Ex Parte Ranish et al

Patent Trial and Appeal Board

Jul 21, 2016

11675150 (P.T.A.B. Jul. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111675, 150 02/15/2007 Joseph M. Ranish
67251 7590 07/25/2016
SERVILLA WHITNEY LLC/AMT
33 WOOD A VE SOUTH
SUITE 830
!SELIN, NJ 08830
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.
011391/USA/AGS/SPARES/DP 5760
EXAMINER
CAMPBELL, THOR S
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
07/25/2016 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):
docket@dsiplaw.com
jescobar@dsiplaw.com
lmurphy@dsiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH M. RANISH and KHURSHED SORABJI
Appeal2014-005450
Application 11/675,150
Technology Center 3700
Before JENNIFERD. BAHR, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joseph M. Ranish and Khurshed Sorabji (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1--4, 6-13,
and 15-21, which are the only claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2014-005450
Application 11/675,150
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A lamp assembly for use in rapidly heating a substrate in a
thermal processing chamber comprising:
a quartz bulb enclosing at least one radiation generating
filament attached to a pair of electrical connectors, the bulb
having an interior surface containing a halogen gas and an
exterior surface;
a lamp base including the pair of electrical connectors, at
least a portion of the bulb having a surface treatment extending
from the lamp base on a lower portion of the bulb comprising a
diffuse scattering component on the interior surface, such that
when the lamp assembly is placed in an array to rapidly heat the
substrate to temperatures up to at least 1100° C, the coating
minimizes movement of radiation towards the lamp base and the
bulb can withstand rapid temperature changes in the rapid
thermal processing chamber.
REJECTION
Claims 1--4, 6-13, and 15-21 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Trujillo (US 7,522,822 B2, iss. Apr. 21, 2009),
Leyendecker (US 4,074,164, iss. Feb. 14, 1978), Kuhl (US 3,093,769, iss.
June 11, 1963), Spaeth (US 2,179,455, iss. Nov. 7, 1939), and Honda
(US 5,512,798, iss. Apr. 30, 1996). 1
1 It appears that the Examiner relies on Honda only in addressing the
additional limitations of claims 8-10. Final Act. 7-8, 17-18.
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Application 11/675,150
DISCUSSION
Claims 1-4, 6-13, and 21
The Examiner determines that "one would be motivated to modify the
Trujillo device to include a coating to reflect the 'intense heat' that is known
to be generated [Spaeth, column 2, lines 5-56](Trujillo column 1, line[s] 23-
4 7) as an additional measure to reduce the temperature of the seal area"
because "[t]he addition of reflective coatings to the inside or outside surface
of a light bulb is a well known and established practice that one of ordinary
skill would find to be obvious. See Leyendecker, Kuhl and Spaeth as
evidence." Final Act. 3, 5. According to the Examiner, "[c]ombining two
known means of reducing heat in the pinch seal area [(i.e., the heat sink of
Trujillo and a coating as taught by Leyendecker, Kuhl, or Spaeth)] is a
quintessential improvement on the prior art and motivation on [its] own."
Id. at 5; see Trujillo, col. 1, 11. 23--43 (describing the use of a heat sink for
reducing the operating temperature of the lamp base, particularly at the
pinch seal end).
Appellants contend:
[T]he Examiner failed to establish prima facie obviousness due
to the failure of the cited art to disclose the limitation that at least
a portion of the bulb having a surface treatment extending from
the lamp base on a lower portion of the bulb to reflect light away
from the lamp base, wherein the surface treatment comprises a
diffuse scattering component on the inner surface of a portion of
the bulb. Moreover, there is no reason to combine the references
as set forth in this record, other than through the use of
impermissible hindsight.
Appeal Br. 10-11.
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Application 11/675,150
Furthermore, Appellants submit:
Each of Leyendecker, Kuhl, Spaeth and Honda are silent
regarding a coating to prevent heating of the lamp base for use in
a rapid thermal processing environment. There is no teaching or
suggestion of such because each of these references is entirely
concerned with directing and focusing the light emitted by the
filament. Absent the Appellants['] teachings, there is no reason
why one skilled in the art would look to any of Leyendecker,
Kuhl, Spaeth or Honda for methods of minimizing heat buildup
in the lamp base.
Id. at 22.
As noted above, the Examiner finds motivation in Spaeth and Trujillo
to add a coating to reflect the intense heat that is generated. Final Act. 5
(citing Spaeth 2, col. 1, 11. 5-56; Trujillo, col. 1, 11. 23--47). However
Spaeth's teachings, when considered in their entirety, fail to support, by a
preponderance of the evidence, a finding that the type of coating on the
interior of the bulb contemplated by Spaeth would necessarily minimize
movement of radiation toward the lamp base; as called for in claim 1.
Spaeth discloses that "an internal coating of silver or other reflecting
medium ... has the effect of concentrating all the light of the lamp and
directing it outwardly in a defined beam." Spaeth 2, col. 1, 11. 45-50.
