Ex Parte Ludtke

Board of Patent Appeals and Interferences

Mar 5, 2012

10548725 (B.P.A.I. Mar. 5, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/548,725 10/03/2005 Arndt Ludtke SB-548 2811
24131 7590 03/05/2012
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
D'ANIELLO, NICHOLAS P
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
03/05/2012 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 ARNDT LUDTKE
____________

Appeal 2010-008918
Application 10/548,725
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008918
Application 10/548,725

2
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 18-31.2, 3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention is directed to heat sink component comprising a composite
material having a high thermal conductivity and a low coefficient of expansion
combined with processing properties which make inexpensive manufacture
possible. (Spec. 7:21-25.) Claim 18, the sole independent claim, is representative
of the invention and is reproduced below from the Claims Appendix to the Appeal
Brief:

1 Final Office Action mailed Sep. 18, 2009 (“Final Rejection”), 1.
2 Appeal Brief filed Mar. 4, 2010 (“App. Br.”), 2.
3 Appellant also identifies claim 38 as finally rejected and on appeal. (Id.) While
both the Final Rejection and the Answer (cf. Examiner’s Answer mailed Apr. 9,
2010 (“Ans.”), 2-3) identify claim 38 as finally rejected, claim 38 is not listed in
the heading of any ground of rejection, nor is it discussed in the body of any
ground of rejection. (See generally, Final Rejection 2-6; Ans. 3-7.) We note that
in a previous Final Office Action, mailed Nov. 19, 2008, claim 38 and claims 20,
24, and 29 were rejected under 35 U.S.C.§ 103(a) as unpatentable over Ekström in
view of Nishibayashi. We further note that in the Answer (Ans. 3), the Examiner
states that “[c]laims 20, 24, and 29 were inadvertently omitted from the rejection
heading in the final rejection mailed 9-18-2009,” and that Appellant has agreed to
the inclusion of these claims in the first listed ground of rejection (infra p. 3)
(Reply Brief filed Jun. 9, 2010 (“Rep. Br.”), 1-2). However, unlike claim 38,
claims 20, 24, and 29 were discussed in the Final Rejection. Thus, we have no
way of knowing whether claim 38 was inadvertently omitted from the first listed
ground of rejection (infra p. 3), or whether the rejection of claim 38 has been
withdrawn. Accordingly, because there is no rejection of claim 38 before us, we
will not decide the appeal as to this claim. See 37 C.F.R. § 41.31(a) (“Every
applicant, any of whose claims has been twice rejected, may appeal for the
decision of the examiner to the Board.”); §41.50(a)(1) (“The Board, in its decision,
may affirm or reverse the decision of the examiner in whole or in part on the
grounds and on the claims specified by the examiner.”).
Appeal 2010-008918
Application 10/548,725

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18. A heat sink component, comprising:
a composite material having
a diamond content of from 40 to 90% by volume with diamond grains
having a mean size of from 5 to 300 µm;
0.005 to 12% by volume of a silicon-carbon compound;
7 to 49% by volume of an Ag-rich, Au-rich, or Al-rich phase
comprising Ag, Au, or Al, respectively, as a principal element;
less than 5% by volume of a further phase;
wherein a volume ratio of said Ag-rich, Au-rich, or Al-rich phase to
said silicon-carbon compound is greater than 4, and wherein at least 60% of
a surface of said diamond grains is covered by said silicon-carbon
compound;
said composite material being formed into a heat sink component.

Appellant requests review of the following grounds of rejection (App. Br. 4):
1. claims 18-29 under 35 U.S.C. § 103(a) as unpatentable over
Nishibayashi4 in view of Ekström5 (Ans. 4-6);
2. claim 30 under 35 U.S.C. § 103(a) as unpatentable over Nishibayashi
in view of Ekström and further in view of Lim6 (Ans. 6-7); and
3. claim 31 under 35 U.S.C. § 103(a) as unpatentable over Nishibayashi
in view of Ekström and further in view of Kuroda7 (Ans. 7).
Appellant’s arguments in support of patentability as to all appealed claims
are limited to independent claim 18. We have thoroughly considered each of these

