate 19 flush with the top surface of body 31. Ans. 3, see also
col. 2, ll. 28-31, fig. 5.
FF6 The Examiner found that Chia fails to describe a channel. Ans. 4.
FF7 The Examiner found that Lindberg describes a heat sink device
containing a channel. Ans. 4. The heat sink is made of two portions
132 and 134 that define the channel for a cooling fluid to flow
through. Col. 5, ll. 56-62. The heat sink may be made of a suitable
thermally-conductive metal, such as aluminum or copper. Id. Fins
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146 can be employed to create multiple channels within the heat sink.
Col. 6, ll. 7-12.
FF8 The Examiner found that Loibl describes a single piece plastic control
plate body 11 that holds base plate 10 inside its circumference such
that base plate 10 rests on top of latching hooks 15 of body 11, and the
top surface of plate 10 is flush with the top surface of body 11. Ans.
4-5, see also col. 3, ll. 55-65, figs. 2, 3. Base plate 10 acts as a heat
sink and is preferably made of aluminum. Ans. 4, see also col. 3, ll.
43-54.
FF9 The Examiner found that Loibl describes a single piece plastic control
plate body 11 having a bottom wall having at least a partially flat area,
and a heat conduction aluminum body plate 10 being flush with the
control plate, but fails to describe a channel. Ans. 4-5. Appellants do
not contest these findings.
FF10 Mertol describes a heat sink attachment for an electronic
semiconductor. Abstract. Heat sink 8 is partially integrated in an
opening in plastic stiffener 11; the bottom surface of sink 8 rests on a
bottom wall of stiffener 11. Col. 8, ll. 33-35, fig. 13.
FF11 The Examiner found that Mertol fails to describe that the top surface
of the heat conduction body (heat sink 8) is flush with the top surface
of the plastic plate (stiffener 11). Ans. 6.
FF12 The Examiner found that Mertol fails to describe a channel in the heat
sink. Ans. 6.
FF13 The Examiner found that Bäumel describes a heat conducting plate 21
having a top surface flush with plastic control plate 22 (see Ans. 6,
"Baumel [sic]… show[s] the heat conducting plates [] 21, … having a
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top surface that is flushed with the plastic control plates [] 22…").
Appellants do not contest these findings.

PRINCIPLES OF LAW
In obviousness determinations, all of the features of the secondary
reference need not be bodily incorporated into the primary reference. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. See Lear Siegler, Inc.
v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
A reference is reasonably pertinent if, even
though it may be in a different field from that of
the inventor's endeavor, it is one which, because of
the matter with which it deals, logically would
have commended itself to an inventor's attention in
considering his problem. In other words, ‘familiar
items may have obvious uses beyond their primary
purposes.’
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir.
2007) (citations omitted). Furthermore, in making a determination with
regard to obviousness, the inquiry is not limited to looking only at the
problem Appellant was trying to solve. The question is not whether the
combination was obvious to Appellant but whether it was obvious to a
person of ordinary skill in the art. Thus, “[u]nder the correct analysis, any
need or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007).
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ANALYSIS
Issue (1) - Are Chia, Loibl, and/or Mertol analogous art?
The present invention deals with a device that allows for adequate
heat dissipation for electronic control components. Specification 3:4-7. The
specific component is a gearbox control device in a motor vehicle gearbox
housing. Specification 6:7-11. Chia deals with heat removal from electronic
components (FF1), which is a problem Appellants faced in designing their
plastic control plate (FF2). Loibl's device is a control unit in a motor vehicle
transmission (gearbox) (FF3), which is the same field of endeavor as
Appellants’ device, and, further, addresses heat dissipation (FF8 and FF9),
which is a problem addressed by Appellants in designing their plastic control
plate (FF2). Mertol's device aids in solving the problem of heat dissipation
of electronic components (FF4), which is a problem addressed by Appellants
in designing their plastic control plate (FF2). Thus, all three references are
analogous prior art.

Issue (2) - Claims 1-5 in view of Chia and Lindberg
The Examiner found that Chia describes each element of claim 1
(FF5), except for the channel (FF6). Ans. 3-4. The Examiner found that
Lindberg describes a cooling channel through a heat sink (FF7) and that the
addition of Lindberg's cooling channel to Chia's control device would lead to
an increase in heat transfer from, and a reduction in overheating to, Chia's
control device. Ans. 4.
Appellants first argue that Lindberg does not teach or suggest a plastic
control plate. App. Br. 7. However, the Examiner does not rely on Lindberg
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to describe a plastic control plate. See Ans. 3. Lindberg was used to
describe a channel (Ans. 4), not a plastic plate. Appellants' argument is
directed to Lindberg in isolation, rather than in combination with Chia, and
thus is not persuasive. Nonobviousness cannot be established by attacking
the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Appellants next argue that Chia does not allow for any channels being
formed between the metal plate and the body because of the location of IC
chip 20. App. Br. 8. However, it is well established that limitations not
appearing in the claims cannot be relied upon for patentability. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982). According to claim 1, the channel
must (1) run through the plastic plate and (2) be formed by the metal body
and the plastic plate. There is no requirement that the channel runs between
the two materials or that at each point the channel is formed by both plastic
and metal. Instead, as claimed, the channel could begin in the plastic body,
continue inside of the metal body, and then exit out the other end of the
plastic body, predictably utilizing the cooling channels as described by
Lindberg. The modification of Chia proposed by the Examiner entails
replacing the heat sink (heat conduction metal body 19) with a heat sink, as
taught by Lindberg, having coolant passages running therethrough. Given
the placement of the heat sink within the plastic body 31, as illustrated in
Figure 5 of Chia, coolant would have to enter the passages in the heat sink
via passages formed in the plastic body. Accordingly, the passages in the
plastic body and through the heat sink would constitute at least one channel
formed by the heat conduction metal body plate (heat sink) and the plastic
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body, as called for in claim 1. As such, Appellants' argument is not
persuasive.
Finally, Appellants argue that the Examiner's "upside down"
modification is inappropriate. App. Br. 8-9. However, the Examiner did not
propose a modification flipping anything upside down. Appellants'
argument is not persuasive because it is not directed to the modification
proposed by the Examiner.

