Ex Parte Tan et al

Patent Trial and Appeal BoardJul 31, 2014

12703640 (P.T.A.B. Jul. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte MICHAEL R.T. TAN and GARY R. TROTT __________ Appeal 2012-007974 Application 12/703,640 Technology Center 2800 ___________ Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE Michael R.T. Tan, et al. (“Appellants”) appeal under 35 U.S.C. § 134 from a final rejection of claims 1-3, 5-8, and 10-18 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Lockard1 and Yamashita.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The subject matter on appeal is directed to a method for producing light systems. The Appellants disclose that many techniques have been proposed to 1 US 4,478,588, issued October 23, 1984. 2 US 6,507,446 B2, issued January 14, 2003. Appeal 2012-007974 Application 12/703,640 2 improve the light extraction efficiency of light emitting diodes. According to one technique, pre-fabricated lenses are attached to light emitting diodes. The Appellants disclose that this technique works well to improve the extraction efficiency. However, the Appellants disclose that light systems with pre-fabricated lenses attached to light emitting diodes must be economically produced. Spec. ¶ 3. The Appellants disclose a method for high-volume production of light emitting diodes with attached lenses comprising the steps of: providing pre-fabricated lenses, wherein the pre-fabricated lenses are held by a common transfer structure, simultaneously attaching the pre- fabricated lenses to respective ones of light emitting diodes, and releasing the pre-fabricated lenses from the common transfer structure. Spec. ¶ 4. Claim 1 is representative of the subject matter on appeal and is reproduced below from the Claims Appendix of the Appeal Brief dated December 26, 2011 (“Br.”). The limitation at issue is italicized. 1. A method for producing light systems, the method comprising: providing pre-fabricated lenses, wherein the pre-fabricated lenses are held by a common transfer structure; while the pre-fabricated lenses are held by the common transfer structure, simultaneously attaching the pre-fabricated lenses to respective ones of light emitting diodes; and after the pre-fabricated lenses are attached to the respective ones of the light emitting diodes, releasing the pre-fabricated lenses from the common transfer structure. Claim 13, the other independent claim on appeal, is also directed to a method for producing light systems comprising, inter alia, the step of “after the pre-fabricated lenses are attached to the respective ones of the light emitting Appeal 2012-007974 Application 12/703,640 3 diodes, releasing the pseudo-hemispherical lenses from the common transfer structure.” Br. 15. B. DISCUSSION The Appellants argue that “Lockard does not teach that pre-fabricated lenses are released from a common transfer structure at least because Lockard does not teach a common transfer structure.” Br. 7. Referring to Lockard Figure 13, the Examiner finds that Lockard discloses the steps of providing pre-fabricated lenses 64 and simultaneously attaching the pre-fabricated lenses to light emitting diodes. The Examiner finds that Lockard does not disclose that pre-fabricated lenses 64 are held by a “common transfer structure” as recited in the claims on appeal. Ans. 4. However, the Examiner finds that “the lenses must be held by some means to be put on the LED’s 58 to be assembled.” Ans. 4-5.3 The Appellants argue that “[w]hile it may be true that the lenses have to be held by some means to be put on the LEDs, the Examiner’s statement does not indicate how or why Lockard teaches a ‘common transfer structure.’” Br. 7. In response, the Examiner finds that the “‘molded lens shell’ 34 of fig. 6 could be considered as the ‘common transfer structure.’” Ans. 8. This finding is not supported by the record on appeal. Lockard discloses that Figure 6 illustrates “a molded lens shell generally indicated at 34 [that] is molded into the shape of a series of bulbous lenses 36 integrally connected together and provided with individual lens cavities 38 in each of the lenses 36.” Lockard, col. 4, ll. 56-60. An examination of Lockard Figure 6 reveals that reference numerals 34 and 36 point to the same element. Thus, we find that 3 Examiner’s Answer dated January 19, 2012. Appeal 2012-007974 Application 12/703,640 4 molded lens shell 34 is a lens structure, not a “common transfer structure” as recited in the claims on appeal. Yamashita does not cure the deficiency in Lockard. There is no dispute on this record that Yamashita discloses a common transfer structure that holds a plurality of pre-fabricated lenses. However, the Examiner finds that Yamashita does not disclose that the pre-fabricated lenses are released from the common transfer structure after the pre-fabricated lenses have been attached to the light emitting diodes. Ans. 5; see also Br. 8; Yamashita, col. 15, ll. 37-43; Yamashita Fig. 21(e). In sum, the Examiner has failed to demonstrate that the releasing step recited in claims 1 and 13 would have been obvious to one of ordinary skill in the art in view of the combined teachings of Lockard and Yamashita. Therefore, the § 103(a) rejection is not sustained. C. DECISION The decision of the Examiner is reversed. REVERSED cdc