PHILIPS LIGHTING HOLDING B.V.

Patent Trials and Appeals Board

Jan 21, 2021

2020001052 (P.T.A.B. Jan. 21, 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.
15/507,889 03/01/2017 Egbertus Reinier JACOBS 2014P00991WOUS 3165
138325 7590 01/21/2021
Signify Holding B.V.
465 Columbus Avenue
Suite 330
Valhalla, NY 10595
EXAMINER
HATZILAMBROU, MARK
ART UNIT PAPER NUMBER
2891
NOTIFICATION DATE DELIVERY MODE
01/21/2021 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):
Gigi.Miller@signify.com
jo.cangelosi@signify.com
kim.larocca@signify.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EGBERTUS REINIER JACOBS, MARC ANDRE DE SAMBER,
ERIC CORNELIS EGBERTUS VAN GRUNSVEN, and ESTHER ANNA
WILHELMINA GERARDS JANSSEN
Appeal 2020-001052
Application 15/507,889
Technology Center 2800
Before TERRY J. OWENS, LINDA M. GAUDETTE, and
SHELDON M. MCGEE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

The Appellant2 appeals under 35 U.S.C. § 134(a), from the
Examiner’s decision finally rejecting claims 11–30.3

1 This Decision includes citations to the following documents: Specification
filed March 1, 2017 (“Spec.”); Final Office Action dated Mar. 6, 2019
(“Final Act.”); Appeal Brief filed July 2, 2019 (“Appeal Br.”); and
Examiner’s Answer dated Sept. 11, 2019 (“Ans.”).
2 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 Signify
North America Corporation. Appeal Br. 1.
3 We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2020-001052
Application 15/507,889

2

We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to “a lighting system in which a light output can
be provided from a surface, with the LED light sources not visible or barely
visible to the eye when turned off.” Spec. 1:18–20. The system may be used
for automobile side and signaling lights, as well as in other applications
“where the aesthetic quality of a painted surface should not be compromised
by the inclusion of lighting functionality.” Id. at 1:20–22. Claim 11,
reproduced below, is illustrative of the claimed subject matter:
11. A surface coated with a lighting arrangement,
comprising:
a first conductive layer over the surface, the first
conductive layer being for connection to a first electrical
terminal;
an array of LED lighting elements over the first
conductive layer, each LED lighting element comprising a pad
with top and bottom electrical contacts, wherein at least a
fraction of the LED lighting elements are upwardly facing with
their top contacts facing away from the surface;
a spray paint coating which fills spaces between the LED
lighting elements, and partially covers the LED lighting
elements but with the top contacts of the upwardly facing LED
lighting elements exposed and with light output windows
formed in the spray paint coating for the upwardly facing LED
lighting elements; and
a second conductive layer over the spray paint coating
and the exposed contacts, the second conductive layer being for
connection to a second electrical terminal.
Appeal Br. 22 (Claims App.).
Appeal 2020-001052
Application 15/507,889

3

REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Chitnis US 2008/0179611 A1 July 31, 2008
Kim US 2010/0314637 A1 Dec. 16, 2010
Lerman US 2011/0193105 A1 Aug. 11, 2011
Weidner US 2012/0228666 A1 Sept. 13, 2012
Tischler US 2013/0187178 A1 July 25, 2013
Corporon US 2015/0345723 A1 Dec. 3, 2015

REJECTIONS
1. Claims 23 and 29 are rejected under 35 U.S.C. § 112(b) as
indefinite. Final Act. 3.
2. Claim 11, 16, 17, 19, 22, 23, 25, 28, and 29 are rejected under
35 U.S.C. § 103 over Weidner and Kim. Final Act. 4.
3. Claim 12 is rejected under 35 U.S.C. § 103 over Weidner, Kim,
and Tischler. Final Act. 10.
4. Claim 13 is rejected under 35 U.S.C. § 103 over Weidner, Kim,
and Chitnis. Final Act. 11.
5. Claims 14, 15, 20, 21, 26, and 27 are rejected under 35 U.S.C.
§ 103 over Weidner, Kim, and Corporon. Final Act. 11.
6. Claims 18, 24, and 30 are rejected under 35 U.S.C. § 103 over
Weidner, Kim, and Lerman. Final Act. 14.
OPINION
The Examiner rejected claims 23 and 29 under 35 U.S.C. § 112(b) as
indefinite because the limitation “the portion of the spray coating” lacks
Appeal 2020-001052
Application 15/507,889

4

antecedent basis. Final Act. 3. The Appellant does not dispute the rejection.
Appeal Br. 20. Accordingly, we summarily sustain this ground of rejection.
The Examiner rejected claims 11, 16, 17, 19, 22, 23, 25, 28, and 29 as
obvious over Weidner and Kim. Final Act. 4–10. The Appellant argues in
support of patentability of the following individual claims or claim
groupings: (1) independent claim 11; (2) independent claims 19 and 25; and
(3) dependent claims 16, 17, 22, 23, 28, and 29. Appeal Br. 8–16.
Weidner Figure 2 is reproduced below.

Weidner Figure 2 is a schematic view of optoelectronic module 100.
Weidner ¶¶ 33, 37. Module 100 includes carrier 1 that can be formed with an
electrically conducting material. Id. ¶¶ 4, 36. Module 100 includes two side-
by-side radiation-emitting semiconductor chips 2 having first contact areas
2A that are electrically connected to carrier 1’s contact locations 1A via
electrically conductive conducting structures 8. Id. ¶ 36. Semiconductor
chips 2 are applied to mounting area 11 (shown in Figure 1) of carrier 1 at
second contact areas 2B. Id. Electrically insulating layer 4, a ceramic
material applied by a laminating process, covers exposed side areas 9 and
Appeal 2020-001052
Application 15/507,889

5

radiation exit areas 3 of semiconductor chips 2, carrier 1’s mounting area 11,
and region 21 (shown in Figure 1), such that the electrically insulating layer
4 runs without interruption between contact locations lA and first contact
areas 2A. Id. Electrically insulating layer 4 includes first cutout 4A that runs
without interruption between semiconductor chips 2 such that radiation exit
areas 3 of semiconductor chips 2 are exposed. Id. ¶ 37.
Kim discloses a heat releasing semiconductor package 100 comprising
non-conductive heat releasing layer 90 formed over semiconductor device
50. Kim ¶¶ 19, 20. Heat releasing layer 90 may be a heat releasing paint
“including an organic or inorganic coating material, such as ceramic.” Id. ¶¶
20, 21. The heat releasing paint may be applied by a spray nozzle. Id. ¶ 35.
The Examiner found that Weidner discloses the claim 11 invention
except for explicitly disclosing that electrically insulating layer 4 is a spray
paint coating. Final Act. 4. The Examiner found that the ordinary artisan
would have used a spray paint coating as electrically insulating layer 4 in
Weidner’s device based on Kim’s disclosure that a spray paint coating
provides “good thermal characteristics at low cost.” Final Act. 5; see, e.g.,
Kim ¶ 40.
The Appellant argues that the material used for Weidner’s electrically
insulating layer 4 is completely different from the claimed “spray paint
coating.” Appeal Br. 9. The Appellant further argues that Kim’s structure
differs from the claim 11 structure because Kim lacks any disclosure of
LEDs, is directed to completely covering a surface with a spray paint
coating, and does not teach or suggest applying a conductive layer over a
paint layer. Id. at 10–12. These arguments are not persuasive because they
fail to identify reversible error in the Examiner’s fact finding and reasoning.
Appeal 2020-001052
Application 15/507,889

6

As the Examiner reemphasizes in the Answer, the rejection is based
on a finding that Weidner teaches the claim 11 structure except for
describing electrically insulating layer 4 as a spray paint coating. Ans. 4. The
Examiner found that the ordinary artisan would have replaced Weidner’s
electrically insulating coating with a spray paint coating as described in
Kim. See id. at 4–5 (citing Final Act. 4). Thus, the Appellant’s arguments
that Kim’s structure and the claimed structure differ, and that the Examiner
failed to explain why the ordinary artisan would have modified Kim’s
structure, are not persuasive. See Appeal Br. 10–13. Rather, a showing of
reversible error in the Examiner’s prima facie case of obviousness would
require some explanation or evidence as to why it was erroneous or
unreasonable for the Examiner to determine that (1) the claimed “spray paint
coating” reads on Kim’s spray paint coating, (2) the ordinary artisan would
have replaced Weidner’s electrically insulating layer 4 with Kim’s spray
paint coating, or (3) Weidner’s structure, as modified to include Kim’s spray
coating, would not meet one or more of the claim limitations. The Appellant
has not met this burden. See, e.g., Appeal Br. 13 (“Although Weidner
teaches a second conductive layer over an ‘electrically insulating layer’ (see
FIG. 2 showing item 8 placed over item 4), Weidner fails to teach placing a
conductive layer over a spray paint coating. When combining the teachings
of Weidner and Kim, the concept of positioning conductive material over a
spray paint coating is completely lacking.”).
Turning to independent claim 19, the Appellant argues that the
Examiner reversibly erred in rejecting this claim for the same reasons
discussed as to claim 11. See Appeal Br. 15–16. The Appellant further
argues that the Examiner has not identified a prior art teaching of “a painted
Appeal 2020-001052
Application 15/507,889

7

surface on one hand and a portion of the paint surface that includes lighting
elements, on the other hand” as required by claim 19. Id. at 15.
This argument is not persuasive because it is not commensurate in
scope with the claim language. See Ans. 6. As explained by the Examiner,
the claim 19 phrase “a portion of the painted surface” encompasses “a sub-
portion that does not include the entire surface, or . . . a portion comprising
the entire surface.” Id. Thus, contrary to the Appellant’s contention, a
finding that the prior art discloses a painted surface having a section that
does not include a light arrangement and a distinct separate section that does
include a light arrangement was unnecessary to show that the claim 19
invention would have been obvious. See Appeal Br. 15.
The Appellant relies on the same arguments made as to claim 19 in
support of patentability of claim 25. See Appeal Br. 16. These arguments are
not persuasive for the reasons discussed above.
As to dependent claims 16, 17, 22, 23, 28, and 29, the Examiner
determined that these claims recite process limitations, and that the
Appellant had not shown that “the method language necessarily produces a
structural difference.” Final Act. 5–8, 10. The Appellant argues that “[b]y
adding limitations to the ‘spray paint coating [of independent claims 11, 19,
or 25],’ these claims are not converted from an apparatus/system claim to a
product-by-process claim.” Appeal Br. 14. The Appellant contends that
because the Examiner failed to identify teachings of the limitations recited in
claims 16, 17, 22, 23, 28, and 29, the rejection of these claims should be
reversed. Id.
The Appellant’s argument is not persuasive. A product-by-process
analysis is appropriate as to an entire claim or individual claim limitations.
Appeal 2020-001052
Application 15/507,889

8

See, e.g., Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334 (Fed.
Cir. 2020) (“The nesting of the product-by-process limitation within a
method of treatment claim does not change the proper construction of the
product-by-process limitation itself.”). We agree with the Examiner that
claims 16, 17, 22, 23, 28, and 29 recite process limitations and therefore
their patentability was properly considered using a product-by-process
analysis.
We turn next to the rejection of dependent claims 14, 15, 20, 21, 26,
and 27 over the combination of Weidner, Kim, and Corporon. The Examiner
relies on Corporon for a suggestion to modify the Weidner structure, as
modified by Kim, to include “a transparent protective coating over the
second conductive layer” (claims 14, 20, 26) and to use the structure in “an
automobile body panel” (claims 15, 21, 27). The Examiner found that
Corporon discloses applying a transparent protective coating on the light
emitting side of a lighting device embedded in an automobile body panel “to
create a smooth unobtrusive vehicle light that [is] not . . . visible to nearby
observers when not in use.” Final Act. 12–14 (citing Corporon ¶¶ 5, 40). The
Examiner found that the ordinary artisan would have used Weidner’s
structure, as modified by Kim, in an automobile panel and included a
transparent protective coating to achieve the advantages described by
Corporon. Id.; see Corporon ¶ 5.
Similar to its arguments in support of patentability of claim 11, the
Appellant’s arguments are directed to differences between Corporon’s
structure and the claimed structure, and fail to identify error in the facts and
reasons relied on by the Examiner in determining that Weidner’s structure,
Appeal 2020-001052
Application 15/507,889

9

as modified by Kim and Corporon, would have resulted in the inventions
recited in claims 14, 15, 20, 21, 26, and 27. See Appeal Br. 16–20; Ans. 7.
The Appellant requests reversal of the remaining grounds of rejection
“for at least the reason that they depend on patentably-distinct independent
claims.” Appeal Br. 20.
For the reasons discussed above, in the Final Office Action, and in the
Answer, the Appellant’s arguments are not persuasive of reversible error in
the Examiner’s conclusion of obviousness as to claims 11–30. Accordingly,
we sustain above-listed grounds of rejection 2–6.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
23, 29 112 Indefiniteness 23, 29
11, 16, 17,
19, 22, 23,
25, 28, 29
103 Weidner, Kim 11, 16, 17,
19, 22, 23,
25, 28, 29

12 103 Weidner, Kim,
Tischler
12
13 103 Weidner, Kim,
Chitnis
13
14, 15, 20,
21, 26, 27
103 Weidner, Kim,
Corporon
14, 15, 20,
21, 26, 27

18, 24, 30 103 Weidner, Kim,
Lerman
18, 24, 30
Overall
Outcome:

11–30

Appeal 2020-001052
Application 15/507,889

10

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).
AFFIRMED