Ex Parte Belek

Patent Trial and Appeal Board

Sep 29, 2015

11666471 (P.T.A.B. Sep. 29, 2015)

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.
11/666,471 10/10/2008 Ronald E. Belek 500-229 PCT/US 8713
23869 7590 09/29/2015
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
EXAMINER
IDA, GEOFFREY H
ART UNIT PAPER NUMBER
2892
MAIL DATE DELIVERY MODE
09/29/2015 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 RONALD E. BELEK

Appeal 2013-005861
Application 11/666,4711
Technology Center 2800
____________

Before BEVERLY A. FRANKLIN, RICHARD M. LEBOVITZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims to an LED (light emitting diode)
assembly. Appellant appeals from the Patent Examiner’s final rejection of
claims 3–8, 10–17, 28, and 29 under 35 U.S.C. § 103 as obvious. We have
jurisdiction under 35 U.S.C. § 134. The Examiner’s rejection is affirmed.

STATEMENT OF THE CASE
Claims 3–8, 10–17, 28, and 29 are pending. Claim 28 is the only
independent claim. The claims are directed to an LED assembly. The
claims stand finally rejected by the Examiner under 35 U.S.C. § 103(a) as
obvious in view of Dahm2 and Murata.3

1 “The ’471 application.”
2 Dahm, US 2005/0158687 A1, published July 21, 2005.
3 Murata, US 4,935,665, issued June 19, 1990.
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Application 11/666,471

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Independent claim 28 reads as follows:
28. A LED assembly comprising:
at least one LED;
a heat pipe supporting said LED in electrical engagement
therewith;
a conductive reflector mounted to the heat pipe and in
electrical engagement with said LED wherein the LED is
surrounded by said reflector and said reflector includes a curved
side wall defining a reflective cavity, said side wall having a cut
machined into a portion of the curved side wall within the
reflective cavity;
a wire bonded from the LED to said cut on the side wall
of the reflector within the reflective cavity; and
an insulative member electrically isolating said
conductive reflector from said heat pipe, wherein said heat pipe
and said reflector form an electrically conductive location for
supplying power to said LED.

REJECTION
The Examiner found that Dahm describes a LED assembly with an
LED, a heat pipe supporting the LED, a conductive reflector with a curved
side wall, and an insulative member electrically isolating the reflector from
the heat pipe meeting the corresponding limitations of independent claim 28.
Ans. 3–4. Appellant did not dispute the Examiner’s findings with respect to
these elements of the claim. Appeal Br. 4. The Examiner acknowledged
that there was no explicit teaching in Dahm of the following claim
limitations of claim 28 (Ans. 4)(emphasis added):
said reflector includes a curved side wall defining a reflective
cavity, said side wall having a cut machined into a portion of
the curved side wall within the reflective cavity;
a wire bonded from the LED to said cut on the side wall
of the reflector within the reflective cavity;

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Application 11/666,471

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Citing In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985), the Examiner
found that the limitation “a cut machined into a portion of the curved side
wall” is “product-by process” limitation and thus did not give it patentable
weight. Ans. 4. Based on this interpretation, the Examiner found Murata’s
teaching of a side wall with a gap to which a wire is bonded meets the
claimed limitation of “a wire bonded from the LED to said cut on the side
wall of the reflector within the reflective cavity.” Ans. 4 & 9; Murata Figs.
7 & 11. The Examiner concluded that the “ordinary artisan would have been
motivated to modify Dahm for at least the purpose of decreasing the
frequency of snapped bonding wires (Murata [,] column 7, lines 12–15).”
Ans. 5.
Appellant contends that Murata doesn’t describe a cut within a
reflective cavity as required by claim 28. Appeal Br. 5. The issue in this
rejection is whether Murata describes “a cut machined into a portion
of . . . the reflective cavity” as recited in independent claim 28.

