Ex Parte Scotch et al

Patent Trial and Appeal Board

Oct 13, 2016

13170276 (P.T.A.B. Oct. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/170,276 06/28/2011
24252 7590
OSRAM SYLVANIA Inc.
200 Ballardvale Street
Wilmington, MA 01887
10/13/2016
FIRST NAMED INVENTOR
Adam M. Scotch
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.
2011Pl3596US 3517
EXAMINER
DIALLO, MAMADOU L
ART UNIT PAPER NUMBER
2895
MAILDATE DELIVERY MODE
10/13/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM M. SCOTCH and DAVID W. HAMBY1
Appeal2015-003328
Application 13/170,276
Technology Center 2800
Before MARK NAGUMO, CHRISTOPHER C. KENNEDY, and
JULIA HEANEY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-5, 7, 8, and 21-29. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a method for providing
electrostatic discharge (ESD) protection to light emitting diode (LED)
systems. E.g., Spec. i-f 1; Claim 1. Claim 1 is reproduced below from page 6
(Claims Appendix) of the Appeal Brief:
1 According to the Appellants, the Real Party in Interest is OSRAM
SYLVANIA Inc. Br. 1.
Appeal2015-003328
Application 13/170,276
1. A method of providing electro-static discharge (ESD) protection
to a plurality of light emitting diodes (LEDs) wherein said
plurality of LEDs are deposited on a flexible substrate, said
method comprising:
providing an ESD diode; and
depositing said ESD diode as a thin film structure directly on said
flexible substrate in proximity to said plurality of LEDs wherein
said proximity is determined based on a requirement for ESD
protection reliability.
REJECTIONS ON APPEAL
1. Claims 1, 3, 5, 7, 21, 23, 25, and 26 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lee (US 2007/0236443 Al, published Oct. 11,
2007) in view of Oh et al. (US 2008/0265272 Al, published Oct. 30, 2008).
2. Claims 2, 4, 22, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee in view of Oh, further in view of Timans
(US 2012/0208377 Al, claiming priority to application filed on Apr. 8,
2005).
3. Claims 8 and 27-29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee in view of Oh, further in view of Tripathy et al. (US
2002/0183470 Al, published Dec. 5, 2002).
ANALYSIS
The Appellants argue the claims as two groups: (1) claims 1, 3, 5, 7,
21, 23, 25, and 26, with arguments focusing on limitations that appear in
claim l; and (2) claims 8 and 27-29, with arguments focusing on further
limitations that appear in claim 8, which depends from claim 1. See Br. 3--4.
The Appellants request reversal of the rejection of claims 2, 4, 22, and 24 for
reasons asserted with respect to claim 1. See id. at 4. We select claims 1
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and 8 as representative of the rejected claims. Claims 2-5, 7, and 21-26 will
stand or fall with claim 1. Claims 27-29 will stand or fall with claim 8.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, and in the Examiner's Answer. See generally Final Act.
2-15; Ans. 2-18.
Claim 1.
Relying largely on Figure 3 of Lee, the Examiner finds that Lee
discloses each element of claim 1 except ( 1) "wherein said proximity [of
ESD diode to LEDs] is determined based on a requirement for ESD
protection reliability," and (2) depositing the disclosed ESD diode "as a thin
film structure." Ans. 3--4. Figure 3 of Lee is reproduced below:
I
l
'-------~-----------~~----------------------)
Figure 3 discloses flexible printed circuit board 30, a plurality of LEDs
3 lA-D, 32A-D, and 33A-D, and ESD (zener) diodes 34A---C. See Lee
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iii! 21-24. Lee discloses that elements 34A---C are formed "separately" from
the RGB assemblies 31-33 and are "for protecting RGB LED chips ... from
static electricity." Id. if 21. Concerning the "proximity" limitation of
claim 1, the Examiner concludes that "it would have been obvious ... to
place the ESD 34 to be on the FPCB 30 but separate from the RGB
assemblies 31, 32, 33 as taught by Lee because the ES[D] protection
reliability is increased by placing the ESD on the FPCB but separate from
the RGB assemblies." Ans. 3--4.
Concerning deposition of the ESD diode as a thin film structure, the
Examiner finds that Oh teaches or suggests depositing a zener diode as a thin
film structure, and concludes that "it would have been obvious ... to modify
the ESD zener diode of Lee, with zener diode as a thin film structure as
taught by Oh, because Lee is silent as to how the zener diode of the ESD
circuit is formed and Oh is disclosing that it is known to form a zener diode
as a thin film structure." Id. at 4 (emphasis omitted).
The Appellants argue that Oh does not teach depositing an ESD diode
as a thin film structure directly on a flexible substrate, as required by claim
1. See Br. 3--4. In particular, they argue that Oh's ESD diode is not
deposited on a flexible substrate, and that Oh's ESD diode is "not entirely
formed as a thin film structure." Id. at 3.
Those arguments do not persuade us of reversible error in the
Examiner's obviousness rejection. Oh teaches that the combination of layers
23a and 21 forms zener diode 22. See Oh Fig. 1, if 32. Similar to the
disclosures of both Lee and the Appellants' Specification, Oh teaches that
zener diodes can be used to prevent ESD damage. See Oh if 4; Lee if 9;
Spec. if 11. Similar to the Appellants' Specification, Oh teaches that
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traditional processes of mounting a zener diode are expensive. Compare
Oh i-f 4 ("[S]ince a zener diode is expensive and processes of mounting the
zener diode are added, the number of processes of packaging a light emitting
diode and fabrication costs thereof are increased.") with Spec. i-f 12
("Typically only one or two SMT mounted ESD diodes 206 are provided on
an LED module 202 due to the relatively large footprint and cost of the SMT
mounted device as well as the additional burden on the OEM due to the
solder reflow process."). Accordingly, Oh teaches that zener diodes, along
with a light emitting device, can be formed on substrates as layers, thereby
avoiding the conventional process. Compare Oh i-fi-110, 17, 38, 52 with
Spec. i-f 13 ("An ESD protection diode 306 is provided for each LED 304,
through a deposition or printing process which results in a significantly
reduced cost and footprint compared to the SMT mounted approach
previously described.").
The Appellants assert that Oh "teaches that the zener diode is
deposited on a p-type silicon substrate which the Applicants have asserted,
and the Examiner did not dispute, is not flexible." Br. 3 (emphasis in
original). The p-type substrate referenced by the Appellants, however, is
part of the zener diode itself. See Oh i-f 32 ("The first N-type compound
semiconductor layer 23a and the P-type silicon substrate 21 are subjected to
p-njunction to form a zener diode 22."). The Appellants fail to persuasively
explain the relevance of whether or not layer 21 is flexible, because layer 21
is not the "flexible substrate" recited by claim 21. The Examiner finds that
layer 21 is part of an ESD diode as required by claim 1, and the plain
language of claim 1 does not require that the ESD diode be flexible.
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Even assuming that Oh does not disclose the deposition of its zener
diode onto a flexible substrate, see Br. 3, there is no dispute that Lee teaches
a flexible substrate comprising zener diodes to reduce or prevent ESD, see,
e.g., Lee i-fi-19, 12, 21-24. Contrary to the Appellants' suggestions, see Br. 4,
the Examiner's rationale does not require bodily replacement of Oh's p-type
substrate 21 with Lee's flexible substrate; the Examiner proposes forming "a
p-type silicon substrate or layer 21 of Oh" on Lee's flexible substrate "and
depositing then-type semiconductor layer 23a" thereon to form zener diode
22 as depicted in Fig. 1 of Oh. See Ans. 4, 14--15. Under that scenario,
which the Appellants do not persuasively address, Oh's zener diode is
deposited onto a flexible substrate. While the Appellants assert that a person
of ordinary skill would not have had a reasonable expectation of success in
achieving such a deposition, see Br. 4, they fail to provide persuasive
evidence or technical reasoning in support of that contention. See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a
brief cannot take the place of evidence."). As noted above, the Appellants'
contention appears to be based on the simple replacement of Oh's p-type
substrate 21 with Lee's flexible substrate, which is a misinterpretation of the
Examiner's rationale.
The Appellants also argue that"[ o ]nly then-type semiconductor layer
23a of zener diode 22 qualifies as a deposited thin film. Nothing in Oh ...
indicates that the p-type silicon substrate 21 is formed as a thin film. Thus,
the zener diode 22 [of Oh] is not entirely formed as a thin film structure."
Br. 3. That argument is not persuasive because it is not supported by
evidence or technical reasoning. See Pearson, 494 F.2d at 1405. Oh
discloses deposition processes for certain of its layers, including a p-type
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Application 13/170,276
layer. See Oh if 52. The Appellants provide no persuasive argument that a
person of ordinary skill in the art would not have considered layer 21 to be a
thin film, as suggested by the Examiner. See Ans. 14. Even if a person of
ordinary skill in the art would not have considered layer 21 to be a thin film,
the Appellants provide no argument that forming a p-type layer 21 as a thin
film on Lee's flexible substrate would not have been obvious to a person of
ordinary skill in the art, particularly in view of Oh' s disclosure of depositing
various other layers as thin films. See Ans. 14--15. On this record, and in
view of the Appellants' limited argument, we discern no reversible error in
the Examiner's rejection.
The Appellants further argue that Oh's "zener diode is formed
concurrently with the light emitting diode 26 as they share the same p-type
silicon substrate 21. Thus, substantial modification would need to be made
to the device taught by Oh [for it to meet the limitations of claim 1]." Br. 4.
