Ex Parte Villard et al

Patent Trial and Appeal Board

Jan 20, 2016

12335631 (P.T.A.B. Jan. 20, 2016)

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
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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”).
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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”).
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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
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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.

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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
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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
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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.
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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