Hewlett Packard Enterprise Development LP

Patent Trials and Appeals Board

Aug 19, 2021

2020005312 (P.T.A.B. Aug. 19, 2021)

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.
15/546,070 07/25/2017 John P. Franz 90466068 1808
56436 7590 08/19/2021
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
MATEY, MICHAEL A
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
08/19/2021 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):
chris.mania@hpe.com
hpe.ip.mail@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN P. FRANZ, THOMAS R. BOWDEN,
RICHARD A. BARGERHUFF, SAMMY L. ZIMMERMAN, and
TAHIR CADER
____________________

Appeal 2020-005312
Application 15/546,070
Technology Center 2800
____________________

Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
Appellant1 filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s final decision rejecting claims 1–5, 7, 8, 13–19, and 21–23.
We have jurisdiction under 35 U.S.C. § 6(b).1
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Hewlett Packard Enterprise
Development LP as the real party in interest. Supplemental Appeal Brief
(“Appeal Br.”) filed May 4, 2020, 2.
1 Our Decision additionally refers to the Specification (“Spec.”) filed July
25, 2017, the Final Office Action (“Final Act.”) dated July 11, 2019, the
Examiner’s Answer (“Ans.”) dated May 19, 2020, and Appellant’s Reply
Brief (“Reply Br.”) dated July 10, 2020.
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CLAIMED SUBJECT MATTER
The subject matter on appeal relates to a memory cooling pad for a
computer device, a cooling assembly for a computing device, and a device
comprising a memory cooling pad for cooling a memory unit (see, e.g.,
claims 1, 13, and 23, respectively). The Specification describes a memory
cooling pad that includes a first thermal interface coupled to a second
thermal interface via a liner material that is configured to position the first
interface material on a first side of the memory unit and to position the
second thermal interface material on a second side of the memory unit.
Spec. ¶ 8. The Specification states that the memory cooling pad can provide
additional cooling performance with a relatively lower cost in comparison to
previous systems and methods of memory unit cooling. Id.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.
1. A memory cooling pad for a computing device,
comprising:
a first thermal interface material;
a second thermal interface material separate from the first
thermal interface material;
a liner material connected to and extending between the
first and second thermal interface materials, wherein the liner
material is flexible such that the memory cooling pad can be
folded around a memory unit during installation of the memory
cooling pad such that the first thermal interface material is on a
first side of a memory unit, the liner material extends across a
top of the memory unit, and the second thermal interface
material is on a second side of the memory unit;
wherein the first and second thermal interface materials
consist of deformable materials to conform to the first and
second surfaces of the memory unit upon installation of the
memory cooling pad.

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Appeal Br. 12 (Claims App.).

REJECTIONS ON APPEAL
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection:
I. Claims 1–4, 7, 13–15, and 21–23 under 35 U.S.C.
§ 102(a)(1) as anticipated by Tian;2
II. Claims 5, 8, and 16 under 35 U.S.C. § 103 as
unpatentable over Tian; and
III. Claims 17–19 under 35 U.S.C. § 103 as unpatentable
over Tian in view of Kehret.3 Final Act. 2–10.

B. DISCUSSION
Rejection I
Claims 1–4, 7, 13–15, and 21–23 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Tian. Appellant presents combined arguments
for claims 1, 13, and 23, which focus on the limitations of claim 1, and
presents separate arguments for claim 21. Appeal Br. 5–10. We discuss
these two groups below and select claim 1 as representative of the first
group. Therefore, claims 2–4, 7, 13–15, 22, and 23 stand or fall with claim
1. See 37 C.F.R. § 41.37(c)(1)(iv).
Claims 1–4, 7, 13–15, 22, and 23
The Examiner finds Tian discloses a memory cooling pad for a
computer device. Final Act. 3. The Examiner finds that Tian’s surface

