Ex Parte Chang et al

Patent Trial and Appeal Board

Jul 7, 2016

12005784 (P.T.A.B. Jul. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/005,784 12/28/2007
47795 7590 07111/2016
TROP, PRUNER & HU, P.C.
c/o CPA Global
900 2nd A venue South, Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Je-Young Chang
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ITL.1675US (P26285) 5609
EXAMINER
ROJOHN III, CLAIRE E
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
07/11/2016 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):
tphpto@tphm.com
Inteldocs _ docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JE-YOUNG CHANG, CHOONG-UN KIM,
HIMANSHU POKHARNA, and RAJIV K. MONGIA1
Appeal2014-004876
Application 12/005,784
Technology Center 3700
Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
AMANDA F. WIEKER, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
le-Young Chang et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's final rejection of claims 9-11, 13, 14, 16, 17, 24, and
26-30.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the Real Party in Interest is Intel Corporation.
Br. 3.
2 Claims 3, 12, 15, 18, and 25 have been cancelled and claims 1, 2, 4--8, and
19-23 have been withdrawn. Id. at 5.
Appeal2014-004876
Application 12/005,784
CLAIMED SUBJECT MATTER
The invention concerns an aluminum heat exchanger. Spec., Abstract.
Claim 9 is illustrative of the subject matter on appeal, and recites:
9. An apparatus comprising:
an aluminum heat exchanger having an aluminum
substrate with an oxide layer, a first treated layer formed directly
on the oxide layer, and a second treated layer formed on the first
treated layer, the first treated layer corresponding to a hydrated
aluminum oxide layer and located between the oxide layer and
the second treated layer, the second treated layer corresponding
to a conversion layer and a monolayer of molecules, the
aluminum heat exchanger including a working fluid to contact at
least the conversion layer and the monolayer, the working fluid
corresponding to purified and neutralized water, wherein the
aluminum heat exchanger is coupled to a semiconductor device
to remove heat therefrom during operation of the semiconductor
device.
Br. 14, Claims App. (emphasis added).
REJECTIONS
The claims stand rejected as follows:
I. Claims 16, 26, and 27 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. 3
II. Claims 9, 16, 17, 24, and 27-30 under 35 U.S.C. § 103(a) as
unpatentable over Negita (US 4,368,776, iss. Jan. 18, 1983) and
Bibber (Bibber, John W., A Chrome-Free, Aluminum Oxide
3 Although the heading of this rejection includes claim 25, that claim has
been cancelled. Final Act. 2; see also Adv. Act. 2 (mailed Aug. 14, 2012).
2
Appeal2014-004876
Application 12/005,784
Conversion Coating Process, 21 FINISHING LINE 1, 1-5
(2005)). 4
III. Claims 10, 11, and 13 under 35 U.S.C. § 103(a) as unpatentable
over Negita, Bibber, and Chang (US 2006/0131003 Al, pub.
June 22, 2006).
IV. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Negita,
Bibber, and Pokhama (US 2005/0141195 Al, pub. June 30,
2005).
V. Claim 26 under 35 U.S.C. § 103(a) as unpatentable over Negita,
Bibber, and Cody (US 2006/0219598 Al, pub. Oct. 5, 2006). 5
ANALYSIS
Written Description- Claims 16, 26, and 27
Regarding claims 16 and 27, the Examiner finds that "the newly
added negative limitation 'with no other layer located between the oxide
layer and the first treated layer' does not appear to have support in the
disclosure as originally filed." Final Act. 2.
Appellants contend that Figure 1 depicts oxide layer 110 contacting
hydrated aluminum oxide layer 112 ("the first treated layer") directly, with
no other later there between. Br. 13.
4 Although the heading of this rejection omits claims 27-30, the limitations
of those claims are addressed in the body of the rejection. Final Act. 3-5.
5 Although the heading of this rejection includes claim 25, that claim has
been cancelled. Id. at 7.
3
Appeal2014-004876
Application 12/005,784
We find that a person of ordinary skill in the art would recognize that
Appellants invented what is recited in claims 16 and 27. See Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane).
Namely, the Specification and Figure 1 disclose that the aluminum device is
placed in hot or boiling water, which causes hydrated oxide layer 112 ("the
first treated layer") to grow over oxide layer 110. See Spec. i-f 10 ("This
process is for growing a thick, hydrated oxide layer (AhQ3(xH20)) over the
aluminum surface."). Because the hydrated oxide layer is "grow[n] ... over
the aluminum surface," one skilled in the art would understand that no
intervening layer is present. Accordingly, we reverse the Examiner's
rejection of claims 16 and 2 7.
Regarding claim 26, the Examiner finds that "the newly added
limitation[] ' [the mono layer] is less than 5 nm thick' appears to have no
support in the disclosure as originally filed." Final Act. 2.
Appellants contend that paragraph 11 of the Specification discloses
that the layer may be "approximately 3 nm." Br. 13.
Although paragraph 11 discloses that "organic molecule layer 114
may be approximately 3nm," Appellants have not identified any portion of
