Ex Parte Kaslusky et al

Patent Trial and Appeal Board

Mar 22, 2018

12732320 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121732,320 03/26/2010
26096 7590 03/26/2018
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Scott F. Kaslusky
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.
PA-12966-US;67036-288PUS1 2889
EXAMINER
ROJOHN III, CLAIRE E
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT F. KASLUSKY, BRIAN ST. ROCK,
JOHN H. WHITON, and VINCENT C. NARDONE
Appeal2016-002244
Application 12/732,320 1
Technology Center 3700
Before STEP AN STAICOVICI, RICHARD H. MARSCHALL, and
FREDERICK C. LANEY, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Scott F. Kaslusky et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner's decision rejecting claims 1-17, 19-27, and
29-42. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellants identify United Technologies Corporation as the real party in
interest. Appeal Br. 2.
Appeal2016-002244
Application 12/732,320
THE CLAIMED SUBJECT MATTER
Appellants' claimed subject matter relates to "a high performance
cooling system" that includes heat sinks with curved fins. Spec. i-f 1. Claims
1, 15, 17, and 19 are independent. Claim 1, reproduced below, is illustrative
of the claimed subject matter.
1. A heat transfer device comprising:
a base; and
a plurality of curved fins defining a corresponding
plurality of curved air flow channels supported on the base,
wherein the plurality of curved air flow channels define a non-
linear path extending along a first surface of the base between a
first position on the base and a second position on the base,
each of the plurality of curved fins having a plurality of
openings for communicating air flow from a high pressure side
to a low pressure side to disrupt air flow through the
corresponding curved air flow channel.
Appeal Br. 20 (Claims App.).
THE REJECTIONS 2
Appellants seek review of the following rejections:
1. Claims 1, 2, 4--9, 11-13, 15, 16, 19-22, 24, 29-33, 35, and 36
under 35 U.S.C. § 103(a) as unpatentable over Lopatinsky (US
6,659,169 Bl, iss. Dec. 9, 2003) and Azar (US 6,161,610, iss. Dec.
19,2000). 3
2 The Examiner initially rejected claim 21 under 35 U.S.C. § 112(b) or 35
U.S.C. § 112, second paragraph, but withdrew the rejection prior to appeal.
See Final Act. 2-3; Adv. Act. 1 (mailed Feb. 26, 2005).
3 The Examiner included claim 10 in the heading of the rejection, but did not
include claim 10 in the analysis. See Final Act. 3, 5. The Examiner rejected
claim 10 as part of a different rejection, and we will treat it as part of that
rejection alone. See id. at 11.
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2. Claims 3, 23, and 34 under 35 U.S.C. § 103(a) as unpatentable
over Lopatinsky, Azar, and Komori (US Pub. No. 2009/0050303
Al, pub. Feb. 26, 2009).
3. Claims 10 and 25 under 35 U.S.C. § 103(a) as unpatentable over
Lopatinsky, Azar, and Edward (US Pub. No. 2007/0204972 Al,
pub. Sept. 6, 2007).
4. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over
Lopatinsky, Azar, and Kogure (US 6,015,008, iss. Jan. 18, 2000).
5. Claims 17, 26, 27, 37, 38, and 41under35 U.S.C. § 103(a) as
unpatentable over Azar and Kogure.
6. Claim 39 under 35 U.S.C. § 103(a) as unpatentable over Azar,
Kogure, and Edward.
7. Claims 40 and 42 under 35 U.S.C. § 103(a) as unpatentable over
Lopatinsky, Azar, and Materna (US 6,668,915 B 1, iss. Dec. 30,
2003).
ANALYSIS
Independent Claims 1, 15, and 19, and Dependent Claims 2, 4, 8-12, 22, 25,
29, 35, and 36
Claim 1 requires "each of the plurality of curved fins having a
plurality of openings for communicating air flow from a high pressure side
to a low pressure side." Appeal Br. 20 (Claims App.). Similarly,
independent claim 15 requires "each of the plurality of curved fins including
a plurality of openings for communicating air flow from a first side of the
curved fin to a second side of the curved fin," and independent claim 19
requires "communicating air through the curved fins into an adjacent curved
channel to disrupt air flow through the adjacent curved channel." Id. at 21-
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22. The Examiner found that Lopatinsky discloses the claimed plurality of
curved fins and other structures required of the claimed heat sink, but does
not disclose the claimed "openings" in the fins as required by claims 1 and
15, or the "communicating air through the curved fins" as required by claim
19. Final Act. 3, 6, 7. The Examiner found that Azar discloses the claimed
openings on curved fins and communicating air through the fins. Id. at 3--4,
7. The Examiner also found that Azar taught various advantages the
openings provided, and determined that it would have been obvious to a
person of ordinary skill in the art to modify "the curved fins of Lopatinsky
with the plurality of openings taught by Azar to aid in drawing stagnant air
out and to create turbulence." Id. at 4 (citing Azar 12:38--44), 7-8, 16
(finding that openings "increase turbulence"); Adv. Act. 2.
