Thomas Tessnow

Patent Trials and Appeals Board

Jun 25, 2020

2019006494 (P.T.A.B. Jun. 25, 2020)

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.
13/894,712 05/15/2013 Thomas Tessnow 2012P21843US 9131
24252 7590 06/25/2020
OSRAM SYLVANIA Inc.
200 Ballardvale Street
Wilmington, MA 01887
EXAMINER
HINCAPIE SERNA, GUSTAVO A
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
06/25/2020 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):
OSI-patents@osram.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS TESSNOW
Appeal 2019-006494
Application 13/894,712
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17 and 22. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, the “disclosure relates to heat sinks for solid
state illumination systems, and[,] more particularly[,] pertains to two-

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “OSRAM
SYLVANIA Inc.” Appeal Br. 2.
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Application 13/894,712

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component aluminum alloy heat sinks.” Spec. ¶ 2. Below, we reproduce
independent claim 1 as representative of the appealed claims.
1. A heat sink (10) comprising:
an extruded component (12) comprising a first aluminum
material, said extruded component (12) configured to be
coupled to a solid state light source (18); and
a cast component (14) comprising a second aluminum
material overmolded onto a portion of said extruded
component (12) to form an interface layer (16), wherein said
interface layer (16) is formed of at least one of said first and
said second aluminum materials, said interface layer (16)
abutting against and coupling said extruded component (12) to
said cast component (14).
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1–7, 11–13, 16–17, and 222 under 35 U.S.C. § 103 as
unpatentable over Rembold et al. (US 6,257,327 B1, issued
July 10, 2001), (“Rembold”), Chinniah et al. (US 8,608,347 B2,
issued Dec. 17, 2013) (“Chinniah”), and Cali et al.
(US 8,292,766 B2, issued Oct. 23, 2012) (“Cali”);

2 After the Examiner mailed the Final Office Action, Appellant filed an
Amendment removing certain subject matter from claim 1, and adding new
claim 22 depending from claim 1 and including that subject matter.
Response to Final Office Action of Oct. 16, 2018, 2, 4. In the Advisory
Action, the Examiner indicated entry of the claim amendments. Advisory
Action 1. The Examiner’s further statements in the Advisory Action seem to
indicate that claim 22 is rejected as obvious based on Rembold, Chinniah,
and Cali, for the reasons set forth in the Final Office Action’s rejection of
independent claim 1. Id. 2. Appellant’s understanding is the same as ours.
See Appeal Br. 12
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II. Claims 8–10 under 35 U.S.C. § 103 as unpatentable over
Rembold, Chinniah, Cali, and Yang (US 2009/0308584 A1,
published Dec. 17, 2009);
III. Claim 14 under 35 U.S.C. § 103 as unpatentable over Rembold,
Chinniah, Cali, and Tennessen et al. (US 2011/0206969 A1,
published Aug. 25, 2011) (“Tennessen”);
IV. Claims 1 and 15 under 35 U.S.C. § 103 as unpatentable over
Reis et al. (US 7,592,695 B2, issued Sept. 22, 2009) (“Reis”)
and Cali; and
V. Claim 22 under 35 U.S.C. § 112(b) as indefinite.

