Ex Parte Tanaka et al

Patent Trial and Appeal Board

Jan 31, 2017

12867134 (P.T.A.B. Jan. 31, 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.
12/867,134 09/23/2010 Toshiya Tanaka 062847.00001 7841
30752 7590 02/02/2017
BANNER & WITCOFF, LTD.
ATTORNEYS FOR CLIENT NO. 000449, 001701
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
HUSAR, STEPHEN F
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
PTO-30752 @ bannerwitcoff. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHIYA TANAKA,
AKIKO SAITO, and HITOSHI KAWANO
Appeal 2015-005925
Application 12/867,134
Technology Center 2800
Before MARKNAGUMO, GEORGE C. BEST, and JEFFREY R. SNAY,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1 - 4 of Application 12/867,134
under 35 U.S.C. § 103(a) as obvious. Final Act. (July 9, 2014). Appellants1
seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM. We designate our
affirmance of the rejection of claim 3 as constituting a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).
1 Toshiba Lighting & Technology Corp. and Kabushiki Kaisha Toshiba are
identified as the real parties in interest. Br. 2.
Appeal 2015-005925
Application 12/867,134
BACKGROUND
The ’134 Application describes a light-emitting module in which
light-emitting elements such as LEDs are arranged. Spec. 1. In particular,
the Specification describes the position of the light-emitting elements
relative to the electronic circuitry used to power and control the light-
emitting elements. Id. ^ 6.
Claim 1—the ’134 Application’s only independent claim on appeal—
is reproduced below from the Claims Appendix of the Brief. Disputed claim
limitations are italicized.
1. A light-emitting module comprising:
a substrate having a front surface side constituted as a
component mounting surface and a rear surface side constituted
as a heat dissipating surface flat in shape;
a plurality of light-emitting elements mounted in a central area
of a component mounting surface of the substrate in such that
the plurality of light-emitting elements extend away from the
component mounting surface and emit light at least in an upper
surface direction and in a direction along the component
mounting surface;
a lighting circuit component which is used for electrically
mounting each of the plurality of light-emitting elements,
wherein the lighting circuit component is electrically connected
to the light emitting elements by a wiring pattern arranged on
the substrate, and includes at least an AC to DC converter
providing constant current to the plurality of light-emitting
elements, the AC to DC converter including a plurality of
electronic components, and wherein the lighting circuit
component is mounted on a peripheral area surrounding the
central area of the component mounting surface of the
substrate, wherein the peripheral area has an annular shape and
at least a portion of an outer edge of the peripheral area is
shaped like a part of a circle, the component mounting surface
consisting of the central area and the peripheral area; and
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Appeal 2015-005925
Application 12/867,134
a connector for connecting with a power supply, which is
arranged on the peripheral area of the component mounting
surface of the substrate, and which is electrically connected to
the lighting circuit component.
Br. 14 (Claims App.).
REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 1 - 4 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Ray2 and Szypszak.3 Final Act. 2.
DISCUSSION
Appellants argue for reversal of the rejection of claims 1 - 4 on the
basis of limitations present in claim 1. Br. 6 - 10. Appellants also present
additional arguments for the separate patentability of claim 3. Claims 2 and
4 are alleged to be patentable solely on the basis of their dependence from
claim 1.
Claims 1, 2, and 4. Appellants argue that the rejection of independent
claim 1 should be reversed for two reasons: (1) the Examiner improperly
relied upon an “obvious to try rationale” in rejecting claim 1, Br. 6-8, and
(2) the claimed arrangement of the electronic circuitry and the light-emitting
elements offers unexpected results, id. at 8 - 9. For the reasons set forth
below, we are not persuaded by either of these arguments.
2 US 4,211,955, issued July 8, 1980.
3 US 2004/0070990 Al, published April 15, 2004.
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Appeal 2015-005925
Application 12/867,134
First, Appellants argue that
the Office appears to claim that the arrangement recited in
claim 1 would have been obvious to try in view of Ray and
Szypszak. Such is not the case. As set forth by the Federal
