Ex Parte 6,465,961 B1 et al

Patent Trial and Appeal Board

Nov 30, 2016

95002324 (P.T.A.B. Nov. 30, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
P8450US00 7846
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
95/002,324 09/14/2012
30671 7590 12/01/2016
DITTHAVONG & STEINER, P.C.
Keth Ditthavong
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
6,465,961 B1
12/01/2016 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
GE LIGHTING INC. and OSRAM SYLVANIA INC.,
Requesters and Respondents
v.
EPISTAR CORPORATION,
Patent Owner and Appellant
Appeal 2016-008254
Reexamination Control Nos. 95/000,680 and 95/002,324
Patent 6,465,961 B1
Technology Center 3900
Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JENNIFER L. McKEOWN, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
Appeal 2016-008254
Control Nos. 95/000,680 and 95/002,324
Patent 6,465,961 B1
DECISION ON APPEAL
Epistar Corporation (“Patent Owner”) appeals from the decision in the
Examiner’s Right of Appeal Notice rejecting claims 104-1181 of US Patent
No. 6,465,961 (“the ’961 patent”). App. Br. I.2 GE Lighting, Inc. (“GE
Lighting”) and OSRAM Sylvania, Inc. (“OSRAM”) (collectively,
“Requesters”) each respond to Patent Owner’s appeal. See generally
GE Resp. Br.; OS Resp. Br.
I. STATEMENT OF CASE
Requesters requested inter partes reexamination of the ’961 patent
issued to Densen Cao on October 15, 2002.
We have been informed that the ’961 patent was the subject of a
district court proceeding, namely Cao Group v. GE Lighting et al., U.S.
District Court, District of Utah, Civil Action No. 2:1 l-cv-00426. See
App. Br. 3. We note that U.S. Patent No. 6,746,885 was also the subject of
the district court proceeding. On August 31, 2016, the Board issued a
decision in Appeal 2016-006246 (merged reexamination Control Nos.
95/000,679 and 95/002,245), where we affirmed the Examiner’s rejection of
claims 9—13, 15—27, 30-32, 35, 36, and 38—43 of U.S. Patent No.
1 Claims 1—20 are canceled, and Claims 21—103 are not subject to
reexamination. See App. Br., Claims App’x.
2 In this opinion, we refer to (1) the Right of Appeal Notice mailed
September 8, 2015 (“RAN”); (2) Patent Owner’s Appeal Brief filed
December 4, 2015 (“App. Br.”); (4) Requester GE Lighting’s Respondent
Brief filed January 20, 2016 (“GE Resp. Br.”); (3) Requester OSRAM’s
Respondent Brief filed February 8, 2016 (“OS Resp. Br.”); and (5) Patent
Owner’s Rebuttal Brief filed March 29, 2016 (“Reb. Br.”).
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6,746,885.
We have jurisdiction under 35 U.S.C. §§ 134 and 315 (pre-AIA).
We AFFIRM.
II. THE ’961 PATENT
The ’961 patent generally relates to a method for making a
semiconductor light source for illuminating a physical space. ’961 patent,
Abstract. As shown below in reproduced Figure 1, a single or an array of
semiconductor devices 106 capable of producing light may be mounted on a
heat sink 104 including planar panels or compartments 104a—i. Id. at col. 3,
11. 22-31.
Fig. 1
Figure 1 of the ’961 Patent Depicting an Exemplary Embodiment of the
Semiconductor Light Source of the Invention
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As also shown in Figure 1, “[t]he semiconductor devices 106 are electrically
connected to each other via electrical connections 107. Lead wires 108a and
108b are used to provide the semiconductor devices 106 with electrical
power.” ’961 patent, col. 3,11. 22—31.
Claim 104 is illustrative and read as follows:
104. (New) The semiconductor light source as recited in
claim 1 wherein:
the semiconductor light source is configured to illuminate
with white light a space occupiable by humans,
the semiconductor chip is a surface mount light emitting
diode (LED) chip,
the semiconductor light source further comprises
additional surface mount LED chips each mounted on one of
the panels,
the LED chip and said additional LED chips are
electrically connected to each other via lead wires configured to
provide said LED chip and said additional LED chips with
electrical power, and
at least one of said lead wires is positioned external to
said heat sink and runs directly between the LED chip and one
of said additional LED chips.
App. Br., Claims App’x.
A. Evidence Relied Upon
The Examiner relies on the following as evidence of unpatentability:
III. REJECTIONS
Thau et al.
