Ex Parte Yoo et al

Patent Trial and Appeal Board

Dec 21, 2012

11600059 (P.T.A.B. Dec. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEALS BOARD
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Ex parte CHUL HEE YOO and HO SIK AHN
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Appeal 2011-003249
Application 11/600,059
Technology Center 2800
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Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003249
Application 11/600,059

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
3 and 6-14. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a slim type backlight unit with through-hole
adhesive heat dissipating means. (Spec. 1). Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A backlight unit comprising:

a printed circuit board having at least a first through hole;

an LED package disposed on a top portion of the printed
circuit board corresponding to the first through hole;

a bottom plate in direct contact with the printed circuit
board; and

a heat conducting adhesive formed in the first through
hole to connect an underside surface of the LED package with a
top surface of the bottom plate, wherein the entire interface
between the heat conducting adhesive and the bottom plate is
above or at a same level as the interface between the bottom
plate and the printed circuit board.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hochstein US 6,582,100 B1 Jun. 24, 2003
Ouderkirk US 2006/0098438 A1 May 11, 2006
Appeal 2011-003249
Application 11/600,059

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REJECTIONS
Claims 1, 2, and 6-14 stand rejected under 35 U.S.C § 102(b) as being
anticipated by Hochstein.
Claim 3 stands rejected under 35 U.S.C §103(a) as being unpatentable
over Hochstein and Ouderkirk.

OPINION
Appellants have elected to group independent claims 1, 8, and 10 as a
single group (App. Br. 4). Therefore, we select independent claim 1 as the
representative claim for the group, and we will address Appellants'
arguments thereto. Appellants additionally rely upon the same arguments
with respect to dependent claim 3 which was rejected under obviousness.
Since we find Appellants' arguments unpersuasive of error in the Examiner's
showing of anticipation, we similarly find Appellants' argument
unpersuasive of error in the Examiner's showing of obviousness of
dependent claim 3.
From our review of the relied upon portions of Hochstein, we agree
with the Examiner that Hochstein anticipates the invention as recited in
independent claim 1. Appellants provide numerous arguments regarding the
claim limitation "heat conducting adhesive … to connect." (Claim 1). At
the outset, we note that the function recited in representative independent
claim 1 is "to connect" rather than the terms "for adhering," "to adhere or
adhesively secure," or "to secure" as Appellants repeatedly rely in an attempt
to distinguish the claimed invention. The language of claim 1 is drafted with
a modifier "heat conducting" to the "adhesive" with a function "to connect."
From our review of the description of Hochstein, we find a description of "a
Appeal 2011-003249
Application 11/600,059

4
variety of filled or unfilled greases, gels, or viscous materials" to describe a
material which “connects” the LED to the PCB and plate. The greases, gels,
or viscous material provide a connection function. We further find that the
material would inherently provide some surface contact adhesion function
vertically due to the nature of the viscous material. Therefore, we find
Appellants' argument to be unpersuasive of error in the Examiner's showing
of anticipation based upon Hochstein.
With respect to Appellants' arguments concerning the proffered
distinction in the mechanical connection for clamping (Reply Br. 2-4), we
find Appellants' arguments unavailing with respect to the connection of the
viscous material.
With respect to Appellants' arguments in the Appeal Brief (App. Br.
5-6) concerning "teaching away," we find Appellants' arguments unavailing
with respect to the anticipation rejection since the argument does not have
relevance to whether Hochstein describes the claimed invention. Therefore,
we will sustain the rejection of independent claim 1. Appellants have not
presented separate arguments for patentability of claims 2 and 6-14. (App.
Br. 4). Therefore, we will sustain the rejection of representative independent
claim 1 and group independent claims 8 and 10 and dependent claims 2, 6, 7,
9, and 11-14 with this group.
With respect to dependent claim 6, Appellants elected not to present
separate arguments for patentability of this claim in the principal brief.
Therefore, Appellants' arguments at page 4 of the Reply Brief are deemed to
be waived. Additionally, we find Appellants' argument unpersuasive of
error in the Examiner's findings since, as discussed above, we find the
viscous material provides some frictional, suction adhesive property in the
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Application 11/600,059

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thermal connection. Therefore, Appellants' argument is not persuasive of
error in the Examiner's showing of anticipation.
With respect to dependent claim 3, Appellants rely on the arguments
advanced with respect to the rejection of independent claim 1. (App. Br. 9-
10). Since we found Appellants' arguments unpersuasive of error with
respect to independent claim 1, we will sustain the rejection of dependent
claim 3 under obviousness for the same lack of showing of error.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1, 2, and 6-14 under 35
U.S.C. § 102. The Examiner did not err in rejecting dependent claim 3
under 35 U.S.C. § 103.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-3 and 6-
14 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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