2 Tian et al., US 2009/0303681 A1, published Dec. 10, 2009 (“Tian”).
3 Kehret et al., US 2004/0042175 A1, published Mar. 4, 2004 (“Kehret”).
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component 12 and thermal interface material 32 function as claim 1’s first
thermal interface material and Tian’s surface component 14 and thermal
interface material 32 function as claim 1’s second thermal interface material.
Id. The Examiner finds that Tian’s integral segment 16 functions as claim
1’s liner material, integral segment 16 is connected to and extends between
first and second thermal interface materials, and integral segment 16 is
flexible such that Tian’s memory cooling pad can be folded around a
memory unit during installation of the memory cooling pad. Id.
Appellant argues that Tian’s integral segment 16 is made from
metallic material and thus is rigid, rather than flexible, as claim 1 requires.
Appeal Br. 5–6. Appellant argues that Tian does not disclose that integral
segment 16 is flexible, that its structure can be folded around a memory unit,
or that integral segment 16 expands as a memory is installed, as the
Examiner finds. Id. at 6–7.
Appellant’s arguments are not persuasive of reversible error. Tian
discloses folded heatsink structure 10 that includes two surface components
12, 14 that are interconnected by integral segment 16. Tian ¶ 25. Tian
teaches that heatsink structure 10 is a coined sheet metal material. Id. ¶ 32.
As the Examiner finds, Appellant neither defines “flexible” nor discloses to
what degree the claimed liner material is flexible. Ans. 3. The Examiner
cites, without dispute, a definition of “flexible” as being “capable of being
flexed.” Ans. 3. The Examiner further disagrees with Appellant that metal
is not flexible, finding that “a metal is well known to bend to some degree
without breaking.” Id. at 4. We, therefore, consider whether a liner material
that is “flexible,” as claim 1 recites, encompasses Tian’s sheet metal
material.
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“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . .
claim language should be read in light of the specification as it would
be interpreted by one of ordinary skill in the art.’” In re Am. Acad, of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910
F.2d 831, 833 (Fed. Cir. 1990)). Appellant does not cite to a definition of
“flexible” in the Specification, nor do we discern an express definition for
this term in the Specification. “Without evidence in the patent specification
of an express intent to impart a novel meaning to a claim term, the term
takes on its ordinary meaning.” Optical Disc Corp. v. Del Mar Avionics,
208 F.3d 1324, 1334, 54 (Fed. Cir. 2000).
Paragraphs 9, 15, 16, and 29 of the Specification disclose that the liner
material can be a relatively thin polymer material, but do not require or
express an intent that the liner material be limited to a polymer, or to a
relatively thin polymer material. Paragraphs 16, 30, 31, and 43 of the
Specification disclose that the liner material can reinforce thermal interface
materials to prevent punctures or tears of thermal interface material and
damage to a memory unit during installation. We discern no reason why a
metal, such as Tian’s sheet metal material, cannot perform these functions of
preventing punctures or tears of thermal interface material and preventing
damage to a memory unit during installation.
As the Examiner finds, Merriam Webster defines “flexible” as
“capable of being flexed.”4 The Examiner presents a reasonable
explanation why Tian’s sheet metal material would be flexible, such as due

4 Merriam-Webster Dictionary entry for “flexible,” https://www.merriam-
webster.com/dictionary/flexible (last visited August 5, 2021).
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to a metal’s natural ability to bend without breaking. Appellant disputes the
Examiner’s position, arguing that the Specification defines the liner material
and its associated properties by disclosing that it can be a polymer type
material. Reply Br. 2. However, the Specification’s disclosure of the liner
material and associated properties is merely exemplary, rather than
definitional. As such, the Specification does not define “flexible” or require
that the liner material be limited to a polymer material.5
Appellant further contends that the mechanical properties of polymers
and plastics are very different from sheet metals in some respects and
“[e]ven though sheet metal may be bent and displays some flexibility in this
context, however, when sheet metal is bent, it deforms plastically (as
opposed to elastic deformation like a spring) and rigidly maintains its shape
in the bent state.” Appellant appears to argue that metals, such as Tian’s
sheet metal material, do not experience elastic deformation and only
experience plastic deformation. However, Appellant further asserts that
“[t]he mechanism for making good thermal connection between the thermal
interface materials recited in claim 1 (analogous to ‘thermal interface
material 32’ of Tian, ¶ [0027]) and the DIMM card is different than spring-
loaded large surfaces disclosed by Tian that abut the DIMM card.” Id. at 4
(emphasis added). Appellant further contrasts liner 222 depicted in the
Specification’s Figure 2 with Tian’s structure by arguing that “it is not any

