Ex Parte Johnson

Patent Trials and Appeals Board

Mar 25, 2019

14086835 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/086,835 11/21/2013
23589 7590 03/27/2019
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
FIRST NAMED INVENTOR
Matthew Johnson
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.
45410 6298
EXAMINER
ALVARE,PAUL
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
uspatents@hoveywilliams.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW JOHNSON
Appeal2018-001267 1
Application 14/086,835
Technology Center 3700
Before JEREMY M. PLENZLER, NATHAN A. ENGELS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-6, 8-12, and 14--20. We have
jurisdiction under § 6(b ).
We affirm.
1 We reference herein the Specification filed November 21, 2013 ("Spec.")
and Appeal Brief filed July 26, 2017 ("Br."), as well as the Examiner's
Answer mailed September 21, 2017 ("Ans.") and Non-Final Office Action
mailed February 27, 2017 ("Non-Final Act.").
2 Appellant is the Applicant, Honeywell Federal Manufacturing &
Technologies, LLC, which, according to the Appeal Brief, is the real party in
interest. Br. 5.
Appeal2018-001267
Application 14/086,835
CLAIMED SUBJECT MATTER
Claims 1, 12, and 20 are the independent claims on appeal.
Independent claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An assembly for dissipating heat in an electronic circuit,
the assembly comprising:
a heat spreader connected to the circuit for drawing heat
away from the circuit;
a substrate connected to the heat spreader on a first side of
the substrate;
a heat slug connected to the heat spreader on a first side of
the heat slug and adjacent to the substrate; and
a backplate connected to the substrate on a second side of
the substrate opposite its first side and connected to the heat slug
on a second side of the heat slug opposite its first side, the
backplate having a substantially uniform material composition,
the heat spreader, the substrate, and the backplate forming a
layered stack of materials with a thermally conductive path for
cooling the circuit, the heat spreader having a coefficient of
thermal expansion ( CTE) matching a CTE of the circuit and the
substrate having a CTE matching a CTE of the backplate.
Br., Claims App.
REFERENCES
The Examiner relies on the following references in rejecting the
claims on appeal:
McMahon et al. us 5,808,875
Riley us 5,856,911
Malladi et al. us 5,972,736
Polese et al. us 5,972,737
Bates et al. US 6,635,958 B2
Sept. 15, 1998
Jan. 5, 1999
Oct. 26, 1999
Oct. 26, 1999
Oct. 21, 2003
2
("McMahon")
("Malladi")
("Polese")
("Bates")
Appeal2018-001267
Application 14/086,835
Zhao et al. US 6,861,750 B2 Mar. 1, 2005 ("Zhao")
Alhayek et al. US 2007 /0090522 Al Apr. 26, 2007 ("Alhayek")
Kwank et al. US 2010/0103623 Al Apr. 29, 2010 ("K wank")
Leung et al. US 7,741,158 B2 June 22, 2010 ("Leung")
REJECTIONS
The Examiner rejects the claims on appeal as follows:
I. claims 1, 12, 20 under 35 U.S.C. § 112(b) as indefinite; 3
II. claims 1-6, 8-12, and 14--16 under 35 U.S.C. § 103 as unpatentable
over Kwank and Bates;
III. claims 9 and 11 under 35 U.S.C. § 103 as unpatentable over Kwank,
Bates, and Riley;
IV. claim 10 under 35 U.S.C. § 103 as unpatentable over Kwank, Bates,
Riley, and Zhao;
V. claims 17 and 18 under 35 U.S.C. § 103 as unpatentable over Kwank,
Bates, and Malladi;
VI. claim 19 under 35 U.S.C. § 103 as unpatentable over Kwank, Bates,
and Leung;
VII. claim 20 under 35 U.S.C. § 103 as unpatentable over Kwank, Bates,
and Riley;
VIII. claims 1-6, 8-12, 14, 15, and 20 under 35 U.S.C. § 103 as
unpatentable over Bates, Zhao, Riley, and Polese;
3 The heading of the rejection refers to "35 U.S.C. 112, (pre-AIA), second
paragraph." Non-Final Act. 3. We, however, understand the Examiner to be
examining the application under the first-inventor-to-file provisions of the
AIA (id. at 2), and consider the reference to the pre-AIA statute as an
oversight.
3
Appeal2018-001267
Application 14/086,835
IX. claim 16 under 35 U.S.C. § 103 as unpatentable over Bates, Zhao,
Riley, Polese, and Alhayek;
X. claim 16 under 35 U.S.C. § 103 as unpatentable over Bates, Zhao,
Riley, Polese, and McMahon;
XI. claims 17 and 18 under 35 U.S.C. § 103 as unpatentable over Bates,
Zhao, Riley, Polese, and Malladi; and
XII. claim 19 under 35 U.S.C. § 103 as unpatentable over Bates, Zhao,
Riley, Polese, and Leung.
ANALYSIS
Rejection I
Independent claims 1 and 12
Each of independent claims 1 and 12 recites "the backplate having a
substantially uniform material composition." Br., Claims App. The
Examiner determines that the term "substantially" renders these
claims indefinite because "it is not clear to what degree 'substantially' is
imparting on the uniformity of the material composition." Non-Final Act. 3.
