Appeal No. 1999-1052 Page 5
Application No. 08/604,841
the cooling assembly comprises a flexible membrane which is “urged into slidable mating
contact with the upper surface” of the circuit board so that any thermal mismatch will be
accommodated by sliding contact therebetween (column 3, line 58 et seq.), which clearly
precludes there being a “board mounting surface” as part of the cooling system. Nor does
Frankeny disclose a cover, much less a cover that is generally parallel to and spaced from
the mounting plate to define with the mounting plate a cooling chamber. The fact that a
cover may “inherently” exist somewhere in the electronic apparatus does not meet the
requirements of the claim, especially when considered in the light of the appellant’s
specification.
It is our conclusion that each and every element of claim 1 is not disclosed,
expressly or inherently, in Frankeny, and we therefore will not sustain the Section 102
rejection of independent claim 1 or, it follows, of claims 2-4, 9 and 11, which depend from
claim 1. For the same reasons, Frankeny fails to anticipate the subject matter of
independent claim 12, and that rejection also is not sustained.
The Rejections Under 35 U.S.C. § 103
The test for obviousness is what the combined teachings of the prior art would have
suggested to one of ordinary skill in the art. See, for example, In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case
of obviousness, it is incumbent upon the examiner to provide a reason why one of ordinary
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