Ex Parte Robert

Patent Trial and Appeal Board

Feb 13, 2018

13940836 (P.T.A.B. Feb. 13, 2018)

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.
13/940,836 07/12/2013 Brian Joseph Robert 83374617; 67186-023PUS1 8386
46442 7590 02/15/2018
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
PATEL, MUKUNDBHAI G
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
02/15/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
cgolaw@yahoo.com
ptodocket @ cgolaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN JOSEPH ROBERT
Appeal 2017-001592
Application 13/940,836
Technology Center 2800
Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and
AVELYN M. ROSS, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1-15 and 21-25. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, and enter a new ground of rejection.2
1 Appellant is the Applicant, Ford Global Technologies, LLC,
which, according to the Brief, is the real party in interest (App. Br.
!)•
2 Our Decision refers to the Specification (Spec.) filed July 12, 2013, the
Examiner’s Final Office Action (Final) dated December 23, 2015,
Appeal 2017-001592
Application 13/940,836
STATEMENT OF THE CASE
The invention relates to “a highly integrated power
electronic module assembly [(PEMA)] that employs a vapor
chamber” (Spec. Tf 1). The Inventors disclose that the PEMA
includes a semiconductor device for processing power thereby
creating heat (id. Tf 44). The vapor chamber, according to the
Inventors, is a passive, high-efficiency heat spreader for
dissipating this heat (id. Tf 45). In one embodiment, the Inventors
disclose that the vapor chamber relies on thermal conductivity
and phase transition to thermally manage the heat generated by
the semiconductor device (id.).
Independent claims 1, 11, and 25, reproduced below from the
Claims Appendix to the Appeal Brief, are illustrative of the
subject matter on appeal. Limitations at issue are italicized.
I. A power electronic module assembly, comprising:
a vapor chamber;
a substrate integrated with a top surface of said
vapor chamber; and
at least one cooling feature integrated with a
bottom surface of said vapor chamber.
II. A vehicle, comprising:
a controller; and
a power electronic module assembly housed inside said
controller, said power electronic module assembly having a
Appellant’s Appeal Brief (App. Br.) filed May 23, 2016, the
Examiner’s Answer (Ans.) dated September 9, 2016, and
Appellant’s Reply Brief (Reply Br.) filed November 09, 2016.
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Application 13/940,836
vapor chamber and a substrate integrated with said vapor
chamber.
25. A power electronic module assembly, comprising:
a vapor chamber housing a heat transfer medium;
an insulated metal substrate integrated with a top face
of said vapor chamber;
a plurality of pins or fins integrated with a bottom face
of said vapor chamber;
a heat source on said insulated metal substrate; and
wherein said vapor chamber is configured to dissipate
heat from said heat source by effectuating a phase change of
said heat transfer medium.
REJECTIONS
The Examiner maintains, and Appellant requests our review
of, the following grounds of rejection (Final:
1. Claims 1, 2, 6, and 10-15 under 35 U.S.C. § 102(a)(1)
as anticipated by Suzuki (US 2012/0050993 Al, published
Mar. 1, 2012);
2. Claim 25 under 35 U.S.C. § 102(a)(1) as anticipated by
Weiss (US 2008/0266801 Al, published Oct. 30, 2008);
3. Claims 3, 4, and 9 under 35 U.S.C. § 103 as
unpatentable over Suzuki in view of Beaupre (US
2010/0277868 Al, published November 4, 2010);
4. Claims 21 and 24 under 35 U.S.C. § 103 as
unpatentable over Suzuki in view of Weiss; and
5. Claims 22 and 23 under 35 U.S.C. § 103 as
unpatentable over Suzuki in view of Holland (US
2009/0145581 Al, published Jun. 11, 2009).
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ANALYSIS
Rejection 1: Anticipation by Suzuki
With regard to claim 1, the Examiner finds Suzuki discloses
a PEMA comprising vapor chamber 1, substrate 14 integrated
with a first surface of the vapor chamber, and at least one cooling
feature integrated with a second surface of the vapor chamber
(Final 2). The Examiner construes the term, “integrated,” to mean
“to unite or combine” without describing how or the details of the
structure to integrate (id.).
