Ex Parte Schaffer

Board of Patent Appeals and Interferences

Jan 26, 2009

09718303 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL J. SCHAFFER
____________

Appeal 2008-2695
Application 09/718,303
Technology Center 2800
____________

Decided: January 26, 2009
____________

Before CHARLES F. WARREN, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s refusal to allow claims 1-6, 10-14, 18-20, and 23-26. We have
jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2008-2695
Application 09/718,303

Appellant’s claimed invention is directed to a circuit and heatsink
coupled in a manner to at least partially reduce electromagnetic interference
(EMI) signals, a system including such coupled elements, and a method of
using a heatsink. Claims 1, 10, 18, and 23 are illustrative and reproduced
below:
1. An apparatus comprising:
a circuit and
at least one heatsink;
said at least one heatsink and said circuit coupled
so that when said circuit is in operation, said circuit at
least partially reduces the electromagnetic interference
(EMI) signals received by said at least one heatsink
during circuit operation.
10. An integrated circuit (IC) to be coupled to at least one
heatsink comprising:
a circuit;
said circuit having an electrical configuration so
that when said circuit is in operation, said circuit at least
partially reduces the electromagnetic interference (EMI)
signals received by said at least one heatsink.
18. A system comprising:
a computing platform, including
a component to process instructions;
a memory to store instructions;
a circuit and
at least one heatsink;
said heatsink and said circuit coupled so as to at
least partially reduce electromagnetic interference (EMI)
signals produced by said computing platform and
received by said at least one heatsink during circuit
operation.
23. A method of using a heatsink comprising:
receiving electromagnetic interference (EMI)
signals via said heatsink;
producing an electromagnetic signal to at least
partially reduce said EMI signals.
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The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Hinkle 5,703,416 Dec. 30, 1997
Langley 6,044,899 Apr. 4, 2000
Karino 5,457,300 Oct. 10, 1995
Smith 6,134,505 Oct. 17, 2000
Gupta 6,243,680 B1 Jun. 5, 2001

Claims 1, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hinkle in view of Langley. Claims 2, 4-6, and 12-14
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hinkle in
view of Langley and Karino. Claim 3 stands rejected under 35 U.S.C. §
103(a) as being unpatentable over Hinkle in view of Langley, Karino, and
Smith. Claims 18-20 and 23-26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hinkle in view of Langley, Karino, Smith, and
Gupta. 1
Appellant presents seven separate claim Groupings for the four stated
rejections (App. Br. 8). We note that the claims of Group I (claim 1) and
Group IV (claims 10 and 11) are commonly rejected and the same
arguments are applied to the rejected claims of each of these claim
groupings (App. Br. 8-16, and 25). Accordingly we select claim 1 as the
representative claim on which we decide this appeal as to claim Groups I
and IV (claims 1, 10, and 11). Similarly, the claims of Group II (claims 2
and 4-6) and Group V (claims 12 through 14) are commonly rejected and the
same arguments are applied to the rejected claims of each of these claim
groupings (App. Br. 8-16, and 25). Accordingly we select claim 2 as the

1 Claims 15 and 16 stand objected to by the Examiner as depending from a
rejected base claim (Ans. 3).
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representative claim on which we decide this appeal as to the common
rejection of claims 2, 4-6, and 12-14 (Groups II and V). We select claim 3
as the sole member and representative claim on which we decide this appeal
as to the Group III claim; claim 18 as the representative claim on which we
decide this appeal as to the Group VI claims (claims 18-20); and claim 23 as
the representative claim on which we decide this appeal as to the Group VII
claims (claims 23-26).
We affirm the Examiner’s stated rejections as to claims 1, 10, 11, and
18-20. We reverse the Examiner’s rejections as they pertain as to the
remaining rejected claims. Our reasoning follows.