Appellants do not argue that the combination of Lopatinsky and Azar
fails to disclose any of the claim limitations. Appeal Br. 5-7. Instead,
Appellants argue that one of skill in the art would not add the openings of
Azar to the fins of Lopatinsky because doing so would reduce the velocity of
air in Lopatinsky' s channels, and Lopatinsky discusses the importance of
maximizing air velocity and keeping the velocity constant using air channels
with constant widths. Id. at 6. Appellants also reject the Examiner's attempt
to limit Lopatinsky's focus on maximizing velocity to specific embodiments,
arguing that the statements apply to the embodiment disclosing spiral
channels. Id. at 7. Appellants also argue that the designs of Lopatinsky and
Azar are too distinct to support the combination because Azar focuses on
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problems caused by "bypass air" that are not present in Lopatinsky. Reply
Br. 2. 4
We are not persuaded that "Azar teaches against the objectives of
Lopatinsky." Appeal Br. 6. As an initial matter, Appellants' suggestion that
Lopatinsky requires channels of constant width to maintain constant velocity
lacks support, as Lopatinsky also discloses embodiments having air channels
with diverging, non-constant width. See Lopatinsky 6:33-36 (describing
Figure 3 as disclosing "radially diverging spiral-like heat exchanging
channels" as well as constant-width channels). Appellants also quote from a
portion of Azar, which states that "increasing irregularities, as described
above, also decrease the velocity of the passing fluid." Appeal Br. 6
(quoting Azar, 1:62-2:13). That portion of Azar, however, refers to
irregularities caused by protrusions, not from openings in the fins, and
suggests that Azar sought to avoid decreasing velocity, similar to
Lopatinsky. See id. Further, even if Azar's openings reduce velocity and
Lopatinsky discloses a preference for maximizing velocity, Appellants have
not established that either reference teaches away from the other. "[A]
reference will teach away if it suggests that the line of development flowing
4 Appellants also argue, in a single sentence in the Reply Brief, that neither
Azar nor Lopatinsky disclose "higher ... and lower pressure sides as
required by the claims." Reply Br. 2. To the extent the argument suggests
that the rejection should not be sustained because the combination does not
disclose all claim limitations, Appellants raised the argument for the first
time on Reply and, thus, has waived the argument. See 37 C.F.R.
41.41 (b )(2) (requiring showing of good cause for Board to entertain new
arguments in Reply). We do, however, consider the argument to the extent
it supports the argument that one of ordinary skill in the art would not make
the combination due to differences in the designs of Lopatinsky and Azar.
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from the reference's disclosure is unlikely to be productive of the result
sought by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed Cir. 1994);
see also Para-Ordnance Mfg., Inc. v. SGS Importers Int 'l, Inc., 73 F .3d
1085, 1090 (Fed. Cir. 1995) (to teach away, a reference should teach that a
feature "should not" or "cannot" be used in combination with other features
in the prior art). The cited portions of Lopatinsky do not teach away from
the addition of openings to its fins because Lopatinsky does not discuss
much less criticize the use of openings. See Appeal Br. 6.
Moreover, even if the openings decrease velocity, one of ordinary
skill in the art may weigh the advantages Azar discloses and disadvantages
noted by Lopatinsky and conclude that the advantages gained by adding
openings to the fins outweighs the disadvantage of decreasing velocity.
Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000) ("The fact that the motivating benefit comes at the expense of another
benefit ... should not nullify its use as a basis to modify the disclosure of
one reference with the teachings of another. Instead, the benefits, both lost
and gained, should be weighed against one another."); Azar 12:36-44
(describing advantages of openings). Appellants have not persuaded us that
the advantages noted by Azar are inapplicable to Lopatinsky's fins merely
because the designs contain other differences, or that whatever
disadvantages openings may introduce outweigh their potential benefits.
