Ex Parte Clovesko et al

Patent Trial and Appeal Board

Aug 22, 2016

11590061 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111590,061 10/31/2006
23456 7590 08/24/2016
PATTERSON Intellectual Property Law, P,C
1600 DIVISION STREET, SUITE 500
NASHVILLE, TN 37203
FIRST NAMED INVENTOR
Timothy Clovesko
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Pl094-4/N3780 5170
EXAMINER
MILLER, DANIEL H
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
docket@IPLA WGROUP.COM
jdh@iplawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY CLOVESKO, JULIAN NORLEY,
MARTIN DAVID SMALC, and JOSEPH PAUL CAPP 1
Appeal2015-000974
Application 11/590,061
Technology Center 1700
Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
JEFFREY R. SNAY, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) the Examiner's decision
to reject claims 1, 2, 5, 6, and 12-16 under 35 U.S.C. § 103(a) as obvious
1 Appellants identify the real party in interest as Graff ech International
Holdings Inc. Appeal Br. 3.
2 In our opinion below, we reference the Final Office Action mailed
November 6, 2013 (Final), the Appeal Brief filed June 6, 2014 (Appeal Br.),
the Examiner's Answer mailed September 11, 2014 (Ans.), and the Reply
Brief filed October 13, 2014 (Reply Br.).
Appeal2015-000974
Application 11/590,061
over Morita3 in view of Tzeng '520,4 Khatri,5 Harris, 6 and Tzeng '400.7 We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
The claims are directed to a display device having a display panel,
heat sources, and a heat spreader. See, e.g., claim 1. The heat spreader
comprises a sheet of compressed particles of exfoliated graphite. Id.
Appellants argue the claims as a group. We select claim 1 as
representative and reproduce it below emphasizing the limitation at issue.
1. A display device, comprising a display panel, a
plurality of heat sources, and a monolithic heat spreader
dimensioned so as to be at least about 270 millimeters x 500
millimeters, and which comprises a sheet of compressed
particles of exfoliated graphite having two major surfaces, the
heat spreader having a thickness of from about 0.25 to about 1.0
mm, wherein the at least one sheet of compressed particles of
exfoliated graphite is anisotropic and has a surface area larger
than the surface area of one of the heat sources, and wherein
one of the major surfaces of the heat spreader has an adhesive
thereon to permit substantially all of such major surface to be in
thermal contact with the plurality of heat sources in the display
device wherein the adhesive comprises a release load of no
greater than 40 g/ cm and achieves a minimum lap shear
adhesion strength of at least about 125 grams per square
centimeter, and further wherein the heat spreader has a density
of from about 1. 6 g/ cc to about 1. 9 g/ cc.
Claims Appendix, Appeal Br. 35.
3 Morita et al., US 5,831,374, issued Nov. 3, 1998.
4 Tzeng, US 6,482,520 Bl, issued Nov. 19, 2002.
5 Khatri, US 6,610,635 B2, issued Aug. 26, 2003.
6 Harris et al., US 5,748,269, issued May 5, 1998.
7 Tzeng et al., US 6,245,400 Bl, issued June 12, 2001.
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Application 11/590,061
OPINION
In a prior appeal (Appeal No. 2011-001666), a panel of this Board
affirmed the decision of the Examiner to reject claims 1, 2, 5, and 6 over
Morita in view of Tzeng '520, and the rejection of claims 11-15 over Morita
in view of Tzeng '520, Khatri, Harris, and Tzeng '400. Prior Decision 1-2.8
Since the Prior Decision, Appellants have incorporated the lap shear strength
limitation of claim 11 into claim 1, and made some other amendments to
claim 1. See Ans. 11 (discussing the changes). Appellants' Appeal Brief
does not direct any arguments to the newly added limitations. Appeal Br.
10-33. Further, there is no dispute that the rejection to be reviewed in this
appeal is essentially the same as the rejection we previously reviewed.
Compare Ans. 11 with Reply Br. 4--10. What has changed is Appellants'
reliance on new evidence. See, e.g., Smale Decl. 9 and Kirk-Othmer
Encyclopedia of Chemical Technology, vol. 2, p. 185 and vol. 7, p. 387 (4th
Ed. 1992).
As in the previous appeal, Appellants concentrate their arguments on
the Examiner's finding of a reason within the art for using a sheet of
compressed particles of exfoliated graphite, as taught to be known in the
prior art by Tzeng '520, as the graphite film 6 of Morita. Appeal Br. 10-33.
After reviewing the new evidence cited by Appellants along with the
prior art, we determine that a preponderance of the evidence supports the
Examiner's finding.
Appellants open their arguments with a discussion of different types
of graphite and note that Morita discloses a pyrolytic graphite. Appeal Br.
8 Decision mailed January 10, 2012 (Prior Decision).
9 Declaration of Martin Smale, dated August 6, 2013.
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Application 11/590,061
10-16. There is no dispute that Morita discloses the use of "a high-
orientation graphite layer interposed between the panel unit and the heat
sinking unit" of a plasma display panel, 10 or that this high-orientation
graphite layer differs from the exfoliated graphite of Appellants' claim 1.
Compare Appeal Br. 15-16 with Ans. 11.
The Examiner finds Tzeng '520 teaches using flexible graphite
material formed from exfoliated graphite as a heat spreader, and concludes it
would have been obvious to one of ordinary skill in the art to use the flexible
graphite of Tzeng 520 as the graphite heat spreader of Morita "because of its
substantial similarity to Morita and its anisotropic properties and
conformability11 as desired by Morita (see figures [of] Morita wherein
graphite is bent to curved structure)." Final 3, citing Morita, col. 5, 1. 51
(which discloses placing a heat sinking unit 2 on the back surface 11 of
panel unit 1 shown in Fig. 3); col. 7, 11. 13-17, (which discloses an
alternative embodiment shown in Fig. 5); and col. 7, 11. 45---68 (which
discloses including a heat equalizing layer between the panel unit back
surface 11 and heat sinking unit 2 made from flexible metal film or from a
high-orientation graphite film having flexibility).
