Ex Parte Sander et al

Patent Trial and Appeal Board

May 25, 2018

12957417 (P.T.A.B. May. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/957,417 12/01/2010
69316 7590 05/30/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Avner Sander
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.
330903.01 1064
EXAMINER
LUONG, HENRY T
ART UNIT PAPER NUMBER
2844
NOTIFICATION DATE DELIVERY MODE
05/30/2018 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):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AVNER SANDER, GIORA Y AHA V, ASAP
PELLMAN, SHLOMO FELZENSHTEIN, ELI LARRY,
and DAVID MANDELBOUM
Appeal2017-008190
Application 12/957,417
Technology Center 2800
Before TERRY J. OWENS, MARK NAGUMO, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-17 and 21-23. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim an apparatus for providing light pulses. Claim 1
is illustrative:
1. An apparatus for providing light pulses, the apparatus
compnsmg:
Appeal2017-008190
Application 12/957,417
a configuration of coplanar electrodes comprising at least
one first electrode configured to form a recess and a second
electrode that is a heat sink at least a portion of which seats in
the recess; and a light source mounted to and electrically
connected to the at least a portion of the second electrode that
seats in the recess and electrically connected to the at least one
first electrode so that current that powers the light source flows
parallel to a same first direction in each of the at least one first
electrode and flows in a second direction substantially anti-
parallel to the first direction in the second electrode. [lJ
Roberts
Oshio (Oshio '746)
Chang
Nishihara
Takeuchi
Oshio (Oshio '699)
Kumar
The References
US 6,335,548 Bl
US 2006/0249746 Al
US 2008/0073738 Al
US 2009/0236622 Al
US 2010/0123161 Al
US 7,888,699 B2
Jan. 1,2002
Nov. 9, 2006
Mar. 27, 2008
Sept. 24, 2009
May 20, 2010
Feb. 15, 2011
US 8,362,703 B2 Jan.29,2013
(filed Dec. 22, 2008)
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
15, 16, 21, and 23 over Oshio '746 in view of Roberts, claims 2--4 over
Oshio '746 in view of Roberts and Kumar, claims 5 and 6 over Oshio '746
in view of Roberts and Nishihara, claims 7-14 and 22 over Oshio '746 in
1 The Appellants' Specification states that the first and second
electrodes (30, 40) advantageously are parallel and that their current flows
are in opposite directions (Spec. ,r 17; Fig. 1 ), and the Appellants' original
claim 1 recites that "current that powers the light source flows into and out
from the light source in respectively opposite directions along adjacent
conducting elements." The Appellants' disclosure, therefore, indicates that
the claim term "anti-parallel" means "opposite."
2
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Application 12/957,417
view of Roberts, Takeuchi and Oshio '699 and claim 17 over Oshio '746 in
view of Roberts and Chang.
OPINION
We reverse the rejections. We need address only the sole independent
claim, i.e., claim 1.
Oshio '746 shows in Figure 14A a plan view of a conventional light
emitting device (i-f 5).
805 --
809
(
\
FIG.14A
803
j
The semiconductor light emitting element 802 is
mounted on the lead 806. An electrode (not shown) of the
semiconductor light emitting element 802 and the lead 805 are
connected to each other by a wire 809. When en [sic] electric
power is supplied to the semiconductor light emitting
element 802 through those two leads 805, 806, the
semiconductor light emitting element 802 emits light [(i-f 8)].
Roberts shows in Figure 3 a semiconductor optical radiation device's
leadframe (201) comprising a heat extraction member (204) with a
depression or cup (301) containing two semiconductor optical radiation
emitters (202) each having its top bond pad electrically connected by a wire
3
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Application 12/957,417
bond (211) to an electrical lead (210) which is electrically isolated from the
heat extraction member (204) and is of opposite polarity to an electrical
lead (209) which is electrically connected to the base of each semiconductor
optical radiation emitter (202) and is an integral extension of the heat
extraction member (204) (col. 9, 11. 3-16; col. 12, 11. 47---61; col. 13, 1. 52-
col. 14, 1. 16).2
Roberts likewise shows in Figures 7 a and 7b a leadframe in which
both electrical leads (209,210) are on the same side of the heat extraction
member (204).
2 Tie bars (303) mechanically connect the heat extraction member (204) and
the electrical leads (209, 210) to retain their relative positions during device
assembly and then are removed to electrically isolate the electrical
leads (209, 210) ( col. 13, 11. 52-53, 57-58; col. 25, 1. 66 - col. 26, 1. 3;
col. 26, 11. 52-55; Fig. 4).
4
Appeal2017-008190
Application 12/957,417
Establishing a prima facie case of obviousness requires an apparent
reason to modify the prior art as proposed by the Examiner. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
The Examiner concludes (Final Act. 5):
It would have been obvious to one of ordinary skill in
the art at the time the invention was made to modify the device
of Oshio ['746] as taught by Roberts to configured electrodes
having anti-parallel currents spaced in such a way since this
maintains standardization with many common electrical device
configurations and the heat sink transfers heat out of the