Appellant argues that Suzuki fails to teach or suggest a
substrate integrated with a top surface of a vapor chamber and a
cooling feature integrated with a bottom surface of the vapor
chamber (App. Br. 3). Instead, Appellant urges that Suzuki
teaches the opposite arrangement — substrate 14 is attached to
the bottom of, and cooling system 20 is attached to the top of,
vapor chamber 1 (id.). Appellant does not challenge the
Examiner’s construction of the term, “integrated” (id. at 3-4).
In response, the Examiner interprets the second surface of
Suzuki’s vapor chamber as the bottom surface thereof and the first
surface as the top surface thereof (Ans. 3). In doing so, the
Examiner explains that substrate 14 is integrated with the
surface of vapor chamber 1 facing power module 11 (id.). In
addition, the Examiner explains that the at least one cooling
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Application 13/940,836
feature corresponds to the structure of cooling system 20 as shown
in the Examiner’s annotated Figure 3 of Suzuki (id. at 4; Final 3).
Appellant contends that the Examiner’s “position is
untenable because it is the opposite of how these terms would
commonly be understood” (Reply Br. 2). According to Appellant,
the Examiner has relied on the broadest possible interpretation of
the terms, “top surface” and “bottom surface,” rather than a
reasonable interpretation consistent with the Specification that
those skilled in the art would reach (id.). Appellant also asserts
that the Examiner’s interpretation conflicts with the manner in
which Suzuki describes itself, noting that Suzuki indicates that
the cooling system faces the “upper surface” of vapor chamber 1
(id., citing Suzuki 40).
We begin, appropriately, with the claim’s words. See
Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343,
1351 (Fed. Cir. 2001) (“Only when a claim is properly understood
can a determination be made . . . whether the prior art anticipates
and/or renders obvious the claimed invention.”). During
examination, claim terms are given their broadest reasonable
construction consistent with the specification. In general, words
used in a claim are accorded their ordinary and customary
meaning. Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488
F.3d 982, 992 (Fed. Cir. 2007). Under a broadest reasonable
interpretation, words of the claim must be given their plain
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meaning, unless such meaning is inconsistent with the
specification. The plain meaning of a term means the ordinary and
customary meaning given to the term by those of ordinary skill in
the art at the time of the invention. The ordinary and customary
meaning of a term may be evidenced by a variety of sources,
including the words of the claims themselves, the specification,
drawings, and prior art.
Here, Appellant concedes that the Examiner’s interpretation
is possible, but is nonetheless inconsistent with the Specification
and the prior art teaching. Although Appellant argues that the
Examiner’s interpretation is inconsistent with the Specification,
Appellant fails to direct our attention to any disclosure of the
Specification which limits the meaning of “top surface” and
“bottom surface” with respect to the Examiner’s “broadest possible
interpretation,” nor do we find any. Moreover, although Appellant
asserts that the Examiner’s interpretation is inconsistent with
how these terms would be interpreted by the ordinary artisan, the
only evidence Appellant relies on in support of this assertion is
Suzuki. However, although Appellant notes that Suzuki refers to
an “upper surface” of vapor chamber 1, Appellant fails to establish
that this recitation limits the meaning of “top surface” and
“bottom surface” or otherwise establishes how the ordinary artisan
would have interpreted these terms in claim 1.
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In this regard, we remain cognizant of the adage that “the
name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998) (quoting Giles Sutherland Rich, Extent of
Protection and Interpretation of Claims—American Perspectives,
21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499 (1990)). Claim
1, however, fails to recite any particular structure for the vapor
chamber to provide context for its top and bottom surfaces.3 As
such, the substrate in Suzuki may be interpreted to be the upper
wall of the vapor chamber because the substrate is integrated
with a top surface, and at least partially inside, of the vapor
chamber. Similarly, the cooling feature in Suzuki may be
interpreted to be the lower wall of the vapor chamber because the
lower wall is integrated with a bottom surface of the vapor
chamber and, being cooled by the liquid in the vapor chamber,
acts to dissipate heat away from power device 11.
3 Notably, the Specification discloses that a substrate is integrated
with a first surface of the vapor chamber and at least one cooling
feature is integrated with a second surface of the vapor chamber.
Spec. Tf 4. The Specification discloses that in a non-limiting
embodiment, the first surface is a top surface of the vapor chamber
and the second surface is a bottom surface of the vapor chamber.