5 Claim 5, which depends from claim 1, recites that the liner material
comprises a polymer material. This presents an additional reason not to
limit the scope of claim 1’s liner material to those comprising a polymer
material. See Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187
(Fed. Cir. 1998) (“While we recognize that the doctrine of claim
differentiation is not a hard and fast rule of construction, it does create a
presumption that each claim in a patent has a different scope.”).
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elastic force generated by the liner 222 (Fig. 2) that forces the thermal
interface materials against the DIMM card, but the comb portions of the
cooling plates.” Id. (emphasis added). These statements appear to
acknowledge that Tian’s surface components 12, 14, which are made of
sheet metal material, can act like a spring with elastic behavior. Indeed, we
take Official Notice of the fact that conventional metals, such as Tian’s sheet
metal, experience elastic deformation at relatively low stress levels, as
opposed to plastic deformation at higher stress levels (i.e., a stress above the
yield strength of a metal).
Appellant also contends that claim 1 recites a degree to which a liner
material must be flexible because claim 1 recites:
the liner material is flexible such that the memory cooling pad
can be folded around a memory unit during installation of the
memory cooling pad such that the first thermal interface material
is on a first side of a memory unit, the liner material extends
across a top of the memory unit, and the second thermal interface
material is on a second side of the memory unit
Reply Br. 3. Appellant argues that this “indicates that the liner is not
necessarily folded before the installation, such as for example, during its
manufacturing process.” Id. at 4. Appellant asserts that Tian teaches that
the U-shape of its structure 10 is folded before installation. Id. at 5.
Appellant’s arguments are unpersuasive. Regardless whether claim 1
refers to folding the liner material during installation or refers to other
methods, such as folding prior to installation, claim 1 does not present a
patentable distinction from Tian’s structure. For the reasons discussed
above, the scope of claim 1’s “flexible” term encompasses Tian’s sheet
metal material. With regard to the sheet metal material’s bending capability,
the Examiner finds that Tian discloses bending its sheet metal material to
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form its surface components 12, 14 and, therefore, surface components 12,
14 are flexible and deformable. Ans. 5. Tian’s disclosure supports this
finding. Tian ¶ 26. To the extent Tian suggests forming its heatsink
structure 10 into a U-shape, as shown in its drawings, and this is done before
installation, Appellant has not provided any persuasive evidence or technical
reasoning why the sheet metal material used to form Tian’s surface
components 12, 14 cannot be folded “around a memory unit during
installation of the memory cooling pad.”
Appellant also contends that Tian does not teach that integral segment
16 is connected to, and extends between, Tian’s thermal interface material
32. Appeal Br. 8–9. The Examiner responds that Tian’s Figure 2 shows that
the liner material (i.e., integral segment 16) directly connects the two
exterior sides of surface components 12, 14 together and indirectly connects
its interior surfaces together. Ans. 5. We agree with this analysis because
claim 1 recites that the liner material is “connected to”6 and extends between
the thermal interface materials without requiring a direct connection between
the liner material and the thermal interface materials. Tian discloses that
surface components 12, 14 “are interconnected by an integral segment 16.”
Tian ¶ 25. Tian also teaches that inner surfaces of surface components 12,
14 are covered by thermal interface material 32. Id. ¶ 27. Therefore,
integral segment 16 is “connected to” thermal interface material 32, even if
it is only in an indirect manner.

6 Claim 13 differs from claim 1 by reciting that first and second thermal
interfaces are “attached to” a liner material. Claim 12, however, does not
require a direct attachment. Therefore, our analysis for claim 1 applies to
claim 13. Claim 23 uses “connected to” language, similar to claim 1.
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For these reasons, Appellant’s arguments that the scope of claim 1’s
liner material does not encompass Tian’s sheet metal material are
unpersuasive.
Appellant next argues that, contrary to the Examiner findings, Tian’s
surface components 12, 14 and thermal interface material 32 do not provide
first and second thermal interface materials consisting of deformation
materials because surface components 12, 14 are rigid and thermal interface
material 32 is flexible. Appeal Br. 9; Reply Br. 5. Appellant contends that
thermal interface materials consist of deformable materials to conform to
first and second surfaces of a memory unit upon installation, and that
thermal interface materials need to have a soft and supple texture, like a
foam pad, to conform to the exterior shape of a DIMM, which is a specific
type of memory unit. Reply Br. 5–6. Appellant asserts that Tian’s thermal
interface material 32, which can be a thermal tape or thermal glue, “is not
capable of conforming to the exterior shape.” Id. at 6.
Like the term “flexible,” Appellant does not direct us to an express
definition for “deformable” and we discern no such definition in the
Specification. Therefore, we apply its ordinary meaning. Merriam Webster
defines “deform” as “to spoil the form of” and “to alter the shape of by
stress.”7 As noted above, the Examiner finds that Tian teaches forming its
surface components 12, 14 via bending, which demonstrates that surface
components 12, 14 are deformable (i.e., the shape of Tian’s sheet metal
material is changed via stress into the form of surface components 12, 14).
Ans. 5; Tian ¶ 26. The Examiner also finds that Tian’s thermal interface

