Appeal No. 2003-1412
Application 10/017,543
obviousness, the examiner must show that some objective teaching, suggestion or motivation in
the applied prior art taken as a whole and/or knowledge generally available to one of ordinary
skill in this art would have led that person to the claimed invention as a whole, including each
and every limitation of the claims, without recourse to the teachings in appellants’ disclosure.
See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998);
Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1629-30 (Fed. Cir. 1996); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed.
Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir.
1988).
The dispositive issue with respect to all of the grounds of rejection is whether the
composition containing phase-changing alkyl substituted poly (hydro, methyl-siloxane) wax
polymers used to coat both sides of a plastic or metal carrier to form a thermal interface, taught
by Green (e.g., col. 1, lines 314-60; col. 2, line 64, to col. 4, line 11; Example IV; and col. 8,
lines 20-54) is only a “phase-change material” or is both a “phase-change material” and a
“pliable, thermal compound.” The examiner contends that the composition as disclosed by
Green constitutes both types of materials, stating that this is so “by definition” but without stating
any reason for so holding (answer, e.g., page 3, lines 11-12; Paper No. 7, page 4, lines 14-16) as
pointed out by appellants (brief, page 10, second full paragraph; reply brief, page 2). Therefore,
on this record, we find that the composition containing phase-changing alkyl substituted poly
(hydro, methyl-siloxane) wax polymers taught by Green is solely a “phase-change material.”
On the basis of this fact, we find that as a matter of fact Green does not disclose the
elements of a thermal interface arranged as specified in appealed independent claims 1, 10 and
22. Thus, Green does not prima facie describe the invention encompassed by appealed claims 1
and 22 and claims dependent thereon within the meaning of § 102(a). We include here appealed
claims 5 and 26 because contrary to the examiner’s position in rejecting these claims under §
103(a), Green does disclose aluminum as a carrier material in Example IV and col. 8, lines 26-
27. We are not persuaded otherwise by the examiner’s allegation that silicone grease is disclosed
in Green to be a thermal spreader (answer, page 3) because, as appellants point out, a silicone
grease is not a heat spreader (reply brief, page 2), and indeed, on this record it is clear from the
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