Ex Parte Tanaka et al

Patent Trial and Appeal Board

Feb 28, 2017

13587259 (P.T.A.B. Feb. 28, 2017)

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.
13/587,259 08/16/2012 Toshiya TANAKA 062847.00007 2348
30752 7590 03/02/2017
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
03/02/2017 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 TOSHIYA TAKANA,
AKIKO SAITO, and HITOSHI KAWANO
Appeal 2015-007109
Application 13/587,259
Technology Center 2800
Before MARK NAGUMO, GEORGE C. BEST, and JEFFREY R. SNAY,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, 4, and 8 of Application
13/587,2591 under 35 U.S.C. § 103(a) as obvious. Final Act. (July 17,
2014). Appellants2 seek reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6.
1 The ’259 Application is a continuation of U.S. Application No.
12/867,134. The ’134 Application was the subject of our decision in Ex
parte Tanaka, No. 2015-005925, 2017 WL 476026 (January 31, 2017)
(available at http://bit.ly/21PsWy 1).
2 Toshiba Lighting & Technology Corp. and Kabushiki Kaisha Toshiba are
identified as the real parties in interest. Appeal Br. 2.
Appeal 2015-007109
Application 13/587,259
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’259 Application describes a light-emitting module in which
light-emitting elements such as LEDs are arranged. Spec. 12. One or more
of these light-emitting modules may be used as part of a lighting apparatus.
Id.
Claim 1 — the only independent claim on appeal — is representative
of the ’259 Application’s claims and is reproduced below with the disputed
limitations italicized:
1. A lamp device comprising:
a substrate having a surface, at least a portion of an outer
edge of the substrate being shaped like a part of a circle;
a heat dissipating member mounted on the surf ace of the
substrate;
a plurality of lighting elements mounted on a first portion
of the substrate, the first portion being different from the
surface on which the heat dissipating member is mounted,
wherein the plurality of lighting elements are mounted in a
ring-shaped orientation and symmetrically along at least a first
axis and a second axis, wherein the first axis is perpendicular to
the second axis;
a lighting circuit component, including a plurality of
electronic components, configured to make up a constant
current circuit, the plurality of lighting elements being
interconnected by wiring arranged on the substrate, wherein the
lighting circuit component including the plurality of electronic
components is mounted on a second portion of the substrate, the
second portion being different from the surface on which the
heat dissipating member is mounted and the second portion
located between the first portion and the outer edge of the
substrate, wherein the plurality of electronic components are
different from the wiring;
2
Appeal 2015-007109
Application 13/587,259
a reflector member configured to surround the plurality
of lighting elements such that light from the plurality of lighting
elements is directed in one or more specified directions and
configured to have a mounting opening and a radiating opening,
the lighting circuit component being mounted on the second
portion of the substrate such that, in a direction parallel to the
surface on which the heat dissipating member is mounted, the
lighting circuit component [is] placed between a
circumferential edge of the mounting opening and a
circumferential edge of the radiating opening, and such that the
circumferential edge of the mounting opening separates the
plurality of lighting elements from the lighting circuit
component including the plurality of the electronic components',
and
a body having a surrounding wall, the body configured to
receive the substrate and the reflector such that an outer edge of
the heat dissipating member, in the direction parallel to the
surface on which the heat dissipating member is mounted, is
disposed inwardly of an inner periphery of the surrounding
wall, and such that the lighting circuit component is positioned
closer to a light emitting direction side than the heat dissipating
member.
Br. 12—13 (Claims App.).
REJECTION
On appeal, the Examiner maintains the following rejections
1. Claims 1, 2, 4, and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mondloch,3 Reisenauer,4 and
Kuwabara.5 Final Act. 2.
3 US 2007/0121328 Al, published May 31, 2007.
4 US 6,161,910, issued December 19, 2000.
5 US 7,238,967 B2, issued July 3, 2007.
3
Appeal 2015-007109
Application 13/587,259
DISCUSSION
Appellants present substantive argument for reversal of the rejection
at issue with respect to claim 1 only. See Br. 6—10. Claims 2, 4, and 8 are
alleged to be patentable by virtue of their dependence from claim 1. Id.
Thus, we limit our discussion to claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Claims 2, 4, and 8 stand or fall with claim 1. Id.
Appellants argue that the rejection of claim 1 should be reversed,
because the Examiner failed to establish a prima facie case of obviousness.
In particular, Appellants argue that the combination of Mondloch,
Reisenauer, and Kuwabara does not describe or suggest two limitations set
forth in claim 1: (1) the location of the lighting circuit component relative to
the portion of the substrate on which light-emitting elements are mounted
and the mounting opening of the reflector member, Br. 6—9; and (2) the use
of multiple LEDs within a single reflector member, id. at 9—10. We address
