Ex Parte Barsun et al

Board of Patent Appeals and Interferences

Jun 14, 2012

10803399 (B.P.A.I. Jun. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHAN K. BARSUN, CHRISTIAN L. BELADY,
ROY M. ZEIGHAMI, and CHRISTOPHER G. MALONE
____________

Appeal 2010-001828
Application 10/803,399
Technology Center 2800
____________

Before LANCE L. BARRY, HOWARD B. BLANKENSHIP, and
JAMES R. HUGHES, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 17, 34-37, 39-42, 51, 53, and 54.
(Ans. 2.) The Appellants appeal therefrom under 35 U.S.C. § 134(a). We
have jurisdiction under 35 U.S.C. § 6(b).

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INVENTION
The following claims illustrate the invention on appeal.
34. A processor module comprising:
a processor configured to be connected to a circuit board,
the processor having a first heat transfer surface;
a power pod electrically connected to the processor to
supply power to the processor, the power pod having a second
heat transfer surface;
a first heat sink overlapping the power pod and thermally
coupled to the second heat transfer surface; and
a second heat sink thermally coupled to the first heat
transfer surface, wherein the second heat sink extends at least
partially across and over the first heat sink.

39. A heat dissipating arrangement comprising:
a first heat emitting device;
a second heat emitting device; and
a first heat sink having fins thermally coupled to the first
device, wherein the fins of the first heat sink overlap and extend
opposite to opposite sides of the second device.

REJECTIONS
Claim 17 stands rejected under 35 U.S.C. § 112, ¶ 2, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the Appellants regard as the invention.
Claims 34-37, 39, 40, 51, 53, and 54 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the Appellants' Admitted Prior Art
("AAPA") and U.S. Patent 6,356,448 B1 ("DiBene").
Claims 41 and 42 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by DiBene.
Claims 39 and 40 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by U.S. Patent No. 5,396,403 ("Patel").
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CLAIM 17
The issue before us follows: did the Examiner err in concluding that
claim 17 is indefinite for reciting "the fourth device."
A claim is indefinite "where the language 'said lever' appears in a
dependent claim where no such 'lever' has been previously recited in a parent
claim to that dependent claim." Ex parte Moelands, 3 USPQ2d 1474, 1476
(BPAI 1987).
Here, the Examiner rejected claim 17 under 35 U.S.C. § 112, ¶ 2, as
being indefinite because "the fourth device" lacks antecedent basis.
(Ans. 3.) The "Appellants acknowledge the rejection of claim 17 under
35 USC 112, second paragraph and agree to amend claim 17 to address this
rejection . . . ." (Reply Br. 1.)
Therefore, we conclude that the Examiner did not err in concluding
that claim 17 is indefinite for reciting "the fourth device."

CLAIMS 34-37 AND 51
Based on the Appellants' arguments, we will decide the appeal of the
obviousness rejection of claims 34-37 and 51 on the basis of claim 34. See
37 C.F.R. § 41.37(c)(1)(vii).
Therefore, the issue before us follows: did the Examiner err in
concluding that the combined teachings of AAPA and DiBene would have
suggested a first heat sink overlapping a power pod and a second heat sink
extending at least partially across and over the first heat sink, as required by
representative claim 34.
"The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art." In re
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Application 10/803,399
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Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981)).
Here, the Appellants argue that "[i]n DiBene, it is the heat sink that is
coupled to the processor (NOT the heat sink coupled to the power pod) that
is overlapped by another heat sink." (Reply Br. 3.)
We agree, however, with the Examiner's following findings and
conclusions.
[I]t was never the Examiner's position that DiBene teaches the
heat sink/power pod, heat sink/processor relationship as
alleged, rather the Examiner simply used the DiBene reference
to teach a second heat sink extending over a first heat sink. The
relationship between the heat sink/power pod, heat
sink/processor is addressed by AAPA. The Examiner asserts
that the Appellant[]s are engaging in piecemeal analysis of the
references.
(Ans. 12-13 (emphasis removed).)
Therefore, we conclude that the Examiner did not err in finding that
the combined teachings of AAPA and DiBene would have suggested the
first heat sink overlapping the power pod and the second heat sink extending
at least partially across and over the first heat sink, as required by
representative claim 34.

CLAIMS 39-42, 53, AND 54
OBVIOUSNESS REJECTION AND ANTICIPATION REJECTION APPLYING DIBENE
Based on the Appellants' arguments, we will decide the appeal of the
obviousness rejection of claims 39, 40, and 53 on the basis of claim 39.
Based on the Appellants' arguments, we will decide the appeal of the
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anticipation rejection of claims 41 and 42 on the basis of claim 41 and the
obviousness rejection of claim 54 on the basis of claims 41 and 54.
Therefore, the issue before us follows: did the Examiner err in
concluding that the teachings of DiBene would have taught that "fins of [a]
first heat sink overlap and extend opposite to opposite sides of [a] second
device" (emphasis added) as recited in representative claim 39 and similarly
recited in representative claim 41 and claim 54.
"It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim, and that
anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed.
Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist &
Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). The question of
obviousness is "based on underlying factual determinations including . . .
what th[e] prior art teaches explicitly and inherently." In re Zurko, 258 F.3d
1379, 1383 (Fed. Cir. 2001) (citations omitted).
Here, the Examiner reproduces Figure 1 of DiBene and adds labels
and explanations that "detail[ ] how the first heat sink fins extend opposite to
opposite sides of a second heat emitting device." (Ans. 14-15.)
The Appellants argue that Figure 3 of "the specification illustrates that
the heat sink extends 'opposite to opposite sides' of a heat emitting device
(claim 39) or of another heat sink." (Reply Br. 6.) However, the Appellants
do not explain what features in Figure 3 show that "the fins of the first heat
sink overlap and extend opposite to opposite sides of the second device"
(emphasis added) as recited in claim 39. (See Reply Br. 6-7.) Comparing
Figure 1 of DiBene and Figure 3 of the Specification, moreover, persuades
us of no error in the Examiner's position.
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Therefore, we conclude that the Examiner did not err in concluding
that the teachings of DiBene would have taught that "the fins of the first heat
sink overlap and extend opposite to opposite sides of the second device"
(emphasis added) as recited in representative claim 39 and similarly recited
in representative claim 41and claim 54.

ANTICIPATION REJECTION OF CLAIMS 39 AND 40
Here, as discussed above, we affirmed the rejection of claims 39-42,
53, and 54 under § 103(a) over AAPA and DiBene. We find it unnecessary
to reach a decision about the Examiner’s cumulative rejection of claims 39
and 40 under § 102(b). See 37 C.F.R. § 41.50(a)(1) ("The affirmance of the
rejection of a claim on any of the grounds specified constitutes a general
affirmance of the decision of the examiner on that claim . . . .").

DECISION
We affirm the rejection of claim 17 under § 112, ¶ 2.
We affirm the rejection of claim 34 under § 103(a) and that of
claims 35-37 and 51, which fall therewith.
We affirm the rejection of claim 39 under § 103(a) and that of
claims 40 and 53, which fall therewith.
We affirm the rejection of claim 41 under § 102(b) and that of
claim 42, which falls therewith.
We affirm the rejection of claim 54 under § 103(a).
We do not reach the rejection of claims 39 and 40 under § 102(b).
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Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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