Moreover, Spaeth states that "[a] reflecting disk 16 ... cooperates with the
walls of the bulb as a reflector, and also acts as a shield to protect the mount
from the intense heat generated in the lamp." Id. at 2, col. 1, 11. 50-56; see
also id., Fig. 1. Spaeth' s description of reflecting disk 16 cooperating with
the silver-coated walls of the bulb suggests that, rather than reflecting
radiation away from the lamp base, thus minimizing movement of radiation
towards the lamp base, the silver or other reflective coating might actually
reflect radiation back toward the lamp base, thereby concentrating it on
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Appeal2014-005450
Application 11/675,150
intervening reflecting disk 16, which then reflects it outwardly in a beam
toward rounded end 10.
Kuhl and Leyendecker have similar constructions to that of Spaeth,
with a coating on the interior surface of the bulb. Kuhl discloses outer
envelope 1 with reflector portion 3 comprising inner reflector coating 4, as
well as a frosting on the inner surface of bowl portion 6 to prevent glare
during radiation. Kuhl, col. 2, 11. 38--42, 50-52. Leyendecker teaches bulb 7
with reflector 8 comprising a layer of aluminum on the inner wall surface of
the paraboloidal bulb portion. Leyendecker, col. 4, 11. 22-26. Moreover,
Leyendecker discloses heat reflective coating 6 of zirconium dioxide on
external surfaces of the end portions of arc tube 1, as depicted in the Figure
of Leyendecker. Id. at col. 4, 11. 19-21. Although Leyendecker does not
elaborate further on the function of heat reflective coating 6, it appears to
serve a similar function to that of Spaeth's reflecting disk 16. Honda
discloses coating bulb 1 with transparent conductive film 4, insulator film 5,
and phosphor film 6 to restrict the reaction of the ultraviolet rays and
ultimately make the yellowing and blackening less visible. Honda, col. 13,
11. 17-58; col. 15, 11. 4--17; col. 15, 1. 50-col. 16, 1. 13.
None of Spaeth, Kuhl, Leyendecker, and Honda, whether considered
alone or in combination with each other and Trujillo, provides a teaching of
applying a coating (surface treatment) to the interior surface of the bulb
extending from the lamp base to minimize movement of radiation towards
the lamp base, as required by claim 1. In fact, as discussed above, one of
ordinary skill in the art might well infer from the teachings of Spaeth and
Leyendecker of providing heat reflectors within the central interior of the
bulb for use in cooperation with coatings on the interior surface of the bulb
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Appeal2014-005450
Application 11/675,150
that such coatings might actually reflect radiation inward, toward the lamp
base. Therefore, the Examiner's articulated reason to combine the teachings
of Spaeth, Kuhl, Leyendecker, or Honda with Trujillo (i.e., to reduce heat,
and thus temperature, in the pinch seal area) is grounded on unsupported
findings and, thus, lacks a rational underpinning.
Accordingly, we do not sustain the rejection of independent claim 1 or
claims 2--4, 6-13, and 21, which depend directly or indirectly from claim 1,
under 35 U.S.C. § 103(a) as unpatentable over Trujillo, Leyendecker, Kuhl,
Spaeth, and Honda.
Claims 11-13 and 15-20
Appellants' claim 15, requires, inter alia, "a sleeve surrounding the
lamp base, the sleeve having a cross-sectional area that is less than 0.95
times the cross-sectional area of the bulb." Appeal Br. 39 (Claims App.).
Claim 11 recites a sleeve "cross-sectional area that is less than 1.2 times" the
bulb cross-sectional area; claim 12 recites a sleeve cross-sectional area that
is "less than 0.95 times" the bulb cross-sectional area; and claim 13 recites a
sleeve cross-sectional area that is "less than 0.42 times" the bulb cross-
sectional area. Id. at 38.
The Examiner finds that "[f]rom the drawings [of Trujillo], the cross-
sectional area of the block 38 can be seen to be less than about [1.2, 0.95, or
0.42] times that of the bulb" and "explicitly teaches the manipulation of the
size of the block 38 to optimize the cooling effect desired." Final Act. 8-10.
The Examiner then concludes that "[t]herefore it would be obvious to one of
skill to optimize the cross-sectional area of the block 3 8 and arrive at the
claimed ratios of cross-sectional areas." Id.
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Appeal2014-005450
Application 11/675,150
Appellants contend, "there are no dimensions given in Trujillo for the
ceramic heat sink [(i.e., block 38)] or the bulb, and there is no indication in
Trujillo that the drawings are to scale. As such, it is improper for the
Examiner to rely on the drawings as disclosing precise proportions of
elements." Appeal Br. 33. Moreover, Appellants add, "there is absolutely
nothing in Trujillo that would have suggested minimizing the cross-sectional
area of the sleeve around the lamp base" to the specific ratio claimed. Id.