Appellants’ arguments seriatim.
First, Appellants argue that the combination of asserted references
neither describes nor suggests mounting a lighting circuit component on a
portion of the substrate such that, in a direction parallel to the surface on
which the heat dissipating member is mounted, the lighting circuit
component is placed between a circumferential edge of the mounting
opening and a circumferential edge of the radiating opening of the reflective
member. Br. 7.
4
Appeal 2015-007109
Application 13/587,259
We are not persuaded by this argument. We begin by discussing an
embodiment of Appellants’ claimed invention. We reproduce Figure 4 from
the ’259 Application’s Specification below:
Figure 4 is a diagram illustrating the structure of an embodiment of a
lighting apparatus according to Appellants' invention. Spec 17. In this
embodiment, lighting module 1 comprises lighting elements 3 mounted in
the central surface portion of substrate 2. Id. ]f 24. Reflector 13 is attached
to lighting module 1. Id. 136. The upper end of reflector 13 constitutes
mounting opening 13a and the lower and constitutes radiating opening 13b.
Id. Lighting circuit components 4 and connector 5 are mounted on a second
portion of the substrate 2. Mounting opening 13a separates light-emitting
elements 3 from lighting circuit components 4. Id. 137. Furthermore,
lighting circuit components 4 are located on the substrate 2 such that they
cannot be seen from the front surface side of reflector 13. Id.
Claim 1 reads, in relevant part:
A lamp device comprising: ... A reflector member
configured to surround the plurality of lighting elements . . .
and configured to have a mounting opening and a radiating
5
Appeal 2015-007109
Application 13/587,259
opening, the lighting circuit component being mounted on the
second portion of the substrate such that in a direction parallel
to the surface on which the heat dissipating member is
mounted, the lighting circuit component [is] placed between the
circumferential edge of the mounting opening and a
circumferential edge of the radiating opening . . .
In rejecting claim 1, the Examiner found that Kuwabara describes a
lamp device in which a lighting circuit component is placed between an edge
of the mounting opening and in edge of the radiating opening such at the
edge of the mounting of opening separates the lighting element from the
lighting circuit component. Final Act. 4 (citing Kuwabara Fig. 6; col. 5,
11. 45-55).
Appellants argue that this finding is erroneous because the Examiner’s
reliance upon Kuwabara’s Figure 6 is misplaced because Figure 6 is not
indicated as being to scale. Br. 8.
This argument is not persuasive because the Examiner is not relying
upon Kuwabara’s Figure 6 to derive quantitative or numerical information.
The Examiner’s use of Figure 6 is limited to its depiction of the relative
arrangement various components of the lamp device. As the Examiner
found, Final Act. 4, Answer 3 — 5, Figure 6 clearly depicts the claimed
structure. Appellants have not explained what distortions, if any, the person
of ordinary skill would have perceived in the drawing that would make the
Examiner’s finding regarding the depicted spatial relationship suspect.
Thus, the Examiner’s reliance upon Kuwabara as describing or suggesting
the claim limitation at issue is not misplaced. See In re Seid, 161 F.2d 229,
231 (CCPA 1947) (“[A]n accidental disclosure, if clearly made in a drawing,
is available as a reference.”); In re Mraz, 455 F.2d 1069, 1072 (CCPA
1972) (explaining that patent drawings can be dispositive even as to features
6
Appeal 2015-007109
Application 13/587,259
unexplained by the specification); In re Wagner, 63 F.2d 987, 988 (CCPA
1933) (“While it is true that drawings may not always be relied upon for
anticipation of a later application, it is also true that, if a drawing clearly
suggest to one skilled in the art at the way in which the result sought is
accomplished by a later applicant, it is immaterial whether the prior
patentee’s showing was accidental or intentional.” (internal citations
omitted)).
Second, Appellants argue that the Examiner erred by finding that the
combination of asserted references describes or suggests the use of a
plurality of light-emitting elements separated from lighting circuit
components by a circumferential edge of a reflector mounting opening. Br.
9—10. We are not persuaded to reverse the rejection of claim 1 by this
argument.
As the Examiner found, Reisenauer describes a lighting device that
includes a plurality of lighting elements in a single lighting device. Final
Act. 3. The Examiner further found that
it would have been obvious to one of ordinary skill in the art to
have duplicated the LEDs taught by Kuwabara et al. such that a
plurality of LEDs were located in a single mounting opening of
a reflector. One of ordinary skill in the art would have been
motivated to have utilized a plurality of LEDs for the purpose
of increasing the light output.
Final Act. 4 — 5.
In view of these findings, we cannot say that the Examiner reversibly
erred by concluding that the use of a plurality of LEDs within a single
reflector would have been obvious to a person having ordinary skill in the art
at the time of the invention.
7
Appeal 2015-007109
Application 13/587,259
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1, 2,
4, and 8 of the ’259 Application.
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
8