95002245 (P.T.A.B. Aug. 31, 2016)

Ex Parte 6746885 et al

Patent Trial and Appeal BoardAug 31, 2016

95002245 (P.T.A.B. Aug. 31, 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. 95/002,245 09/13/2012 6746885 P8421US00 4473 30671 7590 08/31/2016 DITTHAVONG & STEINER, P.C. Keth Ditthavong 44 Canal Center Plaza Suite 322 Alexandria, VA 22314 EXAMINER MENEFEE, JAMES A ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 08/31/2016 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 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. 95/000,679 08/06/2012 6746885 P8421US00 4634 30671 7590 08/31/2016 DITTHAVONG & STEINER, P.C. Keth Ditthavong 44 Canal Center Plaza Suite 322 Alexandria, VA 22314 EXAMINER MENEFEE, JAMES A ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 08/31/2016 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 2016-006246 Reexamination Control Nos. 95/000,679 and 95/002,245 Patent 6,746,885 B2 Technology Center 3900 ____________________ Before JOHN A. JEFFERY, DENISE M. POTHIER, and JENNIFER L. McKEOWN, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. Appeal 2016-006246 Control Nos. 95/000,679 and 95/002,245 Patent 6,746,885 B2 2 DECISION ON APPEAL Epistar Corporation (“Patent Owner”) appeals from the decision in the Examiner’s Right of Appeal Notice rejecting claims 9–13, 15–27, 30–32, 35, 36, and 38–431 of U.S. Patent No. 6,746,885 (“the ’885 patent”). App. Br. 3.2 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 ’885 patent issued to Densen Cao on June 8, 2004. We have been informed that the ’885 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: l l-cv-00426. See App. Br. 1. We have jurisdiction under 35 U.S.C. §§ 134 and PO 315 (pre-AIA). We AFFIRM. II. THE ’885 PATENT The ’885 patent generally relates to a method for making a semiconductor light source for illuminating a physical space. Abstract. As shown below in 1 Claims 1–8, 14, 28, 29, 33, 34, and 37 are canceled. See App. Br. 1. 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.”). Appeal 2016-006246 Control Nos. 95/000,679 and 95/002,245 Patent 6,746,885 B2 3 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. ’885 patent, col. 3, ll. 22–31. Claims 9 and 15 are illustrative and read as follows: 9. (Original) A method for making a semiconductor light source comprising the steps of: obtaining an enclosure, said enclosure being fabricated from a material substantially transparent to white light, obtaining a base to which said enclosure may be mounted, obtaining a secondary heat sink suitable for being located within said enclosure, said secondary heat sink being capable of drawing heat Appeal 2016-006246 Control Nos. 95/000,679 and 95/002,245 Patent 6,746,885 B2 4 from one or more semiconductors devices, said secondary heat sink having a plurality of panels on it suitable for mounting primary heat sinks thereon, said panels on said secondary heat sink being oriented to facilitate emission of light from the semiconductor light source in desired directions around the semiconductor light source, obtaining a plurality of primary heat sinks, obtaining a plurality of semiconductor devices, mounting at least one semiconductor device on each of said primary heat sinks by use of a light reflective adhesive, and mounting said primary heat sinks on said secondary heat sink panels. 