Raytheon Company

Patent Trials and Appeals Board

Sep 23, 2021

2021001336 (P.T.A.B. Sep. 23, 2021)

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.
15/944,029 04/03/2018 Dominic R. Gooden 17-10494-US-NP 1452
18510 7590 09/23/2021
Docket Clerk-Raytheon/MWM
P.O.Drawer 800889
Dallas, TX 75380
EXAMINER
LEO, LEONARD R
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
09/23/2021 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):
munckwilson@gmail.com
patents@munckwilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOMINIC R. GOODEN
Appeal 2021-001336
Application 15/944,029
Technology Center 3700
Before DANIEL S. SONG, CARL M. DEFRANCO, and
LISA M. GUIJT, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–22. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). The Appellant identifies the real party in interest as
Raytheon Company. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to an apparatus having a thermal interface.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An apparatus comprising:
multiple thermal interface segments collectively forming
a discontinuous thermal interface configured to contact a curved
surface of an object, the discontinuous thermal interface
configured to transfer thermal energy to or receive thermal
energy from the curved surface of the object;
wherein each of the thermal interface segments comprises
a major surface that is curved with an arc width less than a width
of a Hertzian contact area defined partially by the curved surface
of the object; and
wherein the curved major surface of each of the thermal
interface segments is configured to register with the curved
surface of the object and has a specified area that is based on the
Hertzian contact area.
Appeal Br. 48 (Claims App.).
Independent claim 10 is similar to claim 1, but specifically recites “an
object comprising one of: a heat source and a heat sink, the object having a
curved surface.” Appeal Br. 50 (Claims App.). Independent claim 18 is
directed to a method. Appeal Br. 53 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Balchaitis US 3,152,217 Oct. 6, 1964
Barcus US 4,244,098 Jan. 13, 1981
Goiffon US 4,400,858 Aug. 30, 1983
Hughes US 5,197,539 Mar. 30, 1993
Wiemer WO 2005/106366 A1 Nov. 10, 2005
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REJECTIONS
1. Claims 6, 14, and 22 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 2.
2. Claims 2 and 11 are rejected under 35 U.S.C. § 112(b) as being
indefinite.2 Final Act. 3.
3. Claims 1, 2, and 6–8 are rejected under 35 U.S.C. § 102(a)(l) as
being anticipated by Balchaitis. Final Act. 4.
4. Claims 1–4 and 8 are rejected under 35 U.S.C. § 102(a)(l) as
being anticipated by Barcus. Final Act. 5.
5. Claims 1, 2, 5, 7, and 8 are rejected under 35 U.S.C. § 102(a)(l)
as being anticipated by Goiffon. Final Act. 6.
6. Claims 1–3 and 8 are rejected under 35 U.S.C. § 102(a)(l) as
being anticipated by Wiemer. Final Act. 8.
7. Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable
over Wiemer in view of Hughes. Final Act. 9.
8. Claims 10, 11, 14–16, 18, 19, and 22 are rejected under 35
U.S.C. § 103 as being unpatentable over Balchaitis. Final Act. 9.
9. Claims 10–12, 16, and 18–20 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Barcus. Final Act. 10.
10. Claims 10, 11, 13, 15, 16, 18, 19, and 21 are rejected under 35
U.S.C. § 103 as being unpatentable over Goiffon. Final Act. 12.

