Ex Parte Harrison et al

Patent Trial and Appeal Board

Oct 17, 2016

12948591 (P.T.A.B. Oct. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/948,591 11/17/2010
61529 7590
Neugeboren O'Dowd PC
1227 Spruce Street
SUITE 200
BOULDER, CO 80302
10/19/2016
FIRST NAMED INVENTOR
Daniel J. Harrison
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.
TLX-007-C 4117
EXAMINER
JOHNSON, CHRISTINE
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
10/19/2016 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):
craig@neugeborenlaw.com
sean@neugeborenlaw.com
rene@neugeborenlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL J. HARRISON and STEVENS. DA VIS
Appeal2015-004793
Application 12/948,591
Technology Center 3600
Before TERRY J. OWENS, CHRISTOPHER L. OGDEN, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 TerraLUX, Inc. is identified as the real party in interest. (Appeal Brief,
filed August 18, 2014 ("App. Br."), 2.)
2 Non-Final Rejection mailed April 3, 2014 ("Non-Final Act."). The record
indicates that there are at least two rejections previously issued including a
Non-Final Rejection dated January 17, 2013, and a Final Action dated July
29, 2013.
Appeal2015-004793
Application 12/948,591
CLAIMED SUBJECT MATTER
The claims are directed to a "thermal-management circuit [that]
determines a current thermal operating point of an LED." (Spec. ,-i 14.)3
According to the '591 Specification, "[b ]y referencing stored thermal
operating range data specific to that type or category of LED, the circuit is
able to adjust power to the LED accordingly." (Id.) "The stored thermal
operating range data is [said to be] more accurate than, for example, data
estimated via use of a thermistor, so the circuit is able to run the LED
brighter than it otherwise could be." (Id.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A thermal-management circuit for an LED, the circuit
compnsmg:
circuitry for determining a current thermal operating point
of the LED;
circuitry for obtaining a thermal operating range of the
LED and for calculating a new operating point of the LED based
on the current thermal operating point and the thermal operating
range, wherein the new operating point is within the thermal
operating range; and
a generator for generating a control signal that adjusts
power delivered to the LED to cause the LED to operate at the
new operating point, thereby extending the life of the LED.
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
3 Application 12/948,591, LED Thermal Management, filed November 17,
2010. We refer to the '"591 Specification," which we cite as "Spec."
2
Appeal2015-004793
Application 12/948,591
Jungwirth US 2007/0040512 Al Feb.22,2007
Prendergast Thermal design considerations for Feb. 12, 2007
high-power LED Systems, EE
Times
REJECTIONS
Claims 1-17 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Jungwirth in view of Prendergast. (Final Act. 2.)
OPINION
In rejecting claim 1 over Jungwirth and Prendergast, the Examiner
finds that "Appellant's argument fails to structurally distinguish claims 1
and 8 from the disclosures of the cited references." (Ans. 2 (citing MPEP
2214 ). )4 Appellants, on the other hand, argue that the prior art disclosures
are "directed to a completely different problem" and "hav[ e] nothing to do
with extending the lifetime of the LED." (App. Br. 5 and 6; see also Reply
5.)s
In addition, the Examiner acknowledges that Jungwirth does not
expressly disclose limitations including a "circuitry for obtaining a thermal
operating range of the LED and for calculating a new operating point of the
LED based on the current thermal operating point and the thermal operating
range, wherein the new operating point is within the thermal operating
range" and "a generator for generating a control signal that adjusts power
delivered to the LED to cause the LED to operate at the new operating point,
4 Examiner's Answer dated February 5, 2015 ("Ans.").
5 Reply Brief dated March 23, 2015 ("Reply").
3
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Application 12/948,591
thereby extending the life of the LED." (Ans. 3.) The Examiner therefore
cites Prendergast for the teaching of these limitations. (Id.)
Specifically, the Examiner finds that Prendergast teaches "methods of
compensating for changes in color output and brightness over temperature"
by considering "all aspects of the design, including electronic, optical, and
mechanical design[.]" (Prendergast at 2 (cited in Ans. 3).) The Examiner
finds that Prendergast teaches that "the simplest method of color
compensation is to use junction temperature feedback .... " (Prendergast at
2 (cited in Ans. 3).) The Examiner finds that Prendergast teaches
"measuring the board temperature and the LED forward voltage and current"
and " [ u] sing straight-line approximations of the vendor's temperature
characteristic plots the color and brightness properties of the LEDs are
approximated and refreshed to be consistent with the new temperature."
(Prendergast at 2 (italics added) (cited in Ans. 3).) The Examiner further
finds that Prendergast teaches a "mixed-signal microcontroller [that] allows
designers to measure the LED parameters, calculate a mixed color point, and
generate drive signals ... to drive the LEDs to the correct mixed color
point." (Prendergast at 2 (cited in Ans. 3).)
Based on the notion that "it is notoriously well known in the art to
operate devices at operating points within their thermal operating ranges,"
the Examiner concludes that it would have been obvious to a skilled artisan
to "modify the device disclosed by Jungwirth in accordance with the
teaching of Prendergast regarding LED thermal design considerations
(Prendergast, Title) to arrive at Appellant's claimed invention in order to
drive the LEDs to the correct mixed color point." (Ans. 4.)
In making an obviousness determination one "can take account of the
inferences and creative steps that a person of ordinary skill in the art would
4
Appeal2015-004793
Application 12/948,591
employ." KSR Int'!. Co. v. Tele.flex Inc., 550 U.S. 398, 418 (2007). Here,
the Examiner has not provided evidence or reasoning which shows that
given the combined prior teachings and the notion "to operate devices at
operating points within their thermal operating ranges" (Ans. 4), a skilled
artisan, through no more than ordinary creativity, would have arrived at
operating an LED "at the new operating point" - different from the "current
thermal operating point" yet still "within the thermal operating range" -
"thereby extending the life of the LED" as recited in claim 1.
Although it is unclear whether, on this record, Appellants propose that
"the new operating point" as recited should be understood to "permit [the
LED] to operate as brightly as possible within the safety range because that
range is not known for the particular LED" (App. Br. 6), the Examiner has
not established that the prior art LED system is capable of carrying out all
the recited functions including "generating a control signal that adjusts
power delivered to the LED to cause the LED to operate at the new
operating point, thereby extending the life of the LED."
While "familiar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle," KSR, 550 at
420, the Examiner here reversibly erred by failing to show that each and
every limitation of the claim is described or suggested by the combination of
prior art references or would have been obvious based on the knowledge of
those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir.
1988).
Based on the foregoing, we conclude that the Examiner has not
established a prima facie case of obviousness of claim 1 or claim 8. As a
5
Appeal2015-004793
Application 12/948,591
result, prima facie cases of obviousness of dependent claims of claim 1 and
claim 8 have not been established. 6
DECISION
The Examiner's rejection of claims 1-17 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
REVERSED
6 It is therefore unnecessary to address Appellants' separate arguments for
dependent claims 7 and 17.
6