OPINION
Rejection I–Obviousness rejection of claims 1–7, 11–13, 16–17,
and 22 based on Rembold, Chinniah, and Cali
The Examiner finds Rembold discloses a finned heat sink and
“pedestal,” which “can be coupled to a solid state light source.” Final
Action 2. The Examiner finds Rembold discloses that one of these two
components is extruded and one is cast, based on Rembold’s statement that
“body 34 and 35 pedestal 36 of heat sink 32 may be made of various grades
of aluminum such as cast aluminum or extruded aluminum.” Id. at 2–3
(citing Rembold 2:33–36). The Examiner also finds that “overmolding is a
known process . . . and inherently form[s] an interface layer,” because Cali
teaches, according to the Examiner, that “the interface between bodies that
are extruded or cast from a metal, such as aluminum, can be pressed fit,
keyed, slotted, overmolded, glued, threaded, crimped, etc.” Id. at 3 (citing
Cali col. 7, ll. 16–22).
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Appellant argues that the Examiner’s rejection is in error because Cali
is non-analogous art, as Cali “has nothing to do with the problem of heat
transfer.” Appeal Br. 4. Appellant asserts that “there is no reasonable
dispute that Cali’s overrunning pulley for torque protection of rotating
power transfer systems is not in the same field of endeavor as heat sinks.”
Appeal Br. 11. Appellant further argues:
The problem being addressed in the present application is
lowering thermal resistance or impedance between closely
coupled portions of heat sinks. Applicant respectfully submits
that Cali is not reasonably pertinent because it neither (1)
addresses the same problem nor (2) serves the same purpose as
the device of claim 1.
Appeal Br. 11; see also id. 11–12.
The Examiner, in response, determines that “Cali is directed to the
particular problem of assembling two pieces of material together, just as the
claimed invention is.” Answer 4.
We do not agree with the Examiner. Cali discloses that its
embodiments “generally relate to torque load transfer, limitation,
decoupling, and vibration dampening devices.” Cali col. 1, ll. 16–18. The
background of Cali describes prior art problems with torque-transfer pulleys,
such as “no decoupling of the rotor’s rotational inertia from the pulsations of
an internal combustion engine,” and having “no springy engagement in the
torque direction, and therefore are not frequency tunable to decouple the
rotor’s inertia from the engine’s pulsations.” Id. at col. 1, ll. 49–64. In
addition, the sole section of Cali the Examiner cites discloses the following:
All embodiments described below can include bodies that
are steel, sintered metal, metal injection molded (MIM), molded
out of thermoplastics or thermosets, or are extruded or cast from
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a metal, such as aluminum or iron. The interface of parts to these
bodies can be press fit, keyed, slotted, overmolded, glued,
threaded, crimped, ring-locked, or other suitable methods.
Cali col. 7, ll. 16–22. Not only is this sole section set forth in the middle of
the “DETAILED DESCRIPTION” section, but we take issue with the
Examiner’s characterization of the section. Specifically, we find that the
paragraph merely indicates that there are a wide variety of metals and non-
metallic materials, formed and connected in a variety of techniques which
may be used in Cali, and are persuaded that it is a hindsight
mischaracterization to say that Cali itself concerns the problem of
“assembling two pieces of material together,” as asserted by the Examiner.
“A reference is reasonably pertinent [to the problem faced by the
inventor] if, even though it may be in a different field from that of the
inventor’s endeavor, it is one which, because 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).
Based on what Cali overwhelmingly identifies as the subject matter with
which it is concerned—i.e., torque pulleys made from any of a wide variety
of materials and techniques—we are persuaded that the ordinary artisan
would not have looked to Cali when addressing problems that arise with
aluminum manufacturing techniques for solid-state light device heat sinks.
Because Cali is non-analogous art, the Examiner errs by relying on
Cali in claim 1’s obviousness rejection. Accordingly, we do not sustain the
Examiner’s rejection of independent claim 1, and of claims 2–7, 11–13, 16,
17, and 22 that depend from claim 1, based on Rembold, Chinniah, and Cali.
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Rejections II and III—Obviousness rejections of claims 8–10 and 14
based on Rembold, Chinniah, Cali, and either Yang or Tennessen
The Examiner does not establish on the record that either Tennessen
or Yang discloses the subject matter that Cali is relied on for disclosing with
respect to independent claim 1’s rejection. Consequently, we do not sustain
the Examiner’s obviousness rejections of claims 8–10 and 14 that depend
from claim 1.
Rejection IV—Obviousness rejection of claims 1 and 15 based on Reis
and Cali
In rejecting claim 1 as obvious based on Reis and Cali, the Examiner
relies on the same reasoning discussed above—i.e., that “overmolding is a
known process,” and “inherently form[s] an interface layer,” based on the
same section of Cali. Final Action 3.
Thus, we agree with Appellant that Cali is non-analogous art for
reasons similar to those discussed above. See Appeal Br. 14. Accordingly,
we do not sustain the Examiner’s rejection of independent claim 1, and of
claim 15 that depends from claim 1, as obvious based on Reis and Cali.
Rejection V—Indefiniteness rejection of claim 22
Claim 22, which depends from independent claim 1, recites “wherein
said interface layer (16) is defined by the molten and re-solidified portion of
the extruded component (12) in contact with the molten second aluminum
material of the overmolded cast component (14).” According to the
Examiner, claim 22 is indefinite because “[t]here is insufficient antecedent
basis” for the molten and re-solidified portion of the extruded component,
and the molten second aluminum material of the overmolded cast
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component. Answer 3. Appellant argues that the claim is definite and
understood. Reply Br. 2–3.
We acknowledge that it is customary to introduce a claim term with
the article “a” or “an” rather than “the,” for example. However, not every
introduction of a claim term with “the” is indefinite. As the Manual of
Patent Examining Procedure explains, “the failure to provide explicit
antecedent basis for terms does not always render a claim indefinite. If the
scope of a claim would be reasonably ascertainable by those skilled in the
art, then the claim is not indefinite.” MPEP § 2173.05(e) (citation omitted).
In this case, we agree with Appellant that the claim recitations under
discussion are not indefinite, as one would understand that the interface
layer is formed by a molten and re-solidified portion of the extruded
component, in contact with a molten second aluminum material of the
overmolded cast component. Further, we agree with Appellant that the
claim does not require that the second aluminum material of the overmolded
cast component remain molten. Reply Br. 3.
Consequently, we do not sustain the Examiner’s indefiniteness
rejection of claim 22.
CONCLUSION
We REVERSE the Examiner’s §§ 103 and 112 rejections of
claims 1–17 and 22.
In summary:
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Claim
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–7, 11–13,
16, 17, 22
103 Rembold,
Chinniah, Cali
1–7, 11–13,
16, 17, 22
8–10 103 Rembold,
Chinniah, Cali,
Yang
8–10
14 103 Rembold,
Chinniah, Cali,
Tennessen
14
1, 15 103 Reis, Cali 1, 15
22 112(b) Indefiniteness 22
Overall
Outcome
1–17, 22
REVERSED