Ex Parte VAN DE VEN et al

Patent Trials and Appeals Board

May 15, 2019

13022142 - (D) (P.T.A.B. May. 15, 2019)

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.
13/022,142 02/07/2011 Antony Paul VAN DE VEN 931_104NP 6108
25191 7590 05/17/2019
BURR & BROWN, PLLC
PO BOX 869
FAYETTEVILLE, NY 13066
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
05/17/2019 ELECTRONIC
EXAMINER
FAROKHROOZ, FATIMA N
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 ANTONY PAUL VAN DE VEN, GERALD H. NEGLEY, and
IAN DARLEY
Appeal 2018-006698
Application 13/022,1421
Technology Center 2800
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 21—28, 30-33, 53, 59, and 60.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 “Appellant” refers to the named inventors, and the real party in interest is
identified as Cree, Inc. (Appeal Br. 1).
Appeal 2018-006698
Application 13/022,142
Independent claim 28 below is illustrative of the subject matter on
appeal (emphasis added):
28. A lighting device, comprising:
at least a first light source; and
at least first and second heat dissipation elements,
any line that passes through a center of the first light
source and a point on a hemisphere whose circular edge is (1)
centered on the center of the first light source and (2) on a
plane that is perpendicular to an axis of the lighting device,
defines an angle of not more than 45 degrees relative to at least
one line that passes through the center of the first light source
and at least one point on a heat dissipation element of the
lighting device, and passes within one inch of at least one point
on a heat dissipation element of the lighting device,
an ambient medium that is outside the lighting device can
travel between the first heat dissipation element and the second
heat dissipation element to the first light source,
the first heat dissipation element having at least a first
substantially flat surface,
the second heat dissipation element having at least a
second substantially flat surface.
Appeal Br. A-2—A-3 (Claims App.)
The Examiner maintains the following rejections:2
(a) claims 28 and 603 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite;
2 We refer to the Specification filed Feb. 7, 2011 (“Spec.”), the Final Office
Action dated Nov. 23, 2016 (“Final Act.”), the Appeal Brief filed Dec. 15,
2017 (“Appeal Br.”), the Examiner’s Answer dated Apr. 26, 2018 (“Ans.”),
and the Reply Brief filed June 15, 2018 (“Reply Br.”).
3 Claims 1, 2, 4—8, 10-20, 34-47, 49—52, and 54-48 were canceled by an
after-Final amendment filed Nov. 6, 2017, which was entered via an
Advisory Action dated Nov. 17, 2017.
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Application 13/022,142
(b) claims 21, 24, and 53 under 35 U.S.C. § 103(a) as being
unpatentable over Klaus (US D439,697 S, issued Mar. 27, 2001) (“Klaus”),
in view of Piepgras et al. (US 2005/0285547 Al, published Dec. 29, 2005)
(“Piepgras”) and Glassford (US 5,209,562 A, issued May 11, 1993)
(“Glassford”);
(c) claims 28 and 30 under 35 U.S.C. § 103(a) as being
unpatentable over Klaus in view of Piepgras and Glassford and further in
view of Wu et al. (US 2009/0279314 Al, published Nov. 12, 2009) (“Wu”);
(d) claim 31 under 35 U.S.C. § 103(a) as being unpatentable over
Wang et al. (US 2009/0009999 Al, published Jan. 8, 2009) (“Wang”);
(e) claims 22 and 23 under 35 U.S.C. § 103(a) as being
unpatentable over Klaus in view of Piepgras and Glassford and further in
view of Buzza (US 3,814,927, issued June 4, 1974) (“Buzza”);
(f) claims 25 and 26 under 35 U.S.C. § 103(a) as being
unpatentable over Wang in view of Chou et al. (US 2005/0073244 Al,
published Apr. 7, 2005) (“Chou”) and Buzza;
(g) claim 32 under 35 U.S.C. § 103(a) as being unpatentable over
Wang and further in view of Buzza;
(h) claim 33 under 35 U.S.C. § 103(a) as being unpatentable over
Wang and further in view of Glassford and Piepgras;
(i) claims 59 and 60 under 35 U.S.C. § 103(a) as being
unpatentable over Wang and further in view of Klaus and Glassford.
ANALYSIS
Indefiniteness Rejection
Claims 28 and 60 are rejected under 35 U.S.C. § 112, second
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Application 13/022,142
paragraph, as being indefinite. Specifically, the Examiner concludes the
following language of claims 28 and 60 is indefinite:
any line that passes through a center of the first light source and
a point on a hemisphere whose circular edge is (1) centered on
the center of the first light source and (2) on a plane that is
perpendicular to an axis of the lighting device, defines an angle
of not more than 45 degrees relative to at least one line that passes
through the center of the first light source and at least one point
on a heat dissipation element of the lighting device, and passes
within one inch of at least one point on a heat dissipation element
of the lighting device
(Final Act. 5—7; Ans. 3—5).
Appellant asserts the cited claim language would be readily
understood by persons of skill in the art and discusses the meaning of
various terms, such as “hemisphere,” “circular edge,” and “centered on”
(Appeal Br. 11—13; Reply Br. 2—3). Appellant further argues that the claims
do not require that every line for the second type of line (the line passing
through at least one point on a heat dissipation element) must satisfy the “not
more than 45 degrees” limitation but that “for each line in the first category
[passing through the recited hemisphere]. . ., there must be at least one line
(not every line) in the second category. . .that meets the ‘not more than 45
degrees’ requirement” (Reply Br. 1—2, 4).
Appellant’s arguments are unpersuasive because the cited claim
language lacks clarity in its scope. The first category of lines (the lines
passing through the hemisphere) is recited as “any line” that passes through
the center of a light source and a point on the hemisphere, as recited in claim
28. Stated differently, the first category of lines encompasses every line that
meets the claim limitations (i.e., a line that passes through the center of the
light source and a point on the recited hemisphere). Thus, every line of the
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Application 13/022,142
first category of lines must define an angle of not more than 45 degree
relative to at least one line of the second category, as recited in claim 28. It
is unclear how every line of the first category can form such an angle with at
least one line of the second category, even in Appellant’s embodiments. In
other words, the claim scope is indefinite because it appears to recite an
impossibility.
In prosecution before the PTO “[i]t is the applicants’ burden to
precisely define the invention, not the PTO’s.” In re Morris, 111 F. 3d
1048, 1056 (Fed. Cir. 1997). The purpose of this requirement is to provide
the public with adequate notice of the boundaries of protection involved.
The time to do so is during prosecution where an applicant has the ability to
amend the claims to more precisely define the metes and bounds of the
claimed invention. See Ex Parte Miyazaki, 89 USPQ2d 1207, 1210-12
(PTAB 2008).
Another issue with the claim language is that claims 28 and 60 recite
“and passes within one inch of at least one point on a heat dissipation
element of the lighting device.” It is unclear what limitation this phrase
modifies (e.g., whether it modifies the first category of “any line” or the “at
least one line” limitation). While Appellant states in the Reply Brief that
this clause modifies “any line” (Reply Br. 2), the language as currently
worded would be presumed to modify the last category of “at least one line”
mentioned. In light of the multiple interpretations applicable to the claims, it
is appropriate for Appellant to amend the claims to make clear which
interpretation is required.
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 112, 2, rejection of claims 28 and 60.
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Obviousness Rejection of Claims 21, 24, and 53
Claims 21, 24, and 53 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Klaus in view of Piepgras and Glassford.
Appellant’s principle argument on appeal for the rejection of claim 21
is that Klaus is a design patent for an ornamental design that does not
disclose a heat dissipation element for its cage-like structure or disclose a
need to dissipate heat (Appeal Br. 14, 16).
Appellant’s arguments are unpersuasive. The Examiner finds Klaus
discloses a lighting device including a light source and at least a first heat
dissipation element and a second heat dissipation element (Final Act. 15).
The Examiner explains that although Klaus is a design patent (i.e., lacks a
Specification describing an invention), the material of the grid elements
depicted in Figure 1 of Klaus would dissipate heat to some degree and thus
would be heat dissipation elements (Ans. 5). Appellant does not respond to
this explanation, which is a reasonable one because the lighting unit of Klaus
would be made of some material that would naturally dissipate heat to some
degree. Claim 21 does not recite a degree of heat dissipation for the heat
dissipation elements and Appellant does not direct our attention to a
definition for heat dissipation that would exclude the Examiner’s
explanation of at least some degree of heat dissipation by Klaus’s structure.
Appellant also argues there would have been no reason to modify
Klaus to include Glassford’s materials or the entirety of Glassford’s
protective cage (Appeal Br. 14—15). It appears, however, that Klaus alone is
sufficient to suggest the limitations of claim 21. As noted above, the
Examiner finds Klaus discloses a lighting device including a light source and
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at least a first heat dissipation element and a second heat dissipation element
(Final Act. 15). The Examiner further finds that the first and second heat
dissipation elements would have the distance recited in claim 21 {id. at 16).
Nonetheless, in addition to finding Piepgras discloses the use of LED
lighting, the Examiner finds Glassford discloses a heat dissipative coating
for a light unit cage structure and concludes it would have been obvious to
modify Klaus in view of Glassford {id.). Glassford discloses a light source
subassembly 66 including a protective cage 68 having spaced wires 72, 73
(Glassford at 5:20-38). Glassford teaches that the wires are coated with a
layer 74 of impact resistant, low heat retentive plastic that dissipates heat so
accidental skin contact does not result in a bum {id. at 5:41—46, 5:60-62).
The Examiner explains that the modification of Klaus in view of
Glassford is to include Glassford’s material, which Glassford describes as
heat dissipative (Ans. 5—6). Indeed, Glassford teaches that the heat
dissipative material not only dissipates heat but avoids skin bums when there
is accidental contact. As a result, Glassford’s disclosure would have
provided a reason for one of ordinary skill in the art to have modified Klaus
in view of Glassford, as proposed by the Examiner.
Appellant does not argue claims 24 and 53 separately from claim 21
(Appeal Br. 16).
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 103(a) rejection of claims 21, 24, and
53.
Obviousness Rejection of Claims 28 and 30
In many cases, our affirmance of an indefmiteness rejection of claim
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28 and 60 on appeal would end our analysis of these claims because
addressing a prior art rejection of these claims would require undue and
improper speculation. See In reAoyama, 656 F.3d 1293, 1298—99 (Fed. Cir.
2011); In re Steele, 305 F.2d 859, 862 (CCPA 1962). In this case, however,
for the sake of judicial efficiency we will exercise our discretion to reach the
prior art rejections despite the indefiniteness of claims 28 and 60. See Ex
parte Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993); Ex parte Tanksley, 26
USPQ2d 1384, 1387 (BPAI 1991).
Claims 28 and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Klaus in view of Piepgras and Glassford and further in
view of Wu.
Appellant’s principle argument on appeal for the rejection of claim 28
is that the Examiner’s rationale to modify Klaus as a matter of routine
optimization and achieve the claimed angle between the first category of
lines and second category of lines is insufficient because the applied
references do not recognize that parameter as a result-effective variable
(Appeal Br. 16—18). In response to comments in the Examiner’s Answer
regarding Klaus, Appellant also argues that it would not have been obvious
to optimize Klaus’s structure because Klaus does not recognize the recited
angle as a result-effective variable (Reply Br. 4—5).
Appellant’s arguments are unpersuasive. As the language of claim 28
is best understood, it appears that Klaus’s structure alone would provide the
structure recited in claim 28 because, as noted by the Examiner (Ans. 3—4),
the second category of line can pass through any point on a given heat
dissipation element, which can be any strut of the cage depicted in Figure 1
of Klaus. As a result, a wide variety of lines through a point on the various
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heat dissipation elements of Klaus are present for forming an angle with the
first category of lines. This wide variety of lines would form large angles
(e.g., when the point is selected on a strut at the top of Figure 1 and the first
category of lines are substantially vertical in Figure 1) with the first category
of lines and form small angles with the first category of lines (e.g., when the
point is selected on a strut at the bottom of Figure 1 and the first category of
lines are substantially vertical in Figure 1 or the point is at the top of Figure
1 and the first category of lines are nearly lateral to the structure in Figure
1).
A similar situation is present for the fin structure depicted in the
drawings of Wu. In other words, if a line of the first category of lines forms
a small angle with a longitudinal axis for the structure in the drawings, a
point can be selected high upon the fins and a small angle is formed between
the two categories of lines. Similarly, if a line of the first category of lines
forms a large angle with the longitudinal axis, a point can be selected low
upon the fins and a small angle is formed between the two categories of
lines. As a result, the limitations of claim 28, as best understood, read upon
either Klaus or Wu.4
Appellant does not argue claim 30 separately from claim 28 (Appeal
Br. 18).
For the reasons discussed above and those set forth in the Examiner’s
4 With regard to the modification of Klaus, Piepgras, and Glassford in view
of Wu, we note that this modification involves the well-established principle
that, for an improvement to be patentable, it must be more than the
predictable use of prior art elements according to their established functions
CKSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)) (i.e., the use of
Wu’s structure according to its established function of dissipating heat from
a lamp).
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Answer, we sustain the Examiner’s § 103(a) rejection of claims 28 and 30.
Obviousness Rejection of Claim 31
Claim 31 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wang.
Appellant’s principle argument on appeal for the rejection of claim 31
is that Wang does not disclose or suggest a lighting device in which at least
25% of heat generated by a light source is dissipated in regions toward
which light emitted by the light source is directed, as recited in claim 31,
Wang does not recognize such a heat dissipation as a result-effective
variable, and the Examiner has ignored the functional limitation regarding
the percentage of heat dissipation by merely asserting the structure of claim
31 has been satisfied by Wang’s disclosure (Appeal Br. 18—20).
Although “[a] patent applicant is free to recite features of an apparatus
either 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)). Where the Examiner establishes a
reasonable basis to believe that a property or characteristic recited in the
claims would have been inherent to the apparatus, the burden of proof shifts
to the Appellant to show that this characteristic or property is not possessed
by the prior art (id.).
Here, the Examiner finds that Wang discloses the structure of claim
31, including first and second heat dissipation elements, because Wang
discloses a plurality of heat-dissipating fins (Ans. 8; see Wang || 2, 35—36).
The Examiner explains “it is apparent from Wang’s teachings that the heat-
dissipating fms exhibit high amount of heat dissipation” (Ans. 8). Indeed,
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Wang depicts fms 10a as surrounding a light-emitting module 2 (Figure 1 A,
IB) and describes the fms 10a as having a “high efficiency heat-dissipating
function” (Wang 135).
As a result, the Examiner has set forth a reasonable basis for Wang’s
structure dissipating at least 25% of heat generated by the light-emitting
module 2 in a direction that light emitted by the module 2 is directed, as
recited in claim 31. Appellant’s arguments do not direct us to sufficient
evidence or persuasive technical reasoning to refute the Examiner’s
determination.5
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 103(a) rejection of claim 31.
Obviousness Rejection of Claims 22 and 23
Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Klaus in view of Piepgras and Glassford and further in
view of Buzza.
Appellant argues Buzza does not remedy the deficiencies of the
references applied in the rejection of claim 21 (Appeal Br. 21). For the
reasons set forth above, there are no deficiencies in the rejection of claim 21
that require curing by Buzza. Therefore, we sustain the § 103(a) rejection of
claims 22 and 23.
5 It would also appear that Buzza discloses a structure that claim 31 reads
upon. Buzza discloses a drop light 10 having a shield enclosing
approximately 50 percent of the circumference about a lamp 51 (Buzza
2:45—61). Buzza discloses that the shield has a heat dissipating surface away
from the lamp to dissipate heat (id. at 1:41 46).
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Obviousness Rejection of Claims 25 and 26
Claims 25 and 266 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang in view of Chou and Buzza.
