Ex Parte Chowdhury et al

Patent Trial and Appeal Board

Aug 3, 2017

12979476 (P.T.A.B. Aug. 3, 2017)

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.
12/979,476 12/28/2010 Ashfaqul I. Chowdhury 244773-2/GLOZ
200558US01
3065
74495 7590 08/03/2017
FAY SHARPE LLP/GE LIGHTING SOLUTIONS, LLC
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
GYLLSTROM, BRYON T
ART UNIT PAPER NUMBER
2875
MAIL DATE DELIVERY MODE
08/03/2017 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 ASHFAQUL I. CHOWDHURY, GARY R. ALLEN,
and THOMAS A. KNAPP
Appeal 2016-000935
Application 12/979,476
Technology Center 2800
Before CATHERINE Q. TIMM, CHRISTOPHER L. OGDEN, and
LILAN REN, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL1
1 In explaining our Decision, we cite to the Specification dated December
28, 2010 (Spec.), Final Office Action dated August 14, 2014 (Final), the
Appeal Brief dated March 16, 2015 (Appeal Br.), the Examiner’s Answer
dated August 13, 2015 (Ans.), and the Reply Brief dated October 13, 2015
(Reply Br.).
Appeal 2016-000935
Application 12/979,476
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision to reject claims 1—7, 10, 12—15, 17—19, 21—29, and 32—
36.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The claims are directed to a heat sink (see, e.g., claim 1), a light
emitting diode (LED)-based lamp comprising the heat sink (see, e.g., claim
22), and a method of forming the heat sink (see, e.g., claim 29). The heat
sink includes a body and fins, both of which are comprised of plastic, and a
thermally conductive layer disposed over at least the side walls of the fins.
Claim 1 is illustrative:
1. A heat sink comprising:
a heat sink body and heat radiating fins, said fins
including a first edge engaging said body and a remote second
edge, side walls extending between said first edge and said
second edge, said body and fins being comprised of a plastic;
and
a thermally conductive layer disposed over at least the
side walls of said heat sink fins, said thermally conductive layer
extending between said first edge and said second edge.
Appeal Br. 10.
2 Appellants identify the real party in interest as GE Lighting Solutions,
LLC.
3 The Office Action Summary page of the Final Office Action lists claim 16
as rejected, but the Examiner fails to include claim 16 in any rejection.
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Application 12/979,476
The Examiner maintains the following rejections:
A. The rejection of claims 1—7, 10, 12—14, 17—19, 21—25, 28, 29, 32, 35,
and 364 under 35 U.S.C. § 103(a) as obvious over Janssen5 in view of
Chen;6
B. The rejection of claim 15 under 35 U.S.C. § 103(a) as obvious over
Janssen in view of Chen, further in view of Schultz;7
C. The rejection of claims 26 and 27 under 35 U.S.C. § 103(a) as obvious
over Janssen in view of Chen and further in view of Davey;8 and
D. The rejection of claims 33 and 34 under 35 U.S.C. § 103(a) as obvious
over Janssen in view of Burkholder.9
OPINION
Rejection A
In disputing the Examiner’s rejection of claims 1—7, 10, 12—14, 17—
19, 21—25, 28, 29, 32, 35, and 36 under 35 U.S.C. § 103(a) as obvious over
Janssen in view of Chen (Rejection A), Appellants limit their arguments to
specific claims and groups of claims. Appeal Br. 4—7. In so far as separate
issues arise for the separately argued claims and groups of claims, we
address the issues separately below.
4 The Examiner lists claims 25 and 26 at the end of the claim list, but it is
clear from the body of the rejection that the Examiner meant to list claims 35
and 36. Final 9. Appellants list the claims correctly. Appeal Br. 4. Thus,
the error was not harmful.
5 Janssen, WO 2009/115512 Al, published Sept. 24, 2009.
6 Chen, US 2009/0303735 Al, published Dec. 10, 2009.
7 Schultz et al., US 2009/0273925 Al, published Nov. 5, 2009.
8 Davey et al., US 2009/0174302 Al, published July 9, 2009.
9 Burkholder, US 7,284,882 B2, issued Oct. 23, 2007.
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Application 12/979,476
Claims 1 and 29
Appellants argue claims 1 and 29 together. Appeal Br. 4—5.
