Ex Parte West et al

Patent Trial and Appeal Board

Aug 25, 2016

13086310 (P.T.A.B. Aug. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/086,310 04/13/2011 R. Scott West
47713 7590 08/26/2016
IMPERIUM PATENT WORKS
P.O. BOX607
Pleasanton, CA 94566
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.
BRI-005 (BL100024) 3930
EXAMINER
TRAN, TONY
ART UNIT PAPER NUMBER
2894
MAILDATE DELIVERY MODE
08/26/2016 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 R. SCOTT WEST and YAN CHAI
Appeal2014-005309
Application 13/086,310
Technology Center 2800
Before CHUNG K. PAK, TERRY J. OWENS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-12 and 19-21. 1 We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a light source. Claims 1 and 19 are illustrative:
1. A light source comprising:
a light emitting diode (LED) die having a first surface, a
second surface and a lateral boundary, wherein the second
surface is disposed opposite the first surface, wherein the LED
die has surface mount contacts on the first surface and emits
1 The rejection of claim 5 is withdrawn in the Examiner's Answer (Ans. 2).
Appeal2014-005309
Application 13/086,310
light from the second surface, and wherein the surface mount
contacts include a p-contact and an n-contact;
a mounting substrate having a top surface;
a plurality of connection traces on the top surface of the
mounting
substrate, wherein the connection traces include an n-trace
positioned to underlie then-contact and a p-trace positioned to
underlie the p-contact;
an asymmetric conductor material sandwiched between
the surface mount contacts and the connection traces; and
a diffusively reflective material disposed on the top
surface of the
mounting substrate only outside the lateral boundary of the
LED die.
19. A light source comprising:
a light emitting diode (LED) die having a first surface
and a side surface, wherein the side surface is substantially
perpendicular to the first surface;
a mounting substrate having a top surface that is parallel
to the first
surface;
an asymmetric conductor material disposed between the
first surface and the top surface; and
means for reflecting light that is emitted from the side
surface of the LED die away from the top surface of the
mounting substrate, wherein the means is dispensed onto the
mounting substrate adjacent to the LED die, and wherein the
means is more reflective than the asymmetric conductor
material.
Yamazaki
The Reference
US 2010/0072495 Al
The Rejections
Mar. 25, 2010
The claims stand rejected as follows: claims 1--4 and 6-12 under
35 U.S.C. § 103 over the Appellants' admitted prior art (APA) in view of
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Appeal2014-005309
Application 13/086,310
Yamazaki, claims 19 and 21under35 U.S.C. § 112, second paragraph, as
failing to particular point out and distinctly claim the subject matter which
the Appellants regard as the invention, claims 19 and 20 under
35 U.S.C. § 102(e) over APA and claim 21under35 U.S.C. § 103 over
APA.
OPINION
We reverse the rejections.
Rejection of claims 1--4 and 6--12 under 35 U.S.C. § 103
over APA in view of Yamazaki
APA is the Appellants' Figures 1-3 (Final Act. 4). 2 Figure 1 shows a
light source (20) comprising a light emitting diode (LED) (21) in a
depression or cup having reflecting walls (36) that vertically redirect light
leaving the LED (21)' s sidewalls (Spec. i-f 5). The LED (21) is connected to
a printed circuit board (32) by wire bonds (31) covered with phosphor (37)
(Spec. i-f 7). The wire bonds (31) present problems with respect to
fabrication cost, reliability, failure due to stresses between them and the
phosphor (37), and blocking of light leaving the LED (21) (id.), and the
depression or cup increases the light source (20)' s cost (Spec. i-f 8). Figure 2
shows a light source ( 40) which reduces those problems by using a flip-chip
mounting scheme wherein one face of an LED is attached to a transparent
sapphire substrate ( 41) and the other face has an n-contact and a p-contact
attached via traces ( 43, 44) to an insulating layer ( 45) that overlies a printed
circuit board's heat-dissipating core region (46) (i-fi-f 10-11). Figure 3 shows
a pair of conductors ( 51, 5 2) bonded by an asymmetric conductor
2 Because we reverse the rejections involving AP A we need not address
whether the Appellants' Figure 3 is prior art (App. Br. 8-10; Ans. 5-7).
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Appeal2014-005309
Application 13/086,310
