Innotec, Corp.Download PDFPatent Trials and Appeals BoardDec 15, 20212021002315 (P.T.A.B. Dec. 15, 2021) Copy Citation 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 2 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. Appeal 2021-002315 Application 15/178,869 3 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). Appeal 2021-002315 Application 15/178,869 4 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 Appeal 2021-002315 Application 15/178,869 5 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 Appeal 2021-002315 Application 15/178,869 6 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 7 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 Copy with citationCopy as parenthetical citation