Ex Parte Grajcar

Patent Trial and Appeal Board

Mar 30, 2018

13585806 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/585,806 08/14/2012
20277 7590 04/03/2018
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
FIRST NAMED INVENTOR
Zdenko Grajcar
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.
089676-0150 3856
EXAMINER
HOSSAIN, MOAZZAM
ART UNIT PAPER NUMBER
2898
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
ipdocketmwe@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZDENKO GRAJCAR
Appeal2017-004463
Application 13/585,806
Technology Center 2800
Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
WESLEY B. DERRICK, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant 1 appeals from the
Examiner's decision finally rejecting claims 4, 6, 8, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Dai2 in view of Chou. 3 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM. 4
1 According to Appellant, the real party in interest is ONCE
INNOVATIONS, INC. Appeal Br. 1.
2 Dai et al., US 2012/0098458 Al, published April 26, 2012 ("Dai").
3 Chou et al., US 2011/0037387 Al, published February 17, 2011 ("Chou").
This reference is also referred to as "ChouDJ" by both the Examiner and
Appellant.
4 Our decision refers to the Specification ("Spec.") filed August 14, 2012,
the Examiner's Final Office Action ("Final Act.") dated September 11,
Appeal2017-004463
Application 13/585,806
STATEMENT OF THE CASE
The invention relates to a light emitting diode (LED) lighting
assembly that minimizes the components of the lighting structure (Spec.
1: 11-13).
Claim 4, reproduced below from the Claims Appendix to the Appeal
Brief, 5 is illustrative of the subject matter on appeal. The limitation at issue
is italicized.
4. A light emitting assembly comprising:
an AC input;
a printed circuit board having electrically conductive pathways
on a top surface;
a plurality of electrical component dies, including both driving
component dies and at least one light emitting diode die in electrical
communication with the electrically conductive pathways;
said driving component dies including at least one transistor;
said electrical component dies providing a driving electrical
input for the light emitting diode die from the AC input;
wherein the driving component dies, a rectifier and the light
emitting diode die lie on the same plane,
wherein the plane is the top surface of the printed circuit board,
and
wherein the light emitting diode die engages and runs along the
top surface of the printed circuit board adjacent to the electrically
conductive pathways on the top surface to form an interface surface
between the light emitting diode die and the printed circuit board to
convey heat through the light emitting diode die to the printed circuit
board; and
2015, Appellant's Appeal Brief ("Appeal Br.") filed July 7, 2016, the
Examiner's Answer ("Ans.") dated November 18, 2016, and Appellant's
Reply Brief ("Reply Br.") filed January 18, 201 7.
5 In Appellant's response, filed September 22, 2016, to the Notice ofNon-
Compliant Appeal Brief dated September 8, 2016, Appellant provides a
Corrected Claims Appendix from which this copy of claim 4 was obtained.
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Appeal2017-004463
Application I3/585,806
wherein the driving component dies engage and run along the
top surface of the printed circuit board to form an inteiface surface
between the driving component dies and the printed circuit board to
convey heat through the driving component dies to the printed circuit
board.
ANALYSIS
After review of the opposing positions articulated by Appellant and
the Examiner, the applied prior art, and Appellant's claims and Specification
disclosures, we determine that the Appellant's arguments are insufficient to
identify reversible error in the Examiner's obviousness rejections. In re
Jung, 637 F.3d I356, I365 (Fed. Cir. 20I I). Accordingly, we affirm the
stated obviousness rejections for substantially the fact findings and the
reasons set forth by the Examiner in the Examiner's Answer and the Final
Office Action. We offer the following for emphasis only.
Appellant argues the rejected claims together as a group.
Accordingly, we select claim 4 as the representative claim on which we
focus in deciding this appeal. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds Dai teaches a light emitting assembly
substantially as claimed except that it does not explicitly disclose that the
driving component dies include at least one transistor (Final Act. 6-8, citing
Dai, Figs. IA-ID, 7). The Examiner, however, finds Chou teaches a light
emitting diode lamp with a dimmable circuit having transistors within a
control and interface for connection to rectifier diodes (id. at 8). The
Examiner concludes it would have been obvious to incorporate such a
control having a transistor into Dai's driver circuit for enhancing Dai's
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Appeal2017-004463
Application 13/585,806
functionality with dimming features and for providing overcurrent protection
as taught by Chou (id. at 9).
Appellant argues that Dai fails to teach driving component dies which
engage and run along the top surface of the printed circuit board (PCB) to
form an interface surface between the driving component dies and the PCB
(Appeal Br. 3). Appellant contends, instead, that Dai discloses control
module C, including current limiting unit C 1 and rectifier unit C2, rests on
an intermediate substrate that is neither numbered nor individually called
out, and whose purpose Dai does not disclose (id.). 6 Appellant urges that
Dai even teaches, in Figures 11 and 12, the intermediate substrate C' on
which the control module C is disposed (id. at 4). Appellant asserts that,
unlike this package structure including the intermediate substrate C', the
light emitting chip dies engage the PCB in a bare die state (id.; see also
Reply Br. 1-3).
Appellant's arguments are not persuasive of reversible error. Initially,
we note, as did the Examiner (Ans. 6), that contrary to Appellant's
contention, Dai does not teach or require an intermediate substrate on which
control module Crests in the Figure lB embodiment. For ease of reference,
Dai's Figure lB is reproduced below.
6 Nonetheless, Appellant contends that, in Figure lB, Dai depicts the control
module dies as "clearly sitting on an intermediate substrate" (Appeal Br. 5).
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Appeal2017-004463
Application 13/585,806
4
3
310 ]o
i I
J
31
'-y-J
3
13 ( I
1
FIG. lB
z
20
'-.,,-J
2
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102 100 101103
"'-----·-y·····-........ ./
10
