Ex Parte Pickard et al

Patent Trial and Appeal Board

Sep 23, 2016

11939052 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111939,052 11113/2007
25191 7590 09/26/2016
BURR & BROWN, PLLC
POBOX7068
SYRACUSE, NY 13261-7068
FIRST NAMED INVENTOR
Paul Kenneth PICKARD
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.
931_036NP 5232
EXAMINER
HAN, JASON
ART UNIT PAPER NUMBER
2875
MAILDATE DELIVERY MODE
09/26/2016 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 PAUL KENNETH PICKARD and
GARY DAVID TROTT1
Appeal2015-003023
Application 11/939,052
Technology Center 2800
Before: MICHAEL P. COLAIANNI, A VEL YN M. ROSS, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection2 of
claims 1-10, 21-34, and 39--42. (App. Br. 3.) We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Cree, Incorporated. (Appeal Brief,
filed October 16 2014 ("App. Br."), 1.)
2 Final Office Action mailed March 24 2014 ("Final Rejection"; cited as
"Final Act.").
Appeal2015-003023
Application 11/939,052
CLAIMED SUBJECT MATTER
The claims are directed to "light engine assemblies for use in lighting
devices" said to be advantageous for "heat dissipation, particularly in the
room-side of the device." (Spec. col. 1, 11. 7-8; col. 3, 11. 1-2.) The light
engine assemblies are also said to "be installed and/or repaired more easily,
with less modification of or damage to construction elements (e.g., ceilings,
walls and floors) in which such lighting assemblies are mounted, and in
which light emitters can be more easily changed." (Id. at col. 2, 11. 4---6.)
One embodiment of the assembly is illustrated in Figures 1 and 9 of
the '052 Specification reproduced below:
FIG.1
FIG. 1 of the '052 Specification illustrating "a perspective view" of a light
engine assembly. (Spec. pg. 25, 1. 9.)
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Application 11/939,052
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FIG. 9 of the '052 Specification illustrating "a cross-sectional view" of the
assembly shown in FIG. 1. (Spec. pg. 6, 1. 28.)
The '052 Specification provides that Figure l shows "a light engine
assembly 10 comprising a trim element 11." (Id. at col. 25, 11. 10-11.) "The
trim element 11 defines a trim element internal space 14" shown in Figure 9.
(Id. at col. 25, 1. 13.) "The light engine housing 12 is positioned within the
trim element internal space 14. The light engine housing 12 defines a light
engine housing internal space 15." (Id. at col. 25, 11. 14--15.) "[L]ight
engine 13 is positioned within the light engine housing internal space 15 and
comprises a plurality of LEDs [(light emitting diodes)] 16." (Id. at col. 25,
11. 16-17.) "An external surface 17 of the light engine housing 12 is in
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Application 11/939,052
contact with an internal surface 18 of the trim element 11." (Id. at col. 25, 11.
18-19.)
Figure 13 of the '052 Specification (reproduced below) additionally
shows "light engine housing fins 74" included in light engine assembly 70.
(Spec. Arndt. 1. )3 Figure 13 shows that
each of the light engine housing fins 7 4 is in contact with an
external surface of the light engine housing 72 and is in contact
with an internal surface of the trim element 71 (alternatively,
some or all of the fins 7 4 could be not in contact with the trim
element 71, and/ or some or all of the fins could be not in contact
with the light engine housing 72).
(Id.) Light diffuser 79 is "positioned within the trim element internal space
76" and "the trim element 71 and the light diffuser 79 together defining a
3 An Amendment to the Specification was filed January 28, 2010 ("Spec.
Arndt.").
4
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Application 11/939,052
trim element-diffuser internal space in which the light engine housing 72 is
positioned." (Spec. 29, 11. 4---6.)
(75
FIG. 13 of the '052 Specification illustrating a cross-section of an assembly.
(Spec. Arndt. 1.)
Claims 1 and 21, reproduced below, are illustrative of the claimed
subject matter:
1. A light engine assembly [10], comprising:
at least one trim element [11], said trim element defining
a trim element internal space [14];
a light engine housing [12], an entirety of said light engine
housing within said trim element internal space [14], said light
engine housing comprising an internal surface and an external
surface [17], said internal surface of said light engine housing
defining a light engine housing internal space [15]; and
a light engine [13] comprising at least one solid state light
emitter [16], said light engine within said light engine housing
internal space [15],
said external surface [17] of said light engine housing [12]
on an opposite side of said light engine housing relative to said
internal surface of said light engine housing [12],
said external surface [17] of said light engine housing [12]
in contact with an internal surface [18] of said trim element [11].