15. (Original) A method for making a semiconductor light source comprising the steps of: obtaining an enclosure, obtaining a heat sink suitable for being located within said enclosure, said heat sink being capable of drawing heat from one or more semiconductors devices, said heat sink having an air chamber within its interior through which air may flow in order to facilitate heat dissipation, obtaining a plurality of light-emitting semiconductor devices, and mounting said semiconductor devices on said heat sink. PO App. Br. 31–32, Claims App’x. III. REJECTIONS A. Evidence Relied Upon The Examiner relies on the following as evidence of unpatentability: Mygatt US D 38, 005 May 8, 1906 Thau US 3,200,280 Aug. 10, 1965 Wickenden US 4,182,025 Jan. 8, 1980 Ray US 4,211,955 Jul. 8, 1980 Yamane US 4,845,405 Jul. 4, 1989 Appeal 2016-006246 Control Nos. 95/000,679 and 95/002,245 Patent 6,746,885 B2 5 Karpinski US 5,040,187 Aug. 13, 1991 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 5,635,830 Aug. 12, 1997 Martin US 5,728,090 Mar. 17, 1998 Deese US 5,806,965 Sep. 15, 1998 Kanbar US 5,850,126 Dec. 15, 1998 Haitz US 5,917,202 Jun. 29, 1999 Allen WO 99/57945 Nov. 11, 1999 Begemann WO 00/17569 Mar. 30, 2000 Sugiura US 6,015,979 Jan. 18, 2000 Matsubara EP 0 977 278 Feb. 2, 2000 Alvarez US 6,252,350 B1 Jun. 26, 2001 Waitl US 2001/0045573 Nov. 29, 2001 Becker US 2002/0079505 Jun. 27, 2002 Abdelhafez US 2002/0122309 Sep. 5, 2002 Wojnarowski US 6,635,987 Oct. 21, 2003 Koay US 6,806,583 Oct. 19, 2004 Bogner, Georg, White LED, Light-Emitting Diodes: Research, Manufacturing, and Applications III, Proceedings of SPIE, Vol. 3621, pp. 143-150, January 1999 (“Bogner”). Mukai, InGaN-based uv/blue/green/amber/red LEDs, Light-Emitting Diodes: Research, Manufacturing, and Applications III, Proceedings of SPIE, Vol. 3621, pp. 2-13, January 1999 (“Mukai”). Schweber, Bill, LEDs Move from Indication to Illumination, EDN, 2 August 2001, pp. 75-82 (“Schweber”). Declaration of Dr. Robert F. Karlicek, Jr. filed November 5, 2013 (“Karlicek Declaration”). B. The Adopted Rejections The Examiner rejects claims 39 and 40 under 35 U.S.C. § 112, second paragraph (pre-AIA) as being indefinite and rejects claims 30–32 and 35 under 35 Appeal 2016-006246 Control Nos. 95/000,679 and 95/002,245 Patent 6,746,885 B2 6 U.S.C. § 112, fourth paragraph (pre-AIA) as improperly dependent because they include limitations inconsistent with those of the parent claim 23. RAN 12–14. The Examiner maintains at least the following proposed art rejections,3 for which Patent Owner appeals: Reference(s) Basis Claims RAN Begemann § 102(b) 15 and 22 15–18 Begemann and Waitl § 103(a) 9–11, 15, 16, 19–22, and 43 18–30 Begemann, Waitl, and Wojnarowski or Freyman § 103(a) 12 and 17 30–31 Begemann, Waitl, and Matsubara or Sugiura § 103(a) 13, 18, and 22 32–37 Begemann, Waitl, and Schweber § 103(a) 10, 20, and 22 37–40 Begemann, Waitl, and any of Koay, Bogner, Alvarez (hereinafter “Combo A”) § 103(a) 23–26, 39, and 42 40–48 Combo A and Ray § 103(a) 24 48–49 Combo A and Wojnarowski or Zhang § 103(a) 26 and 27 49–50 Combo A and any of Abe, Wojnarowski, and Kanbar § 103(a) 30 and 31 50 Combo A and any of Abe, Wojnarowski, and Kanbar and either Wojnarowski or Koay § 103(a) 32 and 35 50–52 Combo A, Karlicek Declaration, and any of § 103(a) 36 53 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. Appeal 2016-006246 Control Nos. 95/000,679 and 95/002,245 Patent 6,746,885 B2 7 Allen, Becker, Wickenden, Yamane, and Ruskouski Combo A, Karlicek Declaration, and either Haitz or Mukai § 103(a) 38 53–54 Combo A, Karlicek Declaration, and Karpinski § 103(a) 40 54–56 Combo A, Karlicek Declaration, and any of Monto, Thau, Mygatt, or Ray § 103(a) 41 56–57 Combo A, Karlicek Declaration, and any of Abdelhafez, Deese, or Martin § 103(a) 42 57 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 produced thereon. Cf. Ex parte Frye, 94 USPQ2d 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)(1)(vii). A. The Rejections based on 35 U.S.C. § 112, second and fourth paragraphs With respect to the rejections under 35 US.C. § 112, second and fourth paragraphs, Patent Owner does not challenge the Examiner’s basis for these rejections. See, e.g., App. Br. 