Ex Parte Wood et al

Patent Trial and Appeal Board

Aug 30, 2017

12342466 (P.T.A.B. Aug. 30, 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.
12/342,466 12/23/2008 Trevor Howard Wood 220905-1 2716
6147 7590 09/01/2017
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
EXAMINER
RUBY, TRAVIS C
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney @ ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TREVOR HOWARD WOOD, TODD GARRETT WETZEL,
JONATHAN GLENN LUEDKE, and THOMAS MICHAEL TUCKER
Appeal 2016-007468
Application 12/342,466
Technology Center 3700
Before THOMAS F. SMEGAL, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 1—4, 7—9, 19—22, and 24—36. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM—IN—PART.
1 Appellants identify the real party in interest as the General Electric
Company. Appeal Br. 2.
2 Appeal is taken from the Non-Final Office Action dated May 18, 2015
(“Non-Final Act.”).
Appeal 2016-007468
Application 12/342,466
CLAIMED SUBJECT MATTER
Claims 1,19, and 25 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A surface cooler comprising:
an inner layer; and
an outer layer disposed adjacent to the inner layer and
comprising a metal foam, a carbon foam, or a combination
thereof, wherein the metal foam, the carbon foam or a
combination thereof is configured to augment heat transfer and
enhance acoustic absorption, wherein the outer layer comprises
a plurality of fins and the plurality of fins comprises a metal
foam, a carbon foam, or a combination thereof.
REJECTIONS
I. Claims 28 and 29 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
II. Claims 1—4, 7—9, 19-22, and 28—36 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Hall (US 6,390,181 Bl; issued May
21, 2002) and Wirtz (US 2002/0108743 Al; published Aug. 15, 2002).
III. Claim 24 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Hall, Wirtz, and Adamson (US 3,542,152; issued Nov. 24,
1970).
IV. Claims 25—27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Adamson, Hall, and Wirtz.
ANALYSIS
Rejection I
The Examiner determines claims 28 and 29 are indefinite because the
claim term “about” (i) is a relative term; (ii) is not defined by the claim;
(iii) a standard for ascertaining the requisite degree is not provided by
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Appellants’ Specification; and (iv) one of skill in the art would not be
reasonably apprised of the scope of the invention. Non-Final Act. 3.
Appellants argue that “[t]he term ‘about’ has a well understood
meaning to one of ordinary skill in the art” and that “Appellants are using
the term ‘about’ according to its ordinary and customary meaning of ‘largely
but not wholly that which is specified.’” Appeal Br. 6 (citations omitted).
Appellants submit that “Appellants’ use of ‘about’ as an approximation
would be clear to one of ordinary skill in light of the disclosure.” Id. at 7.
The Examiner responds that the Specification “fails to limit the scope
of ‘about’ to any quantifiable range of variance.” Ans. 2.
“Definiteness problems often arise when words of degree are used in a
claim. That some claim language may not be precise, however, does not
automatically render a claim invalid.” Seattle Box Co., Inc. v. Indus.
Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). The question
becomes whether one of ordinary skill in the art would understand what is
claimed when the claim is read in light of the specification. Id. Here,
although Appellants have provided a generic definition for the claim term
“about,” Appellants have not provided a standard for approximating a
thermal conductivity “in a range of from about 150 W/m*K to about 390
W/m*K,” as recited in claim 28, or “of about 189 W/m*K,” as in
claim 29, for example, from the Specification. Appeal Br. 11—12 (Claims
App.); see, e.g., Spec. 1j 33.
Thus, we sustain the Examiner’s rejection of claims 28 and 29 under
35 U.S.C. § 112, second paragraph, as being indefinite.
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Rejection II
Regarding independent claim 1, the Examiner finds, inter alia, that
Hall’s cooling module 71, including an outer layer comprised of a plurality
of fins, substantially corresponds to the claimed surface cooler. Non-Final
Act. 4 (citing Hall, Fig. 5). The Examiner determines that “Hall fails to
specifically teach . . . wherein the plurality of fins comprises a metal foam, a
carbon foam, or a combination thereof,” as claimed, and relies on Wirtz for
teaching an outer layer of a heat sink apparatus (i.e., porous media element
30) that “can be a carbon foam.” Id. (citing Wirtz ®jfj[ 50, 51, Figs. 1—5).
The Examiner reasons that
[t]he increased surface area of the porous foam will increase the
heat transfer of the outer layer. Further, the porous structure of
the foam will naturally enhance acoustic absorption since the
pores will reflect less sound than a solid surface would). When
the foam of Wirtz is combined with the finned outer layer of Hall,
the resulting structure would be a finned outer laver formed out
of metal or carbon foam.
Id. at 4—5. The Examiner further reasons that it would have been obvious
“to select the outer layer of Hall to be a carbon foam or metal foam in order
to provide increased heat transfer while reducing weight.” Id. at 5.
Appellants argue that the Examiner’s conclusion of obviousness “is
not based on any evidence, but rather hindsight reconstruction of thi
inventions.” Appeal Br. 8. In support, Appellants submit that Hall discloses
“a tungsten carbide and polycrystalline diamond, densely finned, heat
dissipating module,” that “is tough, has high thermal conductivity, high
density micro fins for efficient convection into a cooling fluid,” wherein
“[t]he thin, high density fi ns are capable of withstanding the dynami cs
associated with thermal cycling of the IC [(integrated circuit )]device and the
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Application 12/342,466
pressures and flows of a convective cooling fluid in an actively cooled
thermal management system” and “permit efficient cooling within the
physical confines of the integrated circuit device,” Id. at 7 (citing Hall 1:10-
11, 57—59, 2:5—9, 4:40-41). Appellants conclude that “[this] non-traditional
fin configuration ... is made possible because of the integral strength of the
tungsten carbide, which allows it to be formed into very fine shapes and yet
retain its rigidity.” Id. (quoting Hall 7:12—17).
Appellants also argue that
Wirtz does not disclose foam fins, or a foam inner layer as
claimed. Wirtz discloses that the base plate 26 and fins 28 are
formed as [an] integral piece by conventional molding or
extrusion techniques. The foam of Wirtz is the porous media
elements 30 that are disposed between adjacent fins 28.,.. Thus,
even if [Hall and Wirtz] were combined, the combination would
not result in the claimed inventions.
Appeal Br. 8 (citing Wirtz 47, 48).
The Examiner responds that there is motivation to combine Hall and
Wirtz, because “Hall teaches a surface cooler while Wirtz teaches an
improved cooler with a porous media to increase the heat transfer surface
area of the cooler,” and “[t]hus, one of ordinary skill in the art would
recognize that the porous media of Wirtz could be used to improve the heat
transfer capabilities of Hall by increasing the surface area of Hall.” Ans. 3.
The Examiner determines that “Wirtz further teaches that the layers can be
formed of a foam,” and therefore, the combination results in the claimed
subject matter. Id. at 4 (emphasis added).
Appellants reply that the Examiner fails to address Hall’s use of micro
fins formed as highly dense structures, or that “there is no reasonableo -J
expectation of success for such a modification.” Reply Br. 1—2. Appellants
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argue that the Examiner’s “assertion that one of ordinary skill in the art
‘could have’ combined [Hall and Wirtz] is not more persuasive tha[n]
Appellants’ arguments that one of ordinary skill in the art would not have
combined [Hall and Wirtz].” Id. at 2 (citations omitted). Appellants also
argue that the Examiner fails to adequately address Appellants’ argument
that combining Hall and Wirtz would result in a modifying Hall to include
porous media elements (or foam) between Hall’s fins—not to construct the
Hall’s fins from foam.
“[Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
The Examiner has the initial burden of supplying the requisite factual basis
and may not, because of doubts that the invention is patentable, resort to
speculation, unfounded assumptions, or hindsight reconstruction to supply
deficiencies in the factual basis. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967).
We agree with Appellants that the Examiner has not met the
applicable burden in this case, but rather, improperly relied on hindsight
reasoning. As Appellants’ arguments set forth supra, Hall specifically
teaches the use of thin, high-density, tungsten carbide and polycrystalline
diamond micro-fins for efficient cooling within the physical confines of an
IC device to save cost, space and weight—“[a] non-traditional fin
configuration . . . made possible because of the integral strength of the
tungsten carbide.” Hall 7:12—15 (emphasis added). Further, Wirtz only
teaches the use of a porous media element (such as thermally conducting
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foam materials) as a heat sink between fins, and not as a structural
replacement for fins in the context of ICs. See, e.g., Wirtz, Abstract, If8]} 47,
48, 51. Thus, the Examiner’s proposed modification to replace Hall’s
micro-fins with Wirtz’s porous foam media lacks evidentiary support, and
instead, appears gleaned from Appellants’ Specification. In other words, we
do not agree that one skilled in the art would be led to modify Hall in view
of Wirtz to arrive at the claimed surface cooler for the reasons given by the
Examiner.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1 and claims 2-4, 7—9, and 28—33 depending therefrom,
under 35 U.S.C. § 103(a) as unpatentable over Hall and Wirtz. The
Examiner relies on the same findings and rationale with respect to Hall and
Wirtz in the rejection of independent claim 19 as relied upon in the rejection
of independent claim 1, and therefore, for the same reasons set forth supra,
we also do not sustain the Examiner’s rejection of independent claim 19 and
claims 20-22 and 34-36 depending therefrom, under 35 U.S.C. § 103(a), as
unpatentable over Hall and Wirtz. See Non-Final Act. 7—8.
Rejections III and IV
Regarding the rejection of claims 24—27, Appellants argue that ITall is
non-analogous art, and therefore, improperly relied on by the Examiner.
Appeal Br. 8. In support, Appellants submit that “common sense would
dictate that in considering how to cool a turbo machine one of ordinary skill
in the art would not look to heat exchangers for integrated circuits.” Id. at 9.
The analogous art test requires the Examiner show that a reference is either
in the field of Applicants’ endeavor or is reasonably pertinent to the problem
with which the inventor was concerned in order to rely on that reference as a
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basis for rejection. See In re Kahn, 441 F.3d 977, 986—87 (Fed. Cir. 2006)
(citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). Here, the
Examiner correctly determines that Hall, which addresses the problem of
surface cooling, is reasonably pertinent to a particular problem faced by
Appellants, namely, surface coolers for heat exchange. See, e.g., Spec, % 4.
Thus, Flail is analogous to the claimed subject matter under the second prong
of the analogous art test.
Notwithstanding, because we do not sustain the Examiner’s rejection
of independent claim 19, we also do not sustain the Examiner’s rejection of
claim 24, which depends from claim 19. Further, the Examiner relies on the
same findings and rationale with respect to Hall and Wirtz in the rejection of
independent claim 25 as relied upon in the rejection of independent claim 1,
and the Examiner’s reliance on Adamson for teaching the use of surface
enhancements along an outer wall of a turbomachine does not cure the
deficiencies in the Examiner’s findings and reasoning. See Non-Final Act.
13—14. Therefore, for the same reasons set forth supra, we also do not
sustain the Examiner’s rejection of independent claim 25 and claims 26 and
27 depending therefrom, under 35 IJ.S.C. § 103(a), as unpatentable over
Flail, Wirtz, and Adamson.
DECISION
The Examiner’s rejection of claims 28 and 29, under 35 U.S.C. § 112,
second paragraph, is affirmed.
The Examiner’s rejection of claims 1—4, 7—9, 19—22, and 24—36,
under 35 U.S.C. § 103(a), is reversed.
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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-IN—PART
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