Appeal No. 2003-1412
Application 10/017,543
and 2 may be considered “prior art” for any purpose, including use as evidence of obviousness
under § 103. [Citations omitted.] By filing an application containing Figs. 1 and 2, labeled prior
art, ipsissimis verbis, and statements explanatory thereof, appellants have conceded what is to be
considered as prior art in determining obviousness of their improvement.”). While these known
materials can have the disadvantages pointed out in Green and in the specification, that reason
alone is not enough to teach away from the use of such materials in thermal interface applications
by one of ordinary skill in this art. See, e.g., In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130,
1132 (Fed. Cir. 1994) (“We share Gurley’s view that a person seeking to improve the art of
flexible circuit boards, on learning from Yamaguchi that epoxy was inferior to polyester-imide
resins, might well be led to search beyond epoxy for improved products. However, Yamaguchi
also teaches that epoxy is usable and has been used for Gurley’s purpose.”).
Accordingly, we suggest that the examiner consider whether one of ordinary skill in this
art would have found in the prior art the reasonable suggestion to modify the thermal interface
structures disclosed by Green and any other reference(s) developed by the examiner, such as
United States Patent 5,912,805 which is described by appellants to disclose a double “phase-
change material” sided thermal interface structure (see specification, page 2), by adding a
“pliable, thermal compound” as a layer on the opposite side of a substrate from a “phase-change
material” in a single “phase-change material” sided thermal interface (see Green, col. 1, lines 53-
55), or by interchanging a “phase-change material” layer with a “pliable, thermal compound” in a
double “phase-change material” sided thermal interface structure, in the reasonable expectation
of obtaining a double sided structure useful as a thermal interface. See, e.g., Dow Chem., 837
F.2d at 473, 5 USPQ2d at 1531 (“The consistent criterion for determination of obviousness is
whether the prior art would have suggested to one of ordinary skill in the art that [the claimed
process] should be carried out and would have a reasonable likelihood of success viewed in light
of the prior art. [Citations omitted] Both the suggestion and the expectation of success must be
founded in the prior art, not in the applicant’s disclosure.”); In re Kerkhoven, 626 F.2d 846, 850,
205 USPQ 1069, 1072 (CCPA 1980) (“It is prima facie obvious to combine two compositions
each of which is taught by the prior art to be useful for the same purpose, in order to form a third
composition which is to be used for the very same purpose. In re Susi, . . . 440 F.2d 442, 445,
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