After review of the evidence as a whole and Appellants' arguments,
we determine that the Examiner provided sufficient rationale, supported by
citation to the relevant evidence, that one of ordinary skill in the art would
have found it obvious to modify Lopatinsky by adding the openings Azar
discloses. We therefore sustain the rejection of independent claims 1, 15
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and 19. See Appeal Br. 5 (arguing claims as a group). We also sustain the
rejection of claims 2, 4, 8, 9, 11, 12, 22, 29, 35, and 36, which depend
directly or indirectly from claims 1, 15, and 19, and are not separately
argued by Appellants. See id. at 5-18. Finally, we sustain the rejection of
claims 10 and 25 based on Lopatinsky, Azar, and Edward because
Appellants rely on the same arguments made with respect to claims 1, 15,
and 19. See Final Act. 11; Appeal Br. 14.
Independent Claim 17 and Dependent Claims 13, 14, 26, 27, 37-39, and 41
Independent claim 17 requires "a plurality of protrusions on the fin
extending at least partially into the air flow channel, wherein the plurality of
protrusions are a scoop having an arcuate portion." Appeal Br. 22 (Claims
App.). The Examiner found that Azar discloses a plurality of protrusions
that are a scoop, relying on element 306 in Azar's Figure 30F. Final Act.
12; Ans. 19. The Examiner also found that Kogure discloses a protrusion
having a scoop with an arcuate portion, and determined that it would have
been obvious to add Kogure' s "arcuate portion" to Azar. Final Act. 13.
Appellants argue that neither Azar nor Kogure disclose the structural
features of the protrusions and one of ordinary skill in the art would not
modify Azar to include protrusions because "Azar explicitly discloses
problems with including protrusions." Appeal Br. 16.
We agree with Appellants. The Examiner relies on Azar's element
306 in Figure 30F as disclosing the claimed protrusion, but Azar describes
that structure as "slots and/or orifices 306," not a protrusion. See Final Act.
12; Ans. 19; Azar 12:36-37 ("[T]he fins may be modified as suggested
above with slots and/or orifices 306, as shown in FIG. 30/, or textures 308,
as shown in FIG. 30e."). In the context of claim 17's "opening" limitation,
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the Examiner properly found that element 306 discloses an opening, but fails
to explain how the same element constitutes a "protrusion." Final Act. 12.
Figure 30F, which the Examiner relied on, also shows an orifice or hole and
a dotted surface adjacent the hole. See Azar, Fig. 30F. The dotted surface
appears to be the same as the surfaces labelled 308 in Figure 30E, and
described by Azar as "textures 308." Id. at 12:38. Because an orifice or
hole does not constitute a protrusion, we conclude that the Examiner's
finding on this point lacks support.
Based on the foregoing, we do not sustain the rejection of claim 17, or
claims 26, 27, 37-39, and 41 that depend from claim 17. Claim 13 depends
from claim 1 and further requires "a plurality of protrusions." Appeal Br. 21
(Claims App.). Claim 14 depends from claim 13 and further requires
"protrusions [that] are at least one of a drawn hole or a scoop." Id. The
Examiner again relied on Azar's orifice 306 in Figure 30F as disclosing the
claimed protrusions referred to in claims 13 and 14. See Final Act. 6, 11;
Ans. 10. We do not sustain the rejection of claims 13 and 14 for the same
reasons as those discussed with respect to claim 1 7.
Claims 5-7
Claim 5 depends from claim 1 and further requires, "wherein at least
one of the plurality of curved fins includes a plurality of spaced apart
sections." Appeal Br. 20 (Claims App.). Claim 6 depends from claim 5 and
further requires "wherein at least one of the plurality of spaced apart sections
includes a tapered end." Id. Claim 7 depends from claim 6 and further
requires "wherein each section is a pin fin." Id. The specification discloses
examples of fins including spaced apart sections and pin fins in Figures 11
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and 12, respectively. See Spec., Figs. 11 (depicting spaced apart sections
224), 12 (depicting pin fins 324).
The Examiner found that Lopatinsky's Figure 6 discloses spaced apart
sections 112, which are also "pin fins." Final Act. 4--5; Ans. 14--15.
Appellants argue that "[ n ]either Lopatinsky nor Azar disclose each section
being a pin fin, and at least one section including a tapered end." Appeal Br.
9.
