Ex Parte Wei et al

Board of Patent Appeals and Interferences

Nov 5, 2010

10263926 (B.P.A.I. Nov. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONGHUA WEI and LESLIE MOMODA
____________

Appeal 2009-009160
Application 10/263,926
Technology Center 3700
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Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL,
and STEFAN STAICOVICI, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Ronghua Wei and Leslie Momoda (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1-20.
The Examiner rejected claims 1-3, 8-16, and 20 under 35 U.S.C. § 103(a) as
unpatentable in view of Carpentier2 (FR 2679021 A1, pub. Jan. 15, 1993),
claims 4 and 17 under 35 U.S.C. § 103(a) as unpatentable in view of
Carpentier and Fraas (Fraas, Arthur P., Heat Exchanger Design 109, 110, &
300 (John Wiley & Sons, Inc., 1965)), claims 5 and 18 under 35 U.S.C.
§ 103(a) as unpatentable in view of Carpentier and Yamamoto (JP 60185095
A, pub. Sep. 20, 1985), and claims 6, 7, and 19 under 35 U.S.C. § 103(a) as
unpatentable in view of Carpentier and Matsunaga (JP H3-177791 A, pub.
Aug. 1, 1991). We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
The Invention
The claims on appeal relate to an allochiral thermal management
apparatus.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A thermal management apparatus including:
a first plate comprising:
i. a fluid delivery channel having cross sectional
area configured to deliver a fluid to a single
fluid flow channel;
ii. a plurality of peripheral fluid distribution
channels having an at least one cross sectional
area and configured to receive fluid from the
single fluid flow channel and transport the fluid
substantially from a first portion of the first

2 The Examiner refers to the inventor’s first name “Pierre.”
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plate to a second portion of the first plate and
into a single used fluid flow channel having a
third cross sectional area; and
iii. a used fluid return channel having a fourth
cross sectional area configured to receive fluid
from the single used fluid flow channel; and
a second plate comprising
i. a fluid delivery channel having a cross sectional
area configured to deliver a fluid to a single
fluid flow channel;
ii. a plurality of peripheral fluid distribution
channels having at least one cross sectional area
and configured to receive fluid from the single
fluid flow channel and transport the fluid
substantially from a second portion of the
second plate to a first portion of the second plate
and into a single used fluid flow channel having
a third cross sectional area; and
iii. a used fluid return channel configured to receive
fluid from the single used fluid flow channel;
wherein the first and second plates are of
substantially the same size and shape and are
positioned for substantial overlap and allow for
the placement of a device between said first
plate and said second plate and the first portion
of the first plate substantially overlaps with the
first portion of the second plate and the second
portion of the first plate substantially overlaps
with the second portion of the second plate,
whereby the fluid in the first plate flows in a
direction substantially opposite from the fluid in
the second plate.

The Rejections
The Examiner posits that it would have been obvious to a person
having ordinary skill in the art to omit the corrugated distributor in the fluid
channel of Carpentier’s heat exchanger, since the Examiner perceives that
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the facts present in the examination of this patent application permit the
utilization of legal authority and patent examining procedure that has
provided the rationale that it is obvious to omit an element and its function
as a matter of routine skill in the art when the function of the element is not
desired. Ans. 5 and 10.
Contentions
Appellants contend that the Examiner has essentially applied a per se
rule without applying a fact-specific analysis. Reply Br. 4. Appellants have
provided substantial arguments as to why the Examiner’s reasoning is faulty.
See Appeal Br. 7-10 and Reply Br. 5-7.

OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments of Appellants and the Examiner. As a result of this review, we
have determined that the Examiner has failed to establish the prima facie
obviousness of claims 1-20. Therefore, the rejection of these claims is
reversed for the reasoning Appellants have provided in both Briefs
concerning the Examiner’s utilization of a per se rule absent any factual
analysis that such a rule is applicable to the facts present within the
examination of this patent application. We add additional remarks primarily
for emphasis.
When determining whether a claim is obvious, an examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995). Reliance solely on a per se rule of obviousness is
improper. Id. “Rejections on obviousness grounds cannot be sustained by
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mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Examiner’s determination that the omission of Carpentier’s
corrugated distributor would still permit Carpentier to function properly has
no basis in fact or analysis and is unsubstantiated. The Examiner perceives
that once the Examiner has stated the omission of an element and its
function is a matter of routine skill and does not inhibit the reference to
function properly, then the burden shifts to Appellants to come forth with
evidence to the contrary. However, this perception is an improper
understanding of the Examiner’s duty to initially establish a prima facie case
of obviousness by the factors set forth in Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966).3 Before Appellants can be put to the burdensome task
of coming forth with evidence to rebut the Examiner’s determination that the
omission of an element would still permit the reference to function properly,
the Examiner needs to establish a reasonable belief, i.e., substantiate, that
such would occur through either facts and/or analysis. See, e.g. In re
Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (Before an applicant can be
put to a burdensome task of proving the contrary, the examiner must provide
sufficient evidence or scientific reasoning to establish the reasonableness of
the examiner’s belief that the functional limitation is an inherent
characteristic of the prior art.) Here, the Examiner has failed to provide

3 The examiner bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also
In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
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sufficient evidence or scientific reasoning to establish that Carpentier’s heat
exchanger would be capable of functioning properly with the omission of the
corrugated distributor.
Moreover, utilization of a legal precedent as a source of supporting
rationale should be judiciously applied. The Examiner has failed to set forth
that the facts in In re Karlson, 311 F.2d 581 (CCPA 1963), are sufficiently
similar to the facts within this application under examination. The Examiner
has not established a record that clearly supports the Examiner’s
determination that no change in the functions of the remaining elements
would result from the omission of the corrugated distributor element as was
established within the record before the court in Karlson. Id. at 584.
Further, even if the corrugated distributor was removed as proposed by the
Examiner, there is no evidence in the record that it would have been obvious
to a person having ordinary skill in the art to remove this distributor.
While the Examiner has provided a cogent analysis concerning the
rejection of claims 4 and 17 with the utilization of a technical treatise
familiar to a person having ordinary skill in the art in order to substantiate
the Examiner’s determination of obviousness, such utilization, while
laudable, fails to remedy the deficiency of the Examiner’s utilization of per
se rules of obviousness concerning the rejection of claims 1-3, 8-16, and 20
noted supra. The same can be stated for the rejection of claims 5-7 and
18-19 with the various applied prior art.

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DECISION
Based on the foregoing, the Examiner’s decision to reject claims 1-20
is reversed.

REVERSED

Klh

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