13124379 - (R) (P.T.A.B. Nov. 1, 2019)

Cuvillier, Christophe

Patent Trials and Appeals BoardNov 1, 2019

13124379 - (R) (P.T.A.B. Nov. 1, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/124,379 09/09/2011 Christophe Cuvillier VIST:0018 5806 75576 7590 11/01/2019 Johnson Controls, Inc. c/o Fletcher Yoder PC P.O. Box 692289 Houston, TX 77269 EXAMINER MERLIN, JESSICA M ART UNIT PAPER NUMBER 2871 NOTIFICATION DATE DELIVERY MODE 11/01/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docket@fyiplaw.com powell@fyiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTOPHER CUVILLIER ____________ Appeal 2017-007172 Application 13/124,379 Technology Center 2800 ____________ Before JULIA HEANEY, JENNIFER R. GUPTA, and MERRELL C. CASHION, JR., Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON REHEARING1 Appellant2 submitted a timely request for rehearing of the original Decision in this Appeal, in which a majority of this panel affirmed the Examiner’s Final Rejection of claims 1, 7, 8, 11, 25–29, and 32–39 of 1 This Decision on Rehearing refers to the Specification dated Apr. 14, 2011 (“Spec.”), Final Office Action dated Feb. 11, 2016 (“Final Act.”), Appeal Brief dated Aug. 29, 2016 (“Appeal Br.”), Examiner’s Answer dated Dec. 20, 2016 (“Ans.”), original Decision (Opinion for the Board filed by Administrative Patent Judge Heaney) dated June 26, 2019 (“Decision”), and Request for Rehearing dated Aug. 26, 2019 (“Request”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Visteon Corporation. Appeal Br. 2. Appeal 2017-007172 Application 13/124,379 2 Application 13/124,379 under 35 U.S.C. § 103(a).3 We have jurisdiction under 35 U.S.C. § 6(b). In the Request, Appellant argues that we “misapprehended the disclosure of Ohta[4] as allegedly teaching ‘the light source comprises a light-emitting diode (LED), and the LED is directly coupled to the frame by an adhesive’” as recited by independent claims 1, 26, and 33. Request 7. Appellant’s argument is persuasive, and for the reasons discussed below, we grant the request for rehearing and reverse the rejection under 35 U.S.C. § 103(a). ANALYSIS A request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised in the Briefs before the Board and evidence not previously relied on in the Briefs are not permitted in a request for rehearing except as provided in 37 C.F.R. § 41.52(a)(2) through (a)(4). 37 C.F.R. § 41.52(a)(1) (2016). The Decision affirmed the rejections of claims 1, 7, 8, 11, 25–29, and 32–39 as unpatentable over the combinations of Ohta with various other references; all of the rejections were based on the Examiner’s finding that Ohta teaches an LED light source directly coupled to the frame of a backlight device by an adhesive, and specifically, that Ohta’s LED unit 20 3 In the Decision we also reversed the Examiner’s rejection of claims 1, 7, 8, 11, 25–29, and 32–39 under 35 U.S.C. § 112, first paragraph. That determination is not at issue in Appellant’s Request. 4 US 2009/0231513 A1, published September 17, 2009. Appeal 2017-007172 Application 13/124,379 3 corresponds to the LED recited in each of the independent claims 1, 26, and 33. Decision 7 (citing Final Act. 8, 13, 16; Ans. 3). Appellant argues that Ohta’s LED unit 20 includes two separate pieces, board 21 and LEDs 22, and that a person of ordinary skill in the art would consider one of the LEDs 22 to correspond to the LED recited in the appealed claims. Request 5. Appellant further argues that a person of ordinary skill in the art would consider Ohta’s LED unit 20 “to correspond to a unit that includes an LED and a component to which the LED 22 is electrically