Appeal No. 2003-1412
Application 10/017,543
to claim 10, and further in view of Lee et al. (Lee).1,2 We refer to the examiner’s answer and to
appellants’ brief and reply brief for a complete exposition of the opposing views of the parties.
In order to review the examiner’s application of prior art to the appealed claims, we must
first interpret the language thereof by giving the claim terms their broadest reasonable
interpretation in light of the written description in the specification as it would be interpreted by
one of ordinary skill in this art. See, e.g., In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664,
1667 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997), In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). We find it
apparent from the plain language thereof that appealed independent claims 1, 10 and 22, on
which all other appealed claims directly or ultimately depend, each specify that the thermal
interface comprises at least any carrier having a layer of any “phase-change material” on one side
thereof and a layer of any “pliable, thermal compound” on the other side thereof. We are of the
opinion that one of ordinary skill in this art would understand from the specification that a
“phase-change material” is, as the terms imply, a material which changes phase, in this case from
solid at room temperature to at least partially liquid at higher temperatures; and that a “pliable,
thermal compound” is a compound or composition that is pliable and does not change phases, in
this case a change in viscosity from semi-liquid at room temperature to liquid at higher
temperatures (e.g., page 1, line 15, to page 2, line 11; and, page 5, line 16, to page 6, line 12).
Turning now to the application of prior art in the grounds of rejection with respect to the
appealed claims as we have interpreted the language thereof above, it is well settled that the
examiner has the burden of making out a prima facie case of anticipation under § 102(b) in the
first instance by pointing out where each and every element of the claimed invention, arranged as
required by the claim, is described identically in a single reference, either expressly or under the
principles of inherency, in a manner sufficient to have placed a person of ordinary skill in the art
in possession thereof. See generally, In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990). It is also well settled that in order to establish a prima facie case of
1 Appealed claims 1-30 are all of the claims in the application. See the copy of the appealed
claims in the appendix to the brief.
2 The grounds of rejection are set forth on pages 2-4 of the Office action mailed October 24,
2002 (Paper No. 7) (Answer, page 3).
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