Ex Parte Facusse

Patent Trial and Appeal Board

Sep 15, 2014

12488818 (P.T.A.B. Sep. 15, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/488,818 06/22/2009 Mario Facusse 095426-0102 1376
23524 7590 09/15/2014
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
GANDHI, JAYPRAKASH N
ART UNIT PAPER NUMBER
2835
MAIL DATE DELIVERY MODE
09/15/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte MARIO FACUSSE
______________

Appeal 2012-006900
Application 12/488,818
Technology Center 2800
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
GEORGE C. BEST, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board under 35 U.S.C. § 134(a) from the
decision of the Primary Examiner finally rejecting claims 1, 2, 4-13, 16, 17,
and 19-24: under 35 U.S.C. § 102(e), claims 1, 2, 7, 8, 11, 13, 16, and 19-21
over Chu (US 2009/0190303 A1); and under 35 U.S.C. § 103(a), claims 4-6,
9, 10, and 17 over Chu and Kimura (US 6,189,213 B1), and claim 11 over
Chu and Tate (US 2006/0139880 A1). Appeal Br. 4-5; Ans. 5, 9, 11. We
have jurisdiction. 35 U.S.C. § 6(b).
We affirm the decision of the Primary Examiner.
Claim 1, as illustrated by Specification Figures 1, 2, 4, 6, and 7
illustrates Appellant’s invention of an apparatus which passively cools
electronics, that is, without a fan (Spec. ¶¶ 0003, 0008-0010), and is
representative of the claims on appeal:
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Application 12/488,818
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1. An apparatus for passively cooling electronics (100) comprising:
at least one heat pipe (630) thermally coupled to a bridge plate (610),
wherein the at least one heat pipe extends from the bridge plate; and
at least one heat sink (140) thermally coupled to the bridge plate
(610),
wherein:
when a cradle (410) is thermally coupled to the at least one heat
pipe (630), the at least one heat sink (140) draws heat from the cradle
through the at least one heat pipe (630) to the bridge plate (610) and from
the bridge plate to the at least one heat sink;
the cradle (410) comprises at least one conduit (430) configured to
receive the at least one heat pipe (630); and
the cradle (410) further comprises a clamping mechanism (440)
configured to thermally coupled the cradle to the at least one heat pipe (630)
by reducing the cross-section of the at least one conduit (430).
Appeal Br. 19 (Claims App’x). Spec. ¶¶ 0020, 0022-0024, 0026-0027,
0029-0031, 0033-0034, 0037.
Appellant argues the first ground of rejection on independent claims
1, 13 and 16 as a group, and the claims of the second ground of rejection as a
group. App. Br. 7, 15. Thus, we decide this appeal based on claims 1, 4,
and 12. 37 C.F.R. § 41.37(c)(1)(vii).
OPINION
We are of the opinion Appellant’s arguments do not establish that the
evidence in the totality of the record weighs in favor of the non-anticipation
of the apparatus for passively cooling electronics encompassed by claim 1.
In this respect, we are in agreement with the Examiner’s analysis of the
evidence in Chu, findings of fact and conclusions of law, and response to
Appellant’s arguments stated in the Answer, to which we add the following
Appeal 2012-006900
Application 12/488,818
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for emphasis with respect to Appellant’s arguments. Ans. 5-6, 12-18;1 App.
Br. 7-15; Reply Br. 4-8.
We cannot agree with Appellant that the Examiner erred in
determining that Chu describes to one skilled in the art, either expressly or
inherently, an embodiment of an apparatus for passively cooling electronics
that includes “a bridge plate,” and a cradle having at least one conduit
configured to receive at least one heat pipe and “a clamping mechanism
configured to thermally couple the cradle to the at least one heat pipe by
reducing the cross-section of the at least one conduit,” as specified in claim
1. See, e.g., Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d 1318,
1341 (Fed. Cir. 2011); Therasence, Inc. v. Becton, Dickinson and Co., 593
F.3d 1325, 1332 (Fed. Cir. 2010); Sanofi-Synthelabo v. Apotex Inc., 550
F.3d 1075, 1083 (Fed, Cir. 2008); In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997); In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990).
The positions of the Examiner and Appellant entail the interpretation
of the terms of the subject claim limitations. We give the terms of the
limitations the broadest reasonable interpretation consistent with the
Specification as it would be interpreted by one of ordinary skill in the art.
See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir.
2010); In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007); In
re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d
319, 321-22 (Fed. Cir. 1989). We determine that claim 1 specifies any
manner of bridge plate configured in any manner to draw heat from a heat