We agree with Appellants. The Examiner's reliance on "sections"
112 in Lopatinsky's Figure 6 lacks support. Lopatinsky's Figure 6 discloses
a series of "profiled elements" in the form of "needles 112," but, as
Lopatinsky notes, "they are located immediately adjacent to one another (as
shown in FIG. 6)," rather than "spaced apart" within the fin as required by
the claim language. Lopatinsky 8:15-18, Fig. 6; Appeal Br. 20 (Claims
App.) (claim 6 requiring "spaced apart sections"). Needles 112 are spaced
apart from other needles 112 in other fins, but the claims require spaced
apart sections within the same fin, not merely spaced apart from other fins.
See Appeal Br. 20 (Claims App.) (claim 5 requiring "spaced apart sections"
within "at least one of the plurality of curved fins"); Spec., Figs. 11, 12. We
therefore do not sustain the rejection of claims 5-7.
Claim 24
Claim 4 depends from claim 1 and further requires, "wherein a first
hole opening on the high pressure side is offset along the curved fin from a
second hole opening on the low pressure side." Appeal Br. 20 (Claims
App.). Claim 24 depends from claim 4 and further requires "wherein the
first hole opening and second hole opening define ends of the same
opening." Id. at 23. The specification discloses an embodiment falling
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within the scope of claim 24 in Figure 5. See Spec. i-f 32 ("[H]oles 18b are
offset across the fin 16 ... effectively creating an angle relative to the
curved fin 16."), Fig. 5.
The Examiner found that Azar discloses holes 306 that meet the
requirements of the claims because "the first hole opening and the second
hole opening define ends of the same opening (as per claim 24 ). " Final Act.
4; Ans. 16. The Examiner found that the first and second hole openings "are
offset by the thickness of the fin." Id. at 17. Appellants argue that "there is
no disclosure that the alleged first hole opening and second hole opening of
the same hole identified by the Examiner are offset from each other."
Appeal Br. 10.
We agree with Appellants. The Examiner's implicit construction of
"offset" in claim 4, from which claim 24 depends, to include the thickness of
the fin does not properly take into account the requirement of claim 4 that
the offset occur "along the curved fin," as illustrated in Figure 5. See Spec.,
Fig. 5. A mere cylindrical hole, as shown in the Examiner's Answer, does
not disclose any offset along the curve of a fin, merely through the fin. See
Ans. 16. We therefore do not sustain the rejection of claim 24.
Claim 16
Claim 16 depends from claim 15 and further requires, "wherein the
first side is a high pressure side and the second side is a low pressure side."
Appeal Br. 22 (Claims App.). The Examiner found that Azar "teaches the
first side is a high pressure side and the second side is a low pressure side."
Final Act. 7. Appellants generally rely on the arguments made with respect
to claims 1, 15, and 19 that we considered and found unpersuasive. Appeal
Br. 11. Appellants also argue that one of skill in the art would "not rely on
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Azar to provide the high pressure side" because Azar "discloses that high
pressure leads to inefficient heat transfer and the premature egress of fluid
from the fin field." Id.
We are not persuaded that the Examiner erred in finding that the
combination of Lopatinsky and Azar teach all of the limitations of claim 16,
and that one of skill in the art would have made the proposed combination.
Appellants do not cite any support for the proposition that Azar's high
pressure leads to problems, and do not establish that merely disclosing a side
of the fin having higher pressure than another side of the fin runs counter to
any disclosure in Azar. See id. Attorney argument cannot take the place of
evidence in the record. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Further, Appellants do not address or establish error in the Examiner's stated
reasons for the combination, or Azar's own disclosure of creating pressure
differences by adding orifices 306 to the fin. See Final Act. 7; Azar 12:36-
44. Based on the foregoing, we sustain the rejection of claim 16.
Claim 20
Claim 20 depends from claim 19 and further requires, "including the
step of generating a pressure differential across each of the plurality of
curved fins to drive air between a plurality of adjacent curved channels."
Appeal Br. 22 (Claims App.). The Examiner found that the Lopatinsky/ Azar
combination teaches the limitations of claim 19 and that Azar discloses the
claimed step of claim 20. Final Act. 8. Appellants argue that the
Examiner's stated reasons for making the combination were too
"conclusory." Appeal Br. 11.
