Ex Parte 8245764 et al

Patent Trial and Appeal BoardApr 29, 2016

95002386 (P.T.A.B. Apr. 29, 2016)

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. 95/002,386 09/15/2012 8245764 COOL-1.012 7254 22852 7590 04/29/2016 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER KAUFMAN, JOSEPH A ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 04/29/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ CoolIT SYSTEMS, INC., Third Party Requester, Respondent, v. ASETEK A/S, Patent Owner, Appellant. ____________________ Appeal 2015-007934 Reexamination Control 95/002,386 Patent US 8,245,764 B21 Technology Center 3900 ____________________ Before STEVEN D.A. McCARTHY, BRETT C. MARTIN, JON M. JURGOVAN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL 1 Issued to André Sloth Eriksen on August 21, 2012 (hereinafter the ’764 patent). Appeal 2015-007934 Reexamination Control 95/002,386 Patent US 8,245,764 B2 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(b) from a rejection of claims 1–30. We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a). Oral arguments were heard in this matter on April 13, 2016. We are informed that the ’764 patent is currently involved in the following litigations: 1) Asetek Holdings, Inc. v. CoolIT Systems, Inc., Civil Action No. 3:12-CV-04498-EMC, and 2) Asetek Holdings, Inc. v. CMI USA, Inc., Civil Action No. 3:13-CV-00457-JST. Both the litigations are pending in the U.S. District Court for the Northern District of California. We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to “a cooling system for a central processing unit (CPU) or other processing unit of a computer system.” Spec. col. 1, ll. 11–13. Claims 1, 10, and 15 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A cooling system for a heat-generating component, comprising: a double-sided chassis adapted to mount a pump configured to circulate a cooling liquid, the pump comprising a stator and an impeller, the impeller being positioned on the underside of the chassis and the stator being positioned on the upper side of the chassis and isolated from the cooling liquid; a reservoir adapted to pass the cooling liquid therethrough, the reservoir including: a pump chamber including the impeller and formed below the chassis, the pump chamber being defined by at least an impeller cover having one or more passages for the cooling liquid to pass through; Appeal 2015-007934 Reexamination Control 95/002,386 Patent US 8,245,764 B2 3 a thermal exchange chamber formed below the pump chamber and vertically spaced apart from the pump chamber, the pump chamber and the thermal exchange chamber being separate chambers that are fluidly coupled together by the one or more passages; and a heat-exchanging interface, the heat-exchanging interface forming a boundary wall of the thermal exchange chamber, and configured to be placed in thermal contact with a surface of the heat-generating component; and a heat radiator fluidly coupled to the reservoir and configured to dissipate heat from the cooling liquid. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Koga US 7,544,049 Jun. 9, 2009 REJECTIONS Claims 1–19, 21–23, 25–27, 29, and 30 stand rejected under 35 U.S.C § 102(b) as being anticipated by Koga. RAN 3–4. Claims 20, 24, and 28 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Koga. RAN 5. ISSUE The issues in this appeal can be narrowed to one dispositive issue, namely whether or not Koga teaches a “thermal exchange chamber” as claimed. All of the claims rejected over Koga require such a thermal exchange chamber and thus resolution of this issue will affect all pending rejections. Appeal 2015-007934 Reexamination Control 95/002,386 Patent US 8,245,764 B2 4 FINDINGS OF FACT Koga describes a centrifugal pump 1 for cooling an electronic component such as an integrated circuit chip configured as a central processing unit 2. Col. 4, ll. 3–7. Centrifugal pump 1 is enclosed in a pump casing 15 that rests on a top surface of chip 2. Pump casing 15 defines a pump room 15A enclosing an impeller 11. When energized, a ring magnet 13 and a stator 14 induce impeller 11 to rotate in a horizontal plane about a vertical axis. When rotating, impeller 11 draws liquid coolant 41 into pump room 15A through a sucking channel 19 and discharges the coolant from the pump room through a tangential discharging channel 20. Col. 4, ll. 27–37, 51–58 and 61–67; col. 7, ll. 39–42; col. 8, ll. 4–11; see also Figs. 3 and 5. Referring to Figures 3 and 5, Koga describes the lower surface of pump room 15A as follows: On radially outer wall surface 15C of the pump room 15A, a large number of dimples 21 are formed. A recess (recessed area) 15E defines a radially inner wall surface on a bottom of the pump room 15A that faces toward impeller 11, and has a large number of protrusions 24 projected from the radially outer wall surface and toward impeller 11. Recess 15E, slope 27, and radially outer wall 15C together define an inner wall face 50 of casing 15. Col. 4, ll. 43–51. The portion of Koga’s pump casing 15 contacting the top surface of chip 2 defines a heat-receiving plane 15B. Heat-receiving plane 15B collects heat evolved by chip 2. Col. 4, ll. 38–43. Koga states that “[s]ucking channel 19 is disposed between heat-receiving plane 15B and inner wall face 50.” Col. 4, ll. 58–60; see also Fig. 3. Koga teaches that “the heat generated from component 2 travels to casing 15 and is transferred to protrusions 24 projected from recess 15E [on the inner wall face 50 Appeal 2015-007934 Reexamination Control 95/002,386 