Appeal No. 2003-1412
Application 10/017,543
reference that a heat spreader, like a heat sink, is made of metal (col. 8, lines 32-33 and 55-59).
Similarly, we find no basis in the record which supports the examiner’s position that “the
pressure sensitive adhesive is the pliable thermal compound in the primary reference Green.”
Thus, on this record, there is no basis to combine Green with Tzeng alone and additionally with
Lee because the thermal interface structure disclosed by Green does not include a “pliable,
thermal compound” layer of any type, including those of Tzeng and Lee, and accordingly, the
combined teachings of the references do not provide the factual underpinnings for a prima facie
case of obviousness under § 103(a).
Therefore, we reverse all of the grounds of rejection.
The examiner’s decision is reversed.
Other Issues
We decline to exercise our authority under 37 CFR § 1.196(b) and enter on the record
new grounds of rejection of the appealed claims with respect to following matters, and instead
suggest that the examiner consider the following upon any further prosecution of the appealed
claims subsequent to the termination of this appeal.
The application of the teachings of Green to the appealed claims under § 103(a) stands on
a different footing than applying the reference to the same appealed claims under § 102(a). See
In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973) (a reference that does not
anticipate the claimed invention under § 102(b) can still be applied thereto “as evidence of
obviousness under § 103 for all it fairly suggests to one of ordinary skill in the art”). The
examiner notes in the statement of the ground of rejection under § 102(a) that “the paraffin-based
phase change materials and thermally conductive grease compounds are widely known and used
as indicated in the ‘Background Of The Invention’ section of” Green (Paper No. 7, page 2) but
does not apply such evidence in any ground of rejection.
We find that Green does disclose the use of such materials (e.g., col. 2, lines 27-40) and
appellants acknowledge the use of such materials as well, including the use thereof on a
multilayer thermal interface (specification, pages 1-2). See In re Nomiya, 509 F.2d 566, 570-71,
571 n.5, 184 USPQ 607, 611, 611 n.4 (CCPA 1975) (“We see no reason why appellants’
representations in their application should not be accepted at face value as admissions that Figs. 1
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