Ex Parte WATANABE et al

Patent Trial and Appeal Board

May 22, 2018

13750296 (P.T.A.B. May. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131750,296 01125/2013
23850 7590 05/22/2018
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W.
4th Floor
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
Hidemitsu WATANABE
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.
130020 1139
EXAMINER
SONG, ZHENG B
ART UNIT PAPER NUMBER
2875
MAILDATE DELIVERY MODE
05/22/2018 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 HIDEMITSU WATANABE,
HISANORI KAWASAKI, and HIROYUKI WATANABE
Appeal2017-006163
Application 13/750,296
Technology Center 2800
Before GEORGE C. BEST, A VEL YN M. ROSS, and JANE INGLESE,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-22 and 24--27 of Application
13/750,296 under 35 U.S.C. § 103(a) as obvious. Final Act. 1 (November
12, 2015). Appellants 1 seek reversal of these rejections pursuant to 35
U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.
1 APS Japan Co., Ltd. is identified as the applicant and real party in interest.
Appeal Br. 2.
Appeal2017-006163
Application 13/7 50,296
BACKGROUND
The '296 Application describes LED lighting devices having a lens
unit covering the light source at the leading end side thereof. Spec. i-f 1.
Temperature control is important to the efficiency and lifetime of such
lighting units. Id. i-f 2. The efficiency and lifetime of the LED elements and
the reliability and lifetime of the power circuit used in such lighting devices
decrease at elevated temperatures. Id. The '296 Application describes
lighting devices said to have efficient cooling while avoiding accidental fires
or reduced luminous efficiency due to dust accumulating on the internal
surface of the lens unit. Id. i-f 6.
Claim 1 is representative of the '296 Application's claims and is
reproduced below from the Claims Appendix.
1. A lighting device having a lens unit covering a light
source at a leading end side thereof, wherein
the light source is supported on a leading end-side
surface of a light source support stand formed by a high heat-
conductive member,
a lens fixing member formed by a high heat-conductive
member is interposed between the lens unit and the light source
support stand, so as to be exposed on an outer surface,
the light source is stored in an approximately sealed state
by the light source support stand, the lens fixing member, and
the lens unit,
air inlets/outlets are provided on a wall surface of a
housing nearer a base end side than the light source support
stand, and
heat generated at the light source is discharged by an air
flow generated inside and outside the housing through the air
inlets/outlets, from the base end-side surface of the light source
support stand to the outside of the housing.
Response to Non-Compliant Appeal Br. 3 (emphasis added).
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Appeal2017-006163
Application 13/7 50,296
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 7, 8, 14, 16-18, 21, and 24--26 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of
Liang2 and Takahasi. 3 Final Act. 3.
2. Claims 3-5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Liang, Takahasi, and Van
De Ven. 4 Final Act. 7.
3. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Liang, Takahasi, and Langlois. 5 Final
Act. 10.
4. Claims 9-12 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Liang, Takahasi, and
Chen. 6 Final Act. 11.
5. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Liang, Takahasi, Chen, and Yu. 7 Final
Act. 15.
2 US 2010/0165632 Al, published July 1, 2010.
3 US 2011/0089831 Al, published April 21, 2011.
4 US 2011/0074265 Al, published March 31, 2011.
5 US 2012/0118550 Al, published May 17, 2012.
6 US 2011/0198068 Al, published August 18, 2011.
7 US 2009/0046433 Al, published February 19, 2009.
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Application 13/7 50,296
6. Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Liang, Takahasi, and
Bertozzi. 8 Final Act. 16.
7. Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Liang, Takahasi, and Fu. 9 Final
Act. 17-18.
8. Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Liang, Takahasi, and Homg. 1° Final
Act. 18.
DISCUSSION
Appellants argue for reversal of all eight rejections as an
undifferentiated group. Appeal Br. 6- 11. Similarly, Appellants do not
present arguments tied to any particular claim. Id. We, therefore, select
claim 1 - the only independent claim on appeal - as representative of the
appealed claims. See 37 C.F.R. § 41.37(c)(l)(iv). Dependent claims 2-22
and 24--27 will stand or fall with claim 1. Id.
Appellants argue, inter alia, that the Examiner has not established a
prima facie case of obviousness because the lighting device suggested by the
combination of Liang and Takahasi does not have a lens-fixing member that