12–13 (noting that the Examiner denied entry of an amendment and requesting the Board indicate entry of the amendment). Because Appeal 2016-006246 Control Nos. 95/000,679 and 95/002,245 Patent 6,746,885 B2 8 the Patent Owner does not persuasively identify any error in the Examiner’s rejections, we summarily affirm these rejections. B. The Anticipation Rejection Based on Begemann Claims 15 and 22 Based on the record before us, we are not persuaded that the Examiner erred in rejecting claims 15 and 22 under 35 U.S.C. § 102(b) as anticipated by Begemann. Patent Owner contends that Begemann fails to teach a heat sink that has an air chamber within its interior and also has the semiconductor devices mounted on it. See App. Br. 13–14; Reb. Br. 4–5. According to Patent Owner, the Examiner relies on gear column 1 (depicted in figure 1 reproduced below) as the heat sink recited in claim 15. App. Br. 13–14. Appeal 2016-006246 Control Nos. 95/000,679 and 95/002,245 Patent 6,746,885 B2 9 Begemann’s Figure 1 Depicting an Embodiment of an LED Lamp Patent Owner points out that gear column 1 includes an air chamber within its interior, but the light emitting diodes (LEDs) or semiconductor devices are mounted on substrate 3, not gear column 1. App. Br. 14. Specifically, Patent Owner contends that “the LEDs 4 are clearly not mounted to the gear column 1 (i.e., the alleged heat sink) and therefore, Begemann does not appear to describe, either expressly or inherently, an air chamber within an interior of a heat sink on which the LEDs 4 are mounted.” Id. Patent Owner also asserts that substrate 3 cannot alternatively be relied upon as the heat sink because “Begemann’s substrate (3) does not contain an air chamber within its interior through which air may flow in order to facilitate heat dissipation, as required in claim 15.” App. Br. 14. As such, according to Patent Owner, Begemann fails to teach the recited heat sink because neither Begemann’s gear column nor substrate individually include both an air chamber and having the semiconductor devices mounted on it. The Examiner, however, relies on the gear column 1 and substrate 3 together as the heat sink. See RAN 17 (identifying substrate 3 as a heat sink in annotated Figure 1, and also finding that “‘gear column (1)’ reads on the claimed heat sink”); Office Action, dated September 22, 2014, 151–53; OS Resp. Br. 7–8. This interpretation by the Examiner is supported by the ’885 patent specification. For example, the ’885 patent describes Figure 6, which includes multiple parts as shown in reproduced Figure 6 below, as an exemplary heat sink.4 Figure 6; see 4 We also note that Patent Owner relies on Figure 6 and the associated disclosure as supporting the limitations of claim 15. See App. Br. 5. Appeal 2016-006246 Control Nos. 95/000,679 and 95/002,245 Patent 6,746,885 B2 10 also ’885 patent, col. 7, ll. 15–16 (identifying Figure 6 as “a cross sectional view of a heat sink of the invention 401.” (emphasis added)). Figure 6 Depicting a Cross-Section of an Exemplary Heat Sink of the ’885 Patent Claimed Invention The ’885 patent also describes that “[a]t the bottom of the heat sink, a fitting or connector may be provided that is threaded 409a and has an electrode 409b for installation into a traditional light socket.” ’885 patent, col. 7, ll. 37–40 (emphasis added). In other words, according to the ’885 patent, the unlabeled internal column, which extends to the bottom where the fitting or connector is located, is part of the heat sink in addition to the section on the opposite side of the air chamber. As such, Figure 6 and the associated disclosure supports the Examiner’s interpretation that the recited heat sink may include more than one part. Patent Owner also, for the first