Ex Parte Chauhan et al

Patent Trial and Appeal Board

Dec 11, 2018

14676241 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/676,241 04/01/2015
6147 7590 12/13/2018
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
FIRST NAMED INVENTOR
Shakti Singh Chauhan
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
276920-2 8770
EXAMINER
FENG, ZHENGFU J
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
12/13/2018 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAKTI SINGH CHAUHAN, JAMES NEIL JOHNSON,
BRIAN PATRICK RODEN, and GRAHAM CHARLES KIRK
Appeal2017-009639
Application 14/676,241
Technology Center 2800
Before CATHERINE Q. TIMM, WLIA HEANEY,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-20 of Application 14/676,241
under 35 U.S.C. § 103. Final Act. (Nov. 14, 2016) 2-8. Appellant 1 seeks
reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM-IN-PART. In addition,
we issue a NEW GROUND OF REJECTION.
1 The Appellant is the Applicant, General Electric Company, which is also
identified as the real party in interest. Appeal Br. 2.
Appeal2017-009639
Application 14/676,241
BACKGROUND
The present application generally relates to an electronic device (such
as a silicon chip) coupled to a heat sink by a heat spreader. Spec. ,r 7. The
application teaches that, in such an arrangement, there may be a "leakage
current" between the electronic device and the heat sink. Id. ,r,r 14--15. The
flow of the leakage current in the heat sink is undesirable as it may generate
electrical noise which affects the performance of the electronic device. Id.
,r 15. To prevent such leakage current yet permit the dissipation of heat, the
application teaches the use of "a highly electrically resistive but highly
thermally conducting coating on at least one of the electronic device,
metallic heat spreader or the heat sink." Id. ,r 16. The application further
teaches that the coating material "may include disordered form[ s] of carbon
that can be deposited on metallic substrate." Id. ,r 18.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. An electronic device assembly comprising:
an electronic device;
a heat sink coupled to the electronic device to dissipate
the heat produced by the electronic device;
a heat spreader coupled between the electronic device
and the heat sink to transfer heat from the electronic device to
the heat sink; and
a disordered carbon coating disposed on at least one of
the electronic device, the heat spreader, and the heat sink.
Appeal Br. 10 (Claims App.).
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Application 14/676,241
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1-12 are rejected under 35 U.S.C. § 103 as obvious over
Tolchinsky et al. 2 in view ofMertol. 3 Final Act. 2-5.
2. Claims 13-20 are rejected under 35 U.S.C. § 103 as obvious over
Tolchinsky in view of Takashima et al. 4 Id. at 5-8.
DISCUSSION
Rejection 1. The Examiner rejected claims 1-12 as obvious over
Tolchinsky in view of Mertol. Id. at 2-5. In support of this rejection, the
Examiner found that Mertol teaches the "disordered carbon coating"
required by claim 1. Id. at 2-3.
Mertol teaches that various techniques may be employed to apply a
suitable diamond coating to a semiconductor package. Mertol, 6:57-58.
One such technique is chemical vapor deposition ("CVD"). Id. at 6:57-59.
Mertol teaches that methods of applying a diamond coating by CVD may
differ somewhat but "share common features. For example, growth of
diamond (rather than deposition of other less, well-defined forms of carbon)
normally requires that the substrate be maintained at a temperature in the
range of 1000-1400 K, and that the precursor gas be diluted in an excess of
hydrogen." Id. at 7:3-8. Mertol subsequently teaches that, under certain
conditions, "the crystalin [sic] morphology disappears altogether and the
film becomes an aggregate of diamond nanocrystals and disorder[ ed]
2 US 2005/0070048 Al, published Mar. 31, 2005 ("Tolchinsky").
3 US 5,907,189, issued May 25, 1999 ("Mertol").
4 US 2008/0298024 Al, published Dec. 4, 2008 ("Takashima").
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Application 14/676,241
graphite." Id. at 7:21-23. The Examiner relies upon such disclosure as
teaching the claimed "disordered carbon coating."
Appellant argues that the foregoing portion of Mertol teaches a
coating made of a "mixture of diamond nanocrystals and disorder[ ed]
graphite and not of the disorder[ ed] graphite itself." Appeal Br. 5 ( emphasis
in original). This requires us to consider the scope of the term "disordered
carbon" to determine whether such a mixture would fall outside the scope of
the claim.
The Specification teaches an embodiment where the carbon coating is
described as follows:
The disordered form of carbon is a disordered diamond material
but not diamond itself. Examples of such coatings include high
SP3 content DLC coatings and Nano/Micro-crystalline
[ d]iamond coating. In one embodiment, high SP3 DLC films
which have equal to or greater than 95% SP3 content is used for
the coating.
Spec. ,r 18 ( emphasis added). The Specification similarly teaches the
following:
The disordered form of carbon is a diamond like carbon (DLC)
material. Examples of such coatings include high SP3 content
DLC coatings and Nano/Micro-crystalline [d]iamond
coating. In one embodiment, the thickness of the coating may
be in the range of 0.008 - 0.015 mm, whereas the thermal
conductivity of the coating may be greater than 10 W /mk.
Id. ,r 22 ( emphasis added).
In view of the foregoing teachings from the Specification, the term
"disordered carbon" may include both disordered graphite and nanocrystals.
Further, Appellant has not rebutted the Examiner's finding that the "carbon
