Ex Parte Tracy et al

Patent Trial and Appeal Board

Apr 26, 2017

13201243 (P.T.A.B. Apr. 26, 2017)

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.
13/201,243 08/12/2011 Mark S Tracy 82762202 8069
22879
HP Tnr
7590 04/28/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
RUBY, TRAVIS C
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK S. TRACY and EART W. MOORE
Appeal 2015-0029581
Application 13/201,2432
Technology Center 3700
Before ANTON W. FETTING, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references the Appeal Brief (“Appeal Br.,” filed Sept. 29,
2014) and Reply Brief (“Reply Br.,” filed Jan. 20, 2015), and the Examiner’
Answer (“Ans.,” mailed Nov. 18, 2014) and Final Office Action (“Final
Act.,” mailed Mar. 21, 2014).
2 According to Appellants, “[t]he real party in interest is Hewlett-Packard
Development Company, LP, [“HPDC”]. . . a wholly-owned affiliate of
Hewlett-Packard Company . . . [and t]he general or managing partner of
HPDC is HPQ Holdings, LLC.” Appeal Br. 1.
Appeal 2015-002958
Application 13/201,243
BACKGROUND
According to Appellants, the Specification discloses a “system for
cooling a heat producing device.” Spec. 12.
CLAIMS
Claims 1—20 are on appeal. Claim 1 is illustrative of the appealed
claims and recites:
1. A heat exchange system comprising:
an air mover wherein at least a portion of the air mover
discharge airflow is directed radially outward;
a thermal conduit;
a thermal member having a first surface, a second surface
and at least one integrally formed heat exchange surface
integrally formed as a single unitary body with the first surface
and the second surface;
wherein at least a portion of the heat exchange
surface is at least partially disposed in the air mover
discharge airflow;
wherein at least a portion of the first surface is
disposed proximate the thermal conduit; and
wherein at least a portion of the second surface is
disposed proximate the air mover.
Appeal Br. 26.
REJECTIONS
1. The Examiner rejects claim 10 under 35 U.S.C. § 112, second paragraph,
as indefinite.
2. The Examiner rejects claims 1, 2, 4, 6, 7, 11, and 13 under 35 U.S.C.
§ 102(e) as anticipated by Wang.3
3 Wang et al., US 2009/0211737 Al, pub. Aug. 27, 2009.
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Application 13/201,243
3. The Examiner rejects claim 1 under 35 U.S.C. § 102(e) as anticipated by
Ishikawa 540.4
4. The Examiner rejects claims 3 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Wang in view of Hsieh.5
5. The Examiner rejects claims 5, 14, and 15 under 35 U.S.C. § 103(a) as
unpatentable over Wang in view of Ishikawa 426.6
6. The Examiner rejects claims 8—10 under 35 U.S.C. § 103(a) as
unpatentable over Wang in view of Ishikawa 426 and Yu.7
7. The Examiner rejects claims 16—19 under 35 U.S.C. § 103(a) as
unpatentable over Ishikawa 540 and Liu.8
8. The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as unpatentable
over Ishikawa 540 and Yu.
DISCUSSION
Indefiniteness
Appellants do not address the rejection of claim 10 under 35 U.S.C.
§112, second paragraph, in their briefs. Accordingly, we summarily sustain
this rejection.
Anticipation
Independent claim 1 recites, inter alia, “a thermal member having a
first surface, a second surface and at least one integrally formed heat
exchange surface integrally formed as a single unitary body with the first
surface and the second surface” and independent claim 11 similarly recites,
4 Ishikawa, US 6,650,540 B2, iss. Nov. 18, 2003.
5 Hsieh et al., US 2009/0133855 Al, pub. May 28, 2009.
6 Ishikawa, US 2009/0046426 Al, pub. Feb. 19, 2009.
7 Yu et al., US 6,362,958 Bl, iss. Mar. 26, 2002.
8 Liu, US 6,262,893 Bl, iss. July 17, 2001.
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Application 13/201,243
inter alia, “a planar thermal member having a first surface, a second surface
and at least one integral heat exchange surface integrally formed as part of a
single unitary body with the first surface and the second surface.” See
Appeal Br. 26, 29. The dispositive issue with respect to each of the
anticipation rejections on appeal regards the broadest reasonable
interpretation of the phrase “integrally formed as part of a single unitary
body.” Appellants’ contend that this phrase requires that the thermal
member be a single piece structure. See Appeal Br. 9—12. In contrast, the
Examiner finds that this phrase does not limit the claimed structure to one-
piece members and that the broadest reasonable construction of the claim
allows for thermal members comprising multiple pieces. See Final Act. 5—6,
24; see also Ans. 24—26.
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). Here, we agree with Appellants that the broadest reasonable
interpretation of the claims in light of the Specification would require a
thermal member that has only one piece. In particular, we agree that the
Examiner “dissect[s] the claim limitation ‘integrally formed as a single
unitary body’ and [then] attack[s] each dissected portion,” which ignores the
meaning of the phrase as a whole. Thus, although the definitions of the
terms taken individually might indicate a structure including more than one
piece, we find that the plain language taken as a whole would be interpreted
by a person of ordinary skill in the art to require a one-piece structure. To
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Application 13/201,243
find otherwise, would render much of the language in the phrase
superfluous. Biconlnc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir.
2006) (“[C]laims are interpreted with an eye toward giving effect to all
terms in the claim.”); see also Sturnbo v. Eastman Outdoors, Inc., 508 F.3d
1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions which render
phrases in claims superfluous); Merck & Co. v. Teva Pharms. USA, Inc., 395
F.3d 1364, 1372 (Fed. Cir. 2005) (rejecting a proposed claim construction
that would render claim terms superfluous).
Further, we agree with Appellants that requiring a one-piece structure
is consistent with the Specification. The Examiner maintains that the
