Ex Parte Getz et al

Board of Patent Appeals and Interferences

Jun 26, 2009

10833928 (B.P.A.I. Jun. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORGE GETZ, JR. and MICHAEL FRASTACI
____________

Appeal 2009-001523
Application 10/833,928
Technology Center 3700
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Decided: 1 June 29, 2009
____________

Before JENNIFER D. BAHR, JOHN C. KERINS, and
STEFAN STAICOVICI Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-001523
Application 10/833,928

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STATEMENT OF THE CASE
George Getz, Jr. et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-12. We have jurisdiction over
this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
The Appellants’ invention is drawn toward a heat sink 10 apparatus
including a metallic base 12 having a thermal conductivity of at least about
150 W/ m °K and a plurality of fins 14A-14H attached to the base, the fins
being constructed of anisotropic graphite material, namely, compressed
particles of exfoliated graphite. Specification 8, ¶¶ [0019] and [0057] and
fig. 2.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A heat sink apparatus, comprising:

a metal base having a thermal conductivity of at least
about 150 W/m°K; and

a plurality of fins attached to the base, the fins being
constructed of resin- impregnated sheets of compressed
particles of exfoliated graphite pressure cured at an
elevated temperature.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Mashiko US 6,085,830 Jul. 11, 2000
Norley US 6,503,626 B1 Jan. 7, 2003

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The Appellants seek review of the Examiner’s rejections of claims 1-
12 under 35 U.S.C. § 103(a) as unpatentable over Mashiko in view of
Norley.

THE ISSUE
Have the Appellants demonstrated that the Examiner erred in
determining that the combined teachings of Mashiko and Norley renders
obvious the Appellants’ claimed invention of a heat sink having fins
constructed of “resin-impregnated sheets of compressed particles of
exfoliated graphite”? In other words, the issue turns on whether the broadest
reasonable interpretation of claim 1 requires that each fin be constructed
from a single or a plurality of resin-impregnated sheets of compressed
particles of exfoliated graphite.

SUMMARY OF DECISION
We AFFIRM.

PRINCIPLES OF LAW
Claim Construction
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
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We must be careful not to read a particular embodiment appearing in
the written description into the claim if the claim language is broader than
the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004). The challenge is to interpret claims in view
of the specification without unnecessarily importing limitations from the
specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003).
Obviousness
It is elementary that to support an obviousness rejection “[a]ll words
in a claim must be considered in judging the patentability of that claim
against the prior art.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).

