Ex Parte McGlen et al

Patent Trial and Appeal Board

Nov 28, 2018

14119814 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/119,814 03/14/2014
23409 7590 11/30/2018
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Ryan James McGlen
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.
022232-9123-USOO 7275
EXAMINER
THOMPSON, JASON N
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYAN JAMES MCGLEN and
JOHN GILBERT THAYER
Appeal 2018-003116
Application 14/119,814
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ryan James McGlen and John Gilbert Thayer ("Appellants") 1 appeal
under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 17,
19, 23-26, and 32-35. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Thermal Corp. is identified as the real party in interest. Appeal Br. 1.
Appeal 2018-003116
Application 14/119, 814
THE CLAIMED SUBJECT MATTER
Claim 17, reproduced below, is illustrative of the claimed subject
matter:
1 7. A capillary device for use in a heat transfer apparatus in
which heat is transferred from at least one first region to at least
one second region by means of working fluid, the capillary
device comprising:
a body portion formed by an evaporator plate, a condenser
plate spaced from the evaporator plate across an interior space,
and side walls extending between the evaporator plate and the
condenser plate, wherein the evaporator plate, condenser plate
and side walls define the interior space;
at least one chamber positioned in the interior space and
containing unfused powdered material therein, wherein the at
least one chamber expands across the interior space to extend
between the evaporator plate and condenser plate, and wherein
at least part of the periphery of the at least one chamber is porous
to allow flow of condensed working fluid through the periphery
of the chamber and said unfused powdered material in said
chamber by means of capillary action; and
the interior space surrounding the at least one chamber
forms vapour space.
REJECTI0N2
Claims 17, 19, 23-26, and 32-35 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Hoffman (US 2009/0025910 Al, published
Jan. 29, 2009) and Schulz-Harder (US 2005/0126758 Al, published June 16,
2005).
2 Appellants filed an Amendment on July 5, 2017 ("Amd.") canceling claim
36 that was entered by the Examiner in the Advisory Action dated July 20,
2017 ("Advisory Act."). See Amd. 5 and Advisory Act. 1-2. The rejection
of canceled claim 3 6 is not before the Board.
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DISCUSSION
Independent claim 1 7 recites, in part, "at least one chamber ...
containing unfused powdered material therein ... at least part of the
periphery of the at least one chamber is porous." Appeal Br. 24 (Claims
App.). Independent claim 32 contains substantially similar limitations. See
id. at 27. Appellants argue claims 17 and 32 together and do not submit
separate arguments for the patentability of dependent claims 19, 23-26, and
33-35. Id. at 12. We select claim 17 as representative and claims 19, 23-26,
and 32-35 stand or fall with claim 17. 37 C.F.R. § 41.37 (c)(l)(iv).
The Examiner finds that Hoffman discloses many of the limitations of
claim 17, including a chamber ("elements 141' surrounding 140 "') with
powdered material therein, but does not disclose that the powdered material
is unfused and does not disclose that at least part of the periphery of the
chamber is porous. Final Act. 2--4. The Examiner relies on Schulz-Harder to
disclose an unfused material in a chamber ("Space between 32 as bounded
by containment ring 31 ") and that a periphery of the chamber, containment
ring 31, is porous. Id. at 3--4. The Examiner reasons that it would have been
obvious to one having ordinary skill in the art to use unfused powder "to
reduce manufacturing costs by eliminating a manufacturing step ( e.g.
sintering)." Id. at 3. The Examiner concludes that it would have been
obvious to one having ordinary skill in the art to configure Hoffman's body
portion (chamber) to have a porous periphery "to improve heat transfer by
enabling evaporating working fluid to pass through a wall defining the body
portion." Id. at 4.
Appellants first contend that because Hoffman is not silent with
respect to the limitations for which the Examiner relies on Schulz-Harder,
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one of ordinary skill in the art would use the explicitly disclosed fused
powder and solid wall of Hoffman, and not the unfused powder and porous
wall of Schulz-Harder. Appeal Br. 14--15. In the Reply Brief, Appellants
modify this argument and assert that Hoffman's use of "fused powdered
metal and a solid outer wall for its backflow accelerating bodies teaches
away from the features that the Examiner seeks to incorporate from Schulz-
Harder." Reply Br. 3. Appellants' contention is not persuasive for the
following reasons.
First, to the extent that Appellants argue that Hoffman does not
disclose unfused material or a porous wall, the argument is not persuasive
because it is an attack on Hoffman individually where the rejection is based
on the combined teachings of Hoffman and Schulz-Harder. In re Keller, 642
F.2d 413,426 (CCPA 1981). Second, with respect to the teaching away
argument, when a prior art reference discloses a different solution to a
similar problem, it does not teach away from the claimed subject matter
unless the prior art reference also criticizes, discredits or otherwise
discourages the solution claimed. See Croes, Inc. v. US. International Trade
Commission, 598 F.3d 1294, 1308 (Fed. Cir. 2010) (Prior art taught away by
specifically discouraging use of foam straps.); In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Here, as the Examiner correctly finds, Schulz-Harder
teaches that fused, bonded, or sintered powders can be used as an alternate
to, or in addition to, loose powder "to form capillary flow paths between the
particles," and that a porous wall can be used to contain the powder. Schulz-
Harder ,r,r 6 and 49; Ans. 3. Appellants do not direct us to any specific
portion of Hoffman where the use of unfused powders to form capillary flow
paths is criticized, discredited, or otherwise discouraged. Likewise,
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Appellants do not direct us to any specific portion of Hoffman where the use
of a porous wall is criticized, discredited, or otherwise discouraged.
Appellants' teaching away argument is, thus, not persuasive.
Appellants next contend that the Examiner does not support the
rejection, and does not point to anything in "the prior art that suggests a
problem with or need to modify Hoffman's particular solution of improving
heat pipe efficiency that would have motivated a skilled artisan to tum to
Schulz-Harder's alleged unfused powdered metal and porous walls."
Appeal Br. 17.
This contention is not persuasive because the adequacy of an existing
system does not preclude and would not discourage a person of ordinary
skill in the art from attempting to improve on the prior art. See DyStar
Textilfarben GmBH & Co v. CH Patrick Co., 464 F.3d 1356, 1368 (Fed.
Cir. 2006) (the desire to improve is universal). Specifically, we do not agree
with Appellants' arguments regarding the Examiner's proposed combination
of Hoffman and Schulz-Harder, because the Examiner's modifications
improve the manufacturing process of Hoffman's device by eliminating the
step of sintering the particles forming the capillary flow path. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("if a technique has been used
to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her
skill."). Schulz-Harder explicitly discloses a metal powder in the form of a
bonded, sintered, and/or loose powder to form a capillary flow path, and
discloses a porous wall. Schulz-Harder ,r,r 6 and 49; see also Ans. 3.
Appellants agree that "Hoffman recognized a need to improve the heat-
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transmitting efficiency," but assert that the Examiner's motivation is
"nothing more than a generalized desire to make a cheaper and better vapor
chamber." Appeal Br. 16, 18. Appellants, however, provide no persuasive
technical argument or evidence that the Examiner's proposed modifications
would have been beyond the capabilities of a person of ordinary skill in the
art.
Appellants next contend that because Schulz-Harder's inner pipe
section 31 is not a strengthening body that supports the vapor chamber, one
of ordinary skill in the art would not consider pipe section 31 as improving
upon the backflow accelerating bodies 14' of Hoffman. See Appeal Br. 15-
16. According to Appellants, forming Hoffman's backflow accelerating
body 14' with Schulz-Harder's porous material "would run counter to the
purpose of strengthening Hoffman's vapor chamber." Reply Br. 10.
Appellants contend that "there is no evidence to support the Examiner's
position that pipe section 31 is capable of supporting weight." Id. at 11.
Appellants' contention is not persuasive for several reasons.
First, Appellants' arguments are not commensurate with the scope of
claim 1 7 because the claim does not require a support structure for the
chamber. Here, the Examiner proposes to modify the periphery of
Hoffman's chamber to be porous based on the disclosure of Schulz-Harder
to improve heat transfer, and Appellants fail to persuasively apprise us of
error in the Examiner's factual findings or rationale.
Second, Appellants' contention is attorney argument unsupported by
evidence, because Appellants do not direct us to any evidence that would
support a finding that Hoffman's backflow accelerating bodies are used to
strengthen Hoffman's vapor chamber. Hoffman discloses two distinct
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bodies, namely, a structure strengthening body 13, 13' and a backflow
accelerating body 14, 14'. Hoffman ,r,r 83-85. Hoffman discloses that
"structure strengthening bodies 13 are respectively arranged ... for
supporting the casing 10 ... made of copper or any solid material with high
thermal conductivity and high strength ... are concentrated in a center
position (the position of the casing 10 is fragile and is deformed easily)."
Hoffmann ,r 83 ( emphasis added and omitted). Hoffman discloses that
"backflow accelerating bodies 14 are respectively arranged ... for
increasing the backflow velocity of the working fluid 20 ... the backflow
accelerating bodies 14 are dispersed to peripheral positions or other
positions that are preferential to the backflow path of the condensed and
relatively cold working fluid." Hoffman ,r 85 (emphasis omitted). Thus,
Hoffman places backflow accelerating bodies at places other than where
structural support is provided.
Third, Hoffman's disclosure of a "metal solid layer" (Hoffman ,r 85)
is insufficient to support Appellants assertion that Hoffman's metal solid
layer 141' is a support structure that strengthens Hoffman's vapor chamber.
Indeed, the term "layer" would connote to one of ordinary skill in the art a
thin, insubstantial covering as illustrated in Figure 8 of Hoffman. Further, in
the context of Hoffman, one of ordinary skill in the art would infer that
"solid" is used to distinguish over sintered material and meshes. See
Hoffman ,r 85. Given that Hoffman already discloses a structure
strengthening body 13 ', one of ordinary skill in the art would understand that
additional structural supports are not necessary and would understand that
Hoffman's backflow accelerating bodies 14 are used to provide a backflow
path, as the Examiner finds, without supporting the vapor chamber. For
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these reasons, Appellants do not apprise us of error in the Examiner's
finding that a person of ordinary skill would consider Schulz-Harder's
porous pipe as suitable for modifying Hoffman's backflow accelerating
body.
Appellants next contend that the Examiner's proposed modification
would defeat a purpose and function of Hoffman. Appeal Br. 20. According
to Appellants, modifying Hoffman's backflow accelerating body 14' cover
material "from a solid material to a porous 'perforated or sieve-like material'
as taught by Harder-Schulz [sic] would [] change a basic principle under
which Hoffman was designed to operate." Id. at 22. Appellants narrowly
define a principle of operation of Hoffman's accelerating body 14' as "a
solid cover to strengthen the vapor chamber structure." Id.
The Examiner responds that "elements 14' are described through the
disclosure of Hoffman as 'backflow accelerating bodies' that function to
improve circulation of a working fluid via wicking (i.e. capillary action)."
Ans. 11 ( citing Hoffman ,r 85). The Examiner states that because the
backflow accelerating bodies of Hoffman and the particles/pipe section of
Schulz-Harder "are both rooted to the concept of capillary wicking
structures it is not understood that modifying the backflow accelerating body
of Hoffman to comprise a loose metal powder and a porous enclosing wall
as taught by Schulz-Harder would change the principle of operation of
Hoffman." Ans. 12.
Appellants' contention is not persuasive because Appellants do not
explain adequately how using a material that forms "a capillary structure"
changes the principle of operation of a device that uses a material that is
"conducive to enhancing the flow of the working fluid due to capillary
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forces." Compare Schulz-Harder ,r 49 and Hoffman ,r 82. We agree with the
Examiner that capillary flow is the principle under which Hoffman was
designed to operate and not "a solid cover to strengthen the vapor chamber
structure" as asserted by Appellants. See Appeal Br. 22. Appellants provide
no evidence or argument that would establish Hoffman would not continue
to operate using capillary forces when modified as the Examiner proposes.
Ans. 12. Even if Hoffman's backflow accelerating body were to provide
some support structure, as Appellants' argue, Schulz-Harder's porous
element 31 is a perforated metal pipe section (Schulz-Harder ,r 49), and
Appellants do not adequately explain how adding perforations to a metal
pipe would make Schulz-Harder's pipe incapable of providing support.
Appellants' unsupported attorney argument does not apprise us of Examiner
error.
Appellants next contend that the Examiner's rejection is based on
speculation and conclusory statements. Appeal Br. 19. According to
Appellants, the Examiner's rejection amounts to a belief that "one of
ordinary skill in the art could combine these references, not that they would
have been motivated to do so." Appeal Br. 20 (citing InTouch Techs., Inc. v.
VGO Commc 'ns., Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014). Appellants
conclude that the Examiner's rejection is based on impermissible hindsight
because the Examiner does not sufficiently explain the motivation to
combine the references. Id.; see also Reply Br. 5-8.
We are not persuaded by this contention because the Examiner has
provided sufficient reasoning with rational underpinnings ("to reduce
manufacturing costs by eliminating a manufacturing step (e.g. sintering).")
and ("to improve heat transfer by enabling evaporating working fluid to pass
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through a wall defining the body portion."). See Final Act. 3--4; In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
[require] some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness") ( cited with approval in KSR,
550 U.S. at 418). The Examiner's reasoning correctly relies on Schulz-
Harder which discloses that a mass of particles can be bonded or sintered
with each other, or formed as a loose mass. Schulz-Harder ,r 49. Using
particles in a loose mass as claimed is nothing more than the predictable use
of prior art elements according to their established functions. See KSR, 550
U.S. at 416 ("[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results."). Likewise, the Examiner's reasoning correctly relies on Schulz-
Harder which discloses a porous wall. Schulz-Harder ,r 49. A porous wall
predictably permits fluids to pass there through, and thus, is nothing more
than the predictable use of prior art elements according to their established
functions. See KSR, 550 U.S. at 416. Consequently, Appellants' hindsight
argument is without merit. See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir.
2016).
We have considered all of Appellants' arguments and determine that
they fail to apprise us of error in the Examiner's findings and reasoning
which we determine is reasonable and supported by rational underpinnings.
We, thus, sustain the rejection of claims 17 and 32 under 35 U.S.C. § 103(a).
Claims 19, 23-26, and 33-35 fall with claims 17 and 32.
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DECISION
The Examiner's decision rejecting claims 17, 19, 23-26, and 32-35 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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