2 The heading for this rejection in the Final Action omits claim 2, but it is
evident from the text that this rejection also encompasses claim 2. Final Act.
3–4. The Examiner withdrew this rejection as to claims 10 and 12–22, but
the rejection has been maintained with respect to claims 2 and 11. Ans. 15,
17.
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11. Claims 10–12 and 18–20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Wiemer. Final Act. 13.
12. Claim 17 is rejected under 35 U.S.C. § 103 as being
unpatentable over Wiemer in view of Hughes. Final Act. 14.
OPINION
Rejection 1: Written Description
The Examiner rejects claims 6, 14, and 22 for failing to comply with
the written description requirement. Final Act. 2. According to the
Examiner, there is no descriptive support for the limitation “a thermal gap
pad configured to be compressed between the thermal interface segments
and the object” as recited in these claims, in combination with the limitation
in independent claims 1, 10, and 18 reciting that “the thermal interface
segments comprises a major surface that is curved with an arc width less
than a width of a Hertzian contact area.” Final Act. 2–3. The Examiner
finds that these dependent claims are “inconsistent with the [S]pecification.”
Final Act. 3–4 (citing Spec. ¶ 37).
The Appellant disagrees and argues that “nothing in paragraph [0037]
or any other portion of the Appellant’s [S]pecification states that a thermal
gap pad cannot be used with segments having major surfaces each with an
arc width less than a width of a Hertzian contact area.” Appeal Br. 8. The
Appellant argues that the Examiner appears to assume that “the larger arc
width mentioned in paragraph [0037] would exceed the width of the
Hertzian contact area, even though paragraph [0037] never says that.”
Appeal Br. 8–9. The Appellant points out that paragraph 37 “simply
indicates that a smaller number of subsection 104 (such as those with a
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larger arc width) may be used,” and does not “require[] the use of a larger
arc width when a thermal gap pad is used.” Appeal Br. 9.
The Appellant has the better position. Paragraph 37 of the
Specification simply explains that use of a pad allows use of less number of
subsections. See Spec. ¶ 37. In that regard, we find persuasive the
Appellant’s argument that “paragraph [0033] of the Appellant’s
[S]pecification clearly states that a thermal gap pad may be used to increase
the segment width or to compensate for disparities in curvatures between
curved surfaces.” Appeal Br. 9; see Spec. ¶ 33. Such uses disclosed in the
Specification are not tied to the arc width being greater than the Hertzian
contact area as the Examiner appears to presume.
Regarding the Examiner’s position that the Specification “discloses
the thermal gap pad is used when ‘a smaller number of subsections 104
(such as those with a larger arc width)’ than the Hertzian contact area” is
used, and thus, the language of the dependent claims is inconsistent with the
Specification. Ans. 16 (citing Spec. ¶ 37). However, the Examiner inserts
the condition that the smaller number of subsections results in the arc width
being larger than the Hertzian contact area when no such disclosure is made
in the cited paragraph. Therefore, the Appellant is correct that “[t]here is no
prohibition here against using a larger number of subsections 104 with a
thermal gap pad 116 or against using a smaller number of subsections 104
without a thermal gap pad 116.” Reply Br. 2.
Accordingly, in view of the above, we reverse this written description
rejection.

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Rejection 2: Indefiniteness
The Examiner rejects claims 2 and 11 as being indefinite. Final
Act. 3. The Examiner determines that, in dependent claims 2 and 11, the
recitation “a contact area of the major surface of each of the thermal
interface segments is less than or substantially equal to the Hertzian contact
area” is indefinite because the corresponding independent claims 1 and 10
recite that “each of the thermal interface segments comprises a major surface
that is curved with an arc width less than a width of a Hertzian contact area.”
Final Act. 3–4. The Examiner explains that “[t]he recitation of ‘substantially
equal’ in claims 2 and 11 renders the claims indefinite, since claims 1 and 10
already limit the ‘arc width less than a width of a Hertzian contact area.’”
Ans. 17.
The Appellant disagrees and argues that “before contact between a
thermal interface and an object occurs, each major surface has an arc width
less than the Hertzian contact area as recited in Claim l” but “the ‘contact
area’ of Claim 2 is defined when the object is actually contacting the thermal
interface segments, and contact between the object and the thermal interface
segments applies a force that can deform the thermal interface segments to
expand along their widths.” Appeal Br. 11.
The Examiner has the better position. The claims at issue do not use
temporal terms such as “before” or “after,” and do not sufficiently
distinguish the condition of the major surface of each of the thermal
interface segments before, or after, installation as the Appellant argues.
Mere recitation of “a contact area of the major surface” does not sufficiently
establish that an object is actually contacting the thermal interface segments
as the Appellant asserts. Appeal Br. 11. Stated differently, claims 2 and 11
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neither recite, nor necessarily require, actual contact, but instead, merely
recites a “contact area.” Indeed, the Examiner’s position is supported by the
Appellant using “contacting” in its arguments whereas the claim itself
merely recites “contact area.”
Accordingly, we affirm the Examiner’s indefiniteness rejection.