OPINION
The Appellants group the claims according to five separate groups.
Br. 20. The Appellants contend that the claims of each group are separately
patentable from the claims of the other groups. However, the Appellants’
statements regarding these claims consist of nothing more than recitations of
what each claim states. Br. 20-21. Bald assertions, unsupported by specific
arguments, that the claimed limitations are not disclosed by the prior art, will
not be considered an argument for separate patentability of the claims. See
37 C.F.R. § 41.37(c)(1)(vii) (2008) (“A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.”).
As such, we find that the Appellants present no separate arguments for
the patentability of the dependent claims apart from the independent claims.
Thus in accordance with 37 C.F.R. § 41.37(c)(1)(vii)(2007), the dependent
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claims stand or fall with the independent claims from which they depend.
Finally, since the Appellants likewise do not make separate arguments for
the patentability of independent claims 1, 7, and 10 apart from one another
(Br. 19), we choose claim 1 as the representative claim, with claims 2-12
standing or falling with claim 1.
The Appellants do not dispute the Examiner’s conclusion that it would
have been obvious to modify the fins of Mashiko with fins constructed of
resin impregnated sheets of compressed particles of exfoliated graphite of
Norley because it “would provide a heat sink having relatively high ratio of
thermal conductivity to weight.” Ans. 5. Rather, the Appellants argue that
the Examiner has misinterpreted the disclosure of Norley. Br. 12.
Specifically, the Appellants argue that Norley does not disclose “fins formed
of sheets of compressed particles of expanded graphite.” Br. 19. According
to the Appellants:
[T]he Norley et al. invention uses sheets of
compressed particles of exfoliated graphite as a
starting material, the sheets are ground into smaller
particles in order to provide particles to be formed
into a heat sink. The particles are compressed into
a block, such as by die pressing or isotropic
molding, and cured. (col. 9, lines 4-10 [of
Norley]).
Br. 17.
As far as we understand, the Appellants’ arguments appear to imply
that the fins of Norley are constructed from a plurality of compressed
particles of exfoliated graphite, whereas the fins of the Appellants’ claimed
invention are constructed from a plurality of sheets of compressed particles
of exfoliated graphite. Although we agree with the Appellants’
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interpretation of the disclosure of Norley, in the end we disagree with the
Appellants’ position for the following reasons.
Claim 1 requires that “the fins [are] constructed of resin-impregnated
sheets of compressed particles of exfoliated graphite.” Emphasis added. As
noted above, when construing claim terminology, claims are to be given
their broadest reasonable interpretation. Moreover, we must be careful not
to read a particular embodiment appearing in the written description into the
claim if the claim language is broader than the embodiment. In this case, we
find that claim 1 does not require a plurality of sheets of compressed
particles of exfoliated graphite, as the Appellants suggest. The broadest
reasonable interpretation of claim 1 is that each fin is constructed from a
single sheet of compressed particles of exfoliated graphite such that, in total,
“the fins [are] constructed of resin- impregnated sheets of compressed
particles of exfoliated graphite.” As stated by our reviewing court in In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is
the claim.” It is well established that limitations not appearing in the claims
cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348
(CCPA 1982). Therefore, we construe the limitation of the “fins being
constructed of resin-impregnated sheets of compressed particles of
exfoliated graphite,” as required by claim 1, to be sufficiently broad to
encompass a construction in which each fin is constructed from a single
resin-impregnated sheet of compressed particles.
It is our finding that Norley discloses compressing exfoliated graphite
particles in a sheet, impregnating the sheet with an epoxy resin, grinding the
epoxy-impregnated sheet into particles, compressing the particles (under
about 1,000 psi to at least about 35,000 psi) into a desired article (i.e., block
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or bar) and curing the article. Norley, col. 8, ll.12-18, 24-26, and 50-52; col.
9, ll. 4-6 and 24-27; col. 12, ll. 14-28. Further, we find that Mashiko
discloses a heat sink 9 including a copper or aluminum (metallic) base 7 and
graphite fins 8. Mashiko, col. 4, ll. 33-36 and 48-49 and fig. 1. In view of
Mashiko’s teaching of graphite fins, we agree with the Examiner that it
would have been obvious to a person of ordinary skill in the art to use the
process of Norley to compression mold resin-impregnated sheets of
exfoliated graphite particles and to use these in place of the graphite fins of
Mashiko because it “would provide a heat sink having [a] relatively high
ratio of thermal conductivity to weight.” Ans. 5. Although the desired
article of Norley is a bar or a block, we find that a person of ordinary skill in
the art would have readily appreciated that a sheet is merely a block that is
thin in comparison to its length and width and would have known to adjust
the compression molding parameters such as to compress the resin-
impregnated exfoliated graphite particles of Norley into a sheet. After all,
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR v. Teleflex, 550 U.S. 398, 421 (2007). Moreover,
substituting the graphite fins of Mashiko’s heat sink with Norley’s resin-
impregnated sheets of exfoliated graphite particles would not have been
uniquely challenging to a person of ordinary skill in the art because it is no
more than “the simple substitution of one known element for another.” KSR
at 417. Therefore, the substitution appears to be the product not of
innovation but of ordinary skill and common sense. In conclusion, in view
of our construction of the disputed claimed language, we find that the
combined teachings of Mashiko and Norley disclose the limitation of the
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fins being constructed of “resin-impregnated sheets of compressed particles
of exfoliated graphite,” as required by claim 1.
Lastly, the Appellants argue that Norley does not disclose or suggest
curing at elevated temperatures. Br. 17. However, although we agree with
the Appellants that Norley does not specifically disclose a curing
temperature, Norley specifically discloses curing an epoxy resin system.
Norley, col. 12, ll. 20-23 and 27-28. A person of ordinary skill in the art
would have readily recognized that an epoxy resin system cures at an
elevated temperature. What a reference teaches or suggests must be
examined in the context of the knowledge, skill, and reasoning ability of a
skilled artisan. What a reference teaches a person of ordinary skill is not
limited to what a reference specifically “talks about” or what is specifically
“mentioned” or “written” in the reference. Syntex (U.S.A.) LLC v. Apotex,
Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005).
For the foregoing reasons, the Appellants’ arguments do not persuade
us that the Examiner erred in rejecting claim 1 as unpatentable over the
combined teachings of Mashiko and Norley. Accordingly, the rejection of
claim 1, and claims 2-12 standing or falling with claim 1, is sustained.

CONCLUSION
The Appellants have failed to demonstrate that the Examiner erred in
determining that the combined teachings of Mashiko and Norley render
obvious the Appellants’ claimed invention of a heat sink having fins
constructed of “resin-impregnated sheets of compressed particles of
exfoliated graphite."

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DECISION
The decision of the Examiner to reject claims 1-12 is affirmed.
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) (2008).

AFFIRMED

LV

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