Ex Parte Ng et al

Patent Trial and Appeal Board

Aug 16, 2017

12597774 (P.T.A.B. Aug. 16, 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.
12/597,774 10/27/2009 Kim Choon Ng NUS-P0001 2519
27268 7590 08/18/2017
Faegre Baker Daniels LLP
300 NORTH MERIDIAN STREET
SUITE 2700
INDIANAPOLIS, IN 46204
EXAMINER
FLANIGAN, ALLEN J
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/18/2017 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):
inteas @faegrebd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIM CHOON NG, CHRISTOPHER ROBERT YAP, and
MARK AARON CHAN
Appeal 2016-000009
Application 12/597,7741
Technology Center 3700
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3—9, and 12—18. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants’ claimed “invention relates to cooling devices for
electronic components.” (Spec. 1,1. 3.)
1 According to Appellants, the real party in interest is the National
University of Singapore. (Appeal Br. 2.)
Appeal 2016-000009
Application 12/597,774
Claim 1 is the sole independent claim on appeal. It recites:
1. A cooling device comprising:
a chamber having an evaporator section and a plurality of
condenser fins extending radially from around a periphery of the
evaporator section, wherein the evaporator section has a capillary
structure of open cell foam metal, the capillary structure of open
cell foam metal being arranged to create a micro-flow situation
within the evaporator section in use by drawing heated working
fluid away from a base portion of the evaporator section and
condensate from the condenser fins to the evaporator section.
REJECTIONS
Claims 1, 3, 9, 15, 16, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Scharli (US 3,653,433, iss. Apr. 4, 1972) and
Russell (US 3,779,310, iss. Dec. 18, 1973).
Claims 8, 13, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Scharli, Russell, and Hou (US 2007/0246194 Al,
pub. Oct. 25, 2007).
Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable
in view of Scharli, Russell, Yuyama (US 6,843,307 B2, iss. Jan. 18, 2005),
and Gregory (US 6,419,009 Bl, iss. July 16, 2002).
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable in view
of Scharli, Russell, Yuyama, Gregory, and Wei (US 2003/0063439 Al, pub.
Apr. 3, 2003).
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable in view
of Scharli, Russell, and McCullough (US 6,397,941 Bl, iss. June 4, 2002).
Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable in view
of Scharli, Russell, and Tanaka (US 6,227,287 Bl, iss. May 8, 2001).
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Appeal 2016-000009
Application 12/597,774
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable in view
of Scharli, Russell, and Bonsignore (US 6,432,320 Bl, iss. Aug. 13, 2002).
ANALYSIS
Appellants argue that
Scharli is well aware of the use of a capillary structure and
knowingly teaches the use of a capillary structure at the inner
walls of the cooling pipe 7 as described at col. 3, lines 13-15.
Given this knowledge, it is abundantly clear that if Scharli had
intended for the use of a capillary structure in the vessel 6, Scharli
would clearly have said so and not described the provision of
cooling fms 9 instead. There is clearly no teaching, suggestion
or motivation in Scharli to provide a capillary structure of open
cell foam metal in the vessel 6.
(Appeal Br. 8.)
The Examiner, however, finds that “Russell specifically teach [sic]
that it is advantageous to include capillary wicking material 2 such as foam
in the evaporation chamber wall (column 2 of Russell).” (Answer 4.)
Specifically, Russell discloses that “[i]n operation it is desirable for the
portion of the wick 2 in the portion of the tube 1 exposed to the source of
heat supply to be completely saturated with vaporizable liquid. Such
saturation will prevent the occurrence of localized areas of higher
temperature or hot spots.” (Russell, col. 2,11. 49—53.) Thus, the Examiner
determines,
it would have been obvious for one of ordinary skill in the art at
the time the instant invention was made to provide the
evaporation section of Scharli with a foam wicking structure
(either in addition to or in place of the fms 9 taught in Scharli) to
avoid the problems discussed in Russell (localized hot spots) and
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Application 12/597,774
ensure complete saturation of the evaporator end with liquid to
be vaporized for good heat transfer.
(Answer 4—5.)
Although Appellants argue that it would not have been obvious to
Scharli to provide a foam wicking structure in the vessel, Scharli was filed
in 1970. Russell was filed in 1971. Appellants’ application was filed
in 2009. The question is whether “the subject matter as a whole would have
been obvious at the time the invention [i.e., Appellants’ invention] was made
to a person having ordinary skill in the art to which said subject matter
pertains.” 35 U.S.C. § 103(a) (2009). In this case, the Examiner determines
that the combination would have been obvious, articulates a reason to
combine, and provides a rational underpinning. See KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)). Thus, we do not find Appellants’ argument that there is “no
teaching, suggestion or motivation in Scharli to provide a capillary
structure” persuasive of error. (See Appeal Br. 8.)
Appellants’ argument is also unpersuasive because the Examiner
relies on Scharli in combination with Russell as teaching this limitation. The
