Ex Parte Nall et al

Patent Trial and Appeal BoardDec 14, 2012

11289672 (P.T.A.B. Dec. 14, 2012)

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. 11/289,672 11/29/2005 Jeffrey Nall GLOZ 200317 7421 74495 7590 12/17/2012 FAY SHARPE LLP/GE LIGHTING SOLUTIONS, LLC 1228 Euclid Avenue, 5th Floor The Halle Building Cleveland, OH 44115-1843 EXAMINER HAN, JASON ART UNIT PAPER NUMBER 2875 MAIL DATE DELIVERY MODE 12/17/2012 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 JEFFREY NALL and MATTHEW MRAKOVICH, ____________ Appeal 2010-008558 Application 11/289,672 Technology Center 2800 ____________ Before, STEPHEN C. SIU, MICHAEL R. ZECHER, and BRIAN J. McNAMARA, Administrative Patent Judges. McNAMARA, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008558 Application 11/289,672 2 SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 2-6, 8-12 and 19-23. Claims 1, 7, and 13-18 have been cancelled. We have jurisdiction under 35 U.S. C. § 6(b). We reverse. STATEMENT OF THE CASE Appellants invention relates to LED-based lighting assemblies, including lighting assemblies for flexible lighting strips and other lighting assemblies. (Spec. ¶[0001]). One or more LEDs are disposed on a printed circuit board with a thermoplastic overmolding having a melting temperature of greater than about 100°C and a thermal conductivity greater than or about 1W/m . K. (Spec. ¶ [0010]). The thermoplastic overmolding covers at least portions of the printed circuit board. (Id.). Claim 10 is illustrative. 10. A lighting assembly comprising: a plurality of LEDs; a plurality of spaced-apart printed circuit boards, the plurality of LEDs being disposed on the spaced-apart printed circuit boards; a plurality of thermoplastic overmoldings corresponding to the plurality of printed circuit boards, the thermoplastic overmoldings covering at least portions of the corresponding printed circuit boards proximate to the LEDs disposed on the printed circuit boards, the thermoplastic of the thermoplastic overmoldings having a melting temperature greater than about 100°C and having a thermal conductivity greater than or about 1W/m . K ; a flexible electrical cable including a plurality of flexible conductors and insulation surrounding the flexible conductors; and a plurality of insulation-displacing conductors electrically connected with and secured to each printed circuit board, the plurality of insulation-displacing conductors displacing the cable insulation and electrically connecting with flexible conductors so that the plurality of Appeal 2010-008558 Application 11/289,672 3 LEDs disposed on the plurality of printed circuit boards are connectable with a power source via circuitry of the printed circuit boards, the insulation displacing conductors, and the flexible conductors of the flexible electrical cable. THE REJECTIONS Claims 2-6, 8-12 and 19-23 were rejected under 35 U.S.C. 103(a) as unpatentable over US 7,241,031 B2 (“Sloan”) in view of U.S. Patent Publication 2005/0276053 A1 (“Nortrup”). CONTENTIONS As noted by Appellants, a primary issue in dispute is the construction of the claim term “overmolding.” (App. Br. 9). Since “overmolding” appears in all the claims which are the subject of this appeal, we turn first to construing this term. On the basis that claims terms are given their broadest reasonable interpretation during patent prosecution, the Examiner finds that Sloan discloses a plurality of thermoplastic overmoldings covering at least portions of the corresponding printed circuit boards. (Ans. 3, 11-12). In support of the position that Sloan discloses an “overmolding” the Examiner cites Sloan’s disclosure of a plastic housing 90 in Figures 11 and 12, as described at column 6, lines 65-66. (Ans. 3). The Examiner also states that Sloan’s disclosure of a molded plastic housing at column 4, line 66 - column 5, line 3, which discusses housing 20 shown in Figures 8 and 9, sufficiently teaches an “overmolding,” because Sloan’s housing covers portions of the printed circuit board as claimed. (Ans. 12). Although not citing it as a basis of rejection, the Examiner’s Answer introduces a new reference, US 6,435,691 (“Macey”), to support the position that as used in the art Appeal 2010-008558 Application 11/289,672 4 “overmolding/overmolded” need not be a process of molding over, because in Macey the overmolded layer 53 may wrap around the rim of a lens. (Ans. 12). Appellants contend that Sloan’s housing does not teach the claimed thermoplastic “overmolding” and that the Examiner’s construction converts Sloan’s separately formed housing, once placed over a circuit board, into an “overmolding.” (App. Br. 13). Appellants contend that the Examiner’s construction of “overmolding” as a molding that is over something is inconsistent with the use of the term “overmolding” in the art, for which an “overmolding” is a material that is molded over something. (App. Br. 12). Appellants argue that the ordinary meaning of the noun “overmolding” is a material that is formed or molded over an item. (App. Br. 11). In support of this construction, Appellants cite to the use of the term “overmolding” as a verb to indicate that a material is applied around a substrate in US 5,986,317, made of record in an IDS filed June 28, 2007. (App. Br. 10). Appellants do not object to the Examiner’s citing Macey (Reply Br. 2). Appellants instead argue that the overmolded layer 53 in Macey supports Appellants’ construction because it appears that overmolded layer 53 maintains intimate contact as it wraps around the rim 54 of lens 21, as would be consistent with Appellants’ construction of the “overmolding.” (Reply Br. 5). ANALYSIS We agree with the Examiner that during prosecution claims are given their broadest reasonable interpretation. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). While being mindful not to read limitations from the specifications into the claims, we also cannot ignore the specification in construing claim terms. It is the use of the words in the context of the written description and Appeal 2010-008558 Application 11/289,672 5 customarily by those skilled in the relevant art that accurately reflects both the “ordinary” and the “customary” meaning of the terms in the claims. Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003). The Examiner finds that because the term “thermoplastic overmolding” was not specifically defined in the specification, thermoplastic overmolding (broadly interpreted) was sufficiently taught by the structure of Sloan’s plastic housing 90 being over various parts of the circuit board. (Ans. 12). However, the specification refers to the overmoldings as “free-standing” (Spec. ¶¶ [0027, 0028, 0030, 0031, 0033, 0036, 0038]) and discloses that an insert molding process can be employed to form the high thermal conductivity material overmoldings. (Spec. ¶¶[0028-0029]). The specification further discloses that because the lighting assembly is removed from the mold after completion of the insert molding process, the lighting assembly does not include a container or housing to contain the thermoplastic or other high thermal conductivity overmoldings. (Spec. ¶[0030]). Thus, the specification appears to distinguish a “housing” which would be installed over the LEDs as taught by Sloan, from the claimed “overmolding” which would remain after a mold is removed. We also agree with Appellants that Macey supports their construction of the term “overmolding” as referring to a material that is molded over something, rather than a housing. Nothing in the relevant portions of Macey cited by the Examiner indicates a housing. Macey instead refers to the “overmolded layer” which “may wrap around the rim 54 of the lens 21” suggesting that layer 53 is molded over the lens (Reply Br. 5-6). We note that in Macey, lens 21 with overmolded layer 35 covers an LED array, further suggesting a distinction between an “overmolding” Appeal 2010-008558 Application 11/289,672 6 and a housing. (Col. 2, ll. 21-26). Thus, the evidence of record supports Appellants’ construction. In view of our construction, we are not persuaded that Sloan discloses the claimed plurality of thermoplastic overmoldings. The Examiner also cites Paragraph 435 of Nortrup as teaching a thermoplastic overmolding covering at least portion of the printed circuit board proximate to one or more LEDs. (Ans. 4- 5). Paragraph 435 of Nortrup discloses embodiments in which thermally conductive polymers may be injection molded onto the area of a platform that supports the LEDs, or into heat sinks that fit into the space between a circuit board that bears the LEDs and the housing of a light unit. There is no mention of overmoldings in the cited portion of Nortrup. In addition, Nortrup’s disclosure of heat sinks between the printed circuit boards and the housing further suggests a distinction between housings and overmoldings. Having concluded that the combination of Sloan and Nortrup does not teach the claimed overmoldings, we reverse the Examiner’s obviousness rejections and need not address the merits of Appellants’ further arguments. ORDER The rejection of claims 2-6, 8-12 and 19-23 under 35 U.S.C. 103(a) as unpatentable over Sloan in view of Nortrup is reversed. REVERSED lb