Ex Parte BelekDownload PDFPatent Trial and Appeal BoardSep 29, 201511666471 (P.T.A.B. Sep. 29, 2015) Copy Citation 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. Appeal 2013-005861 Application 11/666,471 2 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; Appeal 2013-005861 Application 11/666,471 3 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): Appeal 2013-005861 Application 11/666,471 4 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 Appeal 2013-005861 Application 11/666,471 5 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. Appeal 2013-005861 Application 11/666,471 6 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). Appeal 2013-005861 Application 11/666,471 7 AFFIRMED kmm Copy with citationCopy as parenthetical citation