7 Merriam-Webster Dictionary entry for “deform,” https://www.merriam-
webster.com/dictionary/deform (last visited August 5, 2021).
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material 32, which can be thermal tape or thermal glue, is deformable. Ans.
5; Tian ¶ 27. Appellant’s arguments fail to sufficiently explain why thermal
tape or thermal glue is not capable of having its shape altered by stress and,
therefore, not “deformable.” Further, Appellant’s arguments also rely upon
definitions of “deformable” (i.e., that a deformable material has a soft and
supple texture, like a foam pad) that unduly narrow the broadest reasonable
interpretation of “deformable” and a type of memory unit (i.e., a DIMM
unit) that claim 1 does not require.
For these reasons, a preponderance of the evidence supports the
Examiner’s rejection of claim 1.
Claim 21
Claim 21 depends from claim 1, via claim 7, and recites “wherein the
liner material extends fully across the exterior sides of the first and second
thermal interface materials.” Appeal Br. 15 (Claims App.).
The Examiner finds that Tian’s integral segment 16 extends fully
across the exterior sides of surface components 12, 14. Final Act. 6.
Appellant asserts that Tian’s Figure 2 shows that integral segment 16
stops at the top of surface components 12, 14 and does not extend across any
portion of the exterior side of Tian’s thermal interface material 32. Appeal
Br. 10.
Appellant’s arguments are unpersuasive. The Examiner finds that
Tian’s thermal interface material 32 is deformable. Ans. 5. Further, Tian
discloses that its heatsink structure 10 is formed from sheet metal material
by bending surface components 12, 14, which are interconnected by integral
segment 16. Tian ¶¶ 25, 26, 32. This implies that surface components 12,
14 and integral segment 16 have a single piece construction (i.e., all are
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formed from the same piece of sheet metal). In other words, a single piece
of sheet metal forms surface component 12 that extends fully across an
exterior side of one thermal interface material 32, forms integral segment 16,
and forms surface component 14 that extends fully across an exterior side of
another thermal interface material 32. As a result, claim 21 does not
distinguish from the structure for Tian’s heatsink structure 10.
For these reasons and those set forth in the Examiner’s Answer, we
sustain the Examiner’s § 102 rejection of claims 1–4, 7, 13–15, and 21–23
over Tian.

Rejections II and III
Claims 5, 8, and 16 are rejected under 35 U.S.C. § 103 as
unpatentable over Tian. Claims 17–19 are rejected under 35 U.S.C.
§ 103 as unpatentable over Tian in view of Kehret.
Appellant merely argues that Tian does not teach or suggest all the
limitations of the claims, cites the additional limitations of these claims, and
argues Kehret fails to cure the Tian’s deficiencies. Appeal Br. 10–11.
These “separate” arguments amount to no more than a recitation of the
additional limitations of the dependent claims and a generic denial that the
references teach or suggest the additional limitations or cure the deficiencies
of the principal references. We, and our reviewing court, have long held that
such “argument” does not merit separate consideration. See, e.g., In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold 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.”).
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Further, for the reasons discussed above with regard to Rejection 1, there are
no deficiencies in the rejection over Tian that require curing by Kehret.
For these reasons and those set forth in the Examiner’s Answer, we
sustain the Examiner’s § 103 rejections of claims 5, 8, and 16–19.
CONCLUSION
The rejections are affirmed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–4, 7, 13–
15, 21–23
102(a)(1) Tian 1–4, 7, 13–
15, 21–23

5, 8, 16 103 Tian 5, 8, 16
17–19 103 Tian, Kehret 17–19
Overall
Outcome:

1–5, 7, 8,
13–19, 21–
23

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED