15097483 - (D) (P.T.A.B. Jan. 14, 2020)

Tessnow, Thomas

Patent Trials and Appeals BoardJan 14, 2020

15097483 - (D) (P.T.A.B. Jan. 14, 2020)

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. 15/097,483 04/13/2016 Thomas Tessnow 2012P21843US01 5604 24252 7590 01/14/2020 OSRAM SYLVANIA Inc. 200 Ballardvale Street Wilmington, MA 01887 EXAMINER HWU, DAVIS D ART UNIT PAPER NUMBER 3763 MAIL DATE DELIVERY MODE 01/14/2020 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 THOMAS TESSNOW Appeal 2019-004513 Application 15/097,483 Technology Center 3700 Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and BRADLEY B. BAYAT, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 16, 17, and 19–232. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “OSRAM SYLVANIA Inc.” Appeal Br. 2. 2 Although claims 18 and 24 are pending, the Examiner indicates that claim 18 recites allowable subject matter, and allows claim 24. See, e.g., Final Action 3. Appeal 2019-004513 Application 15/097,483 2 According to Appellant, the invention is directed “to two-component aluminum alloy heat sinks.” Spec. ¶ 2. Below, we reproduce independent claim 16, which is the sole independent claim under appeal, as representative of the appealed claims. 16. A heat sink (10) comprising: an extruded component (12) comprising a first aluminum material, said extruded component (12) comprising an exposed surface configured to be coupled to a solid state light source (16), said extruded component (12) further comprising heat dissipation elements (22) extending away from said exposed surface; and a cast component (14) having an upper surface and a lower surface and an aperture extending between said upper and lower surfaces, wherein said exposed surface of said extruded component (12) extends into said aperture. REJECTION AND PRIOR ART The Examiner rejects claims 16, 17, and 19–23 under 35 U.S.C. § 103 as unpatentable over Groh (US 4,841,422, iss. June 20, 1989), Knapp et al. (US 2013/0088890 A1, pub. Apr. 11, 2013) (“Knapp”), and Hoetzl et al. (US 2012/0170262 A1, pub. July 5, 2012) (“Hoetzl”). OPINION With reference to independent claim 16, the Examiner finds that Groh discloses a heat sink comprising . . . component 26 comprising a first aluminum material, the component comprising an exposed surface coupled to . . . solid state light source 12, the component further comprising heat dissipation elements 48 extending away from the exposed surface; and . . . component 44 having an upper surface and a lower surface[,] and an aperture extending between the upper and lower surfaces, wherein the exposed surface of . . . component 26 extends into the aperture. Appeal 2019-004513 Application 15/097,483 3 Answer 2. The Examiner does not provide any citation to either Groh’s Specification or drawings to support these findings. Additionally, the Examiner finds that “Knapp . . . teaches . . . heat sink 16 comprising an extruded aluminum material,” providing a citation only to Knapp’s paragraph 53. Id. The Examiner also finds that “Hoetzl . . . teaches a heat sink[,] which is made by casting.” Id. The Examiner does not provide any citation to either Hoetzl’s Specification or drawings to support these findings. Subsequently, the Examiner determines that “[i]t would have been obvious . . . to have made [Groh’s] component [26] from extruded aluminum as taught by Knapp[,] . . . and to have formed . . . [Groh’s] component 44 by casting as taught by Hoetzl.” Id. Appellant argues that the Examiner’s rejection is in error because, among other reasons, “contrary to [the] Examiner’s conclusory statement . . ., Groh does not show or suggest a solid state light source . . . . Rather[,] Groh’s disclosure relates solely to . . . filament bulb 16.” Appeal Br. 4. The Examiner does not respond to this argument. See generally Answer. Based on our review of the record, for the below reasons, we agree with Appellant. Appellant’s Specification does not define the term “solid state light source,” but describes that “solid state light sources (e.g., light emitting diodes, LEDs) may generate less thermal energy compared to traditional bulbs (e.g., incandescent light bulbs).” Spec. ¶ 3. The ordinary and customary definition of an incandescent light bulb is “a light bulb whose light is produced by the glow of a wire heated by an electric current.” Merriam-Webster Online Dictionary (last retrieved on Jan. 7, 2020 at https://www.merriam-webster.com/dictionary/incandescent%20bulb). Appeal 2019-004513 Application 15/097,483 4 Therefore, we construe a solid state light source to be one that does not produce light by the glow of a heated wire by an electric current. It appears that Appellant is correct that Groh discloses an incandescent light, and not the claimed solid state light source, however. Specifically, Groh discloses “a uniquely constructed heat-dissipating light fixture 10 adapted for use with . . . conventional tungsten-halogen lamp 12.” Groh col. 6, ll. 29–33. Groh further explains, with reference to its Figures 6 and 7, that “tungsten-halogen lamp 156 ha[s] . . . reflector 158 [and] . . . filament 160.” Id. at col. 11, ll. 52–62. But the Examiner has not shown that Groh discloses a solid state light source, as required by the claim. Thus, based on the foregoing deficiency, we do not sustain the Examiner’s rejection of independent claim 16. Notwithstanding the above discussion, the following provides an independent basis upon which we do not sustain the rejection. Appellant argues that “Groh does not and cannot suggest that . . . disc-shaped component 26 with . . . ribs 48 [is] . . . an extruded component.” Appeal Br. 4. Appellant further explains that “Groh’s ribs 48 are circular and circumferentially surround . . . central cylinder 26 in spaced relation to each other ([as] seen in Fig[ure] 2[’s] cross-section), so one of skill knows that it is technologically impossible for component 26, 48 to be an extruded component.” Id. at 4–5. Instead, according to Appellant, “Groh teaches that component 26, 48 be machined from an alumi[n]um block.” Id. at 5 (citing Groh col. 10, ll. 26–30). In response, the Examiner determines that “[s]ince Knapp . . . teaches . . . [an] extrusion process” forming an aluminum component, and Groh’s “component 26 is formed from aluminum,” “it is not impossible to form [Groh’s] . . . component 26 [by extrusion].” Answer 3. Appeal 2019-004513 Application 15/097,483 5 We determine that the Examiner does not support adequately that Groh’s component 26 may be formed by extrusion. With reference to Groh’s Figure 3, Groh disclose “hollow cylindrical aluminum body 26” that includes “an axially[-]spaced series of radially outwardly projecting annular cooling fins 48[,] which are formed integrally with the balance of the fixture body.” Groh col. 6, l. 67—col. 7, l. 24. It is not clear to us that such a configuration may be fabricated through extrusion. Conversely, as Appellant points out, the only process that Groh discloses for fabricating component 26 is “machin[ing] from a single block of aluminum.” Groh col. 10, ll. 26–30. Thus, for the reasons set forth above, we do not sustain the Examiner’s obviousness rejection of independent claim 16. We also do not sustain the Examiner’s obviousness rejection of claims 17 and 19–23 that depend from, and the Examiner rejects with, claim 16. CONCLUSION We REVERSE the Examiner’s obviousness rejection of claims 16, 17, and 19–23. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16, 17, 19–23 103 Groh, Knapp, Hoetzl 16, 17, 19–23 REVERSED