In contrast, Appellant argues the term "substantially uniform"
describes the claimed subject matter with a reasonable degree of clarity
when considered in light of the application as a whole. Br. 16. More
specifically, Appellant contends:
[ o ]ne skilled in the art would readily understand, from reading
the Application as a whole, in the context of heat dissipation
assemblies for an electronic circuit "substantially uniform"
means that the effects of any deviations from a homogenous
material makeup of the component are negligible for purposes of
the component's behavior or contribution to the behavior of the
heat dissipation assembly.
4
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Application 14/086,835
Id.
After considering the Examiner's rejection in light of Appellant's
argument, we are not apprised of Examiner error. Appellant's proffered
standard for ascertaining whether a material composition is "substantially
uniform" is not set forth in the Specification, and the Specification does not
provide any standard for measuring the degree of uniformity. Cf Seattle
Box Co. v. Indust. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir.
1984) ("[W]hen a word of degree is used the [factfinder] must detennine
whether the ... specification provides some standard for measuring that
degree."). To the extent Appellant is asserting that its proffered standard is
recognized in the art of heat dissipation assemblies, such an assertion is
simply attorney argument and not supported by evidence. See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a
brief cannot take the place of evidence.").
In view of the foregoing, Appellant does not apprise us of error in the
Examiner's determination that the meaning of the term "substantially
uniform" is unclear. We, therefore, sustain the Examiner's rejection of
independent claims 1 and 12.
Independent claim 20
In rejecting independent claim 20 as indefinite, the Examiner
determines the term "complex geometry" is unclear. Non-Final Act. 3. The
Examiner acknowledges the Specification describes a complex geometry,
but the Examiner determines the Specification "offers no bounds as to what
limits a complex shape." Id.
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Application 14/086,835
Appellant argues that, upon reading the claim and paragraph 17 of the
Specification, 4 one skilled in the art would understand the complex
geometry matches the shape of the circuit. Br. 17. Per Appellant, "[i]t is not
important what complex geometry the circuit has ... because what is
claimed is a relationship between the shapes of the components and not any
particular complex geometry." Id. Appellant's argument is not persuasive
of error.
Independent claim 20 recites "the heat spreader having complex
geometry complementary to a shape of the circuit." Br., Claims App.
Independent claim 20, therefore, recites that the heat spreader has a
"complex geometry." Although we agree with Appellant that independent
claim 20 further recites the heat spreader's complex geometry is
complimentary to the shape of the circuit, Appellant does not explain how
the shape of the circuit provides clarity as to the complex geometry of the
heat spreader. As such, Appellant does not apprise us of error in the
Examiner's determination that the term "complex geometry" is unclear.
The Examiner also determines the limitation of independent claim 20
reciting "the backplate having a uniform material composition and a uniform
thickness such that the backplate has a non-complex geometry" is unclear.
Non-Final Act. 3. According to the Examiner, "it cannot be discerned how
the thickness and composition are the only variables that contribute to a
complexity of geometry or if this 'non-complex limitation' is related to the
'complex geometry' limitations found earlier within the claim." Id. at 3--4.
4 Appellant appears to be referring to the publication of the present
application, namely US 2015/0136357 Al, published May 21, 2015.
Paragraph 17 of the published application corresponds to paragraph 16 of the
Specification filed November 21, 2013, referenced herein.
6
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Application 14/086,835
Appellant again refers to the language of the claim and paragraph 175
and asserts one skilled in the art would understand that the backplate does
not include edges, contours, curves, angles, depressions, etched surfaces,
mounted elements, bosses, protrusions, connecting mounts, or other
complementary geometries. Br. 17. Appellant's argument, however, does
not address the Examiner's determination that it is unclear which variables
define the complexity of a geometry. The language of independent claim 20
correlates the complexity of the geometry to material composition and
thickness (Id. at Claims App.), whereas the Specification describes that the
complexity is related to edges, contours, curves, angles, depressions, etched
surfaces, mounted elements, bosses, protrusions, connecting mounts
(Spec. ,r 16). See, e.g., In re Cohn, 438 F.2d 989, 993 (Fed. Cir. 1971)
(sustaining a rejection for indefiniteness where the claims are inconsistent
with the specification). Accordingly, Appellant does not apprise us of
Examiner error.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner's determination that "complex geometry" and "the backplate
having a uniform material composition and a uniform thickness such that the
backplate has a non-complex geometry" are unclear. We, therefore, sustain
the Examiner's rejection of independent claim 20.
Rejection VIII
Appellant argues independent claims 1, 12, and 20 as a group and
does not present arguments for the dependent claims. Br. 17-20. vVe select
5 See note 4 supra.
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Application 14/086,835
independent claim 1 as representative, and the remaining claims stand or fall
with independent claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellant contends "the Examiner does not point to any disclosure in
the prior art explaining or even implying a need for modifying the system of
Bates to include a substrate and chassis possessing similar CTEs," as
taught by Polese. Br. 19. Appellant's argument is not persuasive of error.