Rejection 3: Anticipated by Balchaitis
The Examiner rejects claims 1, 2, and 6–8 as being anticipated by
Balchaitis. Final Act. 4.
Claims 1 and 8
In rejecting these claims, the Examiner finds that “Balchaitis discloses
an apparatus 24 comprising: multiple thermal interface segments 33
collectively forming a discontinuous thermal interface configured to contact
a curved surface of an object 10 . . . wherein each of the thermal interface
segments 33 comprises a major surface (inner surface) that is curved with an
arc width.” Final Act. 4 (citing Balchaitis Fig. 4). The Examiner explains
that the limitation of claim 1 requiring the major surface of the thermal
interface segments to have “‘an arc width less than a width of a Hertzian
contact area defined partially by the curved surface of the object’ has not
been considered, since the ‘object’ is not positively claimed.” Final Act. 4–
5. The Examiner explains that the limitation of claim 1 requiring the major
surface of the thermal interface segments to have “‘a specified area that is
based on a Hertzian contact area’ has not been considered” for the same
reason. Final Act. 5.
The Appellant argues that not considering the above-noted limitations
of claim 1 pertaining to the Hertzian contact area is improper, and that the
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Appellant is “entitled to claim an individual component separate from a
system in which the individual component is used.” Appeal Br. 12. The
Appellant summarizes that “[t]he Examiner is essentially arguing that the
Appellant must be limited to system-level claims that recite the object in
order to define a Hertzian contact area between the object and the thermal
interface segments, which is incorrect.” Appeal Br. 12–13.
The Examiner has the better position. In view of the above arguments
of the Appellant, it is apparent that the Examiner and the Appellant both
agree that independent claim 1 does not actually require an “object,”
whatever that object may be. See also Ans. 17 (“Appellant admits . . .
claim 1 recites a subcombination of an apparatus comprising of multiple
thermal interface segments that does not include an object of a system, i.e.
combination.”). The Examiner is correct in finding that “a relationship
between the arc width of a thermal interface segment and a Hertzian contact
area of an object to be employed is nonexistent without the object, which is
not positively recited in the claim.” Ans. 17. We also agree with the
Examiner’s finding that “the Hertzian contact area cannot be determined
unless the two relevant structures are present, namely the thermal interface
segments and the object.” Ans. 17–18. Indeed, it is not readily apparent
how the Hertzian contact area can be determined devoid of the
corresponding object which defines the contact interface with the thermal
interface segments, which the Appellant concedes, is required for thermal
transfer. Spec. ¶ 30. Accordingly, considering that both the Appellant and
the Examiner agree that the object is not claimed in the apparatus claim, we
agree with the Examiner that in the context of an apparatus, the recitation
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directed to the Hertzian contact area is essentially devoid of any substantive
meaning without the object which is necessary to define it.
The Appellant also argues that “the Examiner concedes that the cited
references fail as disclosing these features in the discussion of the § 103
rejections. Thus, the § 102 rejection is improper on its face.” Appeal Br.
13. However, the § 103 rejections are directed to independent claim 10,
which positively recites the object (“an object comprising one of: a heat
source and a heat sink, the object having a curved surface”), and
independent claim 18, which is directed to a method instead of an apparatus.
Accordingly, these claims stand on a different footing than independent
claim 1 at issue.
The Appellant further asserts that “[t]he multiple thermal interface
segments have a known shape and can therefore be used with a small range
of cylindrical objects or other objects as would be easily understood by one
skilled in the art.” Appeal Br. 13. However, the Appellant does not
establish how the Hertzian contact area specifically recited in claim 1 could
possibly be determined without the object that is not claimed. In that regard,
the Appellant also replies that it “previously presented a method of
determining the Hertzian contact area without the object being present”
“[b]y using the total arrangement of the multiple thermal interface segments
instead of the dimensions of the object.” Reply Br. 5. However, the
Appellant does not present such a method in its briefs, and does not direct us
to where such presentation previously was made. The Specification does
disclose a “technique for calculating a Hertzian contact area.” Spec. ¶¶ 78,
79. As evidenced therein, the calculation of a Hertzian contact area requires
dimensions of the object (diameter and length) as well as its material
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characteristics including its modulus of elasticity, and Poisson’s ratio, and
further requires this information for the mating objects as well, i.e., the
thermal interface segments.3
Accordingly, the Appellant’s vague assertions that Hertzian contact
area as recited in claim 1 can be determined by one of ordinary skill in the
art based on the thermal interface segments alone appear to be
unsubstantiated, and thus, unpersuasive. Therefore, in view of the above, we
affirm the Examiner’s rejection of claim 1. The Appellant does not submit
specific arguments directed to claim 8. Hence, claim 8 falls with claim 1.
Claim 2
The Appellant relies on dependency on claim 1 in support of
patentability of claim 2, and also argues that “none of the cited references
actually discloses or suggests these features of Claim 1.” Appeal Br. 14.
However, because these assertions of patentability are premised on the
Hertzian contact area, the Appellant’s arguments are unpersuasive for the
reasons already discussed relative to claim 1.
Claim 6
Claim 6 depends from claim 1, and recites “a thermal gap pad
configured to be compressed between the thermal interface segments and the
object.” Appeal Br. 49 (Claims App.). The Examiner finds that finned
insert 22 of Balchaitis corresponds to the recited thermal gap pad, and is
configured to be compressed between tube 10 and fingers 33 that correspond

