Ex Parte Pickard et al

Patent Trial and Appeal Board

Jan 24, 2018

13026495 (P.T.A.B. Jan. 24, 2018)

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.
13/026,495 02/14/2011 Paul Kenneth PICKARD 931 125 NP 4991
25191 7590 01/26/2018
BURR & BROWN, PLLC
PO BOX 7068
SYRACUSE, NY 13261-7068
EXAMINER
GRAMLING, SEAN P
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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):
tpreston @burrandbrown.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL KENNETH PICKARD,
GERALD H. NEGLEY, ANTONY PAUL VAN DE VEN, and
NICHOLAS W. MENDENDORP JR.
Appeal 2017-005157
Application 13/026,495* 1
Technology Center 2800
Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—6, 8—12, 14, 20, 22, and 23. We have
jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Cree, Inc. Appeal Br.
1.
Appeal 2017-005157
Application 13/026,495
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a lighting device in
which light emitting diode chips are spaced unevenly such that certain
criteria reflected in claim lare satisfied. Appeal Br. 12. The light emitters
could, for example, provide lighting for a home or business. Spec. 1:4—12.
Claim 1, reproduced below with emphasis added to certain key recitations, is
illustrative of the claimed subject matter:
1. A lighting device, comprising:
at least two light emitting diode chips; and
at least a first optical device having at least a first light exit
surface,
the first optical device configured to enhance uniformity
of light emitted from the light emitting diode chips and emerging
from the first light exit surface,
an average distance between each light emitting diode
chip and its nearest neighboring light emitting diode chip is
less than the value of (a surface area of the first light exit
surface divided by a total number of light emitting diode
chips in the lighting device)172, divided by five.
Appeal Br. A-l (Claims App’x). The two other independent claims on
appeal, claims 8 and 20, also recite the “average distance . . . divided by
five.” Id. at A-2, A-3.
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
2 In this opinion, we refer to the Final Office Action dated October 5, 2015
(“Final Act.”), the Appeal Brief filed June 27, 2016 (“Appeal Br.”), the
Examiner’s Answer dated November 29, 2016 (“Ans.”), and the Reply Brief
filed January 30, 2017 (“Reply Br.”).
2
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Application 13/026,495
Hildenbrand et al.
(hereinafter “Hildenbrand”)
Blume et al.
(hereinafter “Blume”
Chang
US 6,578,990 B2 June 17, 2003
US 6,964,489 B2 Nov. 15, 2005
US 2009/0323326 Al Dec. 31, 2009
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1—4, 6, 20, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Blume. Final Act. 2.3
Rejection 2. Claims 5, 8—12, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Blume in view of Chang. Id. at 6.
Rejection 3. Claim 22 under 35 U.S.C. § 103(a) as unpatentable over
Blume in view of Hildenbrand. Id. at 10.
ANALYSIS
Appellants present separate arguments for four claim groups: claims
1—4, 6, and 20 (Appeal Br. 12), claim 23 {id. at 20), claims 5, 8—12, and 14
{id. at 21) and claim 22 {id. at 24). The issues raised by Appellants are
common to claims 1 and 23. Therefore, consistent with 37 C.F.R. §
41.37(c)(l)(iv)(2013), we focus primarily on claims 1 and 23.
Rejection 1, claims 6, and 20. The Examiner rejects claims 1—4,
6, and 20 as unpatentable as obvious over Blume. Final Act. 2. Because it
is a matter of some dispute between the Appellants and the Examiner, we
begin our analysis by addressing the recitation “average distance . . . divided
3 As further explained below, we understand that the Examiner’s rejection of
claim 23 is based on both Blume and Chang.
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by five” recited in each independent claim. Appellants explain that the
recitation “quantifies non-uniformity.” Appeal Br. 13. In the Reply Brief,
Appellants clarify that the recitation quantifies “non-uniformity of the
positioning of light emitting diode chips relative to the first light exit
surface.” Reply Br. 2. To illustrate, Appellants explain that if 100 chips
were distributed uniformly within a 10 x 10 area, the average distance
between one chip and its closest neighboring chip (exactly 1) would be
greater than 0.2, which is “the value of (a surface area of the first light exit
surface divided by a total number of light emitting diode chips in the lighting
device)72, divided by five” because the area is 100 (10 x 10), the number of
chips is 100, and the (square root of 100 divided by 100) divided by five.
