Toby James. Morris et al.

Patent Trials and Appeals Board

Mar 3, 2020

15001093 - (D) (P.T.A.B. Mar. 3, 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.
15/001,093 01/19/2016 Toby James Morris 358835-US-NP 4268
69316 7590 03/03/2020
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
TAYLOR, BARRY W
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOBY JAMES MORRIS and MARC HARPER
Appeal 2018-008030
Application 15/001,093
Technology Center 2600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
NABEEL U. KHAN, Administrative Patent Judges.
MacDONALD, 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 15, 21, and 23–27. Claims 4, 7, 8, 12–
14, 16, 17, and 22 have been cancelled, and claims 1–3, 5, 6, 9–11, and 18–
20 have been withdrawn from consideration. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Microsoft
Technology Licensing, LLC. Appeal Br. 2.
Appeal 2018-008030
Application 15/001,093
2
CLAIMED SUBJECT MATTER
Claim 15 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
15. A method of manufacturing a wireless communications
device comprising:
[A.] connecting a first housing to a first network communications
assembly, the first network communications assembly
configured to communicatively connect to a wireless
network external to the wireless communications device
according to a first network protocol and including a first
modem and at least one antenna, the first housing
including a first thermal distribution plate for dissipating
heat produced by at least the first modem of the first
housing;
[B.] connecting a second housing to a second network
communications assembly, the second network
communications assembly configured to communicatively
connect to another network external to the wireless
communications device according to a second network
protocol, the second network protocol being different from
the first network protocol, the second network
communications assembly including a second modem and
at least one other antenna, the second housing including a
second thermal distribution plate for dissipating heat
produced by at least the second modem of the second
housing; and
[C.] connecting the first housing to the second housing via a
separation interface the first housing and second housing
being moveable with respect to each other between a
closed position and one or more open positions, the
separation interface is implemented as a heat sink
configured to dissipate heat produced by at least the first
modem of the first housing and the second modem of the
second housing.
Appeal 2018-008030
Application 15/001,093
3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Tsunoda US 2009/0207569 A1 Aug. 20, 2009
Aya US 7,916,463 B2 Mar. 29, 2011
Chang US 2011/0128705 A1 June 2, 2011
Pantelidou US 2014/0192716 A1 July 10, 2014
REJECTION
The Examiner rejects claims 15, 21, and 23–27 under 35 U.S.C. § 103
as being unpatentable over Aya, in view of Pantelidou, in view of Tsunoda,
and further in view of Chang. Final Act. 2–13.
We select claim 15 as the representative claim for this rejection. As to
this rejection, our decision as to the § 103 rejection of claim 15 is
determinative as to the § 103 rejection of all the claims. Therefore, except
for our ultimate decision, we do not discuss further herein the § 103
rejection of claims 21 and 23–27.
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss
are determinative as to the rejection on appeal. Therefore, Appellant’s other
contentions are not discussed in detail herein.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 15 under 35 U.S.C. § 103.
The Office correctly admits that Aya and Pantelidou do
not disclose “a first housing including thermal distribution plate
for dissipating heat from the first housing and a second housing
including thermal distribution plate for dissipating heat from the
second housing and a separation interface that connects the first
and second housings and functions as the heat sink.” However,
Appeal 2018-008030
Application 15/001,093
4
the Office asserts that Tsunoda and Chang disclose “the first
housing including a first thermal distribution plate for dissipating
heat produced by at least the first modem of the first housing,”
“the second housing including a second thermal distribution
plate for dissipating heat produced by at least the second modem
of the second housing,” and “the separation interface
implemented as a heat sink configured to dissipate heat produced
by at least the first modem of the first housing and the second
modem of the second housing,” as recited in claim 15. For the
reasons discussed below, the Appellant respectfully disagrees.
Tsunoda discloses a heat diffusing sheet disposed in an
operation unit 10 (in a first housing) and heat diffusing sheet
disposed in a display unit (in a second housing) of a laptop device
where a hinge connects the operation unit and the display unit.
Heat produced by a heat generating component (e.g., a CPU) in
the operation unit is dissipated from the heat generating
component by the heat diffusing sheet of the operation unit to the
heat diffusing sheet of the display unit. Thus, the device
generally dissipates the heat from the base, through the hinge,
and out the display. However, Tsunoda does not disclose or
suggest thermal distribution plates that are disposed in both a first
housing and a second housing where both the first housing and
the second housing include heat producing elements, as generally