coupled.” Id. Appellant’s arguments are based on interpretation of the claim language “the LED is directly coupled to the frame by an adhesive.” Id. at 4–5. Appellant argues that the claim language should be interpreted as distinguishing between the light source, which comprises an LED, and an assembly including a light source coupled to the support, because the Specification makes this distinction. Id. Appellant relies on the Specification’s disclosure that placing a light source in direct contact with the frame by way of an adhesive improves heat transfer between the back- lighting light source and the frame, and that the light source is an LED that is connected to a flexible printed circuit. Id. (citing Spec. ¶¶ 8–9). Thus, Appellant argues, the Specification distinguishes between a light source (LED) and a unit comprising an LED and a support. Id. In the majority Decision, we did not set forth an interpretation of the claim language “the LED is directly coupled to the frame by an adhesive” because we misapprehended Appellant’s argument.5 Upon reconsideration, 5 The opinion dissenting-in-part and concurring-in-part filed by Administrative Patent Judge Cashion did include an interpretation of this claim language. Appeal 2017-007172 Application 13/124,379 4 we find Appellant’s claim interpretation argument persuasive, and agree with Appellant that because Ohta teaches board 21 disposed between LED 22 and frame 14, Ohta’s LED 22 is not coupled to frame 14. In view of this interpretation, we conclude that the Examiner has not adequately explained why a person of ordinary skill in the art would have understood Ohta’s LED unit 20 as corresponding to the claimed LED, and failed to meet the burden of showing that a person of ordinary skill in the art would have understood Ohta as teaching an LED directly coupled to a frame. In reaching our decision here, we have not considered Appellant’s argument based on dependent claim 25 and the doctrine of claim differentiation. See Request 6–7. Appellant presents this argument for the first time in the Request, and consequently, this argument could not have been overlooked or misapprehended by the Board, and is not a proper basis for rehearing. CONCLUSION Appellant’s Request for Rehearing is granted. We reverse the rejections of claims 1, 7, 8, 11, 25–29, and 32–39 as unpatentable under 35 U.S.C. § 103(a). Claims Rejected 35 U.S.C. § Basis Granted Denied 1, 7, 8, 25 103(a) Suzuki, Luettgen, Morbieu, and Ohta 1, 7, 8, 25 11 103(a) Suzuki, Luettgen, Morbieu, Ohta, and Choi 11 Appeal 2017-007172 Application 13/124,379 5 26–28, 32 103(a) Hsu, Suzuki, Luettgen, Morbieu, and Ohta 26–28, 32 29 103(a) Hsu, Suzuki, Luettgen, Morbieu, Ohta, and Choi 29 33, 34, 36, 37, 39 103(a) Suzuki, Luettgen, and Ohta 33, 34, 36, 37, 39 35 103(a) Suzuki, Luettgen, Ohta, and Choi 35 38 103(a) Suzuki, Luettgen, Ohta, and Morbieu 38 Overall Outcome 1, 7, 8, 11, 25–29, 32–39 Final Outcome of Appeal after Rehearing of rejections under 35 U.S.C. § 103(a): Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 7, 8, 11, 25–29, 32– 39 112, first paragraph Enablement 1, 7, 8, 11, 25–29, 32–39 1, 7, 8, 25 103(a) Suzuki, Luettgen, Morbieu, and Ohta 1, 7, 8, 25 Appeal 2017-007172 Application 13/124,379 6 11 103(a) Suzuki, Luettgen, Morbieu, Ohta, and Choi 11 26–28 32 103(a) Hsu, Suzuki, Luettgen, Morbieu, and Ohta 26–28, 32 29 103(a) Hsu, Suzuki, Luettgen, Morbieu, Ohta, and Choi 29 33, 34, 36, 37, 39 103(a) Suzuki, Luettgen, and Ohta 33, 34, 36, 37, 39 35 103(a) Suzuki, Luettgen, Ohta, and Choi 35 38 103(a) Suzuki, Luettgen, Ohta, and Morbieu 38 Overall Outcome 1, 7, 8, 11, 25–29, 32–39 REHEARING GRANTED