Ex Parte Dassanayake et al

Patent Trial and Appeal Board

Sep 22, 2014

13172435 (P.T.A.B. Sep. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL
BOARD
____________
Ex parte MAHENDRA DASSANAYAKE, SRINI DE MEL, and
JAGATH SAMARABANDU
____________
Appeal 2013-000705
Application 13/172,435
Technology Center 2800
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2013-000705
Application 13/172,435

2
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1–20. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Claim 1, the sole independent claim, is representative of the claimed
invention (emphasis added):
1. A light assembly comprising:
a cover;
a housing coupled to the cover;
a lamp base coupled to the housing;
a first circuit board disposed within the housing, said first circuit
board having a plurality of radially-extending conductors separated by a
non-conductive path, each of a plurality of light-emitting diodes coupled to
two adjacent radially extending conductors;
a heat sink thermally coupled to the light-emitting diodes disposed
within the housing, said heat sink comprising an opening therethrough;
said radially extending conductors conduct heat radially outwardly
from the light-emitting diodes toward the housing; and
an elongated control circuit board assembly electrically coupled to the
light-emitting diodes of the first circuit board and the lamp base, said control
circuit board extending through the opening, said control circuit board
having a plurality of electrical components thereon for controlling the light-
emitting diodes.

The Examiner maintains, and Appellants appeal, the following
rejections under 35 U.S.C. § 103(a):
1) Claims 1–4, 8–10, 12, and 18–20 as unpatentable over
over Reisenauer et al. (U.S. Pub. No. 2009/0296387 A1, published
Dec. 3, 2009) in view of Chan et al. (U.S. Pat. No.7,841,741 B2,
patented Nov. 30, 2010);

2) Claim 5 as being unpatentable over the combined prior art of
Reisenauer, Chan, and Wu et al. (U.S. Pub. No. 2011/0075412 A1,
published Mar. 31, 2011).
Appeal 2013-000705
Application 13/172,435

3

3) Claims 6 and 7 as being unpatentable over the combined prior art of
Reisenauer, Chan, Wu, and Lee et al. (U.S. Pat. No. 7,226,189 B2,
patented June 5, 2007); and

4) Claim 11 as being unpatentable over the combined prior art of
Reisenauer, Chan, and Johnson et al. (U.S. Pub. No. 2008/0106893
A1, published May 8, 2008).

Appellants state that claims 8–10, 12, 18, and 19 “stand or fall
together with claim 1” (App. Br. 7). Appellants rely upon the arguments for
claim 1 for separately rejected claim 11 (App. Br. 9). Appellants separately
argue the remaining dependent claims, including those separately rejected
(App. Br. 6–11).
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ independent claim 1 and all of its dependent claims is
unpatentable over the applied prior art. We sustain the above rejections
based on the findings of fact, conclusions of law, and rebuttals to arguments
expressed by the Examiner in the Answer.
We add the following for emphasis.
It is axiomatic that “the PTO must give claims their broadest
reasonable construction consistent with the specification . . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims
Appeal 2013-000705
Application 13/172,435

4
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” Id.
Appellants’ argument that Reisenauer does not teach a heat sink
disposed within the housing with an opening therethrough because the “heat
sink of Reisenauer is described as a housing” (App. Br. 5; see also, Reply
Br. 2) is unavailing. As the Examiner points out, Reisenauer explicitly states
the housing includes a heat sink (Answer 5; Reisenauer ¶ [0012]). The
central core of the heat sink has an opening therethrough (e.g., Fig. 8 heat
sink 120, located within housing 102, has a central opening containing
printed circuit board 114).
Appellants have not directed our attention to any persuasive reasoning
or credible evidence to establish that the Examiner’s interpretation is
unreasonable, nor to special definition in the Specification that would
establish that Reisenauer does not encompasses the claimed “heat sink
thermally coupled to the light emitting diodes [LEDs] disposed within the
housing, said heat sink comprising an opening therethrough” as recited in
claim 1.
Appellants’ argument that Chan does not teach or suggest radially
extending conductors that conduct heat radially outward from the light
emitting diode toward the housing (App. Br. 6; Reply Br. 2, 3) is not
persuasive. As pointed out by the Examiner, Reisenauer fails to show the
circuitry for its LEDs (Final 3; e.g., Reisenauer Fig. 5 LEDs 132), however
Chan exemplifies a known configuration of radially extending conductors to
a similar configuration of LEDs (Fig. 7). Appellants have not sufficiently
refuted the Examiner’s reasonable determination that such radially extending
Appeal 2013-000705
Application 13/172,435

