Ex Parte MORI et al

Patent Trial and Appeal Board

Jan 12, 2017

12350441 (P.T.A.B. Jan. 12, 2017)

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.
12/350,441 01/08/2009 Shogo MORI 337050US40X 6905
22850 7590 01/17/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
RUSSELL, DEVON L
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
01/17/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHOGO MORI, HIDEYASU OBARA, TAIZO KURIBAYASHI,
and SHINOBU TAMURA
Appeal 2015-002818
Application 12/350,441
Technology Center 3700
Before EDWARD A. BROWN, BRANDON J. WARNER, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Shogo Mori et al. (Appellants)1 appeal under 35 U.S.C. § 134 from
the Examiner’s November 4, 2013 non-final decision (“Non-Final Act.”)
rejecting claims 1—15. We have jurisdiction over this appeal under 35
U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real parties in interest are KABUSHIKI
KAISHA TOYOTA JIDOSHOKKI and SHOW DENKO KABUSHIKI
KAISHA. App. Br. 1.
Appeal 2015-002818
Application 12/350,441
SUMMARY OF INVENTION
Appellants’ claimed invention “relates to a liquid-cooled-type cooling
device.” Spec. 1. Claim 1, reproduced below from page 11 (Claims
Appendix) of the Appeal Brief, is illustrative of the claimed subject matter:
1. A liquid-cooled-type cooling device comprising:
a casing having a top wall including a cooling-liquid inlet
and a cooling-liquid outlet, and having a bottom wall opposing
the top wall; and
an outflow pipe coupled to the cooling-liquid outlet of
the casing,
wherein the casing includes a cooling-liquid outflow
portion having a top wall portion extending from the top wall of
the casing, a bottom wall portion extending from the bottom
wall of the casing and opposing the top wall portion to define a
flow space between the top wall portion and the bottom wall
portion, the cooling-liquid outlet is formed in the top wall
portion of the cooling-liquid outflow portion, the bottom wall
portion comprises a guide portion which is directly opposite to
at least part of the cooling-liquid outlet, and a closed distal end
extending from an end of the guide portion to the cooling liquid
outlet formed in the top wall portion of the cooling-liquid
outflow portion;
wherein the outflow pipe has a bottom wall which is
parallel to the top wall of the casing and is connected to the
cooling-liquid outflow portion such that a through hole in the
bottom wall of the outflow pipe corresponds to and is in
communication with the cooling-liquid outlet, and
wherein the guide portion of the cooling-liquid outflow
portion is configured to change a flow direction of cooling
liquid flowing from a first flow direction toward the closed
distal end, to a second flow direction which is an upward
direction along the closed distal end toward the cooling-liquid
outlet.
2
Appeal 2015-002818
Application 12/350,441
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Suzuki US 6,414,867 B2 July 2, 2002
Park US 2006/0225867 A1 Oct. 12, 2006
Thomas US 7,204,303 B2 Apr. 17, 2007
Aoki US 7,569,957 B2 Aug. 4, 2009
REJECTIONS
Claims 1—12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Suzuki, Thomas, and Aoki.
Claims 13—15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Suzuki, Thomas, Aoki, and Park.
ANALYSIS
Rejection Based on Suzuki, Thomas, and Aoki
The Examiner finds that Suzuki discloses a liquid-cooled-type cooling
device substantially as claimed in independent claim 1, including, inter alia,
a guide portion to change a cooling fluid flow direction in an upward manner
(“as shown in [Suzuki Figure 9], the guide portion redirects liquid giving it
an upward directional component; see the diagonal flow arrow”). Non-Final
Act. 4 (citing Suzuki, Fig. 9). The Examiner determines that the upper wall
of Suzuki’s heat sink 1 corresponds to the recited casing bottom wall, and
the inner surface of this wall corresponds to the recited guide portion. Id. at
5 (annotated Suzuki Fig. 9). The Examiner finds that Suzuki discloses the
3
Appeal 2015-002818
Application 12/350,441
guide portion as being “directly opposite to at least part of the cooling-liquid
outlet,” as required by claim 1, in two alternate manners: first, by
considering the entire inner wall surface to be the guide member (id. at 4),
and second, by shortening cooling channel 2 such that its outlet is directly
across from the innermost edge of Suzuki’s heat sink upper wall (id. at 5).
