Ex Parte Nall et al

Patent Trial and Appeal Board

Jun 1, 2016

11784639 (P.T.A.B. Jun. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111784,639 0410912007
27885 7590 06/02/2016
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
FIRST NAMED INVENTOR
Jeffrey Marc Nall
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
217374/GLOZ
200365US01
EXAMINER
KIM, SHINH
5188
Cleveland, OH 44115 ART UNIT PAPER NUMBER
3638
MAILDATE DELIVERY MODE
06/02/2016 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 MARC NALL, KEVIN CARPENTER,
KOUSHIK SAHA, CHENY ANG LI,
RONALD K. BRENGARTNER JR., XIN WANG,
and TOMISLA VJ. STIMAC
Appeal2014-005706 1
Application 11/784,639
Technology Center 3600
Before LYNNE H. BROWNE, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jeffrey Marc Nall et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision to reject claims 1-8, 11-15, 17, 19-
23, 26-33, 35-37, 39--42, and 45-56. Claims 9, 10, 16, 18, 24, 25, 34, 38,
43, and 44 are cancelled.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as LUMINATION, LLC.
Appeal Br. 1.
2 See Amendment dated June 6, 2011; Amendment dated Mar. 12, 2012.
Appeal2014-005706
Application 11/784,639
THE CLAIMED SUBJECT MATTER
Claims 1, 13, 26, 39, 41, and 45 are independent. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. Backlighting system for a cabinet sign comprising:
a plurality of panels each panel including:
a plurality of light emitting diodes ("LEDs") attached to
the panel, each LED having a box sign depth factor of less than
about 1.4, and
an integrated circuit;
wherein one or more thermally conductive rails physically
connects adjacent panels and the plurality of panels are attached
to the one or more rails and one or more wires facilitate an
electrical connection between the panels.
THE REJECTIONS
I. Claims 1--4, 7, 11, 13-15, 17, 19-22, 26-33, 35-37, 39, 40, 45-
51, and 53 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Priddy (US 6,505,956 Bl; iss. Jan. 14, 2003) and Southard (US 7,217,012
B2; iss. May 15, 2007). 3
II. Claims 5, 6, 8, 12, 23, 41, 42, 55, and 56 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Priddy, Southard, and Bogner (US
2006/0232969 Al; pub. Oct. 19, 2006).
III. Claims 52 and 54 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Priddy, Southard, and Lyman (US 4,606,732; iss. Aug.
19, 1986).
3 The subject matters of claims 22, 36, and 40 are discussed in the rejection
under 35 U.S.C. § 103(a), but the statement of the rejection does not refer to
these claims. Final Act. 2, 6, and 8. Accordingly, we understand the
omission of claims 22, 36, and 40 from the statement of this rejection to be a
typographical error.
2
Appeal2014-005706
Application 11/784,639
ANALYSIS
Rejection I
Claims 1--4, 7, 45, and 47--49
Appellants argue claims 1--4, 7, 45, and 47--49 together. Appeal Br. 7.
We select independent claim 1, as the illustrative claim, and claims 2--4, 7,
45, and 47--49 stand or fall with claim 1.
Regarding independent claim 1, the Examiner finds, inter alia, that
Priddy discloses the claimed backlighting system, including circuit boards
13 (with LEDs), which correspond to the claimed panels, "a wire [that]
physically connects adjacent panels," and that the "panels are supported only
by the wire of flexible strip." Final Act. 2 (citing Priddy, Fig. 1). The
Examiner determines that "Priddy does not directly disclose one or more
rails to connect the panels with wires that facilitate an electrical connection
between the panels." Id. 4 The Examiner relies on Southard for disclosing
LED 20 as the claimed panel and flexible electrical conductor 12 as the
claimed flexible rail, and also for disclosing that Southard's conductor 12
physically supports adjacent LEDs by a snap fit connection. Id. (Southard
discloses that "conductor 12 includes a plurality of substantially parallel
conductive elements 16, each of which is electrically insulated by the
insulating covering 14," which may be made from "rubber, PVC, silicone,
and/or EPDM," or "other material." Southard, col. 4, 11. 53---61). The
Examiner further finds that Southard' s conductor 12 comprises wire
connections 18 "to enable electrical connection between the panels ... that
4 The Examiner also finds that "Priddy does not directly disclose the sign
depth factor to be less than about 1.4," however, the Examiner determines
that "[d]imensional modification is common and well known in the art."