recited in claim 15. Rather, Tsunoda discloses only that the
operation unit (e.g., base) includes heat producing elements.
Accordingly, Tsunoda cannot be relied upon for teaching the
claim features, “the first network communications assembly ...
including a first modem and at least one antenna, the first housing
including a thermal distribution plate for dissipating heat
produced by at least the first modem of the first housing” and
“the second network communications assembly including a
second modem and at least one other antenna, the second housing
including a thermal distribution plate for dissipating heat
produced by at least the second modem of the second housing.”
The claim further recites that the heat sink (e.g., separation
interface) is “configured to dissipate heat produced by at least the
first modem of the first housing and the second modem of the
second housing.” Because Tsunoda’s hinge element dissipates
heat produced only in the base portion, the hinge element
Appeal 2018-008030
Application 15/001,093
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cannot be relied upon for teaching a heat sink “configured to
dissipate heat produced by at least the first modem of the first
housing and the second modem of the second housing,” as
claimed.
Accordingly, claim 15 is patentable at least because
Tsunoda fails to disclose or suggest the features of claim 15 and
specifically, “the first housing including a thermal distribution
plate for dissipating heat produce by at least the first modem of
the first housing,” “the second housing including a thermal
distribution plate for dissipating heat produced by at least the
second modem of the second housing,” and “the separation
interface implemented as a heat sink configured to dissipate
heat produced by at least the first modem of the first housing
and the second modem of the second housing.”
On page 6 of the Final Office Action, the Office correctly
notes that Aya, Pantelidou, and Tsunoda fail to disclose or
suggest “the thermal distribution plate is used for dissipating heat
form modems.” The Office cites to Chang for purportedly
disclosing or suggesting a heat sink for dissipating heat from a
wireless modem. However, the Office has ignored the features
explicitly recited in the claim that the modems are positioned in
the different housings. Thus, the Office has still not cited a
reference or a combination of references that include cellular
modems, any associated communication elements, and heat
thermal distribution plates being separated in two different
housings. Accordingly claim 15 is patentable over the
combination of Aya, Pantelidou, Tsunoda, and Chang.
Appeal Br. 8–10 (citations omitted; emphasis added); see also Reply Br. 8–
9.
We are persuaded the Examiner erred. Claim 15 recites, inter alia,
that “the separation interface is implemented as a heat sink configured to
dissipate heat produced by at least . . . the first housing and . . . the second
housing.” Appeal Br. 15, emphasis added. Tsunoda discloses a foldable
cellular phone 1 including an operation unit 10 and a display unit 20. See
Tsunoda ¶ 24, Fig. 1. The operation unit 20 includes a housing 2, a heat
Appeal 2018-008030
Application 15/001,093
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diffusing sheet 14-1, a heat dissipating part 15, and a heat generating
component 16. See id. ¶¶ 26, 27, Figs. 2A, 2B. The display unit 20 includes
a housing 3, a heat diffusing sheet 14-2, and a heat receiving part 23. See id.
¶ 28, Figs. 2A, 2B. When the cellular phone 1 is in an open state, the heat
dissipating part 15 and the heat receiving part 23 are brought into contact
with each other. See id. ¶ 35, Fig. 2B. Further, heat from the heat
generating component 16 in the operation unit 10 is conducted to the heat
diffusing sheet 14-1. See id. ¶ 36. Heat from the heat diffusing sheet 14-1 is
subsequently conducted to the heat dissipating part 15, from which the heat
is further conducted to the heat receiving part 23 of the display unit 20. See
id. Then, the heat is further conducted from the heat receiving part 23 to the
heat diffusing sheet 14-2. See id. ¶ 37. The heat conducted from the heat
receiving part 23 to the heat diffusing sheet14-2 is then diffused in the
display unit 20. See id.
Thus, rather than disclosing a separation interface implemented as a
heat sink configured to dissipate heat produced by a first housing and a
second housing, we agree with Appellant that Tsunoda discloses that the
combination of the heat dissipating part and the heat receiving part only
dissipates heat from the housing in the operation unit to the housing in the
display unit and fails to also dissipate heat from the housing in the display
unit. The Examiner has not adequately addressed this distinction between
claim 15 and Tsunoda, and has not shown that any of the other cited
references cures Tsunoda’s deficiency. Accordingly, and on this record, we
are persuaded that the Examiner erred in rejecting claim 15, and we do not
sustain the rejection.

Appeal 2018-008030
Application 15/001,093
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CONCLUSION
The Appellant has demonstrated the Examiner erred in rejecting
claims 15, 21, and 23–27 as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejection of claims 15, 21, and 23–27 as being
unpatentable under 35 U.S.C. § 103 is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
15, 21, 23–
27
103 Aya, Pantelidou,
Tsunoda, Chang
15, 21, 23–
27

REVERSED