Innotec, Corp.

Patent Trials and Appeals Board

Dec 15, 2021

2021002315 (P.T.A.B. Dec. 15, 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.
15/178,869 06/10/2016 Thomas J. Veenstra 088992.157662 6883
24335 7590 12/15/2021
WARNER NORCROSS + JUDD LLP
INTELLECTUAL PROPERTY GROUP
150 OTTAWA AVE NW, SUITE 1500
GRAND RAPIDS, MI 49503
EXAMINER
FALLAHKHAIR, ARMAN B
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
12/15/2021 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):
patents@wnj.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS J. VEENSTRA and RUSSELL ALAN MALEK

Appeal 2021-002315
Application 15/178,869
Technology Center 2800
____________

Before TERRY J. OWENS, JAMES C. HOUSEL, and LILAN REN,
Administrative Patent Judges.

REN, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 6, 7, 12, 21, 23, 24, and 26. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
“Innotec, Corp.” Appeal Br. 3.
Appeal 2021-002315
Application 15/178,869

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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, are illustrative of the claimed subject
matter:
1. An illumination assembly comprising:
a thermally conductive, electrically insulating, thermal
interface material having first and second sides;
an electrical circuit on the first side of the thermal
interface material;
a light source electrically coupled to the electrical circuit,
the electrical circuit being between the thermal interface
material and the light source;
a heat spreader on the second side of the thermal
interface material, the thermal interface material thermally
coupling the light source and the heat spreader; and
a first polymeric layer at least partially around the
electrical circuit, the light source, and the heat spreader to
secure these elements together.
Claims Appendix (Appeal Br. 22).
REFERENCES
The prior art relied upon by the Examiner are:
Name Reference Date
Jokelainen US 9,175,842 B2 Nov. 3, 2015
Nall US 8,465,175 B2 Jun. 18, 2013

REJECTION2
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1, 6, 7, 12, 21, 23,
24, 26
103 Jokelainen, Nall

2 A rejection of claims 1 and 7 under section 103 over Nall and another
reference has been withdrawn and is not before us. Ans. 4, Reply Br. 1; see
also Non-Final Act. 6.
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Application 15/178,869

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OPINION
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After having considered
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that reversible error has been identified, and we affirm
the Examiner’s § 103 rejection for the reasons expressed in the Non-Final
Office Action and the Answer. We add the following primarily for emphasis.
Claim 13
Appellant argues that the Examiner reversibly erred in finding that the
dielectric layer 62 of Nall is “an electric circuit” as recited in claim 1.
Appeal Br. 10. Appellant argues that “[t]he mischaracterization of Nall is
fatal to the rejection, because the hypothetical combination is left without a
‘first polymeric layer’ that secures at least portions of an electrical circuit
together with a light source and a heat spreader, as recited in claim 1.” Id.
Appellant’s argument is unpersuasive. As the Examiner points out, the
obviousness rejection is based on the finding that Jokelainen – instead of
Nall – teaches or suggests the recited electrical circuit. Non-Final Act. 3
(citing Figure 8 of Jokelainen). The Examiner acknowledges that Jokelainen

3 Appellant does not separately argue for claims 6, 7, 12, 21, 23, 24, and 26.
See Appeal Br. 8–14, 13 (arguing that “the rejection of claim 7 is improper”
“[f]or similar reasons as explained above for claim 1” under a separate
heading for claim 7 without separate arguments). These claims stand or fall
with claim 1. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv).
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Application 15/178,869