Circuit, and “obvious to try” rationale is only permissible in
supporting an obviousness rejection or the number of possible
options for solving a problem are known and finite and there is
no evidence of unexpected results. The present circumstances
do not support a conclusion of obviousness based on such a
rationale.
Id. at 7 (internal citations omitted).
Appellants first argue that the Examiner has not identified or
established a problem for which the alleged finite number of relationships
are possible solutions. Id. We are not persuaded by this argument.
In rejecting claim 1, the Examiner found that Ray describes each
limitation of claim 1 except for the relative location of the lighting circuit
component, the light-emitting elements, and the connector. Final Act. 3.
The Examiner further found that Szypszak describes a light-emitting module
comprising light-emitting elements mounted at a central portion of a
component mounting surface of a substrate and a lighting circuit—including
a connector for connecting a power supply—arranged on the peripheral area
of the component mounting surface of substrate. Id. The Examiner also
found that Szypszak explains that locating the lighting circuit on the
periphery of the substrate allows positioning of various control structures so
that they are easily accessed by a user. Answer 3 (citing Szypszak 65).
Thus, the Examiner has established that the relative location of the various
components in the light-emitting module affect usability of the module.
This is the problem confronting a person having ordinary skill in the art at
the time of the invention.
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Application 12/867,134
Appellants next argue that, assuming arguendo that the Examiner has
correctly identified a problem needing to be solved that there are an infinite
number of positional relationships between a light-emitting elements and a
light circuit component. Br. 7 - 8.
We are not persuaded by this argument. As the Examiner correctly
notes, claim 1 does not establish absolute positional relationships between
the various components of the light-emitting module. Rather it only
specifies relative positional relationships. See Answer 4-5.
Second, Appellants assert that the particular arrangement recited in
claim 1 provides unexpected results. Br. 8-9.
The existence of unexpected results is a question of fact. In re Mayne,
104 F.3d 1339, 1343 (Fed. Cir. 1997). A showing of unexpected results
must be based upon evidence rather than argument or speculation. Id. at
1343^14. To establish the existence of unexpected results, Appellant must
establish (1) that there actually is a difference between the results obtained
through the claimed invention and those of the closest prior art and (2) that
the difference actually obtained would not have been expected by a person
of ordinary skill in the art at the time of the invention. In re Freeman, 474
F.2d 1318, 1324 (CCPA 1973) (citing In reKlosak, 455 F.2d 1077 (CCPA
1972); In reD’Ancicco, 439 F.2d 1244 (CCPA 1971)).
In this case, Appellants have not provided us with any evidence of
unexpected results. Their Brief cites no experimental data. Rather, it sets
forth unsupported attorney argument that the claimed arrangement improved
the heat dissipation properties of the lighting elements and the circuit
components. Br. 8. Such unsupported attorney argument cannot take the
place of evidence.
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Application 12/867,134
Moreover, the ’134 Application’s Specification does not contain any
comparison of the properties of the claimed arrangement relative to the prior
art, nor does it contain any evidence that, at the time of the invention, a
person having ordinary skill in the art would have considered the alleged
heat dissipation properties of the claimed arrangement to have been
unexpected. Appellants, therefore, have failed to establish the existence of
unexpected results sufficient to rebut the prima facie case of obviousness.
In view of the foregoing, we affirm the rejection of claims 1, 2, and 4.
Claim 3. Claim 3 is reproduced below from the Claims Appendix of
the Brief:
3. The light-emitting module according to claim 1, wherein
when it is determined that a minimum distance between
light-emitting portions of the plurality of the light-
emitting elements arranged is c,
a width of the light-emitting portion on a line of the
minimum distance c is a, and
a height from the mounting surface of the substrate to an
upper surface of the light-emitting portion is b,
the light-emitting elements are arranged so as to satisfy a
dimensional relationship of b