21. A light engine assembly, comprising:
at least one trim element [11, 71], said trim element
defining a trim element internal space [14, 7 6];
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Application 11/939,052
a light engine housing [12, 72] within said trim element
internal space [14, 76], said light engine housing defining a light
engine housing internal space [15];
a light engine [13, 75] comprising at least one solid state
light emitter [16, 73], said light engine within said light engine
housing internal space [15]; and
a plurality of light engine housing fins [74];
each of said light engine housing fins:
in contact with an external surface of said light
engine housing [12],
in contact with an internal surface or said trim
element [11],
outside of said light engine housing internal space
[15], and
inside of said trim element internal space [14],
a first plane perpendicular to an axis of substantial
symmetry of the trim clement [11, 71] extending through the light
engine housing internal space [15], the light engine housing [12,
72], the trim element [11, 71] and at least a first of the light
engine housing fins [7 4].
(App. Br., Claims App. A-1, A-3 (emphases added; bracketed annotations
added).)
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Daughtry
Leong
Park
Amor
US Patent 6,685,339 B2
US Patent 6,853,151 B2
US Publ. 2005/0174780 Al
WO Publ. 2006/094346 Al
REJECTIONS4
Feb.3,2004
Feb. 8,2005
Aug. 11, 2005
Sept. 14, 2006
Claims 1-3 and 6-9 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Park. (Final Act. 6.)
4 Claims 35-38 have been allowed. (Final Act. 19.)
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Application 11/939,052
Claims 21, 24--29, and 31-34 are rejected under 35 U.S.C. § 102(a) as
being anticipated by Amor. (Id. at 8.)
Claims 39--40 are rejected under 35 U.S.C. § 102(a) as being
anticipated by Amor. (Id. at 12.)
Claims 41--42 are rejected under 35 U.S.C. § 102(a) as being
anticipated by Amor. (Id. at 14.)
Claims 4--5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Park and Daughtry. (Id. at 16.)
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Park and Leong. (Id. at 17.)
Claims 22-23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Amor. (Id. at 18.)
Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Amor and Leong. (Id. at 18.)
OPil...JION
Claim l5
The Examiner finds that claim 1 is anticipated by Park. (Final Act. 6-
7.) Figure 6 of Park is reproduced below:
5 Claims 2-3 and 6-9 stand or fall with claim 1 with respect to the
anticipation rejection based on Park. (App. Br. 13.)
7
Appeal2015-003023
Application 11/939,052
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FIG. 6 of Park illustrating "an exploded view" of an LED light. (Park i-fi-121,
22.)
Figure 6 of Park shows a LED light having "a cooling fan 2," "[a]
circuit board 3 " "a socket 5 " "a cap 13 " "LEDs 41 " "LED pack 4 " "LED
' ' ' ' '
socket 42," "a plurality of radial partition walls 11," and "a conical body 16
having a cone shape" to which "the LED 41 or the LED pack 4 is attached."
(Park i-fi-129-37 (emphases omitted).) Figure 2 of Park (reproduced below)
shows that LEDs 41 are disposed inside of main body 1 which "is
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Appeal2015-003023
Application 11/939,052
constituted of a conical body 16" in the embodiment shown in Figure 6. (Id.
i-f 37 (emphasis omitted).)
flG. 2
FIG. 2 of Park illustrating "an exploded view" of an LED light. (Park i-f 18.)
As illustrated in Figure 2, "the main body 11 has a ceiling 12" to which "an
LED board 43 with the plurality of LEDs 41" are attached. (Id. i-f 30
(emphasis omitted).)
Appellants do not dispute the finding that Park's "conical body 16"
(emphasis omitted) illustrated in Figure 6 includes an external surface and an
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Application 11/939,052
internal surface. (Final Act. 6; see App. Br. 13.) Appellants do not dispute
that the "slots" defined by partition walls 11 shown in the interior of body 16
are within the interior of body 16. (Final Act. 6; see App. Br. 13.)
Appellants also do not dispute that LEDs 41 are disposed within main body
1 or conical body 16. (App. Br. 13.)
Appellants, however, argue that the Examiner erred in finding that
"the external surface of (16) is on an opposite side relative to the internal
surface, which is any side inside/internal to the conical external surface of
the light engine housing and includes the side surfaces of the slot[ s] and the
interior surface of (16)." (Ans. 3; see App. Br. 13.) Appellants argue that
the internal surface of Park's conical body 16 (having partition walls 11)
does not have an external surface that is "on an opposite side" as recited in
claim 1 of the conical body 16 relative to the internal surface of the conical
body 16. (App. Br. 13; Reply Br. 1-2.)6
Appellants' unelaborated argument does not contend that the claim
term "an opposite side" should have a particular definition and does not
identify reversible error in the Examiner's findings that Park's conical body
16 has an external surface which is "on an opposite side" of an internal
surface that includes LEDs 41.
Appellants' argument that the external surface is not "in contact with
the conical body 16" (App. Br. 13), fails from the outset because the issue is
whether the external surface is "in contact with an internal surface of said
trim element" as recited in claim 1. In re Self, 671F.2d1344, 1348 (CCPA
1982) (holding that "appellant's arguments fail from the outset because ...
they are not based on limitations appearing in the claims").
6 Reply Brief filed January 26 2015 ("Reply Br.").
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Application 11/939,052
In addition, the Examiner finds that Figure 8 of Park (reproduced
below) shows that the external surface of conical body 16 (or main body 1)
is in contact with cap 13.
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FIG. 8 of Park illustrating "a cross-section" of an LED light. (Park i-f 24.)
Because Appellants do not dispute that cap 13 in Park discloses "at
least one trim element" and a "trim element internal space" recited in claim
1 and do not argue that the Examiner erred in evaluating Figure 8 of Park, no
reversible error has been shown. The anticipation rejection of claim 1 is
affirmed.
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Appeal2015-003023
Application 11/939,052
Claim 217
The Examiner finds that claim 21 is anticipated by Amor. (Final Act.
9.) The Examiner annotates Figure 4 of Amor (reproduced below) which
illustrates LED assembly 3 which includes LEDs 32 coupled to a printed
circuit board 34. (Amor p. 6, 11. 24-25.) Each of a plurality of fins 29
"contact an inner surface of the barrel 8." (Id. at p. 6, 11. 29-30.)
~~ .. (.·.··· .. 111(("".:;.;.;o.~
Annotated FIG. 4 of Amor which illustrates "a side sectional view" of a light
apparatus. (Ans. 6; see also Amor p.5, 1. 5.)
Appellants do not argue that Amor discloses every limitation recited
in claim 21 except "a first plane perpendicular to an axis of substantial
symmetry of the trim clement extending through the light engine housing
internal space, the light engine housing, the trim element and at least a first
7 Claims 24-29 and 31-34 stand or fall with claim 21 with respect to the
anticipation rejection based on Amor. (App. Br. 14.)
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Appeal2015-003023
Application 11/939,052
of the light engine housing fins." (App. Br. 15.) Appellants argue that
"[a]ny plane perpendicular to the axis of symmetry of ... the cylindrical
barrel 8, the external thread 9, the flanged head 10, the translucent window
12 and the sealing cap 6 ... is horizontal (in the orientation depicted in Fig.
4)." (Reply Br. 3.) Because "no horizontal line that could be drawn on
Fig[ure] 4 of Amor ... would extend through (a) an internal space in which
one of the LEDs 32 is located and (b) any of the fins 29," Appellants argue
that Amor does not anticipate claim 21. (Id.)
The Examiner argues that annotated Figure 4 shows
a first plane (imaginary, relative, arbitrary) that is perpendicular
to an axis (imaginary, relative, arbitrary) of substantial symmetry
of the trim element (6, 8-10, 12) extending through the light
engine housing internal space [between (34, 38)], the light engine
housing (34, 36, 38), the trim element and at least a first of the
light engine housing fins (29).
(Ans. 5.) The Examiner also finds that claim 21
(Id.)
does not preclude an interpretation where the first plane is
perpendicular to the axis of substantial symmetry, whereby the
axis of substantial symmetry is what extends through the light
engine housing internal space, the light engine housing, the trim
element and at least a first of the light engine housing fins.
