Ex Parte Johnston et al

Patent Trial and Appeal Board

Feb 7, 2014

12286438 (P.T.A.B. Feb. 7, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/286,438 09/30/2008 David W. Johnston 2008P16467US 5851
24252 7590 02/07/2014
OSRAM SYLVANIA INC
100 ENDICOTT STREET
DANVERS, MA 01923
EXAMINER
NEGRON, ISMAEL
ART UNIT PAPER NUMBER
2885
MAIL DATE DELIVERY MODE
02/07/2014 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 DAVID W. JOHNSTON, GREGORY ZASLAVSKY, and
JEFFERY J. SERRE

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Appeal 2012-000013
Application 12/286,438
Technology Center 2800

___________

Before TERRY J. OWENS, KAREN M. HASTINGS, and
WHITNEY N. WILSON, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000013
Application 12/286,438

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Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1-7 under 35 U.S.C. § 103(a) as
unpatentable over the combined prior art of Rice2 and Vanbragt3. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Claim 1 and Claim 6, reproduced below, are illustrative of the subject
matter on appeal (emphasis added):
1. A light source comprising:
a tubular glass heat pipe having a given inside diameter;
a tubular fiberglass wick positioned within said glass heat pipe, said
fiberglass wick having an outside diameter substantially equal to said given
inside diameter and having a substantially centrally located open chamber
extending the length thereof;
a quantity of an evaporable-condensable medium within said glass
heat pipe;
a metal cap selected from the group of glass-sealing metals and alloys
fixed to a proximal end of said glass heat pipe;
heat dissipaters fixed to the distal end of said heat pipe;
a light emitting diode fixed to said metal cap; and
power conducting traces formed with said heat pipe and electrically
connected to said light emitting diode.

6. A lamp comprising:
a hollow body; and
a plurality of light sources fitted into said hollow body, each of said
light sources comprising:
a tubular glass heat pipe having a given inside diameter;
a tubular fiberglass wick positioned within said glass heat pipe, said
fiberglass wick having an outside diameter substantially equal to said given
inside diameter and having a substantially centrally located open chamber
extending the length thereof;

1 The Real Party in Interest is Osram Sylvania Inc.
2 U.S. 6,910,794 B2, issued June 28, 2005
3 U.S. 4,511,952, issued Apr. 16, 1985
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Application 12/286,438

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a quantity of an evaporable-condensable medium within said glass
heat pipe;
a metal cap selected from the group of glass-sealing metals and alloys
fixed to a proximal end of said glass heat pipe;
heat dissipaters fixed to the distal end of said glass heat pipe;
a light emitting diode fixed to said metal cap; and
power conducting traces formed with said heat pipe and electrically
connected to said light emitting diode.

ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellants’
independent claim 1 is unpatentable over the applied prior art for essentially
the reason set out by the Examiner in the Answer. On the other hand, we
find that the preponderance of evidence on this record supports Appellants’
position that the Examiner has not established that the subject matter of
claims 6 and 7 is patentable over the applied prior art. We add the following
for emphasis.
The claimed invention is directed to a light sources or lamps and more
specifically, to the cooling of LED light source structures. The cooling is
accomplished by means of a heat transfer device, or heat pipe that transfers
or dissipates heat through the capillary action of an enclosed wick.
Appellants contend that Vanbragt is nonanalogous art with respect to
the claimed invention and Rice (App. Br. 4).
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same endeavor, regardless of the
problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
Appeal 2012-000013
Application 12/286,438

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In re Chaganti, Fed. Appx., 2014 WL 274514 (Fed. Cir. 2014)(quoting In
re Bigio, 381 F.3d 1320, 1325, (Fed. Cir. 2004)).
Vanbragt satisfies the first test for determining analogous art because
Vanbragt is directed to a lamp or light source which is the same field of
endeavor as the claimed invention and evidences the use of glass tubular
housings and fiberglass wicks in this art. (See, Ans. 11). Moreover, it must
be noted that prior art cited in Appellants’ Specification shows that,
generally, heat pipes may be constructed of tubular, glass structures.4 It is
axiomatic that admitted prior art in an Applicants' Specification may be used
in determining the patentability of a claimed invention and that
consideration of the prior art cited by the Examiner may include
consideration of the admitted prior art found in an Applicants'
Specification. In re Nomiya, 509 F.2d 566, 570-571 (CCPA 1975); In re
Davis, 305 F.2d 501, 503 (CCPA 1962); In re Hedges, 783 F.2d 1038, 1039-
1040 (Fed. Cir. 1986).
As pointed out by the Examiner, Vanbragt exemplifies that heat pipes
or heat lamps may be made of glass tubular housings and include fiberglass
wicks (Ans. 5). Further, Rice indicates that a wick in a tubular glass
structure of a heat pipe is important because of the capillary action (Rice col.
2, ll. 55-60). Vanbragt illustrates the conventional capillary action of a wick
that is fiberglass (Vanbragt, col. 2, ll. 40-59). Indeed, the prior art discussed
in Appellants’ Specification generally indicates that the wick material is

4 See, e.g., U.S. 3,229,759 issued Jan. 18, 1966 discussed in the Background
Art section (Spec. 1; listed on IDS dated 09/30/2008) which discloses a heat
transfer device that is constructed with a “close-fitting Pyrex tube” (‘759,
col. 2, ll. 43-46).
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discretionary as long as good transfer or capillary action is present in the
heat transfer tube.5
Appellants have not provided any persuasive technical reasoning or
evidence to refute the Examiner’s reasonable determination that one of
ordinary skill would use glass as the material in a heat pipe, and that
fiberglass is a suitable capillary material for the wick in Rice. (Ans. 10).
Appellants next contend that neither Rice nor Vanbragt disclose the
metal cap of the claimed invention. The Examiner’s position is that the
claimed metal cap encompasses the LED panel of Rice, which is fixed to
proximal end of heat pipe 304 (e.g., Fig. 3; Ans. 4).
Appellants point out that Rice does not specifically disclose the
composition of the LED panel (App. Br. 5, ¶1). However, Rice states that
the LED panel is selected from material with desired thermal conductivity to
enable heat transfer (Rice, col. 3, ll. 3-6). The Examiner’s determination
that such a thermally conductive material for an LED panel would
operationally require some type of metal or metal alloy (Ans. 9, ¶ 1), as well
as that the individual LEDs would operationally require electrical traces
formed of metal in contact with an LED panel formed of metal, is
reasonable. Appellants have not presented any persuasive technical
reasoning or evidence to refute this.
Turning next to features exclusive to claims 6 and 7, we agree with
Appellants that the Examiner has not established that Rice teaches or
suggests a hollow body having “a plurality of light sources fitted into said
hollow body, each of said light sources comprising: a tubular glass heat

5 See, e.g. U.S. 3,229,759, col. 4, ll. 22-30; and col. 1, ll. 32-34.
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pipe” and other features as recited in independent claim 6 (emphasis added).
We will therefore reverse the rejection of claim 6 and its dependent claim 7.
Accordingly, based on a preponderance of the evidence, we will
sustain the rejection of claims 1-5 based on Rice and Vangradt and reverse
the rejection of claims 6 and 7.
DECISION
The decision of the Examiner to reject claims 1-5 is affirmed.
The decision of the Examiner to reject claims 6 and 7 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)(1).

AFFIRMED-IN-PART

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