3 Indeed, if the limitations at issue must be considered as to the claimed
apparatus asserted by the Appellant, claim 1 would appear to be deficient
under 35 U.S.C. § 112 as being indefinite and/or not enabled.
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to the recited thermal interface segments. Final Act. 5 (citing Balchaitis
Figs. 1–5); see also Ans. 18 (citing Balchaitis col. 3, ll. 24–41).
The Appellant disagrees and argues that Balchaitis “does not disclose
or suggest that the fingers 33 compress the finned insert 22” because “the
insert 22 is not considered in a locked relationship with the socket 12 and the
sleeve 24 until the necks 37 have sufficiently expanded in the slots 30.”
Appeal Br. 14–15 (citing Balchaitis 3:20–23, 3:55–59, 4:6–9). The
Appellant also argues that because the distal ends of the fingers engages the
tube socket 12, the fingers 33 do not compress the finned insert. Reply
Br. 7.
The Appellant’s arguments are unpersuasive. Firstly, Balchaitis
discloses that:
The outer sleeve 24 for supporting insert 22 is likewise made
from elastic high thermal conductivity material . . . The elasticity of
the sleeve material facilitates attachment and detachment of the shield
assembly from the socket . . . and the high conductivity of the material
contributes to the dissipation of heat from the tube 10 by conducting
heat from the insert 22 to the socket 12 and the chassis 18.
Balchaitis, col. 3, ll. 42–49 (emphasis added).
Thus, in addition to the disclosed elasticity of the outer sleeve 24, it is
not apparent how the outer sleeve 24 would effectively “conduct[] heat from
the insert 22” if the fingers 33 do not contact the wall portions 26 of the
insert. Indeed, consistent with the disclosed function, Balchaitis illustrates
the fingers 33 contacting the wall portions 26 of the insert 22. Balchaitis
Fig. 2. Although the degree of compression applied by the fingers 33 to the
wall portions 26 of the insert 22 may be diminished by the distal ends of the
fingers engaging the tube socket 12, the preponderance of the evidence
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indicates that fingers 33 nonetheless do compress the finned insert, i.e., the
thermal gap pad.
Accordingly, we affirm this rejection of claim 6.
Claim 7
Claim 7 depends from claim 1 and recites “a base; and multiple
flexures coupling the thermal interface segments to the base, the flexures
configured to provide radial and torsional compliance for the thermal
interface segments.” Appeal Br. 49 (Claims App.). The Examiner finds that
in Balchaitis, a section of the fingers 33 immediately extending from an
unlabeled base of the sleeve 24 provides radial and torsional compliance as
recited. Final Act. 5 (citing Balchaitis Figure l). The Examiner explains that
Balchaitis “discloses the thermal interface segments 33 are elastic and
flexible,” and that “[s]imilar to [A]ppellant’s flexures 114 in Figure 1A . . .
the flat flexures of Balchaitis provide ‘some amount of radial and torsional
compliance.’ Further, the elasticity and flexibility of the thermal interface
segments 33 made of molybdenum occurs in at least three dimensions,
including longitudinal, transverse and radial/torsional.” Ans. 18 (citing
Balchaitis, col. 3, ll. 42–62).
The Appellant argues that “[n]othing in Balchaitis describes that the
fingers 33 could incur a torsional force.” Appeal Br. 16. According to the
Appellant, “the end 31 of the fingers 33 is compressed against the outer wall
16 of socket 12. Therefore, any radial and torsional forces would be
presented throughout the entire length of the fingers 33 and not
accommodated by any portion immediately extending from the base.”
Appeal Br. 16. The Appellant further responds that “Balchaitis cannot show
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both features of the flexures and the thermal interface segments.” Reply
Br. 8.
Although we view the issue slightly differently, we generally agree
with the Appellant that the Examiner erred. The Examiner’s rejection is
premised on taking a small, imaginary portion of the fingers 33 that is
adjacent the unnumbered base of the supporting sleeve 24 as corresponding
to the recited “flexures,” while the remaining portion of the fingers
correspond to the thermal interface segments. Such interpretation of claim 7
that underlies the rejection is unreasonably broad. As noted above, claim 7
depends from claim 1 and recites “a base; and multiple flexures coupling the
thermal interface segments to the base.” Appeal Br. 49 (Claims App.). As
such, claim 7 recites “flexures” to be distinct from thermal interface
segments, such that the claim requires three structures, namely, a base,
thermal interface segments, and “multiple flexures coupl[e] the thermal
interface segments to the base.” Accordingly, we disagree that the device of
Balchaitis actually includes “multiple flexures” as recited in claim 7, and
reverse this rejection.

Rejection 4: Anticipated by Barcus
The Examiner rejects claims 1–4 and 8 as being anticipated by
Barcus. Final Act. 5.
Claims 1, 2, 4, and 8
In support of patentability of claims 1 and 2, the Appellant again
submits arguments directed to the Hertzian contact area recitations, which
have been addressed above relative to Rejection 3. Appeal Br. 18–19. The
Examiner’s response is correspondingly substantively the same as that of
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Rejection 3. Ans. 19. The Appellant also does not submit arguments
specifically directed to claims 4 and 8. Accordingly, the Examiner’s
rejection of claims 1, 2, 4, and 8 is affirmed.
Claim 3
Claim 3 depends from claim 1 and further requires “one or more
clamps configured to apply inward pressure onto the outer major surfaces.”
Appeal Br. 48 (Claims App.). The Examiner finds that Barcus discloses
locking members 26 that are configured to apply inward pressure onto the
outer major surfaces of the cooling member 22. Final Act. 6.
The Appellant argues that Barcus “does not disclose or suggest an
inward pressure is applied to the outer major surface of the cooling members
22” because the locking members hold the arrangement in “hoop tension.”
Appeal Br. 19. In that regard, the Appellant argues that Barcus applies “a
circumferential force or a force that is aligned with a tangent of a
circumference of an object,” and “[a] force at a tangent of a point on a curve
is not an inward force.” Appeal Br. 19.
The Examiner provides an annotated version of Figure 2 of Barcus,
and explains that “hoop tension forces (outlined arrows) along the clamps 26
. . . indirectly produce radially inward pressure onto the outermost fins 28,
29, 31, 32 (curved arrows) of the outer major surface of the thermal interface
segments 22.” Ans. 19–20 (citing annotated Fig. 2 of Barcus). The
Appellant replies that “[t]he end fins 28, 29, 31, and 32 are not the outer
major surfaces of the cooling members 22. Thus, the locking members 26 of
Barcus do not apply an inward pressure on any outer surface and are not
applied to an outer major surface of the cooling members 22.” Appeal
Br. 20.
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We agree with the Appellant and find the Examiner’s explanation
unpersuasive. Although we agree with the Examiner that the hoop tension
forces “indirectly produce radially inward pressure onto the outermost fins
28, 29, 31, 32,” we fail to see how the forces along the distal ends of such
outermost fins can be considered to “apply inward pressure onto the outer
major surfaces” as required by claim 3. Specifically, in view of the
Examiner’s explanation, the clamps of Barcus applies tangential force to the
outer major surface, which, due to the length of the fins (and
correspondingly distance of the applied force), causes inward pressure to be
applied on the inner major surface. This is in contrast to the claim
requirement that the clamps “apply inward pressure onto the outer major
surfaces.” Therefore, we reverse this rejection as to claim 3.

Rejection 5: Anticipated by Goiffon
Claims 1, 2, 5, 7, and 8 are rejected as being anticipated by Goiffon.
Final Act. 6. In support of patentability of claims 1 and 2, the Appellant
again submits arguments directed to the Hertzian contact area recitations,
which have been addressed above relative to Rejection 3. Appeal Br. 20–21.
The Examiner’s response is substantively the same as that of Rejection 3.
Ans. 20. The Appellant also does not submit arguments specifically directed
to claims 5 and 8. Accordingly, the Examiner’s rejection of claims 1, 2, 5,
and 8 is affirmed.
Claim 7
In rejecting claim 7, the Examiner finds that Goiffon discloses “a base
56, 60; and multiple flexures (a section of the thermal interface segments 58,
62 immediately extending from the base) coupling the thermal interface
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segments 58, 62 to the base 56, 60, the flexures configured to provide radial
and torsional compliance for the thermal interface segments 58, 62.” Final
Act. 7 (citing Goiffon Figs. 2, 3). The Examiner explains that Goiffon
“discloses the thermal interface segments 54, 62 are resilient,” such that
“[t]he distortion of the apparatus 54 provides radial compliance, and
torsional compliance in the event of irregularities on the object to be
employed.” Ans. 20–21 (citing Goiffon, col. 2, ll. 63-68 and col. 4, ll. 57-
65).
The Appellant disagrees and argues that Goiffon “does not disclose or
suggest a component [(i.e., flexures)] that provides torsional compliance for
the second portion 58 and the fourth portion 62.” Appeal Br. 22–23.
According to the Appellant, “[a]ny torsional force applied to either the
second portion 58 or the fourth portion 62 would be experienced from the
point of the torsional force to the third portion 60 and not limited to ‘an
immediate section’ extending from the third portion 60.” Appeal Br. 23.
Again, although we view the issue slightly differently, we generally
agree with the Appellant that the Examiner erred for reasons similar to those
discussed above relative to Rejection 3. The Examiner’s rejection is
premised on taking a small portion of the second portion 58 and fourth
portion 62 to correspond to the recited “flexures,” while the interpreting
thermal interface segments to correspond to remaining portion of base 56,
60. Although the device of Goiffon differs from that disclosed in Balchaitis,
it is evident that Goiffon lacks “flexures” as would be interpreted by a
person of ordinary skill in the art in view of the Specification for reasons
similar to those discussed above relative to Rejection 3. Accordingly,
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because we view the rejection to be based on an unreasonably broad
interpretation of claim 7, we reverse.

