Ex Parte Bruzda et alDownload PDFPatent Trial and Appeal BoardDec 28, 201712897309 (P.T.A.B. Dec. 28, 2017) Copy Citation 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. 12/897,309 10/04/2010 Karen Bruzda 9062D-000478-US 1624 28997 7590 01/02/2018 HARNESS, DICKEY, & PIERCE, P.L.C 7700 Bonhomme, Suite 400 ST. LOUIS, MO 63105 EXAMINER REUTHER, ARRIE L ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 01/02/2018 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): stldocket@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAREN BRUZDA, and RICHARD F. HILL1 Appeal 2017-005424 Application 12/897,309 Technology Center 1700 Before ROMULO H. DELMENDO BEVERLY A. FRANKLIN, and AVELYN M. ROSS, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify the real party in interest as Laird Technologies, Inc. Appeal 2017-005424 Application 12/897,309 Appellants request our review under 35 U.S.C. § 134 of the Examiner’s Non-Final Action mailed October 29, 2015, rejecting claims 1— 10, 31, 32, 34—37, 39, and 41—49. Claims 11, 14, 26, and 27 have been withdrawn pursuant to a restriction requirement. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We use the version of the Appeal Brief filed on July 13, 2016. STATEMENT OF THE CASE Claim 1 is illustrative of Appellants’ subject matter on appeal and is set forth below: 1. A thermal interface material comprising: a matrix material; and a graphite filler suspended in the matrix material, the graphite filler comprising potato-shaped graphite particles that are electrically-conductive and have a median particle diameter D50 of at least 5 micrometers; wherein the thermal interface material is electrically conductive; wherein the potato-shaped graphite particles are non- spherical and have an aspect ratio of less than three and greater than one; and wherein the matrix material is a silicone resin matrix material or a wax matrix material and the thermal interface material consists only of the potato-shaped graphite particles and either the silicone resin matrix material or the wax matrix material. 2 Appeal 2017-005424 Application 12/897,309 THE REFERENCES The Examiner relies on the following prior art references as evidence of unpatentability: Feng et al. (hereinafter “Feng”) Miller, et al. (hereinafter “Miller”) Mercuri et al. (hereinafter “Mercuri”) Collins et al. (hereinafter “Colins”) US 2003/0113556 Al US 2003/0220432 Al US 6,673,284 B2 US 2005/0022971 Al June 19, 2003 Nov. 27, 2003 Jan. 6, 2004 Feb. 3,2005 THE REJECTIONS 1. Claims 44, 46, 48 and 49 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite. 2. Claims 1—10, 31, 32, 34—36, 39, and 41—48 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Feng in view of Miller. 3. Claim 37 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Feng in view of Miller, as applied to claims 1—10, 31, 32, 34—36, 39, and 41—48 above, and further in view of Mercuri. 3 Appeal 2017-005424 Application 12/897,309 4. Claim 49 is rejected under 35 U.S.C. 103(a) as being unpatentable over Feng in view of Miller as applied to claims 1—10, 31, 32, 34—36, 39, and 41—48 above, and further in view of Collins. ANALYSIS To the extent that Appellants have presented substantive arguments for the separate patentability of any individual claims on appeal, we will address them separately consistent with 37 C.F.R. § 41.37(c)(l)(vii). Upon consideration of the evidence and each of the respective positions set forth in this appeal, we find that the preponderance of evidence supports the Examiner’s findings and conclusion that the subject matter of Appellants’ claims are unpatentable over the applied art. Accordingly, we sustain each of the Examiner’s rejections on appeal essentially for the reasons set forth in the Final Office Action and in the Answer, and add the following for emphasis. Rejection 1 Appellants do not address the 35 U.S.C. § 112, second paragraph, rejection. Appeal Br. 6. We thus summarily affirm this rejection. Rejections 2-4 Appellants submit that the combination of applied references fail to suggest the claim elements of 1) “the potato-shaped graphite particles are non-spherical and have an aspect ratio of less than three and greater than one” and 2) “the matrix material is a silicone resin matrix material or a wax matrix material and the thermal interface material consists only of the 4 Appeal 2017-005424 Application 12/897,309 potato-shaped graphite particles and either the silicone resin matrix material or the wax matrix material.” Appeal Br. 6. Appellants argue that the applied art does not suggest the claimed “potato-shaped” graphite particles. More specifically, Appellants focus on the Feng reference and state that Feng’s disclosed term “rounded” does not read on “non-spherical potato shaped.” Appellants further provide a definition for the word “rounded” which includes “shaped into the form of a circle or sphere, made round.” Appeal Br. 7—8. However, we are unpersuaded by such argument for essentially the reasons provided by the Examiner in response to this position as set forth on page 8 of the Answer. Therein, the Examiner states that Feng teaches “[t]he shape of the filler particles is not specifically restricted, however, rounded or spherical particles may prevent viscosity increase.” Feng, | [0047]. Ans. 8. The Examiner views this disclosure in Feng as making a distinction between spherical versus rounded particles. No Reply Brief is of record in reply to this particular position.2 Spherical is shaped like a sphere, and a sphere has 2 Paragraph [0041] of Appellants’ Specification discloses that . . . The inventors’ use of spherical to potato shaped graphite may provide the advantage of being spherical to semi-spherical, such that surface area is generally lower than other morphologies and particle packing technology can be used to achieve higher loading. Particle packing is the process of “nesting” specific size distributions of fillers in the voids formed between other fillers of a different specific size distribution as they touch each other. For this practice, it is useful for the fillers to be substantially spherical and regularly sized so that predictably sized voids will exist between the point contacts of the fillers. These voids can then be filled with another filler of a specific size distribution. The packing process may continue for several