Ex Parte Hathaway

Patent Trial and Appeal Board

Aug 26, 2015

12514932 (P.T.A.B. Aug. 26, 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.
12/514,932 05/14/2009 Kevin J. Hathaway 2257 4992
7590 08/26/2015
Donald E Schreiber
Donald E Schreiber a Professional Corporation
P O Box 2926
Kings Beach, CA 96143-2926
EXAMINER
CONNELLY, MICHELLE R
ART UNIT PAPER NUMBER
2874
MAIL DATE DELIVERY MODE
08/26/2015 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 KEVIN J. HATHAWAY
____________

Appeal 2013-006788
Application 12/514,9321
Technology Center 2800
____________

Before CHARLES F. WARREN, ROMULO H. DELMENDO, and
KAREN M. HASTINGS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant seeks our review under 35 U.S.C. § 134(a) of a final
decision of the Primary Examiner to reject claims 1–48. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and REVERSE-IN-PART.

1 Kevin J. Hathaway, the Appellant, is said to be the Real Party in Interest
(Appeal Brief filed September 14, 2012, as corrected on October 16, 2012,
hereinafter “Br.,” 2).
Appeal 2013-006788
Application 12/514,932

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BACKGROUND
The subject matter on appeal relates to an illuminator for liquid crystal
display (LCD) modules (Specification, 1, ll. 5–7; 3, ll. 2–3). Representative
claim 1 is reproduced from page 2 of the corrected Claims Appendix, with
the disputed limitations highlighted in italics:
1. A liquid crystal display (“LCD”) illuminator which
when energized is adapted for emitting light which impinges
upon an input surface of a light pipe, the light pipe transforming
light impinging upon the input surface thereof into an area
source for backlighting a LCD of a LCD module, the LCD
illuminator comprising:
a) a thermally conductive housing;
b) a thermally conductive printed circuit board
(“PCB”) (32) that is mechanically and thermally
bonded to the thermally conductive housing, the
PCB (32) having an array of LED die (34)
mounted thereon on a surface thereof that faces
away from the thermally conductive housing, the
PCB (32) also electrically interconnecting the LED
die (34) mounted thereon; and
c) a layer of thermal interface material (56)
interposed between an outer surface (58) of the
thermally conductive housing and a LCD module
that receives the LCD illuminator;
whereby the LCD illuminator simultaneously:
a) facilitates dissipating from the LCD module heat
generated by the LED die (34) included in the
LCD illuminator; and
b) enhances mixing of light emitted by the LED die
(34) that impinges upon the input surface of the
light pipe included in the LCD module.

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Application 12/514,932

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THE REJECTIONS
I. Claims 1–23 and 25–47: The first six rejections are based
principally on Chen et al. (US 2005/0157500 A1, published July 21, 2005,
hereinafter “Chen”). Specifically, the Examiner rejected claims 1–6, 16, 20,
22, 25–30, 40, 44, and 46 under 35 U.S.C. § 102(b) as anticipated by Chen
(Examiner’s Answer entered January 23, 2013, hereinafter “Ans.,” 3; Final
Office Action entered January 24, 2012, hereinafter “Final Act.,” 5–8).
Additionally, the Examiner rejected claims 7–15, 17–19, 21, 23, 31–39, 41–
43, 45, and 47 under 35 U.S.C. § 103(a) as unpatentable over Chen alone or
Chen in view of one or more additional references (Ans. 3; Final Act. 10–13,
16–17, 18–19, 20–21, 21–22).
II. Claims 1–19, 22–43, and 46–48: The remaining six rejections
are based principally on Yoo (US 7,473,022 B2, issued January 6, 2009).
Specifically, the Examiner rejected claims 1–6, 16, 22, 24–30, 40, 46, and 48
under 35 U.S.C. § 102(e) as anticipated by Yoo (Ans. 10; Final Act. 8–10).2
Additionally, the Examiner rejected claims 7–15, 17–19, 23, 31–39, 41–43,
and 47 under 35 U.S.C. § 103(a) as unpatentable over Yoo alone or Yoo in
view of one or more additional references (Ans. 10–11; Final Act. 13–16,
17–18, 19–20, 21, 22–23).

DISCUSSION
As stated by the Appellant (Br. 4), the dispositive issue in this appeal
is whether Chen or Yoo describes a “layer of thermal interface material
(56)” in the manner as specified in claims 1 and 25—the two independent

2 In the Final Action, claims 1–6, 16, 22, 23, 25–30, 40, 46, and 48 were
rejected on this ground (Final Act. 8).
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claims on appeal. For the reasons discussed below, we affirm the rejections
based on Chen but reverse the rejections based on Yoo.
I. Chen
With respect to Chen, the Appellant does not offer any argument in
support of the separate patentability of any one claim. Therefore, we
confine our discussion to claim 1, which we select as representative pursuant
to 37 C.F.R. § 41.37(c)(1)(iv) (2012). By rule, claims 2–23 and 25–47 stand
or fall with claim 1.
As found by the Examiner (Final Act. 6), Chen describes fins 11,
which correspond to the “layer of thermal interface material” recited in the
claim, into which heat is carried from integrally-formed frame 10, which
corresponds to the “thermally conductive housing” recited in the claim, “so
that heat is vented to the surroundings” (Figs. 2 and 7; ¶ 22). In addition,
Chen discloses the fins 11 to be interposed between the frame 10 and an
unlabeled outer wall casing, which can be considered as the “LCD module
that receives the LCD illuminator” recited in the claim (Fig. 7). Therefore,
Chen’s teachings support the Examiner’s finding that Chen anticipates claim
1, including the disputed limitation.
The Appellant’s arguments to the contrary do not persuade us of any
reversible error in the Examiner’s finding.3 In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011).
Specifically, the Appellant contends that Chen “fails to specify what
might constitute ‘the surroundings’ into which heat is being vented or

3 The Appellant states that the “Appeal Brief omits arguments based upon
separating the ‘frame 10’ [from fins 11] into two (2) pieces” (Br. 7, n. 10).
Pursuant to 37 C.F.R. § 41.37(c)(1)(iv), such omitted arguments need not be
considered and are waived.
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dissipated” (Br. 10). As aptly pointed out by the Examiner (Ans. 5), claim 1
does not contain any limitations specifying the surroundings to which heat is
vented or dissipated. In re Hiniker Co., 150 F.3d 1362, 1368 (Fed. Cir.
1998) (citing In re Self, 671 F.2d 1344, 1348 (CCPA 1982)).
Next, the Appellant argues that the Examiner failed to identify a
feature in Chen that corresponds to the “LCD module” as specified in claim
1 (Br. 12). According to the Appellant, the unnamed wall located at the
extreme right of Chen’s Figure 7 can be either solid or not solid (id. at 14–
16) and, in either case, the fins 11 are not between the frame 10 and an LCD
module in the manner as required by claim 1 (id. at 17–21). Those
arguments are addressed sufficiently on pages 6–8 of the Answer, which we
adopt as our own.
The Appellants also argue that “contrary to the functional requirement
of independent claim 1 . . . that the ‘LCD Illuminator’ facilitate ‘dissipating
from the LCD module heat generated by the LED die (34) included in the
LCD illuminator,’ [the solid unnamed wall of Chen’s Fig. 5] actually
interferes with heat dissipation” (Br. 22). But, as pointed out by the
Examiner (Ans. 9), Chen teaches that the fins of Figure 7, which are shown
to be between a frame 10 and the unnamed wall, efficiently dissipate heat
and therefore do not impede heat dissipation (Ans. 9) (citing Chen ¶¶ 22,
24).
For these reasons and those set forth in the Answer, we sustain the
rejection of claim 1.
II. Yoo
Turning to Yoo, we agree with the Appellant that the rejections based
principally on this reference are not well-founded. The Examiner states:
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f) a layer of thermal interface material (52) interposed between
an outer surface of the thermally conductive housing (the
housing is formed by the groove, 30, and heat radiating plate,
50; thereby forming a conductive housing, the heat radiating
plate being including a layer of thermal interface material, 52,
on an outer surface of the grooved area of the housing) and a
LCD module (frame, 3; see Figure 9) that receives the LCD
illuminator . . . .
(Final Act. 9). In the Answer, the Examiner modified the above finding as
follows: “the housing is formed by the groove area 13 and groove fitting
part 51 of heat radiating plate 50” (Ans. 12). Either way, we agree with the
Appellant (Br. 4–6, 22–26) that the Examiner failed to establish a
description in Yoo of “a layer of thermal interface material . . . interposed
between an outer surface . . . of the thermally conductive housing and a LCD
module that receives the LCD illuminator,” as recited in claim 1, or “a layer
of thermal interface material . . . interposed between an outer surface . . . of
the thermally conductive housing and a surface of the LCD module that is
juxtaposed with the thermally conductive housing,” as recited in claim 25
(see Yoo Figs. 2 and 9).
For these reasons, we cannot uphold the rejections based principally
on Yoo.

SUMMARY
The rejections of claims 1–23 and 25–47 based principally on Chen
are affirmed.
The rejections of claims 1–19, 22–43, and 46–48 based principally on
Yoo are reversed.
Therefore, the Examiner’s final decision to reject claims 1–23 and 25–
47 is affirmed but the final decision to reject claims 24 and 48 is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART & REVERSED-IN-PART

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