Ex Parte Chew et al

Board of Patent Appeals and Interferences

May 31, 2012

11097397 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TONG FATT CHEW, SIEW IT PANG, JU CHIN POH, and
FOOK CHUIN NG
____________
Appeal 2010-000834
Application 11/097,397
Technology Center 2800
____________

Before DEBRA K. STEPHENS, KALYAN K. DESHPANDE, and
MICHAEL R. ZECHER, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-39. Br. 3.
1
We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a light-emitting apparatus that includes a
substrate having: i) a plurality of overlapping panels that form acute angles
with respect to an imaginary surface that bisects the overlapping panels; and
ii) a plurality of recesses formed between overlapping portions of the
overlapping panels. According to Appellants, the recesses are open to a
reflective surface located on the first side of the substrate. Additionally, the
claimed invention includes a plurality of light sources positioned to emanate
light from the recesses. See Abstract.
Illustrative Claim
1. Light-emitting apparatus, comprising:
a substrate having i) a plurality of overlapping panels that
form acute angles with respect to an imaginary surface that
bisects the overlapping panels, and ii) a plurality of recesses
formed between overlapping portions of the overlapping panels,
wherein the recesses are open to a first side of the substrate,
wherein the recesses contain air-space and wherein the first side
of the substrate has a reflective surface; and
a plurality of light sources, positioned to emanate light
from the recesses.

Prior Art Relied Upon
Takemoto US 2001/0053072 A1 Dec. 20, 2001

1
All references to the Brief are to the Brief filed January 27, 2009, which
replaced the Brief filed September 29, 2008.
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Harada US 6,381,068 B1 Apr. 30, 2002
Pelka US 6,473,554 B1 Oct. 29, 2002
Kim US 2004/0061814 A1 Apr. 1, 2004
Okuwaki US 2004/0085751 A1 May 6, 2004
Arnold US 6,954,260 B2 Oct. 11, 2005
(filed Jan. 17, 2002)
Tamaoki US 6,961,190 B1 Nov. 1, 2005
(PCT filed July 26, 2000)
Jacob US 2006/0001036 A1 Jan. 5, 2006
(filed July 2, 2004)
Chou US 2006/0098441 A1 May 11, 2006
(filed Mar. 14, 2005)

Kimura JP 408043819A Feb. 16, 1996
Sakai WO 2004/111532 A1 Dec. 23, 2004

“T-1 ¾ (5mm) Oval Precision Optical Performance LED Lamps,”
Technical Data—Hewlett Packard (1998) (“HP”).

Rejections on Appeal
Claims 1-3, 5-7, 27-29, 32-35, and 37 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Takemoto and
Kimura. Ans. 3-6.
Claims 4 and 36 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Takemoto, Kimura, and Sakai. Ans.
6-7.
Claims 8 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Takemoto, Kimura, and Jacob. Ans.
7-8.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Takemoto, Kimura, and Arnold. Ans.
8-9.
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Claims 11, 31, and 39 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Takemoto, Kimura, and Harada.
Ans. 9 and 17.
Claims 12-15 and 17-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Takemoto, Kimura, and
Tamaoki. Ans. 9-13.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Takemoto, Kimura, Tamaoki, and HP.
Ans. 13-14.
Claims 21 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Takemoto, Kimura, and Kim. Ans.
14-15.
Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Takemoto, Kimura, and Pelka. Ans.
15-16.
Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Takemoto, Kimura, and Chou. Ans.
16.
Claims 30 and 38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Takemoto, Kimura, and Okuwaki.
Ans. 16-17.
Examiner’s Findings and Conclusions
1. With respect to independent claims 1 and 33, the Examiner
finds that it not simply Kimura’s airspace that is being used, but both
Kimura’s airspace and reflector. Ans. 18-19 (emphasis omitted).
Moreover, the Examiner finds that the use of Kimura’s reflector in the same
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location as Takemoto’s reflector would prevent light interference. Id. As a
result, the Examiner finds that Takemoto does not teach away from the
claimed invention. See id.
2. With respect to dependent claims 4, 8, 10, 11, 30, 31, 36, 38,
and 39, the Examiner recognizes that as long as prima face case of
obviousness takes into account only the knowledge which was within the
level of an ordinarily skilled artisan at the time of the claimed invention, and
does not include knowledge gleaned from Appellants’ disclosure, such a
reconstruction is proper. Ans. 19-23.
3. With respect to dependent claim 12, the Examiner maintains
that it is old and well known that LEDs consume less power, are longer
lasting, and are more rugged than other conventional light sources. Ans. 10
and 22. As such, the Examiner finds that it would have been obvious to an
ordinarily skilled artisan to substitute LEDs in place of other less efficient
light sources and, therefore, maintains the finding of Official Notice. See id.
Appellants’ Contentions
1. With respect to independent claims 1 and 33, Appellants
contend that Takemoto teaches away from the combination of Takemoto and
Kimura. Br. 12 and 14. In particular, Appellants argue that Takemoto
discloses processing a light guide plate with graduation and light attenuation
at specified areas in order to prevent light interference and the like from light
sources. Id. Appellants allege that the use of an air-space in place of a light
guide plate would not prevent light interference. Br. 12 and 14.
2. With respect to dependent claims 4, 8, 10, 11, 30, 31, 36, 38,
and 39, Appellants contend that the Examiner improperly combined the cited
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prior art references by resorting to impermissible hindsight reconstruction.
See Br. 17-18, 20, 24-25, 39-40, and 42.
3. With respect to dependent claim 12, Appellants traverse the
Examiner’s use of Official Notice and contend that Examiner did not
provide evidence to support the finding that LEDS consume less power, are
longer lasting, and are more rugged than other conventional light sources.
See Br. 28-29.