In responding to Appellants' arguments, the Examiner points out that
"the claim language is not sufficiently distinct to obviate the applied
rejection since from the drawings, the cross-sectional area of the block 38
can be seen to be less than about [ 1.2 times, 0.42 times, and 0.95 times] that
of the bulb."' Ans. 21. The Examiner characterizes claim 15 (as well as
claims 11-13) as having vague language due to the term "about." Id.; see
also Final Act. 8-10 (noting that "the phrase 'less than about [1.2, 0.95, or
0.42] times' is considered rather vague since applicant has neither provided
specific description of what constitutes 'about' and further since applicant
has not claimed a specific cross-sectional area of the bulb to which the cross-
sectional area of the sleeve/block 38 can be compared."). However, the term
"about" is not present in any of claims 11-13 and 15. See Appeal Br. 38-39
(Claims App.). 2 Consequently, the Examiner's comments regarding the
term "about" are moot.
The Examiner relies solely on Figure 2 to show that Trujillo discloses
the claimed ratio of sleeve cross-sectional area to bulb cross-sectional area.
See Final Act. 8-10; Ans. 20-21. However, the Examiner does not point to
2 The term "about" was removed from claims 11-13 and 15 in an
Amendment filed on September 14, 2012.
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Appeal2014-005450
Application 11/675,150
any indication in Trujillo that the drawings are to scale. Therefore, the
Examiner's reliance on the drawings of Trujillo for the relative dimensions
of the cross-sectional areas of the sleeve and the bulb is improper. "[I]t is
well established that patent drawings do not define the precise proportions of
the elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue." Hockerson-Halbertstadt,
Inc. v. Avia Grp. Int'!, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (holding that
where a patent was devoid of any indication that the drawings were to scale,
the drawings could not be relied upon to construe whether the term "central
longitudinal groove" required that the width of the groove be less than the
combined width of the fins).
In the alternative, the Examiner determines "it would be obvious to
one of skill to optimize the cross-sectional area of the block 3 8 and arrive at
the claimed ratios of cross-sectional areas." Final Act. 8-10.
As explained in In re Applied Materials, Inc., 692 F.3d 1289, 1295
(Fed. Cir. 2012):
"[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation." [In re Aller, 220 F.2d 454,
456 (CCPA 1955)]. This rule is limited to cases in which the
optimized variable is a "result-effective variable." In re Antonie,
559 F.2d 618, 620 (CCPA 1977); see [In re Boesch, 617 F.2d
272, 276 (CCPA 1980)] ("[D]iscovery of an optimum value of a
result effective variable . . . is ordinarily within the skill of the
art."). In the present case, because the prior art disclosed values
overlapping the claimed ranges, the "general conditions" of the
claim are disclosed. See Aller, 220 F.2d at 456; see also Boesch,
617 F.2d at 276. The question is whether the dimensions were
known to be result-effective variables.
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Appeal2014-005450
Application 11/675,150
Trujillo discloses that "[t]he heat transfer from the pinch seal end 34
can be tuned by adjusting the size of the block 38, the cross-sectional
dimensions and length of the posts 40, and the thermal conductivity of the
ceramic material of the block 38." Trujillo, col. 4, 11. 44--47. Trujillo also
discloses that recessed inner surface 44 of cavity 42 of block 38 should
closely conform to external surface 35 of pinch seal end 34 and that any
gaps surfaces 44 and 3 5 is filled with filler material to provide a continuous
thermal interface. Id., col. 3, 11. 45---62. However, the Examiner does not
point to any evidence in the record before us showing that the size of block
3 8 is manipulated with respect to the cross-sectional area of the bulb to
optimize the cooling effect or that the ratio of the cross-sectional area of
block 38 to the cross-sectional area of the bulb was recognized in the art as a
result-effective variable. Thus, the Examiner does not establish the requisite
factual basis to support the determination that the claimed ratio of cross-
sectional area of the sleeve to that of the bulb (i.e., the sleeve having a cross-
sectional area that is less than 1.2 times, 0.95 times, or 0.42 times the cross-
sectional area of the bulb) amounts to nothing more than routine
optimization.
Accordingly for the above reasons, we do not sustain the rejection of
independent claim 15 or claims 16-20, which depend from claim 15, under
35 U.S.C. § 103(a) as unpatentable over Trujillo, Leyendecker, Kuhl,
Spaeth, and Honda. For these same reasons, in addition to the reasons
discussed above in relation to claim 1, we also do not sustain the rejection of
claims 11-13 under 35 U.S.C. § 103(a) as unpatentable over Trujillo,
Leyendecker, Kuhl, Spaeth, and Honda.
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Appeal2014-005450
Application 11/675,150
DECISION
The Examiner's decision rejecting claims 1--4, 6-13, and 15-21 under
35 U.S.C. § 103(a) as unpatentable over Trujillo, Leyendecker, Kuhl,
Spaeth, and Honda is REVERSED.
REVERSED
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