4 US 6,171,691 B1 issued Jan. 9, 2001.
5 WO 02/42240 A2 published May 30, 2002.
6 US 5,706,999 issued Jan. 13, 1998.
7 US 4,680,618 issued Jul. 14, 1987.
Appeal 2010-008918
Application 10/548,725

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arguments, but are not convinced of error in the Examiner’s obviousness
determination for the reasons expressed in the Examiner’s Answer, which we
incorporate by reference herein. We add the following remarks primarily for
emphasis.
The Examiner’s rejections are based on findings that: (1) Nishibayashi
discloses or suggests the invention as recited in claim 18 with the exception of a
teaching of using a silicon carbon compound and (2) Ekström teaches a heat
conductive composite diamond heat sink which is similar to that of Nishibayashi,
but wherein silicon is used as the carbide former. (Ans. 4-5.) The Examiner
determined “[i]t would have been obvious to one of ordinary skill in the art at the
time of the invention to use silicon as the carbide forming metal in the heat sink of
Nishibayashi in order to increase the thermal conductivity as taught by Ekström.”
(Id. at 5.)
We agree with the Examiner’s assessment of Appellant’s arguments as
“hing[ing] on the alleged concept that Nishibayashi is wedded to ‘strong carbide
formers’ and therefore teaches away from the ability of using silicon as the carbide
former” (id. at 8).
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Like the Examiner (see Ans. 8), we fail to see how Nishibayashi is properly
viewed as teaching away from the use of silicon as the carbide former since
Nishibayashi expressly states that metals from Groups 4a to 7a of the periodic table
may be used as the metal component of the metal carbide; Ti, Zr and Hf are merely
identified as preferable (col. 7, ll. 20-22). Appellant argues “[i]t is general
Appeal 2010-008918
Application 10/548,725

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knowledge” that the term “metal carbides,” i.e., the term used in Nishibayashi,
refers to carbides of Ti, Hf, Zr, V, Nb, Ta, Cr, Mo, and W, and that silicon is
considered a “non-metal” carbide. (Rep. Br. 3-4.) However, Appellant has not
provided any evidence to support this contention. Moreover, based on our review
of Kirk-Othmer Encyclopedia of Chemical Technology, it appears the term
actually used to refer to carbides of Ti, Hf, etc. is “metallic carbides.” 8 Therefore,
we do not view Nishibayashi’s use of the term “metal carbide” as teaching away
from using a carbide of silicon, a Group 4a metal.
Appellant also argues the Examiner’s reliance on Ekström is based on
hindsight, noting “[t]he material concept of the Ekström invention is completely
different from the present invention.” (App. Br. 10.) Appellant is reminded that
“[a]s long as some motivation or suggestion to combine the references is provided
by the prior art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventor.” In re Beattie, 974 F.2d
1309, 1312 (Fed. Cir. 1992).
Ekström discusses Nishibayashi in the background discussion of related
prior art materials (2, l. 26-3, l. 7) 9, noting that Nishibayashi’s material has a
thermal conductivity property of from 300 to 900 W/mK, and that the
“[s]hortcomings of this material are complicated processing and high cost of the
product” (3, ll. 6-7). The stated object of Ekström’s invention is “to provide a
material having at room temperature a thermal conductivity factor of at least 400

8 Oyama, S. T. and Kieffer, R. 2002. Carbides, Survey. Kirk-Othmer Encyclopedia
of Chemical Technology.
9 We also direct Appellant to this disclosure in response to the argument made on
pages 2-3 of the Reply Brief that the Ag component of Nishibayashi’s solder
evaporates in its entirety. According to Ekström, Nishibayashi’s “‘carrier’ metal
alloy is either solidified between the carbide-covered diamonds or evaporated” (2,
l. 31-3, l. 2).
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Application 10/548,725

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W/mK and a thermal diffusivity of at least 2.1 cm2/s, which could be produced in a
desired shape and in a cost-efficient way” (6, ll. 12-24). In our view, this
disclosure weighs in favors of a finding that the Examiner did not rely on improper
hindsight reasoning, but that one of ordinary skill in the art would have considered
both the teachings of Nishibayashi and Ekström.
In sum, for the reasons stated in the Examiner’s Answer and above, we
sustain all three grounds of rejection. The Examiner’s decision to reject claims 18-
31 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).
AFFIRMED
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