Appeal Br. 16. Merely adding more or less chips does not necessarily
change the outcome of the comparison because adding more chips decreases
the average distance between chips (the left side of the recited comparison),
but also increases the total number of chips (in the denominator of the right
side of the comparison). Thus, where chips are uniformly distributed
relative to the area of the exit surface, the “average distance . . . divided by
five” recitation is not satisfied.
Appellants graphically depict non-uniformity with chips positioned in
clusters. Appellants’ graphic depiction is reproduced below.
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Appellants depict a 10 x 10 grid of boxes with clusters of chips in ten of the
lxl boxes. Appeal Br. 16—17. Appellants explain that, in this example, the
average distance between a chip and its nearest neighbor is 0.1 and that the
equation recited by Appellants’ claims is satisfied. Id. at 17.
Appellants’ Specification depicts an embodiment consistent with the
clustered graphic depiction reproduced above. Figures 1 and 2 of the
Specification are reproduced below.
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Application 13/026,495
Figures 1 and 2 depict a lighting device 10 according to Appellants’
Specification. Spec. 14:12—15. Figure 1 is a sectional side view of lighting
device 10 that shows the lighting device’s exit surface 18. Id.', see also id. at
53:1—2. Figure 2 is a sectional view of lighting device 10 along plane 2-2 in
Figure 1 that further depicts the clustered locations of solid state light
emitters 12 and 13. Id. at 14:12—15, 24:28—25:5. The Specification explains
that this configuration of light emitters “makes the brightness of light more
uniform across the exit surface 18 of the optical device 15.” Id. at 53:1—2.
The Examiner emphasizes that the recited “average distance . . .
divided by five” relationship is “incredibly broad” and finds that there are a
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near infinite number of ways to space light emitting diode chips to
successfully achieve the recited relationship. Ans. 3^4. The Examiner is
correct that many different arrangements are possible. As just one example,
a ten by ten exit surface having two light emitting chips spaced a distance of
one apart would meet the relationship regardless of where that “cluster” of
two light chips is located relative to the exit surface.4
The Examiner further notes that the distance between light emitting
diode chips could be uniform and still meet the recited relationship. Ans. 4.
Appellants do not dispute this point but instead emphasize that the recitation
relates to chip placement relative to the exit surface. Reply Br. 2. We agree
with Appellants that, based on the inputs for the recited “average distance
. . . divided by five” (the inputs being average distance between chips,
surface area of exit surface, and total number of chips), the recitation
evaluates, to some degree, the extent to which chips are clumped as opposed
to being evenly spread out relative to the exit surface.
Turning to the rejection of claim 1, the Examiner finds that Blume
teaches the structural aspects of claim 1. Final Act. 2. The Examiner finds
that Figures 1 and 2 of Blume appear to illustrate the “average distance . . .
divided by five” recitation of claim 1 but finds that Blume does not
explicitly teach this recitation. Id. at 3. The Examiner concludes that it
would have been obvious for one of ordinary skill in the art to arrange
Blume’s lights in a manner that satisfies this relationship because doing so
4 The average distance between each light emitting diode chip and its nearest
neighboring light emitting diode chip [1] is less than the value of (a surface
area of the first light exit surface [10 x 10 = 100] divided by a total number
of light emitting diode chips in the lighting device [2] [100 divided by 2 =
50])1/2 [square root of 50 = 7.1], divided by 5 [7.1 divided by 5 = 1.42],
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would require only routine skill and would involve merely discovering
optimum and workable ranges to achieve the stated objectives of high and
uniform light intensity across the lighting device. Id.
Figures 1 and 2 of Blume are reproduced below.
,9
Blume’s Figure 1 shows a section through one exemplary embodiment, and
Figure 2 shows a plan view of the reflector in the exemplary embodiment
shown in Figure 1. Blume 3:39-44. Liquid crystal display 9 of Blume
provides an exit surface for each light emitting diode 1. Id. at 3:54-4:43.
Appellants generally argue that Blume does not teach or suggest the
“average distance . . . divided by five” recitation of claim 1. Appeal Br. 18—
20. The Examiner, however, finds that the lighting device of Blume, as
depicted in Figure 2, is arranged identically to Appellants’ lighting device
as, for example, depicted in Appellants’ Figure 2. Ans. 2—3. Appellants
argue that we cannot assume the Figures of Blume are drawn to scale.
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Appeal Br. 20. We agree with Appellants that “[ajbsent any written
description in the specification of quantitative values, arguments based on
measurement of a drawing are of little value.” In re Wright, 569 F.2d 1124,
1127 (C.C.P.A. 1977). A prior art reference, however, “must be considered
not only for what it expressly teaches, but also for what it fairly suggests.”
In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994) (internal quotes and citation
omitted). What a reference suggests necessarily includes any suggestion
flowing from the reference’s drawings. In re Wright, 569 F.2d at 1127
(affirming Board’s affirmance of Examiner’s rejection based, in part, on
what was shown by Figure 1 of Pennie reference).
Here, Figure 2 of Blume depicts orientating the light emitting diode
chips in clusters relative to the area of the exit surface where each light
emitter is closer to the nearest neighboring chip than to the nearest
neighboring cluster. Blume, therefore, generally suggests clustering of the
light emitting diode chips. Because Blume’s configuration in Figure 2 is
similar to Figure 2 of the Specification, Blume’s arrangement of light
emitters suggests satisfaction of the “average distance . . . divided by five”
recitation. Thus, we agree with the Examiner’s finding that Blume’s Figure
2 suggests the disputed recitation of claim 1. Ans. 6.
Appellants argue that Blume teaches uniform light intensity and that
this teaching would encourage positioning light emitting diodes 1 in Blume
“more uniformly across the emission surface” so that the average distance
between a light and its nearest neighboring light would be higher. Appeal
Br. 18—19. Appellants’argument is not supported by the evidence. Rather,
Blume teaches that the configuration of Figures 1 and 2, discussed above,
“provide a uniform light distribution.” See, e.g., Ans. 6; Blume 3:62—67. In
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this regard, the benefit of clustering in Blume is the same as the benefit of
clustering taught by Appellants’ Specification. Spec. 52—53 (explaining how
device with clustered light emitters “makes the brightness of light more
uniform across the exit surface 18”).
Appellants also argue that Blume does not teach that average distance
between each light emitting diode chip and its nearest neighbor is a result-
effective variable. Appeal Br. 19. We again disagree. Blume teaches that
the structures between its light emitting diode chips (i.e., webs 3 and 7, lens
raster 4, oblique surfaces 6 of reflector 5) serve to provide uniform light
distribution. Blume 3:62-4:3. The configuration and size of these structures
between clusters of chips (as depicted, e.g., in Blume Figures 1 and 2)
dictate a relatively small space between a diode chip and its nearest neighbor
relative to the area of the first light exit surface. We thus agree with the
Examiner that, aside from Figure 2 directly suggesting a configuration that
satisfies the “average distance . . . divided by five” recitation, Blume also
teaches general conditions where diode chips must be grouped between
reflecting structures. Blume thus, in effect, teaches that the space between
chips relative to the area of the first exit surface effects light uniformity.
Appellants do not present any argument that determining the appropriate
size and geometry of Blume’s structures to achieve uniform brightness
would involve more than routine skill in the art. Thus, the Examiner’s
result-effective variable rationale (Final Act. 3) further supports a conclusion
of obviousness. In re Alien, 220 F.2d 454, 456 (CCPA 1955) (“where the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”).
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Because Appellants’ arguments do not identify reversible Examiner
error, we sustain the Examiner’s rejection of claim 1. We also sustain the
rejection of claims 2—4, 6, and 20 because Appellants argue those claims as a
group with claim 1. Appeal Br. 12.