Appellant’s principle argument on appeal for the rejection of claim 25
is that the applied references do not recognize the angle between a surface of
a reflective element and a primary axis, as recited in claim 25, as a result-
effective variable (Appeal Br. 21—23).
Appellant’s arguments are unpersuasive. “[Djiscovery of an optimum
value of a result effective variable in a known process is ordinarily within
the skill of the art” (In re Boesch, 617 F.2d 272, 276 (CCPA 1980)). Here,
Chou discloses a LED lighting device that can have a fins 26 to dissipate
heat (Chou Tflf 29, 36). The device further includes a reflector 32 to focus
and/or direct light (id. at | 68). Chou teaches that the reflector can be
generally conical-shaped but that numerous shapes may be used, “depending
on desired results and effects,” such as “parabolic, angular, or some other
desirable shape and size” (id. at || 68, 71). In other words, Chou teaches
that the shape and size of the reflector are result-effective variables that can
be varied to achieve “desired results and effects.”
Therefore, consistent with the Examiner’s position (Final Act. 29), a
person having ordinary skill in the art would have understood that the shape
6 The Examiner and Appellant both list claim 27 (which depends from claim
25 and merely states “wherein the lighting device is an A lamp”) as rejected
(Final Act. Office Action Summary; Appeal Br. 3). Although the Examiner
appears to have inadvertently omitted an explicit rejection of claim 27 in the
Office Action, a similar limitation appears in each claims 24, 30, and 33,
which are rejected (Final Act. 22, 25, 31). Since there is no argument that
use of an A lamp would not have been obvious (Appeal Br. generally), we
view this omission of an explicit rejection of claim 27 as harmless error.
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and size of a reflector, including the claimed angle, are result-effective
variables, the optimum ranges of which would have been discoverable by
routine experimentation {In re Applied Materials, Inc., 692 F.3d 1289, 1297
(Fed. Cir. 2012) (“A recognition in the prior art that a property is affected by
the variable is sufficient to find the variable result-effective.”)). As a result,
Appellant’s arguments do not identify a reversible error in the rejection of
claim 25.
Appellant does not argue claim 26 separately from claim 25 (Appeal
Br. 23).
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 103(a) rejection of claims 25 and 26.
Obviousness Rejections of Claims 32 and 33
Claim 32 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wang and further in view of Buzza.
Claim 33 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wang and further in view of Glassford and Piepgras.
Appellant argues Buzza, Glassford, and Piepgras do not remedy the
deficiencies Wang in the rejection of claim 31 (Appeal Br. 24). For the
reasons set forth above, there are no deficiencies in the rejection of claim 31
that require curing by Buzza, Glassford, or Piepgras. Therefore, we sustain
the § 103(a) rejections of claims 32 and 33.
Obviousness Rejection of Claims 59 and 60
Claims 59 and 60 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang and further in view of Klaus and Glassford.
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For claim 59, Appellant argues Klaus and Glassford do not remedy
the deficiencies of Wang in the rejection of claim 31 (id. at 25). For the
reasons set forth above, there are no deficiencies in the rejection of claim 31
that require curing by Klaus and Glassford. Therefore, we sustain the
§ 103(a) rejection of claim 59.
For claim 60, Appellant contends the Examiner’s rationale for
modifying Wang is insufficient because the applied references do not
recognize the claimed angle as a result-effective variable (id. at 25—26). As
discussed above with regard to the rejection of claim 28, Klaus alone
demonstrates that a structure meeting the limitations of claim 60 was known
in the art. To the extent Wang is modified in view of Klaus to meet the
limitations of claims 31 and 60 (because claim 60 depends from claim 31),
we note that this modification would have involved the use of Klaus’s
known lighting unit for its predictable function with a lighting unit (i.e.,
Wang’s) (KSR, 550 U.S. at 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results”)).
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 103(a) rejection of claims 59 and 60.
DECISION
The Examiner’s rejection of claims 21—28, 30-33, 53, 59, and 60 is
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)(l)(iv).
AFFIRMED
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