We agree with the Examiner that claim 21, as it is currently written,
may be read that it is the "axis of substantial symmetry" that extends
"through the light engine housing internal space, the light engine housing,
the trim element and at least a first of the light engine housing fins" as
recited in claim 21. Appellants' argument that a skilled artisan would
understand that claim 21 excludes such a reading is without evidentiary
support (Reply Br. 2), and we accordingly find that no reversible error has
been shown with regard to the anticipation rejection of claim 21.
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Appeal2015-003023
Application 11/939,052
Claim 398
Independent claim 39 recites:
39. A light engine assembly, comprising:
at least one trim element,
a light engine housing, and
a light engine,
said trim clement comprising a flange region and an
internal space-defining region,
said trim element comprising an internal surface
and an external surface, said external surface of said trim
element on an opposite side of said trim element relative
to said internal surface of said trim clement,
said internal surface of said trim element defining a
trim element internal space,
an entirety of said light engine housing within said
trim element internal space, said light engine housing
comprising an inside surface and an outside surface, said
outside surface of said light engine housing on an opposite
side of said light engine housing relative to said inside
surface of said light engine housing, said outside surface
of said light engine housing in contact with said internal
surface of said trim element, said inside surface of said
light engine housing defining a light engine housing inside
space; and
said light engine comprising at least first and second
solid state light emitters, said light engine within said light
engine housing inside space,
said light engine assembly configured to be
mounted as a recessed light in an opening in a construction
element having a room-side surface that defines a first
plane, with an entirety of said flange region on a first side
of said first plane, and with said internal space-defining
region extending from a second side of said first plane,
8 Claim 40 stands or falls with claim 39 with respect to the anticipation
rejection based on Amor. (App. Br. 17.)
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Application 11/939,052
said trim element defining an opening,9
said flange region extending around said opening,
light emitted by said first and second solid state
light emitters passing through said opening.
(App. Br., Claims App. A-6 (emphasis added).)
The only limitation in dispute is the recited "opening" through which
"light ... pass[es] through." (App. Br. 17.) The Examiner finds that Figure
4 of Amor illustrates "a translucent window 12" and "sealing cap 6" which
defines an opening. (Ans. 6; Amor p. 5, 11. 13-15.) LED assembly 3 "is
located within the thermoplastic housing 4 so as to emit light through the
translucent window." (Amor p. 5, 11. 13-15.)
Appellants, however, argue that "[l]ight emitted from the LEDs 32 is
emitted from within the space that the USPTO is characterizing as an
'opening', and therefore does not 'pass through' the space that the USPTO is
characterizing as an 'opening."' (Reply Br. 4.)
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). Amor discloses LED assembly 3 which
"emit[s] light through the translucent window." (Amor p. 5, 11. 13-15.)
Appellants do not explain why an opening from which light is emitted and
an opening through which light passes through are mutually exclusive.
Appellants point to no reversible error in the Examiner's construction of the
limitation "an opening" or the Examiner's finding that the recited opening is
defined by the translucent window 12 and the sealing cap 6. (See App. Br.
9 We note that claim 39 recites "an opening in a construction element." It is
unclear whether the "opening" defined by "said trim element" is the same as
the "opening in a construction element."
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Application 11/939,052
17; see also Ans. 6.) The anticipation rejection of claim 39 is therefore
affirmed.
Claim 41 10
With regard to the anticipation rejection of independent claim 41,
Appellants assert the same argument as that for claim 29 - namely, Amor
does not disclose "an opening through which light emitted by the LEDs 32
pass." (App. Br. 18.) We affirm the rejection of claim 41 for the reasons
discussed with respect to claim 39. See In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art").
Claims 4-5
Claim 4 depends from claim 1. Claim 4 recites: "wherein said light
engine assembly further comprises a lighting device housing, said lighting
device housing defining a lighting device housing internal space, at least a
portion of said trim element within said lighting device housing internal
space." (App. Br., Claims App. A-1.) Claim 5 depends from claim 4 and
recites: "wherein said trim element comprises a flange portion, said flange
portion extending farther from an axis of said trim element than an outer
surface of said lighting device housing." (Id. at App. Br., Claims App. A-2.)
