Ex Parte Emerson et al

Patent Trial and Appeal Board

Aug 31, 2016

13112502 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/112,502 05/20/2011 David Todd Emerson
65106 7590 09/02/2016
MYERS BIGEL & SIBLEY, PA
P.O. BOX 37428
RALEIGH, NC 27627
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.
5308-1447 7623
EXAMINER
NADAV,ORI
ART UNIT PAPER NUMBER
2811
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
uspto@myersbigel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID TODD EMERSON, RAYMOND ROSADO,
MATTHEW DONOFRIO, and JOHN ADAM EDMOND
Appeal2015-004029
Application 13/112,502
Technology Center 2800
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JON M. JURGOV AN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-23, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Cree, Inc. (App. Br.
2).
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Application 13/112,502
STATEMENT OF THE CASE
Appellants' invention relates to gap engineering for flip-chip mounted
light emitting diodes (Spec. Title). Exemplary claim 1 under appeal reads as
follows:
1. A light emitting device comprising:
a light emitting diode die including spaced apart anode and
cathode contacts that extend along a face thereof;
a mounting substrate including spaced apart anode and
cathode pads thereon, the light emitting diode die being flip chip
mounted on the mounting substrate such that the anode contact
is adjacent and conductively bonded to the anode pad and the
cathode contact is adjacent and conductively bonded to the
cathode pad to define a gap that extends along the face between
the spaced apart anode and cathode contacts and between the
spaced apart anode and cathode pads; and
an encapsulant on the light emitting diode die;
the gap being configured to prevent a sufficient amount of
the encapsulant from entering the gap that would degrade
operation of the light emitting device.
REFERENCES and REJECTIONS
Claims 1-3, 7, 9-13, and 15 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over David (US 2010/0308354 Al; Dec. 9, 2010) (see Final
Act. 3-6).
Claims 1-3, 7, 9-13, and 15 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Horio (US 7,141,825 B2; Nov. 28, 2006) (see Final
Act. 3-6).
Claims 4---6, 14, and 16-19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over David or Horio, each in view of Kim (US 2005/0179375
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Application 13/112,502
Al; Aug. 18, 2005) and Shepard (US 2009/0161420 Al; June 25, 2009) (see
Final Act. 6-8).
Claims 8, 20, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over David or Horio, each in view of Duong (US 8, 115,217
B2; Feb. 14, 2012) (see Final Act. 8-9).
Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over David or Horio, each in view of Duong, Kim, and Shepard
(see Final Act. 9).2
ANALYSIS
§ 103 Rejections over Horio
Claims 1 and 12
Appellants contend Horio does not teach a "gap being configured to
prevent a sufficient amount of the encapsulant from entering the gap that
would degrade operation of the light emitting device" (App. Br. 5, 7-8;
Reply Br. 4--5). Appellants argue there is no support for the Examiner's
finding that Horio' s dielectric filler would prevent the gap between anode
and cathode contacts from being filled with encapsulant, rather Horio
teaches any gap remaining between the anode and cathode contacts would be
fully filled with sealing resin (id.). Appellants further contend there is no
reason, other than improper hindsight reconstruction, to modify the gap of
2 The rejection of claims 20-23 under 35 U.S.C. § 112, second paragraph, as
being indefinite (see Final Act. 2) has been withdrawn by the Examiner
(Ans. 2).
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Application 13/112,502
Horio to prevent a sutlicient amount of encapsulant from entering the gap
(App. Br. 9-10).
Appellants' contentions do not persuade us of Examiner error in the
rejection over Horio. We agree with the Examiner's finding that Horio
teaches the same structure as Appellants' gap filler material embodiment,
where a dielectric filler between anode and cathode contacts prevents a
sufficient amount of encapsulant (i.e., less than the maximum amount of
encapsulant that would enter the gap if the filler were not present) from
entering the gap. Claims 1 and 12 include the functional language
"configured to prevent a sufficient amount of encapsulant from entering the
gap that would degrade operation of the light emitting device" to describe
the claimed gap between anode and cathode contacts. Appellants'
Specification discloses the "maximum amount of encapsulant that is
allowable in the gap" can vary depending on the encapsulant properties and
the adhesion between the LED die and the substrate (Spec. i-f 153), and
provides an example of preventing sufficient encapsulant from entering the
gap by using a filler material in the gap that does not "expand unduly during
subsequent processing" (Spec. i-f 175). Therefore, Horio has the same
function of preventing at least some degradation of the LED operation that
follows from using the same structure (Ans. 15-17 (citing Horio Fig. 12A,
dielectric layer 17 and Fig. 13, encapsulant 48)). See also In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990) (The discovery of a new property or use of a
previously known composition, even when that property and use are
unobvious from the prior art, cannot impart patentability to claims to the
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Application 13/112,502