Final Act. 2.
3
Appeal2014-005706
Application 11/784,639
[are] thermally conductive." Final Act. 2-3, 9 (citing Southard, col. 1, 11.
54---62, Fig. 1 ). The Examiner concludes that it would have been obvious "to
modify Priddy ... to include Southard's rail having a snap fit connection
with an LED panel[,] [to] provide a means [of] strengthen[ing] the electrical
connection elements of the display arrangement." Id. at 3, 9.
Appellants argue that the materials disclosed in Southard to comprise
covering 14 (i.e., rubber, PVC, silicone, and/or EPDM) are not thermally
conductive materials, and therefore, "rails 12 of Southard are not thermally
conductive rails," but rather "insulated wire[s]." Appeal Br. 6-7; see also
Reply Br. 3 (arguing that the Examiner has not provided any evidence to
support the assertion that Southard's materials are thermally conductive).
The Examiner responds that rubber, PVC, silicone, and/or EPDM "are
thermally conductive." Ans. 2.
Claim 1 requires "one or more thermally conductive rails," but does
not specify any particular thermal conductivity, for example, a thermal
conductivity over a threshold value. Appeal Br. 16, 23 (Claims App.).
Thus, we are not apprised of error in the Examiner's finding that Southard's
insulating covering 14 is composed of materials with some thermal
conductivity.5
Appellants also argue that Southard fails to teach that one or more
wires facilitate an electrical connection between the panels because
"Southard teaches leads 22 as the electrical connection, not rails, between
the conductive element 16 and the LED elements 20." Reply Br. 3, 8. The
5 According to www.engineeringtoolbox.com (last visited May 30, 2016),
the thermal conductivity of cellular rubber, for example, is 0.045, of natural
rubber is 0.13, and of PVC is 0.19 (measured in W/(m K)).
4
Appeal2014-005706
Application 11/784,639
Examiner responds that Priddy discloses panels that are electrically
connected together and "Southard discloses the electrical connection
between illuminated elements comprising electrical connections via the rails
as shown in [conductor] 12." Ans. 2-3 (citing Priddy, Fig. 1 (conductors 27,
29)); see also Southard, e.g., Fig. 1 (conductor 12).
As correctly determined by the Examiner, Priddy discloses that circuit
boards 13, each having LEDS 15, 17, 19, are connected by pairs of
conductors 27, 29. Priddy, col. 3, 11. 4--12, Fig. 1. Although Southard
discloses that each LED 20 includes electrical leads 22 that pass through
insulating covering 14 to contact (and connect to) conductive elements 16 in
flexible conductor 12, Southard also discloses a rail (conductor 12), which
includes conductive elements 16. Southard, col. 5, 11. 1-32; Fig. 1. Thus,
both Priddy and Southard teach an electrical connection between "panels"
(e.g., Priddy's circuit boards 13, Southard's LEDs 20). As stated supra, the
Examiner's proposed combination modifies Priddy in view of Southard, and
Appellants have not apprised us of error in the Examiner's reasoning that it
would be within the knowledge of one skilled in the art to modify Priddy' s
circuit boards 13 (panels) to be connected together by Southard's conductor
12 (thermally conductive rail), wherein wires facilitate an electrical
connection between the panels, as claimed.
Accordingly, we sustain the Examiner's rejection of independent
claim 1 and claims 2--4, 7, 45, and 47--49, which fall therewith.
Claim 11
Claim 11 depends from independent claim 1, and requires that " [the]
rails are comprised of aluminum." Appeal Br. 17 (Claims App.). The
Examiner finds that Southard discloses that LEDs 20 are "electrically
5
Appeal2014-005706
Application 11/784,639
connected to a base that is made of aluminum" and that "[t]he housing is
part of the rails." Ans. 3 (citing Southard, col. 1, 11. 50-62); see also Final
Act. 4. Appellants argue that the Examiner identifies insulating covering 14
of conductor 12 as the rail, and the insulating covering is made of rubber,
PVC, silicone, and/or EPDM, not aluminum. Appeal Br. 7; see also Reply
Br. 4.