II. ISSUES
1. Did the Examiner err in concluding that the combination of
Takemoto and Kimura renders independent claims 1 and 33 unpatentable?
In particular, this issue turns on whether Takemoto teaches away from the
claimed invention.
2. Did the Examiner err in concluding that: 1) the combination of
Takemoto, Kimura, and Sakai renders dependent claims 4 and 36
unpatentable; 2) the combination of Takemoto, Kimura, and Jacob renders
dependent claims 8 and 10 unpatentable; 3) the combination of Takemoto,
Kimura, and Harada renders dependent claims 11, 31, and 39 unpatentable;
and 4) the combination of Takemoto, Kimura, and Okuwaki renders
dependent claims 30 and 38 unpatentable? In particular, this issue turns on
whether the Examiner improperly engaged in impermissible hindsight
reconstruction.
3. Did the Examiner err in concluding that the combination of
Takemoto, Kimura, and Tamaoki renders dependent claims 12 unpatentable?
In particular, the issue turns on whether Appellants adequately traverse the
Examiner’s finding of Official Notice.
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III. ANALYSIS
We have reviewed the Examiner’s obviousness rejections in light of
Appellants’ contentions that the Examiner has erred. We disagree with
Appellants’ conclusions. The Examiner summarizes and addresses each of
Appellants’ contentions with respect to independent claims 1 and 33, and
dependent claims 4, 8, 10-12, 30, 31, 36, 38, and 39. See Ans. 17-22.
Accordingly, we adopt as our own: 1) the findings and reasons set forth by
the Examiner in the Final Rejection from which this appeal is taken (see
Ans. 3-17); and 2) the reasons set forth by the Examiner in the Answer in
response to Appellants’ Brief (see Ans. 17-22).
Nonetheless, we highlight specific findings and arguments as follows.
With respect to independent claims 1 and 33, we are not persuaded by
Appellants’ argument that Takemoto teaches away from the claimed
invention. See Br. 12 and 14. Appellants have not pointed to an explicit
disclosure within Takemoto that acts to “criticize, discredit, or otherwise
discourage” the recesses between the overlapping light guide plates from
containing an air-space, as required by independent claims 1 and 33. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Therefore, absent any
persuasive arguments or factual evidence to support Appellants’ allegation,
we are not persuaded that Takemoto teaches away from the claimed
invention.
We respect to dependent claims 4, 8, 10, 11, 30, 31, 36, 38, and 39,
we are not persuaded by Appellants’ argument that the Examiner improperly
engaged in impermissible hindsight reconstruction. See Br. 17-18, 20, 24-
25, 39-40, and 42. In each case, the Examiner finds that the cited prior art
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teaches or suggests each claim limitation and provides an articulated reason
with some rational underpinning to establish a prima facie case of
obviousness. See Ans. 6-9 and 16-17. In response, Appellants contend that
the rationale provided by the Examiner is based solely on the hindsight
derived from Appellants’ Specification (see Br. 17-18), but fails to provide a
reasoned explanation as to why the Examiner’s rationale is ineffective to
support the conclusion of obviousness. In addition, Appellants have not
shown that the proffered combinations were uniquely challenging, let alone
that such combinations amount to more than the combination of familiar
elements according to known methods that yields nothing more than
predictable results. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007). Therefore, we are not persuaded that the Examiner improperly
engaged in impermissible hindsight reconstruction.
We respect to dependent claim 12, we are not persuaded that
Appellants adequately traverse the Examiner’s finding of Official Notice.
See Br. 28-29. Our reviewing court has held that an adequate traversal to a
finding of Official Notice must “contain adequate information or argument”
to create on its face “a reasonable doubt regarding the circumstances
justifying the … notice” of what is well known to an ordinarily skilled
artisan. In re Boon, 439 F.2d 724, 728 (CCPA 1971). “To adequately
traverse such a finding [of Official Notice], an applicant must specifically
point out the supposed errors in the [E]xaminer’s action, which would
include stating why the noticed fact is not considered to be common
knowledge or well-known in the art.” Manual of Patent Examining
Procedure (“MPEP”) § 2144.03(C) (Rev. 8, July 2010). See also 37 CFR
1.111(b); In re Chevenard, 139 F.2d 711, 713 (CCPA 1943). “If applicant
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does not traverse the [E]xaminer’s assertion of [O]fficial [N]otice or
applicant’s traverse is not adequate, … the common knowledge or well-
known in the art statement is taken to be admitted prior art ….” MPEP
§ 2144.03(C).
In this case, Appellants’ allegation contains no factual evidence or
persuasive argument to create on its face, a reasonable doubt regarding the
circumstances justifying the Examiner’s use of Official Notice. In
particular, Appellants’ allegation does not explain why the noticed fact is not
considered to be common knowledge or well-known in the art.
Consequently, we find that Appellants’ traversal of the Examiner’s use of
Official Notice to be inadequate and, therefore, treat the Examiner’s
statement as admitted prior art.
It follows that we not persuaded that the Examiner erred in rejecting
claims 1, 4, 8, 10-12, 30, 31, 33, 36, 38, and 39, and claims 2, 3, 5-7, 9, 13-
29, 32, 34, 35, and 37 not separately argued with particularity.

IV. CONCLUSION
The Examiner has not erred in rejecting claims 1-39 as being
unpatentable under 35 U.S.C. § 103(a).

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V. DECISION
We affirm the Examiner’s decision to reject claims 1-39.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD