Ex Parte Prasher

Board of Patent Appeals and Interferences

Jun 22, 2009

10811597 (B.P.A.I. Jun. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RAVI PRASHER
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Appeal 2009-002912
Application 10/811,597
Technology Center 2800
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Decided:1 June 22, 2009
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Before BRADLEY R. GARRIS, PETER F. KRATZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002912
Application 10/811,597

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-11, 15-16, and 25-28.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
I. STATEMENT OF THE CASE
The invention relates to cooling a integrated circuit die with a cooling
system that includes microchannels 30 for a coolant defined by grooves 28
formed in a microchannel member 24 and a rear surface 22 of an integrated
circuit die 10 and a thin film thermoelectric cooling (TFTEC) device 40
located in one of the microchannels 30 (Spec. 3, l. 24-4, l. 3; 5, ll. 5-8).
Claim 1 is illustrative of the subject matter on appeal:
1. An apparatus comprising:

an integrated circuit (IC) die having a front surface on which an
integrated circuit is formed and a rear surface that is opposite to the front
surface;

a member to define at least one microchannel at the rear surface of the
IC die, the microchannel to allow a coolant to flow therethrough; and

at least one thin film thermoelectric cooling (TFTEC) device in the at
least one microchannel.
The Examiner maintains the flowing rejections:
the rejection of 1-9, and 11 under 35 U.S.C. § 103(a) as obvious over
U.S. Patent No. 5,239,200, issued August 24, 1993, to Messina et al.
(hereinafter “Messina”) in view of U.S. Patent No. 6,489,551 B2, issued
December 3, 2002, to Chu et al. (hereinafter “Chu”);

2 We note that the Examiner has deemed pending claims 12-14 as containing
allowable subject matter. Accordingly, these claims are not presently
appealed.
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Appeal 2009-002912
Application 10/811,597

the rejection of claim 10 under 35 U.S.C. § 103(a) as obvious over
Messina and Chu, and further in view of U.S. Patent No. 3,232,719, issued
February 1, 1966, to Ritchie (hereinafter “Ritchie”);
the rejection of claims 15, 23-25, 27, and 28 under 35 U.S.C. § 103(a)
as obvious over Messina and Chu and further in view of U.S. Patent No.
6,711,904 B1, issued March 30, 2004, to Law et al. (hereinafter “Law”);
the rejection of claim 16 under 35 U.S.C. § 103(a) as obvious over
Messina and Chu and further in view of U.S. Patent No. 6,410,971 B1,
issued June 25, 2002, to Otey (hereinafter “Otey”); and
the rejection of claim 26 under 35 U.S.C. § 103(a) as obvious over
Messina and Chu and further in view of Ritchie.3
II. ISSUE ON APPEAL
The dispositive issue on appeal arising from the contentions of
Appellant and the Examiner is: has the Appellant shown that the Examiner
reversibly erred in determining that it would have been obvious to one of
ordinary skill in the art to include a TFTEC device, as taught by Chu, in a
microchannel of the cooling system taught by Messina?
III. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the issue
on appeal:

3 Appellant lists the rejection of claims 1-9, and 11 over Messina and Chu as
the ground of rejection to be reviewed on appeal, and further states that the
additional rejections, which add further art references, are not believed to
raise any further issues that require consideration in this Appeal (Br. 3).
Therefore, all of the grounds of rejection are on review. We determine that
the issue raised with respect to the first rejection does, in fact, dispose of all
of the rejections on appeal.
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Appeal 2009-002912
Application 10/811,597

1. In the rejection, the Examiner states that “Messina does not
disclose at least one thin film thermoelectric cooling (TFTEC) device in the
at least one microchannel.” Though, in addressing the obviousness of
employing a TFTEC taught by Chu in the apparatus of Messina, the
Examiner makes no finding with regard to positioning the device in the
microchannel. (Final Office Action, 2-3; Ans. 3-4).
2. In response to the Appellant’s Brief, the Examiner states:
Chu shows a module (10) in figure 1 comprising a
thin film TEC device (20, column 4, line 23, and
column 5, lines 15-16) formed between a thermal
space transformer (22) and a chip (12).
Therefore, it would have been obvious to one
having ordinary skill in the art at the time the
invention was made to have a TFTEC as taught by
Chu employed in the micro-channel (22, 46) of a
heatsink member of Messina’s apparatus in order
to provide active temperature control and high
cooling density.
(Ans. 8).
IV. PRINCIPLES OF LAW
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”
In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (emphasis omitted).
“[R]ejections 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.” Id. at 988 (quoted with approval in KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007)).
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Appeal 2009-002912
Application 10/811,597

V. ANALYSIS
We agree with the Appellant that the Examiner has failed to provide
adequate reasons, based upon the teachings of the prior art, for including the
TFTEC taught by Chu in the microchannel taught by Messina (Reply Br. 2).
In particular, the Examiner has failed to provide an articulated reason with a
rational underpinning as to why the teaching of Chu as to the location of the
TFTEC between a thermal space transformer 22 and a chip 12 would have
made it obvious to one of ordinary skill in the art to locate the TFTEC in the
microchannel taught by Messina, as opposed to any other location within the
system taught by Messina.
Accordingly, the Appellant has shown reversible error by the
Examiner.
VI. CONCLUSION
For the reasons discussed above, we cannot sustain the Examiner’s
rejection of claims 1-9 and 11 under 35 U.S.C. § 103(a) as being obvious
over Messina in view of Chu. Since the rejections of independent claim 23
and the remaining dependent claims also rely upon Messina and Chu in the
same capacity as applied to claim 1-9, and 11 (see Ans. 4-6), and the
additional references do not remedy the above discussed deficiency, we
cannot sustain any of the Examiner’s rejections.
VII. DECISION
We reverse the Examiner’s decision.

REVERSED

cam
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Appeal 2009-002912
Application 10/811,597

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