Jerome E. Toth et al.

Patent Trials and Appeals Board

Aug 27, 2019

14031685 - (D) (P.T.A.B. Aug. 27, 2019)

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.
14/031,685 09/19/2013 Jerome E. Toth 022232-9114-US01 1074
23409 7590 08/27/2019
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
SCHERMERHORN, JON
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
08/27/2019 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEROME E. TOTH, LEN DORE, DOUG GROVE,
and AUSTIN CORNELL
____________________

Appeal 2019-000226
Application 14/031,685
Technology Center 3700
____________________

Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Decision rejecting claims 1–8, 10–16, 18, 20, 21, 24–31, and
33–38. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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CLAIMED SUBJECT MATTER
Claims 1, 10, 18, and 31 are independent. Claims 2–8, 11–16, 20, 21,
24–30, and 33–38 depend from claim 1, 10, 18, and 31. Claim 1 is
reproduced below.
1. A heat-transfer system for conducting heat from a heat
source, the heat-transfer system comprising:
a plurality of serially coupled evaporators for generating
a respective vapor;
a plurality of reinforcement elements interposed between
adjacent evaporators; and
a condenser in fluid communication with at least one of
the evaporators;
wherein at least one of the evaporators includes an
enclosed vapor chamber defined at least in part by a first wall
and a second, oppositely spaced wall, wherein the first wall
includes a blind recessed portion that opens to an environment
exterior of the evaporator, wherein a first one of the
reinforcement elements is coupled to an exterior surface of the
first wall and is disposed at least partially within the blind
recessed portion, and wherein a second one of the
reinforcement elements is coupled to an exterior surface of the
second wall.
REJECTIONS1
1. Claims 1, 2, 4–8, 10, 12, 13, 15, 16, 18, 20, 21, 23, and 25–38 are
rejected under 35 U.S.C. § 103 as being unpatentable over Huang (US
7,791,884 B2, issued Sept. 7, 2010) and Siu (US 2007/0012429 A1,
published Jan. 18, 2007).

1 Claims 23 and 32 were subject to rejections in the Non-Final Action, but
subsequently have been cancelled. Ans. 12.
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2. Claims 3, 6, 11, 14, and 24 are rejected under 35 U.S.C. § 103 as
being unpatentable over Huang, Siu, and Sarraf (US 2011/0176276 A1,
published July 21, 2011).
OPINION
Claim 1 recites “a plurality of reinforcement elements interposed
between adjacent evaporators.” Claims 10, 18, and 31 include similar
requirements. The Examiner acknowledges that “Huang . . . does not
explicitly disclose . . . at least one reinforcement element.” Non-Final Act.
4. The Examiner finds that “Siu discloses a heat transfer system (Fig. 10)”
with “a reinforcement element []1010/1020.” Id.; see also id. at 7–8, 10.
The Examiner reasons that “[i]t would have been obvious . . . to modify the
evaporator of Huang with the heat transfer device of Siu in order to provide
improved strength and/or reduced cost and/or reduced thermal resistance.”
Id. at 4–5 (citing Siu ¶¶ 6, 22–24).
Appellant disputes both the Examiner’s finding with respect to
whether Siu teaches a “reinforcement element,” and the Examiner’s
rationale for modifying Huang’s system to include a “reinforcement
element.” Appeal Br. 18–30. We only address the Examiner’s finding
related to Siu teaching a “reinforcement element” because that is dispositive
as to resolving the instant appeal.
With respect to the Examiner’s finding, Appellant contends that “the
Examiner mischaracterizes Siu’s boiler plate 1010 as a reinforcement
element . . . without any factual support or explanation.” Appeal Br. 20.
Appellant explains that “[g]iven Siu’s narrow description of the boiler
plate’s function to manage ‘superheat generated’ by the heat source, the
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Examiner fails to explain why a person of ordinary skill in the art would
recognize or look to the boiler plate as a reinforcement element.” Id. at 21.
The Examiner responds, without citing any particular portion of Siu,
that “Siu explicitly discloses the use of extra material in order to strengthen
the heat pipe.” Ans. 14. The Examiner proceeds to explain, however, that
“even if Siu was silent, the additional plate (i.e., boiler plate 1010) is
additional material which would provide some degree of ‘reinforcement.’”
Id. The Examiner further explains that “as it is currently claimed, the
structure of the reinforcement elements is quite broad.” Id. at 15. The
Examiner proceeds to explain that “as stated in the Office Action mailed 12
May 2017, Merriam-Webster online dictionary defines ‘reinforce’ as, 1: to
strengthen by additional assistance, material, or support.” Id. The Examiner
finds that “Siu does in fact disclose the claimed ‘reinforcement element’
because the boiler plate 1010 is a sheet/plate that provides additional
assistance/material/support.” Id. at 15–16. The Examiner explains that
“[t]he fact that Siu does not explicitly refer to the plate as a reinforcement
element does not mean that the plate does not function as a reinforcement.”
Id. at 16.
Appellant contends that “nothing in Siu suggests that the boilerplate in
any way functions to add strength to Siu’s vapor chamber as a reinforcement
element.” Reply Br. 6. Appellant acknowledges that “the claims fail to
recite ‘any further defining limitations’ about the structural characteristics of
the claimed reinforcement element,” but contends that “does not mean that a
person of ordinary skill in the art would recognize or otherwise use Siu’s
boilerplate to reinforce Huang’s heat pipe.” Id. Appellant agrees that “[b]y
definition, a ‘reinforcement element’ is a device designed to provide
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additional strength.” Id. Appellant has the better position, even applying the
Examiner’s broad reading of “reinforcement element.”
As explained above, both Appellant and the Examiner focus on the
function associated with “reinforcement,” and whether Siu’s boiler plate
1010 functions in that manner. Neither Appellant, nor the Examiner,
identifies any particular structure associated with a “reinforcement element,”
and the claim, itself, does not provide any further structural limitations for
the “reinforcement element” beyond the generic term “element.”
Nevertheless, based on the claim language itself, we know that some form of
reinforcement is required by that element. The Examiner fails to offer
sufficient basis to support the position that Siu’s boiler plate is a
“reinforcement element” because Siu’s boiler plate 1010 is described as
“operable to manage any superheat generated at the evaporation zone.” Siu
¶ 33. In other words, as Siu’s boiler plate has a heat transfer function, it is
not clear to us, and the Examiner has not adequately explained, how Siu’s
boiler plate 1010 also necessarily has a reinforcement function so that it can
be reasonably considered by a skilled artisan to be a “reinforcing element.”
Under the Examiner’s reading of that limitation, anything is a
“reinforcement element,” but the Examiner provides no reason to believe
that is necessarily true.
In Appellant’s system, for example, the “reinforcement element” is
described as providing “significantly increased resistance to deformation
[from clamping] due to the presence of the reinforcement element 180.”
Spec. ¶ 30. Certainly, one can envision situations where adding any
additional structure would not provide “reinforcement.” One such example
is where that additional structure focuses the clamping force on a smaller
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area of the evaporator wall, resulting in greater localized force applied
during clamping.
Based on the record before us, the Examiner does not have sufficient
basis to find that Siu’s boiler plate 1010 is a “reinforcement element.”
Accordingly, we do not sustain the Examiner’s decision to reject claims 1–8,
10–16, 18, 20, 21, 24–31, and 33–38.
DECISION
We REVERSE the Examiner’s decision to reject claims 1–8, 10–16,
18, 20, 21, 24–31, and 33–38.

REVERSED