Rejection 6: Anticipated by Wiemer
The Examiner rejects claims 1–3 and 8 as being anticipated by
Wiemer. Final Act. 8. In support of patentability of these claims, the
Appellant again submits unpersuasive arguments directed to the Hertzian
contact area recitations, which have been addressed above relative to
Rejection 3. Appeal Br. 24–25. The Examiner’s response is substantively
the same as that of Rejection 3. Ans. 21. Thus, this rejection of claims 1–3
and 8 is affirmed.

Rejection 7: Obvious over Wiemer and Hughes
Claim 9 depends from claim 1, and recites “wherein each of the
thermal interface segments comprises multiple fins positioned within an
internal cavity of the thermal interface segment.” Appeal Br. 50 (Claims
App.). The Examiner rejects claim 9 as being unpatentable over Wiemer in
view of Hughes. Final Act. 9. In so doing, the Examiner finds that Wiemer
“discloses all the claimed limitations, except each of the thermal interface
segments comprises multiple fins positioned within an internal cavity of the
thermal interface segment.” Final Act. 9. The Examiner finds that Hughes
discloses heat transfer mechanism 126 having a segment with “multiple fins
180, 182 positioned within an internal cavity of the segment for the purpose
of simplifying manufacture.” Final Act. 9 (citing Hughes Fig. 9). Based on
these findings, the Examiner concludes that it would have been obvious to a
person of ordinary skill in the art to “employ in Wiemer et al each segment
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having multiple fins positioned within an internal cavity of the segment for
the purpose of simplifying manufacture as recognized by Hughes.” Final
Act. 9.
The Appellant unpersuasively relies on dependency on claim 1 for
patentability. Appeal Br. 26. In addition, the Appellant argues that “[t]he
heat exchanger in Hughes merely exchanges heat between a fluid flowing
inside and ambient air outside. The conduit 126 does not interface with
another component similar to the features of Claim 1.” Appeal Br. 27.
However, this argument is unpersuasive because “[n]on-obviousness cannot
be established by attacking references individually where the rejection is
based upon the teachings of a combination of references.” In re Merck, 800
F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA
1981). The applied rejection is not dependent on Hughes interfacing with
another component, because Wiemer, which already discloses a contacting
interface, is being modified to include multiple fins as disclosed in Hughes.
Thus, because we agree with the Examiner’s assessment, we affirm this
rejection of claim 9.