the Specification that provides written description support for the remainder
of the claimed range. The Specification lacks any other guidance or
benchmark with respect to the thickness of the mono layer. Accordingly, we
affirm the Examiner's rejection of claim 26.
4
Appeal2014-004876
Application 12/005,784
Obviousness- Claims 9-11, 13, 14, 16, 17, 24, and 26--30
Claim 9
The Examiner finds that Negita discloses a heat exchanger having
aluminum substrate 1, first treated layer 13, second treated layer 14, and a
working fluid. Final Act. 3. The Examiner finds that the "working fluid
(water) [contacts] at least the conversion and monolayer." Id. The
Examiner finds that Negita does not disclose that the first treated layer is a
hydrated aluminum oxide layer or that the working fluid contacts both the
conversion layer and monolayer. Id. at 3--4.
The Examiner finds that Bibber discloses "us[ing] a first hydrated
aluminum oxide layer as a building block for multiple protective layers of an
aluminum surface ... , and further that it is old and well known in the art
that when forming layers this way it may be controlled such that the layers
may be coextensive." Id. at 4 (citing Bibber i-fi-16, 8, 10, Abstract). The
Examiner concludes that:
Id.
it would have been obvious to a person having ordinary skill in
the art, at the time the invention was made to modify the
aluminum heat exchanger of [N egita] with the hydrated
aluminum oxide layer of Bibber in order to have a structural base
for forming further protective coatings on the surface of
aluminum, and further obvious to control it such that a balance
is reached through routine experimentation what an optimum
coating would be to balance thermal and corrosive properties, as
well as cost of manufacturing.
5
Appeal2014-004876
Application 12/005,784
Appellants contend, inter alia, that "there is no combination ofNegita
and Bibber that includes [a] 'second treated layer [conversion layer and
mono layer] formed on the first treated layer [hydrated aluminum oxide]."'
Br. 10 (second and third alteration in original) (emphasis omitted).
We agree and conclude that the Examiner fails to establish a prima
facie case of obviousness. The Examiner's rejection does not include any
findings as to which prior art reference, Negita or Bibber, teaches the
claimed conversion layer and mono layer of the second treated layer.
Although the Examiner finds that Negita discloses a second treated layer,
and that the "working fluid (water) [contacts] at least the conversion and
monolayer," the Examiner's final rejection does not find explicitly that
Negita's second treated layer includes the claimed conversion layer and
mono layer. See Final Act. 3--4. The Examiner's Advisory Action states that
Negita's "second treated layer (14) still corresponds to the conversion layer
and monolayer," but the Examiner provides no factual findings to support
this statement. Adv. Act. 2. Indeed, we find no such teaching in Negita,
which specifies that layer 14 is a "water-proof resin film," such as a
thermoplastic or thermosetting resin. See Negita, 2:20-25, 3: 17-33.
Furthermore, the Examiner does not find that Bibber teaches a treated
layer comprising a conversion layer and a monolayer. Final Act. 4. Rather,
the Examiner appears to rely on Bibber to provide a teaching to modify
Negita's first treated layer 13, and for the suggestion that layers may be
coextensive. Id. Although Bibber discloses a hydrated aluminum oxide
layer upon which a manganese-oxide/aluminum oxide coating is formed,
6
Appeal2014-004876
Application 12/005,784
(see Bibber i-fi-1 6, 10), we find no disclosure in Bibber of a conversion layer
and a monolayer, as claimed.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 9 because the Examiner has not established that the prior
art renders obvious a "second treated layer corresponding to a conversion
layer and a mono layer of molecules" as claimed.
Claims 10, 11, 13, 14, 16, 17, 24, and 26--30
The Examiner does not rely on Chang, Pokhama, or Cody to remedy
the deficiency discussed above with respect to claim 9. Therefore, because
the Examiner's rejections of dependent claims 10, 11, 13, 14, 16, 17, 24, and
26-30 rest on the Examiner's rejection of claim 9 over Negita and Bibber,
we also do not sustain the rejections of those claims.
DECISION
The Examiner's rejection of claims 16 and 27 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
is REVERSED;
the Examiner's rejection of claim 26 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
AFFIRMED;
the Examiner's rejection of claims 9, 16, 17, 24, and 27-30 under 35
U.S.C. § 103(a) as unpatentable over Negita and Bibber is REVERSED;
the Examiner's rejection of claims 10, 11, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Negita, Bibber, and Chang is REVERSED;
7
Appeal2014-004876
Application 12/005,784
the Examiner's rejection of claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Negita, Bibber, and Pokhama is REVERSED; and
the Examiner's rejection of claim 26 under 35 U.S.C. § 103(a) as
unpatentable over Negita, Bibber, and Cody is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
8