Ex Parte Leong et al

Board of Patent Appeals and Interferences

Dec 20, 2010

11394625 (B.P.A.I. Dec. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AK WING LEONG and KHENG LENG TAN
_____________

Appeal 2009-011239
Application 11/394,625
Technology Center 2800
____________

Before CARLA M. KRIVAK, ELENI MANTIS MERCADER,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 8-12 and 20-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

INVENTION
Appellants’ Figure 3 is reproduced below:

Appellants’ Figure 3 and claimed invention are directed to a
polymeric base having a concave structure (32) wherein a surface of the
concave structure (38) reflects light and it is made of polymeric material
(Spec. ¶¶ [0017], [0022]). A light-emitting chip (11) is located near the
bottom of the concave structure (32) (Spec. ¶ [0015]).
Claims 8 and 20, reproduced below, are representative of the subject
matter on appeal:
8. A device comprising:
a polymeric base having a concave structure, wherein a surface
of said concave structure reflects light;
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a light-emitting diode chip located near the bottom of said
concave structure and electrically connected to a pair of surface-
mount leads;
a filler material filling said concave structure that bonds with
said surface of said structure; and
wherein said surface is formed from a polymeric material.

20. A device comprising:
a base comprising a polymeric material;
a concave structure formed in said base, said concave structure
comprising a concave light-reflective surface formed in said
polymeric material;
a light-emitting diode located at least partially within said
concave structure and electrically connected to a pair of surface-
mount leads; and
a filler material within said concave structure that is bonded
with said light-reflective surface.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Horiuchi US 6,858,880 B2 Feb. 22, 2005
Wong US 2007/0034886 A1 Feb. 15, 2007
(filed Aug. 11, 2005)
The following rejections are before us for review:
1. The Examiner rejected claims 8-12 and 20-25 under 35 U.S.C.
§ 102(e) as being anticipated by Wong.
2. The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as being
unpatentable over Wong in view of Horiuchi.

ISSUES
The pivotal issues are:
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1. whether Wong teaches “a concave structure” formed “from a
polymeric material” as recited in independent claim 8;
2. whether Wong teaches a “white epoxy resin” as recited in
dependent claim 10 (emphasis added); and
3. whether Wong teaches “a concave light-reflective surface” as
recited in independent claim 20.

PRINCIPLES OF LAW
“‘Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.’” In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999) (citations omitted).

ANALYSIS
Anticipation Rejections
Claims 8, 9, 11, and 12
Appellants argue (App. Br. 11-13) that Wong does not teach a
concave surface as required by claim 1, because Wong’s Figure 2 shows a
frustoconical side surface. Appellants rely (App. Br. 12 (citing MERRIAM-
WEBSTER, www.merriam-webster.com/dictionary/concave)) on the
customary meaning of the word concave:
1 : hollowed or rounded inward like the inside of a bowl
2 : arched in : curving in - used of the side of a curve or
surface on which neighboring normals to the curve or surface
converge and on which lies the chord joining two neighboring
points of the curve or surface.
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Appellants conclude, based on the above definition, that the term
“concave” denotes a curved structure (App. Br. 13). Appellants assert that
neither Wong’s frustoconical side surface, nor Wong’s bottom surface or the
combination of the two surfaces can be considered “concave” (see Wong,
Fig. 2; particularly angled side walls of element 110 which connect with a
flat surface where LED chip 102 is placed) (App. Br. 13).
We are not persuaded by Appellants’ argument. We agree with the
Examiner (Ans. 7) that Appellants overlooked the first customary meaning
of the term concave which is “hollowed” (emphasis added). According to
this definition, a frustoconical shape which is not curved, as taught by
Wong, would be considered concave as it is a hollowed structure. We do
not agree with Appellants’ reply that the phrase “like the inside of the bowl”
as stated in the definition qualifies the term “hollowed,” so the definition
should be read as “hollowed . . . like the inside of a bowl,” thereby requiring
a curved structure (Reply Br. 4). We note that the term “hollowed” by itself
would apply to any hollowed structure, such as frustoconical. Thus, the
determining factor as to what is meant by the customary meaning of the term
concave turns on whether we qualify the definition of the term “hollowed”
as it relates to a bowl.
Turning to the customary meaning of the term “bowl,” it is defined in
pertinent part, as “[t]he hollow part of any thing.” 1828 WEBSTER’S
DICTIONARY, http://1828.mshaffer.com/d/word/bowl (emphasis added).
Accordingly, if we were to accept Appellants’ proffered reading of
“hollowed . . . like the inside of the bowl” we would have a circular reading
of the term “hollowed” (i.e., hollowed like the inside of the hollow part of
any thing). Such reading is unreasonable, and thus, we agree with the
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Examiner that the broadest reasonable definition of concave would include
anything “hollowed.” As such, we agree with the Examiner that Wong’s
frustoconical shape (Fig. 2) meets the term “concave” as recited in claim 8.
We note that this determination is consistent with Appellants’ claim 23,
which depends from independent claim 20, and further defines the term
concave as “frustoconical.” Although we discuss claim 20 in more detail
below, we note that it is relevant with respect to the discussion of claim 8 as
the same arguments were repeated for claim 20 and its dependent claims
(App. Br. 17).
Appellants further argue, with respect to claim 8, that Wong’s
leadframes 104, 106 (Fig. 2) are made of electrically conductive material,
and are clearly not formed from a polymeric material; thus, the surface is not
“formed from a polymeric material” as recited in independent claim 8. We
note that the argument is not commensurate in scope with the claim
language. Claim 8 does not require the entire surface of a concave structure
to reflect light, but rather “a surface of said concave structure reflects light”
and “wherein said surface is formed from a polymeric material.” Therefore,
claim 8 does not preclude that only a portion of the concave surface such as
the side walls of the Wong’s frustoconical shape (Fig. 2, side walls) reflect
light and are made of polymeric material. Thus, we agree with the
Examiner’s findings (Ans. 3-4) that Wong teaches a surface of a concave
structure (i.e., structural body 110, or otherwise stated, side walls of a
frustoconical depression) which reflects light (i.e., serves as a reflector cup)
and is made of polymeric material (¶ [0017]).
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Accordingly, we will sustain the Examiner’s rejection of claim 8 and
claims 9, 11, and 12, which fall with claim 8, as no additional arguments of
patentability were presented with respect to these claims.
Claim 10
Appellants argue (Reply Br. 10) that based on the Examiner’s own
admission (Ans. 7-8) Wong’s reference to an “epoxy” (¶ [0018]) could refer
to a clear or white material. We agree with Appellants that clear is not
necessarily “white” as required by claim 10 (emphasis added). See
Robertson, 169 F.3d at 745.
However, claim 10 requires that the filler material is one of “white
epoxy resin, polyacrylic, polycarbonate, and polysiloxanes.” Wong teaches
that the domed encapsulant can be made of “plastic material” (¶ [0018]).
Thus, claim 10 is met by Wong’s teaching of plastic material which reads on
“polyacrylic.” We introduce this reasoning as a new ground of rejection as
this was not previously presented by the Examiner.
Thus, we reverse the Examiner’s rejection of claim 10 and we enter a
new ground of rejection with respect to this claim.
Claims 20-24
Appellants repeat the same arguments as those presented for claim 8,
for claim 20 (App. Br. 17) and further argue that claim 20 specifically recites
that it is the surface “itself” that is concave (App. Br. 18). We agree with
Appellants that claim 20 is more specific than claim 8 because it recites “a
concave light-reflective surface” which would entail that the entire concave
surface reflects light. As we stated supra, Wong teaches that the side walls
of the structural body 110 (¶ [0017]) act as a reflector cup that reflects light,
but the reference is silent as to whether the leadframes 104 and 106 reflect
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any light. Accordingly, Wong does not teach “a concave light-reflective
surface” as recited in claim 20.
Thus, we will reverse the Examiner’s rejection of claim 20, and for
similar reasons the rejections of claims 21-24.
Obviousness Rejection
We will also reverse the Examiner’s rejection of claim 25 due to its
dependency from claim 20.
However, we introduce a new grounds of rejection for claims 20, 22,
and 25 as being unpatentable over Wong in view of Horiuchi because
Horiuchi does teach “a concave light-reflective surface formed in said
polymeric material” (i.e., domed shaped light reflective surface 9 by silver
plating which is formed in the polymeric material of substrate 2; see Fig. 1;
col. 1, l. 60-col. 2, l. 6). We note that claim 20 does not require the concave
light-reflective surface itself be made out of a polymeric material, but rather
that it is formed in the polymeric material.
It would have been obvious to incorporate the silver plated reflective
surface 9 which is positioned in a cavity formed by the surface-mount leads
(Fig. 1; 11a and 11b are the leads that form a cavity) as taught by Horiuchi
to substitute Wong’s separate arrangement of the polymeric base 110 and
leads 104, 106. The substitution would provide a less complex arrangement
with less parts interconnected by having the leads be part of the concave
shape and eliminate the additional polymeric material that would otherwise
be needed to form the concave structure (for example, compare Horiuchi’s
Fig. 4 with Horiuchi’s Fig. 3, wherein the resin frame 18 is eliminated by
having the leads form a concave structure).
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We leave it up to the Examiner to determine the applicability of prior
art to the remaining claims 21, 23, and 24.

CONCLUSIONS
1. Wong teaches “a concave structure” formed “from a polymeric
material” as recited in independent claim 8;
2. Wong does not teach a “white epoxy resin” as recited in dependent
claim 10 (emphasis added); and
3. Wong does not teach “a concave light-reflective surface” as recited
in independent claim 20.

ORDER
The decision of the Examiner to reject claims 8, 9, 11, and 12 is
affirmed. The decision of the Examiner to reject claims 10 and 20-25 is
reversed. We introduce a new ground of rejection with respect to claims 10,
20, 22, and 25.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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
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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. . . .
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)(v).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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Kathy Manke
Avago Technologies Limited
4380 Ziegler Road
Fort Collins, CO 80525