Michael H. Bunyan et al.

Patent Trials and Appeals BoardAug 22, 2019

13384284 - (D) (P.T.A.B. Aug. 22, 2019)

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. 13/384,284 02/10/2012 Michael H. Bunyan PA4C0158WOUSA 3737 49458 7590 08/22/2019 DON W. BULSON (PARK) RENNER, OTTO, BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE / 19TH FLOOR CLEVELAND, OH 44115 EXAMINER SANDERS, JAMES M ART UNIT PAPER NUMBER 1743 NOTIFICATION DATE DELIVERY MODE 08/22/2019 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): ipdocket@rennerotto.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL H. BUNYAN, VICTORIA SANTA FE, and JONATHAN BERGIN ____________________ Appeal 2018-008983 Application 13/384,284 Technology Center 1700 ____________________ Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134(a) from the rejections of claims 1–24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In our Opinion, we refer to the Specification filed January 16, 2012 (“Spec.”); the Final Action dated November 10, 2016 (“Final Act.”); the Appeal Brief filed August 6, 2017 (“Appeal Br.”); the Examiner’s Answer dated July 25, 2018 (“Ans.”); and the Reply Brief filed September 21, 2018 (“Reply Br.”). 2 Appellants identify Parker-Hannifin Corp. as the real party in interest. Appeal Br. 2. Appeal 2018-008983 Application 13/384,284 2 The claims are directed to thermally and/or electrically-conductive compounds, which are used to fill gaps between electronic components and adjacent heat sinks or circuit boards. Independent claim 1, reproduced below from the Claims Appendix of the Appeal Brief, illustrates the claimed subject matter: 1. A method of filling a space between a first and a second surface to form an assembly, the method comprising the steps of: (a) dispensing an amount of a fluent, form-stable compound comprising an admixture of: (I) a cured polymer gel component; (II) a curable resin component; and (III) a particulate filler component; (b) prior to or following step (a), forming the space between the first and the second surface, the space being at least partially filled by at least a portion of the compound dispensed in step (a); and (c) curing the curable resin component to form a conformable layer in the space. REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Zhong et al. (“Zhong”) US 2007/0241303 A1 Oct. 18, 2007 Bunyan et al. (“Bunyan”) US 2003/0222249 A1 Dec. 4, 2003 Kalinoski US 5,910,524 June 8, 1999 REJECTIONS The Examiner maintains and Appellants seek review of the following rejections under 35 U.S.C. § 103(a): (1) claims 1, 3–12, 14, 16, 18, 20, and Appeal 2018-008983 Application 13/384,284 3 21 over Zhong; (2) claims 2, 13, 15, and 17 over Zhong in view of Bunyan; and (3) claims 19 and 22–24 over Zhong in view of Kalinoski. Final Act. 2– 8; Appeal Br. 2–9. OPINION The Examiner finds that Zhong, either alone or in combination with Bunyan or Kalinoski, teaches all limitations of claims 1–24. Final Act. 2–8. Appellants do not argue any of the claims separately. Appeal Br. 2–9; Reply Br. 2–3. We select claim 1 as representative of claims 1–24. 37 C.F.R. § 41.37(c)(1)(iv). Claims 2–24 will stand or fall with claim 1. The Examiner finds that Zhong discloses or suggests each step of the claimed method of filling a space between two surfaces, thereby forming an assembly. Final Act. 2; Ans. 4. In particular, the Examiner finds that Zhong teaches dispensing a mixture of a cured polymer gel and a particulate filler to fill a formed space. Final Act. 2 (citing Zhong ¶¶ 78–81). The Examiner finds that, although Zhong does not explicitly disclose that the dispensed mixture further comprises a curable resin, which is subsequently cured to form a conformable layer in a pre-formed space, Zhong teaches adding a phase change material to the mixture. Final Act. 3 (citing Zhong ¶ 81); see also Zhong ¶10 (“the polymer matrix is selected from a polyolefin, . . . a curable material selected from the group consisting of polydimethylsiloxanes, . . . and combinations thereof.”). The Examiner finds Zhong teaches that the phase change material may include polyalkylsiloxanes, which include curable polydimethylsiloxanes. Ans. 9 (citing Zhong ¶ 73). Based on Zhong’s disclosure that “[t]he material can be provided as a dispensable liquid paste to be applied by dispensing methods Appeal 2018-008983 Application 13/384,284 4 and then cured as desired,” the Examiner finds Zhong suggests that this material comprises a curable resin. Ans. 9 (citing Zhong ¶ 81). Appellants argue Zhong does not teach that the phase change material comprises a curable resin. Appeal Br. 5. Rather, Appellants argue Zhong merely teaches that if a thermally conductive composition comprising a polymer matrix is not curable, the composition may be a phase change material or a gel. Id. (citing Zhong ¶ 73); see also Reply Br. 3. Though Appellants admit Zhong discloses that a phase change material may be added to a crosslinked, i.e., cured, rubber-resin mixture, Appellants argue that there is no evidence or implication that the phase change material itself includes a curable resin. Appeal Br. 6; Reply Br. 2. Appellants further argue that Zhong neither discloses nor implies that the thermally conductive material containing the cured gel and phase change material is subsequently cured after application to a device. Appeal Br. 6; Reply Br. 2. Thus, Appellants conclude that Zhong cannot be relied on to support the rejection of claim 1. Appeal Br. 7. We find Appellants’ arguments unpersuasive of error by the Examiner. Zhong explicitly discloses that: the crosslinkable thermally conductive material is formed by crosslinking the saturated rubber compound and the amine resin to form a crosslinked rubber-resin mixture, adding the spherical boron nitride filler (and other optional fillers) to the crosslinked rubber resin mixture, and adding a wetting agent to the crosslinked rubber-resin mixture. This method can also further comprise adding at least one phase change material to the crosslinked rubber-resin mixture. The material can be provided as a dispensable liquid paste to be applied by dispensing methods and then cured as desired. It can also be provided as a highly compliant, cured, elastomer film or sheet for pre-application on interface surfaces. Appeal 2018-008983 Application 13/384,284 5 Zhong ¶ 81 (emphasis added). Zhong further discloses that phase change materials may comprise polyalkylsiloxanes. Zhong ¶ 73. As the Examiner found, “[o]ne of ordinary skill in the art would [have] be[en] well aware that the genus of polyalkylsiloxanes includes the species of polydimethylsiloxane (PDMS) which is a material that is often cured.” Ans. 9. Thus, Zhong’s dispensable thermally conductive material, which may comprise a phase change material containing PDMS, may be cured after dispensing. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see also In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom); In re Mercier, 515 F.2d 1161, 1165 (CCPA 1975) (“[A]ll of the relevant teachings of the cited references must be considered in determining what they fairly teach to one having ordinary skill in the art.”). One of ordinary skill in the art, furthermore, would have viewed Zhong’s disclosure of PDMS-containing gels and phase change materials, which are first dispensed and then subsequently cured, as suggesting the step of “curing the curable resin component” recited in claim 1. See Zhong ¶¶ 83, 144; claims 18–22. We sustain the Examiner’s rejection of claim 1 over Zhong. Appellants do not make any substantive arguments for patentability of claims 2–24 separate from the arguments regarding claim 1. Therefore, we also sustain the rejections of claims 2–24. Appeal 2018-008983 Application 13/384,284 6 DECISION The rejections of claims 1–24 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)(1)(iv). AFFIRMED