Issue (3) - Claims 1-5, 7-12, 14-16, and 18-22 in view of Loibl and Lindberg
The Examiner found that Loibl describes each element of claim 1
except for the channel (FF9, FF8). Ans. 4-5. The Examiner found that
Lindberg describes a cooling channel through a heat sink (FF7), and
reasoned that use of Lindberg's heat sink with cooling passages as the heat
conducting body in Loibl's control device would lead to an increase in heat
transfer from, and a reduction in overheating to, Loibl's control device. Ans.
5.
Appellants argue that if Lindberg's heat sink were attached to the
bottom of Loibl's base plate 10, then the bottom would not be a plastic plate
with an opening, as claimed. App. Br. 10. However, the Examiner did not
propose such a combination of Loibl and Lindberg. See Ans. 5. Therefore,
Appellants argue against a combination not made.
Appellants further argue that the area between [plastic] plate 11 and
metal plate 10 does not form a channel. App. Br. 11. However, as noted
above, claim 1 does not require a channel between the plates. As discussed
above with respect to the combination of Chia and Lindberg, the channel
described in Lindberg would run through the heat sink itself.
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Finally, Appellants argue that Lindberg describes running channels
through the largest area of a heat sink, and that the combination of Lindberg
and Loibl teaches away from the "claimed" channel between the plastic and
metal bodies. App. Br. 11. However, as noted above, the claim does not
require a channel to run between the bodies.

Issue (4) - Claims 1-5, 7-12, 14-16, and 18-22 in view of Mertol, Lindberg,
Chia, Loibl, and Bäumel
The Examiner found that Mertol discloses nearly every element of
claim 1, including a heat conduction body 8 partially integrated in a plastic
control plate 11. Ans. 5-6, see FF10. The Examiner found that Mertol fails
to disclose a flush metal and plastic plate surface (FF11), as well as a
channel (FF12). Ans. 5-6. However, the Examiner found that Lindberg
describes a channel (FF7), and that Chia (FF5), Bäumel (FF13), and Loibl
(FF1) describe a heat conducting plate flush with a plastic control plate.
Ans. 6. Given these references, the Examiner found that it would have been
obvious to add a flush surface structure, as taught in Chia and Loibl, with the
controls of Mertol to reduce the size of the controls. Ans. 6. Further, the
Examiner found that that it would have been obvious to modify the heat sink
in Mertol by adding fluid channels to the heat sink, as taught by Lindberg, in
order to prevent overheating and to increase heat transfer. Id.
Appellants first argue that if stiffener 11 of Mertol were flush with the
surface of substrate 2, then substrate 2 would have to be trimmed, rendering
the substrate inoperable. App. Br. 13. However, the Examiner did not rely
on the substrate 2 as the plastic body in the rejection; the Examiner relied on
the stiffener 11 as the plastic body. Ans. 5-6, 10-11. Therefore, Appellants’
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arguments are not directed to the rejection articulated by the Examiner, and
thus are not persuasive.
Appellants next argue that a channel between substrate 2 and heat sink
8 of Mertol would place fluid in direct contact with the printed circuit board
and render it inoperable. App. Br. 13. However, the Examiner did not state
that the channel would run through this area. The Examiner proposes to run
a cooling channel through the plastic body and heat sink, as described in
Lindberg. See Ans. 6, 10. Therefore, Appellants’ arguments are not
directed to the modification proposed by the Examiner.
Still further, Appellants argue that the Examiner's "upside down"
modification is improper. App. Br. 13-14. However, this argument is
directed toward a modification not proposed by the Examiner.
Finally, Appellants argue that stiffener 11 in Mertol is not a body
having an opening with a bottom wall, and instead has a hole all the way
through. App. Br. 14. However, as depicted in fig. 13, Mertol describes a
plastic stiffener 11 that has a bottom wall that holds heat sink 8. FF10.

CONCLUSIONS
(1) Chia, Loibl, and Mertol are analogous prior art to the claimed
invention.
(2) Appellants have not demonstrated that the combination of Chia and
Lindberg proposed by the Examiner would either render Chia
unsatisfactory for its intended purpose or result in a device not
meeting all limitations of claim 1.
(3) Appellants have not demonstrated either that Lindberg teaches away
from the combination of Loibl and Lindberg proposed by the
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Examiner or that the proposed combination would not meet all
limitations of claim 1.
(4) Appellants have not demonstrated either that the Examiner's proposed
combination of Mertol, Lindberg, Chia, Loibl, and Bäumel would
render the printed circuit board of Mertol inoperable or that Mertol,
Lindberg, Chia, Loibl, and Bäumel, even if combined, would not
render obvious a plastic body having an opening with a bottom wall
with a partially flat area.

DECISION
The Examiner's decision is affirmed as to claims 1-5, 7-12, 14-16, and
18-22.

AFFIRMED

LV

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