Murata
Because the teachings in the Murata publication are in dispute, we
first turn to its disclosure. The Examiner cited Fig. 11 of Murata as showing
a cut in the reflector side wall of an LED assembly. Ans. 5, 9. Fig. 11 of
Murata is reproduced below (annotated with a grey circle and a grey label
showing hollow 17 in the left LED assembly):
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Application 11/666,471

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Fig. 11 shows a device with an LED 2 and a bonding wire 5 attached
within hollow 17 to the pole pattern 15. Murata, col. 6, ll. 61–64; col. 7, ll.
1–3. “The pole pattern 15 covers a part of the side wall 14 and bottom of the
hollow 11.” Id. at col. 6, ll. 65–66. “The portion of the pole pattern 15
covering the side wall 14 functions as a light-reflecting surface.” Id. at col.
3, ll. 46–48.
The hollows 11 and 17 lined with the light reflecting pole pattern 15
serve as the claimed “reflective cavity.” The bonding wire 5 is attached
within hollow 17 to the light reflecting pole pattern 15. The hollow 17
serves as the claimed “cut on the side wall of the reflector [pole pattern 15]
within the reflective cavity [hollow 11].”
Appellant contends that the Examiner erred in not giving the term
“machined” patentable weigh as it is recited in “a cut machined into a
portion of the curved side wall.” Appeal Br. 7. Appellant argues that the
“reflector of the present invention has a cut which is machined into the side
wall of the reflector. Murata's reflector is manufactured to have the
configuration shown therein.” Id.
“[E]ven though product-by-process claims are limited by and defined
by the process, determination of patentability is based on the product itself.”
In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Process steps are relevant
to the extent they confer a structure or characteristic on the product which
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Application 11/666,471

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distinguishes it from products made by other processes. See In re Garnero,
412 F.2d 276, 279 (CCPA 1979).
In this case, Appellant’s argument simply restates the recognized
difference in construction between the machined cut and the manufactured
hollow 17 of Murata without identifying how machining makes the cut
different from one which is manufactured.
Fig.1a of the ’471 application is reproduced below (“wire 16” was
added herein since it was unlabeled in the original figure) to show the
similarity between Murata’s hollow 17 and a machine cut as described in the
’477 application.

Fig. 1a of the ’471 application shows an LED assembly with LED 14,
machined cut 13, and wire 16 preferably soldered to the cut 13 of the
reflector 12. ’477, p. 3, ll. 21, 26–28; p. 4, l. 24 to p. 5, l. 4. The cut 13
depicted in the embodiment of Fig. 1A appears to be similar to hollow 17 in
Murata’s Fig. 11 reproduced above.
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Appellant argues that the “the far end of wire 5 does not, in fact,
contact the reflective cavity which contains the LED but goes to an adjacent
pole pattern” as shown by the circle structure in Fig. 11 of Murata
reproduced above. Appeal Br. 6. Appellant contends that “[e]ven if what
the Examiner refers to as cavity 17 is part of the reflective cavity, which
Appellant contends it is not, the wire is not bonded to the cut, but is instead
bonded to the adjacent pole pattern 15.” Reply Br. 3.
Fig. 11 of Murata shows that pole pattern 15 extends from hollow 17
(circled) in one LED assembly (left) into a second LED assembly (right).
The hollow 17 for each assembly is below line X-X, as noted by the
Examiner, and therefore would be considered to be part of the reflective
cavity defined by hollow 11. Ans. 9. The wire is clearly attached within
“cut” in the reflective cavity, where hollow 17 is the cut and the reflective
cavity is hollow 11. While the pole pattern 15 extends into the second LED
assembly on the right, it is still part of the first reflective cavity of the LED
assembly on the left as shown in Fig. 11 of Murata and lines a portion of the
cavity. Id.
For the above reasons, we conclude that a preponderance of the
evidence supports the Examiner’s conclusion that claim 28 is obvious
in view of Dahm and Murata. Claims 3–8, 10–17, and 29 were not
argued separately and therefore fall with claim 28 and for the reasons
set forth by the Examiner. 37 CFR § 41.37(c)(vii).

TIME PERIOD
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
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AFFIRMED

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