Ex Parte Dahm

Patent Trial and Appeal Board

Dec 21, 2016

11042970 (P.T.A.B. Dec. 21, 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.
11/042,970 01/24/2005 Jonathan S. Dahm 500-201 PCT/US/CON 6534
23869 7590
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
12/21/2016 EXAMINER
LEWIS, RALPH A
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
12/21/2016 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
Ex parte JONATHAN S. DAHM
Appeal 2015-001111
Application 11/042,9701
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jonathan S. Dahm (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting claims 3,4, 11, 13, and 15—17.2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellant, the real party in interest is Koninklijke Philips
Electronics N.V. Appeal Br. 2 (filed June 2, 2014).
2 “Claims 1 and 19-23 are allowed. Claims 2, 5-10, 12 and 14 have been
cancelled. Claim 18 has been withdrawn from consideration.” Appeal Br,
1; see also Final Act. 1.
Appeal 2015-001111
Application 11/042,970
INVENTION
Appellant’s invention relates “to the field of light emitting diode
(“LED”) technology.” Spec. 12.
Claims 3 and 15 are independent claims. Claim 3, reproduced below
with emphasis added, is illustrative of the claimed invention and reads as
follows:
1. A light emitting device, the device comprising:
a heat pipe having a first and a second end;
a light emitting device mounted at the first end of the heat
pipe; and
a fan moving air over the heat pipe.
Appeal Br. 12 (Claims App.).
REJECTIONS
I. The Examiner rejected claims 3,4, 11, and 13 under 35 U.S.C.
§ 102(b) as being anticipated by Mills (WO 99/16136, pub.
Apr. 1, 1999).
II. The Examiner rejected claims 3, 11, 13, and 15—17 under
35 U.S.C. § 102(e) as being anticipated by Logan (US
6,692,251, iss. Feb. 17, 2004).
III. The Examiner rejected claims 3,4, 11, and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Mills.
IV. The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as
being unpatentable over Logan.
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Application 11/042,970
ANALYSIS
Rejection I—Anticipation by Mills
Appellant’s patentability argument for independent claim 3 depends
on the Examiner erroneously finding Mills to disclose a light emitting device
with “a fan moving air over the heat pipe.” Appeal Br. 3—7. Appellant does
not challenge the Examiner’s finding Mills discloses the other limitations of
claim 3. See id. In addition, Appellant does not argue separately the
patentability of dependent claims 4, 11, and 13. Id. Asa result, these claims
all stand or fall with claim 3. See 37 C.F.R. § 41.37(c)(l)(iv).
Figure 5 of Mills, which is cited by the Examiner and Appellant, is
reproduced below.
Figure 5 is an illustration of “a fifth embodiment,” which “shows a device
. . . [that] incorporates a heat pipe 45 as a single lumen in the main body 46
of the device.” Mills, p. 5, 14; Fig. 5. The above embodiment depicts a heat
pipe 45 with an additional forced cooling means comprising of a fan 49, a
Peltier device 50, and heat sink 51 in juxtaposition to the end of the heat
pipe. Id.
The Examiner finds Mills’s Figure 5 and Specification disclose “a fan
moving air over the heat pipe,” as claim 3 requires. Final Act. 2. The
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Application 11/042,970
Examiner notes Mills “illustrates in Figure 5 open space between the outer
casing 47 and the Peltier device 50 and a porous finned heat sink 51 both of
which would allow for air flow through the outer case to the fan 49.” Id. at
3. In addition, the Examiner asserts Mills discloses other embodiments in
which a heat sink is omitted, which is evidenced by Mills’s express teaching
that, “if the heat pipe is insufficient [for cooling the LED alone] ‘additional
forced cooling means may be used for example, a fan 49 or Peltier device 50
in juxtaposition to the pipe. In addition, a heat sink 51 may be provided.’”
Id. (quoting Mills, p. 14 (emphasis added)). Mills also teaches a “careful
design” may eliminate the need for a heat sink, which the Examiner relies on
to demonstrate further Mills discloses embodiments in which air flows from
the fan over the heat pipe to dissipate heat. Id. (citing Mills, p. 15).
Appellant asserts, “merely from a review of Figure 5 of Mills, the
Examiner’s position that cooling air would flow [past the heat sink] over the
remaining components is not supported.” Appeal Br. 4. The Examiner’s
findings lack support, according to Appellant, because Figure 5 illustrates
the heat sink as transverse the back end of the heat pipe. Id. In response to
the Examiner’s reference to Mills’s other embodiments in which the design
allows the heat sink to be omitted, Appellant argues, “the heat sink and
Pelletier device are clearly shown as part of the Figure 5 embodiment. Even
acknowledging that additional forced cooling may be used, such forced
cooling is disclosed in Mills as cooling the heat sink and not the heat pipe.”
Id. at 5.
Appellant’s argument is unpersuasive because a preponderance of the
evidence supports the Examiner’s finding Mills discloses a light emitting
device with “a fan moving air over the heat pipe,” as claim 3 requires.
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Appeal 2015-001111
Application 11/042,970
Regardless of whether the Mills device in Figure 5 allows the fan to move
air past the heat sink 51 to the heat pipe 45, the evidence supports the
Examiner’s finding that Mills reveals other similar embodiments in which
the heat sink 51 is omitted. Ans. 5—6 (citing Mills, pp. 14, 15). Appellant’s
argument, which is limited to the alleged deficiencies of the device in
Mills’s Figure 5, therefore, misses the mark.
We disagree with Appellant’s contention that Mills requires the use of
a heat sink. By identifying the heat sink and/or Peltier as an optional design
choices (see Mills, pp. 14, 15) for cooling the heat pipe, when cooling the
heat pipe alone is insufficient, the evidence supports the Examiner’s finding
Mills discloses embodiments that use a fan to blow air directly over the heat
pipe to dissipate heat. Appellant does not point to any contrary evidence
suggesting that the fan 49 cannot, or should not, blow air over the heat pipe,
which the Examiner correctly notes, “would defeat the purpose of the
cooling fan and [be] contrary to how one of ordinary skill in the art would
reasonably interpret the Mills disclosure.” Ans. 5.
Therefore, for the foregoing reasons, we sustain the Examiner
rejection of claims 3,4, 11, and 13 as being anticipated by Mills.
Rejection III— Unpatentable Over Mills
Since we have agreed that Mills anticipates the subject matter of
claims 3,4, 11, and 13 (see supra Rejection I) and “anticipation is the
ultimate of obviousness,” the subject matter of these claims is necessarily
obvious. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991)
(citing In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982)). Still, after
considering each of Appellant’s arguments, we are unpersuaded and agree
with the Examiner that the subject matter of these claims would have been
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Application 11/042,970
obvious in view of Mills. As a result, we adopt the Examiner’s findings and
conclusions as set forth in the Examiner’s Answer and in the action from
which this appeal was taken. Ans. 7—8; Final Act. 5. We, therefore, sustain
the Examiner’s rejection of claims 3,4, 11, and 13 as unpatentable over
Mills.
Rejection II—Anticipation by Logan
Finding Logan anticipates claims 3,11, 13, and 15—17, the Examiner
concludes, “for purposes of this rejection,” that the term “heat pipe”
interpreted broadly includes additional structures such as a heat sink. Final
Act. 4—5; Ans. 7. Appellant asserts a heat pipe and heat sink/exchanger are
different structures (Appeal Br. 9—10) and assert, “[i]t is not reasonable,
even under the broadest reasonable interpretation standard, to interpret a heat
pipe to include ... a heat sink.” Reply Br. 3. For the following reasons,
Appellant’s argument is persuasive.
