Ex Parte Nelson et al

Patent Trial and Appeal Board

Aug 23, 2017

12317859 (P.T.A.B. Aug. 23, 2017)

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.
12/317,859 12/30/2008 N. D. Nelson 07E285 (RAYN01-70285) 6515
18510 7590 08/25/2017
Dnoket Plerk-Ravthenn/MWM
EXAMINER
P.O.Drawer 800889
Dallas, TX 75380
RUSSELL, DEVON L
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
patents @ munckwilson. com
munckwilson @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte N. D. NELSON, VINCENT J. MILANO,
GREGORY G. BENINATI, CAMERON B. GODDARD,
MATTHEW D. THOREN, and EDWARD I. HOLMES
Appeal 2016-004822
Application 12/317,859
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-004822
Application 12/317,859
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—
3, 6—12, 16, and 19. Claims 17 and 45 49 have been withdrawn. Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).
The claims are directed to a heat exchanger assembly or “cold plate”
used to cool electronic components. Spec., 2:5—11. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. An improved heat exchanger assembly,
comprising:
first and second plates formed of a first
thermally conductive material, each plate
containing a cavity, the cavities forming a
hermetically sealed vapor chamber when the
first and second plates are stacked on top of each
other with respective cavities facing each other;
and
an aluminum foam wick lining walls of each
of the cavities forming the vapor chamber, the
aluminum foam wick filling peripheral regions
of each cavity while leaving a central cavity
region of a desired size and shape unfilled,
wherein the aluminum foam wick provides a
wicking action of a liquid cooling medium.
THE CLAIMED SUBJECT MATTER
REFERENCES
Klett et al.
(“Klett”)
Jin-Chemg et al.
(“Jin-Chemg”)
US 2003/0115753 Al June 26, 2003
US 6,901,994 B1 June 7, 2005
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Application 12/317,859
Zheng
Meng et al.
(“Meng”)
US 2006/0096740 Al May 11, 2006
US 2007/0006993 Al Jan. 11, 2007
REJECTIONS
Claims 1—3, 6, 9, 10, 12, and 16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Jin-Chemg and Meng. Final Act. 2.
Claims 7, 8, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jin-Chemg, Meng, and Zheng. Id. at 5.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Jin-Chemg, Meng, and Klett. Id. at 6.
ANALYSIS
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Claims 2, 16—Rejected under 35 U.S.C. § 112(b)
We enter a new ground of rejection for claims 2 and 16 as indefinite
under 35 U.S.C. § 112(b). This section provides that “[t]he specification
shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the inventor or a joint inventor
regards as the invention.” As our reviewing court has stated:
Because claims delineate the patentee’s right to exclude, the
patent statute requires that the scope of the claims be
sufficiently definite to inform the public of the bounds of the
protected invention, i.e., what subject matter is covered by the
exclusive rights of the patent. Otherwise, competitors cannot
avoid infringement, defeating the public notice function of
patent claims.
Halliburton Energy Servs., Inc. v. M-ILLC, 514 F.3d 1244, 1249 (Fed. Cir.
2008) (citations omitted). Whether a claim is indefinite under 35 U.S.C.
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§ 112(b) turns on whether those skilled in the art would understand what is
claimed when the claim is read in light of the Specification. See Power-One,
Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350 (Fed. Cir. 2010). Our
reviewing court has applied the definiteness requirement in a number of
circumstances. Notably, for purposes of this rejection, the Court has held
claims indefinite where they contain a term whose meaning is “completely
dependent on a person’s subjective opinion.” Datamize, LLC, v. Plumtree
Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2008). In Datamize, the court
determined that claims drawn to a method of creating “aesthetically
pleasing” custom interface screens on kiosks are indefinite because
determining when an interface screen is “aesthetically pleasing” is
“completely dependent on a person’s subjective opinion.” Id.
Such is the case with claims 2 and 16. Claim 2 depends from claim 1
and additionally recites “wherein a cell size for the aluminum foam wick is
selected based on a desired capillary action.” Neither the claim nor the
Specification provides an objective way to determine from the cell size of a
particular aluminum foam wick whether that cell size was selected based on
a desired capillary action, or for some other reason, such as cost savings or
ease of manufacture. Thus, the only way to know if a specific heat
exchanger infringes claim 2 is to determine the designer’s subjective reason
for selecting the particular cell size of the wick. Under Datamize, this need
to resort to a designer’s subject reason for selecting a particular cell size
renders the claim indefinite.
Claim 16 depends from claim 1 and additionally recites “wherein the
aluminum foam wick is formed to give the central cavity region the desired
size and shape.” App. Br., Claims Appendix A4. Like claim 2, claim 16
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requires an inquiry into why a particular aluminum foam wick is formed in a
particular way. Therefore, for the reasons discussed above, we reject claim
16 as indefinite.
REJECTIONS UNDER 35 U.S.C. §§ 102(b), 103(a)
Claims 1—3, 6, 9, 10, 12, and 16—Unpatentable over Jin-Cherng and Meng
Claims 1, 3, and 6
Appellants argue the patentability of independent claim 1, and rely on
those arguments to support the patentability of dependent claims 3 and 6.
App. Br. 18—20. Thus, we will decide the appeal of claims 1, 3, and 6 on the
basis of claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv).
For claim 1, the Examiner relies on Figure 4 of Jin-Chemg as
disclosing a heat exchanger comprising first and second plates made of a
first thermally conductive material, each plate containing a cavity, the plates
stacked on top of each other with facing cavities to form a vapor chamber.
Final Act. 2. The Examiner relies on Figure 1 of Jin-Chemg as teaching a
wick stmcture that lines the walls of a vapor chamber while leaving a central
cavity region of a desired size and shape unfilled. Id. According to the
Examiner, “[i]t would have been obvious to one of ordinary skill to form the
heat exchanger of Fig[ure] 1 with the two plate constmction, as shown in
Fig. 4, in order to allow easy access to the interior cavities for wick
installation before sealing.” Id. at 2—3. The Examiner acknowledges that
Jin-Chemg does not teach making the wick from aluminum foam, and
therefore relies on Meng for this teaching. Id. at 3 (citing Meng 4, 18).
The Examiner asserts that Meng teaches a heat pipe using a foamed
aluminum wick “to provide high capillary forces and low flow resistance.”
Id. The Examiner further asserts that a person of ordinary skill in the art
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would have provided the combined structure of Figures 1 and 4 of Jin-
Chemg with Meng’s aluminum-foam wick “to provide high capillary forces
and low flow resistance.” Id.
Appellants respond with a number of arguments, which we will
address in order. First, Appellants challenge the combination of Figures 1
and 4 of Jin-Chemg. According to Appellants, “the record does not
establish that forming the structure of Fig[ure] 1, as suggested in the Office
Action would, in fact, allow easy access to the interior cavities for wick
installation before sealing.” App. Br. 12. Appellants also assert that the
record does not support the finding that access, easy or otherwise, to a pair
of cavities “would be either necessary or beneficial to ‘wick installation.’”
Id.
We do not find this argument persuasive. It is evident that gaining
access to the inside cavity of a heat exchanger to, e.g., install the wick
structure would be facilitated by assembling the cavity from two pieces (the
cavity being accessed before assembling the two pieces). By analogy, it
would be easier to put a ship in a bottle if the bottle could first be separated
into two pieces and later reassembled. We also agree with the Examiner that
a person of ordinary skill in the art would have seen the benefit in such
access. As the Examiner notes, Meng teaches that aluminum foam wicks
may be formed separately from the heat exchanger casing, and then installed
in the casing. Ans. 5 (citing Meng 118). Installing a pre-manufactured
wick into a heat exchanger cavity would likely be facilitated by the casing
being made from two pieces that are separate prior to the installation.
Appellants next argue that Jin-Chemg does not enable a person of
ordinary skill in the art to make the embodiment depicted in Figure 4 with
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the claimed wick structure, i.e., a “wick that lines the walls of the cavity
while leaving a central cavity region of a desired size and shape unfilled.”
App. Br. 14 (quoting claim 1). But Appellants do not dispute that Figure 1
of Jin-Chemg depicts a wick with that precise configuration. Further,
Appellants do not contend that a person of ordinary skill in the art would not
have known how to make the Figure 1 embodiment. Appellants provide no
evidence or persuasive reason why a person of ordinary skill in the art would
have been able to install such a wick in the one-piece heat-exchanger casing
of Figure 1, and yet not be able to do so in the two-piece casing of Figure 4.
Appellants next argue that Jin-Chemg fails to describe how to form an
aluminum foam wick that lines the walls of a cavity without filling the
cavity. App. Br. 15. But Jin-Chemg is not relied on for that teaching.
Instead, as the Examiner explains, Jin-Chemg is relied on for teaching the
shape of the wick, including an empty central cavity, and Meng is relied on
“for the material and formation of the wick structure.” Ans. 6. Appellants
go on to argue that “Meng teaches that the wick stmcture 16 [depicted in
Figure 2] completely fills the void within a heat pipe,” and that “Meng does
not teach or suggest that a stmcture suitable for lining the bottom and
sidewalls of at least one cavity, filling peripheral regions but leaving a
central region unfilled, could be formed using the material of wick stmcture
16.” App. Br. 16. But, as the Examiner points out, Meng depicts an
aluminum foam wick that does not fill the entire heat pipe. Final Act. 7
(citing Meng, Fig. 3). While Appellants correctly respond that the wick that
Meng’s Figure 3 depicts does not line the walls of the cavity or fill
peripheral regions of the cavity while leaving a central cavity region unfilled
(App. Br. 17), this response misses the point. Figure 3 of Meng (as well as
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Figures 1 and 5) demonstrates that a person of ordinary skill in the art had
sufficient skill to shape an aluminum foam wick so that it did not completely
fill a heat pipe cavity. Given this, and given the absence of any evidence to
the contrary, it is reasonable to infer that a skill artisan would have had
sufficient skill to shape an aluminum foam wick into the shape depicted in
Figure 1 of Jin-Chemg. See In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969)
(“Having established that this knowledge was in the art, the examiner could
then properly rely, as put forth by the solicitor, on a conclusion of
obviousness ‘from common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or suggestion in a particular
reference.”’). Accordingly, Appellants’ argument fails to apprise us of
Examiner error, and we sustain the Examiner’s rejection of claims 1,3, and
6 as unpatentable over Jin-Chemg and Meng.
Claim 2
The Examiner relies on paragraphs 4—6 and 17 of Meng as teaching
the additional limitation of claim 2. Final Act. 3. Appellants respond that
Meng does not describe “selecting a cell size to achieve a desired capillary
action.” App. Br. 20. We disagree. Meng teaches, for example, selecting a
smaller pore size in a “second section” of wick stmcture 16 to maintain “a
relatively high capillary force for drawing the condensate back from the
condensing section 124 towards the evaporating section 123.” Meng 117;
see Meng, Figs. 1, 2. Accordingly, we sustain the Examiner’s rejection of
claim 2 as unpatentable over Jin-Chemg and Meng.
Claim 12
In disputing the rejection of claim 12, Appellants recite the additional
limitation and allege that the cited references do not disclose this limitation.
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App. Br. 20—21. This statement does not constitute a separate argument for
patentability of claim 12 under 37 C.F.R. § 41.37(c)(l)(iv). See In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (Holding that the Board had
reasonably interpreted 37 C.F.R. § 41.37 as requiring “more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”). Appellants’ statement does not specifically address the
Examiner’s findings with respect to the disclosure in Jin-Chemg or point out
why the findings are in error. Final Act. 4. Accordingly, we sustain the
Examiner’s rejection of claim 12.
Claim 16
As discussed above, we are unable to determine the precise scope of
claim 16 without resort to speculation. In view of the indefmiteness of claim
16, we find that the Examiner’s rejection of claim 16 is necessarily based on
speculation and assumptions. See In re Steele, 305 F.3d 859, 862 (CCPA
1962) (“We do not think a rejection under 35 U.S.C. § 103 should be based
on . . . speculations and assumptions. . . . [I]t is essential to know what the
claims do in fact cover.”). Therefore, we summarily decline to sustain the
prior-art rejection of claim 16.
The Remaining Rejections
For the remaining rejections, Appellants argue that the additionally
cited references fail “to cure the defects in the proposed combination of Jin-
Chemg and Meng.” App. Br. 22. For the reasons discussed above,
however, Appellants have not apprised us of any such defects. Accordingly,
we sustain these rejections.
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DECISION
For the above reasons, the Examiner’s rejections of claims 1—3, 6—12,
and 19 are affirmed, and the rejection of claim 16 is reversed. Pursuant to 37
C.F.R. § 41.50(b) we reject claims 2 and 16 under 35 U.S.C. § 112, second
paragraph.
FINALITY OF DECISION
This decision contains new grounds of rejection under 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 proceeding
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 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)(l)(iv).
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AFFIRMED-IN-PART; 37 C.F.R. $ 41.50(b)
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