We are not persuaded that the Examiner's reasoning for making the
proposed combination lacked adequate explanation or support. In the
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context of claim 19, from which claim 20 depends, the Examiner determined
that modifying Lopatinsky's fins with Azar's openings would have been
obvious to a person of ordinary skill in the art "to aid in drawing stagnant air
out and to create turbulence." Final Act. 8. Appellants do not explain how
this same reasoning does not apply to claim 20. In addition, the Examiner
further found that the proposed modification "would create a plurality of
channels between the fins which allows for the fluid to have an omni-
direction[ al] flow that draws fluid from the fin and through the holes," and
that the "addition of holes would create more uniform flow." Ans. 16-17.
Appellants do not address any of the specific reasons the Examiner provided
for the proposed combination, and we determine that the Examiner's
findings and reasoning adequately support the rejection. Accordingly, we
sustain the rejection of claim 20.
Claim 21
Claim 21 depends from claim 1 and further requires,
a first curved air flow channel of the plurality of curved air flow
channels includes a first path and a second curved air flow
channel of the plurality of curved air flow channels includes a
second path, wherein the first path directs airflow in a different
direction than the second path.
Appeal Br. 22-23 (Claims App.). The Examiner found that Lopatinsky's
Figure 3 discloses the "different direction" requirement because "all air flow
channels direct air to a different location and are therefore different paths."
Final Act. 8; see also Ans. 17. Appellants argue that Lopatinsky discloses
airflow in directions that "are all identical" because the paths are "outward
and through an identically curved flow channel." Appeal Br. 12.
We are not persuaded that the Examiner erred in finding that Lopatinsky' s
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Figure 3 discloses the "different direction" requirement of claim 21.
Appellants make an implicit claim construction argument that requires
reading "different direction" as a different arcuate path. See Appeal Br. 12.
Limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Without that
narrow construction, Lopatinsky's Figure 3 discloses at least two airflows
having the claimed "different direction" because the air flows exit the
channels in different locations. See Final Act. 8; see also Ans. 17;
Lopatinsky, Fig. 3. Accordingly, we sustain the rejection of claim 21.
Claims 30-33
Claim 30 depends from claim 1 and further requires, "wherein at least
two of the plurality of curved fins curve in opposite directions such that the
high pressure sides of at least two of the plurality of curved fins face each
other." Appeal Br. 23 (Claims App.). Claim 32 depends from claim 1 and
further requires, "wherein at least two of the plurality of curved fins curve in
opposite directions such that the low pressure sides of at least two of the
plurality of curved fins face each other." Id. at 24. Claims 31 and 33
depend from claims 30 and 32, respectively. Id.
The Examiner found that Lopatinsky's curved fins, as modified with
the holes taught by Azar, discloses at least two curved fins with their high
pressure sides facing each other and at least two fins with their low pressure
sides facing each other. Final Act. 9. The Examiner relies on fins shown in
Figure 3 of Lopatinsky on the top and bottom as facing different directions
and construes the claim in a manner that does not require "flow channels that
are adjacent," such that any two fins curved in opposite directions will
suffice. Ans. 17-18. Appellants argue that 'just because the fins of
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Lopatinsky include fins at different locations does not mean that they curve
in opposite directions." Appeal Br. 13. Appellants further argue in the
context of claim 30 that "the high pressure sides are not opposite such that
the high pressure sides face each other" and makes similar arguments with
respect to the low pressure sides in the context of claim 33. Id.
We agree with Appellants that the Examiner erred in finding that
Lopatinsky' s Figure 3 discloses any fins having high pressure or low
pressure sides that face each other as required by claims 30 and 32. In the
context of claims 30 and 32 and the specification, "sides ... face each other"
requires the sides to face each other in the same air channel, not face
different directions from across the device. See Spec. i-f 28 ("The curved fins
52 ... curve in opposite directions such that the convex high pressure sides
20 of at least two curved fins 52 and the concave low pressure sides 22 of at
least two curved fins 52 face each other."), Fig. 3. Lopatinsky's Figure 3
discloses fins 109 that all curve in the same direction in the sense that,
within each curved channel 103, a high pressure side faces a low pressure
side of the adjacent fin. See Lopatinsky, Fig. 3. The Examiner's finding
that at least two of the curved fins curve in opposite directions, relying on
one fin from the top of the figure and another from the bottom, does not
address adequately the limitation requiring high pressure (claim 30) and low
pressure (claim 32) sides that face each other. Accordingly, we do not
sustain the rejection of claims 30 and 32, or claims 31 and 33 that depend
from those claims.