comprising metal-coated elastic spheres (53) in an insulating carrier material
(Spec. i-f 42). The Appellants acknowledge that "[a]symmetric conductors
have been used for bonding arrays of LEDs to underlying substrates having
switching circuitry therein for over a decade" (Spec. i-f 43).
Yamazaki discloses a display device wherein connecting
wiring (183)' s terminal portion (182) on an active matrix substrate (100) is
electrically connected to a flexible printed circuit (FPC) ( 191) by an
anisotropic conductive film (195) comprising metal-plated (e.g., gold- or
chromium-plated) grains (195b) in an adhesive (195a) (i-fi-f 47--48, 133;
Figs. 12A, 12B).
The Examiner asserts that Yamazaki' s active matrix substrate ( 100) is
an LED die, the anisotropic conductive film (195)'s gold- or chromium-
plated grains (195b) are diffusively reflective, and the anisotropic
conductive film (195) is disposed only outside the lateral boundary of the
LED die (Final Act. 5; Ans. 11).
Yamazaki' s Figure 6B shows an active matrix display comprising thin
film transistors, one of which is shown at the right side of Figure 12B. The
connecting wiring (183) is formed from the same material and in the same
layer as the transistor's source/drain wiring (i-f 48). The anisotropic
conductive film (195) electrically connects the connecting wiring (183) to
the FPC (id.). The Examiner does not establish that the active matrix
substrate (100) is an LED die or that the metal-plated grains (195b) in the
anisotropic conductive film (195) used for electrical connection are
diffusively reflective. Hence, the Examiner has not set forth a factual basis
which is sufficient to support a prima facie case of obviousness of the
Appellants' claimed invention. See In re Warner, 379 F.2d 1011, 1017
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Application 13/086,310
(CCPA 1967) ("A rejection based on section 103 clearly must rest on a
factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art").
Rejection of claims 19 and 21 under
35U.S.C.§112, second paragraph
"[T]he indefiniteness inquiry asks whether the claims 'circumscribe a
particular area with a reasonable degree of precision and particularity.'"
Marley Mouldings Ltd. v. Mikron Indus. Inc., 417 F.3d 1356, 1359 (Fed. Cir.
2005) (quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)).
The Examiner appears to argue that "means" in the Appellants'
claim 19 is indefinite because the Appellants do not identify sufficient
structure corresponding to the means (Final Act. 2). 3
Such means include the corresponding structure disclosed in the
Appellants' Specification and equivalents thereof. See In re Donaldson Co.,
16 F.3d 1189, 1195 (Fed. Cir. 1994). The Appellants identify diffusively
reflective material 135 as the means dispensed onto the mounting
substrate (123) (Spec. i-f 65; Fig. 10). The Examiner does not establish that
"means" is indefinite in view of that disclosure.
Rejection of claims 19 and 20 under
35 U.S.C. § 102(e) over APA
"Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference." Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
3 Claim 21 depends from claim 19.
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Appeal2014-005309
Application 13/086,310
The Examiner relies upon AP A Figure 2' s structure for all claim
features except the means for reflecting light, for which the Examiner relies
upon Figure 1 's reflecting wall (36) (Final Act. 3; Ans. 4--5, 8). The
Examiner, however, does not establish that AP A discloses a Figure 2
structure including the reflecting wall (36). Moreover, the Examiner does
not establish that the reflecting wall (36) meets the claim requirement of
having the structure of a dispensed material.
Rejection of claim 21under35 U.S.C. § 103 over APA
In the rejection of claim 19' s dependent claim 21 the Examiner does
not rely upon any obviousness rationale with respect to the "means for
reflecting light" limitation which, as set forth above, the Examiner has not
established is disclosed in APA (Final Act. 4).
For the above reasons we reverse the rejections.
DECISION/ORDER
The rejections of claims 1--4 and 6-12 under 35 U.S.C. § 103 over the
Appellants' admitted prior art (AP A) in view of Yamazaki, claims 19 and 21
under 35 U.S.C. § 112, second paragraph, claims 19 and 20 under
35 U.S.C. § 102(e) over APA and claim 21under35 U.S.C. § 103 over APA
are reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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