time in the Reply Brief, contends that Appeal 2016-006246 Control Nos. 95/000,679 and 95/002,245 Patent 6,746,885 B2 11 based on the art-recognized definition of a heat sink, one of ordinary skill in the art would understand that substrate 3 of Begemann does not constitute a heat sink as the term is used and understood in the art. One of ordinary skill in the LED lighting art would understand that a heat sink is a passive heat exchanger that transfers the heat generated by an electronic or a mechanical device into a coolant fluid in motion. Reb. Br. 2. This argument was raised for the first time in the Reply Brief and is, therefore, waived as untimely. See Ex parte Borden, 93 USPQ2d 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.”). Further, Patent Owner fails to identify any persuasive support for the proposed construction. As discussed above, the ’885 patent supports the Examiner’s interpretation that the recited heat sink may include more than one part. As such, we are not persuaded that the Examiner erred in considering the gear column 1 along with substrate 3 as the heat sink of claim 15. Therefore, for the reasons discussed above and identified by the Examiner, we find that claim 15, as well as claim 22, not argued with particularity, are anticipated by Begemann. C. The Obviousness Rejection Based on Begemann and Waitl Claims 9–11, 15, 16, 19–22 and 43 Based on the record before us, we are not persuaded that the Examiner erred in rejecting claims 9–11, 15, 16, 19–22 and 43 under 35 U.S.C. § 103(a) as being unpatentable over Begemann and Waitl. With respect to claim 9, Patent Owner asserts that Begemann teaches mounting the PCB (printed circuit board) to the substrate with a “heat-conductive Appeal 2016-006246 Control Nos. 95/000,679 and 95/002,245 Patent 6,746,885 B2 12 adhesive”, not mounting the LED to the PCB. App. Br. 16. According to the Patent Owner then, “even if the adhesive of Begemann were replaced with the light-reflective adhesive from Waitl, the claimed invention would not result because the ‘light reflective adhesive’ would not be used to mount “at least one semiconductor device on each of said primary heat sinks.’” Id. This argument, however, mischaracterizes the Examiner’s rejection. The Examiner does not rely Begemann’s adhesive between the PCB and the substrate, but rather expressly points out that Begemann does not state how the LED is mounted to the PCB. Specifically, the Examiner notes that Although Begemann does not indicate how the LED chips 11 are mounted the MC-PCB 12, it is clear from Begemann's desire to have good heat conduction all of the way from its source, the LED chip 11, to the metal cap 2 (Begemann, supra), that the attachment means should at least have good thermal conduction. RAN 22. The Examiner then turns to Waitl, which teaches that it was well known in the art at the time of the invention to use heat conductive adhesives to mounts LEDs, to satisfy the recited adhesive limitation. RAN 22–23. As such, we find Patent Owner’s argument unpersuasive. Likewise unavailing is Patent Owner’s argument that it is not apparent, and the Examiner did not discharge the initial burden of explaining, why one having ordinary skill in the art would have been realistically motivated to replace Begemann’s adhesive with Waitl’s light-reflective adhesive, particularly since any light emitted by the semiconductor LED 11 of Begemann cannot possibly be reflected by Begemann's adhesive. App. Br. 16; see also PO Reply Br 6–7. Notably, the Examiner does not rely on Waitl’s teaching of a light-reflective adhesive, but instead maintains that a skilled artisan would have been motivated to use Waitl’s heat conductive adhesive given Begemann’s desire to have good heat conduction. RAN 22–23. As the