Appeal No. 2006-1352
Application 10/250,683
claim 10 without recourse to appellants’ specification. See, e.g., In re Boesch, 617 F.2d 272,
273-75, 205 USPQ 215, 216-18 (CCPA 1980) (“[T]he prior art would have suggested ‘the kind
of experimentation necessary to achieve the claimed composition, including the proportional
balancing [of ingredients] described by appellants Nv equation.’ This accords with the rule that
discovery of an optimum value of a result effective variable in a known process is ordinarily
within the skill of the art. [Citations omitted.]”).
We are not convinced that appellants have rebutted the prima facie case of obviousness
with respect to either ground of rejection. Appellants submit that the combination of Mine with
Hayase or with Sato, even if made by one of ordinary skill in the art, would not have described
or suggested the limitations of the heat dissipating member which we recognized in the first
clause of claims 1 and 10 (see above pp. 3-4 and 5). In this respect, appellants allege that Mine
would not have disclosed “that their polymer composition is placed between a heat source and
heat sink or fill a void or space therebetween,” and that the reference discloses only that the
disclosed compositions are “useful as a heat-conducting insulating bonding agent for . . .
electrical and electronic applications” (reply brief, page 7). Appellants further submit that even
if combined, the teachings of Mine and Hayase and of Mine and Sato would not have suggested
the modifications to Mine that would result in the heat dissipation member encompassed by
claims 1 and 10.
The difficulty that we have with appellants’ position is that as we found above, Mine in
fact would have disclosed to one of ordinary skill in this art a heat dissipating member in the
form of a heat conducting sheet for disposition between an electronic component which would
generate heat at a temperature above room temperature and a heat sink in order to transfer heat
therebetween, and would have illustrated this disclosure in Mine Practical Examples 1-3, of
which Practical Example 3 reasonably appears to fall within at least claim 1. Thus, it would
have reasonably appeared to this person that the sheet would be “non-fluid in a room
temperature state.” It would also have reasonably appeared to this person that that the heat
conducting sheet disclosed by Mine would have at least softened at some point above room
temperature, and in any event would have expanded at the elevated temperature. This person
would have further recognized that whether the sheets would have done so in a particular
electronic device would depend on the temperature generated by the electronic component of
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