Rejection 8: Obvious over Balchaitis
The Examiner rejects claims 10, 11, 14–16, 18, 19, and 22 as being
unpatentable over Balchaitis alone. Final Act. 9. As noted above,
independent claim 10 positively recites “an object comprising one of: a heat
source and a heat sink,” and independent claim 18 is directed to a method.
Appeal Br. 50, 53 (Claims App.). Accordingly, the Examiner does not raise
the same issue relative to the recitation “arc width less than a width of a
Hertzian contact area” discussed above relative to claim 1.
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In rejecting independent claims 10 and 18, the Examiner finds that
Balchaitis discloses the invention as claimed except that the major surface
“is curved with an arc width less than a width of a Hertzian contact area
defined partially by the curved surface of the object 10,” and that the curved
major surface “has a specified area that is based on the Hertzian contact
area.” Final Act. 9–10. However, according to the Examiner:
In the event that the curves of both the object 10 and thermal
interface segments 33 are the same (i.e. the Hertzian contact
area is the entire outer surface area of the object 10), and the
thermal interface segments 33 are relatively flexible or resilient,
it would have been obvious . . . to a person having ordinary
skill in the art to form the thermal interface segments 33 of
Balchaitis into multiple or smaller structures for the purpose of
providing increased contact due to manufacturing tolerances
and/or thermal expansion. The multiple or smaller structures of
the thermal interface segments 33 increases contact due to
surface variations and thermal expansion of the object 10.
Final Act. 10.
The Appellant initially argues that the Examiner “does not provide the
required basis for relying on inherency in rejecting Claim 10 or any other
claim.” Appeal Br. 28. However, the basis for this argument is unclear
because the rejection does not rely on inherency, which is confirmed by the
Examiner’s response. Ans. 23 (“argument that the rejection is based on
inherency is mistaken.”).
The Appellant also argues that “explanation regarding curves of an
object and thermal interface segments being the same does not mean that
‘the Hertzian contact area is the entire outer surface area of the object.’”
Appeal Br. 29. In that regard, the Appellant argues that “Hertzian contact
area is dependent on a number of parameters . . . The Examiner is therefore
factually incorrect in asserting that the Hertzian contact area is the entire
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outer surface of the object 10 simply if the curves of the object 10 and
thermal interface segments 22 are the same.” Appeal Br. 29.
In response, the Examiner notes that:
there are three possibilities in mating the curved surfaces of the
thermal interface segment and the object: 1) the curved surface
of the thermal interface segment is the same as the object, 2) the
curved surface of the thermal interface segment is smaller than
the object, or 3) the curved surface of the thermal interface
segment is larger than the object.
Ans. 23. The Examiner further explains that “the Hertzian contact area is
portion of the object 10 where a surface area contacts with an individual
thermal interface segment 33,” and “when ‘the curves of both the object 10
and thermal interface segments 33 are the same,’ ‘the Hertzian contact area
is the entire outer surface area of the object 10’ in contact with an individual
thermal interface segment 33 at that portion.” Ans. 23–24. The Examiner
also reiterates the reasoning reproduced above for providing multiple or
smaller structures of the thermal interface segments in support of the
rejection. Ans. 23.
The Appellant responds that “[t]he Examiner has failed to understand
that the arc width being less than the width of the Hertzian contact area
means that the diameters of the curved surfaces do not have to be equal. The
arc width being less than the width of the Hertzian contact means that the
thermal interface is deformed.” Reply Br. 17. The Appellant further
responds that “increasing or decreasing a number of thermal interface
segments would not inherently create a difference in arc diameter of the
thermal interface segments.” Reply Br. 18.
We find the Appellant’s argument persuasive. As the Appellant
argues, we understand the limitation “an arc width less than a width of a
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Hertzian contact area” to require the curved surface of the thermal interface
segments to be narrower than the calculated Hertzian contact area such that,
upon contact with the object, the interface between the curved surface of the
thermal interface segments and the object is deformed. In that regard, it is
not entirely clear from the record how the Examiner interprets “arc width,”
but we understand arc width to be the distance (i.e., width) of the opening
formed by the arc. It is not apparent how the recitation that the major
surface is curved with “an arc width less than a width of a Hertzian contact
area” as recited in claims 10 and 18 would be satisfied if “both the object 10
and thermal interface segments 33 are the same,” or how such construction
would result in deformation along the interface. Although the Examiner’s
further explanation that it would be desirable to provide “multiple or smaller
structures for the purpose of providing increased contact” may be correct, it
is not helpful in addressing the limitation at issue. Final Act. 10.
Therefore, in view of the above considerations, we reverse the
rejection of independent claims 10 and 18. Moreover, we also reverse this
rejection as to claims 11, 14–16, 19, and 22 that depend from claim 10 or 18.
The Appellant’s arguments directed to these dependent claims are moot.
Appeal Br. 29–33; Ans. 24–25; Reply Br. 18.

Rejection 9: Obvious over Barcus
The Examiner rejects claims 10–12, 16, and 18–20 as being
unpatentable over Barcus. Final Act. 10. The basis and reasoning for this
rejection are substantively similar to those of Rejection 8 in that they rely on
“the curves of both the object 48 and thermal interface segments 54, 62
[being] the same.” Final Act. 11. The Appellant relies on substantively the
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same arguments proffered in Rejection 8 in support of patentability of claims
10, 16, and 18, and the Examiner’s responses are likewise substantively the
same as in Rejection 8. Appeal Br. 33–35; Ans. 25–26. Accordingly, we
reverse this rejection as to independent claims 10 and 18. We also reverse
this rejection as to dependent claims 11, 12, 16, 19, and 20, and the
Appellant’s arguments directed thereto are moot. Appeal Br. 35–37; Ans.
26.

