Ex Parte Iwashima et al

Board of Patent Appeals and Interferences

Jan 5, 2009

10779613 (B.P.A.I. Jan. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MAKOTO IWASHIMA, AKIHIRO HANAMURA,
MASANORI YAMAGIWA, and YASUHIKO KITAJIMA
_____________

Appeal 2008-6272
Application 10/779,613
Technology Center 2800
____________

Decided: January 5, 2009
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY,
and ELENI MANTIS MERCADER Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
Appellants’ claimed invention is directed to a power converter adapted to
convert DC power to AC power to obtain driving electric power for an AC motor
(Spec. 1:4-7). Power semiconductor modules 71A to 71D, 72A to 72D, and 73A
to 73D sandwich coolers 11 to 16 as shown in Figure 3A (Spec. 1:21-23). The
coolers 11-16 extend radially from the center of the drive shaft 4 to the motor shaft
2a at equidistant and angular positions and perpendicular to the drive shaft 4 (Figs.
1 and 3A; and Spec. 7:14-18).
Claim 1, reproduced below, is representative of the subject matter on appeal:
1. A power converter arranged in series with a motor to form a unitary
structure through which an output shaft extends, comprising:
a plurality of coolers each of which extends along a radial direction with
respect to an output shaft so as to be perpendicular to the output shaft and having a
cooling surface defined by a direction parallel to the output shaft and the radial
direction; and
a power semiconductor module mounted on the cooling surface of at least
one of the plurality of coolers to supply electric power to a motor.

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THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Jackson US 2,942,165 Jun. 21, 1960

Ishiyama US 5,632,351 May 27, 1997

Kim US 2001/0054730 A1

Dec. 27, 2001
Gründl US 2004/0164625 A1 Aug. 26, 2004
(filed Mar. 15, 2002)
Gründl1 DE 10112799 C1 Oct. 17, 2002
The following rejections are before us for review2:
1. The Examiner rejected claims 1-10 and 18-20 under 35 U.S.C. § 102(b)
as being anticipated by Gründl.
2. The Examiner rejected claims 11 and 14-17 under 35 U.S.C. § 103(a) as
being unpatentable over Ishiyama in view of Gründl.
3. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Ishiyama in view of Gründl and further in view of Kim.
4. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Gründl in view of Jackson.
Appellants argue claims 1-10 and 18-20 as a group with claim 1 as

1 In the rejections, the Examiner relies on Gründl’s foreign patent disclosure (DE
10112799 C1). The Examiner, however, also cites Gründl’s US patent publication
(2004/0164625 A1 which claims foreign priority to DE 101127995) as an English-
language equivalent of the cited German document. This equivalence is
undisputed.
2 The rejection of claims 1-8 and 18-20 was withdrawn by the Examiner due to the
perfection of the priority date by the submitted certified translation on May 24,
2006 (Ans. 8).
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representative (Br. 5-6). Appellants also argue claims 11 and 14-17 as a group
with claim 11 as representative (Br. 7-10).3 Appellants have presented no further
arguments as to the additional references of Kim and Jackson used in rejecting
claims 12 and 13, respectively, but instead rely on the arguments provided for
claims 11 and 1 (Br. 10). Accordingly, claims 2-10 and 18-20 stand or fall with
claim 1, and claims 12-17 stand or fall with claim 11. See 37 C.F.R. § 41.37
(c)(1)(vii) (2004).

ANTICIPATION
ISSUE
Claims 1-10 and 18-20
Appellants contend Gründl’s power semiconductor module 46 is mounted on
a cooling surface defined by (1) a direction parallel to the output shaft and (2) a
circumferential direction, not a cooling surface defined by (1) a direction parallel
to the output shaft and (2) a radial direction perpendicular to the output shaft, as
described in claim 1 (emphasis in original) (Br. 5).
The Examiner responds that a portion of the cooling surface of the heat sink
of Gründl is in fact defined by both the axial and radial directions as shown below
(Ans. 8).

3 Only arguments made by Appellants have been considered in this decision.
Arguments which Appellants could have made but did not make in the Brief have
not been considered and are deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(2004).
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Examiner’s Figure (Ans. 8) indicating a cooling surface, a portion
of which extends in a radial direction.

The Examiner further explains that there is no positive recitation in the
claims that the power semiconductor module must be mounted directly on the
portion of the cooling surface that extends in the radial direction (Ans. 9). The
Examiner further responds that claim 1 recites only a cooling surface having a
radial direction which is taught by Gründl (Ans. 9). Furthermore, the Examiner
states that the power semiconductor module of Gründl could be broadly interpreted
as being is mounted on the radially extending portion of the cooling surface
because of its integral attachment therewith (Ans. 9). The Examiner further
explains that the claims do not require the power semiconductor module to extend
in the radial direction along with the cooling surface, only that they be mounted on
a cooling surface that does (Ans. 9).
The issue before us, then, is as follows:
Have the Appellants shown that the Examiner erred by determining that
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Gründl teaches “a power semiconductor module mounted on the cooling surface”
wherein “a cooling surface” is defined “by a direction parallel to the output shaft
and the radial direction” as claimed?

FINDINGS OF FACT
The relevant facts include the following:
1. Gründl teaches a power semiconductor module mounted on the cooling
surface (in Fig. 1 power semiconductor 46 mounted on cooler 40).
2. Gründl’s Figure 1 shows a cooling surface (i.e., cooler 40) extending along
the length of the output shaft.
3. Gründl’s Figure 1 also shows a cooling surface (i.e., cooler 40) extending
along the thickness of the cooler or along line 40a of Gründl’s Figure 1 or as
illustrated by the Examiner’s Figure supra in a “radial direction.”
4. The Examiner determined that claim 1 does not require the power
semiconductor module to extend in the radial direction along with the
cooling surface, only that the power semiconductor module be mounted on a
cooling surface which has a radial direction (Ans. 9 and claim 1).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. Inc., v. Union Oil Co. of Calif., 814 F.2d 628, 631
(Fed. Cir. 1987).
Although claims are interpreted in light of the specification, limitations from
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the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).

ANALYSIS
Have the Appellants shown that the Examiner erred by determining that
Gründl teaches “a power semiconductor module mounted on the cooling
surface” wherein “a cooling surface” is defined “by a direction parallel to
the output shaft and the radial direction” as claimed?

Gründl teaches a power semiconductor module 46 mounted on the cooling
surface 40 (Finding of Fact 1) wherein the cooling surface (cooler 40) extends
along the length of the output shaft shown in Gründl’s Figure 1 (Finding of Fact 2),
and thus, in a “parallel direction to the output shaft.” Furthermore, Gründl also
teaches that the cooling surface extends along a direction along the thickness of the
cooler or along line 40a of Gründl’s Figure 1, and thus, in a “radial direction” as
claimed (Finding of Fact 3).
Furthermore, as correctly noted by the Examiner, claim 1 does not require
the power semiconductor module to extend in the radial direction along with the
cooling surface, only that the power semiconductor module be mounted on a
cooling surface which has a radial direction (Ans. 9). As stated supra, although
claims are interpreted in light of the specification, limitations from the
specification (i.e., that the power semiconductor module extends in the radial
direction along with the cooling surface) are not read into the claims. In re Van
Geuns, 988 F.2d at 1184.

CONCLUSION
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The Appellants have not shown that the Examiner erred by determining that
Gründl teaches “a power semiconductor module mounted on the cooling surface”
wherein “a cooling surface” is defined “by a direction parallel to the output shaft
and the radial direction” as claimed. Thus, the Examiner’s rejection of claims 1-10
and 18-20 is sustained.

OBVIOUSNESS
ISSUE
Claims 11-17
Appellants contend that similar to Gründl, Ishiyama also fails to disclose the
following recited limitations of claim 1, and thereby claims 11-17 also fail to teach
these limitations as they directly or indirectly depend from claim 1 (Br. 7-10):
a plurality of coolers each of which extends along a radial direction
with respect to an output shaft so as to be perpendicular to the output
shaft and having a cooling surface defined by a direction parallel to
the output shaft and the radial direction; and a power semiconductor
module mounted on the cooling surface of at least one of the plurality
of coolers to supply electric power to a motor.

The Examiner responds that the Ishiyama reference is only relied upon to
teach a capacitor disposed between respective ones of a plurality of coolers and
adapted to smooth a DC voltage (Ans. 9). The Examiner further states that the
Gründl reference was relied upon for the teaching of a cooling surface that is
defined by both a direction parallel to the output shaft and the radial direction with
a semiconductor device mounted thereto (Ans. 9).
The issue before us, then, is as follows:
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Have the Appellants shown that the Examiner erred by determining that the
Ishiyama and Gründl combination teach “a capacitor disposed between respective
ones of the plurality of coolers adapted to smooth a DC voltage” and “a power
semiconductor module mounted on the cooling surface”, wherein “a cooling
surface” is defined “by a direction parallel to the output shaft and the radial
direction” as claimed?

