Ex Parte Osawa et al

Patent Trial and Appeal Board

Dec 16, 2016

13566612 (P.T.A.B. Dec. 16, 2016)

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.
13/566,612 08/03/2012 Shigeru Osawa 052847.00012 7092
30752 7590 12/20/2016
BANNER & WITCOFF, LTD.
ATTORNEYS FOR CLIENT NO. 000449, 001701
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
HUSAR, STEPHEN F
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
12/20/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTO-30752 @ bannerwitcoff. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIGERU OSAWA and KAZUTO MORIKAWA1
Appeal 2015-003675
Application 13/566,612
Technology Center 2800
Before JEFFREY T. SMITH, JAMES C. HOUSEL, and
BRIAN D. RANGE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1, 2, and 5—13. We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appeal Brief, the real party in interest is Toshiba Lighting
and Technology Corporation. (App. Br. 2).
Appeal 2015-003675
Application 13/566,612
BACKGROUND
Appellants’ invention relates to lighting device comprising a light-
emitting diode as the light source. (Spec. 11). The claimed invention
describes a lighting device comprising a peripheral wall having a thickness
which increases as a distance from an opening side of the receptacle to the
end wall increases. Claim 1 is reproduced below from the Claims Appendix
to the principal Brief:
1. A lighting device comprising:
a cover portion; and
a device body made of metal and having:
a peripheral wall comprising a heat radiating surface, the
heat radiating surface being provided outside the device body;
an end wall integrally formed with the peripheral wall,
the end wall comprising a light source support at an end,
wherein the cover portion is configured to cover the light source
support when the cover portion is assembled with the device
body;
a light source provided on the light source support, the
light source comprising a wiring board on which a light-
emitting element is mounted, the wiring board being fixed to
the light source support by a screw to be in tight contact with
the light source support and thermally connected to the light
source support;
an attachment portion to which the cover portion is
configured to attach, the attachment portion including a recess
configured to receive one end of the cover portion, the recess
being provided in the end wall to circularly surround the light
source support;
a receptacle defined by a space enclosed with the
peripheral wall and the end
wall, the receptacle located closer to a center of the
device body than the recess;
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Appeal 2015-003675
Application 13/566,612
a connecting member made of resin and connected to an
end portion of the peripheral wall on an opening side of the
receptacle; and
a lighting circuit disposed in a receptacle space defined
by the receptacle and the connecting member,
wherein the peripheral wall between the receptacle and
the heat radiating surface has a thickness which increases as a
distance from an opening side of the receptacle to the end wall
increases.
The Examiner maintains, and Appellants appeal, the rejections of:
Claim 1 under 35 U.S.C. §112, second paragraph, as indefinite for
failing to particularly point out and distinctly claim the subject matter which
the applicants regards as their invention;
Claims 1, 2, and 5—12 under 35 USC § 103(a) as unpatentable over
Inoue et al. Katougi (US 6,234,649 Bl, issued May 22, 2001) in view of
Park (US 2005/0174780 Al, published Aug. 11, 2005), Reisenauer et al.
(US 6,161,910 issued Dec. 19, 2000), and further in view of Ballenger (US
2005/0212437 Al published Sep. 29, 2005); and
Claim 13 under 35 USC § 103(a) as unpatentable over Katougi,
Reisneauer, Park, Ballenger and Itaya (US 7,074,104 B2 issued July 11,
2006).
OPINION
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE the Examiner’s rejection of claim 1 under 35
U.S.C. § 112, second paragraph and REVERSE the Examiner’s rejections
under 35 USC § 103(a).
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Appeal 2015-003675
Application 13/566,612
Rejection under 35 U.S.C. §112, second paragraph
The Examiner found regarding claim 1 the phrase “wherein the
peripheral wall between the receptacle and the heat radiating surface has a
thickness which increases as a distance from an opening side of the
receptacle to the end wall increases” unclear. (Final Act. 3—4).
Appellants responded to the Examiner’s rejection explaining why the
claimed subject matter was not indefinite. (Br. 7). The Examiner failed to
respond to Appellants’ arguments in the Answer.
We agree with Appellants that one skilled in the art would have been
