Appeal 2007-3874
Application 10/288,027
Id. 6. Appellant contends Unger would not have disclosed surrounding core
plate 6 so as to separate the core plate from IC chip 8. Id. 8.
The threshold issues with respect to this ground of rejection are the
construction to be given claim 7 with respect to whether an IC chip can be
incorporated in the claimed heat sink because of the transitional term
“comprising,” and whether the combined teachings of Mahulikar and Unger
would have suggested surrounding a carbon-carbon matrix material core
plate with a thermally conductive polymer composition to form a heat sink
having a thermally conductive surface which can interface with the contact
surface of a heat generating object. Considering first the positions of the
parties with respect to the interpretation of claim 7, based on the language of
the claim and the interpretation in light of the Specification as it would be
interpreted by one of ordinary skill in this art, we agree with Appellant that
the “net-shaped molded heat sink” as claimed is a standalone article that is
not connected to a heat generating object with which it must have the
capability to be employed. It is within this context that the open-ended term
“comprising” must be interpreted. We are of the opinion that on this record,
a heat sink dissipates heat from an object and thus, would not include within
its confines, a heat generating device such as an IC chip. Accordingly, the
term “comprising” does not open the claims to encompass a molded article
having an IC chip and a part that dissipates heat molded together therein.
See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364,
70 USPQ2d 1827, 1830 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372,
7
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