Appeal No. 2006-1352
Application 10/250,683
that device. That the sheet may not “acquires a low viscosity, softens or melts . . . to fluidize at
least a surface . . . to fill between the electronic component and the heat dissipating component
without leaving any substantial voids” at some point in time in said particular device is not
dispositive of the issue of whether the sheet meets this limitation of claims 1 and 10 as we
interpreted these claims above. We are reinforced in our view by the disclosure in Mine of the
same or similar organosiloxanes having the same or similar units that are used in the same or
similar compositions containing the same or similar heat conductive filler particles and other
components, such as catalysts, to prepare the same or similar heat conducting sheets for
disposing between components of an electronic device as disclosed in the written description in
appellants’ specification.
Furthermore, we find that one of ordinary skill in this art would have reasonably
combined Mine with each of Hayase and Sato in view of the related disclosures in each
combination of references that we found above. See generally, In re Kahn, 441 F.3d 977,
985-88, 78 USPQ2d 1329, 1334-37 (Fed. Cir. 2006). Indeed, the difference between the claimed
heat conductive sheets encompassed by claims 1 and 10 and the heat conductive sheets of Mine
is in the overlapping ranges of the average particle sizes of the heat conductive filler and in the
ratio range of certain units in organosiloxane resins which can be present in the compositions
from which the sheets are derived.
Thus, the burden has shifted to appellants to establish by affective argument and/or
objective evidence to patentably distinguish the claimed heat dissipating members encompassed
by claims 1 and 10 over the heat dissipating members disclosed by Mine even though Mine does
not expressly state the limitations in the first clause of each of the claims, and the basis for the
grounds of rejection is § 103(a). See, e.g., In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430,
433-34 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical processes, the PTO
can require an applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. See In re Ludtke, [441 F.2d 660, 169 USPQ
563 (CCPA 1971)]. Whether the rejection is based on ‘inherency’ under 35 USC 102, on ‘prima
facie obviousness’ under 35 USC 103, jointly or alternatively, the burden of proof is the same,
and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and
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