Ex Parte Mun You et al

Board of Patent Appeals and Interferences

Mar 16, 2012

11272332 (B.P.A.I. Mar. 16, 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.
11/272,332 11/09/2005 Seung Mun You ZZ VAPRO 1 4029
31688 7590 03/16/2012
TRAN & ASSOCIATES
P.O. Box 68
Saratoga, CA 95071-0068
EXAMINER
ROBINSON, LAUREN E
ART UNIT PAPER NUMBER
1784
MAIL DATE DELIVERY MODE
03/16/2012 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 SEUNG MUN YOU
and Joo Han Kim
________________

Appeal 2010-007757
Application 11/272,332
Technology Center 1700
________________

Before TERRY J. OWENS, MARK NAGUMO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007757
Application 11/272,332

2
A. Introduction1
Seung Mun You and Joo Han Kim (“You”) timely appeal under
35 U.S.C. § 134(a) from the final rejection2 of claims 1-3 and 9-22, which
are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6.
We AFFIRM.
The subject matter on appeal relates to a composition said to be useful
for making microporous surface structures that increase the critical heat flux
(“CHF”) for an object. The 332 Specification defines the CHF as “the
highest heat flux that can be removed [from the surface of an object] without
exposing the surface to film boiling.” (Spec. 2, 2d full para.) In plain
language, the microporous surfaces enhance the heating and boiling of
liquids in which they are immersed. According to the 332 Specification, a
prior art boiling enhancement surface was prepared by mixing aluminum
particles with a glue and a solvent. (Id. at 3d full para.) Replacement of the
glue with a thermally conductive binder is said to improve the effectiveness
of the surface (id. at 3, 1st full para.), but the sintering process is said to be
expensive and sensitive, and to require extremely high processing
temperatures. (Id.) The invention disclosed in the 332 Specification is said
to provide a microporous surface with a thermally conductive binder that can
be produced inexpensively and easily. (Id.)

1 Application 11/272,332, Thermally Conductive Microporous Coating,
filed 9 November 2005. The specification is referred to as the
“332 Specification,” and is cited as “Spec.” The real party in interest is
listed as Vapro, Inc. (Appeal Brief, filed 13 October 2009 (“Br.”), 1.)
2 Office action mailed 17 June 2009 (“Final Rejection”; cited as “FR”).
Appeal 2010-007757
Application 11/272,332

3
According to the inventors, the new microporous surface is obtained
by using metal particles of various sizes in conjunction with a thermally
conductive binder that are mixed together in a solvent. (Spec. 5, 2d full
para.) The binder can be a solder paste. (Id. at 6, 1st full para.) The
dispersion can be applied to a surface, the solvent evaporated, and the
residue “heated to a temperature sufficient to melt the solder paste such that
it serves as a binder between the cavity generating particles.” (Id.) The
resulting coating is said to be relatively insensitive to the coating thickness
due to the high thermal conductivity of the binder. (Id. at 5, 3d para.)
Moreover, different liquids to be heated that have different surface tensions
are said to be readily accommodated by providing particles that have
different sizes, resulting in different cavity sizes, and optimized heat transfer
performance. (Id.)
Representative Claim 1 reads:
1. A composition, comprising:
cavity-generating particles
having various particle sizes and
adapted to be bonded through conductive metallic
bonding, soldering or brazing to form a
microporous surface to enhance boiling of liquids
when heated by a device;
a thermally conductive binder; and
a solvent.
(Claims App., Br. 13; indentation and paragraphing added.)
It should be noted that the appealed claims are drawn to a composition
of metal particles, a binder, and a solvent, not to a boiling-enhancing
surface. Independent claims 9 and 16 are similar, but recite further that the
Appeal 2010-007757
Application 11/272,332

4
particle-to-binder ratio is about 1 gram to 0.5-0.8 grams, and the carrier is
present at about 10 ml per gram of particles. (Id. at 13, 14.)
The Examiner maintains the following grounds of rejection:3
A. Claims 1-3 stand rejected under 35 U.S.C. § 102(b) in view of
Avery4 as evidenced by Pecht.5
B. Claims 9-22 stand rejected under 35 U.S.C. § 103(a) in view of
the teachings of Avery.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
You does not raise colorable arguments for the separate patentability
of any claims other than claims 1 and 9. Accordingly, claims 1-3 and
claims 9-22 stand or fall with claims 1 and 9, respectively.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
You does not dispute the Examiner’s findings that Avery discloses
compositions comprising core particles of a metal having a metal coating
that permits bonding of the particles through soldering, and further that the
particles can be provided in a solvent. (FR 2; Ans. 3.) Rather, You argues
that the Examiner erred in finding that Avery describes “a composition with
cavity-generating particles having various particle sizes and adapted to be