The Examiner finds unpersuasive Appellant’s argument that the fan in
Logan neither “mov[es] air over the heat pipe,” as claim 3 requires (Appeal
Br. 12 (Claims App.)), or “configured to move cooling air directly over said
heat pipe,” as claim 15 requires {id.), because “the heat sink is considered to
be part of the undefined ‘heat pipe.’” Final Act. 4; Ans. 7. The Examiner
concludes the broadest reasonable meaning of “heat pipe” includes
additional structures because Appellant “does not define or give any
limitations as to the structure of the heat pipe or what structures it may or
may not include.” Id. Notably, the Examiner does not cite to any record
evidence to support the conclusion that a skilled artisan would ordinarily use
the term “heat pipe” to refer to more than the heat pipe structure itself. Id.
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Appeal 2015-001111
Application 11/042,970
“The broadest-construction rubric . . . does not give the PTO an
unfettered license to interpret claims to embrace anything remotely related to
the claimed invention.” In re Suitco Surface, Inc., 603 F.3d 1255, 1260
(Fed. Cir. 2010).
Since it would be unreasonable for the PTO to ignore any
interpretive guidance afforded by the applicant’s written
description ... the PTO applies to the verbiage of the proposed
claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary
skill in the art, taking into account whatever enlightenment by
way of definitions or otherwise that may be afforded by the
written description contained in the applicant’s specification.
In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). Evidence of how a
skilled artisan would generally understand particular words can also come
from the prior art. “Prior art references may be ‘indicative of what all those
skilled in the art generally believe a certain term means . . . [and] can often
help to demonstrate how a disputed term is used by those skilled in the art.’”
Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 1584 (Fed.
Cir. 1996)). “Accordingly, the PTO’s interpretation of claim terms should
not be so broad that it conflicts with the meaning given to identical terms in
other patents from analogous art.” Id.
The Examiner errs in this rejection because the record evidence
demonstrates the term “heat pipe,” as ordinarily understood by a skilled
artisan, refers to a structure that is distinctly separate from a heat sink. First,
we note claim 3 positively recites “a heat pipe,” which claim 13 further
limits to having, “a heat sink positioned longitudinal to said heat pipe and in
thermal communication therewith.” Appeal Br. 12—13 (Claims App.).
Where a claim recites elements separately, “the clear implication of the
claim language is that those elements are distinct components of the patented
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Application 11/042,970
invention.” Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616
F.3d 1249, 1254 (Fed. Cir. 2010) (citations omitted). Second, the
Specification identifies the heat pipe and heat sink as separate distinct
structures — “[t]he LED curing device includes a tubular body, an LED body,
a heat pipe, a power source, a fan and a heat sink/exchanger” (Spec. 114),
wherein “[a] heat sink 68 preferably of A1 or Cu is glued to ‘cold end’ of the
heat pipe 64 between the fan 66 and the battery pack 61a and 61b” (id. 191,
Fig. 6a). Finally, both Logan and Mills consistently describe a heat
pipe/tube and heat sink as distinctly separate structures. See Logan, col. 7,1.
64 —col. 8,1. 8, col. 8,11. 41—52; Mills, p. 14, Fig. 5.
In view of the above evidence, the Examiner’s construction of the
term “heat pipe” is unreasonably broad. A reasonable interpretation of the
term “heat pipe” would not include the heat sink, which is a separate
structure. Therefore, we do not sustain the Examiner’s rejection of claims 3,
11, 13, and 15—17 as anticipated by Logan.
Rejection IV— Unpatentable Over Logan
Because claim 17 depends from claim 15, the Examiner’s rejection of
claim 17 as unpatentable over Logan necessarily incorporates the
Examiner’s erroneous construction of the term “heat pipe.” Final Act. 6.
Therefore, we also do not sustain this rejection.
SUMMARY
The Examiner’s rejection of claims 3,4, 11, and 13 as anticipated by
Mills is affirmed.
The Examiner’s rejection of claims 3,4, 11, and 13 as unpatentable
over Mills is affirmed.
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Appeal 2015-001111
Application 11/042,970
The Examiner’s rejection of claims 3, 11, 13, and 15—17 as
unpatentable over Logan is reversed.
The Examiner’s rejection of claim 17 as unpatentable over Logan is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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