Patent US 8,245,764 B2 5 defining the lower boundary of the pump room 15A], so that the coolant 41 collects the heat when [the coolant] hits against protrusions 24.” Col. 8, ll. 11–15. In other words, “the heat generated from component 2, i.e. the heat stored in protrusions 24 and casing 15, is collected by coolant 41, and discharged through discharging channel 20 together with coolant 41 by spinning blades 12 [of impeller 11].” Col. 8, ll. 32–36. Koga also teaches that: The shape of heat-receiving plane 15B and the shape of an upper surface of component 2 complement each other three- dimensionally, so that sucking channel 19 does not extend over component 2. This structure allows heat-receiving plane 15B and the upper surface of component 2 to solidly contact with each other, so that heat can be transferred efficiently. Col. 8, ll. 47– 53. Koga does not appear to describe any significant heat exchange between chip 2 and coolant 41 flowing through the sucking channel 19. See Tilton Dec. ¶ 12. ANALYSIS According to the Examiner, Koga teaches the recited “thermal exchange chamber” receiving coolant via “sucking channel” 19. RAN 6. The Patent Owner argues that, “even if sucking channel 19 is considered a ‘chamber,’ [the sucking channel] still cannot be equated to a ‘thermal exchange chamber’ because Koga does not disclose or suggest that sucking chamber 19 is configured or intended to perform any heat transfer function.” App. Br. 10 (italics suppressed). The parties’ main disagreement lies with whether and to what extent thermal exchange must occur in channel 19 in order to qualify as the claimed Appeal 2015-007934 Reexamination Control 95/002,386 Patent US 8,245,764 B2 6 “thermal exchange chamber.” The Requester argues that the broadest reasonable interpretation would allow for channel 19 to meet this limitation because it allegedly “is clearly configured to perform thermal exchange” due to the fact that the walls surrounding the chamber are made of a “highly conductive casing.” Resp. Br. 5. We do not disagree that some thermal exchange may occur in channel 19, but we disagree with the Requester’s characterization that the channel is configured to perform thermal exchange. As the Patent Owner points out, “the USPTO, in applying the broadest reasonable interpretation of claim elements, is bounded by what would be reasonable from the perspective of one of ordinary skill in the art.” App. Br. 12 (citing In re Buszard, 504 F.3d 1365, 1365–66 (Fed. Cir. 2007)). Both parties appear to agree that, in order to be reasonably considered a thermal exchange chamber, channel 19 must be configured to perform thermal exchange. See Resp. Br. 5, App. Br. 12. We agree with the Patent Owner that the mere fact of thermal exchange occurring does not cause any chamber or channel where some small amount of thermal exchange occurs to be considered configured to perform thermal exchange. App. Br. 12. Koga teaches a combined pump and heat exchange chamber 15. Chamber 15 is clearly designed to be a heat exchange chamber having specific features, namely protrusions 24, to enhance the heat exchange from component 2 to chamber 15. Channel 19, however, is merely a conduit to supply cooling liquid to chamber 15 and is not specifically described as being intended to perform any cooling function. As stated above, we do not deny that some heat exchange may occur in channel 19, but it is clear from Appeal 2015-007934 Reexamination Control 95/002,386 Patent US 8,245,764 B2 7 Koga that the purpose of channel 19 is to direct fluid into chamber 15 where the heat exchange is specifically designed to occur. Further, the Patent Owner has provided unrebutted evidence in its favor in the form of a Declaration of Donald Tilton stating that “the sucking channel cannot be reasonably said to function as a heat exchanging chamber.” Tilton Dec. ¶ 12. Additionally, we note that the Examiner does not address the issue of thermal exchange in the Remarks portion of the RAN and merely explains that channel 19 is a chamber without explaining how channel 19 is configured so as to perform thermal exchange. See, e.g., RAN 6–7. We conclude that the mere fact of thermal exchange does not make a chamber a heat exchange chamber and that the evidence in this case supports the conclusion that in order for one of ordinary skill in the art to reasonably conclude that a chamber is a “thermal exchange chamber,” the chamber must be configured to perform heat exchange, such as in Koga’s chamber 15. Because all of the claim rejections rely on the Examiner’s faulty interpretation and application of “thermal exchange chamber,” we do not sustain any of the rejections of claims 1–30 over Koga. The Patent Owner further raises the issue of the priority date of the present application. This issue is moot in light of our finding that Koga does not anticipate claims 1–19, 21–23, 25–27, 29, and 30; and, as such, does not include adequate teachings to serve as a primary reference in rejecting claims 20, 24, and 28. For this reason, we do not reach the issue of priority in this appeal. Appeal 2015-007934 Reexamination Control 95/002,386 Patent US 8,245,764 B2 8 DECISION The Examiner’s rejections of claims 1-30 are reversed. More specifically, we reverse the Examiner’s decision rejecting claims 1–19, 21– 23, 25–27, 29, and 30 under 35 U.S.C § 102(b) as being anticipated by Koga; and the Examiner’s decision rejecting claims 20, 24, and 28 under 35 U.S.C § 103(a) as being unpatentable over Koga. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. REVERSED Ssc