1 We have not considered Costa (US 5,960,865), belatedly entered in the
record by the Examiner (Ans. 16 (“new to the record”)), which, as Appellant
points out, is not included in the statement of the ground of rejection over
Chu alone. See In re Hoch, 428 F.2d 1341, 1342 n. 3 (CCPA 1970); cf. Ex
parte Raske, 28 USPQ2d 1304, 1304-05 (BPAI 1993).
Appeal 2012-006900
Application 12/488,818
4
pipe and pass the heat in any manner to any manner of heat sink. We fail to
find in the Specification any limitation on the structure and configuration of
the bridge plate. Indeed, Appellant discloses in the Specification that the
bridge plate can have components, including a heat sink and a dock for an
electronic device, and is separate from the heat sink to which it is thermally
connected. Spec. ¶¶ 0033-0034. We further determine that the conduit can
be of any structure and configuration which receives a heat pipe and can be
clamped to the heat pipe to any extent in a manner which thermally couples
the heat pipe and the conduit to any extent. In this respect, we find that it is
disclosed in the Specification that heat pipe conduit 430 of cradle 410, which
receives a heat pipe, can be of one piece and have clamping slot 440 that is
closed by clamping mechanism 450 to tighten conduit 430 around a heat
pipe. Spec. ¶¶ 0029-0031, Fig. 4.
We find that Chu describes to one skilled in the art a first embodiment
which is motherboard 2000, wherein, among other things, heat is drawn
from gap adjusting jig for heat dissipation 2300 through second heat pipe
2700 to and through heat conduction base 2600 to heat sink 2200. Chu ¶¶
0052, 0055, 0055-0059, 0061-0062, 0066, Figs. 2, 3, 6.
We find Chu describes gap adjusting jig 2300 as including first heat
dissipation plate 2310, second heat dissipation plate 2320, and gap adjusting
element 2330. Chu describes second heat dissipation plate 2320 as
including body 2322 and holding base 2324 to hold second heat pipe 2700.
Chu describes a surface of body 2322 facing first heat dissipation plate 2310
and holding base 2324 provided at that surface. Chu describes that body
2322 and holding base 2324 are “integrally formed” and that second heat
pipe 2700 is embedded in holding base 2324. Chu ¶ 0059, Figs. 2, 3, 6.
Chu describes gap adjusting element 2330 as adjusting the relative positions
Appeal 2012-006900
Application 12/488,818
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of first heat dissipation plate 2310 and second heat dissipation plate 2320.
Chu ¶ 0066. We find that Chu describes to one skilled in the art in Figures
2, 3, and 6, body 2322 and holding base 2324, with second heat pipe 2700
embedded in holding base 2334, positioned on second heat dissipation plate
2320 and facing first heat dissipation plate 2310. We further find that in
each of the two gap adjusting jig 2300 shown in Figures 2, 3, and 6, there is
a slot in holding base 2324 as part of the conduit where second heat pipe
2700 is embedded. Indeed, we find that the slot in holding base 2324 is like
the slot shown in Appellant’s Figure 4 and described in Specifrication
paragraphs 0030 and 0031 as part of the conduit for receiving and
embedding second heat pipe 2700.
We determine that one skilled in the art would reasonably infer from
Chu’s description2 in the patent specification and figures as a whole that Chu
employs the term “embedded” with respect to holding base 2324 and second
heat pipe 2700 with its ordinary dictionary meaning in context of “[t]o
enclose snugly or firmly,”3 that is, to embed second heat pipe 2700 in
holding base 2324 to draw heat out of gap adjusting jig 2300. We also
determine that one skilled in the art would reasonably infer from Chu’s
description that body 2322 and holding base 2324 are “integrally formed” as

