Ex Parte Ishizuka et al

Patent Trial and Appeal Board

Feb 12, 2013

11346388 (P.T.A.B. Feb. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MASAHIRO ISHIZUKA, KATSUYUKI OKIMURA,
YOSHINORI UEJI, RYUICHIRO MORINAKA,
NAOKI TATSUMI, and TOMOYUKI FUKUDA
____________

Appeal 2010-007123
Application 11/346,388
Technology Center 2800
____________

Before JOHN A. JEFFERY, DENISE M. POTHIER, and BRUCE R.
WINSOR, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-10, 12, 14, 16, 17, 19, and 20.1 We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.

1 Since the Examiner withdrew (1) the anticipation rejection of claims 11,
13, and 15 over Henrici; (2) the anticipation rejection of claim 11 over
Karlicek; and (3) the obviousness rejection of claim 18 over Henrici (Ans.
2), those rejections are not before us. Accordingly, only the Examiner’s
rejections of claims 1-10, 12, 14, 16, 17, 19, and 20 are before us.
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STATEMENT OF THE CASE
Appellants’ flat light source apparatus has adjacent unit boards that
are integrated at connecting portions such that they can be removed by
cutting at the connecting portions. See generally Spec. 5:2-6, 6:21–7:8,
12:10–13:3; Figs. 1-4. Claim 1 is illustrative with key disputed limitations
emphasized:
1. A flat light source apparatus comprising:

a light source board which comprises a plurality of unit boards, each
unit board having a printed circuit board and a light source formed on the
printed circuit board, wherein said plurality of unit boards are arranged
adjacent to each other at least in one direction, and any pair of the unit
boards adjacent to each other is integrated by a connecting portion provided
therebetween;

at least one main wire which extends along a plane of the light source
board, wherein said at least one main wire extends between adjacent unit
boards via the connecting portion such that all of the unit boards are
electrically connected to each other by said at least one main wire; and

at least one branch wire for supplying electric power to the light
source, said at least one branch wire being provided in each unit board and
branching from the main wire in each unit board,

wherein the adjacent unit boards and the connecting portion are a
monolithic structure.

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THE REJECTIONS
1. The Examiner rejected claims 1-6, 9, 10, 12, 14, 19, and 20 under
35 U.S.C. § 102(b) as anticipated by Henrici (US 6,422,716 B2; issued July
23, 2002). Ans. 3-6.2
2. The Examiner rejected claims 1-6, 9, 10, 12, and 17 under
35 U.S.C. § 102(b) as anticipated by Karlicek (US 6,851,831 B2; issued Feb.
8, 2005). Ans. 6-9.
3. The Examiner rejected claims 7, 8, and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Karlicek. Ans. 9-10.

THE ANTICIPATION REJECTIONS
The Examiner finds that Henrici and Karlicek both disclose a flat light
source apparatus with every recited feature of independent claim 1 including
adjacent unit boards and connecting portion that are monolithic structures.
Ans. 3 (Henrici), 6-7 (Karlicek). Although the Examiner acknowledges that
the disclosed unit boards and connecting portions are separate structures, the
Examiner nonetheless reasons that since they are positioned and connected
to form one single unit, they are therefore “monolithic” under the term’s
definition. Ans. 10-11.
Appellants argue that the Examiner’s interpretation of “monolithic” is
unreasonable when considered in light of the Specification and the term’s
plain meaning which requires a one-piece structure. App. Br. 13-16; Reply
Br. 4-5.

2 Throughout this opinion, we refer to (1) the Appeal Brief filed September
16, 2008 (supplemented July 16, 2009) (“App. Br.”); (2) the Examiner’s
Answer mailed January 28, 2009 (“Ans.”); and (3) the Reply Brief filed
March 18, 2009 (“Reply Br.”).
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ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Henrici’s and Karlicek’s adjacent unit boards and connecting portions
are a monolithic structure?
ANALYSIS
This appeal turns on one question: What is a “monolithic” structure?
Although the term does not appear in the Specification, Appellants
nonetheless refer to various portions of their disclosure in connection with
this term. See App. Br. 8 (citing Fig. 1 and Spec. 5:4-6 in connection with
the last clause of claim 1 in the Brief’s summary of the claimed subject
matter), 15 (citing Figs. 1-4, Spec. 5:2-6, and 6:21–7:8).
Appellants also cite a dictionary which defines the term “monolithic”
as “cast as a single piece, formed or composed of material without joints or
seams or consisting of or constituting a single unit.” App. Br. 15 (bolding
and underlining removed; our emphasis added). We emphasize the last
alternative (“constituting a single unit”) here, for it is this alternative that the
Examiner relies upon in construing “monolithic” as “mak[ing] up” or
“form[ing] one single unit” which is said to read on Henrici’s and Karlicek’s
unit boards and associated connecting portions. Ans. 10-11.
At first blush, the Examiner’s construction seems reasonable,
particularly since only the first alternative in the above definition explicitly
requires a single piece—albeit via casting. And certainly Henrici’s and
Karlicek’s “unit boards” (Henrici’s plates 11 and Karlicek’s substrates 12)
and associated “connecting portions” (Henrici’s clips 19 and Karlicek’s
connectors 16) collectively form a single array of light sources comprising
these boards and connecting portions due to their modular construction as
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shown in Figure 1 of Henrici and Karlicek—an array that is, at least
conceptually, similar to Appellants’ light source array in Figure 1 as shown
below:

Modular Light Source Arrays in Henrici’s and Karlicek’s Figure 1

Appellants’ light source unit boards 3 and connection portions 11 in
Figure 1

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Despite this similarity, Appellants’ invention differs from the cited
prior art in that Appellants’ adjacent unit boards are integrated at connecting
portions 11 by circumferential protrusions 13 whose notches 12a, 12b form
apertures between these boards—a key feature which enables the boards to
be easily cut apart to fit the assembly to a desired size and shape.3 See Spec.
5:2-6, 6:21–7:8, 12:10–13:3; Figs. 2-4. As shown below in Appellants’
Figure 2, these connecting-portion apertures essentially function as
perforations that reduce cutting resistance, thus enabling a larger light source
array to be easily trimmed to a desired size at the connecting portions. See
id.

Appellants’ Figure 2 showing apertures at connecting portion 11

3 Although Figure 4 shows the adjacent unit boards separated from each
other at the connecting portion, this is merely for illustrative purposes: the
boards are actually integrated at these portions by the protrusions. Spec.
6:21-26.
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This feature is conceptually similar to a sheet of perforated postage
stamps that enable easily removing particular stamps of the sheet at their
circumferential perforations, yet providing a unitary, one-piece structure that
maintains the individual stamps in a structurally contiguous array.
Similarly, Appellants’ unitary, one-piece light source array maintains the
individual unit boards as a single piece, yet enables easily cutting away
particular boards at the connecting portions to reduce the array’s size.
In light of this key size-reduction feature of Appellants’ invention—a
feature made possible by integrating the arrayed boards as a single piece to
enable easily cutting that piece—we find that Appellants’ construction of a
“monolithic” structure as requiring a one-piece structure (App. Br. 13-16;
Reply Br. 4-5) most naturally aligns with the Specification’s description of
the invention and is therefore the correct construction. Although we
recognize that we should not import limitations from the Specification into
the claims, ultimately, it is the construction that stays true to the claim
language and most naturally aligns with the Specification’s description of
the invention that is the correct construction. Phillips v. AWH Corp., 415
F.3d 1303, 1316, 1323 (Fed. Cir. 2005) (en banc). And here, Appellants’
construction more reasonably comports with that mandate.
To be sure, the term “monolithic” has been interpreted as synonymous
with “integral,” and the term “integral” is not limited to unitary structures.
See In re Van Ormer, 255 F.2d 947, 948 n.3 (CCPA 1958) (interpreting
“monolithic” as synonymous with “integral” in connection with a recited
monolithic rim structure); In re Morris, 127 F.3d 1048, 1055-56 (Fed. Cir.
1997) (citing cases interpreting “integral” to cover more than a unitary
construction). But on this record, interpreting the recited “monolithic
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structure” as a one-piece structure most reasonably comports with the
invention’s essential size-reduction capabilities by cutting as noted above
and therefore is the correct construction.
We are therefore constrained by this record to find that neither Henrici
nor Karlicek anticipates independent claim 1 since both references’ adjacent
unit boards and connecting portions are not monolithic structures, but rather
separate structures as Appellants indicate. App. Br. 15, 21-22; Reply Br. 4-
6. To the extent that this feature would have been obvious over these
references either alone or combined with other references, however, is a
question not before us; nor will we speculate in that regard here in the first
instance on appeal.
We are therefore persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claim 12 which recites commensurate
limitations; and (3) dependent claims 2-6, 9, 10, 14, 17, 19, and 20 for
similar reasons.4 Since this issue is dispositive regarding our reversing the
rejections of these claims, we need not address Appellants’ other arguments
concerning Henrici’s alleged shortcomings regarding claim 14 (App. Br. 20;
Reply Br. 6-7).

THE OBVIOUSNESS REJECTION
Since the Examiner has not shown that the cited prior art cures the
deficiencies noted above regarding independent claims 1 and 12, we will not

4 Although dependent claims 14, 19, and 20 were rejected solely over
Henrici and dependent claim 17 was rejected solely over Karlicek (compare
Ans. 3 with Ans. 6), we nonetheless reverse the rejection of all these claims
since they depend from independent claim 1—the rejection of which is
erroneous whether based on Henrici or Karlicek.
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sustain the obviousness rejection of dependent claims 7, 8, and 16 (Ans. 9-
10) for similar reasons.

CONCLUSION
The Examiner erred in rejecting (1) claims 1-6, 9, 10, 12, 14, 17, 19,
and 20 under § 102, and (2) claims 7, 8, and 16 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-10, 12, 14, 16, 17, 19, and
20 is reversed.

REVERSED

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