Appeal 2007-3874
Application 10/288,027
and does not otherwise specify any additional structure. See, e.g., Corning
Glass Works v. Sumitomo Elect. U.S.A., Inc., 868 F.2d 1251, 1257, 9
USPQ2d 1962, 1966 (Fed. Cir. 1989); In re Stencel, 828 F.2d 751, 754-55, 4
USPQ2d 1071, 1073 (Fed. Cir. 1987).
With respect to the ground of rejection under § 112, first paragraph,
written description requirement, the Examiner contends the claim language
“thermally conductive filler material uniformly distributed throughout said
base polymer matrix” is without basis in the Specification which “does not
explicitly disclose this language” and “without an explicit disclosure . . . one
of ordinary skill in the art would have no guidance of the type of filler
material distribution, since different types of distributions achieve different
desired heat transfer characteristics.” (Answer 3 and 6.) Appellant contends
“[i]t is well known and accepted within the relevant art that a filled polymer
is a polymer that includes a filler material that is well dispersed throughout
the matrix of the polymer material.” (Br. 4.)
We agree with Appellant. The determination of the optimum
distribution of thermally conductive filler in a resin used to mold a heat sink
is within the ordinary skill in this art and need not be specifically set forth in
the Specification. See, e.g., In re Howarth, 654 F.2d 103, 105, 210 USPQ
689, 691 (CCPA 1981) (“An inventor need not . . . explain every detail [of
the invention] since he is speaking to those skilled in the art. What is
conventional knowledge will be read into the disclosure.”). Thus, the
Examiner has not shown that the claims encompass an embodiment outside
of the scope of the written description in the Specification and, therefore, has
not established a prima facie case of non-compliance with this statutory
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: September 9, 2013