2 It is well settled that a reference stands for all of the specific teaching
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom. See, e.g., In re Fritch, 972
F.2d 1260, 1264-65 (Fed. Cir. 1992); In re Preda, 401 F.2d 825, 826-27
(CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.” (citation omitted)), presuming skill on the part of this person. In
re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985).
3 See, e.g., embedded, The American Heritage Dictionary of the English
Language 1414 (4th ed. 2000).
Appeal 2012-006900
Application 12/488,818
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a single piece. We further determine that one skilled in the art would
reasonably infer from Chu’s description that holding base 2324 includes a
slot, that the slot permits insertion of second heat pipe 2700 in holding base
2324 and can be tightened by gap adjusting element 2330 to adjust the
relative positions of first heat dissipation plate 2310 and second heat
dissipation plate 2320, and thus the gap therebetween, which reduces the
cross-section of the opening in holding base 2324 to embed second heat pipe
2700 therein.
On this record, we agree with the Examiner’s position that as a matter
of fact Chu describes an apparatus for passively cooling electronic
components of a motherboard, including a bridge plate and a cradle having a
conduit which receives a heat pipe and a clamping mechanism that reduces
the cross-section of the conduit to thermally couple a heat pipe, which is all
that claim 1 requires as we interpreted this claim above. We are not
convinced otherwise by Appellant’s position. Contrary to Appellant’s
contentions, we find that Chu describes heat conductive base 2600 that falls
within the claim term “a bridge plate” which, in light of the Specification, is
configured to receive a heat pipe, is thermally connected to a heat sink, and
can include additional structures. We are of the opinion that the term “a
bridge plate” in the context of the claim language “the at least one heat sink
draws heat from the cradle through the at least one heat pipe (630) to the
bridge plate (610) and from the bridge plate to the at least one heat sink,”
does not limit that claim term vis-à-vis the broad description in the
Specification, and thus is not limited to the “precise” language of the quoted
claim limitation as Appellant contends. App. Br. 14-15. See, e.g., Morris,
127 F.3d at 1055-56 (“Absent an express definition in their specification, the
fact that appellants can point to definitions or usages that conform to their
Appeal 2012-006900
Application 12/488,818
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interpretation does not make the PTO’s definition unreasonable when the
PTO can point to other sources that support its interpretation.”); Zletz, 893
F.2d 319 at 321-22.
We further are not convinced by Appellant’s contentions with respect
to the term “embedded” used by Chu to describe the thermal coupling of the
second heat pipe to the holding base which is “integrally” formed with a
body as a single unit of the second heat dissipation plate; and the description
of a slot in the holding base by Chu in Figures 2, 3, and 6 in which the heat
pipe is embedded by reducing the cross-section of the conduit in the holding
base when the first and second heat dissipation plates are clamped together
by the gap adjusting elements of the gap adjusting jig. App. Br. 8-13; Reply
Br. 4-8. Indeed, contrary to Appellant’s position, the description that one
skilled in the art finds in Chu is based on the patent specification and figures
as a whole, and we fail to find that, as Appellant contends, the disclosures of
these parts is in conflict with respect to embedding the heat pipe in the
holding base by reducing the cross-section of the slot of the holding base by
clamping the two heat dissipation plates together.
Accordingly, we affirm the ground of rejection of claims 1, 2, 7, 8, 11,
13, 16, and 19-21 over Chu under 35 U.S.C. § 102(e).4
We further affirm the grounds of rejection of claims 4-6, 9, 10, 12,
and 17 over Chu with each of Kimura and Tate individually under 35 U.S.C.
§ 103(a). Indeed, Appellant contends only that neither Kimura nor Tate

4 We interpret the limitation “when a cradle is thermally coupled to the at
least one heat pipe” of claim 1 (emphasis supplied) as specifying that the
“cradle” is an optional component of the claimed apparatus. We find that
Chu also anticipates claim 1, along with dependent claims 2, 7, 8, and 11,
under this construction in view of the open-ended transitional term
“comprising.”
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Application 12/488,818
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cures the deficiencies of Chu with respect to claim 1. App. Br. 15-18; Reply
Br. 8.
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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