Ex Parte Leong et alDownload PDFBoard of Patent Appeals and InterferencesDec 20, 201011394625 (B.P.A.I. Dec. 20, 2010) Copy Citation 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 Appeal 2009-011239 Application 11/394,625 2 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; Appeal 2009-011239 Application 11/394,625 3 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: Appeal 2009-011239 Application 11/394,625 4 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. Appeal 2009-011239 Application 11/394,625 5 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 Appeal 2009-011239 Application 11/394,625 6 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]). Appeal 2009-011239 Application 11/394,625 7 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 Appeal 2009-011239 Application 11/394,625 8 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). Appeal 2009-011239 Application 11/394,625 9 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 Appeal 2009-011239 Application 11/394,625 10 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) babc Kathy Manke Avago Technologies Limited 4380 Ziegler Road Fort Collins, CO 80525 Copy with citationCopy as parenthetical citation