Ex Parte Norley et al

Patent Trial and Appeal Board

Jan 19, 2017

13487484 (P.T.A.B. Jan. 19, 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.
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.
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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”).
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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.’ . . .
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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.
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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
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