test for obviousness is not what any one reference would have suggested, but
rather what the combined teachings would have suggested to one of ordinary
skill in the art. See In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Appellants also argue
that it would also not be obvious to a skilled person to combine
the teachings of Scharli and Russell as these were clearly created
for different setups and cannot be simply combined. Scharli was
created to remove a quantity of heat generated in a relatively
small space. Space constraints are mentioned time and again in
Scharli (see, for example, col. 1, lines 10-14, 47 and 48 of
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Application 12/597,774
Scharli). Russell, on the other hand, is concerned with providing
a device for transferring heat from one fluid medium to another
fluid medium which has large capacity. The skilled person
would not therefore be minded to combine the teachings of the
two and would most certainly encounter issues when trying to do
so since the set ups and operating conditions are so different.
(Appeal Br. 9—10.)
The Examiner, however, finds that “one skilled in the art would
appreciate that the devices [disclosed in Scharli and Russell] are
fundamentally similar, i.e. they are both heat pipe devices.” (Answer 7.)
Additionally,
Appellants have not indicated how the operation of the heat pipe
in Scharli (based on evaporation and condensation of a working
fluid) would be fundamentally different from the operation of the
heat pipe taught in Russell (based on the same basic engineering
principle) such that an improvement feature in one would not be
seen as beneficial in similar devices.
(Id.) In short, Appellants do not persuasively argue why one of skill in the
art would not have combined the teachings of Scharli regarding removing
heat (in a relatively small space) with the teachings of Russell regarding
transferring heat (which has a large capacity). Nor do Appellants
persuasively argue what issues one would encounter that would deter one
from making the combination. In view of the above, we do not find
Appellants’ argument persuasive of error.
Appellants further argue that “[n]o capillary action is described in the
operation of the heat transfer device of Russell.” App. Br. 13. We disagree.
Russell discloses that during heat absorption, there may be boiling of the
liquid resulting in
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Application 12/597,774
both vapor and unevaporated atomized liquid in the space above
the surface of the liquid body. Such atomized liquid will pass
through the apertured wick retainer sheet 3 to supply liquid
directly for absorption by the upper portion of the wicking above
the liquid body instead of relying solely on the capillary action
of the wicking to maintain such wicking in fully-saturated
condition by osmosis from the portion of the wicking submerged
in the liquid to the upper portion of the wicking above the liquid
body.
(Russell, col. 3,11. 36-45, emphasis added; see also Answer 9.) Thus,
Russell discloses the capillary action of the wicking and a method to
supplement the capillary action.
Appellants also argue
that the feature of the capillary structure of open cell foam metal
being arranged to create a micro-flow situation within the
evaporator section in use by drawing heated working fluid away
from a base portion of the evaporator section and condensate
from the condenser fins to the evaporator section is only
achievable in the present invention due to the provision of the
capillary structure in the evaporator section and the unique and
special arrangement of the evaporator section relative to the
condenser fins, both elements defining the chamber. Again, this
cannot be arrived at from Scharli or Russell or any alleged
combination of the two.
(Appeal Br. 10; see also id. at 13.)
However, the Examiner finds that
applicants assert a “unique and special arrangement of the
evaporator section relative to the condenser fms,[”] but fail to
point out what specific language in the claims defines this
allegedly unique arrangement. The radial arrangement of
condenser elements extending from an evaporator section is
clearly taught in Scharli, and applicants have failed to point to
any other language in the claims in this regard that is not shown
in the prior art references relied upon.
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Application 12/597,774
(Final Action 5—6.) In particular, the Examiner finds that Appellants
argument “regarding the ‘micro flow’ of condensate, and an asserted ‘unique
and special arrangement’ of the claimed invention compared with Scharli
and Russell combined, do not appear to relate to any specific claim
limitation which is not met by the combined teachings of the prior art.”
(Answer 7.)
We agree with the Examiner and do not find Appellants’ argument
persuasive of error.
The dependent claims are not separately argued except to argue that
the additional prior art relied on in rejecting the dependent claims does “not
make-up for the failure of Scharli and Russell to disclose or suggest the
elements of independent claim 1.” (See Appeal Br. 14—15.) For the reasons
discussed above, we do not find this argument persuasive of error. See 37
C.F.R. §41.37(c)(l)(iv).
DECISION
The Examiner’s rejections of claims 1, 3—9, and 12—18 under
35 U.S.C. § 103(a) are 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)(l)(iv).
AFFIRMED
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