Appeal 2007-3874
Application 10/288,027
54 USPQ2d 1664, 1666-67 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048,
1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319,
321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Thus, with respect to the second issue, even if one of ordinary skill in
the art would have substituted Unger’s carbon-carbon matrix material 4, 6
for Mahulikar’s heat spreader 76 as encapsulated within plastic housing 62
as disclosed by the latter with respect to Fig. 5, the result is not an
embodiment that falls within the claims. Indeed, we cannot agree with the
Examiner that one of ordinary skill in the art would have found in Mahulikar
any teachings of inference2 suggesting that the part of plastic housing 62
below bonding plate 66 constitutes a separate heat sink. Furthermore, as
Appellant points out, there is no disclosure in Unger which would have
suggested encapsulating the single one-piece unit of heat sink 4 and heat
transfer plate 6, which has conductive fin structures, in a thermally
conductive filler containing thermoplastic material. Thus, the combined
teachings of Mahulikar and Unger would not result in the basic structure of
the claimed heat sink encompassed by the claims.
Accordingly, on this record, the Examiner has not established a prima
facie case of obviousness, and therefore, we reverse the ground of rejection
under 35 U.S.C. § 103(a).
2 It is well settled that a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in this art would have
reasonably been expected to draw therefrom, see In re Fritch, 972 F.2d
1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir. 1992); In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774
(Fed. Cir. 1985).
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