As our reviewing court has explained:
The suggestion to combine may be found in explicit or implicit
teachings within the references themselves, frmn the ordinary
knowledge of those skilled in the art, or from the nature of the
problem to be solved. \\'11en determining the patentability of a
claimed invention which combines two known elements, the
question is whether there is something in the prior aii as a whole
to suggest the desirability, and thus the obviousness, of making
the combination.
WMS Gaming Inc. v. Int'! Game Tech., 184 F.3d 1339, 1355 (Fed. Cir.
1999) ( citations and internal quotations omitted). Moreover, "if a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill." See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Here, the Examiner reasons that a person of ordinary skill in the art
would have modified Bates' s disclosure to provide the substrate and chassis
with similar CTEs, as taught by Polese, "to minimize the thermal stresses to
negate failure or degradation of the electronic device." Non-Final Act. 24.
The Examiner further explains:
The motivation provided is well known in the art, wherein
materials having similar coefficients of thermal expansion will
expand and contract at a similar rate during the heating/cooling
cycle, mitigating friction, thermal stresses or opposing forces at
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Application 14/086,835
their respective contact portion. This will, in fact, prevent
failure, cracks or breaks that exist when components expand and
contrast at different rates, which one of ordinary skill in the art
would know and deploy in such a device. Having matching
CTE's is a known technique that would improve the device of
Bates in the same way that it improves the device of Polese, said
improvement being to mitigate failure or degradation through
reducing thermal stresses.
Ans. 45. The Examiner therefore has persuasively shown that the prior art
as a whole suggests a desirability for combining Bates's disclosure with
Polese' s teaching of a substrate and chassis having matching CTEs.
Appellant also asserts the Examiner's reasoning for combining the
teachings of Bates and Polese "is, at most, a rationale for changing the
CTEs of the elements already present in Bates." Id. As set forth above, the
Examiner is, in fact, proposing to modify Bates' s disclosure so that the
disclosed substrate and chassis have similar CTEs, as taught by Polese.
Non-Final Act. 23-24.
Appellant further contends
[ t ]he motivation put forth by the Examiner would not have led
one of ordinary skill to combine prior art reference teachings to
arrive at an assembly comprising a heat spreader, substrate, and
heat slug, and backplate forming a layered stack of materials with
the heat slug being connected between the heat spreader and
backplate and adjacent to the substrate so as to form a thermally
conductive path for cooling the circuit, the heat spreader having
CTE matching a CTE of the circuit and the substrate matching a
CTE of the backplate.
Br. 20. Appellant's argument, however, is not persuasive of error because it
is simply an allegation that fails to address in any meaningful way any of the
Examiner's reasons for combining the prior art teachings
(Non-Final Act. 23-24).
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Appellant additionally argues "the Examiner has reached a conclusion
of obviousness using only impermissible hindsight and has not clearly
articulated reasons why the claimed invention would have been obvious."
Br. 20. This argument is unpersuasive of error because, again, it is simply
an allegation without meaningful consideration of the Examiner's reasons.
In determining that the claimed invention would have been obvious, the
Examiner has articulated reasons why a person of ordinary skill would have
combined the teachings of Bates, Zhao, Riley, and Polese, and these reasons
do not rely on Appellant's disclosure. Non-Final Act. 23-24.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner's determination that the combined teachings of Bates, Zhao,
Riley, and Polese would have rendered obvious the subject matter of
independent claim 1. We, therefore, sustain the Examiner's rejection of
independent claim 1, with claims 2-6, 8-12, 14, 15, and 20 falling therewith.
Rejections II and VII
In challenging the Examiner's rejection of independent claims 1 and
12 as unpatentable over Kwank and Bates, i.e., Rejection II, and the
Examiner's rejection of independent claim 20 as unpatentable over Kwank,
Bates, and Riley, i.e., Rejection VII, Appellant relies on the same arguments
discussed above with respect to the Examiner's rejection of the independent
claims as unpatentable over Bates, Zhao, Riley, and Polese, i.e.,
Rejection VIII. Br. 17-20. Unlike Rejection VIII, however, Rejections II
and VII are not based on a combination of Bates and Polese, so Appellant's
arguments regarding the Examiner's proposed combination of Bates and
Polese are not applicable to Rejections II and VII. To the extent Appellant's
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Application 14/086,835
arguments for Rejection VIII are applicable to Rejections II and VII, they
are not persuasive of error for essentially the same reasons they are not
persuasive with respect to Rejection VIII. Namely, in making Rejections II
and VII, the Examiner has articulated reasons explaining why a person of
ordinary skill would have combined the prior art teachings to result in the
claimed invention (Non-Final Act. 5---6, 18-20), and Appellants do not
address these reasons in any meaningful way.
In view of the foregoing, Appellant does not apprise us of error in
Rejections II and VII. We sustain these rejections.
Rejections III-VI and IX-XII
Appellant does not present arguments for the dependent claims. See
Br. 15 (listing arguments regarding only the independent claims). Appellant,
therefore, does not apprise us of error in these rejections. We sustain the
rejections.
DECISION
The Examiner's decision to reject claims 1-6, 8-12, and 14--20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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