Wickenden
Ray
Yamane et al.
Karp inski
Mygatt US D 38,005
US 3,200,280
US 4,182,025
US 4,211,955
US 4,845,405
US 5,040,187
May 8, 1906
Aug. 10, 1965
Jan. 8, 1980
Jul. 8, 1980
Jul. 4, 1989
Aug. 13, 1991
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Monto US 5,363,009 Nov. 8, 1994
Abe US 5,535,230 Jul. 9, 1996
Freyman US 5,640,407 Jun. 17, 1997
Ruskouski US 5,655,830 Aug. 12, 1997
Martin et al. US 5,728,090 Mar. 17, 1998
Deese US 5,806,965 Sep. 15, 1998
Kanbar US 5,850,126 Dec. 15, 1998
Haitz et al. US 5,917,202 Jun. 29, 1999
Allen WO 99/57945 Al Nov. 11, 1999
Begemann WO 00/17569 Al Mar. 30, 2000
Sugiura et al. US 6,015,979 Jan. 18, 2000
Matsubara et al. EP 0 977 278 A3 Feb. 2, 2000
Alvarez US 6,252,350 B1 Jun. 26, 2001
Waitl et al. US 2001/0045573 Al Nov. 29, 2001
Becker et al. US 2002/0079505 Al Jun. 27, 2002
Abdelhafez et al. US 2002/0122309 Al Sep. 5, 2002
Wojnarowski et al. US 6,635,987 B1 Oct. 21,2003
Koay et al. US 6,806,583 B2 Oct. 19, 2004
Georg Bogner et al., White LED, Light-Emitting Diodes: Research,
Manufacturing, and Applications III, Proceedings of SPIE, Vol. 3621, pp.
143-50, Jan. 1999 (“Bogner”).
T. Mukai et al., InGaN-based uv/blue/green/amber/redLEDs, Light-
Emitting Diodes: Research, Manufacturing, and Applications III,
Proceedings of SPIE, Vol. 3621, pp. 2—13, Jan. 1999 (“Mukai”).
Bill Schweber, LEDs Move from Indication to Illumination, EDN, 2
Aug. 2001, pp. 75-82 (“Schweber”).
Declaration of Dr. Robert F. Karlicek, Jr. filed Nov. 5, 2013
(“Karlicek Decl.”).
B. The Adopted Rejections
The Examiner rejects claims 110—116 under 35U.S.C. § 112, second
paragraph (pre-AIA) as being indefinite. RAN 10, 16.
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The Examiner maintains at least the following proposed prior art
rejections,3 for which Patent Owner appeals:
References Basis Claims RAN
Begemann, Schweber (or
Waitl, Abe, and Wojnarowki)
and Becker (or Wickenden)
§ 103(a) 104—116 10-11,19-24
Begemann, Schweber (or
Waitl, Abe, and
Wojnarowki), Becker (or
Wickenden), and Watabe (or
Wierer and Haitz)
§ 103(a) 117 11,24—25
Begemann, Schweber (or
Waitl, Abe, and
Wojnarowki), Becker (or
Wickenden), and Duldner (or
Birdseye)
§ 103(a) 118 11,25-26
Begemann, Schweber, Chen,
and Limpkin § 103(a) 104—114, 116 11,26
Begemann, Schweber, Chen,
Limpkin, and Yang § 103(a) 115 12, 28
Begemann, Schweber, Chen,
Limpkin, and Watabe § 103(a) 117 12, 28
Begemann, Schweber, Chen,
Limpkin, Duldner, and
Birdeye
§ 103(a) 118 12, 28
IV. ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Patent Owner, and in light of the arguments and evidence
3 There are additional rejections of the pending claims not listed. See
generally RAN. As discussed below, we do not reach the merits of these
rejections because our decision with respect to the listed rejections is
dispositive regarding patentability of all appealed claims.
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produced thereon. Cf. Ex parte Frye, 94 USPQ 2d 1072, 1075 (BPAI 2010)
(precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
“Any arguments or authorities not included in the brief permitted under this
section or [37 C.F.R.] §§ 41.68 and 41.71 will be refused consideration by
the Board, unless good cause is shown.” 37 C.F.R. § 41.67(c)(l)(vii).
