Facebook Technologies, LLC

Patent Trials and Appeals Board

Mar 3, 2021

2020002688 (P.T.A.B. Mar. 3, 2021)

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.
15/103,344 06/10/2016 Christopher Percival 31718-34794/US 8983
87851 7590 03/03/2021
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
AKANBI, ISIAKA O
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
03/03/2021 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):
fwfacebookpatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER PERCIVAL and VINCENT BRENNAN1
____________

Appeal 2020-002688
Application 15/103,344
Technology Center 2800
____________

Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
JANE E. INGLESE, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–3, 9–14, 17–21, 23, and 25–29. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
BACKGROUND
The subject matter on appeal relates to methods and apparatuses for
profiling a beam of a light emitting semiconductor device. E.g., Spec. ¶ 1;
Claim 1. Claim 1 is reproduced below from page 3 (Claims Appendix) of

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Facebook Technologies, LLC. Appeal Br. 2.
Appeal 2020-002688
Application 15/103,344

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the Response to Notice of Non-Compliant Appeal Brief dated November 26,
2019:
1. An apparatus for profiling a beam of a light emitting
semiconductor device, comprising:
the light emitting semiconductor device comprising an active
region formed on a substrate and configured to generate light
when a suitable electrical current is applied to contacts on an
upper surface of the device, and a light emitting surface defined
by a lower surface of the substrate opposite the contacts; and
a transmission medium comprising a first surface in contact with
at least part of the light emitting surface of the semiconductor
device and a diffusion surface, opposite the first surface, the
diffusion surface being one of (i) a roughened side of the
transmission medium opposite the first surface or (ii) a coating
on the transmission medium opposite the first surface, the
diffusion surface diffusing the light emitted from the
semiconductor device and transmitted through the transmission
medium.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 1, 3, 9, 25, and 26 under 35 U.S.C. § 102(a)(1) as
anticipated by Bulpitt.2
2. Claims 2 and 23 under 35 U.S.C. § 103 as unpatentable over
Bulpitt.
3. Claims 10–14, 17–21, and 27–29 under 35 U.S.C. § 103 as
unpatentable over Bulpitt and Ji.3

2 US 2005/0253046 A1, published Nov. 17, 2005.
3 US 2012/0249776 A1, published Oct. 4, 2012.
Appeal 2020-002688
Application 15/103,344

3
ANALYSIS
The Examiner finds that the space (air or vacuum) between Bulpitt’s
LED 10 and plate 32 constitutes a transmission medium corresponding to
that of claim 1. Final Act. 3 (citing Bulpitt Figs. 2A–2B, 4); Ans. 4–5. The
Examiner finds that Bulpitt’s diffuser 38 corresponds to the claimed
“diffusion surface.” Final Act. 3; Ans. 5–6.
The Appellant argues that Bulpitt fails to disclose a diffusion surface
that corresponds to that of claim 1. Appeal Br. 7–8; Reply Br. 3.
Specifically, the Appellant argues that claim 1 recites that the “transmission
medium compris[es] . . . a diffusion surface,” thereby requiring the diffusion
surface to be part of the transmission medium, and that Bulpitt’s diffuser 38
is separate and distinct from the portion of Bulpitt that the Examiner
identifies as Bulpitt’s transmission medium (i.e., the air or vacuum). Reply
Br. 3.
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
We agree with the Appellant that the Examiner has not carried the
Examiner’s burden of showing unpatentability in this case. Consistent with
the Appellant’s argument, the transmission medium and diffusion surface of
claim 1 are not recited as two distinct components such that any apparatus
comprising both a transmission medium and a diffusion surface necessarily
falls within the scope of the claim; rather, claim 1 recites that the
transmission medium comprises a diffusion surface. The Examiner fails to
persuasively address that requirement of claim 1. The Examiner finds that
Bulpitt discloses a transmission medium (air or vacuum) and a distinct
Appeal 2020-002688
Application 15/103,344

4
diffusion surface (diffuser 38), but the Examiner does not persuasively
explain how Bulpitt’s transmission medium comprises a diffusion surface.
See Ans. 4–5.
On the record before us, we are constrained to reverse the Examiner’s
rejection of claim 1. Because all other claims on appeal likewise require a
transmission medium comprising a diffusion surface, and the Examiner’s
discussion of those claims fails to remedy the deficiency described above,
we also must reverse the Examiner’s rejections of claims 2, 3, 9–14, 17–21,
23, and 25–29.
CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 9, 25,
26 102(a)(1) Bulpitt
1, 3, 9, 25,
26
2, 23 103 Bulpitt 2, 23
10-14, 17-
21, 27-29 103 Bulpitt, Ji
10-14, 17-
21, 27-29
Overall
Outcome
1-3, 9-14,
17-21, 23,
25-29
REVERSED