As to the rejection of claims 1 and 29, the Examiner finds that Janssen
teaches forming a heat sink comprised of a plastic and a thermally
conductive layer disposed over the entire heat sink. Final 3. Appellants
contend that the Examiner improperly relied upon two mutually exclusive
teachings within Janssen, which are not combinable choices, to reach the
conclusion of obviousness. Appeal Br. 4. Thus, for claims 1 and 29, the
issue is this: Have Appellants identified a reversible error in the Examiner’s
finding regarding Janssen?
Appellants have not identified such an error.
There is no dispute that Janssen teaches two embodiments. Compare
Appeal Br. 5, with Ans. 4. As stated by Appellants “Janssen teaches either
(i) a thermally conductive plastic heatsink substrate including an electrically
insulating coating (embodiment 1) or (ii) a thermally conductive plastic heat
sink include a thermally conductive coating on an inner part of the substrate
(embodiment 2).” Appeal Br. 5; see also Janssen p. 4,11. 3—23. It is the first
embodiment that is relied upon by the Examiner. Final 3, citing Janssen p.
4,11. 3-15.
As acknowledged by Appellants (Appeal Br. 5), in the first
embodiment, Janssen teaches that the electrically insulating coating can
cover the surface of the heat sink. Janssen p. 3,1. 30 — p. 4,1. 2.
Appellants point out that their claims are drawn to a thermally
conductive coating, not an electrically insulating coating. Appeal Br. 5.
This is correct, but this fact does not support a determination that the
Examiner reversibly erred. Janssen teaches forming the electrically
insulating coating layer from a combination of polymer and an additive
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Application 12/979,476
preferably comprising a black pigment that further enhances heat
dissipation. Janssen p. 10,11. 17—29. Although the coating is electrically
insulating, it is also thermally conductive.
As noted by the Examiner, “coatings and objects in general, may be
both electrically insulating and thermally conductive.” Ans. 3. Chen
supports this statement. Chen teaches disposing a heat radiation layer (B)
formed of an electrically insulting but high heat conducting material, such as
aluminum nitride mixed with polymer material, on the fins of a heat sink.
Chen | 61 (as informed by 1 58).
Thus, the electrically insulting and thermally conductive coating of
Janssen’s first embodiment is a thermally conductive layer as required by
claims 1 and 29. The claims do not exclude coatings that are heat insulating
yet thermally conductive.
Appellants have not identified a reversible error in the Examiner’s
finding that Janssen teaches a thermally conductive layer disposed over
plastic heat sink body.
Claims 2—6
Appellants direct arguments to the rejection of claims 2—6. Appeal
Br. 6. Claim 2, among other things, limits the thermal conductivity of the
thermally conductive layer to 50 W/m K or higher. Claim 3 depends from
claim 2 and, thus, is also so limited. Claims 4—6 each limit the thermal sheet
conductance of the thermally conductive layer. Claim 4 requires a thermal
sheet conductance of at least 0.025 W/K, claim 5 limits it to at least 0.05
W/K, and claim 6 limits it to at least 0.0025 W/K.
The Examiner finds that Janssen teaches a thermal conductive layer
having the required thermal conductivity and thermal sheet conductance,
citing to page 5, lines 24—29. Final 4—5.
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Application 12/979,476
As pointed out by Appellants, the portion of Janssen cited by the
Examiner does not support this finding. Appeal Br. 6; Reply Br. 5. Page 5,
lines 24—29 of Janssen disclose an in-plane thermal conductivity of 25
W/m K or higher for the heat sink body. Janssen p. 5,11. 20—29. This
portion of Janssen does not disclose the thermal conductivity of the
electrically insulating coating layer.
Appellants have identified a reversible error in the Examiner’s
rejection of claims 2—6 based on the lack of evidentiary support for the
Examiner’s findings for these claims.
Claim 7
With respect to claim 7, Appellants contend that “Janssen specifically
teaches the necessary inclusion of a conductive filler (see thermally
conductive plastic material, page 3, line 33 and thermally conductive plastic
material, page 4, line 17).” Appeal Br. 6 (emphasis added).
Janssen does not support Appellants’ contention. Claim 7 does not
exclude thermally conductive plastic material. Claim 7 further limits the
heat sink of claim 1 to a heat sink where “the heat sink body and fins do not
include any metal or electrically conductive filler material.” Claim 7
(emphasis added).
Janssen suggests heat sink bodies and fins containing no metal or
electrically conductive filler material. Janssen suggests the use of any
material that can be dispersed in the polymer that improves thermal
conductivity and lists non-electrically conductive components such as
alumina, silicon nitride, aluminum nitride, and glass. Janssen p. 7,11. 12—23;
see also Chen | 58 (teaching a composition of polymeric materials including
aluminum nitride powder as having high thermal conductivity properties as
well as electrical insulation properties).
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Application 12/979,476
Appellants have not identified a reversible error in the Examiner’s
rejection of claim 7.
Claims 12 and 13
Claim 12, and by virtue of its dependency claim 13, require an
additional polymeric layer. This layer is disposed between the fins and the
thermally conductive layer.
In the rejection, the Examiner finds that Janssen discloses the
additional polymeric layer at page 6, lines 3—12 (Final 5), but as pointed out
by Appellants, this portion of Janssen is not directed to an additional
polymeric layer, it instead discusses the composition of the heat sink body.
Appeal Br. 6; Janssen p. 6,11. 3—12.
In the Answer, the Examiner puts forth a new obviousness analysis
based upon Janssen’s disclosure of placing a metal coating layer on the
opposite (inner) surface of the heat sink (Janssen p. 5,11. 14—16). Ans. 5.
The suggestion of placing a coating on the opposite surface of the heat sink
body does not provide sufficient evidence to support a finding of a
suggestion for placing a polymeric layer between the fins and thermally
conductive layer.
Appellants have identified a reversible error in the Examiner’s
rejection of claims 12 and 13.
Claim 14
Claim 14 requires that the thermally conductive layer comprise: (1) a
copper layer encompassing the heat sink body and fins; and (2) a passivating
metal layer disposed on the copper layer.
The Examiner finds that Janssen’s teachings at page 7, lines 12—24
amount to a teaching of the required copper and passivating metal layers.
Final 6. We disagree. The cited portion of Janssen teaches adding copper
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filler or fiber to the plastic of the body of the heat sink. Janssen p. 6,11. 3—
12; p. 7,11. 12—23. This composition is different than the composition of the
thermally conductive coating layer, which is taught as made from
electrically insulating plastic material that may contain an additive such as a
black pigment that enhances heat dissipation. Janssen p. 10,11. 17—29. Nor
can we agree with the Examiner (Ans. 5) that copper particles dispersed in a
polymer result in a copper layer.
Appellants have identified a reversible error in the Examiner’s
rejection of claim 14.
Claim 19
Claim 19 requires the fins be thermally insulating. The Examiner
acknowledges that Janssen fails to explicitly disclose that the fins are
thermally insulating. Final 7. In fact, Janssen requires the heat sink body to
be thermally conductive. Janssen p. 3,11. 30—32. After stating that Janssen
fails to disclose that the heat sink and fins are thermally insulating, the
Examiner states that:
Chen teaches this configuration was well known [see
figure 1, when fins cool they thermally insulate the LED],
It would have been obvious to one having ordinary skill
in the art at the time of the invention to implement such a
structure, in order to increase exposed surface area for thermal
transfer [see Chen, paragraph 8, 13].
Final 7. We find no such teaching in Chen that when the fins cool, they
thermally insulate the LED, nor is this finding based on a sound scientific
principle. Nor do we see any logical connection between this finding and
the rationale in the obviousness statement.
We further do not agree with the Examiner’s characterization of the
claim language as going “more towards a method of use.” Ans. 6. The fins,
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Application 12/979,476
according to claim 19, must have the property of being thermally insulating.
Thus, the fins must be made of a material that reduces thermal transfer of
heat. The limitation restricts the composition of the fins.
Appellants have identified a reversible error in the Examiner’s
rejection of claim 19.
Claims 21 and 28
Claims 21 and 28 require the heat sink body include passages that are
coated by the thermally conductive layer disposed over the heat sink body.
These passages define thermal shunting paths.
The Examiner finds that Janssen teaches the required coated passages
at page 7, lines 20-24 and points to “strand” shapes disclosed in this portion
of Janssen (Final. 7), but as pointed out by Appellants, this strand shape is a
particle shape, not a passage shape. Appeal Br. 7.
Appellants have identified a reversible error in the Examiner’s
rejection of claims 21 and 28.