atoms in this mixture as a whole do not have long-range repetitive order like
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Application 14/676,241
in a pure diamond material," Answer 5, and therefore comprise a disordered
coating. See Reply Br. 3. Nor does Appellant provide support for its
contention that "the properties of a film of disorder graphite will be different
from properties of a film of the mixture of disorder graphite and diamond
nanocrystals and thus, the two cannot be equated." Appeal Br. 5. See, e.g.,
Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009)
("[U]nswom attorney argument ... is not evidence and cannot rebut ...
other admitted evidence .... "); Estee Lauder, Inc. v. L 'Orea!, S.A., 129 F.3d
588, 595 (Fed. Cir. 1997) (an argument made by counsel in a brief does not
substitute for evidence lacking in the record).
Appellant further argues that "the entire specification of Mertol is
geared towards applying diamond coating." Appeal Br. 6. Appellant
contends that "Mertol specifically suggests which CVD technique should be
chosen such that to have a diamond layer and not disordered carbon layer."
Id. The essence of this argument is that, while Mertol includes a description
of disordered carbon in its specification, it lacks a teaching to use such
material to coat an electronic device. Rather, Appellant argues, Mertol
teaches to employ a diamond coating.
The overall thrust of Mertol is to use a "diamond coating" to enhance
thermal transfer. See, e.g., Mertol, 4:40-42. Mertol's teaching that "growth
of diamond (rather than deposition of other less, well-defined forms of
carbon) normally requires that the substrate be maintained at a temperature
in the range of 1000-1400 K, and that the precursor gas be diluted in an
excess of hydrogen" (id. at 7 :3-7 ( emphasis added)), for example, suggests
that Mertol contemplates the use of diamond rather than other forms of
carbon. Accordingly, we find Appellant's argument that Mertol does not
teach a disordered graphite coating to be persuasive.
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Application 14/676,241
In view of the foregoing, we determine that Appellant has shown
reversible error in the rejection of claims 1-12.
Rejection 2. The Examiner rejected claims 13-20 as obvious over
Tolchinsky in view of Takashima. Appellant argues that because both
Tolchinsky and Takashima "advise[] against disordered carbon coating, one
skilled in the art won't combine these two references in a way to come up
with the claim 13." Appeal Br. 8.
With regard to Appellant's first contention, regarding Tolchinsky, we
adopt the reasoning of the Examiner as stated in the Answer. See Answer 3-
4.
With regard to Appellant's second contention, that Takashima advises
against the use of disordered carbon, we again consider the scope of the term
"disordered carbon coating." The Specification teaches that "[e]xamples of
[ disordered carbon] coatings include high SP3 content DLC coatings and
Nano/Micro-crystalline Diamond coating." Spec. ,r 18 ( emphasis added).
The Specification further teaches that "[t]he disordered form of carbon is a
diamond like carbon (DLC) material." Id. ,r 22. This is similar to the
teachings of Takashima.
In the Background of the Invention section, Takashima discusses prior
art that teaches an embodiment employing diamond-like carbon film.
[I]t is proposed that an Al (Aluminum) coating layer whose
foremost surface is coated with an oxide film caused by natural
oxidation of Al is formed [see JP 10-284643 A (1998)], or a
diamond-like carbon film is formed [see JP 2004-104074 A],
in place of the Ni plating layer, on at least a connection surface
of a base substrate.
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Takashima ,r 13 ( emphasis added). The diamond-like carbon ("DLC") film
described in Takashima falls within the scope of the "disordered carbon
coating" of the claims, which is taught to include "a diamond like carbon
(D LC) material."
In its Reply Brief, Appellant contends that Takashima teaches the
diamond-like carbon film on a "base substrate" rather than on the heat
spreader or heat sink. Reply Br. 4. This argument fails as Takashima
teaches that "[t]he present invention is directed to a heat spreader 4
including a base substrate 1." Takashima ,r 36.
Accordingly, Appellant has failed to show error in the rejection of
claims 13-2 0.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 1-12 under 35 U.S.C. § 103 over Tolchinsky
in view of Takashima.
We adopt the analysis of the Examiner regarding Tolchinsky as set
forth in the Final Office Action. Final Act. 2, 6. We additionally adopt the
Examiner's finding that Takashima teaches providing a disordered carbon
coating disposed on a heat spreader. Id. at 6. We further adopt the
Examiner's stated analysis regarding reason to combine the teachings of
Tolchinsky and Takashima. Id.
In view of the foregoing, we determine that claims 1-12 are obvious
over Tolchinsky in view of Takashima.
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Application 14/676,241
CONCLUSION
For the reasons stated above as well as the reasons set forth by the
Examiner in the Final Office Action and the Examiner's Answer, the
rejection of claims 1-12 as obvious over Tolchinsky in view of Mertol is
reversed and the rejection of claims 13-20 over Tolchinsky in view of
Takashima is affirmed.
We enter a new ground of rejection for claims 1-12 under 35 U.S.C.
§ 103 as explained above.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
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Application 14/676,241
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b)
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