Claims 1, 10, and 11
Representative claim 1 is drawn to an apparatus including at least one
circuit and at least one heat sink with coupling thereof such that the circuit
reduces EMI signals received by the heat sink during circuit operation.
Appellant maintains that Hinkle is concerned with providing
protection from EMI at integrated circuit input pins and internal nodes and
that Langley is directed to using a ferrite ring with a heat sink to reduce EMI
emissions (App. Br. 11-13). In Appellant’s view, the combination of
Langley with Hinkle, as the Examiner proposes, would render Langley’s
ferrite ring superfluous, impermissibly change the principal of operation
thereof, provide no reasonable expectation of success, and result in
something other than the claimed invention (App. Br. 13-16). In essence,
the claimed circuit arrangement is taught away from by Langley, according
to Appellant (App. Br. 14).

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ISSUE
Thus, the principal issue developed with regard to the Examiner’s
rejection of representative claim 1 is: Has Appellant established reversible
error in the Examiner’s rejection of representative claim 1 by the
aforementioned arguments as more fully set forth in the Appeal Brief?
SUMMARY DISPOSITION
We answer this question in the negative and we affirm the Examiner’s
obviousness rejection of representative claim 1.
PRINCIPLES OF LAW
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) any secondary considerations. Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966). “[A]nalysis [of whether the
subject matter of a claim is obvious] need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. Teleflex, Inc., 127 S.
Ct. 1727, 1741 (2007). See DyStar Textilfarben GmbH & Co. Deutschland
KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006)(“The
motivation need not be found in the references sought to be combined, but
may be found in any number of sources, including common knowledge, the
prior art as a whole, or the nature of the problem itself.”). “The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” KSR, 127 S. Ct. at
1739. “A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
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of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.” In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992). In other words, “familiar items may have obvious
uses beyond their primary purposes.” KSR, 127 S. Ct. at 1741.
The analysis supporting obviousness, however, should be made
explicit and should “identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements” in the manner
claimed. Id.
RELEVANT FACTUAL FINDINGS
Appellant acknowledges that “EMI signals generated by a
microprocessor, for example, may be transmitted to a heatsink coupled to the
microprocessor” (Spec. 2-3). Furthermore, Appellant acknowledges that a
heatsink can “radiate the received EMI signals” with the consequence that
the “radiated EMI signals may then degrade the performance of an electrical
device within the affected range” (Spec. 3). Also, Appellant acknowledges
that passive technology has been employed to reduce electromagnetic
interference with limited success (id). Appellant notes that a “heat sink”
encompasses devices that serve to “dissipate heat,” and can be a “mounting
base … made of a heat conducting material” (Spec. 4). Appellant
acknowledges that “[h]eatsinks are typically used with integrated circuit (IC)
devices” (Spec. 4).
Hinkle discloses an integrated circuit that is constructed so as to
furnish protection (filtering) from EMI at input pins and internal nodes
thereof (Abs.; col. 3, l. 31- col. 6, l. 39- col. 7, l. 24; Fig. 10).
Langley discloses the combination of a heat sink and integrated circuit
wherein a ferrite ring (102/202/302; Figs. 1, 2 and 3) is employed for
reducing EMI emissions from the IC package (col. 1, ll. 59-67; Figs. 1-3).
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ANALYSIS
Representative claim 1 requires an apparatus including a circuit and a
heat sink coupled such that EMI signals received by the heat sink are
reduced during the circuit operation. Representative claim 1 does not
specify a minimum amount of EMI signal reduction or require any particular
circuit and heat sink coupling mechanism.
Thus, Langley alone provides an apparatus that substantially suggests
a circuit- heat sink combination apparatus within the scope of claim 1.
Moreover, Appellant acknowledges that heat sinks are typically used with IC
devices and that passive EMI reduction has been employed with limited
success. As such, we are not persuaded that one of ordinary skill in the art
armed with this knowledge would have been led away from employing a
heat sink coupled to the circuit of Hinkle in a manner that would allow for
some EMI signal reduction, as claimed. Appellant’s arguments with respect
to a lack of a reasonable expectation of success, a change in principal of
operation and a result other than claimed here being the likely outcome of
the Examiner’s proposed addition of a heat sink to the IC of Hinkle are
unsupported with any persuasive evidence. Indeed, there is ample
suggestion coupled with expected predictable results furnished by the
applied references that would have reasonably led one of ordinary skill in
the art to subject matter (a heat sink and circuit combination) embraced by
representative claim 1.
CONCLUSION
On this record, Appellant has not persuaded us of reversible error in
the Examiner’s obviousness rejection of representative claim 1 and claims
10 and 11, which latter claims stand or fall together therewith.
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Claims 2, 4-6, and 1-12
Representative claim 2 depends form claim 1, discussed above, and
further requires that the apparatus circuit includes at least one active analog
device that is capable of generating a signal, which signal at least partially
reduces EMI signals.
The Examiner takes the position that the “combination of Hinkle and
Langley does not explicitly teach a circuit comprising at least one active
analog device, wherein at least said one active analog device comprises an
operational amplifier” (Ans. 6). Thus, in addition to Hinkle and Langley,
the Examiner additionally relies on Karino in asserting the obviousness of
the subject matter embraced by representative claim 2. In this regard, the
Examiner turns to Karino for an alleged teaching of and/or a suggestion of
an active analog device for use in the combined apparatus of Hinkle and
Langley.
The Examiner maintains that Karino teaches an operational amplifier
that generates a correction signal that partially reduces or nearly cancels out
an output signal albeit the Examiner acknowledges that Karino does not
teach reduction of electromagnetic interferences signals. The Examiner
asserts that:
[i]t would have been obvious to a person skilled in the art
to adapt the circuit from the Hinkle/Langley combination to
include one or more operational amplifiers, as well as other
appropriate electrical components such as resistors and
capacitors in order to produce an inversion of EMI signals,
which these generated signals would partially reduce or nearly
cancel the EMI signals. As stated above, the Hinkle/Langley
[combination] comprises electrical components within the
electrical circuit including inverter means to reduce EMI signals
received, thereby including operational amplifiers or other
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components [which] would assist in achieving this goal. In the
Karino reference, the supplying power and signals stemmed
from an arc welding apparatus versus the EMI signals desired
to be reduced in the present case. With the correct combination
of electrical components and feedback resistors, voltage, and
power sources, as well as the corresponding signals they
subsequently produce, become incidental in the generic
operation of the circuit, which is to create a phase shift of a
signal within the operational amplifier or equivalent 180°,
thereby canceling out the original signal, does not change.