FINDINGS OF FACT
The relevant facts include the following:
5. Ishiyama teaches capacitors 34 and 35 (col. 4, ll. 12-14) to smooth the input
DC voltage supplied via input cables 39 and 40 (col. 4, ll. 11-13).
6. Ishiyama further teaches that these capacitors are disposed between the
semiconductor devices 21, 22, and 23 (Fig. 10).
7. Ishiyama teaches that the cooling fins 47 of the heat sink 20 are disposed
closely under the semiconductor modules 21, 22, and 23 (Fig. 9 and col. 4,
ll. 56-60).
PRINCIPLES OF LAW
The Examiner’s articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006). The Supreme Court, citing In re Kahn, 441 F.3d at 988,
stated that “rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007). However, “the analysis
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need not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” Id.
“[O]ne cannot show non-obviousness by attacking references individually
where . . . the rejections are based on combinations of references.” In re Keller,
642 F.2d 413, 426 (CCPA 1981).
In a case of this type where a rejection is predicated on two references
each containing pertinent disclosure which has been pointed out to the
applicant, we deem it to be of no significance, but merely a matter of
exposition, that the rejection is stated to be on A in view of B instead
of on B in view of A, or to term one reference primary and the other
secondary. It would perhaps have saved much argument of the kind
we have before us if the Patent Office had stayed with its rejection of
the claims as unpatentable over A and B ‘considered together’ and
had merely stated its reasons for such rejection without formal
alinement of the references. Fifteen years ago this court pointed out in
In re Cowles, 156 F.2d 551, 554, 33 CCPA 1236, that such differing
forms of expression did not constitute different grounds of rejection,
were of little consequence, and that basing arguments on them was
‘attempting to make a mountain out of a mole-hill.’ (Emphasis
added).

In re Bush, 296 F.2d 491, 496 (CCPA 1961).

ANALYSIS
Have the Appellants shown that the Examiner erred by determining that the
Ishiyama and Gründl combination teaches “a capacitor disposed between
respective ones of the plurality of coolers adapted to smooth a DC voltage”
and “a power semiconductor module mounted on the cooling surface”,
wherein “a cooling surface” is defined “by a direction parallel to the output
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shaft and the radial direction” as claimed?

Ishiyama teaches capacitors 34 and 35 to smooth the input DC voltage
supplied via input cables 39 and 40 (Finding of Fact 5). Ishiyama further teaches
that these capacitors are disposed between the semiconductor devices 21, 22, and
23 (Finding of Fact 6). Furthermore, Ishiyama teaches that the cooling fins 47
(i.e., coolers) of the heat sink 20 are disposed closely under the semiconductor
modules 21, 22, and 23 (Finding of Fact 7). Thus, Ishiyama teaches capacitors 34
and 35 disposed between the respective ones of the plurality of coolers (i.e.,
cooling fins 47 which are placed under the semiconductor modules) adapted to
smooth a DC voltage (i.e., smoothing capacitors) as claimed.
Furthermore, it was determined supra that Gründl teaches “a power
semiconductor module mounted on the cooling surface” wherein “a cooling
surface” is defined “by a direction parallel to the output shaft and the radial
direction” (Findings of Fact 1-4).
Thus, Appellants’ argument that Ishiyama does not teach the cooling system
as claimed is not persuasive, because the Examiner relied on Gründl for those
teachings, and as stated supra, one cannot show non-obviousness by attacking
references individually where the rejections are based on combinations of
references. Keller, 642 F.2d at 425.
Furthermore, the Examiner articulated as a rationale to combine that
substituting Ishiyama’s cooling system with that disclosed by Gründl’s would
provide a cooling means for semiconductors that is compact, economically
producible and reliable as disclosed by Gründl (¶[0013]) (Final Rej. 6). The
articulated reasoning supports the legal conclusion of obviousness (i.e.,
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substituting for a compact, economically producible and reliable cooling system).
KSR, 127 S.Ct. at 1741.
The Examiner further responded that Ishiyama was only relied upon for the
teaching of the smoothing capacitors (Ans. 9). Thus, it would have been just as
persuasive to merely incorporate the smoothing capacitors between respective ones
of the plurality of Gründl’s coolers in order to smooth the input DC voltage before
its conversion to AC voltage. In other words, as stated supra, when the pertinent
disclosure from two references has been pointed out to the Appellant, we deem it
to be of no significance, but merely a matter of exposition, that the rejection is
stated to be on “A in view of B instead of on B in view of A, or to term one
reference primary and the other secondary” (emphasis added). Bush, 296 F.2d at
496.
For the foregoing reasons, Appellants have not persuaded us that the
Examiner erred in rejecting representative claim 11 or claims 12-17 which fall with
claim 11. Accordingly, we will sustain the Examiner’s rejections of those claims.

CONCLUSION
The Appellants have not shown that the Examiner erred by determining that
the Ishiyama and Gründl combination teaches “a capacitor disposed between
respective ones of the plurality of coolers adapted to smooth a DC voltage” and “a
power semiconductor module mounted on the cooling surface”, wherein “a cooling
surface” is defined “by a direction parallel to the output shaft and the radial
direction” as claimed.

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ORDER
The decision of the Examiner to reject claims 1-10 and 18-20 under 35
U.S.C. § 102(b), and claims 11-17 under 35 U.S.C. § 103(a) 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)(1)(iv).

AFFIRMED

gvw

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