Spec. Tf 8. In that regard, the Specification discloses that the first
and second surfaces, and thus the substrate and the cooling
feature, may be disposed elsewhere on the chamber (Spec. ^ 46),
indicating that the “top surface” and the “bottom surface” are not
critical designations.
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Application 13/940,836
Accordingly, Appellant has failed to identify reversible error
in the Examiner’s rejection of claim 1. Appellant does not argue
claims 2, 6, and 10 separately from claim 1. Pursuant to the
provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2015), claims 2, 6, and 10
fall with claim 1. To the extent that our interpretation of claim 1
is not coincident with the Examiner’s interpretation, we designate
our affirmance of the rejection of claims 1, 2, 6, and 10 as a new
ground under 37 C.F.R. § 41.50(b).
With regard to claim 11, the Examiner finds Suzuki
discloses a vehicle comprising a PEMA housed inside controller
400, wherein the PEMA includes vapor chamber 1 and substrate
14 integrated with the vapor chamber (Final 5; citing Suzuki,
Figs. 1,8). Appellant argues that Suzuki’s PEMA lacks a vapor
chamber and substrate housed inside controller 10 (App. Br. 5). In
response, the Examiner reiterates the finding that the PEMA
includes a vapor chamber and substrate housed inside controller
400 (Ans. 5). Appellant acknowledges that Suzuki’s entire system
is inside casing 400 (App. Br. 5), but argues that casing 400 is not
a controller (Reply Br. 2).
Appellant’s argument is not persuasive of reversible error.
Claim 11 fails to recite any particular structure for the controller.
Appellant also does not direct our attention to any disclosure
which limits the controller to any particular structure, nor do we
find any. As indicated above, Appellant concedes that Suzuki’s
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Application 13/940,836
entire system, which includes the PEMA having the vapor
chamber and substrate, is housed inside casing 400. Appellant
also concedes that Suzuki’s system includes a controller housed
inside casing 400. Therefore, we are unable to say that casing 400,
which houses Suzuki’s system with controller, is not the controller
housing.
Accordingly, Appellant has failed to identify reversible error
in the Examiner’s rejection of claim 11. Appellant does not argue
claims 12—15 separately from claim 11. Pursuant to the provisions
of 37 C.F.R. § 41.37(c)(l)(iv) (2015), claims 12-15 fall with claim
11.
Rejection 2: Anticipation by Weiss
With regard to claim 25, the Examiner finds Weiss discloses
a PEMA comprising vapor chamber 94, 124 housing heat transfer
medium 138, an insulated metal substrate 116, 118 integrated
with a top wall of the vapor chamber, a plurality of fins 100
integrated with a bottom wall of the vapor chamber, and heat
source 26 on the substrate, wherein the vapor chamber is
configured to dissipate heat from the heat source by effectuating a
phase change of the heat transfer medium (Final 6).
Appellant argues that Weiss fails to teach or suggest an
insulated metal substrate integrated with a top face of the vapor
chamber and a plurality of fins integrated with a bottom face of
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Application 13/940,836
the vapor chamber (App. Br. 5). Appellant urges that the term
“integrated” is defined in the Specification to denote an interface
between adjacent components that “excludes bonding or interface
layers such as solder, adhesive, thermal grease, thermal tapes or
the like” (id. at 6 (emphasis omitted)). Appellant contends Weiss
fails to meet this definition because Weiss provides solder layer
122 between substrate 116, 118 and heat spreader 94 and also
provides thermal grease 96 between heat sink 98 and heat
spreader 94 (id.).
In response, the Examiner finds Weiss teaches that the
device may be mounted on heat sink 98 by means of a thermal
bond, which the Examiner interprets to mean “bonding without
any additional layer” (Ans. 8). In addition, the Examiner finds
Weiss teaches that the heat spreader may be designed as an add­
on device or may be integrated into the design of one of the
components, e.g., as a support or substrate (id.). Similarly, the
Examiner finds Weiss teaches the fins may be integral to the heat
spreader such as with the condenser plate thereof (id.).4
4 The Examiner also argues that Appellant has not clearly defined
the term “integrated” in the Specification (Ans. 7). However, as
Appellant asserts (Reply Br. 3), the Specification, paragraph 48,
defined “integrated” as “an interface between adjacent components
of the power electronic module assembly 60 that excludes bonding
or interface layers such as solder, thermal grease, or other layers.”
