Ex Parte Durham et al

Patent Trial and Appeal Board

Dec 27, 2016

13325862 (P.T.A.B. Dec. 27, 2016)

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.
13/325,862 12/14/2011 Zachary B. Durham XRPS920110109US1 1599
60501 7590 12/29/2016
LENOVO COMPANY (LENOVO-KLS)
c/o Kennedy Lenart Spraggins LLP
8601 Ranch Road 2222
Ste. 1-225
AUSTIN, TX 78730
EXAMINER
VORTMAN, ANATOLY
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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):
office@klspatents.com
kate@klspatents.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZACHARY B. DURHAM and
WILLIAM M. MEGARITY
Appeal 2015-007075
Application 13/325,862
Technology Center 2800
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection2 of
claims 1 and 13.3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Lenovo Enterprise Solutions.
(Appeal Brief, filed January 20, 2015 (“Br.”), 1.)
2 Final Office Action mailed August 20, 2014 (“Final Act.”).
3 No Reply Brief has been filed.
Appeal 2015-007075
Application 13/325,862
CLAIMED SUBJECT MATTER
The claims are directed to a dual heat sink for distributing a thermal
load. (Spec. 2:9—10.)4 Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A dual heat sink for distributing a thermal load, the
dual heat sink comprising:
a top base to couple with a first integrated circuit of a
first board and to receive a first thermal load from the first
integrated circuit;
a bottom base to couple with a second integrated circuit
of a second board and to receive a second thermal load from the
second integrated circuit; and
a thermal dissipating structure in physical contact with
the top base and also in physical contact with the bottom base,
the thermal dissipating structure to receive and distribute the
first thermal load and the second thermal load from the top base
and the bottom base, wherein a height of the thermal dissipating
structure is adjustable so as to change a distance separating the
top base and the bottom base, wherein the thermal dissipating
structure includes an expandable metal mesh coupled between
the top base and the bottom base, the expandable metal mesh
applying a force that decreases the distance separating the top
base and the bottom base, the expandable metal mesh including
a plurality of support wires oriented diagonally to the top base
and the bottom base.
(Claims Appendix, Br. 9 (emphasis added).)
4 Application 13/325,862, Dual Heat Sinks for Distributing a Thermal Load,
filed December 14, 2011. We refer to the “’862 Specification,” which we
cite as “Spec.”
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Appeal 2015-007075
Application 13/325,862
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lin US 2007/0217151 A1 Sept. 20,2007
Yu US 2010/0157540 A1 June 24,2010
REJECTIONS
Claims 1 and 13 are rejected under 35 U.S.C. § 112, first paragraph,
for failure to comply with the written description requirement. (Final Act.
2-3.)
Claims 1 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lin in view of Yu. (Final Act. 3—5.)
OPINION
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Written Description5
The Examiner rejects claim 1 under 35 U.S.C. § 112, first paragraph,
for failure to comply with the written description requirement. In particular,
the Examiner finds that the term “a plurality of support wires” recited in
claim 1 constitutes new matter. (Final Act. 3.)
Appellants, on the other hand, argue that “[tjhere is no ambiguity” in
the claim term “a plurality of support wires.” (Br. 5.) Appellants argue that
the recited support wires are “clearly depicted in Figure 2” as part of
5 Because Appellants do not make separate arguments for claim 13 for the
written description rejection, claim 13 stands or falls with claim 1 with
respect to the written description rejection. (See Br. 4—5.)
3
Appeal 2015-007075
Application 13/325,862
“expandable mesh 202” and urge that the claim term “is only a description,
limiting the mesh to that of the form set forth in the embodiment depicted in
Figure 2.” {Id. at 4—5.)
Figure 2 of the ’862 Specification is reproduced below:
Fig. 2 of the ’862 Spec, illustrating an embodiment of the claimed apparatus
Adequate written description means that, in the specification, “the
applicant must ‘convey with reasonable clarity to those skilled in the art that,
as of the filing date sought, he or she was in possession of the [claimed]
invention.’” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir.
1991). “[W]hile the description requirement does not demand any particular
form of disclosure, or that the specification recite the claimed invention in
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Appeal 2015-007075
Application 13/325,862
haec verba, a description that merely renders the invention obvious does not
satisfy the requirement.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1352 (Fed. Cir. 2010) (enbanc) (citations omitted).
In this case, Appellants present conclusory statements that the written
description requirement is met without presenting factual evidence
supporting these statements. Other than generally pointing to “the claimed
mesh” illustrated in Figure 2, Appellants do not explain why the figure
reasonably conveys a structure of “wires.” Appellants do not explain why a
structural illustration of a mesh conveys with reasonable clarity that the
mesh also performs a particular function — in this case, a supporting
function. (Br. 5.) Appellants do not explain why the Examiner reversibly
erred in finding that Figure 2 does not show what (if anything) is being
supported by the diagonal lines. (Compare Br. 5 with Ans. 3.)6 7Appellants’
unelaborated assertion of compliance with the written description has not
identified reversible error in the Examiner’s findings and as a result we
sustain the rejection of claims 1 and 13 under 35U.S.C. § 112, first
paragraph.
Obviousness1
We note that the Examiner sets forth alternative reasoning as to why
the recited mesh structure of Appellants’ claims would have been obvious
over Lin in view of Yu:
it would have been obvious to a person of the ordinary skill in the
relevant arts at the time of the invention to form the mesh in any
suitable shape and form, including having diagonally oriented
6 Examiner’s Answer mailed April 30, 2015 (“Ans.”).
7 Because Appellants do not make separate arguments for claim 13 for the
obviousness rejection, this claim stands or falls with claim 1 with respect to
the obviousness rejection. (See Br. 5—7.)
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Appeal 2015-007075
Application 13/325,862
members as claimed, in order to achieve desired heat transfer, biasing
force, and production costs, since the rational that a particular shape is
a design choice may be found in legal precedent: In re Dailey, 357
F.2d 669, 149 USPQ 47 (CCPA 1966).
(Final Act. 5, at the bottom of p. 5.) Appellants have neither responded to
nor otherwise challenged this alternative reasoning. (Compare Br. 5—7 with
Final Act. 5; see also Ans. 4). The Appeal Brief is silent on this reasoning
and no Reply Brief was filed. No reversible error has been identified here.
Accordingly, we summarily sustained on the basis of this alternative
reasoning. As such, we need not reach the merits of the Examiner’s other
reasoning in support of the obviousness rejection as set forth in the Final
Action, at the top of page 5. Cf. In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.”); see also Ex parte Frye, Appeal No.
2009-006013, 2010 WL 889747, *4 (BPAI Feb. 26, 2010) (“Filing a Board
appeal does not, unto itself, entitle an appellant to de novo review of all
aspects of a rejection. If an appellant fails to present arguments on a
particular issue — or, more broadly, on a particular rejection — the Board
will not, as a general matter, unilaterally review those uncontested aspects of
the rejection.”) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)).
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Application 13/325,862
CONCLUSION
The Examiner’s rejection of claims 1 and 13 under 35 U.S.C. § 112,
first paragraph is sustained.
The Examiner’s rejection of claims 1 and 13 under 35 U.S.C. § 103(a)
based on the prior art references is sustained.
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)(1).
AFFIRMED
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