5
conductors would, contrary to Appellants’ assertion, conduct heat radially
outward to the housing (Ans. 5, 6).1
Appellants have also not adduced any persuasive technical reasoning
or evidence in response to the Examiner’s determination that the use of
radially extending conductors for light emitting diodes as exemplified by
Chan for the light emitting diode fixture of Reisenauer with its heat
sink/housing arrangement would have been prima facie obvious, as such a
combination appears to be the use of known prior art elements according to
their established functions (see, e.g., Ans. 5, 6; see generally App. Br.,
Reply Br.). KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”)
Furthermore, under the flexible inquiry set forth by the Supreme
Court, the PTO must take account of the “inferences and creative steps,” or
even routine steps, that an ordinary artisan would employ. Ball Aerosol and

1 We note that Appellants presented arguments for the first time in the Reply
Brief filed October 2, 2012, directed to the skewed or bent shape of Chan’s
radially extending conductors (Reply Br. 3). It is inappropriate for
Appellants to discuss for the first time in the Reply Brief matters that could
have been raised in the Appeal Brief. As the Board has found, “[t]he failure
to raise all issues and arguments diligently, in a timely fashion, has
consequences,” and thus, such newly-raised arguments are technically
waived. Ex parte Borden, 93 USPQ2d 1473, 1474-1475 (BPAI 2010)
(informative decision) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner's rejections, but were not.”). In any event, the claim
language does not preclude the shape of the radially extending conductors
exemplified in Chan.

Appeal 2013-000705
Application 13/172,435

6
Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed.
Cir. 2009). It is well settled that a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in this art
would have reasonably been expected to draw therefrom. See In re Fritch,
972 F.2d 1260, 1264-65 (Fed. Cir. 1992).
In light of these principles and the tenets of claim interpretation, a
preponderance of the evidence supports the Examiner’s rejections the
various dependent claims argued separately (see, e.g., Answer 6–10).
Appellants have not shown any error in the Examiner’s determination that
the spaced apart fins of Reisenauer reasonably encompass the claimed
spaced apart layers (e.g., claims 3, 4, 20) since no orientation of the layers is
specified by the claim language. Likewise, Appellants have not shown error
in the Examiner’s determination that the use of a hyperboloidal shape
housing portion would have been obvious, with or without Wu (Ans. 7, 8),2
and that the addition of perforations in the housing for their known heat
dissipating effects would have likewise been a predictable use of a known
prior art element for its established function (Lee, Fig. 4, e.g., heat
dissipating holes 43; Ans. 8). “A person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.
It is incumbent upon Appellants to establish that the present inventors
had to resort to more than routine experimentation to configure such a
known LED device as depicted in Reisenauer to include the various features

2 Contrary to Appellants’ assertions in the Reply Brief (Reply Br. 4), no
criticality has been shown on this record for the recited hyperboloidal
portion. Indeed, Appellants’ Specification indicates that the shape is not
critical (Spec. ¶ [0061]).
Appeal 2013-000705
Application 13/172,435

7
suggested by the secondary references applied by the Examiner. However,
no such evidence is of record. Appellants have not provided any persuasive
technical reasoning or evidence that it would have required more than
ordinary creativity to form the recited light assembly emitting device of
claims 1–20. Appellants at most have provided mere attorney argument to
that effect, and such arguments of counsel cannot take the place of evidence.
See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606
F.2d 303, 315 (CCPA 1979).
The decision of the Examiner is affirmed.
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

cdc