Ex Parte Morris

Board of Patent Appeals and Interferences

Jan 29, 2004

09753703 (B.P.A.I. Jan. 29, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte TERREL L. MORRIS
___________
Appeal No. 2003-2021
Application No. 09/753,703
__________
ON BRIEF
__________
Before Warren, Waltz, and Kratz, Administrative Patent Judges.
Waltz, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 5 through 8, which are the only claims
remaining in this application. We have jurisdiction under 35
U.S.C. § 134.
According to appellant, the invention is directed to a
method of containing electromagnetic radiation by filling a gap
between a heat sink mounted on an integrated circuit and a
printed circuit board with a material that absorbs
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Application No. 09/753,703

electromagnetic radiation and is not ohmically conductive (Brief,
page 2). Independent claim 5 is illustrative of the invention
and is reproduced below:
5. A method of containing electromagnetic radiation,
comprising:
filling a gap between a heat sink mounted on an integrated
circuit package and a printed circuit board with a material that
absorbs electromagnetic radiation, and wherein said material is
not ohmically conductive.
The claims on appeal stand rejected under 35 U.S.C. § 102(b)
as anticipated by Akram et al. (Akram), U.S. Patent No.
5,866,953, issued on Feb. 2, 1999 (Answer, page 4). We reverse
the examiner’s rejection on appeal essentially for the reasons
stated in the Brief, Reply Brief, and those reasons set forth
below.
OPINION
The examiner finds that, with regard to claim 5 on appeal,
Akram discloses in figure 4 filling a gap between a heat sink
(428) mounted on an integrated circuit package (402) and a
printed circuit board (416) with a material (424) that absorbs
electromagnetic radiation, and where the material is not
ohmically conductive (Answer, page 4). The examiner further
finds that Akram discloses urethane as a barrier glob top
material (424) and appellant discloses that urethane has the
property of absorbing electromagnetic radiation (Answer, page 6,
citing the specification, page 9, ll. 1-4). The examiner finds
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Application No. 09/753,703

that the “lossy urethane” materials taught by appellant’s
specification are the same as “known dielectric urethane ...
materials” encompassed by the claim limitation “a material that
absorbs electromagnetic radiation” (Answer, page 5, citing a
dictionary definition of “lossy”). Accordingly, the examiner
concludes that Akram describes every limitation of claim 5 on
appeal (Answer, page 9).
The examiner and appellant agree that Akram fails to
disclose or suggest that barrier glob top materials absorb
electromagnetic radiation (Brief, page 5; Answer, page 6, last
two lines). It is also not contested that Akram discloses that a
barrier glob top material is selected to provide “low moisture
permeability, low thermal coefficient of expansion, good adhesion
and sealing properties. Preferred barrier glob top materials
include epoxy, polyamide, urethane [sic “,”] silicone, acrylic or
the like.” Akram, col. 4, ll. 2-6 (Brief, page 4; Answer, page
6). Finally, both appellant and the examiner agree that
appellant’s specification discloses that examples of lossy
materials suitable to absorb electromagnetic radiation include
“materials such as lossy foam materials, lossy urethane sheet
materials, and lossy multi-layer materials that enable the core
of the material to act primarily as a low-resistance element,
while the outside of the material presents a good insulator.”
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Application No. 09/753,703

1The examiner has failed to show why resort to a dictionary
definition is needed to ascertain the scope of “lossy” or why
“dielectric” is synonymous with “lossy” as this word is used in
appellant’s specification. See Anderson v. Int’l Eng’g & Mfg.,
Inc., 160 F.3d 1345, 1348-49, 48 USPQ2d 1631, 1634 (Fed. Cir.
1998)(“[D]ictionary definitions of ordinary words are rarely
dispositive of their meanings in a technological context. A word
describing patented technology takes its definition from the
context in which it was used by the inventor.”).
Specification, page 9, ll. 1-4 (Brief, page 6; Answer, page 5;
Reply Brief, page 2). Accordingly, the dispositive issues are
the examiner’s claim interpretation of “a material that absorbs
electromagnetic radiation” and the examiner’s finding that the
barrier glob top materials disclosed by Akram absorb
electromagnetic radiation.
The language of the claims must be given its broadest
reasonable interpretation in light of the specification as it
would have been understood by one of ordinary skill in the art.
See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed.
Cir. 1997). The claimed language “a material that absorbs
electromagnetic radiation” is defined in the specification as
synonymous with a “lossy” material, i.e., a material that
presents a lossy interface to high-frequency electromagnetic
currents (specification, page 3, ll. 3-10; see also page 5, ll.
2-4).1 Suitable examples of “lossy” materials are taught on
pages 8-9 of the specification. Accordingly, we determine that
the scope of the claimed “material that absorbs electromagnetic
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Application No. 09/753,703

radiation” includes at least the materials listed on pages 8-9 of
the specification.
We determine that the examiner has not met the initial
burden of establishing a prima facie case of anticipation, i.e.,
the examiner has not established by convincing reasoning or
evidence that the barrier glob top material disclosed by Akram is
“a material that absorbs electromagnetic radiation” within the
scope of claim 5 on appeal. See In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Contrary to the
examiner’s finding on page 6 of the Answer, urethane is not
disclosed by appellant as having the property of absorbing
electromagnetic radiation. Appellant teaches that “lossy
urethane sheet materials” are suitable materials for absorbing
electromagnetic radiation (specification, page 9, ll. 1-2,
italics added). As correctly argued by appellants (Brief, page
4; Reply Brief, page 2), a “lossy” material is synonymous with a
material that absorbs electromagnetic radiation, indicating that
lossy urethane is urethane modified to enable the core to act
primarily as a low-resistance element, while the outside of the
material acts as a good insulator (specification, page 9, ll. 2-
4). The examiner has not provided any basis in fact or technical
reasoning to reasonably support the determination that the
urethane of Akram would necessarily be a material that absorbs
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Application No. 09/753,703

electromagnetic radiation. See In re Robertson, 169 F.3d 743,
745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999).
For the foregoing reasons and those stated in the Brief and
Reply Brief, we determine that the examiner has not established a
prima facie case of anticipation in view of Akram. Accordingly,
we cannot sustain the rejection on appeal. The decision of the
examiner is reversed.
REVERSED
)
Charles F. Warren )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Thomas A. Waltz )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Peter F. Kratz )
Administrative Patent Judge )
TAW/eld
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Application No. 09/753,703

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