Ex Parte Nall et al

Patent Trial and Appeal Board

Dec 14, 2012

11289672 (P.T.A.B. Dec. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/289,672 11/29/2005 Jeffrey Nall GLOZ 200317 7421
74495 7590 12/17/2012
FAY SHARPE LLP/GE LIGHTING SOLUTIONS, LLC
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
HAN, JASON
ART UNIT PAPER NUMBER
2875
MAIL DATE DELIVERY MODE
12/17/2012 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 JEFFREY NALL and MATTHEW MRAKOVICH,
____________

Appeal 2010-008558
Application 11/289,672
Technology Center 2800
____________

Before, STEPHEN C. SIU, MICHAEL R. ZECHER, and
BRIAN J. McNAMARA, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008558
Application 11/289,672

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SUMMARY

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 2-6, 8-12 and 19-23. Claims 1, 7, and 13-18 have been
cancelled. We have jurisdiction under 35 U.S. C. § 6(b). We reverse.

STATEMENT OF THE CASE
Appellants invention relates to LED-based lighting assemblies, including
lighting assemblies for flexible lighting strips and other lighting assemblies. (Spec.
¶[0001]). One or more LEDs are disposed on a printed circuit board with a
thermoplastic overmolding having a melting temperature of greater than about
100°C and a thermal conductivity greater than or about 1W/m
.
K. (Spec. ¶ [0010]).
The thermoplastic overmolding covers at least portions of the printed circuit board.
(Id.).
Claim 10 is illustrative.
10. A lighting assembly comprising:
a plurality of LEDs;
a plurality of spaced-apart printed circuit boards, the plurality of
LEDs being disposed on the spaced-apart printed circuit boards;
a plurality of thermoplastic overmoldings corresponding to the
plurality of printed circuit boards, the thermoplastic overmoldings
covering at least portions of the corresponding printed circuit boards
proximate to the LEDs disposed on the printed circuit boards, the
thermoplastic of the thermoplastic overmoldings having a melting
temperature greater than about 100°C and having a thermal
conductivity greater than or about 1W/m
.
K ;
a flexible electrical cable including a plurality of flexible
conductors and insulation surrounding the flexible conductors; and
a plurality of insulation-displacing conductors electrically
connected with and secured to each printed circuit board, the plurality
of insulation-displacing conductors displacing the cable insulation and
electrically connecting with flexible conductors so that the plurality of
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Application 11/289,672

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LEDs disposed on the plurality of printed circuit boards are
connectable with a power source via circuitry of the printed circuit
boards, the insulation displacing conductors, and the flexible
conductors of the flexible electrical cable.

THE REJECTIONS
Claims 2-6, 8-12 and 19-23 were rejected under 35 U.S.C. 103(a) as
unpatentable over US 7,241,031 B2 (“Sloan”) in view of U.S. Patent Publication
2005/0276053 A1 (“Nortrup”).

CONTENTIONS
As noted by Appellants, a primary issue in dispute is the construction of the
claim term “overmolding.” (App. Br. 9). Since “overmolding” appears in all the
claims which are the subject of this appeal, we turn first to construing this term.
On the basis that claims terms are given their broadest reasonable
interpretation during patent prosecution, the Examiner finds that Sloan discloses a
plurality of thermoplastic overmoldings covering at least portions of the
corresponding printed circuit boards. (Ans. 3, 11-12). In support of the position
that Sloan discloses an “overmolding” the Examiner cites Sloan’s disclosure of a
plastic housing 90 in Figures 11 and 12, as described at column 6, lines 65-66.
(Ans. 3). The Examiner also states that Sloan’s disclosure of a molded plastic
housing at column 4, line 66 - column 5, line 3, which discusses housing 20 shown
in Figures 8 and 9, sufficiently teaches an “overmolding,” because Sloan’s housing
covers portions of the printed circuit board as claimed. (Ans. 12). Although not
citing it as a basis of rejection, the Examiner’s Answer introduces a new reference,
US 6,435,691 (“Macey”), to support the position that as used in the art
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“overmolding/overmolded” need not be a process of molding over, because in
Macey the overmolded layer 53 may wrap around the rim of a lens. (Ans. 12).
Appellants contend that Sloan’s housing does not teach the claimed
thermoplastic “overmolding” and that the Examiner’s construction converts
Sloan’s separately formed housing, once placed over a circuit board, into an
“overmolding.” (App. Br. 13). Appellants contend that the Examiner’s
construction of “overmolding” as a molding that is over something is inconsistent
with the use of the term “overmolding” in the art, for which an “overmolding” is a
material that is molded over something. (App. Br. 12).
Appellants argue that the ordinary meaning of the noun “overmolding” is a
material that is formed or molded over an item. (App. Br. 11). In support of this
construction, Appellants cite to the use of the term “overmolding” as a verb to
indicate that a material is applied around a substrate in US 5,986,317, made of
record in an IDS filed June 28, 2007. (App. Br. 10). Appellants do not object to
the Examiner’s citing Macey (Reply Br. 2). Appellants instead argue that the
overmolded layer 53 in Macey supports Appellants’ construction because it
appears that overmolded layer 53 maintains intimate contact as it wraps around the
rim 54 of lens 21, as would be consistent with Appellants’ construction of the
“overmolding.” (Reply Br. 5).

