Ex Parte Nilssen et alDownload PDFPatent Trial and Appeal BoardDec 22, 201613020909 (P.T.A.B. Dec. 22, 2016) Copy Citation 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. OLE-Lamp 3410 EXAMINER TSIDULKO, MARK ART UNIT PAPER NUMBER 2875 MAIL DATE DELIVERY MODE 13/020,909 02/04/2011 74642 7590 CLIFFORD H. KRAFT 320 ROBIN HILL DR. NAPERVTT.TE, IL 60540 12/23/2016 Ole K. Nilssen 12/23/2016 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 OLE K. NILSSEN and DALE FIENE Appeal 2015-002772 Application 13/020,909 Technology Center 2800 Before JUSTIN BUSCH, DANIEL N. FISHMAN, and JAMES W. DEJMEK, Administrative Patent Judges. BUSCH, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1—21 and 25—58 under 35 U.S.C. §§ 102(e) and 103(a). Non-Final Act. 3—14. Oral arguments were heard on December 9, 2016. A transcript of the hearing will be added to the record in due course. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2015-002772 Application 13/020,909 CLAIMED SUBJECT MATTER Claims 1, 9, 41, 44, 47, 50, and 52 are independent claims. The claims relate generally to “LED or other lamps that remove heat using evaporation of water or other coolant inside a lamp enclosure structure such as a glass bulb typically without the use of external heat sinks or fins.” Abstract. Claim 1 is representative and reproduced below: 1. A lamp comprising: an illumination source in a sealed non-opaque container, the non-opaque container also containing a coolant vapor, wherein said coolant vapor provides a thermal path between the illumination source and the inner surface of the sealed non opaque container. REJECTIONS Claims 1, 2, 7, 9-13, 15, 19-21, 26, 27, 34, 41, 42, 44, 47-51 stand rejected under 35 U.S.C. § 102(e) as being unpatentable in view of Lee (US 2010/0177522 Al; pub. July 15, 2010). Non-Final Act. 3-5. Claims 35, 39, 40, 45, and 46 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Lee. Non-Final Act. 5—6. Claims 3, 5, 6, 14, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Lee and Chen (US 6,580,228 Bl; June 17, 2003). Non-Final Act. 6—8. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Lee and Kraus (US 2012/0188771 Al; pub. July 26, 2012). Non-Final Act. 8. Claims 8, 25, and 28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Lee, Cooper (US 3,022,438; Feb. 20, 1962), and Makarov (US 2009/0114851 Al; pub. May 7, 2009). Non-Final Act. 8—9. 2 Appeal 2015-002772 Application 13/020,909 Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Lee, Chen, and Lo (US 6,217,199 Bl; Apr. 17, 2001). Non-Final Act. 9. Claims 29-31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Lee and Hansen (US 4,509,464; Apr. 9, 1985). Non-Final Act. 9—10. Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Lee, Allen (US 2011/0170289 Al; pub. July 14, 2011), and Pijlman (US 2010/0046219 Al; pub. Feb. 25, 2010). Non-Final Act. 10. Claims 36 and 38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Lee and Corman (US 6,403,158 Bl; June 11, 2002). Non-Final Act. 10—11. Claim 37 stands rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Lee and Toohey (US 6,371,756 Bl; Apr. 16, 2002). Non-Final Act. 11. Claims 43, 52, 54, and 55 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Lee and Cooper. Non-Final Act. 11—13. Claim 53 stands rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Lee, Cooper, and Kraus. Non-Final Act. 13. Claims 56—58 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Lee, Cooper, and Chen. Non-Final Act. 13—14. OPINION Appellants’ only argument is that “all of the claims on appeal require that the coolant condense on the opaque bulb” and that “[njone of Lee’s coolant ever touches the surface of the bulb” because “Lee’s coolant 3 Appeal 2015-002772 Application 13/020,909 condenses inside a sealed tube which is itself inside the bulb.” App. Br. 11— 12. However, based on the language recited in the independent claims, we break the claims into groups and analyze claims 1—21 and 25 40 as a first group (hereinafter, the “Group 1 Claims”), claims 50-58 as a second group (hereinafter, the “Group 2 Claims”), claims 41—46 as a third group (hereinafter, the “Group 3 Claims”), and claims 47-49 as a fourth group (hereinafter, the “Group 4 Claims”).1 The Group 1 Claims Independent claims 1 recites, in part, the “coolant vapor provides a thermal path between the illumination source and the inner surface of the sealed non-opaque container.” Independent claim 9 recites similar language wherein the “coolant vapor provides a thermal path between the support structure and the inner surface of the sealed non-opaque container.” Appellants argue these limitations should be construed to mean that the entire path between the illumination source (or the support structure) and the inner surface of the container is provided solely by the coolant vapor. However, other than in the claims, the phrase “thermal path” is not used in the Appellants’ Specification. Moreover, nothing in the Specification is inconsistent with an understanding that other elements may be a part of the thermal path. In fact, notwithstanding Appellants’ assertion, the Specification states “[t]he support structure that holds the LEDs provides a means for the heat generated by the LEDs to be transferred to the coolant.” Spec. 13:1—6. The Specification provides one exemplary embodiment with 1 At Oral Hearing, Appellants requested that we consider the independent claims on their own merits, notwithstanding Appellants’ treatment of all claims as a single group in their briefs. 