Rejection 10: Obvious over Goiffon
The Examiner rejects claims 10, 11, 13, 15, 16, 18, 19, and 21 as
being unpatentable over Goiffon. Final Act. 12. The basis and reasoning for
this rejection, as well as the Appellant’s arguments for patentability, are
substantively the same as those of Rejection 8. Final Act. 12; Appeal Br.
38–42; Ans. 27–29. Accordingly, we reverse this rejection for substantially
the same reasons discussed relative to Rejection 8.

Rejection 11: Obvious over Wiemer
The Examiner rejects claims 10–12 and 18–20 as being unpatentable
over Wiemer. Final Act. 13. The basis and reasoning for this rejection, as
well as the Appellant’s arguments for patentability, are substantively the
same as those of Rejection 8. Final Act. 13; Appeal Br. 42–45; Ans. 29–30.
Accordingly, we reverse this rejection for substantially the same reasons
discussed relative to Rejection 8.

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Rejection 12: Obvious over Wiemer in view of Hughes
The Examiner rejects claim 17 as being unpatentable over Wiemer in
view of Hughes. Final Act. 14. Claim 17 depends from claim 10. Appeal
Br. 52 (Claims App.). Although the Appellant does not appear to address
this rejection, for consistency with Rejection 11, we reverse this rejection as
well. The Examiner’s application of Hughes fails to remedy the deficiency
of Wiemer noted related to Rejection 11.
CONCLUSION
The Examiner’s rejections are affirmed in part. More specifically,
1. Rejection of claims 6, 14, and 22 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement is reversed.
2. Rejection of claims 2 and 11 under 35 U.S.C. § 112(b) as being
indefinite is affirmed.
3. Rejection of claims 1, 2, and 6–8 under 35 U.S.C. § 102(a)(l) as
being anticipated by Balchaitis is affirmed as to claims 1, 2, 6, and 8, but is
reversed as to claim 7.
4. Rejection of claims 1–4 and 8 under 35 U.S.C. § 102(a)(l) as
being anticipated by Barcus is affirmed as to claims 1, 2, 4, and 8, but is
reversed as to claim 3.
5. Rejection of claims 1, 2, 5, 7, and 8 under 35 U.S.C. § 102(a)(l)
as being anticipated by Goiffon is affirmed as to claims 1, 2, 5, and 8, but is
reversed as to claim 7.
6. Rejection of claims 1–3 and 8 under 35 U.S.C. § 102(a)(l) as
being anticipated by Wiemer is affirmed.
7. Rejection of claim 9 under 35 U.S.C. § 103 as being
unpatentable over Wiemer in view of Hughes is affirmed.
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8. Rejection of claims 10, 11, 14–16, 18, 19, and 22 under 35
U.S.C. § 103 as being unpatentable over Balchaitis is reversed.
9. Rejection of claims 10–12, 16, and 18–20 under 35 U.S.C.
§ 103 as being unpatentable over Barcus is reversed.
10. Rejection of claims 10, 11, 13, 15, 16, 18, 19, and 21 under 35
U.S.C. § 103 as being unpatentable over Goiffon is reversed. Final Act. 12.
11. Rejection of claims 10–12 and 18–20 under 35 U.S.C. § 103 as
being unpatentable over Wiemer is reversed.
12. Rejection of claim 17 under 35 U.S.C. § 103 as being
unpatentable over Wiemer in view of Hughes is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
6, 14, 22 112(a) Written description 6, 14, 22
2, 11 112(b) Indefiniteness 2, 11
1, 2, 6–8 102(a)(1) Balchaitis 1, 2, 6, 8 7
1–4, 8 102(a)(1) Barcus 1, 2, 4, 8 3
1, 2, 5, 7, 8 102(a)(1) Goiffon 1, 2, 5, 8 7
1–3, 8 102(a)(1) Wiemer 1–3, 8
9 103 Wiemer, Hughes 9
10, 11, 14–
16, 18, 19,
22
103 Balchaitis 10, 11, 14–
16, 18, 19,
22
10–12, 16,
18–20
103 Barcus 10–12, 16,
18–20
10, 11, 13,
15, 16, 18,
19, 21
103 Goiffon 10, 11, 13,
15, 16, 18,
19, 21
10–12, 18–
20
103 Wiemer 10–12, 18–
20
17 103 Wiemer, Hughes 17
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Overall
Outcome
1–6, 8, 9,
11
7, 10, 12–
22

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART