Ex Parte Donofrio et al

Patent Trial and Appeal Board

Sep 1, 2016

13178791 (P.T.A.B. Sep. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/178,791 07/08/2011 Matthew Donofrio
65106 7590 09/06/2016
MYERS BIGEL & SIBLEY, PA
P.O. BOX 37428
RALEIGH, NC 27627
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.
5308-1415 9096
EXAMINER
NADAV,ORI
ART UNIT PAPER NUMBER
2811
NOTIFICATION DATE DELIVERY MODE
09/06/2016 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):
uspto@myersbigel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW DONOFRIO, JOHN ADAM EDMOND,
PETER SCOTT ANDREWS, and DAVID DER CHI CHANG
Appeal2015-005231
Application 13/178,791
Technology Center 2800
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JON M. JURGOV AN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-23, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Cree, Inc. (App. Br.
2).
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Application 13/178,791
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to reflective mounting substrates for flip-
chip mounted light emitting diodes (Spec. Title). Exemplary claim 1 under
appeal reads as follows:
1. A light emitting device comprising:
a mounting substrate;
a reflective layer disposed on the mounting substrate, the
reflective layer including spaced apart reflective anode and
reflective cathode pads and a gap therebetween;
a light emitting diode die including spaced apart anode and
cathode contacts that extend along a face thereof, the light
emitting diode die being flip-chip mounted on the mounting
substrate such that the anode contact is adjacent and conductively
bonded to the anode pad and the cathode contact is adjacent and
conductively bonded to the cathode pad; and
a lens disposed on the mounting substrate that extends
away from the mounting substrate to surround the light emitting
diode die;
wherein the reflective layer extends on the mounting
substrate to cover substantially all of the mounting substrate that
lies beneath the lens, excluding the gap.
References and Rejections
Claims 15 and 16 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting over claims 1 and 4--6 of
copending US Application No. 13/112,502 (see Final Act. 3--4).
Claims 1, 3-14, 19, 22, and 23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over David (US 2010/0308354 Al; published Dec.
9, 2010) (see Final Act. 4--8 and 13-14).
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Application 13/178,791
Claims 1, 4, 9-13, 19, and 21 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Horio (US 7,141,825 B2; issued Nov. 28, 2006) (see
Final Act. 8-11 and 13-14).
Claims 2, 15-18, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over David or Horio, each in view of Kim (US 2005/0179375
Al; published Aug. 18, 2005), Shepard (US 2009/0161420 Al; published
June 25, 2009), and Weaver, Jr. (US 2009/0166653 Al; published July 2,
2009) (see Final Act. 11-13).
Claims 3, 5-8, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Horio in view of David (see Final Act. 14--16).2
ANALYSIS
Double Patenting Rejection of Claims 15 and 16
Appellants do not challenge the provisional double patenting rejection
of claims 15 and 16. However, Appellants state:
Abeyance of the provisional double patenting rejection is
respectfully requested in accordance with MPEP §§ 804(I)(B)
and 804(I)(B)(l) because the double patenting rejection is not the
only rejection remaining in the present application. Once all
other rejections have been withdrawn, Appellants will address
any double patenting rejection that may remain with respect to
the claims.
(App. Br. 19).
Thus, we do not reach the merits of the Examiner's double patenting
rejection because this issue is not ripe for decision by the Board. Panels
2 The rejection of claims 1-14 and 19-23 under 35 U.S.C. § 112, second
paragraph, as being indefinite (see Final Act. 2) has been withdrawn by the
Examiner (Ans. 2).
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Application 13/178,791
have the flexibility to reach or not reach provisional double-patenting
rejections. See Ex parte Moncla, 95 USPQ2d 1884 (BP AI 2010)
(precedential).
Claims 1 and 19
§ 103 Rejection over David
Appellants contend David does not teach a "reflective layer including
spaced apart reflective anode and reflective cathode pads and a gap
therebetween ... wherein the reflective layer extends on the mounting
substrate to cover substantially all of the mounting substrate that lies beneath
the lens, excluding the gap" (App. Br. 5-9). Appellants argue David teaches
away from the claimed reflective anode and cathode pads, because David
excludes the anode and cathode pads (22, 23) under the LED die from being
part of the reflective layer (29) (App. Br. 7-8; Reply Br. 2). Appellants
further contend there is no rationale, other than improper hindsight
reconstruction, for the Examiner's suggestion to use aluminum as David's
metal anode and cathode pad material, nor is there an expectation of success
for using aluminum material for the pads (App. Br. 5---6 and 8-9).
Appellants' contentions do not persuade us of Examiner error in the
rejection over David. Appellants' Specification teaches "[ v ]arious metals
may be used to provide the reflective layer" (Spec. i-f 203), and claims 1 and
19 do not require a specific metal material for the reflective layer. As found
by the Examiner, David teaches a reflective metal layer, including reflective
metal anode and cathode pads (Ans. 15-21 (citing David i-f 30): reflective
layer comprises metal layer 29 and metal pads 22, 23), that covers
substantially all of the mounting substrate.
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Application 13/178,791
Therefore, we sustain the 35 U.S.C. § 103(a) rejection of claims 1 and
19, as well as claims 3-11, 14, 22, and 23 which are not argued separately.
§ 103 Rejection over Horio
Appellants' contentions regarding Horio are similar to the contentions
presented for David (see App. Br. 10-13). Appellants further contend that
Horio's reflective layer (16) is part of the LED die, not part of the mounting
substrate, and there is no teaching in Horio to modify the anode and cathode
pads to be a reflective material (App. Br. 11-12; Reply Br. 2-3).
Appellants' contentions do not persuade us of Examiner error, because, as
discussed supra, the claimed reflective anode and cathode pads read on the
disclosed pads that are formed of a metallic material. Thus, we agree with
the Examiner's finding that Horio' s anode and cathode pads ( 44, 45)
comprise a metal wiring material (Final Act. 8-9; Ans. 21-24; see Horio col.
11 :45--48) that covers substantially all of the mounting substrate.
Therefore, we sustain the 35 U.S.C. § 103(a) rejection of claims 1 and
19, as well as claims 3-11, 14, and 21 which are not argued separately.
Claims 2, 15-18, and 20
§ 103 Rejection over Horio
Appellants contend the combination of Horio, Kim, Shepard, and
Weaver does not teach a "reflective filler material in the gap" between
spaced apart anode and cathode pads, because the Examiner has chosen
isolated elements of the cited references with no reason, other than improper
hindsight reconstruction, to combine these elements in the manner claimed,
and with no reasonable expectation of success in achieving the claimed
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Application 13/178,791
invention (App. Br. 13-18; Reply Br. 3). Appellants contend the dielectric
filler disclosed in Kim and Shepard is not a reflective filler material, and
contend Weaver does not teach the use of a reflective solder mask material
in a gap between an anode and cathode pad (App. Br. 14-16).
Appellants are essentially attacking the references individually where
the rejection is based on the combination of Horio, Kim, Shepard, and
Weaver. (See In re Keller, 642 F.2d 413, 426 (CCPA 1981) ("[O]ne cannot
show non-obviousness by attacking references individually where ... the
rejections are based on combinations of references.")). The Examiner finds,
and we agree, that the combination of Horio, Kim, and Shepard teaches
providing a dielectric filler (e.g., silicon oxide) between an anode and
cathode pad gap to insulate the gap and prevent a short-circuit between the
pads (Ans. 24-27 (citing Kim i-fi-128, 47 and Shepard i160)), and Weaver
teaches the use of a reflective, high dielectric constant material (e.g.,
titanium oxide) as an insulator to provide better insulation than silicon oxide
(Ans. 27-30 (citing Weaver i17)). Thus, the Examiner has articulated a
valid reasoning with "some rational underpinning to support the legal
conclusion of obviousness." (See KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Therefore, we sustain the 35 U.S.C. § 103(a) rejection of claim 15, as
well as claims 16-18 which are not argued separately.
§ 103 Rejection over David
Because we sustain the rejections of claims 2, 15-18, and 20 under
35 U.S.C. § 103(a) based on Horio, we deem unnecessary to reach a decision
about the cumulative rejection of claims 2, 15-18, and 20 under U.S.C.
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§ 103(a) based on David. See 37 C.F.R. § 41.50(a)(l) ("The affirmance of
the rejection of a claim on any of the grounds specified constitutes a general
affirmance of the decision of the examiner on that claim .... ").
Claims 12 and 13
§ 103 Rejection over David or Horio
Appellants contend neither David nor Horio teaches "the mounting
substrate also includes a fiducial thereon that is configured to facilitate the
light emitting diode die being flip-chip mounted," and contend the
Examiner's finding that fiducials are required to align elements on the
substrate is unsupported (App. Br. 18-19; Reply Br. 3--4). We are not
persuaded of Examiner error, because the claims do not require the fiducials
to comprise any specific structure or separate feature, other than to facilitate
mounting of the die. In each of David and Horio, the LED die is mounted
by aligning the edge of the anode and cathode contacts to the edge of the
anode and cathode pads on the substrate (see David Fig. 1, LED contacts 18
and 20 are aligned to the outer edge of substrate pads 22 and 23; Horio Fig.
13, LED contacts 20 and 21 are aligned to inner edge of substrate pads 44
and 45). Thus, we sustain the 35 U.S.C. § 103(a) rejection of claims 12 and
13 because we agree that David and Horio teach a fiducial in the anode and
cathode pad reflective layer (i.e., the edge of the pads) that facilitates
mounting of the anode and cathode contacts (see Ans. 30-31 ).
DECISION
We affirm the Examiner's rejection of claims 1-23 under 35 U.S.C.
§ 103(a).
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Application 13/178,791
We do not reach the Examiner's rejection of claims 15 and 16 on the
ground of nonstatutory double patenting.
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
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