A. The Rejection based on 35 U.S.C. § 112, second paragraph
Based on the record before us, we are persuaded that the Examiner
erred in rejecting claims 110-116 as indefinite under 35 U.S.C. § 112,
second paragraph. The Examiner, in particular, finds that
claim [110] recites a limitation wherein said enclosure is
“positioned above” said heat sink. This limitation is unclear
because the term “above” is a relative term which renders the
claim indefinite. The term “above” is not defined by the claim,
the specification does not provide a standard for ascertaining the
requisite degree, and one of ordinary skill in the art would not be
reasonably apprised of the scope of the invention. It is noted that
whether or not the enclosure is above the heat sink depends of
the physical orientation of the light source, which is not defined
by the claims. That is to say, the relative positions of the
enclosure and the heat sink would depend on orientation of the
electrical socket in which the light source is installed.
RAN 16.
We disagree. While neither the claims nor specification provide an
express definition of the recited term “above,” there is a well-established,
plain and ordinary meaning that would be understood by one of ordinary
skill in the art. For example, “above” may be defined as “in, at, or to a
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higher place; overhead; up.”4 While “above” may broadly define the
placement of the enclosure with respect to the heat sink, this does not render
the claim indefinite. See, e.g., In re Miller, 441 F.2d 689, 693 (CCPA 1971)
(noting that the breadth of a claim is not to be equated with indefmiteness).
Claim 10 merely requires some portion of the enclosure to be positioned
above the heat sink, as shown, for example, in at least Figures 1 and 2 of the
’961 patent. Moreover, the claims are directed to the device of “a
semiconductor light source,” not a semiconductor light source installed
within an electrical socket.
Accordingly, we do not sustain the Examiner’s rejection of claims
110-116 under 35 U.S.C. § 112, second paragraph as indefinite.
B. The Obviousness Rejection Based on Begemann, Schweber (or Waitl,
Abe, and Wojnarowski) and Becker (or Wickenden)
Claims 104-116
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 104—116 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Begemann, Schweber (or Waitl, Abe, and
Wojnarowski) and Becker (or Wickenden).
Patent Owner asserts that “neither Begemann nor Schweber discloses
that at least one of the lead wires is positioned external to the heat sink and
runs directly between the [light emitting diode] LED chip and one of the
additional LED chips, as required in claim 104.” App. Br. 12. In particular,
4 Webster’s New World College Dictionary (2010), available at
http://www.yourdictionary.com/above (last visited Nov. 28, 2016).
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Patent Owner contends that “[t]here is no hint or suggestion in Begemann to
run the connection points 14 external to a heat sink upon which the LEDs
are mounted.” App. Br. 13. According to Patent Owner, the Examiner
relies on impermissible hindsight, using “claim 104 as a blueprint for the
purpose of reassembling these features from the applied prior art so as to
arrive at the claimed invention.” App. Br. 13.
We find this argument unpersuasive. Begemann is directed to a LED
lamp comprising a number of LEDs. Begemann, Abstract. Begemann’s
Figure 1, reproduced below, depicts an exemplary LED lamp including a
substrate with a regular polyhedron of at least four planes, each comprising
Figure 1 of Begemann Depicting an Exemplary Embodiment of
Begemann’s LED lamp
LEDs
\
FIG. 1
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Begemann further explains that the LEDs include a multi-chip printed circuit
board (MC-PCB) 12 and electrical connections 14, shown, for example, in
Figure 3A below.
14 ft 14
Figure 3A of Begemann Depicting an Exemplary LED of Begemann
Including Electrical Connections
As the Examiner explains, Begemann’s LED chip and at least one
additional LED chip are electrically connected to each other to provide
electrical power to a LED chip and additional LED chip. RAN 20; see also
Schweber, at 76, 78. The Examiner acknowledges, as Patent Owner points
out, that “[t]he combination of Begemann and Schweber does not
specifically disclose that that at least one of the lead wires is positioned
external to said heat sink and runs directly between LED chip and said
additional LED chips.” However, the Examiner determines
With regard to a lead wire being positioned external to the
heat sink it is noted that the LED chips as disclosed by Begemann
each include electrical connection points (14). As to the specific
use of wire leads positioned external to the heat sink, those of
ordinary skill in the art generally appreciate that the
interconnection between the chips and/or other components is
typically made by means of either wire traces formed on the
PCB, or by means of wire bonding leads. In the case of wire
bonds, the connections may be external (i.e., on the same side as
the LED chips) or internal (i.e., on the opposite side by means of
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through-holes. Absent some degree of criticality, the choice of
using external bonding wires would have been an obvious and
predictable design choice.
RAN 21; see also Karlicek 41—51. In other words, the Examiner explains
it would have been well known to an ordinarily skilled artisan at the time of
the invention that the LED chips would need to be electrically connected and
that these needed connections would be known to be either external or
internal to the heat sink. At the time of the invention, then, there had been a
finite number of identified, predictable potential solutions (either external or
internal connections) to the recognized need or problem of electrically
connecting the LED chips and, as such, using external direct connections
would have been obvious to try. See KSR Int 7. Co. v. Teleflex, Inc., 550
U.S. 398, 421 (2007).
The Examiner also cites prior art references to demonstrate that
external, direct electrical connections between LED chips were well known
at the time of the invention, and a skilled artisan would have had a
reasonable expectation of success with such connections. See, e.g., RAN 21.
For example, Wickenden’s LEDs, as shown in Figure 1 reproduced below,
use stitch bonds 7, which are external, direct connections.
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Figure 1 of Wickenden Depicting Direct, External Connections between
Top Electrodes
See also Karlicek Decl. 47 (“Wickenden shows an array of LED chips
directly connected from anode to cathode via stitch bonding 7. (Wickenden.
col. 3,11. 14—16 and FIG. 1[.]) Stitch bonding was a well-known method of
making wire connections in semiconductor electronic devices as of the filing
of the ’961 patent.”); Karlicek Decl. 145 (citing Becker 125 and Fig. 1)
(explaining that “Becker discloses an array of FEDs ‘connected in series by
means of wire bonds through gold wires 10.’”).
GE also explains that
there can be only a couple possible ways to connect the electrical
connections 14 of Begemann’s FEDs 4 to power the FEDs. One
might connect Begemann’s FEDs 4 to one another within the
heat sink 3,.... The alternative would be to connect Begemann's
FEDs 4 to one another externally to the heat sink 3,. . . . The
Patent Owner does not suggest that they would be connected any
other way. Thus, electrically connecting Begemann’s FEDs 4 to
each other to provide the FEDs 4 with electrical power using lead
wires that are external to his heat sink 3, as claimed, would likely
be the preferred design choice of the finite number of predictable
solutions.
GE Resp. Br. 7—9; see also OS Resp. Br. 8—11. As such, we find Patent
Owner’s argument that the Examiner uses the ’961 patent as a blueprint for
the cited modification of Begemann to include direct, external electrical
connections unpersuasive. As discussed above, the Examiner provides
ample evidence, such as prior art references demonstrating successful
implementation of direct, external electrical connections in similar devices at
the time of the invention, along with sufficient reasoning with some rational
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underpinning to support the legal conclusion of obviousness. See, e.g., RAN
21, OSRAM’s Third Party Comments After Patent Owner Response, filed
June 3, 2014, at 9, 15—17 (incorporated by reference at RAN 29).
Patent Owner, for the first time in the Rebuttal Brief, distinguishes a
Begemann’s alleged surface-mounted-device (SMD) from a wire bonding
type device and contends that
Accordingly, for SMD type LEDs, one of ordinary skill in the art
would not use wire as alleged on the Respondents’ Briefs. In this
respect, Respondents clearly rest on improper generalizations
and conspicuously eschew how one having ordinary skill in the
art would have considered SMD type LEDs vis-a-vis the
conventional LEDs using wire bonding (wire-type LED).
Reb. Br. 3. This argument was raised for the first time in the Rebuttal Brief
and is, therefore, waived as untimely. Cf. Ex parte Borden, 93 USPQ 2d
1473, 1474 (BPAI 2010) (informative) (“[The reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”); 37 C.F.R.
41.41(b)(2). Moreover, for this newly proposed argument, Patent Owner’s
conclusory assertions are unsupported by persuasive evidence or
explanation. For example, Patent Owner presents only attorney argument,
without persuasive evidence or explanation, that a person of ordinary skill in
the art would limit use of wire connections only to “wire-type LEDs” and
only use solder connections for SMD type LEDs. Reb. Br. 3^4.
Moreover, as discussed above, Begemann, which Patent Owner
identifies as a surface-mounted-device (Reb. Br. 3), depicts two external
electrical connections 14 for each LED chip. See Begemann Figs. 3a—d; see
also RAN 21 (discussing wire traces formed on the PCB as a use for wire
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leads positioned external to the heat sink to interconnect between chips or, in
other words, wire traces formed on the PCB are also electrical connections
external to the heat sink). For the reasons discussed above, we agree with
the Examiner that it would have been obvious at the time of the invention to
modify Begemann’s LED lamp to implement direct, external electrical
connections between an LED chip and additional LED chips, as taught by
Chen or Limpkin.
