Ex Parte LI et al

Board of Patent Appeals and Interferences

Jun 21, 2012

11601266 (B.P.A.I. Jun. 21, 2012)

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.
11/601,266 11/17/2006 Zong-Fu Li ITL.1438US (P24946) 5357
21906 7590 06/21/2012
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
WOLDEGEORGIS, ERMIAS T
ART UNIT PAPER NUMBER
2893
MAIL DATE DELIVERY MODE
06/21/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte ZONG-FU LI, DAVID ENGLAND, BOBBY NIKJOU,
JOSEPH T. DIBENE II, HONG XIE, and JASON ZHANG
_____________

Appeal 2010-000717
Application 11/601,266
Technology Center 2800
______________

Before, KALYAN K. DESHPANDE, DAVID M. KOHUT, and
BRYAN F. MOORE, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

Appeal 2010-000717
Application 11/601,266

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DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 9-14.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed to an integrated voltage regulator that is
placed between a ball grid array package and a motherboard. Abstract.
Claim 9 is representative of the invention and is reproduced below:
9. An integrated circuit package comprising:
a substrate;
solder balls coupled to said substrate;
an integrated circuit over said substrate and coupled to said
substrate;
an integrated voltage regulator having a first and a second
side opposite said first side, said first side coupled to said
substrate between said solder balls; and
a heat dissipating structure coupled to the second side of said
voltage regulator.

REFERENCES
Iwatani US 4,310,792 Jan. 12, 1982

Nair US 2003/0081389 A1 May 1, 2003

Rabadam US 2004/0026715 A1 Feb. 12, 2004

Leahy US 6,703,697 B2 Mar. 9, 2004

1 Claims 1-8 and 15-25 were previously withdrawn.
Appeal 2010-000717
Application 11/601,266

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REJECTIONS AT ISSUE
Claims 9 and 12-14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Rabadam and Iwatani. Ans. 3-5.
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Rabadam, Iwatani, and Leahy. Ans. 5-6.
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Rabadam, Iwatani, and Nair. Ans. 6-7.

ISSUE
Did the Examiner err in finding that the combination Rabadam and
Iwatani teaches or suggests a heat dissipating structure coupled to the second
side of said voltage regulator?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s rejection of the claims and in the Examiner’s Answer in
response to Appellants’ Appeal Brief. We concur with the conclusions
reached by the Examiner. In addition, below we highlight the following
arguments for emphasis.
Appellants make several arguments in the Appeal Brief and the Reply
Brief that there is no reason and no way to combine Rabadam and Iwantani
to arrive at the claimed invention. App. Br. 9-10; Reply Br. 1-2. We
Appeal 2010-000717
Application 11/601,266

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disagree, since, as noted by the Examiner and as taught by Iwatani, placing a
heat sink directly onto a voltage regulator is known in the art. Ans. 4.
Therefore, we conclude that modifying Rabadam to include Iwantani’s heat
sink directly on the voltage regulator is no more than a simple arrangement
of old elements, with each performing the same function it had been known
to perform, yielding no more than one would expect from such arrangement.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
The skilled artisan would “be able to fit the teachings of multiple
patents together like pieces of a puzzle” since the skilled artisan is “a person
of ordinary creativity, not an automaton.” Id. at 420-21. Appellants have
not presented convincing evidence that modifying Rabadam’s voltage
regulators with Iwantani’s heat sink was “uniquely challenging or difficult
for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
418).
Thus, for the reasons stated supra, we sustain the Examiner’s rejection
of claim 9-14.
CONCLUSION
The Examiner did not err in finding that the combination Rabadam
and Iwatani teaches or suggests a heat dissipating structure coupled to the
second side of said voltage regulator.

SUMMARY
The Examiner’s decision to reject claims 9-14 is affirmed.
Appeal 2010-000717
Application 11/601,266

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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

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