Ex Parte Schwartz et al

Patent Trial and Appeal Board

Sep 28, 2018

13308519 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/308,519 11/30/2011
33726 7590 10/02/2018
Xerox-PARC
c/o BEVER, HOFFMAN & HARMS, LLP
Attn: Carrie Reddick, Office Manager
18486 Spring Valley Drive
Grass Valley, CA 95945
FIRST NAMED INVENTOR
David Eric Schwartz
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.
20110006Q-US-NP 2863
EXAMINER
ATTEY,JOELM
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
10/02/2018 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):
creddick@beverlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ERIC SCHWARTZ and
RANJEET BALAKRISHNA RAO
Appeal2017-009875
Application 13/308,519
Technology Center 3700
Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and
JEREMY M. PLENZLER, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge REIMERS
Opinion Dissenting filed by Administrative Patent Judge PLENZLER
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David Eric Schwartz and Ranjeet Balakrishna Rao (Appellants)
appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject
claims 1--4 and 6-20. Claim 5 has been canceled. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2017-009875
Application 13/308,519
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to microchannel heat pipes and
devices that include microchannel heat pipes." Spec. ,r 1, Figs. 1, 3B.
Claims 1, 11, and 18 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A microchannel heat pipe disposed on a substrate, the
microchannel heat pipe comprising:
an elongated pipe body including first and second
elongated side wall portions that are disposed on a surface of the
substrate and separated by an elongated central channel, and an
upper wall portion extending between said first and second
elongated side wall portions over the elongated central channel,
whereby the elongated central channel is defined by the first and
second elongated side wall portions, the upper wall portion and
a portion of the substrate surface extending between said first and
second elongated side portions; and
a working fluid encapsulated inside the elongated central
channel,
wherein the first and second elongated side wall portions
and the upper wall portion comprise an integral structure
consisting of a common hardened extrudable material, and
wherein the common hardened extrudable material
comprises at least one of a paste and an ink including one or more
of silver, copper, nickel, tin, aluminum, steel, alumina, silicates,
glasses, carbon black, polymers and wax.
REJECTIONS
I. Claims 1, 4, 8, and 9 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Kroliczek (US 6,915,843 B2, issued July 12, 2005),
Trautman (US 2010/0254090 Al, published Oct. 7, 2010), and Masseth (US
6,799,628 Bl, issued Oct. 5, 2004).
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II. Claims 2 and 3 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Kroliczek, Trautman, Masseth, and Weichold (US
5,179,043, issued Jan. 12, 1993).
III. Claim 6 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Kroliczek, Trautman, Masseth, and Zhao (US 2009/0159243 Al, published
June 25, 2009).
IV. Claim 7 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Kroliczek, Trautman, Masseth, and McCullough (US 6,478,997 B2, issued
Nov. 12, 2002).
V. Claim 10 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Kroliczek, Trautman, Masseth, and Luo (US 2004/0188068 Al,
published Sept. 30, 2004).
VI. Claims 11 and 14--16 under 35 U.S.C. § I03(a) as unpatentable over
Kroliczek, Trautman, Masseth, and McCullough.
VII. Claims 12 and 13 under 35 U.S.C. § I03(a) as unpatentable over
Kroliczek, Trautman, Masseth, McCullough, and Weichold.
VIII. Claim 17 under 35 U.S.C. § I03(a) as unpatentable over Kroliczek,
Trautman, Masseth, McCullough, and Luo.
IX. Claims 18-20 under 35 U.S.C. § I03(a) as unpatentable over
Kroliczek, Trautman, Masseth, and Hsieh (US 2010/0212871 Al, published
Aug. 26, 2010).
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Appeal2017-009875
Application 13/308,519
ANALYSIS
Rejection I
Claims 1, 4, 8, and 9
Independent claim 1 is directed to a microchannel heat pipe including
"an elongated pipe body including first and second elongated side wall
portions that are disposed on a surface of the substrate and separated by an
elongated central channel," wherein "the elongated central channel is
defined by the first and second elongated side wall portions, the upper wall
portion and a portion of the substrate surface extending between said first
and second elongated side portions." Appeal Brief 28, Claims App.
(hereinafter "Br.") (filed Oct. 24, 2016). The Examiner finds that Kroliczek
discloses "an elongated central channel (FIG. 8, location of 108)" defined by
first and second elongated side wall portions 212 and 214, the upper wall
portion 102 and a base element 104 extending between said first and second
elongated side portions. Final Act. 2. 1 The Examiner further finds that
Kroliczek does not disclose, inter alia, "the heat pipe formed on a substrate."
Id. at 3. The Examiner turns to Trautman for this limitation. Final Act. 3
( citing Trautman ,r 43, Fig. 6B). The Examiner concludes it would have
been obvious "to have modified Kroliczek to incorporate the teachings of
Trautman ... such that the substrate surface has a channel that defines the
central channel ( where the wick is Para. 0008) with the upper wall portion."
Final Act. 3--4.
Appellants contend that "none of these references teach or suggest the
half-pipe-type body structure attached to a substrate arrangement recited in
Claim 1." Br. 14. In particular, Appellants contend that the Examiner's
1 Final Office Action (hereinafter "Final Act.") (dated Mar. 22, 2016).
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Application 13/308,519
"contention appears to be that it would have been obvious to remove liquid
manifold 212 from Kroliczek's 'wick assembly 202' and somehow attach[]
them to a substrate" and that this contention "is unsupported by the
teachings of Kroliczek." Br. 14. Appellants further contend that Trautman
"fails to teach or suggest the 'elongated pipe body ... disposed on a surface
of the substrate' as recited in Claim 1." Id. at 15.
In response to Appellants' contentions, the Examiner states that ( 1)
"the rejection relies on combining Kroliczek with Trautman (which teaches
the heat pipe being formed on a substrate) and Masseth"; (2) "[ w ]hile
Trautman was not relied upon for the elongated shape of the heat pipe (this
was taught by Kroliczek) it clearly teaches the heat pipe formed on a
substrate"; and (3) "formation of a heat pipe on a substrate is Appellant[s]
admitted prior art per their own specification (para. 0006 of the PG Pub)."
Ans. 13 (citing Final Act. 7; Trautman ,r 43).
We agree with the Examiner that Trautman discloses that a heat pipe
may be "formed in or on a supporting substrate or surface." Trautman ,r 43;
see also Final Act. 3; Ans. 13. We further acknowledge the Examiner's
position that "formation of a heat pipe on a substrate is well known in the
art." See Final Act. 7; see also Ans. 13. However, merely because
formation of a heat pipe on a substrate is well known in the art does not
mean that it would have been obvious to combine the teachings of
Kroliczek, Trautman, and Masseth to arrive at the subject invention. KSR
Int'!. Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) ("[A] patent composed
of several elements is not proved obvious merely by demonstrating that each
of its elements was, independently, known in the prior art.").
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Application 13/308,519
In this case, the Examiner cites to all of Figure 8 of Kroliczek as
constituting the claimed "elongated pipe body." Final Act. 2. Further, the
Examiner fails to apprise us as to what element of Kroliczek constitutes the
"substrate." As the Examiner is proposing to modify Kroliczek such that the
"elongated pipe body is disposed on the surface of the substrate," it stands to
reason that the Examiner must designate an element in Kroliczek that
constitutes the "substrate." Further, the Examiner fails to apprise us how
Kroliczek is being modified in view of the teachings of Trautman such that
the elongated pipe body of Kroliczek is disposed on the surface of the
substrate. See Br. 14.
Moreover, even if it were the Examiner's position that it would have
been obvious to modify Kroliczek in view of the teachings of Trautman
"such that the substrate surface [ of Kroliczek] has a channel that defines the
central channel (where the wick is Para. 0008) with the upper wall portion."
( (Final Act. 3--4) ( emphasis added)), that conclusion is belied by the
teachings of Kroliczek. Such a proposed modification would fly directly in
the face of a stated object of Kroliczek's contribution to the art, and is
directly contrary to the direction taken in the Kroliczek disclosure, which
purposely provides elimination of "the central flow channel." See Kroliczek
9:37--44. As such, Kroliczek teaches away from the proposed modification
and the claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) (reference teaches away from a combination when it criticizes,
discredits, or otherwise discourages the proposed modification); In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
The Examiner thus has not established a prima facie case of
obviousness. Accordingly, we do not sustain the Examiner's rejection of
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claims 1, 4, 8, and 9 as unpatentable over Kroliczek, Trautman, and
Masseth.
Rejections II-IX
Claims 2, 3, 6, 7, and 10---20
Independent claims 11 and 18 require similar limitations to those
discussed above for claim 1. Appeal Br. 30, 31-32, Claims App. The
Examiner's obviousness rejections of claims 2, 3, 6, 7, and 10-20 are each
based on the same unsupported findings discussed above with respect to
independent claim 1. See Final Act. 5-14. The Examiner does not rely on
Weichold, Zhao, McCullough, Luo, or Hsieh to remedy the deficiencies of
Kroliczek and Trautman. Accordingly, for reasons similar to those
discussed above for claims 1, we do not sustain the Examiner's obviousness
rejections of claims 2, 3, 6, 7, and 10-20.
DECISION
We REVERSE the decision of the Examiner to reject claims 1--4 and
6-20 under 35 U.S.C. § 103(a).
REVERSED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ERIC SCHWARTZ and
RANJEET BALAKRISHNA RAO
Appeal2017-009875
Application 13/308,519
Technology Center 3700
Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge, dissenting.
Because I would determine that the Examiner has established a prima
facie case of unpatentability of claim 1, and Appellants have failed to
identify error in that rejection, I respectfully dissent.
Claim 1 requires an "elongated central channel ... defined by the first
and second elongated side wall portions, the upper wall portion and a portion
of the substrate surface extending between said first and second elongated
side portions." The Examiner cites the location ofKroliczek's wick 108 as
corresponding to the "elongated central channel" recited in claim 1 (i.e., the
Examiner does not cite the wick, itself, as corresponding to the "elongated
central channel"). Final Act. 2. Figure 8 of Kroliczek is reproduced below
for reference.
Appeal2017-009875
Application 13/308,519
204
I
I
108
214
}
FIG.8
Figure 8 of Kroliczek is "an exploded view of a fiat capillary evaporator."
Kroliczek, 7:6-7. Kroliczek explains that "the wick [108] is completely
enclosed by the upper and lower plates 102, 104, side bars 204, 206, and the
manifolds 214, 216." Id. at 11:23-25. Accordingly, I agree that this
structure in Kroliczek defines an elongated central channel partially
occupied by wick 108. Notably, Appellants do not dispute this finding. See
Appeal Br. 14. Rather, Appellants contend that "Kroliczek fails to teach or
suggest the 'elongated pipe body ... disposed on a surface of the
substrate.'" Id. Appellants' argument is not persuasive because, as
Appellants acknowledge on the same page of their brief (id.), the Examiner
does not rely on Kroliczek for such a teaching (see Final Act. 3).
The Examiner notes that "Kroliczek does not teach, but Trautman
does teach the heat pipe formed on a substrate (Para. 0043)," and proposes
modifying Kroliczek's teachings accordingly. Final Act. 3. Appellants do
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not dispute the Examiner's rationale for the proposed modification, but
contends that "[a]t least because the heat pipe and wick completely surround
the cavity, Trautman clearly fails to teach or suggest the 'elongated pipe
body ... disposed on a surface of the substrate' as recited in Claim 1."
Appeal Br. 15. Appellants, however, fail to offer any, let alone persuasive,
explanation, as to why Trautman's express statement that the "heat pipe ...
can ... be formed in or on a supporting substrate or surface" fails to teach a
heat pipe formed on a substrate, as the Examiner finds. Trautman ,r 43.
Accordingly, Appellants do not identify error in the Examiner's finding
regarding Trautman teaching a heat pipe formed on a substrate, and does not
rebut the Examiner's rationale for modifying Kroliczek's teachings
accordingly.
The majority faults the Examiner's rejection because "the Examiner
fails to apprise us as to what element of Kroliczek constitutes the
'substrate"' (Maj. Op. 6), but, as noted above, the Examiner cites "Trautman
... teach[ing] the heat pipe formed on a substrate (Para. 0043)," and
proposes modifying Kroliczek's teachings accordingly. Final Act. 3. The
majority additionally faults the Examiner's rejection because "the Examiner
fails to apprise us how Kroliczek is being modified in view of the teachings
of Trautman such that the elongated pipe body of Kroliczek is disposed on
the surface of the substrate" (Maj. Op. 6), but, again, the Examiner explains
that the proposed modification simply includes forming Kroliczek's elongate
channel structure housing wick 8 partially from a substrate surface. See
Final Act. 3--4 ("the substrate surface [ from Trautman] ... with the upper
wall portion as discussed above" is what forms "a channel that defines the
central channel ... where the wick is"). Finally, I do not agree with the
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majority's characterization of Kroliczek as teaching away from the
Examiner's proposed modification. Maj. Op. 6. The Examiner's proposed
modification does not to eliminate any channel in Kroliczek. Rather, it
simply uses a substrate, as taught by Trautman, to form a wall of Kroliczek's
existing channel that houses wick 8.
For at least these reasons, neither Appellants nor the Majority identify
reversible error in the Examiner's rejection.
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