Claims 3, 23, and 34
Claim 3 depends from claim 2, and further requires, "wherein the hole
is tapered." Appeal Br. 20 (Claims App.). Claims 23 and 34 depend from
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claim 3 and require further limitations. Id. at 23-24. Appellants argue
claims 3, 23, and 34 as a group, and therefore claims 23 and 34 rise or fall
with claim 3, which we select as representative. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Lopatinsky and Azar disclose the limitations
of claim 2, from which claim 3 depends, but do not disclose a "tapered"
hole. Final Act. 10. The Examiner found that Komori discloses a tapered
hole meeting the limitations of claims 3, 23, and 34, and that it would have
been obvious to a person of ordinary skill in the art to modify Azar's holes
to include tapers "to make the thermal boundary layer thinner and enhance
heat transfer," as taught by Komori. Id. at 10-11. The Examiner also found
that "tapered holes are old and well known in manufacturing." Ans. 18.
Appellants do not argue that the proposed combination fails to disclose any
of the claim limitations. Appeal Br. 14. Instead, Appellants argue that one
of skill in the art would not have been prompted to make the combination
because Azar discloses slots/orifices 306 that provide movement of fluid out
of or into channels 304, and "tapering the slots/orifices of Azar would
reduce this movement in at least one direction." Id.
We are not persuaded that the Examiner failed to provide adequate
reasoning for the proposed combination. Importantly, Appellants do not
address the reasoning the Examiner provided, based on advantages Komori
discloses. Final Act. 10-11; Komori i-f 16. In addition, Azar does not teach
away from tapered holes when it never discusses tapered holes or addresses
structure similar to that of Komori. At most, Appellants argue that some
desired flow may be "reduce[d]" by tapering Azar's holes, but Appellants do
not allege that tapering the holes would cut off flow in any direction.
Further, one of skill in the art may take into consideration the alleged
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reduced flow in one direction and consider it with the advantages noted by
Komori and relied on by the Examiner, and conclude that the proposed
modification would have been obvious. See Winner Int 'l, 202 F .3d at 1349
n.8. Based on the foregoing, we sustain the rejection of claims 3, 23, and 34.
Claims 40 and 42
Claim 40 depends from claim 1 and further requires, "wherein a
pressure difference is created by arranging a diverging curved channel and
converging curved channel to be adjacent." Appeal Br. 25 (Claims App.).
Claim 42 depends from claim 19 and further requires "arranging a diverging
curved channel and converging curved channel to be adjacent to create a
pressure difference." Id.
The Examiner found that Lopatinsky and Azar teach all of the
limitations of claims 1 and 19, but do not teach the diverging/converging
limitations of claims 40 and 42. Final Act. 15. The Examiner found that
Materna discloses the diverging/converging limitations, and that it would
have been obvious to a person of ordinary skill in the art "to have modified
the channels of Lopatinsky to have adjacent diverging and converging
channels as taught by Materna to increase heat transfer and minimize fluid
pumping power." Id. Appellants do not argue that the proposed
combination fails to disclose any of the claim limitations of claims 40 and
42. Appeal Br. 18. Instead, Appellants argue that one of skill in the art
would not have made the combination because "Lopatinsky explicitly
teaches away" from such a combination and "discloses the benefits to having
heat channels of constant width." Id. In response, the Examiner found that
"Lopatinsky does not teach away from having different sized channels and
merely explains the widths may be made constant for a constant air flow."
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Ans. 20. The Examiner again notes that Materna teaches an additional
benefit of the diverging and converging flow channels-minimizing fluid
pumping power. Id. (citing Materna 1:60-64).
We are not persuaded that the Examiner failed to provide adequate
reasoning for the proposed combination. Importantly, Appellants do not
address the reasoning the Examiner provided, based on advantages Materna
discloses. Final Act. 15; Ans. 20; Materna 1:60-64; Komori i-f 16.
Moreover, Lopatinsky does not teach away from diverging and converging
channels by noting a general preference for constant width. As discussed
above, Lopatinsky also discloses channels without constant width. See
Lopatinsky 6:33-36, Fig. 3. Finally, as discussed above, one of ordinary
skill in the art may weigh the potential disadvantages and advantages of a
proposed combination and make the combination in the face of some
disadvantages. Based on the foregoing, we sustain the rejection of claims 40
and 42.
DECISION
We affirm the decision of the Examiner to reject claims 1--4, 8-12, 15,
16, 19-23, 25, 29, 34--36, 40, and 42.
We reverse the decision of the Examiner to reject claims 5-7, 13, 14,
17, 24, 26, 27, 30-33, 37-39, and 41.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
17