Therefore, for the reasons discussed above and identified by the
Examiner, we sustain the Examiner’s rejection of claims 104—116 as
unpatentable over the cited combination of prior art.
C. The Obviousness Rejection Based on Begemann, Schweber, Chen, and
Limpkin
Claims 104-114 and 116
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 104—114 and 116 under 35 U.S.C. § 103(a) as
unpatentable over the Begemann, Schweber, Chen, and Limpkin.
Patent Owner presents similar arguments as those discussed above
with respect to the rejection based on Begemann, Schweber (or Waitl, Abe,
and Wojnarowski) and Becker (or Wickenden). Namely, Patent Owner
contends that
absent the ’961 patent as a template, one of ordinary skill in the
art would not have modified Begemann’s device [in view of the
teachings of Chen and Limpkin] as alleged in the reply. Patent
Owner respectfully submits that Begemann, at FIGs. 3A-3D,
provides electrical connection points 14 between LEDs that do
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not run external to a heat sink upon which the LEDs are mounted,
as required in claim 104. There is no hint or suggestion in
Begemann to run the connection points 14 external to a heat sink
upon which the LEDs are mounted.
App. Br. 15.
For reasons similar to those discussed above, we find this argument
unpersuasive. For example, the Examiner finds that the use of direct,
external connections between LED chips was well known at the time of the
invention, and that each of Chen and Limpkin teach successful
implementation of these types of connections in similar devices. See RAN
26 (incorporating by reference pages 8—14 of GE’s Third Party Comments
After Patent Owner Response (Control No. 95/000, 680), filed May 23,
2014, (“GE Comments”)); see also GE Comments pp. 10-11 (citing
Limpkin, Figs. 5, 6, and 8; Chen, Fig. 12). The Examiner further explains
that that Begemann, Schweber, Chen, and Limpkin are all
in the field of LEDs, each with slightly different characteristics.
Such combinations involve known methods, needing only
routine skill in the art, yielding predictable results. In many
cases, this is simply substituting one know [sic] element for
another. ... In all cases, there are only a finite number of
identified, predictable solutions, and all have more than a
reasonable expectation of success.
GE Comments 9 (incorporated by reference at RAN 26).
As such, we are not persuaded that the Examiner used improper
hindsight relying on the ’961 patent as a blueprint for the cited combination.
Rather, it would have been obvious at the time of the invention to merely
substitute Begemann’s method of electrically connecting LED chips with
direct, external electrical connections, as taught by Chen or Limpkin, to
obtain predictable results.
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Therefore, for the reasons discussed above and identified by the
Examiner, we sustain the Examiner’s rejection of claim 104—114 and 116 as
unpatentable over the combination of Begemann, Schweber, Chen, and
Limpkin.
D. The Obviousness Rejection Based on Begemann, Schweber, Chen,
Limpkin, and Yang
Claim 115
Patent Owner presents no separate argument with respect to this
rejection of claim 115, but instead relies on the arguments presented with
respect to claim 104. See, e.g., App. Br. 19. For the reasons discussed
above, we find these arguments unpersuasive. Therefore, for the reasons
discussed above and identified by the Examiner, we sustain the Examiner’s
rejection of claim 115 as unpatentable over the combination of Begemann,
Schweber, Chen, Limpkin, and Yang.
E. The Obviousness Rejection Based on Begemann, Schweber (or Waitl,
Abe, Wojnarowski), Becker (or Wickenden) and Watabe (or Wierer and
Haitz)
Claim 117
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claim 117 under 35 U.S.C. § 103(a) as being unpatentable
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over the cited combination of Begemann, Schweber (or Waitl, Abe,
Wojnarowski), Becker (or Wickenden) and Watabe (or Wierer and Haitz).
Patent Owner contends that the Examiner “fails to provide the
requisite for combining Begemann with Wierer and Haitz.” App. Br. 14.
Patent Owner, however, fails to identify error in the Examiner’s reasoning.
The Examiner, for example, finds that Wierer and Haitz each teach the
recited dimensional limitations and determines that “those of ordinary skill
in the art appreciate that it is well known in the art to utilize large area LED
chips to allow for higher luminous flux.” RAN 24.