4 Appeal 2015-002772 Application 13/020,909 “small heat fms [that] are affixed to the top and the bottom of the support structure or stem.” Id. at 15:10-11. Thus, Appellants’ Specification provides for other embodiments in which other elements may form at least part of the “thermal path.” During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Prater, 415 F.2d 1393, 1404—05 (CCPA 1969); In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from reading limitations of the specification into a claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations that have no express basis in the claim. In re Prater, 415 F.2d at 1404—05. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993). Applying the broadest reasonable construction, particularly in view of the Specification’s disclosure that other portions of a lamp (i.e., the support structure and heat fms) may provide a portion of the thermal path, we disagree with Appellants that the disputed limitation requires that the coolant vapor provides the entire thermal path. In light of these disclosures in the Specification, Appellants do not point to evidence sufficient to persuade us that the claims exclude other elements from providing portions of the recited 5 Appeal 2015-002772 Application 13/020,909 thermal path. Accordingly, we construe the disputed limitation to merely mean that the coolant vapor makes up at least a portion of the thermal path between the recited components (i.e., either the LEDs or the support structure and the inside surface of the enclosure). Appellants argue Lee fails to disclose the features recited in claims 1 and 9 because “none of Lee’s coolant ever touches or condenses on the bulb or enclosure.” App. Br. 12. However, Appellants’ argument is not commensurate with the scope of claims 1 and 9, because claims 1 and 9 do not recite coolant vapor condensing on the enclosure. Accordingly, Appellants’ argument does not persuade us of error in the Examiner’s rejection. See In re Self, 671 E.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). Even if we interpret Appellants’ argument as Lee failing to disclose the coolant vapor as providing a thermal path between the illumination source/support structure and the inner surface of the non-opaque container,2 that argument is still unpersuasive in light of the above construction in which the vapor can be merely a portion of the thermal path. Appellants agree that Lee discloses using a coolant to transport heat away from the illumination source (e.g., LEDs) through a process of vaporization and condensation, but assert Lee’s coolant is contained within a sealed tubular conductor. Id. Specifically, Appellants argument is not commensurate with the scope of claims 1 and 9 given our construction discussed above, which does not require the coolant vapor to provide the entire thermal path 2 Appellants did not explicitly argue this in their briefs, but clarified their argument at the oral hearing. 6 Appeal 2015-002772 Application 13/020,909 between either the illumination source or the support structure and the inner surface of the container. Appellants provide no other argument with respect to claims 1 and 9, or with respect to claims 2—8, 10-21, and 25 40, which ultimately depend from one of claims 1 and 9. Accordingly, Appellants assertion that the Examiner erred in rejecting the Group 1 claims is not persuasive, and we affirm the rejection of claims 1—21 and 25^40.3 The Group 2 Claims Independent claim 50 recites the liquid coolant evaporates and “re- condens[es] on the [light-transmitting] enclosure,” and independent claim 52 recites the “liquid coolant evaporates . . . and condenses on the [light- transmitting] enclosure.” The Examiner never makes a finding that Lee (or Cooper, which is cited in the obviousness rejection of independent claim 52) discloses, teaches, or suggests a coolant vapor condensing on the inner surface of a “light-transmitting enclosure,” as recited in claims 50 and 52. See Non-Final Act. 2—A. The Examiner states that the “claims on appeal do not have” a limitation “requiring] that the coolant condense on the [non- jopaque bulb.” Ans. 2. Accordingly, we are persuaded the Examiner erred in rejecting the Group 2 Claims, each of which include a limitation regarding the vapor condensing on the inner surface of the enclosure, and we reverse the Examiner’s rejection of the Group 2 Claims. 