Ex Parte West

Patent Trials and Appeals Board

Mar 21, 2019

15279043 - (D) (P.T.A.B. Mar. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/279,043 09/28/2016 R. Scott West
47713 7590 03/22/2019
IMPERIUM PATENT WORKS
P.O. BOX607
Pleasanton, CA 94566
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BRI-019-lC 3447
EXAMINER
TRAN,TONY
ART UNIT PAPER NUMBER
2894
MAIL DATE DELIVERY MODE
03/22/2019 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 R. SCOTT WEST
Appeal2018-004745
Application 15/279,043
Technology Center 2800
Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 26-45. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 This Decision includes citations to the following documents: Specification filed
Sept. 28, 2016 ("Spec."); Final Office Action dated July 25, 2017 ("Final");
Appeal Brief filed Nov. 29, 2017 ("Appeal Br."); Examiner's Answer dated Jan.
31, 2018 ("Ans."); andReplyBrieffiledMar. 29. 2018 ("Reply Br.").
2 The Appellant is the Applicant, Bridgelux, Inc., also identified as the real party in
interest. Appeal Br. 1.
Appeal2018-004745
Application 15/279,043
The invention relates to Light Emitting Diode (LED) devices and
assemblies. Spec. ,r 2. Independent claim 26 is representative of the claims on
appeal, and is reproduced below.
26. An apparatus comprising:
a substrate having an upper surface, wherein the upper surface
of the substrate forms a well;
a Light Emitting Diode (LED) die having a plurality of vertical
side edges, wherein the LED die is disposed on a first part of the
upper surface of substrate, and wherein the LED die is disposed in the
well; and
a layer of highly reflective (HR) material disposed on a second
part of the upper surface of the substrate such that the layer does not
extend under the LED die between the LED die and the substrate and
does not extend over the LED die but such that the layer directly
contacts at least one of the vertical side edges of the LED die, and
wherein at least a portion of the layer of HR material is disposed in
the well.
Appeal Br. 18 (Claims Appendix).
The claims stand finally rejected as follows (see Final 2-17; Ans. 2):
1. claims 36-45 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA),
1st paragraph, as failing to comply with the written description requirement;
2. claims 26, 28, 30-32, 34, and 35 under 35 U.S.C. §§ I02(a)/(e) as
anticipated by Pachler (WO 2010/102,910, pub. Sept. 16, 2010);
3. claims 29, 36, 37, 40-43, and 45 under 35 U.S.C. § I03(a) as
unpatentable over Pachler in view of Zaderej (US 2012/0224375 Al, pub. Sept. 6,
2012);
4. claims 26-28 and 30-35 under 35 U.S.C. § I03(a) as unpatentable
over Andrews (US 2012/0193647 Al, pub. Aug. 2, 2012); and
5. claims 29 and 36-45 under 35 U.S.C. § I03(a) as unpatentable over
Andrews in view of Zaderej.
2
Appeal2018-004745
Application 15/279,043
Rejection under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AJA), 1st paragraph
Independent claim 36 recites "[a]n apparatus comprising: ... a layer of
highly reflective (HR) material disposed on a second part of the upper surface of
the substrate such that the layer of HR material does not extend laterally under the
LED die and does not extend over the LED die." Appeal Br. 19 (Claims
Appendix). The Examiner contends the claim 36 phrase "the layer of HR material
does not extend laterally under the LED die" lacks written descriptive support
because Figures 12, 18, 21, and 23 illustrate a portion of high reflective layer 74
"at a lower level" than the LED die. Final 3; Ans. 3 ("not[ing] that 'under' means
'at a lower level"').
The Appellant does not dispute the Examiner's interpretation of "under," but
contends the Examiner fails to give weight to the claim terms "extend laterally."
Reply Br. 5. The Appellant argues that, given its broadest reasonable construction,
the claim 36 phrase "the layer of HR material does not extend laterally under the
LED die" means the HR material can be located at a lower level than the LED die
as long as the HR material is located outside the lateral boundaries formed by the
vertical side edges of the LED die. Id. at 5---6; see also Appeal Br. 5---6.
During examination, claim terms are given their broadest reasonable
construction consistent with the Specification. In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). The Specification references Figure 18 in
describing the deposition of an HR layer. See Spec. ,r 29. The Specification
discloses that microdots of HR material impact and effectively paint substrate 56.
Id. ,r 46. The liquid HR material, once on the substrate surface, "flows laterally
underneath the wire bond so that HR layer 74 coats the surfaces of substrate 56
(MCPCB) that are directly underneath wire bonds." Id. ,r 47. "[T]he HR material
flows laterally such that it reaches and wets the side edges of the LED dice 52-55,"
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Appeal2018-004745
Application 15/279,043
id., but "[t]he liquid HR material does not flow under the LED dice due to the
silver epoxy bonding material occupying this space," id. ,r 46. See also id. ,r 49
("The HR material ... coat[ s] the upper surface of the substrate right up to the side
edges of the LED dice.").
We determine the Appellant's interpretation of the claim 36 phrase "the
layer of HR material does not extend laterally under the LED die" is consistent
with the written description. We are persuaded, therefore, that the Examiner
reversibly erred in rejecting claim 36 and its dependent claims 37--45 under 35
U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), 1st paragraph, as failing to comply
with the written description requirement.
Rejections based on Pachler
The Examiner found the claim term "substrate" reads on Pachler' s PCB and
the barrier ( or dam) formed on an upper surface of the PCB. Final 4. 3 Pachler
discloses that the barrier defines an outer shape of the high reflective coating and
preferably can be made of a silicone-based material. Pachler 10: 10-14. The
Examiner found the upper surface of Pachler's substrate (i.e., the PCB and the
barrier) form a well, as recited in independent claims 26 and 36. Final 4, 15. In
rejecting claims 29, 36, 37, 40--43, and 45 under 35 U.S.C. § 103(a), the Examiner
relied on Zaderej solely for a teaching of a highly reflective (HR) material having a
reflectivity of more than 85%, as required by these claims. Id. at 15-16.
The Appellant does not dispute that Pachler' s PCB is a substrate as claimed,
but argues the barrier formed on top of the PCB' s planar upper surface, is not a
part of the PCB and, therefore, the Examiner reversibly erred in finding the term
3 Contrary to the Appellant's assertion, see Reply Br. 8, we find the Examiner
clearly identifies the claimed substrate as reading on the combination of Pachler' s
PCB and barrier. See Final 4 (annotated copy of Pachler Figure 4).
4
Appeal2018-004745
Application 15/279,043
"substrate" reads on the combination of Pachler's PCB and barrier. Appeal Br. 6-
7-8, 15-16. The Appellant contends that absent the barrier, Pachler fails to
disclose a well as required by the claims, i.e., no well is formed in the upper
surface of Pachler's PCB itself. Id. at 6-7, 16.
The respective positions of the Appellant and the Examiner raise an issue as
to the scope of the claim term "substrate." See Ans. 4; Reply Br. 7-8. "Therefore,
we look to the [S ]pecification to see if it provides a definition for ... [ the term
substrate,] but otherwise apply a broad interpretation." Icon Health, 496 F.3d at
1379.
Turning first to the claims, we note that claim 35 depends from claim 26 and
recites "wherein the substrate is a printed circuit board [(PCB)]." Appeal Br. 19
(Claims Appendix). 35 U.S.C. § 112, fourth paragraph, provides that "a claim in
dependent form shall contain a reference to a claim previously set forth and then
specify a further limitation of the subject matter claimed." Therefore, the plain
language of the claims indicates that the term "substrate" is not limited to a PCB.
Turning next to the written description, substrate 56 is described in
connection with the Figure 12 embodiment as "a Metal Core Printed Circuit Board
(MCPCB)." Spec. ,r 37. Substrate 56, similar to prior art MCPCB 6 shown in
Figure 2 and described in Specification paragraph 4, is an MCPCB that includes
aluminum layer 66, global dielectric layer 67, metallization layer 68, and solder
mask layer 61. Id. ,r 38. Metal layer 68 comprises "multiple sublayers of metal
including a lower layer of copper, a middle layer of nickel, and an upper layer of a
very reflective metal such as silver." Id. Substrate 56 in the Figure 22 embodiment
is described as including ceramic portion 202. Id. ,r 57.
Formation of a well is described in connection with the Figure 21
embodiment: "[S]ubstrate 56 forms a well 101. The upper surface of the substrate
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Appeal2018-004745
Application 15/279,043
has a nonplanar shape." Id. ,r 56. The nonplanar upper surface of the Figure 21
substrate is described as having "various edges and sloping surfaces." Id. ,r 56. The
Appellant does not direct us to, nor do we find, any details as to how the well is
formed. See id. The Specification discloses that the same reference numerals are
used to denote the same or similar structures in Figures 12 and 21. Id. ,r 56.
Therefore, substrate 56 in the Figure 21 embodiment includes the same layers
described in connection with substrate 56 in the Figure 12 embodiment.
Based on the foregoing description in the Specification, we determine the
claim term "substrate" is not limited to a PCB, but encompasses a multilayer
structure that comprises different types of materials, e.g., metal layers and ceramic
layers. We agree with the Examiner, therefore, that the broadest reasonable
interpretation of "substrate" encompasses Pachler' s barrier and PCB. See Final 4.
Accordingly, because we determine the broadest reasonable interpretation of the
claim term "substrate" encompasses Pachler's barrier and PCB, the Appellant's
arguments fail to convince us of reversible error in the Examiner's rejection of
claims 26, 28, 30-32, 34, and 35 under 35 U.S.C. §§ 102(a)/(e) as anticipated by
Pachler and rejection of claims 29, 36, 37, 40-43, and 45 under 35 U.S.C. § 103(a)
over Pachler in view of Zaderej. 4
Rejections based on Andrews
The Examiner found independent claim 26 reads on Andrews's Figure lOB
embodiment with the exception that "the HR layer directly contacts with at least
one of the vertical side edges of the LED die." Final 7. The Examiner found that in
4 The additional argument advanced by the Appellant in support of patentability of
claim 29 and claim 36 and its dependent claims 37, 40-43, and 45, is that Zaderej
fails to cure the deficiencies in the Examiner's findings with respect to Pachler. See
Appeal Br. 15-16. Having determined that the Appellant has not shown error in the
Examiner's findings with respect to Pachler, we find this argument unpersuasive.
6
Appeal2018-004745
Application 15/279,043
Andrews's Figure 6 embodiment, "HR layer (36) directly contacts with at least one
of the vertical side edges of the LED die (62)." Id. (emphasis omitted). The
Examiner found one of ordinary skill in the art at the time of the invention would
have modified the HR layer in Andrews' s Figure 1 OB embodiment so that the HR
layer directly contacts at least one of the vertical side edges of the LED die for the
purpose of conforming to different LED die structures as taught in connection with
Andrews's Figure 6 embodiment. See id. at 7-8; Andrews ,r,r 52-54. The Examiner
made similar findings with respect to independent claim 36, but additionally relied
on Zaderej for a teaching of a material having a reflectivity of more than 85%, as
required by claim 36. Final 11.
The Appellant argues the Examiner reversibly erred in finding the claim
term "substrate" reads on the combination of Andrews' s substrate 34, die pad 44,
and metal reflector element 52 (see Final 7). The Appellant argues metal reflector
element 52 is a different structure than substrate 34, and absent metal reflector
element 52, no well is formed in the upper surface of Andrews's substrate 34.
Appeal Br. 9, 13.
As discussed above in connection with the rejections based on Pachler, we
agree with the Examiner that the broadest reasonable construction of "substrate"
encompasses a multilayer structure comprising different types of materials. The
Appellant has not directed us to evidence that supports a narrower interpretation of
the claim term "substrate." Accordingly, we are not convinced of error in the
Examiner's determination that the claim term "substrate" encompasses the
combination of Andrews's substrate 34, die pad 44, and metal reflector element 52.
The Appellant does not dispute that if the claim term "substrate" is interpreted in
the manner proposed by the Examiner, then Andrews discloses an apparatus
wherein "the upper surface of the substrate forms a well" (claim 26) and wherein
7
Appeal2018-004745
Application 15/279,043
"a well is formed in the upper surface [of the substrate]" (claim 36). See Appeal
Br. 8-9, 13. Nor does the Appellant dispute that "the upper surface of the substrate
([Andrews' s substrate 34, die pad 44, and metal reflector element 52]) has a
nonplanar shape" ( claims 31 and 43). See id. at 11, 14.
The Appellant also disagrees with the Examiner's finding that one of
ordinary skill in the art would have modified Andrews' s Figure 1 OB embodiment
so that the HR layer directly contacts at least one of the vertical side edges of the
LED die. Appeal Br. 10. The Appellant argues such modification would defeat the
purpose of metal reflector 52, which is not present in Andrews' s Figure 6
embodiment, and that such modification would prevent light emission and
reflection from chip 48 and metal reflector 52. Id.
The Appellant's argument is not convincing because the Appellant fails to
identify persuasive evidence in support thereof. See In re Geisler, 116 F.3d 1465,
14 71 (Fed. Cir. 1997) ( explaining that argument by counsel cannot take the place
of evidence). On the other hand, the Examiner's findings are supported by the
disclosure in Andrews paragraph 66 which states the following in connection with
the Figure 1 OB embodiment:
In this exemplary aspect, the reflective layer 36 essentially surrounds
the LED chip 48 and is flush with the lower light emitting edge or
surface of the LED chip 48, covering substrate 34. In other aspects,
the reflective layer 3 6 is of a thickness (height) such that it is flush
with the top surface of the LED chip 48.
Andrews ,r 66 ( emphasis added); see also id. ,r 52 (providing similar alternative
heights for reflective layer 36 in connection with the Figure 6 embodiment).
Accordingly, we are not persuaded of reversible error in the Examiner's
rejection of claims 26-28 and 30-35 under 35 U.S.C. § 103(a) over Andrews
8
Appeal2018-004745
Application 15/279,043
and rejection of claims 29 and 36-45 under 35 U.S.C. § 103(a) over Andrews in
view of Zaderej. 5
CONCLUSION
36-45 § 112(a) or§ 36-45
112 (pre-AIA),
1st para raph
26,28,30- §§ 102(a)/(e) Pachler 26, 28, 30-32, 34,
32,34,and and 35
35
29, 36, 37, § 103(a) Pachler and 29, 36, 37, 40-43,
40-43,and Zaderej and45
45
26-28 and § 103(a) Andrews 26-28 and 30-35
30-35
29 and 36- § 103(a) Andrews and 29 and 36-45
45 Zadere
Outcome 26-45
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
5 The additional argument advanced by the Appellant in support of patentability of
claim 29 and claim 36 and its dependent claims 37, 40-43, and 45, is that Zaderej
fails to cure the deficiencies in the Examiner's findings with respect to Andrews.
See Appeal Br. 12-14. Having determined that the Appellant has not shown error
in the Examiner's findings with respect to Andrews, we find this argument
unpersuasive.
9