The Examiner reasons that it would have been obvious to a skilled artisan to
make the modification of the second alternative “to reduce materials used,
align inlets and outlets more closely with sources, and any other number of
obvious engineering reasons.” Id. The Examiner clarifies that the
modification of the second alternative is a “simple matter of design choice.”
Ans. 11.
The Examiner finds that Suzuki does not disclose the outflow pipe
having a bottom wall that is parallel to the casing top wall, but finds that
Thomas discloses inflow and outflow pipes (fittings 36, 38) having such a
parallel wall arrangement. Non-Final Act. 6 (citing Thomas, Fig. 1). The
Examiner reasons that it would have been obvious to a skilled artisan to use
Thomas’s fittings with Suzuki’s device “in order to more easily
communicate with coolant sources located to the sides of the device rather
than above it.” Id.
The Examiner finds that Suzuki does not disclose the guide portion
being “provided at a position corresponding to the cooling-liquid outlet”
(presumably taking a third interpretation of Suzuki in addition to the two
alternatives discussed above), but finds that Aoki discloses, in multiple
embodiments, guide portions (“the slant[ed] portion of [heat sink] 53”) “in a
position corresponding to the cooling-liquid outlet.” Id. (citing Aoki, Fig.
4
Appeal 2015-002818
Application 12/350,441
7). The Examiner also cites Aoki Figures 3 and 8 as illustrating such a guide
portion arrangement. Ans. 14. The Examiner reasons that it would have
been obvious to a skilled artisan to position Suzuki’s guide portion “at a
position corresponding to the . . . outlet, as taught by [Aoki] in order to guide
the liquid directly to . . . the outlet.” Non-Final Act. 6.
Appellants traverse, arguing, inter alia, that the flow path opposite
Suzuki’s outlet “is simply a planar surface which does not change a direction
of the fluid flow,” and, thus, Suzuki “does not provide placement of a guide
portion relative to the outlet as detailed in Claim 1.” App. Br. 5.
Continuing, Appellants interpret Suzuki’s “stepped structure adjacent to the
inner seal 9” as a guide portion, and assert that such stepped portion is not
directly opposite the outlet opening. Id. Appellants also argue that the
Examiner’s rationale for combining the teachings of Suzuki, Thomas, and
Aoki is based only on hindsight reasoning. Id. at 7—8. We find these
arguments persuasive.
Regarding the Examiner’s determination that the entire inner surface
of Suzuki’s heat sink upper wall corresponds to the recited guide portion
(Non-Final Act. 4—5), Appellants correctly note that Suzuki’s flow path
opposite the outlet is merely a planar surface (App. Br. 5). The Examiner
supports the contention that this surface is configured to change a coolant
flow direction by stating that “as shown in [Suzuki Figure 9], the guide
portion redirects liquid giving it an upward directional component; see the
diagonal flow arrow.'''’ Non-Final Act. 4 (emphasis added). Suzuki Figure 9
reveals, however, that the diagonal flow arrow is adjacent spacer 13
upstream from the outlet. See Suzuki, Fig. 9. It is not seen how the planar
5
Appeal 2015-002818
Application 12/350,441
surface opposite the outlet has any bearing on the flow portion indicated by
the diagonal arrow. Moreover, Suzuki explains that it is spacer 13 that
causes the change in flow direction indicated by the diagonal arrows of
Figure 9. See Suzuki 7:9-25. The Examiner’s determinations are presented
in conclusory fashion with no supporting evidence or persuasive technical
reasoning. Thus, the Examiner has not established, by a preponderance of
evidence, how the inner surface of Suzuki’s heat sink upper wall is
“configured to change a flow direction” as required by claim 1.