3 Although not necessary for purposes of this decision, we note that claims 37 and 38 appear to have a typographical error, wherein either the word “is” or the word “includes” should be deleted from the claim. App. Br. 22. This apparent error leads to potentially indefinite claim language in our view. 7 Appeal 2015-002772 Application 13/020,909 The Group 3 Claims Independent claims 41 and 44 are broader than independent claims 1 and 9. See App. Br. 23—24. Claims 41 and 44 recite an enclosure with an inner and outer surface enclosing an LED or other illumination source and “a liquid in thermal contact with the” illumination source, wherein the illumination source causes part of the liquid to vaporize, removing heat generated by the illumination source. Id. With respect to the behavior and function of the liquid, claims 41 and 44 recite that the liquid is in thermal contact with the illumination source and that the heat from that illumination source causes the liquid to vaporize, thus, removing heat generated by the illumination source. Appellants admit Lee discloses a liquid vaporizing as a result of the heat generated an LED and, thus, removing that heat from the LED. App. Br. 12; see Lee 127. Appellants do not contest that Lee discloses its LED is in thermal contact with the liquid coolant. In fact, under a broad but reasonable construction of thermal contact, the heat generated by Lee’s LEDs would not cause the coolant to vaporize if it were not in thermal contact with the coolant. No separate argument was presented with respect to dependent claims 42, 43, 45, and 46. However, claim 45 depends from claim 44 and further recites “at least part of the vaporized liquid re-liquefies by exposure to said inner surface,” a limitation similar to the limitation recited in the Group 2 Claims. Lor the reasons discussed above, we do not find the Examiner erred in rejecting claims 41—44 and 46. However, for the same reasons discussed with respect to the Group 2 Claims, we find Lee does not teach or suggest the additional limitation recited in claim 45. Accordingly, we affirm the 8 Appeal 2015-002772 Application 13/020,909 Examiner’s rejection of claims 41—44 and 46, but we reverse the Examiner’s rejection of claim 45. The Group 4 Claims Independent claim 47 recites liquid changing phase to a “vapor phase [that] carries heat from said LEDs to outer surface.” Although slightly different, this claim limitation is similar to the limitation of a coolant vapor forming a thermal path that is recited in independent claims 1 and 9. The heat carrying limitation recited in claim 47, however, requires that elements other than the “vapor phase” of the liquid are involved in carrying heat away from the LEDs to the outer surface of the enclosure. Specifically, the “inner surface encloses] ... a liquid [that] chang[es] phase to a vapor phase” and, accordingly, the vapor phase of the liquid can transfer heat, at most, from the LEDs to the inner surface of the enclosure. The enclosure itself would then transfer heat from the inner surface to the outer surface of the enclosure through thermal conduction, assuming that the outer surface temperature is lower than the inner surface temperature of the enclosure. Therefore, we cannot construe “said vapor phase carrying heat from said LEDs to said outer surface” to mean that the vapor phase is solely responsible for the recited heat carrying function. Appellants acknowledge that Lee discloses transferring heat, through vaporization and condensation of a coolant, at least from one end of a tubular conductor (proximate to and/or in contact with the LEDs) to the other end of the tubular conductor. App. Br. 12; see Lee 127. In Lee, “heat is dispersed within the base [and/or optional fins], which is metallic so transfers heat to the environment.” Lee ^fl[ 27, 32, 35. At least some heat dispersed from the base would contact the inner surface, which would, in 9 Appeal 2015-002772 Application 13/020,909 turn (and similar to Appellants’ invention), transfer heat to the outer surface of the bulb through thermal conduction. Accordingly, we are not persuaded the Examiner erred in rejecting claim 47, or claims 48 and 49 depending therefrom, and we affirm the Examiner’s rejection of the Group 4 Claims. Conclusion We have reviewed Appellants’ arguments in the Appeal and Reply Briefs, the Examiner’s rejection in the Non-Final Action, and the Examiner’s response to Appellants’ arguments in the Answer. We find Appellants’ arguments that the Examiner erred in rejecting claims 45 and 50-58 persuasive, and we reverse the Examiner’s rejections of those claims. However, we do not find Appellants’ arguments that the Examiner erred in rejecting claims 1—21, 25 44, and 46-49 persuasive, and we affirm the Examiner’s rejections of those claims. DECISION For the above reasons, the Examiner’s decision to reject: (a) claims 1,2, 7, 9-13, 15, 19-21,26, 27, 34, 41, 42, 44, and 47-49 under 35 U.S.C. § 102(e) is affirmed; (b) claims 3—6, 8, 14, 16—18, 25, 28—33, 35—40, 43, and 46 under 35 U.S.C. § 103(a) is affirmed; (c) claims 50 and 51 under 35 U.S.C. § 102(e) is reversed; and (d) claims 45 and 52—58 under 35 U.S.C. § 103(a) 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)(l)(iv). AFFIRMED-IN-PART 10 Copy with citationCopy as parenthetical citation