Examiner Appeal 2016-006246 Control Nos. 95/000,679 and 95/002,245 Patent 6,746,885 B2 13 points out, Waitl’s heat conductive adhesive is also light reflective and, thus, satisfies the recited limitation of claim 9 as well as the similar limitations of claims 21 and 43. RAN 23. Patent Owner also asserts that col. 9 lines 16-17 of the ’885 patent discloses that examples of light reflective adhesives that may be used include silver and aluminum based epoxy. As one of ordinary skill in the art would have understood, the combination of silver and aluminum present in the example for a light reflective epoxy. Reb. Br. 6 (underlining in original). This argument, however, was raised for the first time in the Reply Brief and is, therefore, waived as untimely. See Borden, 93 USPQ2d at 1474. Moreover, Patent Owner mischaracterizes the disclosure of the ’885 patent. Contrary to Patent Owner’s assertions, the ’885 patent refers to silver and aluminum-based epoxy as examples of light reflective adhesives, which addresses more than one example of a light reflective adhesive. See ’885 patent, col. 9, ll. 16–17. With respect to claims 15, 20, and 21, Patent Owner again contends that Begemann fail to teach the limitations of the heat sink. See App. Br. 17–19. For example, with respect to claims 15, “Patent Owner submits that the LEDs (4) are clearly not mounted to the gear column 1 (i.e., the alleged heat sink) and, therefore, Begemann does not appear to describe, either expressly or inherently, an air chamber within an interior of a heat sink on which the LEDs 4 are mounted.”). App. Br. 18; see also App. Br. 18–19 (presenting the same heat sink and light- reflective adhesive arguments as discussed above for claims 20 and 21). However, as discussed above, we find this argument unpersuasive as the Examiner relies on the gear column and substrate collectively for the heat sink limitations. See, e.g., RAN 27–29. Appeal 2016-006246 Control Nos. 95/000,679 and 95/002,245 Patent 6,746,885 B2 14 Therefore, for the reasons discussed above and identified by the Examiner, we find that claims 9, 15, 20, 21, and 43 as well as claims 10, 11, 16, 19, and 22 not argued with particularity (see, e.g., App. Br. 20–21), are unpatentable over Begemann and Waitl. D. The Remaining Obviousness Rejections Based on Begemann, Waitl, and the Additionally Cited Prior Art References Patent Owner present no separate argument for claims 10, 12, 13, 17, 18, 20, 22–27, 30–32, 35, 36, and 38–42, but instead relies on the arguments presented with respect to claims 9 and 15. See, e.g., App. Br. 20–22, 26. For the reasons discussed above, we find these arguments unpersuasive. Therefore, we find that claims 10, 12, 13, 17, 18, 20, 22–27, 30–32, 35, 36, and 38–42 are unpatentable over Begemann, Waitl, and the additionally cited prior art references. E. The Remaining Rejections Because our decision is dispositive regarding patentability of all appealed claims based on the foregoing 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 Gleave, 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 based on a single dispositive issue, and not reaching other issues not decided by the lower tribunal). Appeal 2016-006246 Control Nos. 95/000,679 and 95/002,245 Patent 6,746,885 B2 15 V. CONCLUSION We affirm the Examiner’s decision to reject claims 9–13, 15–27, 30–32, 35, 36, and 38–43. 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 Appeal 2016-006246 Control Nos. 95/000,679 and 95/002,245 Patent 6,746,885 B2 16 FOR PATENT OWNER: DITTHAVONG & STEINER, P.C. Keth Ditthavong 44 Canal Center Plaza Suite 322 Alexandria, VA 22314 FOR THIRD-PARTY REQUESTER: SUTTON MCAUGHAN DEAVER, PLLC 3 Riverway Suite 900 Houston, TX 77056 FISH AND RICHARDSON PC P.O. Box 1022 Minneapolis, MN 55440