Ex Parte Herner et al

Patent Trial and Appeal Board

May 30, 2018

14549826 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/549,826 11/21/2014
22208 7590 06/01/2018
The Marbury Law Group, PLLC
11800 SUNRISE VALLEY DRIVE
15THFLOOR
RESTON, VA 20191
FIRST NAMED INVENTOR
Scott Brad Herner
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.
9308-035US 6556
EXAMINER
NGUYEN, DUY TV
ART UNIT PAPER NUMBER
2894
NOTIFICATION DATE DELIVERY MODE
06/01/2018 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):
ptonotices@marburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT BRAD HERNER, LINDA ROMANO, DANIEL BRYCE
THOMPSON, MARTIN SCHUBERT, and RONALD KANESHIRO
Appeal2018-004484
Application 14/549,826
Technology Center 2800
Before LINDA M. GAUDETTE, CHRISTOPHER L. OGDEN, and
MICHAEL G. McMANUS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification
filed Nov. 21, 2014 ("Spec."); Final Office Action dated Oct. 17, 2016
("Final Act."); Advisory Action dated May 3, 2017 ("Adv. Act."); Appeal
Brief filed Aug. 10, 2017 ("Appeal Br."); Examiner's Answer dated Jan. 24,
2018 ("Ans."); and Reply Brief filed Mar. 23, 2018 ("Reply Br.").
Appeal2018-004484
Application 14/549,826
Pursuant to 35 U.S.C. § I34(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-10 and 12-25. We have jurisdiction
under 35 U.S.C. § 6(b ).
For the reasons explained below, we AFFIRM the rejections of claims
1-10 and 12-25, but denominate the affirmed rejections as NEW
GROUNDS OF REJECTION pursuant to 37 C.F.R. § 4I.50(b).
The invention relates to a method of locating a plurality of light
emitting diode (LED) die in a submount in which die that emit different
color can be accurately located in corresponding tubs in the submount based
on a difference in shape or size. See Spec. ,r 1; Appeal Br. 5. The plurality
of die are flowed across the surface of the submount in a fluid. See claim 1.
According to Appellant, a novel feature of the inventive method is that a
height of the fluid is less than a thickness of the plurality of LED die, which
results in a reduced likelihood of the plurality of LED die flipping or
tumbling as they slide down the submount. Appeal Br. 5. Thus, according
to Appellant, the claimed method is said to have the advantage that a higher
percentage of the plurality of LED die are accurately located right side up in
the correct tubs as compared to prior art methods. Id.
The claims stand finally rejected under 35 U.S.C. § 103 as follows
(see Final Act. 3-11):
1. Claims 1-9, 12, 13, and 15-25 as unpatentable over Hillis et al.
(US 2008/0032425 Al, issued Feb. 7, 2008 (hereinafter "Hillis")) in view of
2 Appellant is the Applicant, GLO AB, which, according to the Appeal
Brief, is the real party in interest (Appeal Br. 2).
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Appeal2018-004484
Application 14/549,826
Sayyah (US 2002/0064902 Al, published May 30, 2002 (hereinafter
"Sayyah"));
2. Claim 10 as unpatentable over Hillis, Sayyah, and Brewer et al.
(US 2003/0068519, published Apr. 10, 2003 (hereinafter "Brewer")); and
3. Claim 14 as unpatentable over Hillis, Sayyah, and Brewer.
Appellant's arguments in support of patentability of all appealed
claims are directed to limitations found in claim 1, the sole independent
claim on appeal. See generally Appeal Br. 5-10. For reference, claim 1 is
reproduced below:
1. A method of locating a plurality of light emitting
diode (LED) die in a submount, comprising:
providing a submount having first tubs having at least
one of a first tub shape or a first tub size and second tubs
having at least one of a second tub shape or a second tub size
different from the respective first tub shape or first tub size;
providing a first plurality of LED die having at least one
of a first die shape or first die size to locate across the submount
the first plurality of LED die in the first tubs but not in the
second tubs;
providing a second plurality of LED die having at least
one of a second die shape or second die size to locate across the
submount the second plurality of LED die in the second tubs
but not in the first tubs; and
flowing the first and second pluralities of LED die in a
fluid across the submount to locate the first plurality of LED die
in the first tubs and the second plurality of LED die in the
second tubs, wherein the submount is tilted at an angle such
that the submount is configured non-horizontally and wherein a
height of the fluid is less than a thickness of the first and second
pluralities of LED die.