Figure lB of Dai depicting a first embodiment cross-sectional view of a
multichip package structure.
As seen in Dai's Figure lB, control module Crests on the same
conductive pads 102 that light-emitting units/chips 2/20 rest on. Further Dai
describes substrate body 10, which includes circuit substrate 100, heat-
dissipating layer 101, conductive pads 102, and insulative layer 103, as a
PCB (Dai i-f 34, "the substrate body 10 can be a PCB"). As such, Dai's
control module C, in the embodiment disclosed in Figure lB, does engage
and run along the top surface of the PCB to form an interface surface
between this control module and the PCB, as the Examiner finds.
Further, although Appellant contends that Dai's Figures 11 and 12
depict an intermediate substrate C' between control module C and substrate
body 10, we note that these figures depict a different embodiment from that
of Dai's Figure lB. Appellant fails to direct our attention to any disclosure
in Dai requiring such an intermediate substrate as shown in the embodiment
of Figures 11 and 12 for any of the other embodiments, much less the
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Appeal2017-004463
Application 13/585,806
embodiment of Figure lB, nor do we find any. Indeed, Dai describes
intermediate substrate C' as an annular substrate that surrounds light-
emitting chips 20 to form position limiting space 300 into which light-
permitting package colloid body 40 is filled to cover light-emitting chips 20
(Dai i-f 62). In contrast, Dai's Figure lB embodiment provides frame unit 3
including first annular colloid frame 30 which surrounds light-emitting chips
20 and second annular colloid frame 31 which surrounds control module C
for similarly confining light-permitting package colloid body 40/41 (id.
i-fi-137, 39). Unlike the embodiment of Figures 11 and 12, control body C in
the Figure lB embodiment does not rest on frame unit 3/30/31.
Appellant next argues that the Examiner's obviousness rejection is
based on improper hindsight (Appeal Br. 5). Appellant contends that,
without the benefit of hindsight, the prior art fails to teach or suggest, and
there is no reason to combine Dai and Chou to arrive at, the light emitting
assembly of claim 4 (id. at 6). In particular, Appellant urges that Chou
utilizes a transistor to assist in dimming properties, an additional
functionality not provided in Dai, which if used in Dai would result in an
increase in the number of components in direct contradiction with Dai's
stated objective (id. at 7).
The Examiner has the initial duty of supplying the requisite factual
basis and may not, because of doubts that the invention is patentable, resort
to speculation, unfounded assumptions, or hindsight reconstruction to supply
deficiencies in the factual basis. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) ("To facilitate review, [the obviousness] analysis should be
made explicit."); see also In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)
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Appeal2017-004463
Application 13/585,806
("[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness."), quoted with approval in KSR, 550 U.S. at 418.
Initially, we note Appellant fails to direct our attention to any
disclosure in Dai expressly or impliedly stating an objective to reduce the
number of components in the LED package structure or to otherwise
minimize the number of components or the functionalities of this structure,
nor do we find any. Dai notes numerous disadvantages of "traditional
lamps" that adopt incandescent bulbs, fluorescent bulbs, or power-saving
bulbs as the purpose for developing replacement LED package structures
(Dai i-f 4). Dai further desires to provide such package structures that can be
directly electrically connected to an AC power source (id. i-f 5). The last
paragraph of Dai that Appellant directs attention to in support of this
argument, paragraph 53, discusses the difference between the fifth and sixth
embodiments. This difference is not a reduction in the number of
components, but the inclusion of phosphor powders in each first annular
colloid frame 30 to decrease or eliminate dark bands generated between the
first package colloid bodies 40a, 40b (id. i-f 53).
Moreover, as Appellant notes, Chou teaches the use of the transistor is
to enable the LED lighting assembly to have an additional functionality,
dimming. It is this very reason which, as the Examiner set forth in the
rejection, motivates one of ordinary skill in this art, to combine Dai and
Chou in such a manner as to provide Dai's LED lighting assembly with a
dimming functionality through the use of, among other things, a transistor.
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Thus, the motivation for the combination of Dai and Chou, as the Examiner
proposes, comes not from Appellant's disclosure, but from express teachings
in the prior art. Accordingly, the Examiner has provided articulated
reasoning with sufficient rational underpinning to support the legal
conclusion of obviousness by a preponderance of the evidence.
Finally, in the Reply Brief, Appellant presents a new argument not
raised in the Appeal Brief, contending that the Examiner does not explain,
nor is there a teaching in Chou, how or where the transistor is incorporated
into Dai's circuit to result in the dimming feature and overcurrent protection
taught in Chou (Reply Br. 4). Under regulations governing appeals to the
Board, any new argument not timely presented in the Appeal Brief will not
be considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument could not have been presented in the Appeal
Brief. See 37 C.F.R. § 41.41(b)(2); In re Hyatt, 211F.3d1367, 1373 (Fed.
Cir. 2000) (noting that an argument not first raised in the brief to the Board
is waived on appeal); Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010)
(explaining that arguments and evidence not timely presented in the
principal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 14 73, 14 77
(BPAI 2010) (informative) ("Properly interpreted, the Rules do not require
the Board to take up a belated argument that has not been addressed by the
Examiner, absent a showing of good cause."). Appellant has provided this
record with no such showing and, therefore, this argument has been waived.
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Application 13/585,806
DECISION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Examiner's Answer, the decision of the
Examiner rejecting claims 4, 6, 8, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Dai in view of Chou is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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