capable of understanding the disputed claim language.
Thus, on this record, the Examiner has not adequately explained why
claim 1 fails to particularly point out and distinctly claim the subject matter
which the inventor regards as the invention.
Accordingly, we reverse the Examiner’s rejection under 35 U.S.C. §
112, second paragraph.
Rejections under 35 U.S.C. § 103(a)
The dispositive issue on appeal is: Did the Examiner reversibly err in
determining that the combination of Katougi, Reisneauer, Park, and
Ballenger would have suggested a lighting device comprising a peripheral
wall between the receptacle and the heat radiating surface has a thickness
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Appeal 2015-003675
Application 13/566,612
which increases as a distance from an opening side of the receptacle to the
end wall increases as required by independent claim l?2
After review of the respective positions provided by Appellants and
the Examiner, we agree with Appellants that the Examiner did not establish
that the combination of Katougi, Reisneauer, Park, and Ballenger would
have suggested a lighting device comprising a peripheral wall between the
receptacle and the heat radiating surface has a thickness which increases as a
distance from an opening side of the receptacle to the end wall increases.3
The Examiner acknowledged that the lighting device resulting from
the combination of Katougi, Reisneauer, and Park did not teach a peripheral
wall between the receptacle and the heat radiating surface has a thickness
which increases as a distance from an opening side of the receptacle to the
end wall increases. (Final Act. 9). The Examiner found Figure 4 of
Ballenger teaches a peripheral wall between the receptacle and the heat
radiating surface having a thickness which increases as a distance from an
opening side of the receptacle towards the end wall increases. {Id.). The
Examiner determined it would have been obvious to modify the lighting
device resulting from the combination of Katougi, Reisneauer, and Park to
have a peripheral wall between the receptacle and the heat radiating surface
with a thickness which increases as a distance from an opening side of the
receptacle to the end wall increases “for the purpose [of] increasing the heat
2 We limit our discussion to independent claim 1. A discussion of Itaya is
unnecessary for disposition of the dispositive issue.
3 The statement of the rejections on appeal appear in the June 6, 2014 Final
Office Action.
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Appeal 2015-003675
Application 13/566,612
dissipation effect, while at the same time keeping costs low by not
increasing the material thickness in areas where it is not necessary.” (Id.).
Appellants argue “Ballenger does not teach or suggest any heat
dissipation through the insulating material of body 14. Rather, an
electrically conductive shell (element 32) and eyelet (34) are used to
dissipate heat. Thus, any modification of Katougi, Reisenauer or Park to
include the insulating body of Ballenger would not result in the lighting
device of claim 1.” (Br.10).
We agree with Appellants that the Examiner’s rejection cannot be
sustained. The Examiner has failed to provide an adequate explanation why
the cited prior art teaches or suggests a lighting device comprising a
peripheral wall between the receptacle and the heat radiating surface having
a thickness which increases as a distance from an opening side of the
receptacle to the end wall increases. Contrary to the Examiner’s position,
Ballenger does not exhibit a peripheral wall having a heat radiating surface
with varying thickness such as required by the claimed invention. (See
Ballenger’s figures). Consequently, combining the teachings of Katougi,
Reisneauer, and Park with the teachings with Ballenger as proposed by the
Examiner would not result in the claimed invention.
Thus, the Examiner has not established that the relied-upon
disclosures are sufficient to support obviousness of the Appellants’ claimed
invention. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A
rejection based on section 103 clearly must rest on a factual basis, and these
facts must be interpreted without hindsight reconstruction of the invention
from the prior art”). Accordingly, we reverse the appealed prior art rejection
of claims 1, 2, and 5—12.
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Appeal 2015-003675
Application 13/566,612
As the Examiner does not rely on Itaya to remedy the deficiency in
the combination of Katougi, Reisneauer, Park, and Ballenger, we likewise
reverse the appealed prior art rejection of claim 13.
REVERSED
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