iterations. Additionally, the rounded shape of such particles 5 Appeal 2017-005424 Application 12/897,309 a circular cross section in more than one direction, whereas round is a circular shape having a circular cross section in one direction. Thus, there is a distinction between the two terms, so within this context, we agree with the Examiner’s position that there is a difference between “spherical” versus “round”. It follows that Feng’s use of the term “rounded” can be considered as being different from spherical. The Examiner further points out that a graphite particle having the aspect ratio of “greater than one” as required by Appellants’ claim 1 shows that the term “non-spherical” can be interpreted to include a very near spherical shape, e.g., a particle having an aspect ratio of 1.1 reads on the “greater than one”, yet the particle would possess a very near spherical shape. Ans. 8. In view of the above positon taken by the Examiner, the Examiner concludes that the term “rounded” as used by Feng suggests the claim term “non-spherical” potato shaped particle as recited in claim 1. Appellants’ arguments in the record do not persuade us otherwise, and we thus agree with the Examiner’s stated position in the record in this regard. Appellants also argue that Feng does not disclose or suggest a thermal interface material consisting only of potato-shaped graphite particles and either a silicone resin matrix material or a wax matrix material. Appeal Br. 8. may allow potato graphite to flow easier and pack better than graphite particles of other shapes. At relatively high loadings, the spherical to semi-spherical graphite may allow finished pads to remain relatively compliant. 6 Appeal 2017-005424 Application 12/897,309 However, we agree with the Examiner’s stated reply made on page 8 of the Answer. Therein, the Examiner states that Feng teaches a phase change composition wherein the composition comprises a matrix comprising a silicone wax and a thermally conductive filler. All other ingredients are optional. Feng, 11 [0022—0027]. Ans. 8. The Examiner concludes therefore that Feng’s composition suggests the “consisting of’ language because the other components are disclosed as optional, such that there is an embodiment in Feng whereby thermal interface material can consist only of the wax matrix and the filler. Ans. 8. We are thus unpersuaded by Appellants arguments in the record on this issue. Appellants further argue that Miller does not cure the aforementioned asserted deficiencies of Feng. Appeal Br. 8—9. However, for the reasons provided, supra, we are unpersuaded that there are such deficiencies in Feng. Appellants next address the Examiner’s position that it would have been obvious to have used the graphite with the aspect ratio as taught by Miller, in the thermal interface material of Feng, to arrive at the claimed invention, and that Miller provides the motivation of so doing which is to achieve the desired volume resistivity and surface resistivity for efficient electrical transmission. Appeal Br. 9-10. Appellants argue that no reason is shown as to why one skilled in the art would have modified the aspect ratio of the graphite filler in Feng’s phase change composition according to Miller as proposed by the Examiner. Appeal Br. 9. Appellants submit that there is no suggestion in Feng that achieving a desired phase change temperature requires achieving a desired volume resistivity and surface resistivity for efficient electrical transmission. Appeal Br. 10. 7 Appeal 2017-005424 Application 12/897,309 We are unpersuaded by such argument for the reasons stated in the record by the Examiner. The Examiner relied upon teachings in Miller, found in the Abstract, in claims 7, 8, 16, and 21, and in || [0021-0023]. Non-final Act. 4—5. The Examiner explains that Miller provides the motivation of using a filler having this particular aspect ratio due to its ability to achieve a desired volume resistivity and surface resistivity for efficient electrical transmission. Miller, | [0022], The Examiner states that in light of these benefits, it would have been obvious to have used the graphite having an aspect ratio as disclosed by Miller, in the thermal interface material of Feng, thereby arriving at the claimed subject matter. Non-final Act. 5. Appellants seem to argue that the suggestion needs to come from Feng. Significantly, Appellants do not direct us to any authority which supports this position, i.e., that the suggestion or motivation to combine multiple references in a rejection based on 35 U.S.C. § 103(a) must be found in the primary reference. In fact, current case law supports a contrary position. See, e.g., KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (a court may look to the interrelated teachings of multiple patents to determine whether there was an apparent reason to combine the known elements in the manner claimed). We are thus unpersuaded by such argument. Appellants also submit that Feng in view of Miller does not teach the exact same aspect ratio as recited in the instant claims. However, it is the Examiner’s position that the combination overlaps the claimed aspect ratio range. Non-final Act. 5. We agree with that finding and are thus unpersuaded by such argument that does not address squarely the Examiner’s stated position in the record. 8 Appeal 2017-005424 Application 12/897,309 Having determined that a prima facie case has been met, we turn now to Appellants’ rebuttal evidence. Appellants discuss advantages of Appellants’ thermal interface materials on pages 11—16 of the Appeal Brief. However, as pointed out by the Examiner on page 10 of the Non-final Office Action, such discussion is unpersuasive. We note that the burden rests with Appellants to establish (1) that the alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, (2) that the comparisons are to the disclosure of the closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). In the instant case, Appellants have not done so. In view of the above, we affirm all of the art rejections (Appellants rely upon similar arguments for Rejections 3 and 4, relied upon for Rejection 2). Appeal Br. 10—11. DECISION Each rejection is affirmed. TIME PERIOD 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)(l)(iv). ORDER AFFIRMED 9 Copy with citationCopy as parenthetical citation