Notably, Begemann teaches that “[d]uring operation of the lamp,
[Begemann’s] LEDs generate a luminous flux of 5 lm or more.’ '’ Begemann
p. 4,11. 21—22 (emphasis added). Begemann, thus, expressly contemplates
increased luminous flux. As GE further explains,
Here, the Examiner's obviousness rejection, and rationale,
is well grounded in Begemann himself who teaches, and indeed
claims, heat sink panels that “are each provided with at least one
LED which ... has a luminous flux of at least 5 lm”. See, e.g.,
Begemann claim 1, at pg. 7. In setting a minimum flux,
Begemann recognizes the need and motivation for higher
luminous flux, as noted by the Examiner. Begemann also teaches
multiple light point LEDs, which would also increase both
luminous flux and size. See, e.g., Begemann at FIG. 3B and 3C.
Thus, Begemann supports the Examiner’s stated rationale to use
more and/or larger area LED chips to provide higher luminous
flux.
GE Resp. Br. 10. As such, given the teachings of Begemann, along with the
express teachings of the dimensional limitations of Wierer and Haitz, we are
not persuaded of error in the Examiner’s determination. See also
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OS Resp. Br. 11 (citing MPEP § 2144.04 (IV) and noting that “limitations
relating to [size are] not sufficient to patentably distinguish the prior art.”).
Accordingly, for the reasons discussed above and identified by the
Examiner, we sustain the Examiner’s rejection of claim 117 as unpatentable
over the combination of Begemann, Schweber (or Waitl, Abe,
Wojnarowski), Becker (or Wickenden) and Watabe (or Wierer and Haitz).
F. The Obviousness Rejection Based on Begemann, Schweber, Chen,
Limpkin, and Watabe
Claim 117
Patent Owner presents no separate argument with respect to this
rejection of claim 117, but instead relies on the arguments presented with
respect to claim 104. See, e.g., App. Br. 19. For the reasons discussed
above, we find these arguments unpersuasive. Therefore, for the reasons
discussed above and identified by the Examiner, we sustain the Examiner’s
rejection of claim 117 as unpatentable over the combination of Begemann,
Schweber, Chen, Limpkin, and Watabe.
G. The Remaining Obviousness Rejections Based on Begemann, Schweber
(or Waitl, Abe, and Wojnarowski), Becker (or Wickenden) and Duldner
(or Birdeye)
Patent Owner presents no separate argument with respect to this
rejection of claim 118, but instead relies on the arguments presented with
respect to claim 104. See, e.g., App. Br. 14. For the reasons discussed
above, we find these arguments unpersuasive. Therefore, for the reasons
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discussed above and identified by the Examiner, we sustain the Examiner’s
rejection of claim 118 as unpatentable over the combination of Begemann,
Schweber (or Waitl, Abe, and Wojnarowski), Becker (or Wickenden) and
Duldner (or Birdeye).
H. The Obviousness Rejection Based on Begemann, Schweber, Chen,
Limpkin, Duldner, and Birdseye
Claim 118
Patent Owner presents no separate argument with respect to this
rejection of claim 118, but instead relies on the arguments presented with
respect to claim 104. See, e.g., App. Br. 19—20. For the reasons discussed
above, we find these arguments unpersuasive. Therefore, for the reasons
discussed above and identified by the Examiner, we sustain the Examiner’s
rejection of claim 118 as unpatentable over the combination of Begemann,
Schweber, Chen, Limpkin, Duldner, and Birdseye.
I. The Remaining Rejections
Because our decision is dispositive regarding patentability of all
appealed claims based on the foregoing combinations of prior art references,
we need not reach the merits of the Examiner’s decision to reject also the
claims based on the additionally cited combinations of prior art. See In re
Cleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other rejections
after upholding an anticipation rejection); see also Beloit Corp. v. Valmet
Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (approving ITC’s determination
19
Appeal 2016-008254
Control Nos. 95/000,680 and 95/002,324
Patent 6,465,961 B1
based on a single dispositive issue, and not reaching other issues not decided
by the lower tribunal).
V. CONCLUSION
We affirm the Examiner’s decision to reject claims 104—118.
VI. TIME PERIOD FOR RESPONSE
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.
AFFIRMED
lp
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Appeal 2016-008254
Control Nos. 95/000,680 and 95/002,324
Patent 6,465,961 B1
FOR PATENT OWNER:
DITTHAVONG & STEINER, P.C.
Keth Ditthavong
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Suite 322
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