Ans. 6-7.
Appellant argues that one of ordinary skill in the art would not have
turned to Karino as an analogous art reference, much less for a suggestion to
modify Hinkle’s IC circuitry by adding at least one active analog device,
such as the operational amplifier of Karino, for reduction of EMI signals in a
modified integrated circuit/heatsink combination according to Hinkle and
Langley given that Karino is directed to DC arc welding wherein an
operational amplifier is used to generate a correction signal to control the
output of an inverter that controls a welder (App. Br. 17-20).
ISSUE
Has Appellant established reversible error in the Examiner’s obviousness
rejection of representative claim 2 by the assertion that Karino is directed to
a disparate welding operation and would not have reasonably suggested a
modification to the apparatus of Hinkle to include an operational amplifier
as an active analog device as part of the IC thereof, as is maintained by the
Examiner?
SUMMARY DISPOSITION
We answer this question in the affirmative and reverse the Examiner’s
obviousness rejection of representative claim 2 on this record.
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ADDITIONAL FACTUAL FINDINGS AND ANALYSIS
Karino is directed to an inverter controlled DC arc welder wherein a
consumable electrode is employed (Abs.). Karino discloses the stabilization
of a consumable electrode DC arc welder output wherein a continuously fed
welding electrode can result in load changes, spattering, blowout, and
insufficient welding (col. 2, ll. 14-41).
Here, we agree with Appellant that the Examiner has not reasonably
articulated why one of ordinary skill in the art would have been led to
modify the integrated circuit and heat sink device suggested by Hinkle and
Langley for EMI reduction based on the disparate teachings of Karino
directed to employing an active analog device (operational amplifier 18) for
stabilizing welder output to prevent spatter, blowout, and/or insufficient
welding. We note that the Examiner’s rejoinder to Appellant’s arguments,
which rejoinder suggests that at least representative claim 2 is anticipated by
a combination of Hinkle, Langley, and Karino is off the mark in expressing a
sustainable rationale for the asserted modification of Hinkle based on the
disparate teachings of Karino (Ans. 10).
CONCLUSION
Appellant has presented argument that serves to show that the
Examiner has not articulated a sustainable case of obviousness with respect
to the subject matter of representative claim 2. In this regard, the
Examiner’s proposed combination of the disparate teachings of Karino with
Hinkle and Langley has not been presented with adequate rational
underpinnings to render the claimed subject matter prima facie obvious.