Claim 24
Claim 24 depends from claim 22, which is directed to an LED-based
lamp comprising the heat sink of claim 1 and further includes an LED
module. Claim 24 further requires the fins be “in optical communication
with said LED module.” We take “optical communication” to mean that the
fins must be shaped and located so that light from the LED is able to
illuminate the fins. See, e.g., Figs. 12—13.
The Examiner finds that “Janssen discloses the LED-based lamp of
claim 22, wherein the fins are in optical communication with said LED
module [see page 11, lines 3-9].” Final 8. However, we agree with
Appellants that this portion of Janssen fails to disclose the necessary optical
communication. Appeal Br. 7. Page 11, lines 3—9 of Janssen disclose that
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“the heatsink is a heat spreader acting as a protective housing for the
electronic parts of an LED device” and envelopes the electronic parts of the
device to, among other things, protect the electronic parts from overheating.
Janssen is concerned with protecting the electronic parts of the device and is
silent with regard to the location of the heatsink in relation to the LEDs.
Appellants have identified a reversible error in the Examiner’s
rejection of claim 24.
Rejection B
Claim 15 depends from claim 14. The Examiner rejects claim 15
under 35 U.S.C. § 103(a) as obvious over Janssen in view of Chen, further in
view of Schultz. The Examiner does not apply Schultz in a way that
overcomes the deficiency in the rejection of claim 14.
Appellants have identified a reversible error in the rejection of claim
15, the error being the same as that made in the rejection of claim 14.
Rejection C
The Examiner rejects claims 26 and 27 under 35 U.S.C. § 103(a) as
obvious over Janssen in view of Chen and further in view of Davey.
Claims 26 and 27 depend from claim 22. Claim 26 further requires
the LED-based lamp of claim 22 have an A-line bulb configuration. Claim
27 requires an MR or PAR configuration. There is no question that the A-
line, MR, and PAR configurations were known traditional lamp shapes for
light bulbs. Final 10, citing Davey Fig. 2; Appeal Br. 8; Spec. 1 53
(disclosing that the light bulb is suitable for retrofitting incandescent A-line
bulbs). Nor is there any dispute that Davey discloses an A-line shaped lamp
with LEDs 20 around a bulb-shaped housing. Appeal Br. 8.
According to the Examiner, it would have been obvious to one of
ordinary skill in the art at the time of the invention to configure the LED
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device suggested by Janssen and Chen in a light bulb according to the
general standards associated with A-line, MR, and PAR bulb configurations
to provide for lights that are easily interchangeable and useful in pre-existing
fixtures. Final 10—11; Ans. 7.
Although Appellants are correct that in some of the embodiments of
their invention disclosed in the Specification they achieve the traditional
lamp shape via the configuration of the heat sink fins, claims 26 and 27 are
not limited to using the fins to achieve the A-line, MR, and PAR bulb
shapes.
Appellants have not identified a reversible error in the Examiner’s
rejection of claims 26 and 27.
Rejection D
Appellants do not direct any arguments to the rejection of claims 33
and 34 under 35 U.S.C. § 103(a) as obvious over Janssen in view of
Burkholder. Thus, Appellants have not identified a reversible error in this
rejection.
CONCLUSION
With regard to Rejection A, we sustain the rejection of claims 1,7, 10,
18, 22, 23, 29, 32, 35, and 36, but we do not sustain the Examiner’s rejection
of claims 2—6, 12—14, 17, 19, 21, 24, 25, and 28.
With regard to Rejection B, we do not sustain the rejection of claim
15.
With regard to Rejection C, we sustain the rejection of claims 26 and
27.
With regard to Rejection D, we sustain the rejection of claims 33 and
34.
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We summarize the disposition in the table below:
Rej. Claims
Rejected
Basis Referenee(s) Affirmed Reversed
A 1-7, 10, 12-14,
17-19,21-25,28,
29, 32,35,36
§103 Janssen
Chen
LA 10.
18,22, 23,
29, 32, 35,
36
2-6, 12-
14, 17, 19,
21,24,25,
28
B 15 §103 Janssen
Chen
Schultz
15
C 26, 27 §103 Janssen
Chen
Davey
26, 27
D 33,34 §103 Janssen
Burkholder
33,34
Summary of
claim disposition
1,7, 10, 18,
22, 23, 26,
27, 29, 32-
36
2-6, 12-
14, 15, 17,
19,21,24,
25,28
DECISION
The Examiner’s decision is affirmed-in part.
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)(1).
AFFIRMED-IN-PART
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