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does not explicitly disclose “a first polymeric layer at least partially around
the electrical circuit, the light source, and the heat spreader to secure these
elements together” as recited in claim 1 and relies on Nall for the teaching.
Id. at 4 (citing polymer component 60 of Nall for the recited “first polymeric
layer”). Appellant does not adequately explain why the Examiner reversibly
erred in finding that Nall teaches this particular claim limitation.
We further note that Appellant’s argument is unpersuasive because it
attacks the references individually, rather than considering what the
combined references would have suggested to the person of ordinary skill in
the art—in this case, the combined teaching of Jokelainen and Nall. See
Appeal Br. 11 (arguing that the structure in Nall is continuous and the
structure in Jokelainen does not include a PCB). “Non-obviousness cannot
be established by attacking references individually where the rejection is
based upon the teachings of a combination of references.” In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant argues that the Examiner reversibly erred for failure to
explain “why Jokelainen and Nall would be combined for any reason other
than a hindsight attempt to reconstruct the present invention.” Appeal Br. 11.
Appellant, however, does not address the Examiner’s rationale explaining
that it was within the ordinary skill in the art to “incorporate the structural
arrangement and a polymer layer, such as taught by [Nall], with the light
source assembly of [Jokelainen] in order to enhance the heat dissipation
efficiency, the structural integrity and modularity of the assembly according
to its preferred application.” Compare id., with Non-Final Act. 4. As the
Examiner points out, “the natural desire of one of ordinary skills [sic] in the
art to enhance and optimize an illumination apparatus according to its
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Application 15/178,869

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desired application, by at least improving the structural integrity of the
assembly, which in-turn leads to a longer lifetime for the device, would
motivate one to make the aforementioned combinations.” Ans. 6. Appellant
does not respond to the Examiner’s rationale. See Reply Br. 1–7. Moreover,
Appellant does not dispute that all the recited structures are known in the art
and we therefore agree with the Examiner that “if a technique has been used
to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). In this case, there is
no argument or evidence supporting that it is beyond the ordinary skill to
combine the prior art teachings.
Appellant argues that the Examiner engaged in impermissible
hindsight, but does not specify the knowledge that the Examiner relied upon
which was taught only by Appellant’s disclosure. See W.L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (holding that
hindsight occurs when a person of ordinary skill in the art is imbued with
knowledge taught only by the inventor of the challenged patent). By
contrast, hindsight does not occur when a person of ordinary skill in the art
is imbued with knowledge that “was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure.” See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971). Here, Appellant’s argument does not identify
reversible error in the Examiner’s reasoning that it is within the ordinary
skill to combine the prior art teachings to arrive at the recited apparatus. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“If a person of
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Application 15/178,869

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ordinary skill can implement a predictable variation [of a known work], §
103 likely bars its patentability.”).
Appellant also argues that “Jokelainen’s assembly already secures the
electrical circuit, light source, and heat spreader together, and already
includes a two-part polymer heat sink 44, 45 for heat dissipation.” Appeal
Br. 12. Appellant’s argument is unpersuasive again because it does not
address the Examiner’s rationale. See id. In any event, “[c]ombining the
teachings of references does not involve an ability to combine their specific
structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Appellant’s
argument is unpersuasive also because the claim language does not exclude
additional polymer and/or heat dissipating components.
Appellant lastly argues that “the logical result of combining
Jokelainen and Nall would not be to apply Nall’s teaching to the FIG. 8
embodiment lacking a PCB.” Appeal Br. 12. According to Appellant, “[a]t
best, one of ordinary skill in the art might apply Nall’s teachings to the PCB-
based embodiment of FIG. 7, in which case the resulting combination fails
to disclose a thermally conductive, electrically insulating, thermal interface
material, arranged as defined in the claim.” Id. at 12–13. Appellant’s
argument is unpersuasive first and foremost because it does not adequately
explain why the Examiner reversibly erred. “[M]ere statements of
disagreement . . . do not amount to a developed argument.” SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006).
Appellant’s argument is unpersuasive also because it is not supported by
evidence. “Attorneys’ argument is no substitute for evidence.” Johnston v.
IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).

Appeal 2021-002315
Application 15/178,869

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CONCLUSION
The Examiner’s rejection is affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6, 7, 12,
21, 23, 24,
26
103 Jokelainen, Nall 1, 6, 7, 12,
21, 23, 24,
26

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED