ABB Schweiz AG

Patent Trials and Appeals Board

Jun 8, 2020

2019003161 (P.T.A.B. Jun. 8, 2020)

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.
15/409,089 01/18/2017 Heinz LENDENMANN 04190-P0067A 7190
137670 7590 06/08/2020
ABB - Whitmyer IP Group LLC
600 Summer Street
Stamford, CT 06901
EXAMINER
SCHOENHOLTZ, JOSEPH
ART UNIT PAPER NUMBER
2893
MAIL DATE DELIVERY MODE
06/08/2020 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 HEINZ LENDENMANN, THOMAS GRADINGER,
THOMAS WAGNER, TIMO KOIVULUOMA, and TOR LANERYD
Appeal 2019-003161
Application 15/409,089
Technology Center 2800

Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
ADAM J. PYONIN, Administrative Patent Judges.

PYONIN, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 An Oral Hearing was held on May 15, 2020.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as ABB
Schweiz AG. Appeal Br. 2.
Appeal 2019-003161
Application 15/409,089

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STATEMENT OF THE CASE
Introduction
The Application is directed to arrangements for subsea cooling of
semiconductor modules. Spec. 1:5. Claims 1–15 are pending; claims 1, 12,
and 15 are independent. Appeal Br. 14–17. Claim 1 is reproduced below
for reference:
1. An arrangement for subsea cooling of a semiconductor
module, the arrangement comprising:
a tank, the tank being filled with a dielectric fluid; and
at least one semiconductor module placed in the tank, each
of the at least one semiconductor module comprising
semiconductor submodules and being attached to a heat sink,
wherein the semiconductor submodules generate heat,
thereby causing the dielectric fluid to circulate by natural
convection,
wherein the heat sink comprises a first part having a first
thermal resistance from the semiconductor module to the
dielectric fluid, and a second part having a second thermal
resistance from the semiconductor module to the dielectric fluid,
wherein the second thermal resistance is higher than the
first thermal resistance, and
wherein the first part is configured to lie vertically higher
than the second part.
References and Rejections
Claim 15 is rejected under 35 U.S.C. § 112(b) as being indefinite.
Final Act. 2.
Claims 1–15 are rejected under 35 U.S.C. § 103 as being unpatentable
over Browne (US 2015/0022975 A1; Jan. 22, 2015) and Ohsawa
(US 2011/0214904 A1; Sept. 8, 2011). Final Act. 3.

Appeal 2019-003161
Application 15/409,089

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).

35 U.S.C. § 112(b)
Appellant does not challenge the Examiner’s indefiniteness rejection
of claim 15. See Appeal Br. 4. We summarily sustain this rejection.

35 U.S.C. § 103
The Examiner finds the limitations of claim 1 to be obvious in view of
the combined teachings of Browne and Ohsawa. See Final Act. 13.
Particularly, the Examiner finds one of ordinary skill would have modified
Browne’s immersion boiling system with Ohsawa’s heat sink, because
“Ohsawa teaches [a] heat sink configuration [that] results in 1) suppression
of the temperature in the heat generating semiconductor and 2) provides a
heat sink with little loss in structural durability or reliability.” Final Act. 6;
Ohsawa ¶¶ 18, 19. The Examiner reasons that “[t]he use of Oshawa’s high
reliability and high performance heat sink in [Browne’s] environment that
otherwise requires frequency maintenance of cooling for power electronics
is just plain common sense.” Ans. 3; see also Ans. 7.
Appellant argues the Examiner’s rejection is in error, because
“Browne’s cooling device works by boiling small portions of the dielectric
fluid, and then releasing the energy as the fluid condenses back to liquid,”
whereas “Ohsawa is designed to increase the heat flux, spreading the heat
out evenly across the plane of the heat generating body” and “was not
Appeal 2019-003161
Application 15/409,089

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designed to operate in a dielectric fluid.” Appeal Br. 6, 9. Appellant
contends that modification of Browne with the heat-sink of Ohsawa “would
no longer boil the dielectric fluid,” such that “one skilled in the art would not
be motivated to use the heatsink of Ohsawa in Browne.” Id. at 6, 7.
We find the Examiner’s reasoning to be insufficient to support the
finding of obviousness. A “patent composed of several elements is not
proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art,” as “it can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Further, the
Federal Circuit has “required that [obviousness findings] grounded in
‘common sense’ must contain explicit and clear reasoning providing some
rational underpinning why common sense compels a finding of
obviousness.” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed.
Cir. 2013) (quoting In re Nouvel, 493 Fed. Appx. 85, 92 (Fed. Cir. 2012)).
Here, the Examiner’s common sense reasoning relies on finding
“Oshawa teaches . . . that the temperature gradient in the base becomes
smaller,” yielding “better temperature uniformity.” Ans. 7. We agree with
Appellant, however, one of ordinary skill would not have modified Browne
with the better temperature uniformity provided by Ohsawa. See Reply
Br. 4. Rather, Browne explains the system needs heat to be concentrated
along parts of the heat sink, in order to effectively boil the dielectric liquid.
See Browne ¶ 26 (Describing the angled heat sink “shape permits greater
vapor area and the sharing of that vapor to additional areas rather than
forcing it to flow in the channel.”).
Appeal 2019-003161
Application 15/409,089

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That is, we agree with Appellant that Browne requires high
temperature gradients in order to boil the dielectric liquid. See Browne ¶ 17
(“The design of the heat sink is non-trivial as area should be maximized for
bubble nucleation sites but surface superheat must be maintained for
nucleation.”); Appeal Br. 6; Reply Br. 5. In light of Browne’s particular
design requirements for boiling a fluid, the Examiner does not set forth
sufficient factual reasoning to support the conclusion that one of ordinary
skill would have expected that using Ohsawa’s heat sink would “improve the
reliability of the semiconductor device and the heatsink and so the cooling
solution will require less maintenance.” Ans. 9. Accordingly, we are
persuaded the Examiner’s rejection does contain rational underpinnings that
compel a finding of obviousness.
Based on the foregoing, we are persuaded the Examiner errs in finding
the combination of Browne and Oshawa teaches or suggests the limitations
of claim 1.

CONCLUSION
We sustain the Examiner’s indefiniteness rejection of claim 15.
We are persuaded the Examiner’s obviousness rejection of
independent claim 1 in error. Independent claims 12 and 15 contain similar
limitations and are rejected for similar reasons. See Final Act. 9–12. We do
not sustain the Examiner’s obviousness rejection of the independent claims,
or the claims dependent thereon.
The Examiner’s decision is affirmed in part because we have affirmed
at least one ground of rejection with respect to claim 15. See 37 C.F.R.
§ 41.50(a)(1).
Appeal 2019-003161
Application 15/409,089

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
15 112(b) Indefiniteness 15
1–15 103 Browne, Ohsawa  1–15
Overall
Outcome
15 1–14

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED IN PART