ANALYSIS
We agree with the Examiner that during prosecution claims are given their
broadest reasonable interpretation. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1369 (Fed. Cir. 2004). While being mindful not to read limitations from the
specifications into the claims, we also cannot ignore the specification in construing
claim terms. It is the use of the words in the context of the written description and
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customarily by those skilled in the relevant art that accurately reflects both the
“ordinary” and the “customary” meaning of the terms in the claims. Ferguson
Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d
1327, 1338 (Fed. Cir. 2003).
The Examiner finds that because the term “thermoplastic overmolding” was
not specifically defined in the specification, thermoplastic overmolding (broadly
interpreted) was sufficiently taught by the structure of Sloan’s plastic housing 90
being over various parts of the circuit board. (Ans. 12). However, the
specification refers to the overmoldings as “free-standing” (Spec. ¶¶ [0027, 0028,
0030, 0031, 0033, 0036, 0038]) and discloses that an insert molding process can be
employed to form the high thermal conductivity material overmoldings. (Spec.
¶¶[0028-0029]). The specification further discloses that because the lighting
assembly is removed from the mold after completion of the insert molding process,
the lighting assembly does not include a container or housing to contain the
thermoplastic or other high thermal conductivity overmoldings. (Spec. ¶[0030]).
Thus, the specification appears to distinguish a “housing” which would be installed
over the LEDs as taught by Sloan, from the claimed “overmolding” which would
remain after a mold is removed.
We also agree with Appellants that Macey supports their construction of the
term “overmolding” as referring to a material that is molded over something, rather
than a housing. Nothing in the relevant portions of Macey cited by the Examiner
indicates a housing. Macey instead refers to the “overmolded layer” which “may
wrap around the rim 54 of the lens 21” suggesting that layer 53 is molded over the
lens (Reply Br. 5-6). We note that in Macey, lens 21 with overmolded layer 35
covers an LED array, further suggesting a distinction between an “overmolding”
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and a housing. (Col. 2, ll. 21-26). Thus, the evidence of record supports
Appellants’ construction.
In view of our construction, we are not persuaded that Sloan discloses the
claimed plurality of thermoplastic overmoldings. The Examiner also cites
Paragraph 435 of Nortrup as teaching a thermoplastic overmolding covering at
least portion of the printed circuit board proximate to one or more LEDs. (Ans. 4-
5). Paragraph 435 of Nortrup discloses embodiments in which thermally
conductive polymers may be injection molded onto the area of a platform that
supports the LEDs, or into heat sinks that fit into the space between a circuit board
that bears the LEDs and the housing of a light unit. There is no mention of
overmoldings in the cited portion of Nortrup. In addition, Nortrup’s disclosure of
heat sinks between the printed circuit boards and the housing further suggests a
distinction between housings and overmoldings.
Having concluded that the combination of Sloan and Nortrup does not teach
the claimed overmoldings, we reverse the Examiner’s obviousness rejections and
need not address the merits of Appellants’ further arguments.

ORDER

The rejection of claims 2-6, 8-12 and 19-23 under 35 U.S.C. 103(a) as
unpatentable over Sloan in view of Nortrup is reversed.

REVERSED

lb