known composition.); citing Titanium Metals Corp. v. Banner, 778 F.2d
775, 780, 782 (Fed. Cir. 1985).
Claims 4, 14, 16, and 21
Appellants contend Horio does not teach a filler in the gap that is
different from the encapsulant, because Horio teaches using only one
material, a sealing resin, to fill the gap between the anode and cathode (App.
Br. 11-12, 14). Appellants further contend the Examiner has not provided a
rationale for using a filler material that is different than the encapsulant, and
there would not be a reasonable expectation of success for modifying Horio
to include such a filler (id).
We are unpersuaded by Appellants' contentions. As found by the
Examiner, Horio explicitly teaches a silicon oxide filler material, which is
different than the resin encapsulant material, in the gap between the anode
and cathode contacts (Ans. 21-23 (citing Horio Fig. 12A, dielectric layer 17
and Fig. 13, encapsulant 48; see also col. 5: 15-23, dielectric layer 17 is
made of silicon oxide)).
Claim 7
Appellants contend Horio does not teach the "encapsulant expands
during heating thereof' and "the gap is configured to prevent the sufficient
amount of the encapsulant from entering the gap such that expansion of the
encapsulant that has entered the gap during heating would degrade operation
of the light emitting device" (App. Br. 14). Appellants argue the Examiner
has not shown that Horio' s encapsulant, when heated, would not necessarily
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Application 13/112,502
enter the gap, as one of skill in the art would recognize the encapsulant may
expand when heated (id.)
Appellants' contention does not persuade us of Examiner error. As
discussed with respect to claim 1 supra, we agree with the Examiner's
finding that a "sufficient amount" of Horio' s encapsulant is prevented from
entering the gap between anode and cathode contacts by the presence of the
dielectric filler. Further, we agree with the Examiner's finding that one of
ordinary skill would recognize Horio' s resin encapsulant would expand
during heating (Ans. 27). Thus, we agree with the Examiner's finding that
Horio teaches preventing a sufficient amount of resin encapsulant from
entering the gap, such that at least some degradation of the LED operation
due to expansion of the encapsulant is prevented (Ans. 15-17, 27).
Claims 9 and 22
Appellants contend the mere fact that Horio' s gap has openings does
not make them "constricted openings," because the term "constricted"
means "to make something narrower, smaller, or tighter," such as a gap
having a body with a cross-sectional area larger than its two ends (App. Br.
15-16). We are not persuaded of Examiner error in the rejection, because
Appellants' arguments regarding the relative cross-sectional area of the body
and ends of the gap are not commensurate with the scope of claims 9 and 22.
We agree with the Examiner's finding that Horio teaches a gap including
constricted openings, where the cross-section of the gap is narrower between
the anode and cathode contacts than at other regions of the gap (Ans. 27-28
(citing Horio Fig. 13)).
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Application 13/112,502
Claim 20
Appellants contend the combination of Horio and Duong does not
teach a curved gap between the anode and cathode that extends along a face
from a first edge of the face to a second edge of the face that is opposite the
first edge, because Duong's gap is a U-shaped gap that begins and ends on
the same face (App. Br. 12-14; Reply Br. 6). Appellants further argue the
Examiner has not provided a rationale for modifying the gap of Horio to be a
curved gap (id.).
We are unpersuaded of error in the rejection, and agree with the
Examiner's finding that the outline of Duong's anode and cathode contacts
forms a gap between them that begins at one edge of the mounting substrate
and extends, along a curved U-shaped path, to a second edge opposite the
first edge, which is all that claim 20 requires (Ans. 23-24 (citing Duong Fig.
6B)). We also find the Examiner has provided "some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness," specifically the curved arrangement of Duong's electrodes
provides a larger area and better heat dissipation for the LED device of
Horio (Ans. 25) (see KSR Int'l v. Teleflex, Inc., 550 U.S. 398, 417-18 (2007)
(quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006))).
Remaining Claims
No separate arguments are presented for the remaining dependent
claims (see App. Br. 16), therefore we sustain their rejections based on
Horio for the reasons stated with respect to independent claims 1, 12, 16,
and 20.
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Application 13/112,502
§ 103 Rejections over David
Because we sustain the rejections of claims 1-23 under 35 U.S.C.
§ 103(a) based on Horio, we find it unnecessary to reach a decision about the
cumulative rejections of claims 1-23 under U.S.C § 103(a) based on David.
See 37 C.F.R. § 41.50(a)(l) ("The affirmance of the rejection of a claim on
any of the grounds specified constitutes a general affirmance of the decision
of the examiner on that claim .... ").
DECISION
We affirm the Examiner's rejection of claims 1-23 under 35 U.S.C.
§ 103(a) based on Horio.
We do not reach the Examiner's rejection of claims 1-23 under
35 U.S.C. § 103(a) based on David.
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
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