Ex Parte Koester et al

Patent Trial and Appeal Board

Jun 24, 2016

12371006 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/371,006 02/13/2009 David Koester
20792 7590 06/24/2016
MYERS BIGEL & SIBLEY, PA
PO BOX 37428
RALEIGH, NC 27627
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.
9510-41 6756
EXAMINER
MENGESHA,WEBESHET
ART UNIT PAPER NUMBER
3744
MAILDATE DELIVERY MODE
06/24/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID KOESTER, SERI LEE,
and RAMASWAMY MAHADEV AN
Appeal2014-006099
Application 12/371,006
Technology Center 3700
Before JENNIFER D. BAHR, MICHAEL W. KIM, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David Koester et al ("Appellants") appeal under 35 U.S.C.
§ 134(a)from the Examiner's Final Decision rejecting claims 2-13 and 16-
24.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants submit the real party in interest is Nextreme Thermal Solutions,
Inc. Appeal Br. 1.
Appeal2014-006099
Application 12/371,006
THE CLAIMED SUBJECT MATTER
Claim 3, reproduced below, is illustrative of the claimed subject
matter.
3. An electronic device comprising:
a heat generating component;
a surface adjacent the heat generating component wherein
a temperature of the heat generating component is greater than a
temperature of the surface adjacent the heat generating
component during operation of the electronic device; and
a thermoelectric heat pump between the surface and the
heat generating component wherein the thermoelectric heat
pump is configured to pump heat from a cold side of the
thermoelectric heat pump adjacent the surface toward the heat
generating component;
wherein the surface comprises a surface of a backside of a
display so that the thermoelectric heat pump is between the
backside of the display and the heat generating component and
so that the thermoelectric heat pump is configured to pump heat
from the cold side adjacent the surface of the backside of the
display toward the heat generating device.
REJECTIONS
1) Claims 3, 4, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fitzgerald (U.S. Army Elec. Res. and Dev. Lab.,
404893, Design and Evaluation of Thermoelectric Thermal Barrier
for Micro-Modules (1962)) and Tomioka (US 2004/0070934 Al,
pub. Apr. 15, 2004).
2) Claims 5 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fitzgerald, Tomioka, Francis J. DiSalvo,
Thermoelectric Cooling and Power Generation, Science 285, 703
(1999), and Bierschenk (US 5,441,576, iss. Aug. 15, 1995).
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Application 12/371,006
3) Claims 6 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fitzgerald, Tomioka, and Chu (US 6,424,533
Bl, iss. July 23, 2002).
4) Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fitzgerald, Tomioka, Chu, and Chen (US
2005/0247337 Al, iss. Nov. 10, 2005).
5) Claims 10, 11, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fitzgerald, Tomioka, and Park (US
2005/0075573 Al, pub. Apr. 7, 2005).
6) Claims 12 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fitzgerald, Tomioka, Chu, and
Venkatasubramanian (US 7, 164,077 B2, iss. Jan. 16, 2007).
7) Claims 13 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fitzgerald, Tomioka, Chu, Venkatasubramanian,
and Gwilliam (US 5,385,020, iss. Jan. 31, 1995).
8) Claims 7 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fitzgerald, Chu, and Chen.
9) Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Fitzgerald, Chu, Chen, and Schendel (US 6,253,556 Bl, iss. July 2,
2001).
DISCUSSION
Rejections 1- 7
The Examiner finds that Fitzgerald discloses the limitations of
independent claims 3 and 16 other than "the surface (TC) comprises a
surface of a backside of a display." Final Act. 5, 6. The Examiner finds that
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Application 12/371,006
Tomioka discloses "a backside of a display ( 11) and a heat radiating pump
(30) configured to pump heat from the cold side adjacent to the surface of
the backside of the display (11) toward the heat generating device." Id.
Appellants contend the Examiner's finding concerning the disclosure
of Tomioka is erroneous because Tomioka "discloses the opposite of what
the Office Action alleged." Appeal Br. 7. Appellants contend that Tomioka
"discloses pumping heat from a heat generating device (IC chip 25) to a
heat-radiating portion [] adjacent display panel 8." Id. The Examiner
responds that Tomioka discloses "a close loop heat transfer system and heat
is transferred from IC chip to the display via the transfer fluid, and the vise
[sic] versa is also happening wherein, the cold transfer fluid is also conveyed
back from the display to the IC chip." Ans. 2-3. For the following reasons,
we find Appellants' contention persuasive and do not sustain the rejection.
Tomioka discloses "[t]he heat the IC chip 25 generates while
operating is enormous, because the chip 25 operates at high speed and ...
needs to be cooled to keep operating in a stable condition." Tomioka i-f 29
(emphasis added). Tomioka also discloses that "coolant ... absorbs heat
from the IC chip 25 and [is] transferred to the heat radiating portion 30 ....
The heat is radiated from the heat-radiating portion 30 and hence from the
portable computer 1." Id. i-f 54. Tomioka, thus, is directed to transferring
heat away from IC chip 25 to the exterior of the computer. The Examiner
has not referred us to any disclosure in Tomioka where heat is transferred to
IC chip 25 from display panel 8. The return of cold fluid to Tomioka's IC
chip is part of the process of transferring heat away from the IC chip, not
transferring heat to the IC chip. The Examiner's finding that Tomioka
discloses a heat pump "configured to pump heat from the cold side adjacent
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Application 12/371,006
the surface of the backside of the display ( 11) toward the heat generating
device" is not supported by a preponderance of the evidence. As the
rejection is based on an erroneous factual finding, the conclusion of
obviousness cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) (holding that "[t]he legal conclusion of obviousness must be
supported by facts. Where the legal conclusion is not supported by facts it
cannot stand."). Therefore, we do not sustain the rejections, under 35 U.S.C.
§ 103(a), of independent claims 3 and 16 and claims 4---6, 8, 10-13, and 17-
24 which depend on claim 3 or claim 16.
Rejections 8- 9
This dispute revolves around the limitation in independent claim 7 of
a "thermally insulating gap ... between the thermoelectric heat pump and
the heat generating component."2 Appeal Br. 18 (Claims App.). The
Examiner finds that Fitzgerald discloses all the limitations of claim 7, other
than the recited "hot side heat spreader." Final Act. 18-20. The Examiner
finds that Chu discloses a heat spreader "in contact with the cold side" of a
thermoelectric device. Id. at 21. The Examiner finds that Figure 4 of
Fitzgerald discloses the recited "thermally insulating gap." Id. The
Examiner alternately finds that the "thermally insulating gap" is disclosed in
Figures 1 G and lH of Chen. Id. at 22. The Examiner concludes it would
have been obvious to combine Chen with Fitzgerald, as modified by the heat
spreader of Chu, "to allow some heat to dissipate in the surrounding air ...
and thus minimize the danger of burning/damaging the heat generating
component." Id.
2 Claim 9 contains a similar limitation as discussed below.
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Appellants contend that Fitzgerald does not disclose the thermally
insulating gap (Appeal Br. 10-11), Fitzgerald teaches away from a thermally
insulating gap (Id. at 11 ), Chen discloses a thermally insulating gap but not
in the position recited in claim 7 (Id. at 11-12), and Fitzgerald would not
perform as intended if combined with Chen's thermally insulating gap (Id. at
12). For the following reasons, we determine Appellants' contentions to be
unpersuasive and sustain the rejection of claim 7.
Initially, we note our agreement with Appellants that Figure 4 of
Fitzgerald does not support the Examiner's finding that Fitzgerald discloses
the recited "thermally insulating gap." Figure 4 is an electrical schematic
drawing, not a mechanical layout drawing, and standing alone cannot
support the finding that is related to physical spacing. The Examiner relies
only on Figure 4 and admits there is no textual support in Fitzgerald for the
finding. Final Act. 21-22. In the absence of textual support, the finding that
Fitzgerald discloses the thermally insulating gap is not supported by a
preponderance of the evidence. The Examiner alternately relies on Chen for
disclosure of the thermally insulating gap. Id. at 22. Appellants admit that
Chen discloses a thermally insulating gap. Appeal Br. 11. Consequently,
the Examiner's reliance on Fitzgerald to disclose the thermally insulating
gap is of no import to our decision.
Chen discloses a gap between the cold side of a thermoelectric
refrigerator and a cooling target. Chen, Fig. lG. We understand Chen's use
of the phrase "cooling target" to refer to a device from which heat is
transferred, i.e., the "surface adjacent the heat generating component" in
claim 7. See id. i-f 3. In Figure lH, Chen discloses a gap between a heat
source (heat generating component) and a thermoelectric power generator.
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Application 12/371,006
Chen discloses that the thermoelectric refrigerator and the thermoelectric
power generator in Figures 1 G and lH are the same device operating in
different modes. See id. Appellants' argument that the thermally insulating
gap in Chen's Figure 1 G is not in the position recited in claim 7 is not
persuasive for two reasons. First, the position of the gap, as recited in claim
7, is disclosed in Figure lH. So, the Examiner's finding is supported by
Chen. Second, even if the position of the gap in Figure lH were not
disclosed, the argument would amount to an attack on Chen individually,
while the rejection is based on the combination of Chen's gap with the
thermoelectric heat pump of Fitzgerald. Ans. 8. One cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Appellants next contend that Fitzgerald teaches away from a
thermally insulating gap between the heat generating component and
thermoelectric heat pump. In order for a reference to teach away, it must be
established that the reference would have led a person of ordinary skill in the
art in a direction divergent from that chosen by Appellants. See In re
Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001); In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994). In support of this contention, Appellants refer us to
Fitzgerald's disclosure of an air gap between the heat generating component
and the printed circuit board on which the heat generating component is
mounted. Appeal Br. 10-11. Appellants submit that Fitzgerald discloses
filling in this air gap with "a layer of silicone grease ... to improve heat
transfer." Id. at 11, citing Fitzgerald. This air gap, however, is not between
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Application 12/371,006
the heat generating component and the thermoelectric heat pump. Fitzgerald
is silent on the issue of the placement of a thermally insulating gap as recited
in claim 7. See e.g. Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d
1356, 1364 (Fed. Cir. 2006)("We will not read into a reference a teaching
away from a process where no such language exists."). Appellants provide
no argument or persuasive technical reasoning why Fitzgerald's disclosure
of filling the air gap between the heat generating component and the circuit
board to improve heat transfer in that area would lead a person of ordinary
skill in a direction away from positioning a thermally insulating gap as
recited in claim 7. Therefore, we determine this argument to be
unpersuasive.
Appellants repackage the teaching away argument to contend that
Fitzgerald would not work according to its intended purpose if combined
with Chen's thermally insulating gap. Appeal Br. 12. Appellants argue that
because Chen's thermoelectric refrigerator operates on a different principle
than Fitzgerald's thermoelectric heat pump, modifying Fitzgerald's
thermoelectric heat pump to include Chen's thermally insulating gap would
render Fitzgerald inoperable for its intended purpose. Id. Appellants submit
no evidence or technical reasoning in support of the argument that
Fitzgerald, as modified by Chen, would not operate as intended, other than
to repeat the unpersuasive argument that Fitzgerald teaches away from a
thermally insulating gap. Id. In the absence of such evidence or reasoning,
the argument is not persuasive.
Appellants fail to persuasively apprise us of error in the Examiner's
rationale, quoted above, for the combination of Fitzgerald, as modified by
Chu and Chen, which we determine to be reasonable and supported by the
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disclosure in the cited references. See KSR Intern. Co. v Teleflex Inc., 550
US 398, 416 (2007) ("[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results."). Therefore, we sustain the rejection of independent
claim 7. Appellants did not argue separately for the patentability of claim 2
which is dependent on claim 7. We sustain the rejection of claim 2 as well.
Appellants argue separately for the patentability of independent claim
9. Claim 9 is similar to claim 7 except that it recites a "cold side heat
spreader" "between the thermoelectric heat pump and the surface," rather
than the hot side heat spreader positioned as recited in claim 7. Appeal Br.
18-19 (Claims App.). The Examiner rejected claim 9 based on the same
analysis and combination of references as claim 7. Final Act. 23-28.
Appellants interpose the same arguments for patentability of claim 9 as for
claim 7. Appeal Br. 13-15.
As noted above, Chen's Figure lG discloses a thermally insulating
gap between the cold side of a thermoelectric refrigerator and a cooling
target. Thus, Chen discloses the position of the thermally insulating gap
recited in claim 9. See Appeal Br. 11. For the reasons stated above in
connection with claim 7 and for this additional reason, we sustain the
rejection of independent claim 9.
DECISION
The Examiner's decision rejecting claims 3---6, 8, 10-13, and 16-24 is
reversed. The Examiner's decision rejecting claims 2, 7, and 9 is affirmed.
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Application 12/371,006
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)(l )(iv).
AFFIRMED-IN-PART
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