Ex Parte Villard et alDownload PDFPatent Trial and Appeal BoardJan 20, 201612335631 (P.T.A.B. Jan. 20, 2016) Copy Citation 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. 12/335,631 12/16/2008 Russell G. Villard P1016 (168.0009) 1438 27997 7590 01/20/2016 LAW OFFICES OF PETER H. PRIEST, PLLC 5015 SOUTHPARK DRIVE SUITE 230 DURHAM, NC 27713-7736 EXAMINER DUVERNE, JEAN F ART UNIT PAPER NUMBER 2833 MAIL DATE DELIVERY MODE 01/20/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RUSSELL G. VILLARD and ROBERT EDWARD HIGLEY ____________________ Appeal 2014-003015 Application 12/335,631 Technology Center 2800 ____________________ Before: TERRY J. OWENS, BEVERLY A. FRANKLIN, and AVELYN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1–9, 11, and 13–16. We have jurisdiction under 35 U.S.C. § 6(b) and 134 (a). We REVERSE. 1 In our opinion below, we refer to the Office Action appealed from, filed on April 11, 2013 (Office Action), the Appeal Brief filed September 18, 2013 (Appeal Br.), the Examiner’s Answer filed November 8, 2013 (Answer) and the Appellant’s Reply Brief filed January 8, 2014 (Reply Br.). 2 Appellants identify the real party in interest as Cree, Inc., the assignee of the subject patent application. Appeal Br. 1. Appeal 2014-003015 Application 12/335,631 2 STATEMENT OF CASE The claims are directed to methods and apparatus for flexible mounting of light emitting devices. According to the Specification, this flexibility is due to use of a light emitting device footprint adapter or connector. Spec. 3. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A light emitting device footprint adapter comprising: a mounting substrate having a top planar surface with top mounting contacts for surface mounting of a first light emitting device on the top planar surface; the substrate having a planar bottom surface with bottom mounting contacts for mounting the substrate on a planar mounting surface having planar mounting surface contacts for a second light emitting device having a different footprint than the first light emitting device; and connections through the mounting substrate for connecting the top mounting contacts of the top surface with the bottom mounting contacts of the bottom surface. Claims Appendix at Appeal Br. 16. REJECTIONS The Examiner made the following rejections: A. Claims 7–8 stand rejected under 35 U.S.C. § 112, second paragraph as indefinite. Office Action 2–3. B. Claims 1–4, 6–8, 11, and 13–14 are rejected under 35 U.S.C. § 102(b) as being unpatentable in view of Suehiro et al.3 Id. at 3-5. 3 Suehiro et al., U.S. 6,833,566, issued December 21, 2004 (hereinafter “Suehiro”). Appeal 2014-003015 Application 12/335,631 3 C. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Suehiro. Id. at 5. D. Claims 9 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Suehiro in view of Wang et al.4 Id. at 6. E. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Suehiro in view of Park.5 Id. Upon consideration of the record before us, we find that Appellants have shown a reversible error in the Examiner’s rejections A–E. Thus, we do not sustain these rejections. Our reasons follow. OPINION Indefiniteness The Examiner maintains that claims 7–8 are indefinite because: (1) “the light emitting devices are NOT positively [claimed] in claim 1” and are considered as an intended use; (2) it is unclear “[h]ow the light emitting devices having different electrical footprint or thermal footprint would affect the mounting pads”; and (3) it is unclear “what is meant by 'different electrical footprint in claim 7”. Office Action 3; Answer 6. The Examiner continues that claims 7–8 are also indefinite because the “footprints” are not positively claimed. Answer 6. Appellants, in contrast, contend that mounting contacts for light emitting devices are recited in the claims and that one of ordinary skill in the art would understand that “‘different electrical footprint’ means both the 4 Wang et al., U.S. 2006/0181856 A1, published August 17, 2006 (hereinafter “Wang”). 