Ex Parte Flechsig et al

Patent Trial and Appeal BoardMar 24, 2016

12594832 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/594,832 10/06/2009 136186 7590 03/28/2016 Lumileds LLC 370 West Trimble Road San Jose, CA 95131 FIRST NAMED INVENTOR Juergen Flechsig 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2007P00304WOUS 7168 EXAMINER LEE, NATHANIEL J. ART UNIT PAPER NUMBER 2875 NOTIFICATION DATE DELIVERY MODE 03/28/2016 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): nancy.glynn@philips.com us-ip@patentlawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUERGEN FLECHSIG and PETER ROSENMUELLER Appeal2014-008305 Application 12/594,832 Technology Center 2800 Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and KARA L. SZPONDOWSKI, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner finally rejecting claims 1, 2, 4-8, 10, 11, and 13-20, all the pending claims in the present application. Claims 3, 9, and 12 are canceled. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. The present invention relates generally to a lamp, which is particularly a motor vehicle headlight, comprising a burner supported by a holder. See Abstract. Appeal2014-008305 Application 12/594,832 Claim 1 is illustrative: 1. Lamp comprising: a burner (12) for emitting light, the burner comprising a glass body, a holder (16) for mechanically connecting the burner (12) with a socket (14), whereby the burner (12) is supported by the holder (16), whereby the holder (16) comprises a metal ring (26) surrounding the burner (12), the metal ring (26) being thermally connected to the burner (12) via a single connecting surface (40) being in planar contact to the burner (12) at an angle of 2:350Â° in circumferential direction, wherein the burner ( 12) comprises a metal bush at least partially moulded in the glass body of the burner, said metal bush being in planar contact to the metal ring (26) of the holder (16), and wherein the holder (16) comprises at least two legs (28) protruding from the metal ring (26); each of the legs (28) comprising a leg portion (30) and a foot portion (32), wherein the leg portion (30) and the foot portion (32) are one-piece; and wherein said at least two legs form at least one cooling opening between the glass body and the socket Appellants appeal the following rejections: Rl. Claims 1, 2, and 4-8 are rejected under 35 U.S.C. Â§ 102(b) as being anticipated by, or, in the alternative, under 35 U.S.C. Â§ 103(a) as obvious over Coushaine '252 (US 6,254,252 Bl, July 3, 2001); R2. Claims 10 and 11 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Coushaine '430 (US 5,855,430, Jan. 5, 1999); and R3. Claims 13-20 are rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Coushaine '430. 2 Appeal2014-008305 Application 12/594,832 ANALYSIS Claims 1, 2, and 4-8 Issue 1: Did the Examiner err in finding that Coushaine '252 discloses (or teaches or suggests) at least two legs forming at least one cooling opening between the glass body and the socket, as set forth in claim l? Appellants contend that in Coushaine '252 "legs 324 radially extend (in an X-Y plane) and accordingly do not extend in a vertical direction. . .. there is no gap formed ... Thus, no cooling opening between the glass body and the socket is formed by these legs" (App. Br. 7). For the first time in the Answer, the Examiner provides an annotated version ofCoushaine '252's Fig. 12 and finds that "Coushaine's holder 318 comprises two legs 324 which extends from the metal ring 320 (see Fig. 6) . . . there is a cooling opening" (Ans. 3--4). Appellants respond that "it appears that the annotated descriptors 'Bottom of 320,' 'Leg Portion,' and 'Foot Portion' each contain an arrow pointing to ('spring') item 400. Further, it is unclear what is being regarded as the 'Cooling Opening"' (Reply Br. 3). We agree with Appellants. Although the Examiner attempts to illustrate in Coushaine '252's Fig. 12 the claimed wherein said at least two legs form at least one cooling opening between the glass body and the socket (see Ans. 3), we agree with Appellants that it is unclear what is being regarded as the "cooling opening" because the Examiner's "arrows" appear to point to item 400 (i.e., a spring), instead of pointing to the leg portions 324 which is required to form the cooling opening (see Coushaine '252 col. 9, 1. 28). 3 Appeal2014-008305 Application 12/594,832 Therefore, we are constrained by the record before us to find that the Examiner erred in finding that Coushaine '252 anticipates and/or makes obvious the claimed at least two legs form at least one cooling opening between the glass body and the socket, as required by claim 1. 1 Since this issue is dispositive regarding our reversal of independent claim 1, we need not address Appellants' additional arguments regarding these claims (App. Br. 5-7). Claims 10, 11, and 13-20 Issue 2: Did the Examiner err in finding that Coushaine '430 discloses (or teaches or suggests) the metal ring being in direct contact with and thermally connected to the burner, as set forth in claim 13? Appellants contend that in Coushaine '430 "holder 74 and its item surface 78 are not in direct contact with burner 38. Rather, they are in contact with holding cup 80" (App. Br. 8). Appellants further contend that the metal bush embodiment in claim 1 "is of no relevance in claim 13 (or claim 10) where the term 'bush' does not even appear" (App. Br. 9) and the specification indicates that "the metal ring (without any bush) may comprises the connecting surface .... claim 13 []recites direct contact (i.e., no intervening bush/bushing)" (id. at 10). The Examiner finds that "[Appellants'] claim language in claims 10 and 13 include the generic burner 12 without claiming whether or not the 1 In the event of further prosecution of claims 1, 2 and 4-8, we leave it to the Examiner to consider if Coushaine '430 anticipates, or in the alternative makes obvious, the claimed "cooling opening" in claim 1 (see Final Act. 7, regarding claim 10). 4 Appeal2014-008305 Application 12/594,832 metal bushing is present, and so [they] have been interpreted as having a claim scope including both embodiments of the burner, with or without the metal bushing" (Ans. 5). We agree with the Examiner. Although we agree with Appellants that the term "bush" does not appear in independent claims 10 and 13, the claims, as written (i.e., the term comprising), do not prohibit the burner from comprising a metal bush as exemplified in Appellants' Specification (see Spec. 3: 16-17). "An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process." In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). "Construing claims broadly during prosecution is not unfair to the applicant ... because the applicant has the opportunity to amend the claims to obtain more precise claim coverage." See In re American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, we agree with the Examiner that Appellants failed to claim the embodiment having a thermal connection without a bush (see Ans. 5). Therefore, we agree with the Examiner the Coushaine '430's Fig. 1 embodiment, with the bushing 80, is within the scope of the claims, i.e., the metal ring being in direct contact with and thermally connected to the burner, because Coushaine '430's burner 38, which can include bushing 80 consistent with Appellants' Specification, is in direct contact with the metal ring 74. Accordingly, we sustain the Examiner's rejection of claim 13. Appellants' arguments regarding the Examiner's rejection of independent claim 10 rely on the same arguments as for claim 13, and Appellants do not argue separate patentability for dependent claims 11 and 14-20 (see App. 5 Appeal2014-008305 Application 12/594,832 Br. 8-10). We, therefore, also sustain the Examiner's rejections of claims 10, 11, and 14-20. DECISION We reverse the Examiner'sÂ§ 102(b) or, in the alternative,Â§ 103(a) rejection of claims 1, 2, and 4-8 over Coushaine '252. We affirm the Examiner's Â§ 102(b) rejection of claims 13-20 and the Â§ 103(a) rejection of claims 10 and 11 over Coushaine '430. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l .136(a)(l )(iv). AFFIRMED-IN-PART 6