Ex Parte Norley et alDownload PDFPatent Trial and Appeal BoardJan 19, 201713487484 (P.T.A.B. Jan. 19, 2017) Copy Citation 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. P1083-3 9164 EXAMINER DUCHENEAUX, FRANK D ART UNIT PAPER NUMBER 1788 MAIL DATE DELIVERY MODE 13/487,484 06/04/2012 70329 7590 01/19/2017 GrafTech International Holdings, Inc. Tim Krogh 982 Keynote Circle Brooklyn Heights, OH 44131 Julian Norley 01/19/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JULIAN NORLEY, MARTIN DAVID SMALC, JOSEPH PAUL CAPP, and TIMOTHY CLOVESKO Appeal 2015-001564 Application 13/487,484 Technology Center 1700 Before TERRY J. OWENS, ELIZABETH M. ROESEL, and JENNIFER R. GUPTA, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 3—8, and 11. An oral hearing was held on January 12, 2017. We have jurisdiction under 35 U.S.C. § 6(b).2 We AFFIRM. 1 GrafTech International Holdings Inc. is identified as the real party in interest. App. Br. 1. 2 In our opinion below, we reference the Specification filed June 4, 2012 (Spec.), the Final Office Action mailed February 20, 2014 (Final Action), the Appeal Brief filed July 21, 2014 (Br.), and the Examiner’s Answer mailed September 10, 2014 (Ans.). Appeal 2015-001564 Application 13/487,484 STATEMENT OF THE CASE Claimed Invention Appellants claim a heat spreader for use in a display panel having a plurality of heat sources. Br. 20 (claim 1). According to the Specification, the heat spreader is useful for reducing temperature differences among the light-emitting discharge cells of a plasma display panel. Spec. Tflf 4—9. Claim 1 is the sole independent claim and is illustrative of the subject matter on appeal. Claim 1 is reproduced below from Appellants’ Claims Appendix, with bold added for emphasis: 1. A heat spreader for use in a display panel having a plurality of heat sources, comprising: a heat spreader composite, which comprises a heat spreader material comprising at least one sheet of compressed particles of exfoliated graphite, an adhesive on the heat spreader material and a release material positioned such that the adhesive is sandwiched between the heat spreader material and the release material, wherein the release material and adhesive are selected such that the release material is removed at a rate of release that prevents delamination of the graphite heat spreader material wherein the release material and adhesive provide an average release load of the release material of no greater than 40 grams per centimeter at a release speed of one meter per second and further wherein the release material and adhesive allow for the heat spreader composite to facilitate a high volume manufacturing process of display panels having a plurality of heat sources. Br. 20. 2 Appeal 2015-001564 Application 13/487,484 Ando Kawashima Tzeng Takizawa Kobayashi References3 US 5,334,686 US 6,090,482 US 6,245,400 B1 US 2003/0008140 A1 WO 02/064362 A1 Aug. 2, 1994 Jul. 18, 2000 June 12, 2001 Jan. 9, 2003 Aug. 22, 20024 Rejection The Examiner maintains the rejection of claims 1, 3—8, and 11 under 35 U.S.C. § 103(a) as unpatentable over Tzeng in light of the evidence provided by Takizawa, Ando, Kawashima, and Kobayashi. Final Action 5— 9. ANALYSIS Appellants’ arguments are directed to independent claim 1 only. No separate substantive arguments are presented concerning the other appealed claims. See Br. 8—18. We, therefore, limit our discussion to claim 1 and decide the appeal as to all claims on the basis of claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Tzeng teaches a heat spreader and discloses most of the limitations of claim 1. Final Action 5—9. Regarding the recitation of “an adhesive on the heat spreader,” the Examiner finds that Tzeng’s adhesive primer coating 12 and pressure sensitive adhesive (“PSA”) coating 13 together teach an adhesive layer. Id. at 6. The Examiner finds that, in view of the teachings of Takizawa, Ando, Kawashima, and 3 For each reference, we identify the first-named or sole inventor, as applicable. 4 The Examiner relies on US 7,419,708 B2 as an English language equivalent of Kobayashi. 3 Appeal 2015-001564 Application 13/487,484 Kobayashi (hereinafter the “Secondary References”), it would have been obvious to select adhesive components, proportions, tackifiers, thickness, and release control agents to provide the claimed release load. Id. at 7—8. The Examiner finds the limitations regarding “use in a display panel having a plurality of heat sources” and facilitating a high volume manufacturing process are merely intended uses and do not result in any structural difference between the claimed invention and the prior art. Id. at 8—9. Appellants argue that the Examiner improperly interprets claim 1 as reciting “an adhesive layer” and that “an adhesive” refers to one adhesive and not a combination of adhesive layers. Br. 8—10. Appellants further argue that neither Tzeng’s adhesive primer coating 12, nor its PSA coating 13, nor the two of them together, discloses “an adhesive layer on the heat spreader material,” as recited in claim 1. Id. at 9, 11—13. Citing an inventor declaration,5 Appellants argue that the claimed combination was discovered only after conducting a large amount of experimentation and that the cited art does not teach or suggest how to balance the competing factors and issues at play in high volume manufacturing processes. Id. at 13—14. In addition, Appellants argue that the Secondary References do not teach or suggest how to use an adhesive on graphite. Id. at 15. Upon consideration of the evidence presented in this Appeal and each of Appellants’ contentions, we are not persuaded that Appellants identity reversible error, and we find that a preponderance of evidence supports the Examiner’s conclusion that the subject matter of Appellants’ claims is unpatentable over the applied prior art. We sustain the rejection of claim 1 based on the Examiner’s findings of fact, conclusions of law, and rebuttals 5 Declaration of Martin Smalc filed December 6, 2013 (“Smalc Deck”). 