The Examiner does not explain why this definition is not specific.
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Appellant does not rebut or otherwise address these
findings. In addition, Weiss supports these findings. In particular,
Weiss teaches “the cooling devices may be integrated directly into
the modular circuitry” (Weiss Tf 34), “a cooling device is integrated
directly into the assembly itself’ (id.), “the phase change heat
spreader may be an integral support or may be thermally coupled
to a support” (id. Tf 38), “the phase change heat spreader . . . may
be integrated into the design of one of the components” (id. Tf 42),
“the fins on the various structures described herein may be
integral to the heat spreader” (id.), “the cooling device 164 is
integrated into the bus structure itself’ (id. Tf 46), “the cooling
devices are integrated directly as a substrate or base of a power
electronics module” (id.). Therefore, a preponderance of the
evidence supports the Examiner’s findings.
Although the Examiner only finds that Weiss anticipates
claim 25, we herein find that Weiss also anticipates claims 1-4, 6,
9, 10, and 21. With regard to claim 1, Weiss teaches a PEMA
comprising vapor chamber 134 defined by evaporator plate 128,
condenser plate 130, and side walls 132, substrate 126 integrated
with a top surface 128 of vapor chamber 134, and at least one
cooling feature 98 including fins 100 integrated with a bottom
surface 130 of vapor chamber 134 (Weiss, Figs. 5, 7-9). As
indicated above, Weiss supports integration of the substrate and
the cooling feature into the vapor chamber. Such integration
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would necessarily exclude bonding or interface layers between the
vapor chamber and each of the substrate and the cooling feature
(claim 2). Further, because Weiss teaches that vapor chamber may
be an integral support for the power modules, in which the
support may include a mechanical layer on which the circuitry to
be cooled is mounted, formed, or packaged (Weiss ^ 38), Weiss
inherently teaches a substrate integrated at least partially inside
the vapor chamber (claim 9).
Further, the Examiner finds, without challenge, that Weiss
teaches an insulated metal substrate (claim 3) (see Final 6). Weiss
teaches this substrate includes at least one metal layer and at
least one dielectric layer (claim 4) (Weiss ^ 36). Weiss teaches a
heat source mounted to the substrate (claim 6) (Weiss, Figs. 5, 7-
9; Tf 29). The Examiner also finds, without challenge, that Weiss
teaches that the at least one cooling feature includes fins (claim
10) and that the vapor chamber includes wick 138 configured to
exert capillary pressure on a heat transfer medium contained
therein (claim 21) (see Final 6).
Accordingly, we sustain the Examiner’s rejection of claim 25
under 35 U.S.C. § 102(a)(1) as anticipated by Weiss, but extend
this rejection to include claims 1-4, 6, 9, 10, and 21 for the reasons
given above. As the application of Weiss to these additional claims
is new, we designate our rejection of claims 1-4, 6, 9, 10, and 21 as
a new ground in accordance with 37 C.F.R. § 41.50(b).
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Rejection 3: Obviousness over Suzuki in view of Beaupre
The Examiner rejects claims 3, 4, and 9 under 35 U.S.C. §
103 as unpatentable over Suzuki in view of Beaupre (Final 7-8).
Appellant confines their challenge to this rejection to claim 9 only
(App. Br. 7). Accordingly, we sustain the Examiner’s rejection of
claims 3 and 4. See Ex parte Frye, 2010 WL 889747, *4 (BPAI
2010) (“Filing a Board appeal does not, unto itself, entitle an
appellant to de novo review of all aspects of a rejection. If an
appellant fails to present arguments on a particular issue — or,
more broadly, on a particular rejection — the Board will not, as a
general matter, unilaterally review those uncontested aspects of
the rejection.”) (cited with approval in In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Claim 9 depends from claim 1 and further requires the
substrate is integrated at least partially inside of the vapor
chamber. Although, the Examiner finds Suzuki fails to teach this
feature (Final 7), as we indicated earlier based on our
interpretation of claim 1, we find Suzuki’s upper wall of the vapor
chamber to be the substrate because the upper wall is integrated
with a top surface, and at least partially inside, of the vapor
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chamber. Therefore, we sustain the Examiner’s rejection of claim
9 without reliance on Beaupre.
Nonetheless, the Examiner finds Beaupre discloses a power
module with a substrate integrated at least partially inside of the
vapor chamber (id., citing Beaupre ^ 32). Therefore, the Examiner
concludes it would have been obvious to incorporate a substrate as
taught by Beaupre into Suzuki’s PEMA to further improve heat
dissipation (id. at 7-8; see also Ans. 9).
Appellant argues that neither Suzuki nor Beaupre teaches
or suggests the recitation of claim 9 (App. Br. 7). Appellant
contends the Examiner’s reliance on Beaupre is misplaced because
Beaupre fails to teach a vapor chamber (id.).
Appellant’s argument is not persuasive of reversible error.
Appellant’s contention that the Examiner’s reliance on Beaupre is
misplaced because Beaupre fails to teach a vapor chamber fails to
address the basis on which the Examiner relies on Beaupre.
Specifically, the Examiner finds Beaupre teaches a substrate
integrated at least partially inside a vapor chamber (Final 7; Ans.
9). As we indicated above, claim 1 fails to recite any structure for
the vapor chamber, and claim 9 likewise adds nothing to the vapor
chamber structure other than that the substrate is integrated at
least partially inside it. Appellant’s contention that Beaupre fails
to teach a vapor chamber fails to address the Examiner’s finding
that Beaupre’s cooling fluid channels 40 provide a vapor chamber
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and that Beaupre’s baseplate 36 (substrate) is integrated into
cooling fluid channels 40 (vapor chamber) (Beaupre Tf 32). Merely
arguing that a recited feature is not taught in the applied
references is insufficient to identify reversible error. See 37 C.F.R.
§ 41.37(c)(l)(iv) (“A statement which merely points out what a
claim recites will not be considered an argument for separate
patentability of the claim.”); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (holding that “the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a
naked assertion that the corresponding elements were not found
in the prior art”); see also In re Keller, 642 F.2d 413, 426 (CCPA
1981).
Accordingly, we also sustain the Examiner’s obviousness
rejection over the combination of Suzuki and Beaupre.
Rejection 5: Obviousness over Suzuki in view of Weiss
Claim 21 depends from claim 1 and further requires that the
vapor chamber include a wick configured to exert capillary
pressure on a heat transfer medium contained within the
chamber. Claim 24 depends from claim 15 (which depends from
independent claim 11) and further requires that the substrate
protrude from a top face of the vapor chamber and the cooling
feature protrudes from a bottom face of the vapor chamber.
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With regard to claim 21, the Examiner finds that although
Suzuki fails to teach a wick and heat transfer medium, Weiss
discloses these elements within a vapor chamber to cool a PEMA
(Final 8). With regard to claim 24, the Examiner finds that
although Suzuki fails to disclose the features of this claim, Weiss
teaches a PEMA having a substrate protruding from a top face of
a vapor chamber and a cooling feature protruding from a bottom
face of the chamber (id. at 9). The Examiner finds that both
Suzuki and Weiss are from the same field and have the same
purpose of cooling heat generating electronic components (Ans.
10). The Examiner concludes it would have been obvious to modify
or replace Suzuki’s vapor chamber with one containing wick
structures and by attaching a substrate to the top face and the
cooling feature to the bottom face thereof as taught in Weiss for
cooling Suzuki’s PEMA and render such more isothermal (Final 8—
9).
Appellant argues that modifying Suzuki to include a wick
arrangement as in Weiss would improperly require a substantial
reconstruction and redesign, as well as change the basic principal
of operation, of Suzuki’s cooling system 9 (App. Br. 8). Appellant
contends Suzuki would not work as intended if it were modified as
the Examiner’s proposes (id.). Appellant similarly argues that
modifying Suzuki’s vapor chamber such that the substrate
protrudes from the top face and the cooling feature protrudes from
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the bottom face thereof would render Suzuki unsatisfactory for its
intended purpose (id.). Appellant asserts Suzuki is specifically
designed for a front machinery compartment of a vehicle (id.) and
moving the cooling system to the bottom surface of the vapor
chamber would render Suzuki ineffective for removing heat (id. at
8-9).