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Claim 3
Claim 3 depends from claim 2, as discussed above, and further
requires that the active analog device is an operative amplifier.
The Examiner additionally relies on the teachings of Smith in
rejecting dependent claim 3. However, the issue before us in this rejection is
substantially the same as that before us in our consideration of claim 2, from
which claim 3 depends. In this regard, Smith is directed to using sigma delta
modulators to produce a digital representation of an analog signal in testing
analog circuits. The Examiner has not shown how Smith makes up for the
lack of a prima facie case based on the teachings of Hinkle, Langley and
Karino in suggesting an operational amplifier for generating a signal to at
least partially reduce the EMI signals received by a heat sink, as was
discussed above concerning the Examiner’s rejection of claim 2.
Accordingly, we reverse the Examiner’s obviousness rejection of claim 3, on
this record.
Claims 18-20
As noted above, Appellant brings this appeal on the basis that
commonly rejected claims 18-20 stand or fall together (App. Br. 8). In
addition to a circuit and heatsink combination coupled so as to at least
partially reduce EMI signals as required in claim 1 discussed above,
representative independent claim 18 requires that the apparatus system
includes a computing platform that comprises a component to process
instructions and a memory to store instructions.
Besides Hinkle and Langley as employed by the Examiner in rejecting
claim 1, the Examiner additionally relies on Karino, Smith and Gupta in
rejecting claims 18-20 (Group VI). Karino and Smith are briefly described
above.
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The Examiner has found that “Gupta discloses a computing platform”
comprising an instruction processing component (802; Fig. 7) and a memory
for storing instructions (800, Fig. 7).” Ans. 8. The Examiner basically
maintains that it would have been obvious to one of ordinary skill in the art
to employ a computing platform including a component to process
instructions and a memory component, as ordinarily used in computers as
evidenced by Gupta, as part of an integrated circuit – heat sink combination
like that shown by Langley and Hinckle in light of the known use of such
components together for performing their respective functions. Ans. 8 and
13.
In addition to arguments previously made against the Examiner’s
rejection of claim 1 over Hinkle and Langley, which we found unpersuasive
for reasons set forth above, Appellant argues that Gupta is non-analogous art
with respect to reducing EMI signals received by a heat sink, as the claimed
subject matter is concerned with (App. Br. 30).
ISSUE
Has Appellant established reversible error in the Examiner’s
obviousness rejection of representative claim 18 based on the
aforementioned argument respecting the non-analogousness of Gupta to the
claimed subject matter, as more fully set forth in the Appeal Brief?
SUMMARY DISPOSITION
We answer this question in the negative.
ADDITIONAL FACT FINDINGS AND ANALYSIS
While Gupta is drawn to a method and apparatus for transcription of
speech (utterances) using acoustic information obtained from training
utterances and linguistic rules, Gupta does evidence the conventional
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presence of an instruction processing component and a memory component
in a computing device (Abs., col.9, ll. 36-46, col. 14, l. 55 –col. 15, l. 3).
In this regard, it would have been obvious to one of ordinary skill in
the art to employ a conventional memory component and instruction
processing component as part of a heat sink coupled integrated circuit
package as disclosed by Langley taken together with Hinkle. After all and
as noted above, Appellant acknowledges that heat sinks are typically used
with microprocessors using passive technology to reduce electromagnetic
interference, such as in a computing system (Spec. 5). Given these
admissions and prior art disclosures, Appellant has not persuaded us of
reversible error in the Examiner’s obviousness rejection of representative
claim 18 because the use of conventional memory and computational
(instruction processing) components in microprocessor systems coupled with
a heat sink, such as disclosed by Langley, would have been a readily
apparent option to one of ordinary skill in the art.
CONCLUSION
Appellant has not established reversible error in the Examiner’s
obviousness rejection of representative claim 18 based on the arguments
furnished in the Appeal Brief, including the non-analogous art argument.
Accordingly, we shall affirm the Examiner’s obviousness rejection of claims
18-20.

