Ex Parte BAMFORD et al - Page 8



          Appeal No. 2004-0929                                                        
          Application No. 09/386,103                                                  

                     Rejection of claim 2 under 35 U.S.C. § 103                       
                          over Grandmont in view of Hoffman                           
               Claim 2, which depends from claim 1, requires that the heat            
          conductive rod is hollow.                                                   
               Hoffman discloses an energy transfer device which can be a             
          heat sink having in its central portion an energy body which can            
          be a transport rod or a tube wall (col. 1, lines 10-12; col. 1,             
          line 68 - col. 2, line 1).                                                  
               The appellants argue that “Grandmont et al. does not                   
          disclose all of the claimed features with the exception of the              
          rod being hollow” (brief, page 19).  These claimed features are             
          disclosed by Grandmont as discussed above regarding the rejection           
          of claim 1 over Grandmont.                                                  
               The appellants argue that “there is no teaching in either              
          Grandmont et al. or Hoffman to make the combination suggested by            
          the Examiner.  Rather, it appears to the applicants that the                
          Examiner is impermissibly using the applicants[’] disclosure as             
          the basis for the motivation for combining the Grandmont et al.             
          and Hoffman references” (brief, pages 19-20).                               
               Grandmont discloses only a solid cylindrical heat transfer             
          core for transferring heat to heat conductive fins which surround           


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