Appeal No. 2006-1352
Application 10/250,683
the specified ranges, as well as by different fillers, regardless of shape. We note that the two
average particles size ranges overlap at the upper and lower ends, respectively, that is, at 5 µm.
The language of the first clause of claim 10 is the same as that of the first clause of claim
1. Claim 10 limits the “silicone resin” by specifying that it “contains” at least some amount of
RSiO3/2 units (T units) and R2SiO2/2 units (D units), with the ratio of units as stated. We interpret
the term “contains” as open-ended in the same manner as “comprising,” thus permitting the
presence of other any other unit in any amount in the “silicone resin” in the same manner as the
term “comprising” used to describe such silicone resins which contain additional units in the
specification (page 5, l. 18). See In re Panagrossi, 277 F.2d 181, 185, 125 USPQ 410, 413
(CCPA 1960) (interpretation of phrase with term “containing”); cf. Exxon Chem. Pats., 64 F.3d
at 1555, 35 USPQ2d at 1802. The “R” group of the specified units can be hydrocarbon radicals
“substituted” with any manner of substituent including reactive substituents and linkages to other
polymeric moieties.
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner that, prima facie, the claimed
heat dissipating member encompassed by claim 1 and by claim 10 would have been obvious over
the combined teachings of Mine and Hayase and of Mine and Sato, respectively, to one of
ordinary skill in this art at the time the claimed invention was made. Accordingly, since a prima
facie case of obviousness has been established by the examiner, we again evaluate all of the
evidence of obviousness and nonobviousness based on the record as a whole, giving due
consideration to the weight of appellants’ arguments in the brief and reply brief. See generally,
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We find that appellants acknowledge in the written description in the specification that it
was known in this art to use a flexible heat conductive sheet, which can be made of heat
conductive silicone rubber, and heat conductive grease between a heat generating electronic
component and a heat sink for efficient transfer of heat between the two (page 2, ll. 17-29).4 We
4 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 and 2 may be considered “prior art” for any purpose,
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