UNITY OPTO TECHNOLOGY CO., LTD. (ASSIGNEE) et al.

Patent Trials and Appeals Board

Mar 16, 2020

90014106 - (D) (P.T.A.B. Mar. 16, 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.
90/014,106 03/08/2018 9423113 55466-703.999 2435
21971 7590 03/16/2020
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/16/2020 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 UNITY OPTO TECHNOLOGY CO, LTD
____________________

Appeal 2020-001854
Reexamination Control 90/014,1061
Patent 9,423,113 B2
Technology Center 3900
____________________

Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1–27. An oral hearing was held on February 10, 2020. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention (U.S. Patent No. 9,423,113 B2 to Myers) is a
flat light emitting diode (LED) panel and LED driving circuitry therefor.
Power circuitry, configured to electrically couple the LED panel to external
AC power supply, is disposed within a first channel of a frame. The power

1 Appellants state that the real party in interest is Unity Opto Technology
Co., LTD. Appeal Br. 4.
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circuitry has a length to width ratio of at least 5 to 1, and optionally at least
10 to 1. The power circuitry is configured to convert an AC input into a DC
output suitable for powering the substantially flat LED panel. Abstract.
Claim 1 is reproduced below:
1. A light fixture comprising:
a frame configured to define a first channel;
a substantially flat light emitting diode (LED) panel disposed within
the frame; and drivers disposed within the first channel, each driver
being configured to electrically
couple the substantially flat LED panel to an external AC power supply
wherein the drivers are sized to be positioned entirely within the first
channel and has a length and a width, wherein the length-to-width ratio is at
least 5 to 1.

The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Spada US 2008/0101094 A1 May 1, 2008
Peifer US 2009/0213589 A1 Aug. 27, 2009
Tsai US 2009/03163696 A1 Dec. 24, 2009
Schexnaider US 2005/0219860 A1 Oct. 6, 2005
Lv US 2011/0149596 A1 Jun. 23, 2011
Glory JP 3140783 Jan. 28, 2008
Jiancheng CN 201513783U Sept. 30, 2009
Power
Integrations
“High Efficiency (≥85%), High Power
Factor (>0.9) 15 W T8 Isolated LED
Driver Using LinkSwitch™-PH
LNK406EG”, Document Number DER-
256, Revision 1.2, dated Oct. 7, 2010

Claims 1–6, 8–10, and 14–18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Tsai.
Claims 7, 11, 12, and 19–26 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Tsai.
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Claims 6 and 18 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Tsai and Peifer.
Claims 1–27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsai and Power Integrations.
Claims 11, 12, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tsai and Spada, or over Tsai, Power Integrations,
and Spada.
Claims 1–3, 5–16, and 19–27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Jiancheng.
Claims 6, 10, 13, 26, and 27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Jiancheng and Glory.
Claims 11, 12, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jiancheng, Spada, and Schexnaider.
Claims 1–3, 5–16, and 19–27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Jiancheng and Power Integrations, or over
Jiancheng, Glory, and Power Integrations, or Jiancheng, Spada, Schexnaider,
and Power Integrations.
Claims 1–27 rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lv and Jiancheng.
Claims 6, 10, 13, 18, 26, and 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lv, Jiancheng, and Glory.
Claims 11, 12, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lv, Jiancheng, Spada, and Schexnaider.
Claims 1–27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lv, Jiancheng, and Power Integrations, or over Lv,
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Jiancheng, Glory, and Power Integrations, or over Lv, Jiancheng, Spada,
Schexnaider, and Power Integrations.
Throughout this decision, we make reference to the Appeal Brief
(“Appeal Br.,” filed August 28, 2019), the Reply Brief (“Reply Br.,” filed
December, 30, 2019), and the Examiner’s Answer (“Ans.,” mailed October
28, 2019) for their respective details.
ISSUES
1. Does the combination of Lv and Jiancheng disclose or fairly
suggest a frame having a thickness of no more than about 1.0 inches, and an
LED driver disposed within said frame?
2. Do the teachings of Lv and Jiancheng lead the person having
ordinary skill in the art away from the use of LED drivers that are relatively
long and thin?
ANALYSIS
Rejection of claims 1-27 over Lv and Jiancheng
Appellant argues that the Examiner improperly relies on unsupported
state-of-the-art allegations to support the proposed modifications. Appeal
Br. 25, 51. Appellant refers specifically to the Examiner’s findings that,
inter alia, a person of ordinary skill “would appreciate that minimal overall
size is one of the advantages of LED panels,” “dimensions of the frame
members . . . can be selected based upon the specific application,” “various
length to width ratios could be selected based upon specific applications.”
Appeal Br. 51. Appellant contends that these allegations lack evidentiary
support and are contrary to the actual state of the art. Id.
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Appellant asserts that a person of ordinary skill in the art would not
have modified Lv in view of Jiancheng as the Examiner proposes because
such modifications would have had various disadvantages including a
significant increase in heat generation. Appeal Br. 51–52.
Appellant asserts that it would not have been obvious to modify Lv in
view of Jiancheng to have a frame thickness of no more than about 0.5
inches (claim 12), or to have the LED driver housed within a first channel of
a frame having a thickness of no more than about 1.0 inches (claim 11, 20).
Appeal Br. 52–53.
Appellant argues that it would not have been obvious to modify Lv in
view of Jiancheng to provide a 5:1 length to width ratio, because “there is no
indication that Lv’s driver does not already fit” in the frame channel.
Appeal Br. 53. Appellants also contend that the Examiner improperly relied
on the apparent dimensions of a not-to-scale figure. Appeal Br. 52.
Appellant’s arguments concerning the disadvantages of combining Lv
and Jiancheng are not persuasive. Appellant does not argue that Jiancheng
teaches away from combination with Lv, and the teachings of the references
do not in any event support such a contention. We agree with the Examiner
that Lv teaches driving modules 70 disposed within channels 164 on the
frame of a light fixture (Final Act. 20), and that Jiancheng teaches drivers
113 that convert AC voltage to DC voltage (id. at 21). We further agree
with the Examiner that the combined teachings of Lv and Jiancheng suggest
the desirability of sizing such drivers so that they may be contained within
the channel of a frame, because such a dimension (for example, a thickness
no more than about 1.0 inches or 0.5 inches) helps to minimize the overall
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size of the light fixture, one of the known advantages of LED panels. Ans.
22.
We further agree with the Examiner that such a change in dimensions
would have been obvious when the change yields only a predictable result.
Ans. 21. It would have been similarly predictable that the higher switching
frequency resulting from smaller driver components would lead to increased
heat generation. The person having ordinary skill in the art would have been
aware of a trade-off to be made between driver size and heat generation, and
could have selected any of several known methods for dissipating excess
heat.
In response to Appellants’ argument that the Examiner relied on
unsupported state-of-the-art allegations regarding the desirability of overall
smaller size of LED light panels, we determine that the prior art provides
implicit motivation to reduce the size of the light panels of the invention.
“[A]n implicit motivation to combine exists not only when a suggestion may
be gleaned from the prior art as a whole, but when the ‘improvement’ is
technology-independent and the combination of references results in a
product or process that is more desirable, for example because it is stronger,
cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.”
Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006). In this case, because the combination of
Lv and Jiancheng suggests LED drivers sized to fit within the channels of
the light fixture frame, implicit motivation therefore exists to combine the
references, resulting in a smaller overall light fixture.
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We conclude that the Examiner did not err in rejecting claims 1–27
over Lv and Jiancheng. We sustain the Examiner’s § 103(a) rejection.
OTHER REJECTIONS
Affirmance of the rejection of claims 1–27 based on Lv and Jiancheng
renders it unnecessary to reach the propriety of the Examiner’s decision to
reject those claims based on other grounds. See In re Gleave, 560 F.3d
1331, 1338 (Fed. Cir. 2009) (not reaching an obviousness rejection of
certain claims after affirming an alternative anticipation rejection of those
claims); see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (approving ITC’s determination based on a single dispositive issue,
and not reaching other issues not decided by the lower tribunal).
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CONCLUSION
1. The combination of Lv and Jiancheng suggests a frame having a
thickness of no more than about 1.0 inches, and an LED driver disposed
within said frame.
2. The teachings of Lv and Jiancheng do not lead the person having
ordinary skill in the art away from the use of LED drivers that are relatively
long and thin.
DECISION SUMMARY
In summary:
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Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–6, 8–10,
14–18
103 Tsai2
7, 11, 12, 19–
26
103 Tsai2
6, 18 103 Tsai, Peifer2
1–27 103 Tsai, Power
Integrations2

11, 12, 20, 21 103 Tsai and Spada; or
Tsai, Power
Integrations, and
Spada2

1–3, 5–16,
and 19–27
103 Jiancheng2
6, 10, 13, 26,
and 27
103 Jiancheng and
Glory2

11, 12, 20, 21 103 Jiancheng, Spada,
Schexnaider2

1–3, 5–16,
19–27
103 Jiancheng and
Power
Integrations; or
Jiancheng, Glory,
and Power
Integrations; or
Jiancheng, Spada,
Schexnaider, and
Power
Integrations2

1–27 103 Lv and Jiancheng 1–27
6, 10, 13, 18,
26, and 27
103 Lv, Jiancheng,
Glory2

11, 12, 20, 21 103 Lv, Jiancheng,
Spada,
Schexnaider2

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Patent 9,423,113 B2

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Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–27 103 Lv, Jiancheng, and
Power
Integrations; or
Lv, Jiancheng,
Glory, and Power
Integrations; or
Lv, Jiancheng,
Spada,
Schexnaider, and
Power
Integrations2

Overall
Outcome

1–27

The Examiner’s decision to reject claims 1–27 under 35 U.S.C.
§ 103(a) is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

2 As explained above, we do not reach this alternative rejection, for it is
merely cumulative to the Examiner’s obviousness rejection of claims 1–27
over Lv and Jiancheng. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir.
2009) (not reaching an obviousness rejection of certain claims after
affirming an alternative anticipation rejection of those claims); see also
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (approving
ITC’s determination based on a single dispositive issue, and not reaching
other issues not decided by the lower tribunal).
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Patent 9,423,113 B2

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Ssc

PATENT OWNER:

WILSON, SONSINI, GOODRICH & ROSATI
650 Page Mill Road
Palo Alto, CA 94304-1050

THIRD PARTY REQUESTER:

BLACK, MCCUSKEY, SOUERS & ARBAUGH, LPA
220 Market Avenue, South, Suite 1000
Canton, OH 44702