The Examiner rejects claims 4 and 5 based on the combined teachings
of Park and Daughtry. Figure 1 of Daughtry (reproduced below) illustrates
sparkle light bulb 10 which may be plugged into "receptacle 54," the sparkle
1° Claim 42 stands or falls with claim 41 with respect to the anticipation
rejection based on Amor. (App. Br. 18.)
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Application 11/939,052
light bulb 10 having "light bulb housing 24" with "an outside surface 54."
(Daughtry col. 2, 11. 66----67; 3, 11. 4--7 (emphases omitted).)
FIG, 1
FIG. 1 of Daughtry illustrating a "sparkle light bulb being plugged into a
receptacle." (Daughtry col. 1, 11. 27-29.)
Based on the teaching of Park, including the flange portion at the
outer edge of cap 13 illustrated in Figure 8 of Park, the Examiner finds that a
skilled artisan would have found the "flange portion [which] extend[ s]
farther from an axis of said trim element than an outer surface of said
lighting device housing" recited in claim 5 obvious. (Ans. 8.)
Appellants do not dispute that Figure 8 of Park illustrates a flange
portion but argue that the Examiner erred for describing "exactly what
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Application 11/939,052
combined structure [the Examiner] deems would have been obvious" in light
of the combined teachings. (Reply Br. 6.)
The test for obviousness is, however, "not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference . . . . Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art." In
re Keller, 642 F.2d 413, 425 (CCPA 1981). When, as in this case, "a patent
claims a structure already known in the prior art" and there is no showing
that the improvement (if any) recited in claim 5 "is more than the predictable
use of prior art elements according to their established functions,"
Appellants have not shown that the Examiner committed reversible error in
the obviousness determination. See KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 416, 417 (2007).
Claims 22 & 23 11
Claim 22 depends from claim 21. Claim 22 recites: "wherein said
external surface of said light engine housing and said internal surface of said
trim clement are each substantially frustoconical." (App. Br., Claims App.
A-3.)
The Examiner acknowledges that Amor does not disclose a
"frustoconical" shape as recited in claim 22, but finds that it is within the
general skill of a skilled artisan to implement a change in shape. (Final Act.
18.) Appellants, on the other hand, argue that there is no disclosure in Amor
to provide a reason to change the shape and that the shape change would
require changes to multiple components of Amor' s device such as the
external thread 9 and many others. (App. Br. 22; Reply Br. 6-7.)
11 Claim 23 stands or falls with claim 22 with respect to the obviousness
rejection based on Amor. (App. Br. 22.)
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Application 11/939,052
A change of shape does not make a product nonobvious where the
claimed shape is not of functional significance and accomplishes the same
purpose as the prior art shape. See In re Dailey, 357 F.2d 669, 672-73
(CCP A 1966). Appellants do not show - and the record before us does not
reflect - that the recited "frustoconical" shape is of any functional
significance or serves a unique purpose. The '052 Specification in fact
provides that "[t]he light engine housing can be any desired shape" and that
"[r]epresentative shapes for the light engine housing include cylindrical and
frustoconical." (Spec. 13, 11. 4--5.) 12 The '052 Specification therefore does
not impart any criticality to the recited shape.
Whether a claim is obvious does not depend on whether changing the
shape of a prior art device may require changes to multiple components of
the device. Rather, "[i]f a person of ordinary skill can implement a
predictable variation [of a known work], § 103 likely bars its patentability."
KSR, 550 U.S. at 417. No reversible error has been shown in Examiner's
findings with regard to claim 22.
Remaining Claims
Appellants argue that the rejections of claims 10 and 30 are in error
based on their respective dependency from claim 1 and claim 21. (App. Br.
20, 23.) Appellants have not provided arguments separate from those for the
respective independent claims, and we are not persuaded for the reasons
discussed with respect to claims 1 and 21 from which the remaining claims
respectively depend. Lovin, 652 F.3d at 1357 ("[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
12 We also note that the reference Park discloses an LED light having "a
conical body" shape. (Park i-f 12, FIG. 6.)
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Application 11/939,052
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art").
DECISION
The Examiner's rejections of claims 1-10, 21-34, and 39--42 are
affirmed.
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
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