Id. at 12 (Claims Appendix).
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Appeal2018-004484
Application 14/549,826
The Examiner finds Hillis discloses the invention as recited in claim 1
with the exception that Hillis does not teach ( 1) positioning the submount at
an angle when performing the step of flowing and (2) that the height of the
fluid is less than a thickness of the plurality of LED die. Final Act. 3--4.
The Examiner finds Sayyah teaches a method of transferring individual
devices (e.g., a plurality of LED die) to receptors (tubs) by flowing the
devices across a submount that is tilted at an angle. Id. at 4. The Examiner
finds one of ordinary skill in the art at the time of the invention would have
used a tilted submount, as taught by Sayyah, in Hillis' s method "as a matter
of applying a known technique to a known method ready for improvement to
yield predictable results." Id. The Examiner finds utilizing a fluid height
that is less than a thickness of the plurality of LED die would have been a
matter of routine optimization, noting that the height necessarily would fall
within the limits of well-known, manufacturing constraints. Id.
Appellant argues Sayyah teaches away from methods that use liquid
to transfer a plurality of LED die to tubs. Appeal Br. 6-7. The Examiner
acknowledges Sayyah teaches that there are drawbacks associated with
methods in which both the plurality of LED die and the submount are
submerged in a liquid. Ans. 11 ( citing Sayyah ,r,r 7-11 ); see also Adv. Act.
2. The Examiner contends, however, that Sayyah does not teach away from
methods wherein the fluid is used solely as a carrier for the plurality of LED
die and the submount is not submerged in the fluid (see Adv. Act. 2), as in
the claimed method. We agree with the Examiner that Sayyah's description
of drawbacks in prior art methods relates to methods for positioning circuit
elements into predetermined locations in a submount "using submersion of
these elements and the new sub[mount] into a fluid." Sayyah ,r 7 (emphasis
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Application 14/549,826
added); see id. ,r,r 8-11. Therefore, we are not persuaded that Sayyah
teaches away from the claimed method which does not require submerging
the submount in the fluid.
We also determine the Examiner had a reasonable basis for finding
that one of ordinary skill in the art would have been motivated to apply the
teachings of Sayyah to improve Hillis' s method. As an initial matter, we
agree with the Examiner that Hillis' s method, like the claimed method, does
not submerge the submount in a fluid, but merely uses a fluid as a means of
applying the plurality of LED die to the submount. Hillis ,r 52 ("[D]isplay
elements may be mixed into a carrier liquid and applied in the form of a
slurry, emulsion, suspension, colloid or gel, or fluidized by the addition of a
gas."). Hillis discloses that
[a]fter display elements are disposed on a sub[mount],
they may self-assemble into preferred receptor locations
[(tubs)], as determined by their respective surface or shape
characteristics. . . . In many cases, however, input of energy
( e.g., an activation energy) may be required to cause display
elements to move into their preferred receptor locations.
Energy may be input to the display elements by imparting
relative motion between display elements and sub[ mount], e.g.
by shaking or vibrating the sub [mount].
Hillis ,r 53; see Final Act. 5.
Hillis further discloses that other forms of activation energy may be
applied, independently or in combination, to promote distribution of display
elements to tubs on the submount. Hillis ,r 53. As acknowledged by
Appellant, Sayyah likewise discloses "a method in which [ a plurality of]
LED die are located in corresponding tubs in a sub[mount] by ... shaking
the sub[mount]." Appeal Br. 5; see Sayyah ,r 23. Sayyah further discloses
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Application 14/549,826
positioning the submount at an incline, and that movement to the plurality of
LED die is imparted by pouring them onto the higher end of the inclined
submount. Sayyah ,r 23; see Final Act. 4; Appeal Br. 5. Given Hillis's
express teaching that more than one technique may be used to impart motion
to the plurality of LED die, it was reasonable for the Examiner to find that
the ordinary artisan would have inclined Hillis' s submount based on
Sayyah's teachings of using a combination of shaking and inclining the
submount to impart movement to the plurality of LED die. Final Act. 4; see
also Hillis ,r 55 ("Distribution of display elements into a single layer may be
aided by gravity as well as by induced movement between display elements
and surface.").
Appellant argues that
in every embodiment disclosed by Hillis the "display elements
may be mixed into a carrier liquid and applied in the form of a
slurry, emulsion, suspension, colloid or gel, or fluidized by the
addition of a gas." (Hillis, paragraphs [0052], [0055]) .... All
of these terms as understood by one of ordinary skill in the art
mean that the LED die are completely submerged in the carrier
fluid.
Appeal Br. 9.
As found by the Examiner (Adv. Act. 3) and conceded by Appellant
(Appeal Br. 5), Hillis discloses that the plurality of LED die "may also be
disposed on the sub[mount] without being mixed into a carrier liquid or gas"
(Hillis ,r 52). Appellant argues, however, that the embodiments in which the
plurality of LED die are mixed into a carrier liquid are mutually exclusive
from the embodiments in which the plurality of LED die are poured onto the
submount without a fluid and flowed across the surface by vibrating or
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shaking. Appeal Br. 6. We are not persuaded by this argument. Hillis
discloses that
[i]n order to facilitate the distribution of display elements 30
and 40 onto sub[mount] 20, display elements may be mixed
into a fluid or fluidized medium, and applied to substrate 20 as
a slurry, emulsion, suspension, colloid, or gel. Movement of
display elements 30 and 40 on sub[ mount] 20 may also be
facilitated by various mechanical spreaders, stirrers, etc.,
instead of or in addition to shaking, vibration, or other methods
of imparting energy to the display elements and/or substrate.
Hillis ,r 55 ( emphasis added). Thus, Hillis clearly discloses that fluid may be
used in combination with other techniques to impart movement to the
plurality of LED die, such as vibrating and shaking.
Regarding Appellant's assertion as to the understanding of the
ordinary artisan with respect to the meaning of the terms slurry, emulsion,
colloid, gel, and fluidized gas (Appeal Br. 9; Reply Br. 3), Appellant has not
cited evidence in support of this argument and, therefore, we do not find it
persuasive. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997)
( argument by counsel cannot take the place of evidence). Rather, we agree
with the Examiner that one of ordinary skill in the art would have
understood from Hillis that "the amount of carrier liquid may be small or
negligible[,] ... [and] a height of the carrier liquid that does not fully
submerge the LEDs is reasonable." Ans. 13.
Appellant also argues the Examiner has not identified sufficient
evidence to support a finding that achieving the claimed fluid height would
have been a matter of routine optimization. Appeal Br. 9--10. We need not
address this argument, because, even accepting Appellant's argument that
the ordinary artisan would have understood the terms slurry, emulsion, etc.
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Application 14/549,826
as used in Hillis to mean the plurality of LED die are submerged in the fluid,
as further discussed below, we find that Hillis discloses a range of fluid
heights that overlap, or at least touch, the claimed range of fluid heights,
thereby shifting the burden to Appellant to show criticality in the claimed
range. See In re Geisler, 116 F.3d 1465, 1469--70 (Fed. Cir. 1997).
Appellant has not met this burden.
The American Heritage Dictionary defines "submerged" as:
"1. To place under the surface of a liquid, especially water: submerged the
pieces of chicken in the broth. 2. To cover with water or another liquid;
inundate .... 3. To hide from view; obscure." The American Heritage
Dictionary of the English Language (2018),
https://www.ahdictionary.com/word/search.html?q=submerge (last visited
May 29, 2018). We determine the ordinary artisan would have understood
that "submerged" encompasses fluid heights ranging from the minimum
height needed to just cover a thickness of the first and second pluralities of
LED die to some height above that thickness. Having found no disclosure in
the Specification to support a narrower construction of the claim phrase "less
than a thickness of the first and second pluralities of LED die," we
determine the ordinary artisan would understand this phrase to encompass a
range of fluid heights up to a maximum of just below the minimum height
needed to cover a thickness of the first and second pluralities of LED die.
Therefore, even accepting Appellant's argument that Hillis's plurality of
LED die are submerged, we find Hillis' s range of fluid heights touches the
claimed range of fluid heights.