In addition, Appellant urges that merely because references
are within the same field of endeavor and can be combined does
not alone render their combination obvious (Reply Br. 3).
According to Appellant, “the rationale provided by the Examiner
[for the proposed combination] is not articulated reasoning with
some rationale [sic] underpinning because it would change how
Suzuki operates and would render Suzuki unsatisfactory for
removing heat from the coolant within a front compartment of a
vehicle” (id. at 3-4).
Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection of claims 21 and 24. In addition to both
Suzuki and Weiss being from the same field of endeavor and
having the same purpose of cooling heat generating electronic
devices, both references disclose doing so using a combination of a
phase change heat transfer medium and a cooling feature that
pulls heat from a vapor phase of the medium to condense it.
Indeed, the only difference between the operations of Suzuki and
Weiss is that Suzuki’s vapor is cooled by moving up toward the
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cooling feature whereas Weiss’ vapor is cooled by moving down
toward the cooling feature. The ordinary artisan would have
recognized that this difference is possible due to the wick
arrangement of Weiss which is not used in Suzuki. As such, the
cooling systems of Suzuki and Weiss are clearly functional
equivalents to each other. Further, any redesign of Suzuki as
proposed by the Examiner would follow the design of Weiss and
would have been within the ordinary skill in the art.
Appellant also fails to establish by persuasive technical
reasoning or evidentiary showing that modifying Suzuki in view of
Weiss would render Suzuki unsatisfactory for its intended
purpose. Appellant has not shown that Weiss would not work in a
front machinery compartment of a vehicle. Moreover, although
Suzuki teaches use of the PEMA in a front machinery
compartment of a vehicle (Suzuki, Fig. 1), Suzuki does not limit
the PEMA to only this location (see id. at Fig. 8).
Accordingly, we sustain the Examiner’s rejection of both
claims 21 and 24.
Rejection 6: Obviousness over Suzuki and Holland
Appellant does not address with any particularity the
Examiner’s proposed combination of Suzuki and Holland. Instead,
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Appellant merely argues that Suzuki fails to teach or suggest
every feature of the claim from which claims 22 and 23 depend,
and that Holland fails to cure these deficiencies (App. Br. 9).
Skeletal arguments or arguments merely amounting to assertions
that the references do not disclose or suggest certain claim
limitations are not arguments for separate patentability within
the meaning of 37 C.F.R. § 41.37(c)(l)(iv). See Lovin, 652 F.3d at
1356-57. In addition, there are no deficiencies in Suzuki with
regard to claim 1 as discussed above that require curing by
Holland.
Accordingly, we sustain the Examiner’s rejection of claims
22 and 23.
CONCLUSION
In summary:
Claims
Rejected
Basis Reference(s) Affirmed Reversed
1, 2, 6, 10-
15
§ 102(a)(1)5 Suzuki 1, 2, 6, 10-
15
25 5102(a)(1) Weiss 25
3, 4,9 § 103 Suzuki,
Beaupre
3, 4,9
21, 24 § 103 Suzuki, Weiss 21, 24
22, 23 § 103 Suzuki,
Holland
22, 23
5 The rejection of claims 1, 2, 6, and 10 has been designated as a
New Ground of Rejection, 37 C.F.R. § 41.50(b).
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Claims
Rejected
Basis Reference(s) Affirmed Reversed
1-4, 6, 9,
10, 21
§ 102(a)(1)6 Weiss 1-4, 6, 9,
10, 21
Summary 1-4, 6, 9-
15, 21-25
DECISION
Upon consideration of the record, and for the reasons given
above and in the Final Office Action and the Examiner’s Answer,
the decision of the Examiner rejecting claims 1-4, 6, 9-15, and
21-25 is affirmed.
This decision contains a new ground of rejection pursuant to
37 CFR § 41.50(b) (effective September 13, 2004, 69 Fed. Reg.
49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September
7, 2004)). 37 CFR § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for
judicial review.”
37 CFR § 41.50(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new
ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the
6 New Ground of Rejection, 37 C.F.R. § 41.50(b).
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claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be
remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . .
TIME PERIOD FOR RESPONSE
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;
37 C.F.R, 41.50(b)
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