Appellants contend that the characteristics sought by Morita for the
graphite sheet exclude the sheet of compressed particles of exfoliated
graphite from consideration. Appeal Br. 17. To support this argument,
Appellants point to Morita's disclosure of using a high-orientation graphite
product with an in-plane thermal conductivity of 860 kcal/m· h· °C ( ~ 1000
10 Morita, col. 3, 11. 9-11.
11 Although the Examiner uses the word "conformability," the Examiner also
finds Morita also desires flexibility. Ans. 13. Morita supports this finding
regarding flexibility. Morita, col. 7, 11. 45---68; col. 13, 11. 28--44.
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Application 11/590,061
W /mK, in the units of the Declaration of Martin Smale), the Declaration of
Smale, and Exhibits A and B. Appeal Br. 16, citing Morita, col. 13, 11. 31-
38, and Appeal Br. 17-22.
The problem is that the disclosure at column 13 cited by Appellants is
merely an example of a high-orientation graphite product Morita suggests
using. Elsewhere, Morita suggests that the teaching is broader. See, for
instance, column 16, which states:
For the material of the joining portion, high-orientation graphite
is preferred because of its excellent heat conductivity, but it is
also possible to use a normal graphite sheet or carbon sheet
when the amount of heat generation is moderate.
Morita, col. 16, 11. 29-33. Contrary to Appellants' argument, Morita
envisions a broader range of graphite sheet materials for use in graphite film
6.
Appellants further rely on the Smale Declaration to present evidence
in support of their argument that one of ordinary skill in the art would not
have made the combination. Smale offers his opinion on what one of
ordinary skill in the art would have recognized from the teachings of Morita
and Tzeng '520 based on the teachings of those references, particularly the
known properties of the graphite materials of those references, and their
relative benefits. Smale Deel. i-fi-1 6-11. Smale also presents evidence of
testing in a PowerPoint presentation to support an opinion that "one of skill
in the art would know that pyrolytic graphite is a more appropriate material
for heat dissipation systems, like those disclosed in Morita et al. that utilize a
heat sink, than is the flexible graphite material disclosed in Tzeng '520."
Exhibit B (Graffech Int'l PPT "P1085K Natural Convection Testing");
Smale Deel. i-f 11.
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Appeal2015-000974
Application 11/590,061
But, again, Morita suggests using other graphite materials including
"normal graphite," and, as pointed out by the Examiner, the graphite need
not be the most preferred or best mode in order to support a conclusion of
obviousness. Ans. 11-12. See In re Applied Materials, Inc., 692 F.3d 1289,
1298 (Fed. Cir. 2012) ("A reference must be considered for everything that
it teaches, not simply the described invention or a preferred embodiment.");
Merck & Co v. Biocraft Laboratories, 874 F.2d 804, 807 (Fed. Cir. 1989)
("the fact that a specific embodiment is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.").
Appellants further contend that Morita's graphite would function as a
thermal interface, passing heat directly through its thickness, rather than a
heat spreader. Appeal Br. 17-18, citing Reis Decl. 12 But, as pointed out by
the Examiner, Morita contradicts this evidence. Ans. 12. Morita
specifically desires the graphite film 6 act "to even out local temperature
differences," serve to reduce temperature variations among the fins 42
through the plasma display panel 104, and transfer heat in lateral directions.
Morita, col. 10, 11. 18-20, 32-37, 48-52. See also Morita, col. 13, 11. 45-52
(describing a preference for orienting the graphite crystals so the film has
higher thermal conductivity in its plane direction than in its width direction).
Morita teaches using a graphite sheet, albeit not the specific type
claimed, and Tzeng '520 teaches a sheet of compressed particles of
exfoliated graphite that is also used to dissipate heat generated by electronic
components. Using the known graphite taught by Tzeng '520 in the plasma
display panel of Morita for its expected heat dissipation properties would
12 Declaration of Bradley E. Reis, dated October 21, 2009.
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have been obvious to the ordinary artisan. "The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007).
We have considered the declaratory evidence in so far as it is
persuasively supported by evidence and weighed it along with the evidence
in the prior art to make our determination. See In re Oelrich, 579 F.2d 86,
91 (CCPA 1978) (consider the nature of the matter sought to be established
as well as the strength of the opposing evidence in assessing the probative
value of expert opinion); In reAltenpohl, 500 F.2d 1151, 1158 (CCPA 1974)
(lack of factual support rendered an affidavit of little probative value in
overcoming obviousness rejection); In re Lindell, 385 F.2d 453, 456 (CCPA
1967) (Although an affiant's or declarant's opinion on the ultimate legal
issue is not evidence in the case, "some weight ought to be given to a
persuasively supported statement of one skilled in the art on what was not
obvious to him." (emphasis added)).
Although Appellants focus their arguments in the Appeal Brief on the
obviousness of substituting the graphite sheet of Morita with the graphite
sheet of Tzeng '520, the Reply Brief includes an argument regarding the
criticality of the release load limitation added to the claim, and experimental
results in Exhibit C. Reply Br. 9-10. Appellants did not rely on criticality
or the results in Exhibit C in their Appeal Brief to support a showing of
unexpected results. Thus, we do not consider this argument.
CONCLUSION
We sustain the Examiner's rejection.
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Appeal2015-000974
Application 11/590,061
DECISION
The Examiner's decision is affirmed.
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)(l).
AFFIRMED
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