Southard discloses that conventional channel lettering devices include
LEDs "mounted on an aluminum base for heat sinking purposes." Southard,
col. 1, 11. 56-57. Southard does not disclose that conductor 12 or insulating
covering 14 are comprised of aluminum or that the aluminum base of
conventional lettering systems is part the conductor 12. See id. Thus, the
Examiner's finding that Southard discloses rails comprised of aluminum is
not supported by a preponderance of the evidence. Accordingly, we do not
sustain the rejection of claim 11.
Claims 13-15, 17, 19-22, 50, 51, and 53
Regarding independent claim 13, the Examiner makes similar
findings, inter alia, with respect to Priddy as applied to independent claim 1
supra, and determines that "Priddy does not directly disclose one or more
rails to connect the panels with wires that facilitate an electrical connection
between the panels." Final Act. 4. The Examiner relies on Southard for
disclosing LEDs 20 (panels) supported by conductor 12 (thermally
conductive rail), and determines that Southard's strands 18 correspond to the
one or more insulated wires required by claim 13, which facilitate an
electrical connection between the panels. Id. The Examiner further finds
that "[t ]here is no structural limitation to distinguish the rail from the
insulation." Ans. 3.
6
Appeal2014-005706
Application 11/784,639
Appellants argue that Southard's device either can be interpreted as a
rail (insulating covering 14) and uninsulated wires (conductive elements 16),
or insulated wires (conductive element 16 insulated by insulating covering
14) absent a rail, however, insulating cover 14 cannot be both the rail and
the insulation for the wires. Appeal Br. 8-9; see also Reply Br. 5. In other
words, claim 13 requires three separate structures: a rail, wires, and
insulation for the wires, whereby the wires are insulated wires, and the
Examiner fails to find three separate structures in Southard.
Although there may be no structural limitation recited in claim 13 to
distinguish a rail from insulation for a wire, claim 13 requires "a rail" and
"insulated wires." We agree with Appellants that claim 13 precludes the rail
from also being the insulation for the wires by separately reciting the rail as
a structure apart from the insulated wires.
Accordingly, we do not sustain the Examiner's rejection of
independent claims 13 and claims 14, 15, 1 7, 19-22, 5 0, 51, and 5 3,
depending therefrom.
Claims 26--33, 35-37, 39, 40, and 46
Appellant argues claims 26-33, 35-37, 39, 40, and 46 together.
Appeal Br. 11. We select independent claim 26 as the illustrative claim, and
claims 27-33, 35-37, 39, 40, and 46 stand or fall with claim 26.
Regarding independent claim 26, the Examiner finds, inter alia, that
Priddy discloses the claimed backlighting system except that "Priddy does
not directly disclose the array to be adjustably supported on the rails." Final
Act. 6. The Examiner finds that Southard discloses "a rail wherein the array
of LED modules is adjustably supported." Id. Appellants argue that
Southard teaches mechanically mounting the LEDs to the rails and that "the
7
Appeal2014-005706
Application 11/784,639
LEDs are not able to be adjusted after they are mechanically secured."
Appeal Br. 10.
Appellants' argument is not commensurate in scope with claim 26
which merely recites that the plurality of light emitting modules "are
adjustably supported by one or more rails." Appeal Br. 19-20 (Claims
App.). Southard discloses that LED 20 includes a plurality of electrical
leads 22 and that "LED 20 is mechanically and electrically secured to the
conductor 12 by passing the leads 22 through the insulating covering 14 via
an insulation displacement technique." Southard, col. 5, 11. 22-25, Figs. 1, 2.
The position of LED 20 on the insulating covering 14 may be adjusted by
removing and mechanically securing LED 20 at a different position. See id.
Thus, Southard meets the limitation at issue.
Accordingly, we sustain the Examiner's rejection of independent
claim 26 and claims 27-33, 35-37, 39, 40, and 46, which fall therewith.
Rejection II claims 5, 6, 8, 12, 23, 41, 42, 55, and 56
Claims 5, 6, 8, and 12
Claims 5, 6, 8, and 12 depend from independent claim 1. Appellants
do not provide separate arguments for the patentability of claims 5, 6, 8, and
12. Appeal Br. 6. Accordingly, we sustain the Examiner's decision
rejecting claims 5, 6, 8, and 12 for the reasons discussed supra.