4 Appeal 2015-001564 Application 13/487,484 to Appellants’ arguments, as expressed in the Answer. We add the following for emphasis. The Examiner does not err in construing the phrase, “an adhesive on the heat spreader,” in claim 1 as encompassing one or more adhesive layers or coatings on the heat spreader. Final Action 6; Ans. 3—4, 6. Our construction is supported by the claim language, which recites that the adhesive is “on the heat spreader material” and “sandwiched between the heat spreader material and the release material” and that the heat spreader material is not delaminated when the release material is removed. Br. 20 (claim 1). These descriptions plainly convey that the adhesive is in the form of a layer or coating positioned between the heat spreader material and the release material. Our construction is further supported by the Specification, which describes “a layer of adhesive” on the graphite heat spreader. Spec. 173; see also id. 174 (“an adhesive coated graphite sheet”), id. Tflf 87—94 (describing tests of sample graphite heat spreaders “coated” with various adhesives). Appellants argue that “a” or “an” can be interpreted as “one or more,” but that Appellants’ Specification does not support interpreting “an adhesive” to mean a combination of adhesive layers. Br. 9—10 (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Appellants’ argument is contrary to the Federal Circuit’s guidance regarding the meaning of an indefinite article in open-ended “comprising” claims. In Baldwin, the court explains: That “a” or “an” can mean “one or more” is best described as a rule, rather than merely as a presumption or even a convention. The exceptions to this rule are extremely limited: a patentee must “evince[] a clear intent” to limit “a" or “an” to “one.’ . . . 5 Appeal 2015-001564 Application 13/487,484 An exception to the general rule that “a” or “an” means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule. Id., 512 F.3d at 1343 44. Applying the standard enunciated in Baldwin, Appellants do not persuade us that the Specification necessitates a departure from the rule that “an” means “one or more.” More specifically, neither the repeated use of “adhesive” in the singular, nor the characterization of an additional coating step as disadvantageous (Spec. 118) convinces us that “an adhesive” in Appellants’ claim 1 is limited to a single adhesive layer. Under a correct claim construction, we are not persuaded that the Examiner errs in finding that Tzeng’s adhesive primer coating 12 and PSA coating 13 together teach “an adhesive layer on the heat spreader material,” as recited in claim 1. Final Action 6. Appellants address Tzeng’s adhesive layers individually, arguing that the PSA coating is not “on the heat spreader material” and that the primer coating “will not provide suitable adherence for the release layer.” Br. 11—12. Appellants’ arguments are not persuasive because they do not adequately address the Examiner’s finding that the combination of Tzeng’s adhesive primer coating and PSA coating are “an adhesive on the heat spreader material,” as recited in claim 1. More specifically, Appellants do not identify error in the Examiner’s finding that, taken together, Tzeng’s adhesive layers are “on the heat spreader material” and “sandwiched between the heat spreader material and the release material,” so as to provide releasable adherence to the release material. Final Action 6; Ans. 6, 10; Tzeng, Abstract, 2:15—34, 4:58—5:4, 6:19-29, Fig. 1. 6 Appeal 2015-001564 Application 13/487,484 We have considered the Smalc Declaration and are not persuaded that it identifies error in the Examiner’s findings or outweighs the evidence relied upon by the Examiner. More specifically, Appellants do not identify error in the Examiner’s finding that the data presented in the Smalc Declaration are not commensurate with the scope of claim 1. Ans. 12—14. Nor do Appellants identify error in the Examiner’s finding that the properties relied upon to show patentability—release load and minimum lap shear adhesion strength—are either inherent properties of the prior art or would have resulted from the application of routine skill in the selection of adhesive components, proportions, tackifiers, thickness, and release control agents. Compare Smalc Deck 113, with Final Action 8; Ans. 15—16. Appellants do not identify error in the Examiner’s findings regarding Takizawa, Ando, Kawashima, or Kobayashi, which were relied upon to teach relationships between the properties recited in the claims and the selection of adhesive components, proportions, tackifiers, thickness, and release control agents. Final Action 8—9; Ans. 15—16. Accordingly, the weight of the evidence supports the Examiner’s conclusion of obviousness. Therefore, the § 103(a) rejection is sustained. CONCLUSION OF LAW AND DECISION The decision of the Examiner rejecting claims 1, 3—8, and 11 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)(1). AFFIRMED 7 Copy with citationCopy as parenthetical citation