Claims 23-26
Concerning commonly rejected representative method claims 23-26,
claim 23 is selected as the representative claim.
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Representative claim 23 is drawn to a method of using a heatsink
requiring, inter alia, the step of “producing an electromagnetic signal to at
least partially reduce said EMI signals” (cl. 23).
In rejecting representative claim 23, the Examiner relies on the
teachings of Hinkle, Langley, Karino, Smith and Gupta. Appellant argues
that the claimed method would not have been obvious to one of ordinary
skill in the art based on this combination of references for reasons as argued
against the Examiner’s rejection(s) of the Group I, II, III, and VI claims
(App. Br. 32). In this regard and with respect to the Group II claims,
Appellant argued that one of ordinary skill in the art would not have turned
to Karino as an analogous art reference, much less for a suggestion to
modify Hinkle’s IC circuitry by adding at least one active analog device,
such as the operational amplifier of Karino, for reduction of EMI signals in a
modified integrated circuit/heatsink combination according to Hinkle and
Langley given that Karino is directed to DC arc welding and not EMI
suppression using an operational amplifier to generate a signal to reduce
EMI signals (App. Br. 17-20, 32).
Thus, a dispositive issue before us with respect to the Examiner’s
obviousness rejection of representative claim 23 is: Has Appellant
established reversible error in the obviousness rejection of representative
claim 23 based on the arguments presented respecting the lack of a
suggestion to modify the Hinkle/Langley heatsink and circuit combination
based on the additional teachings of Karino with respect to an operational
amplifier being used to generate correction signals for a disparate DC arc
welding operation?
The Examiner's assertion that claims 23-26 are anticipated by the
applied references is not responsive to this argument (Ans. 14). Nor has the
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Examiner otherwise persuasively articulated a rational basis for arriving at a
method corresponding to the claim 23 method based on the assembled
teachings of the references. It follows that we will not sustain the
Examiner’s obviousness rejection of claims 23-26, on this record.

ORDER
The Examiner’s decision to reject claims 1, 10, and 11 under 35
U.S.C. § 103(a) as being unpatentable over Hinkle in view of Langley; and
to reject claims 18-20 under 35 U.S.C. § 103(a) as being unpatentable over
Hinkle in view of Langley, Karino, Smith, and Gupta is affirmed. The
Examiner’s decision to reject claims 2, 4-6, and 12-14 under 35 U.S.C. §
103(a) as being unpatentable over Hinkle in view of Langley and Karino; to
reject claim 3 under 35 U.S.C. § 103(a) as being unpatentable over Hinkle in
view of Langley, Karino, and Smith; and to reject claims 23-26 under 35
U.S.C. § 103(a) as being unpatentable over Hinkle in view of Langley,
Karino, Smith, and Gupta is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv) (2006).

AFFIRMED-IN-PART

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