is located in a manner "so as to be exposed on an outer surface." Appeal Br.
10.
8 US 4,658,338, issued April 14, 1987.
9 US 2012/0098402 Al, published April 26, 2012.
10 US 2010/0295436 Al, published November 25, 2010.
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Appeal2017-006163
Application 13/7 50,296
In rejecting claim 1, the Examiner found that Liang fails to teach the
claimed lens-fixing member. Final Act. 3. The Examiner also found that
Takahasi describes such a lens-fixing member. Id. at 3--4.
For ease of reference, we reproduce Figure 1 of Takahasi below:
FIG. 1
l
Takahasi' s Figure 1 is a longitudinal cross-sectional view
of a bulb-type lamp that is an embodiment
of Takahasi's invention. Takahasi i-f 17.
In the Final Action, the Examiner found that
Takahasi teaches wherein a lens fixing member ( 5, fig. 1)
formed by a high heat-conductive member (para [0057]) is
interposed between the lens unit (9, fig. 1) and the light source
support stand (63, fig. 1), so as to be exposed on an outer
surface (29, fig. 1 ), and the light source (21, fig. 1) is stored in
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Appeal2017-006163
Application 13/7 50,296
an approximately sealed state by the light source support stand
(63), the lens fixing member (5), and the lens unit (9) ....
Final Act. 4.
In response to Appellants' arguments, the Examiner "clarified" the
rejection, finding that
Takahasi teaches a lens fixing member (5, 37, 39, 41, fig.
1) formed by a high heat-conductive member (mount
member. .. heat conduction member, see para [0057]) is
interposed between the lens unit (9, fig. 1) and the light source
support stand (63, 65, 73 fig. 1), so as to be exposed (exposed
to case 7 and space above 41, fig. 1) on an outer surface (outer
surface 3 9a and 41 contacting 7 a, fig. 1) that ....
Answer 3.
The Examiner responded to Appellants' argument that the proposed
combination of Liang and Takahasi did not describe or suggest a lens-fixing
member situated so as to be exposed on an outer surface by
not[ing] that [the] claim does not specify as to what the outer
surface of the lens fixing member is exposed to. Under [the]
broadest reasonable interpretation, the examiner notes that the
outer surface (outer surface 39a contacting 7a and outer surface
of 41, fig. 1) of the lens fixing member ( 5, 41) is exposed to the
case 7 of Takahasi.
Id. at 7.
Appellants respond that the Examiner has misinterpreted the phrase
"so as to be exposed on an outer surface." Reply Br. 5---6. In particular,
Appellants argue that "[i]t is clear that the [claim] language means 'exposed
to the outside' or 'exposed to the air'." Id. at 5.
Although claims are given their broadest reasonable interpretation
during prosecution, that broadest reasonable construction is limited by two
factors: (1) the understanding of a person of ordinary skill in the relevant
part and (2) the disclosure provided by the application's specification. See
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Application 13/7 50,296
In re Baker Hughes, Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000) (the PTO
cannot adopt a construction that is "beyond that which was reasonable in
light of the totality of the written description" in the Specification).
In this case, we agree with Appellants that the Examiner has adopted
an unreasonably broad construction of the phrase "so as to be exposed on an
outer surface." We begin by noting that a dictionary gives the ordinary
meaning of the word "exposed" as either "open to view" or "not shielded or
protected." Webster's Ninth New Collegiate Dictionary, 438 (1985). Thus,
in the context of the '296 Application, we conclude that the phrase "so as to
be exposed on an outer surface" requires that at least a portion of the lens-
fixing member must be exposed to view on the outer surface of the lighting
device. We note that the '296 Application's Specification is consistent with
this understanding. See, e.g., Spec. i-f 49 (explaining that "the outer surface
of the cylindrical [lens-fixing member] is exposed to the outside.").
In view of the foregoing, we determine that the Examiner based the
rejection of claim 1 upon an unreasonably broad construction of the claim
language. Furthermore, we find that the Examiner has not established a
prima facie case of obviousness because the lens 16 member in the proposed
combination of Liang and Takahasi is not exposed on an outer surface of the
lighting device.
We, therefore, reverse the rejection of claim 1. Accordingly, we also
reverse the rejection of claims 2-22 and 24--27.
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Application 13/7 50,296
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1-
22 and 24--27 of the '296 Application.
REVERSED
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