Specification fails to “explicitly forbid[] the combination of multiple parts”
and “provides inconsistent meaning to the claim language” by indicating that
the thermal member may be a combination of parts. Ans. 25—26. We are
not persuaded of any inconsistency by the fact that the Specification includes
embodiments that have multiple parts. We see no indication in the portions
of the Specification cited by the Examiner that the embodiments including a
combination of parts may be said to include a thermal member with a heat
exchange surface that is “integrally formed as a single unitary body.” In
fact, the language in the Specification most closely resembling the claim
language states that “the heat exchange surface 150 can be integral, cast, or
fabricated as a single unit with the thermal member 130, i.e. as a unitary
component of the thermal member 130.” Spec. 135. This language may be
contrasted with the language in the Specification describing the attachment
of the thermal conduit 120 to the thermal member 130. See Spec. 1 30. In
particular, the Specification states that the thermal member 120 may be
detachably or permanently attached to the thermal member and that
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permanent attachment means include “soldering, welding, brazing, or the
like.” Id. The Specification does not indicate that either detachable or
permanent attachment would result in a thermal conduit and thermal
member that are considered integrally formed to create a single unit.
Further, each of these descriptions are provided with respect to Figure 1,
which depicts the thermal member and heat exchanger as a single piece with
a separate thermal conduit attached thereto.
Accordingly, we find that a person of ordinary skill in the art would
conclude, in light of the Specification and the totality of the claim language
itself, that the claim language at issue refers to a thermal member and heat
exchanger that are formed as a single piece.
In light of this claim interpretation, we will not sustain either
anticipation rejection before us. In rejecting independent claims 1 and 11,
the Examiner relies on the casing for fan 220 and the fin assembly 200 of
Wang as the combined thermal member. Final Act. 4—5. However, the
Examiner acknowledges, and we agree, that the casing for fan 220 and the
fin assembly are not formed as a single piece. Thus, Wang fails to disclose a
“heat exchange surface integrally formed as a single unitary body with the
first surface and the second surface” of the thermal member, as required by
claim 1 and as similarly required by claim 11.
With respect to the rejection of claim 1 over Ishikawa 540, the
Examiner relies on fan casing 30 as the thermal member and heat sink 18 as
the combined thermal member as claimed. Final Act. 10—11. However, the
Examiner acknowledges, and we agree, that the fan casing and heat sink
assembly are not formed as a single piece. Thus, Ishikawa 540 fails to
disclose a “heat exchange surface integrally formed as a single unitary body
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with the first surface and the second surface” of the thermal member, as
required by claim 1
Based on the foregoing, we do not sustain the anticipation rejection of
claims 1, 2, 4, 6, 7, 11, and 13 over Wang or the anticipation rejection of
claim 1 over Ishikawa 540.
Obviousness
Claims 3, 5, 12, and 14—20 each depend from one of independent
claims 1 or 11. With respect to the rejections of each of these claims, the
Examiner relies on the findings noted above that each of Wang and Ishikawa
540 disclose a thermal member with an integrally formed heat exchange
surface as claimed. See Final Act. 12—24. Because we conclude that the
these findings are in error and because the Examiner does not otherwise
explain why the use of a one-piece structure for the thermal member would
have been obvious in view of the art of record, we will not sustain the
rejections of claims 3,5,12, and 14—20.
With respect to claims 8—10, independent claim 8 includes the
limitation
transferring at least a portion of the conveyed heat from the
thermal conduit to a thermal member comprising a metallic
member having a first surface, a second surface, at least one
exterior edge, and at least one integral heat exchange surface
integrally formed as part of a single unitary body with the first
surface and the second surface.
Appeal Br. 28. For the reasons discussed above, we interpret this claim
limitation to require transferring heat to a one-piece thermal member as
similarly required by claim 1. As with the anticipation rejection over Wang,
the Examiner’s rejection of claims 8—10 relies on the erroneous finding that
Wang discloses a thermal member as claimed. Final Act. 16. We find that
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the Examiner erred in making this finding for the same reasons discussed
above with respect to claim 1. Because the Examiner does not otherwise
explain why the use of a one-piece structure for the thermal member would
have been obvious in view of the art of record, we will not sustain the
rejection of claims 8—10.
CONCLUSION
We AFFIRM the rejection of claim 10 under 35U.S.C. § 112, second
paragraph, as indefinite.
We REVERSE the rejection of claims 1, 2, 4, 6, 7, 11, and 13 under
35 U.S.C. § 102(e) as anticipated by Wang.
We REVERSE the rejection of claim lunder 35 U.S.C. § 102(e) as
anticipated by Ishikawa 540.
We REVERSE the rejection of claims 3 and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Wang in view of Hsieh.
We REVERSE the rejection of claims 5, 14, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Wang in view of Ishikawa 426.
We REVERSE the rejection of claims 8—10 under 35 U.S.C. § 103(a)
as unpatentable over Wang in view of Ishikawa 426 and Yu.
We REVERSE the rejection of claims 16—19 under 35 U.S.C.
§ 103(a) as unpatentable over Ishikawa 540 and Liu.
We REVERSE the rejection of claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Ishikawa 540 and Yu.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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