As discussed above, Lee teaches a flexible substrate that includes zener
diodes for ESD protection. Oh teaches or suggests zener diodes formed as
layers on a substrate. The Appellants' argument is unpersuasive because it
fails to provide evidence or persuasive technical reasoning that forming thin
film zener diodes, as taught or suggested by Oh, in place of Lee's zener
diodes, would have been beyond the ordinary level of skill in the art, even
assuming certain modifications would have to be made. See In re Keller,
642 F.2d 413, 425 (CCPA 1981) ("The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art."). The record reflects that, at the time of the invention, it was
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known that ESD diodes could be either mounted or formed as layers on a
substrate. The Appellants fail to persuade us that it would not have been
obvious to a person of ordinary skill in the art to use either method
(mounting or deposition) in combination with Lee, including the forming of
an ESD diode on a substrate as disclosed or suggested by Oh.
Finally, the Appellants argue that "Lee only describes populating a
flexible circuit board with diodes. And, as admitted by the Examiner, Lee
does not disclose forming an ESD diode on a flexible substrate." Br. 4
(emphasis in original). That argument is not persuasive because it attacks
Lee alone. See Keller, 642 F.2d at 426 ("[O]ne cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references."). The Examiner's
statement that "Lee not Oh is being used to disclose forming an ESD diode,
which is zener diode, on a flexible substrate," does not persuade us
otherwise. See Final Act. 13 (emphasis added); see also Br. 4. In the
context of the rejection, it is clear that the Examiner is attempting to make
the point that Lee, not Oh, is principally relied on for the teaching of a
flexible substrate. See Final Act. 13. As explained above, the Examiner
plainly relies on Oh for the formation of an ESD diode as layers on a
substrate. See, e.g., Ans. 14 ("Lee is used to disclose forming the diode
34A, fig. 3 on the [flexible substrate]; whereas Oh is combined with Lee to
disclose that a diode can be formed as a thin-film diode .... ").
On this record, the Appellants fail to identify reversible error in the
Examiner's rejection. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) ("The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.");
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see also id. ("[W]hen a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result.").
We affirm the Examiner's rejection of claim 1.
Claim 8.
Claim 8 depends from claim 1 and further recites, "wherein said ESD
diode comprises a conductive polymer." Claim 8 does not appear to specify
or otherwise limit the function of the conductive polymer within the ESD
diode.
The Examiner finds that Lee and Oh do not disclose an ESD diode
comprising a conductive polymer. Ans. 11. However, the Examiner finds
that Tripathy discloses an "ESD compris[ing] a conductive polymer," and
concludes that "it would have been obvious ... to modify materials used to
form an ESD device of Oh, with said ESD comprises a conductive polymer
as taught by Tripathy, because Tripathy discloses that a conductive polymer
is an art recognized equivalent material to use to form an ESD device." Id.
The Appellants assert that Tripathy "only teaches that the conductive
polymer can be used in electrostatic discharge protection and does not teach
that the conductive polymer may be used in an ESD diode." Br. 4--5. We
are not persuaded by that argument. Tripathy expressly teaches the use of
electrically conductive polymers "in a variety of electronic devices,"
including "light-emitting diodes" and "electrostatic discharge protection."
Tripathy i-f 3. At the time of the invention, ESD diodes were a known form
of electrostatic discharge protection. E.g., Oh i-f 4; Lee i-f 9. Given that fact,
and the fact that Tripathy expressly discloses the use of electrically
conductive polymers in both diode (LED) and electrostatic discharge
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protection applications, a person of ordinary skill in the art reasonably would
have understood that electrically conductive polymers would function in
ESD diodes. The Appellants' bald assertion that Tripathy does not explicitly
disclose ESD diodes does not persuade us otherwise. See KSR, 550 U.S. at
418-19 ("[T]he [obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.").
The Appellants also argue that Tripathy "merely mentions that
conductive polymers may be used in a variety of electronic devices. There
is no specific disclosure as to how a conductive polymer would be used in
any of the exemplary devices listed." Br. 5.
We are not persuaded by that argument. As noted above, claim 8 does
not specify any particular use for the conductive polymer and merely
requires that the "ESD diode comprises a conductive polymer." To the
extent that the Appellants may be arguing that Tripathy is not enabled with
respect to ESD diodes comprising electrically conductive polymers, we note
that Tripathy is presumed to be enabled. See, e.g., In re Antor Media Corp.,
689 F.3d 1282, 1287-88 (Fed. Cir. 2012). The Appellants' statement that
"[t]here is no specific disclosure as to how a conductive polymer would be
used in any of the exemplary devices listed," Br. 5, is insufficient to rebut
that presumption; moreover, it appears to overlook the absence of any
specific function required of the conductive polymer by claim 8. The
Appellants fail to provide any evidence or argument that incorporation of an
electrically conductive polymer into an ESD diode, as suggested by
Tripathy, would have been beyond the ordinary level of skill in the art, that
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it would have required undue experimentation, or that a person of ordinary
skill in the art would not have had a reasonable expectation of success in
forming an ESD diode comprising an electrically conductive polymer. On
the record before us, we are not persuaded of reversible error in the
Examiner's rejection of claim 8.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-5, 7, 8, and 21-
29.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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