Claim 23
Claim 23 depends from independent claim 13. The Examiner's
reliance on Bogner does not cure the deficiencies in the Examiner's finding
with respect Priddy and Southard, as discussed supra, as applied to
independent claim 13. Therefore, we do not sustain the Examiner's rejection
of claim 23.
8
Appeal2014-005706
Application 11/784,639
Claims 41 and 42
Regarding independent claim 41, the Examiner finds, inter alia, that
Priddy discloses the claimed module except that "Priddy does not directly
disclose the rails to enable adjustable attachment with the modules." Final
Act. 11-12. The Examiner relies on Southard for disclosing "a system
wherein the mounting spacing between adjacent planes is adjustable." Id.
(citing Southard, Fig. 1 ). Appellants argue that Southard teaches
mechanically mounting the LEDs to the rails and Southard does not teach
adjustability of the modules while being attached to the rails. Appeal Br. 11;
see also Reply Br. 7.
As discussed supra, in Southard, the position of LED 20 on insulating
covering 14 may be adjusted by removing and mechanically securing LED
20 at a different position. Southard, col. 5, 11. 22-25, Figs. 1, 2. Appellants'
argument that claim 41 requires the modules to be adjustable while attached
to the rail is not commensurate in scope with claim 41. Accordingly, we
sustain the Examiner's rejection of independent claim 41 and claim 42,
depending therefrom.
Claim 55
Claim 55 depends from independent claim 41. Claim 55 requires that
"the support structure includes one or more sliding tracks which enable
movement of the panels along one or more rails." Appeal Br. 25 (Claims
App.). The Examiner finds, inter alia, that Southard discloses that splice
connector 70 is slidably connected to conductors 72. Final Act. 13 (citing
Southard, Fig. 6). Appellants argue that Southard "teaches the use of a
connector to mechanically mount the LED to the insulating cover," but does
9
Appeal2014-005706
Application 11/784,639
not teach a support structure including a sliding track to enable movement of
the panels. Appeal Br. 14; see also Reply Br. 9.
Southard discloses that splice connector 70 mechanically and
electrically connects flexible conductors 72, 7 4 together, and LEDs 10 are
mechanically secured to the flexible conductors by leads 22 attached to
insulation cover 14 of conductors 72, 74. Southard, col. 5, 11. 22-28, col. 7,
11. 1-5, Figs. 1, 2, 5. In Southard, sliding tracks do not enable movement of
the panels along the rails, and therefore, the Examiner's finding is not
supported by a preponderance of the evidence. Accordingly, we do not
sustain the Examiner's rejection of claim 55.
Claim 56
Claim 56 depends from independent claim 41. Claim 56 requires that
"each of the modules include one or more integral or attachable guides
which mate with a portion of the one or more rails which enables the
plurality of modules to move along the rails." Appeal Br. 25 (Claims App.).
The Examiner finds, inter alia, that Southard discloses splice connector 70
"is slidably connected to Element 72." Final Act. 13 (citing Southard, Fig.
6). Appellants argue that "Southard teaches the use of a connector to
mechanically mount the LED to the insulating covering" and does not teach
that each module includes guides which mate with a portion of the track to
enable movement of the modules along the rails. Appeal Br. 14; see also
Reply Br. 10.
As discussed supra, Southard discloses a splice connector 70
mechanically connects a plurality of flexible conductors 72, 7 4 together, and
the LEDs 10 are mechanically secured to the flexible conductors 72, 74.
Southard, col. 5, 11. 22-28 and col. 7, 11. 1-5; Figs. 1, 2, 5, and 6. In
10
Appeal2014-005706
Application 11/784,639
Southard, the modules do not include guides to enable movement along the
one or more rails, and therefore, the Examiner's finding is not supported by
a preponderance of the evidence. Accordingly, we do not sustain the
Examiner's rejection of claim 56.
Rejection III
The Examiner's reliance on Lyman does not cure the deficiencies in
the Examiner's finding with respect Priddy and Southard, as discussed
supra, as applied to independent claim 13. Claims 52 and 54 depend from
claim 13. Therefore, we do not sustain the Examiner's rejection of claims
52 and 54 for the reasons discussed supra.
DECISION
The Examiner's rejections of claims 1-8, 12, 26-33, 35-37, 39--42,
and 45--49 are affirmed.
The Examiner's rejections of claims 11, 13-15, 17, 19-23, and 50-56
are 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
11