5 Park, U.S. 2007/0085096 A1, published April 19, 2007 (hereinafter “Park”). Appeal 2014-003015 Application 12/335,631 4 electrical connector layouts … as well as, additional adaptive electrical circuitry ….” Appeal Br. 7–8 and Reply Br. 2. The claim thus requires, according to Appellants, that the mounting contacts for the second light emitting device have a different footprint than the mounting contacts for the first light emitting device. Reply Br. 2. When interpreting claim language, it is appropriate to look to the Specification for guidance. The test for definiteness is whether one skilled in the art, at the time the application was filed, would understand the bounds of the claim when read in light of the specification and prosecution history. Nautilus, Inc. v. Biosig Inst., Inc., __ U.S. __, 134 S.Ct. 2120, 2128 (2014). In addition, claim limitations reciting intended use merely go to the breadth of the claim and not indefiniteness. In re Miller, 441 F.2d 689, 693 (CCPA 1971). We agree with Appellants. In this instance, we conclude that those skilled in the art would have no uncertainty concerning the subject matter and scope of the claims. First, the Examiner’s argument that the light emitting devices are an intended use misses the mark. There is little value in any tenet requiring the denial of a claim solely based on the language used to define the claimed subject matter. Id. 692–93 (“If those skilled in the art can tell whether any particular [device] is or is not within the scope of a claim, the claim fulfills its purpose as a definition.”) Second, the claims require a “light emitting device footprint adapter” that has top mounting contacts for surface mounting a first light emitting device and bottom mounting contacts patterned for a second light emitting device. Claims Appendix at Appeal Br. 16, Claim 1. These mounting contacts each have footprints that differ from one another. Id. The Appeal 2014-003015 Application 12/335,631 5 Specification explains, inter alia, and with reference to Fig. 9, a method of utilizing the footprint adapter of the present invention. Fig. 9 illustrates an exemplary process 900 of utilizing a light emitting device footprint adapter according to the present invention to enable a first light emitting device customer to employ a second light emitting device in place of a first light emitting device using an incompatible mounting pad arrangement customized for the first light emitting device. Initially, it is determined that it is desired to employ a second light emitting device in place of a first light emitting device having a different mounting pad arrangement. In step 902, the second light emitting device is mounted on a top mounting surface of an adapter. The top mounting surface of the adapter has mounting contacts for mounting the second light emitting device. A bottom surface of the adapter has mounting contacts compatible with the mount pad arrangement customized for a first light emitting device. In step 904, the bottom surface of the adapter with the second light emitting device mounted on its top surface is mounted on the mounting pad customized for the first light emitting device. Spec. 12–13. Claims 7 and 8, in particular, require that the light emitting devices are light emitting diodes that have different electrical and thermal footprints respectively. Claims Appendix at Appeal Br. 17. The figures and accompanying Specification plainly explains what is meant by light emitting devices having different electrical or thermal footprint. See e.g., Figs. 3B and 4A–4C and Spec. 7–9 (illustrating different electrical and thermal footprints for 3 different devices). As the Appellants aptly noted, “[t]he specification is both detailed, and includes examples readily understood and definite to one of ordinary skill in the art.” Appeal Br. 8. Accordingly, we find no ambiguity in the scope of the claims and conclude that claims 7 and 8 are not indefinite. Appeal 2014-003015 Application 12/335,631 6 Anticipation The Examiner rejected Claims 1–4, 6–8, 11, and 13–14, under 35 U.S.C. § 102(b), as anticipated by Suehiro. The Suehiro reference teaches a flip-chip structure for a light emitting diode. Suehiro, col. 1, ll. 10-12. We focus our discussion on independent claim 1, the sole independent claim. Appellants argue that in “Suehiro, a single integrated light emitting diode device 1 and a single light emitting element 2 are shown. To put this in context, this single device could be seen as corresponding to the device of Figs. lA-lD or 5A and 5B of the present application. No adapter as claimed is shown.” Appeal Br. 9. Appellants further argue that “Suehiro [] contains no discussion of adapting a first device, such as Suehiro device 1, to a mounting arrangement for a second different device,” i.e., mounting a light emitting device having one footprint to a substrate arranged to receive a light emitting device having a different footprint. Id. Appellants continue that the Examiner improperly “reads out” claim language relating to the “‘top mounting contacts’ and ‘bottom mounting contacts as an intended use.” Id.; see Reply Br. 3. The Examiner remains silent on the issue of a light emitting device footprint adapter being absent from Suehiro and fails to specifically address the other arguments raised by the Appellants. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). The terms of the preamble may also serve as a claim limitation where it “states a necessary and defining aspect of the invention” or, said another way, where the preamble is “necessary to give Appeal 2014-003015 Application 12/335,631 7 life, meaning and vitality” to the claims. On Demand Machine Corp. v. Ingram Indus., Inc., 422 F.3d 1331, 1343 (Fed. Cir. 2006). “Although no ‘litmus test’ exists as to what effect should be accorded to words contained in a preamble, review of the patent in its entirety should be made to determine whether the inventors intended such language to represent additional structural limitations on mere introductory language.” In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994). Here we find Appellants have the more persuasive position and we conclude that the preamble is a necessary limitation on the scope of the claims. The preamble of claim 1 in the instant invention is essential to indicate the invention defined by the claims and is far more than a mere stated purpose or intended use of that subject matter. Kropa v. Robie, 187 F.2d150, 152 (CCPA 1951). The Specification emphasizes that the key benefit of the invention is to “provid[e] a low cost and flexible mounting arrangement which provides a migration path for coming upgrade[s]” through use of the light emitting footprint adapter or converter. Spec. 3; see also id. at 4 (“a light emitting footprint adapter to enable replacement of a first light emitting device … with a second light emitting device having an incompatible mounting arrangement”); id. at 6 (“the present invention addresses cost effective techniques for customer migration from one LED to another [] with different physical, electrical and thermal footprints”). Moreover, the Appellants’ arguments—consistent with the Specification—clearly establish that the light emitting device footprint adapter of the preamble is intended to be an additional limitation as opposed to mere introductory language as they argue the preamble as a point of distinction over Suehiro. Appellants stress that “[n]o adapter as claimed is Appeal 2014-003015 Application 12/335,631 8 shown” in Suehiro. Appeal Br. 9 (emphasis added). Appellants further explain that “Suehiro [] contains no discussion of adapting a first device … to a mounting arrangement for a second different device.” Id. (emphasis added). And, Appellants explain that in comparison to the standard mounting arrangement of Suehiro, “this is not the capability of [Appellants’] claim 1 which provides an adapter so that a first device … can be mounted on stand contact for [a different device].” Id. at 10 (emphasis added). In sum, the written description and Appellants’ statements make abundantly clear that the light emitting device footprint adapter is a requisite element of the claims. Thus, to anticipate claims 1, and claims 2–4, 6–8, 11, and 13–14 by virtue of their dependence, the Suehiro reference must disclose a “light emitting footprint adapter”—it does not. Accordingly, the Appellants’ claims are not anticipated and we reverse the Examiner’s rejections. Obviousness The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Suehiro, claims 9 and 16 under 35 U.S.C. § 103(a) as being unpatentable over Suehiro in view of Wang, and claim 15 under 35 U.S.C. § 103(a) as being unpatentable over Suehiro in view of Park. The claims involved in these rejections depend from claim 1 and therefore include the same claim limitation at issue (i.e., “a light emitting device footprint adapter”) that is discussed above. Thus, for the same reasons for not sustaining the rejection of claim 1, the rejections of claims 5, 9, 15 and 16 are also not sustained. Appeal 2014-003015 Application 12/335,631 9 CONCLUSION The Examiner’s rejection of claims 7–8 under 35 U.S.C. § 112, second paragraph as indefinite is reversed. The Examiner’s rejection of claims 1–4, 6–8, 11, and 13–14 under 35 U.S.C. § 102(b) as being unpatentable in view of Suehiro is reversed. The Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Suehiro is reversed. The Examiner’s rejection of claims 9 and 16 under 35 U.S.C. § 103(a) as being unpatentable over Suehiro in view of Wang is reversed. The Examiner’s rejection of claim 15 under 35 U.S.C. § 103(a) as being unpatentable over Suehiro in view of Park is reversed. DECISION For the above reasons, the Examiner’s rejection of claims 1–9, 11, and 13–16 is reversed. REVERSED Copy with citationCopy as parenthetical citation