3 Examiner’s Answer mailed 25 November 2009 (“Ans.”).
4 Donald H. Avery and John P. Ranieri, Soldering Methods and
Compositions, U.S. Patent 6,340,113 B1 (2002).
5 Anupam Malhotra, Chapter 4, Reflow Soldering, 83-84, presented by the
Examiner as Pecht (1993) in the Office Action mailed 16 January 2009.
App
App

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lication 11
ed through
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ty generat
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and does
ng.” (Id.)
{Fig. 2B
In Avery
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07757
/272,332
conducti
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escribed b
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rgues that
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very Fig. 2
hematic o

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5
bonding,
oiling of
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7.) You r
ence that t
ough the o
go throug
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utectic po
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a liquid 24
soldering
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icro-poro
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he solder i
uter surfac
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solder join
perature o
int of thei
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. This liq
, or brazin
(Br. 6, 2d
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very Figur
s “a block
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s

Appeal 2010-007757
Application 11/272,332

6
and merges into a continuous but porous joint that resembles
a metal foam, as shown schematically in FIG. 2B.
(Avery col. 6, ll. 45-50; emphasis added.)
We are not persuaded by You’s evidence and arguments that the
Examiner has erred harmfully. As the Examiner recognized, the claimed
compositions comprise metal particles, a thermally conductive binder, and a
solvent. The recited capability of forming a microporous boiling enhancing
surface is an intended use. As long as the reference material can form a
microporous boiling enhancing surface, claims 1-3 are anticipated.
The sketch reproduced in Fig. 2B is not strikingly different from the
electron micrographs shown in Figs. 1A-1C of the 332 Specification.
Moreover, Avery describes the particles as preferably varying in size by
more than a factor of three (Avery col. 4, ll. 57-59), as shown in Fig. 2B.
The particles are said to have an average diameter ranging from about 1.0 to
about 5000 micrometers [μm] (id. at ll. 62-63), while the coating can range
from about 0.1 to about 1000 μm (id. at col. 5, ll. 11-12), and the porous
joint is said to yield, upon fusion, an average pore size ranging from
about 1 μm to about 1000 μm (id. at ll. 15-18).
The preponderance of the evidence of record supports the Examiner’s
finding that Avery describes porous solder connections that are, in certain
embodiments, structurally very similar to the particles linked by a
conductive binder described in the 332 Specification. We do not doubt that
a continuum of structures can be made following Avery, ranging from nearly
solid blobs having very low porosity to a “porous metal foam” (Avery,
abstract). However, a reference anticipates a claim if a single embodiment is
Appeal 2010-007757
Application 11/272,332

7
described that is within the scope of the claim. You has failed to show that
the porous solder connections described by Avery, which have pores as
small as 1 μm up to as large as 1000 μm [1 mm], would fail to function as
boiling enhancing surfaces for some liquids. Thus, You has failed to
establish harmful error in the Examiner’s anticipation rejection of
claims 1-3.
Regarding the nonobviousness of claims 9-22, You argues that Avery
does not teach each and every limitation of the claim, referring to the
relative ratios and to the cavity-generating properties of the particles.
(Br. 9-10.)
You’s complaint, that the Examiner “simply ignored salient
limitations using hindsight and without support” (Br. 10, 2d full para.) is not
supported, and fails to demonstrate harmful error in the Examiner’s findings
(FR 4; Ans. 5) regarding the known relation between the amount of binder
and the particles, and the effect of the amount of solvent on the consistency
and level of dispersion. The Examiner’s findings appear to be well within
the common knowledge of persons having ordinary skill in this art.
Moreover, we have already rejected You’s arguments regarding the
alleged non-micro-porous character of the ultimate solder joints, which are
not covered by the appealed claims. We thus reject You’s further argument
that “Avery’s cavity structures are not interconnected and are capped at the
ends” (Br. 11, ll. 1-2; cf. id. at last para.) as mere speculation. You has not
supported this argument with credible evidence of record. Nor has You
satisfactorily explained Avery’s description of pores in the formed solder
joints ranging from about 1 μm to about 1 mm, which appears to be contrary
Appeal 2010-007757
Application 11/272,332

8
to You’s characterization of the solder joints as closed structures. You’s
denial that the outer surface of the “solder block” can “cause boiling”
(Br. 11, ll. 5-7) also lacks credible evidentiary support. We note further that
the claims merely recite that the microporous surface must “enhance
boiling.” As anyone who has watched water boil in a pot will have noticed,
boiling usually starts (nucleates) at an irregularity— for example, a scratch
or a grain of sand. In this regard, we note further that You has not explained
why the irregular surface shown in Avery Fig. 2B, which has channels and
caves having dimensions similar to the constituent particles, would not
provide a degree of boiling enhancement by a similar mechanism.
C. Order
We AFFIRM the rejection of claims 1-3 under 35 U.S.C. § 102(b) in
view of Avery as evidenced by Pecht.
We AFFIRM the rejection of claims 9-22 under 35 U.S.C. § 103(a) in
view of the teachings of Avery.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

kmm