Regarding the Examiner’s alternate interpretation that it would have
been obvious to shorten Suzuki’s cooling channel such that the outlet is
directly across from the stepped portion of Suzuki’s cooling channel (Non-
Final Act. 5), the Examiner determines the modification is “a simple matter
of design choice” (Ans. 11). A claimed modification to the prior art may be
an obvious design choice if the claimed structure performs the same function
as in the prior art and it presents no novel or unexpected result over the prior
art. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (holding that a
claimed feature that solves no stated problem and presents no unexpected
result “would be an obvious matter of design choice within the skill of the
art”). Here, however, placement of the recited guide portion “directly
opposite to at least a portion of the cooling-liquid outlet” reduces the swirl
generated during coolant outflow and reduces flow resistance through the
cooling device. See App. Br. 4—5; see also Spec. 1—2, 20-21, Figs. 4—7.
Thus, placement of the guide portion directly across from the outlet, as
recited in claim 1, is not a mere design choice as determined by the
6
Appeal 2015-002818
Application 12/350,441
Examiner, but, rather, provides specific operational benefits as set forth in
the Specification.
Regarding the Examiner’s second alternate interpretation that it would
have been obvious to position Suzuki’s “guide portion” opposite the outlet
as recited in claim 1 based on the teachings of Aoki (Non-Final Act. 6), the
Examiner supports the modification as being “in order to guide the liquid
directly to . . . the outlet” (id.). However, as correctly noted by Appellants,
the Examiner’s rationale is arbitrary in that the Examiner has not established
what benefit a skilled artisan would perceive in guiding coolant directly to
the outlet (or even how the Aoki device “directly” guides coolant to the
outlet). The Examiner has not provided a rational underpinning to support
the legal conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)). Thus, the Examiner has not articulated sufficiently why a skilled
artisan would modify the Suzuki device to meet the limitations of claim 1.
Similarly, we agree with Appellants that the Examiner’s rationale to
modify the Suzuki device based on the teachings of Thomas to have an
outflow pipe with a bottom wall parallel to the casing top wall, as required
by claim 1, is based on improper hindsight. Although the Examiner states
that such a modification would allow the device “to more easily
communicate with coolant sources located to the sides of the device rather
than above it” (Non-Final Act. 6), the Examiner has not set forth an adequate
reason why a skilled artisan would move Suzuki’s coolant source to the side.
The Examiner’s determinations are presented in conclusory fashion with no
rational underpinning. Thus, the Examiner has not articulated sufficiently
7
Appeal 2015-002818
Application 12/350,441
why a skilled artisan would modify the Suzuki device to meet the limitations
of claim 1.
Accordingly, we do not sustain the Examiner’s rejection of claim 1,
nor of its dependent claims 2—6, as being unpatentable over Suzuki, Thomas,
and Aoki.
Independent claim 7 is similar to independent claim 1, but is directed
to an inlet guide portion. App. Br. 12—13 (Claims Appendix). The
Examiner rejects claim 7 similarly to claim 1 (Non-Final Act. 3—6), and
Appellants rely on the same arguments as made with respect to claim 1
(App. Br. 8—9). For the same reasons as presented above with respect to
claim 1, we do not sustain the rejection of claim 7, nor of its dependent
claims 8—12, as being unpatentable over Suzuki, Thomas, and Aoki.
Rejection Based on Suzuki, Thomas, Aoki, and Park
The Examiner determines that dependent claims 13—15 are
unpatentable over Suzuki, Thomas, Aoki, and Park. Non-Final Act. 9—10.
Park is not relied upon by the Examiner in any manner that would remedy
the deficiencies noted above with respect to the proposed combination of
Suzuki, Thomas, and Aoki in rejecting the subject matter of independent
claims 1 and 7. The rejection of claims 13—15 is therefore not sustained.
DECISION
The Examiner’s decision to reject claims 1—15 is reversed.
REVERSED
8