Rejection 1, claim 23. The Examiner addresses claim 23 as part of
Rejection 1, but the explanation of the rejection of claim 23 relies in part on
the teachings of Chang. Final Act. 2, 5—6. We thus understand the
Examiner as rejecting claim 23 under 35 U.S.C. § 103(a) as unpatentable
over Blume in view of Chang. To the extent this mislabeling constitutes
Examiner error, the error is harmless because Appellants make no arguments
with regard to the mislabeling or with regard to the Examiner’s reliance on
Chang in rejecting the claim.
Claim 23 recites:
A lighting device as recited in claim 1, wherein
light emitted from the lighting device and emerging from each of
at least 1000 non-overlapping conceptual square regions of the
first light exit surface having a color hue that is within 0.01 unit
of a first color point on a 1976 CIE Chromaticity Diagram and a
brightness that is within 5 percent of a first brightness when
energy is supplied to the lighting device, each of the at least 1000
non-overlapping conceptual square regions comprising 0.08
percent of a total surface area of the first light exit surface.
Appeal Br. A-4 (Claim App’x). The Examiner finds that the exit surface of
Blume’s device as depicted in Figures 1—3 can be conceptually divided into
1000 non-overlapping conceptual square regions and that light emitted from
each region would have a hue and brightness as recited in claim 1. Final
Act. 5—6. With regard to brightness, the Examiner makes findings regarding
the teachings of Chang and relies on those findings to reach an obviousness
conclusion. Id.
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Appellants argue that Blume is a device for a graphical display and
therefore would be configured to produce images rather than produce
uniform color and uniform brightness. Appeal Br. 20—21. To address this
argument, we first emphasize that claim 23 is written in terms of the
function of the claimed lighting device rather than the lighting device’s
structure. In other words, claim 23 attempts to define an invention based
upon qualities of the light emitted by the lighting device rather than further
defining the physical structure of the lighting device itself.
While a patent applicant may recite features structurally or
functionally, “choosing to define an element functionally, i.e., by what it
does, carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). In particular, where there is reason to believe that a prior art structure
is inherently capable of performing the claimed function, the burden shifts to
the applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. See id.', In re Hallman, 655
F.2d 212, 215 (CCPA 1981) (affirming rejections where applicant failed to
show that prior art structures were not inherently capable of functioning as
claimed invention).
Here, the Examiner’s finding that the Blume device depicted by
Figures 1—3 is capable of emitting light of uniform hue and brightness across
1000 non-overlapping conceptual square regions (see, e.g., Ans. 8) is
supported by a preponderance of the evidence. With regard to hue, Blume
teaches that its display may be monochromatic. Blume 1:44-49. A person
having ordinary skill in the art would have had reason to believe that
Blume’s monochromatic display would have been capable of producing the
claimed uniform hue by lighting the entire screen in one color. See, e.g., id.
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at 1:30—32 (teaching that Blume provides uniform light intensity distribution
over the entire image area). With regard to brightness, Blume explicitly
teaches uniform light intensity. See, e.g., id. Moreover, the Examiner
makes findings and reaches an obviousness conclusion based on Blume and
Chang regarding brightness that Appellants do not dispute on appeal.
Appeal Br. 20-21.
Appellants’ arguments do not persuasively establish that the Blume
lighting device is incapable of emitting light of uniform hue and brightness.
Accordingly, Appellants do not establish Examiner error with regard to
claim 23, and we sustain the Examiner’s rejection.
Rejections 2 and 3. Appellants’ arguments with regard to claims 5, 8—
12, and 14 (Appeal Br. 21—23) and with regard to claim 22 (id. at 24) are
substantively the same as those addressed above. Appeal Br. 20—21. We
therefore sustain the Examiner’s rejection of those claims for the reasons
discussed above.
DECISION
For the above reasons, we affirm the Examiner’s rejections of
claims 1—6, 8—12, 14, 20, 22, and 23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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