In addition, we find the ordinary artisan reasonably would have
understood Hillis as disclosing flowing the first and second pluralities of
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Application 14/549,826
LED die across the submount in a fluid having a height in a range that
overlaps the claimed range of "less than a thickness of the first and second
pluralities of LED die." Specifically, we find Hillis merely discloses that the
plurality of LED die are in the form of a slurry, emulsion, etc. during
application to the submount, but does not disclose that they remain in this
form after application to the submount and when flowed across the
submount. In other words, even if the plurality of LED die were completely
submerged in a fluid in a container, one of ordinary skill in the art
reasonably would have understood from Hillis that, in the case of a container
holding die in a tightly packed arrangement, the plurality of LED die would
not remain submerged upon transferring the same amount of fluid to a
submount having a greater cross-sectional area than that of the container due
to the resultant, concomitant decrease in fluid height. See Figs. 4---6;
compare Hillis ,r 52 ( disclosing that the plurality of LED die in the form of a
slurry, emulsion suspension, colloid, or gel may be poured or sprayed from a
container or dispenser), with Hillis ,r 55 ("As shown in FIG. 6A, display
elements 30 and 40 disposed on substrate 20 may not initially be distributed
over substrate 20 in a single layer. In some regions (e.g., region 92 in FIG.
6A), display elements may be piled on other display elements in two or more
layers.").
A prima facie case of obviousness exists where the prior art and
claimed ranges overlap, as well as in those cases where the claimed range
and the prior art range, though not overlapping, are sufficiently close that
one skilled in the art would have expected them to have the same properties.
See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Because Hillis
discloses a range of fluid heights that overlap, or at least touch, Appellant's
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Application 14/549,826
claimed range, the burden is on Appellant to show criticality in the claimed
range, i.e., a fluid height that is less than a thickness of the LED die. ).
"When an applicant seeks to overcome a prima facie case of obviousness by
showing improved performance in a range that is within or overlaps with a
range disclosed in the prior art, the applicant must 'show that the [ claimed]
range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range."' Geisler, 116 F .3d at
1469--70 (quoting In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)).
Appellant cites to paragraph 72 of the Specification in support of its
contention that the claimed fluid height provides the advantage that a higher
percentage of the plurality of LED die are accurately located right side up in
the correct tubs relative to the prior art methods. Appeal Br. 5.
Specification paragraph 72 reads, in relevant part,
In an embodiment, the height h of the fluid is less than a
thickness of the plurality of LED die 102. Preferably, the fluid
150 flows across the submount 124 with laminar flow. In this
manner, the LED die 102 are less likely to flip or tumble as
the[y] slide down the submount 124.
As an initial matter, we find this language equivocal as to whether the
likelihood of the individual LED die flipping or tumbling is reduced by the
use of a particular fluid height, laminar flow, or a combination of the two.
However, even assuming the reduction in the plurality of LED die flipping
or tumbling is reduced by the use of a fluid height that is less than a
thickness of the plurality of LED die, we are not convinced that this is an
unexpected result. See In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996)
( explaining that even though "[a] modification results in great improvement
and utility over the prior art, it may still not be patentable if the modification
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was within the capabilities of one skilled in the art, unless the claimed
ranges produce a new and unexpected result which is different in kind and
not merely in degree from the results of the prior art."). Rather, the
Specification suggests that use of a fluid height that is less than a thickness
of the plurality of LED die provides, at best, a superior result over a
suspension, wherein, according to Appellant, the die are completely
submerged. See Spec. ,r,r 70-71 (describing an embodiment wherein the die
are suspended in the fluid).
For the above reasons, we are not persuaded of error in the
Examiner's conclusion of obviousness as to claim 1. Therefore, we sustain
the rejection of claims 1-9, 12, 13, and 15-25. We have considered
Appellant's arguments to the extent applicable to the separate rejections of
claims 10 and 14, but likewise are not persuaded of error in these rejections
for the reasons stated above. Therefore, we sustain the Examiner's
rejections of claims 10 and 14.
CONCLUSION
1-9, 12, 13, § 103 Hillis and Claims 1-9,
and 15-25 Sayyah 12, 13,and
15-25
10 § 103 Hillis, Sayyah, Claim 10
and Brewer
14 § 103 Hillis, Sayyah, Claim 14
and Brewer
Summary § 103 Claims 1-10
and 12-25
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Because we recognize our Decision relies on facts and reasons not
expressly stated by the Examiner, we denominate the affirmed rejections as
NEW GROUNDS OF REJECTION pursuant to 37 C.F.R. § 4I.50(b).
37 C.F.R. § 4I.50(b) provides that an appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner,
in which event the proceeding will be remanded to
the examiner ....
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record ....
AFFIRMED
37 C.F.R. § 4I.50(b)
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