Ex Parte Brooks et alDownload PDFPatent Trial and Appeal BoardAug 21, 201813948512 (P.T.A.B. Aug. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/948,512 07/23/2013 23400 7590 08/23/2018 POSZ LAW GROUP, PLC 12040 SOUTH LAKES DRIVE SUITE 101 RESTON, VA 20191 FIRST NAMED INVENTOR Timothy Webster Brooks 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 37 _013_CIP1 5003 EXAMINER PIZARRO CRESPO, MARCOS D ART UNIT PAPER NUMBER 2814 NOTIFICATION DATE DELIVERY MODE 08/23/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): mailbox@poszlaw.com dposz@poszlaw.com tvarndell @poszlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY WEBSTER BROOKS, SCOTT J. JONES, MARTIN J. MARX, CESAR PEREZ-BOLIVAR, and JAMES E. ROBERTS Appeal2017-008929 Application 13/948,512 Technology Center 2800 Before BEYERL YA. FRANKLIN, MICHAEL P. COLAIANNI, and SHELDON M. McGEE, Administrative Patent Judges. McGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks our review of the Examiner's decision to reject claims 1-3, 5-9, 24, and 25. We have jurisdiction. 35 U.S.C. § 6. We affirm. 1 Appellant is the Applicant, Grote Industries, LLC, which is also identified as the real party in interest. App. Br. 4. Appeal2017-008929 Application 13/948,512 SUBJECT MATTER The subject matter on appeal relates to flexible lighting elements. Spec. ,r 7. Sole independent claim 1 is illustrative of the claimed subject matter and is copied below with the key limitations at issue in this appeal bolded and italicized: 1. Ajlexible lighting device, comprising: a flexible substrate; a first conductive element located on the flexible substrate; a second conductive element located on the flexible substrate; a plurality of lighting elements, each including a light-emitting element having a first contact and a second contact, the first and second contacts both being on a first surface of the light-emitting element, the light- emitting element being configured to emit light of wavelengths between 10 nm and 100,000 nm from a second surface of the light-emitting element, opposite the first surface, a first conductive connector located between the first conductive element and the first contact, the first conductive connector being configured to electrically connect the first conductive element to the first contact, and a second conductive connector located between the second conductive element and the second contact, the second conductive connector being configured to electrically connect the second conductive element to the second contact; a single first protective conformal coating located adjacent to the second surfaces of the light-emitting elements; and a single affixing layer located between the flexible substrate and the first protective conformal coating, adjacent to the plurality of lighting elements, the affixing layer being configured to affix the first protective conformal coating to the flexible substrate, 2 Appeal2017-008929 Application 13/948,512 wherein the first protective conformal coating is substantially transparent to light in the visible region, having a wavelength between approximately 300 and 1000 nm. App. Br. 17-18 (emphasis added). REJECTIONS 2 I. Claims 24 and 25 under 35 U.S.C. § 112(a) as lacking written description; and II. Claims 1-3, 5-9, 24, and 25 under AIA 35 U.S.C. § I03(a) as unpatentable over Mueller3 in view of Jiang. 4 OPINION Rejection I We sustain this rejection. The Examiner rejects claims 24 and 25 because they "recite that the first and second conformal coatings are flexible," but "[t]he specification in the original disclosure fails to support this limitation in the claims." Final Act. 3; Ans. 2. Appellant points to multiple paragraphs in the Specification that references the recited "flexible lighting device" as a whole. App. Br. 10. 5 Based on such disclosure, Appellant contends that adequate written 2 We do not consider the Examiner's objection to the drawings (Final Act. 2-3), or Appellant's arguments directed thereto (App. Br. 9), as objections are a petitionable, i.e., not appealable, matter. See In re Hengehold, 440 F.2d 1395 (CCPA 1971). 3 US 2008/0048200 Al, published Feb. 28, 2008. 4 US 2010/0091491 Al, published April 15, 2010. 5 This argument appears in the Response to Final Office Action, dated May 13, 2016, and is referenced in the Appeal Brief. 3 Appeal2017-008929 Application 13/948,512 description support exists for the disputed limitations because the skilled artisan would have recognized that "the conformal coatings would have to be flexible in order for the entire lighting device to be flexible," and that "[a] rigid conformal coating would preclude the lighting device from being flexible." Response 7. Appellant also refers to the description for the embodiment of Figure 16, which "uses a conformal layer without phosphor 1675 instead of a second flexible substrate 530." Id. For several reasons, this line of argument is unpersuasive. Adequate written description means that, in the specification, the applicant must "convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). When no such description can be found in the specification, the only thing the PTO can reasonably be expected to do is to point out its nonexistence. Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007). Here, the Examiner satisfies the Office's initial burden by pointing out the absence of support for the disputed limitations. Final Act. 3; Ans. 2. In response, Appellant identifies portions of the Specification which purport to refer to a "flexible lighting device" as a whole and not to any flexibility of the first and second conformal layers which are the subject of the rejection. Appellant's reference to Figure 16 likewise does not evince descriptive support for a flexible conformal layer, as this portion of the Specification merely identifies two alternatives for the layer that bonds to affixing layer 540- either a second flexible substrate 530 or a conformal layer without phosphor 1675. Spec. ,r 134. In other words, the identification of one alternative as flexible is not sufficient to necessarily impart this characteristic to the other. 4 Appeal2017-008929 Application 13/948,512 Moreover, if Appellant's argument that "a rigid conformal coating would preclude the lighting device from being flexible" is taken at face value, then claims 24 and 25 are improper dependent claims because they do not further limit the claim from which they depend. Namely, claims 24 and 25 ultimately depend from claim 1 which recites "[a] flexible lighting device." If the conformal coatings must be flexible to render the device as a whole flexible, then claims 24 and 25 are superfluous because the conformal coating recited in claim 1 must necessarily be "flexible." Rejection II Appellant focuses its arguments on sole independent claim 1. App. Br. 10-15; Reply Br. 2---6. Because no other claims are separately argued with any degree of specificity, we decide the propriety of this rejection based on arguments presented for claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). Relevant to this appeal, the Examiner relies on the teachings of Mueller to satisfy most of the limitations recited in claim 1, including the requirement that the "flexible lighting device" comprises "a flexible substrate." Final Act. 4---6 ( citing Mueller ,r 62, which discloses that "[ t ]he support structure may be a submount (e.g., ceramic or silicon with metal leads), a metal heat sink, a printed circuit board, or any other structure" (emphases added)). It is the Examiner's position that the submounts of Mueller "are capable of being flexed to different degrees," and, thus, "[Mueller] shows a flexible substrate inasmuch as it is broadly recited in the claim." Id. at 6. Appellant contends that Mueller fails to disclose a "flexible" substrate. App. Br. 10-15; Reply Br. 2---6. In particular, Appellant argues the Examiner's interpretation that Mueller's submount materials ( e.g., a 5 Appeal2017-008929 Application 13/948,512 metal heat sink or ceramic) are "flexible" is unreasonably broad, and that the skilled artisan would have understood Mueller's substrate materials to be rigid and not flexible. App. Br. 14. We are unpersuaded by this argument. Sole independent claim 1 broadly recites "a flexible substrate." While Appellant does not direct us to a definition of the term "flexible" in the Specification, the Specification indicates that the "flexible substrate 510 can be made of polyethylene terephthalate (PET), polyethylene napthalate (PEN), polyester, a polymer, an oxide-coated polymer, a flexible plastic, a metal-coated flexible plastic, or any suitable flexible material." Spec. ,r 72 ( emphasis added). Thus, the Specification does not limit the recited "flexible substrate" to materials that exhibit a minimum degree of flexibility so as to distinguish between a substrate that is considered "flexible" and one that is not. Rather, the Specification merely recites possible materials that the substrate can be made from, including broad categories such as polymers, polyesters, flexible plastics, and "any suitable flexible material." Id. Because the term "flexible" is not defined in the Specification, Appellant invites us to apply the "ordinary meaning" of this term, which, according to Appellant, disqualifies Mueller's submounts. See App. Br. 14 ( urging that "[ n Jone of a printed circuit board, metal heat sink, silicon with metal leads, or ceramic fit" the ordinary meaning of "flexible"). Appellant's position is undermined, however, by its own disclosure that indicates that 6 Appeal2017-008929 Application 13/948,512 both ceramic and a metal heat sink may be considered "flexible." Spec. ,r 73. 6 Therefore, on this record, we have little more than Appellant's bare assertion that the skilled artisan would have considered Mueller's submount materials to be "rigid" and not "flexible" as it is currently recited in the claim. Under these facts, we agree with the Examiner that the broadest reasonable interpretation of the term "flexible" includes the submount materials disclosed in Mueller ( e.g., ceramic or a metal heat sink). Final Act. 6-7. Therefore, for the reasons provided above, as well as those provided by the Examiner in the Final Action and the Answer, we sustain Rejection II. DECISION The Examiner's final decision to reject claims 1-3, 5-9, 24, and 25 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). AFFIRMED 6 It is of no moment that the Specification's disclosure of a "flexible" ceramic and a "flexible" metal heat sink is regarding a distinct layer (520) than the "substrate" (510). Spec. ,r 73. 7 Copy with citationCopy as parenthetical citation