encapsulation to the ambient environment via a path having a
5
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Application 12/957,417
location separate from the points of entry into the encapsulation
of the electrical leads. Thus the heat extraction forms a conduit
that is substantially independent of the electrical conduits to and
from the device (col9 ln40-45)_[3J
The Examiner does not establish that Roberts' electrode configuration
maintains standardization with many common electrical device
configurations. 4 Nor does the Examiner explain how Oshio '746's device
would be modified in view of Roberts to arrive at the Appellants' claim 1 's
electrode configuration. The modification apparently would require
maintaining the U-shaped configuration of Oshio '746's lead 805 to meet the
Appellants' claim 1 's recess requirement, placing Roberts' heat extraction
member (204) inside the recess and making Roberts' lead 806 integral with
the heat extraction member (204) to meet the Appellants' claim requirement
of a second electrode that is a heat sink at least a portion of which seats in
the recess, and extending lead 806 widthwise past lead 805 and orienting it
in the opposite direction such that current passes through it and lead 805 in
opposite (anti-parallel) directions. The Examiner does not establish that the
applied references would have provided one of ordinary skill in the art with
an apparent reason to make such a modification.
3 Roberts discloses that "the heat extraction member 204 forms the dominant
thermal conduit to and from the semiconductor optical emitter 202 within
the device 200, a conduit that is substantially independent of the electrical
conduits to and from the device" ( col. 9, 11. 3 7--45).
4 Roberts discloses that the heat extraction member (204)' s "dimensions
ensure compatibility with standard auto-insertion equipment and standard
mounting and heat-sink components" (col. 9, 11. 46-57), but this disclosure
pertains to the heat extraction member (204), not the electrode configuration.
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Application 12/957,417
The Examiner concludes that "it would have been obvious to one of
ordinary skill in the art at the time the invention was made to modify
Oshio '746 as taught by Robert[s] to orient the leads as shown in Fig. 7a, 7b
where all the electrodes are on one side ( col2 ln20-25) and additionally
having an electrode/leadframe that has a(n) integral extension/function of a
heat sink since the configuration of leads were formed from a single piece of
copper (fig3, col27 ln30-35) for efficiency in automated high speed mass
production, soldering and automated insertion" (Ans. 3).
Roberts exemplifies forming the three Figure 3 leads (209,210) from
a single piece of copper such that the middle lead (209) is integral with the
heat extraction member (204) and the outer leads (210) are electrically
isolated (col. 27, 11. 7-11, 25-28). Roberts' disclosures relied upon by the
Examiner in support of the finding that Roberts' Figure 7 a/7b 's structure
having all electrical leads (209,210) on one side of the heat extraction
member (204), one of the electrical leads (209) being integral with the heat
extraction member (204), provides "efficiency in automated high speed mass
production, soldering and automated insertion, " are that in prior art devices
"[ a ]utomated processing via mainstream equipment and procedures
contributes to low capital cost, low defect rates, low labor cost, high
throughput, high precision, high repeatability and flexible manufacturing
practices" ( col. 2, 11. 13-17), "[ t ]wo of the most important steps in modem
electronic assembly processes are high-speed automated insertion and mass
automated soldering" (col. 2, 11. 21-23), and "electrically and thermally
conductive metal leads must extract a majority of the heat to ambient by the
mechanism of conduction" (col. 5, 11. 12-15), and in Roberts' device "[b]y
varying the number of electrical leads [209, 21 OJ, the orientation of the
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Application 12/957,417
electrical leads, employing different lead bend configurations, varying the
size, shape, and orientation of the heat extraction member 204, using
multiple emitters 202 of various types, and varying the encapsulant
configuration 203 it is possible to configure the present invention for use in
side-looker configuration, end-looker configuration and as a through-hole
device or surface-mount device" (col. 29, 11. 2-10) (Ans. 3). The Examiner
does not establish that the prior art features are characteristics of Roberts'
device or that the prior art features and Roberts' device variations would
have provided one of ordinary skill in the art with an apparent reason to
modify Oshio '746's device to arrive at the electrode configuration required
by the Appellants' claim 1.
The Examiner, therefore, has not established a prima facie case of
obviousness of the Appellants' claimed apparatus.
DECISION
The rejections under 35 U.S.C. § 103 of claims 1, 15, 16, 21, and 23
over Oshio '746 in view of Roberts, claims 2--4 over Oshio '746 in view of
Roberts and Kumar, claims 5 and 6 over Oshio '746 in view of Roberts and
Nishihara, claims 7-14 and 22 over Oshio '7 46 in view of Roberts, Takeuchi
and Oshio '699 and claim 17 over Oshio '746 in view of Roberts and Chang
are reversed.
The Examiner's decision is reversed.
REVERSED
8