Ex Parte Weaver Jr. et al

Patent Trial and Appeal BoardFeb 19, 2016

10582377 (P.T.A.B. Feb. 19, 2016)

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. 10/582,377 03/29/2007 Stanton Earl Weaver Jr. GLOZ 200196US01 3872 27885 7590 02/19/2016 FAY SHARPE LLP 1228 Euclid Avenue, 5th Floor The Halle Building Cleveland, OH 44115 EXAMINER TSAI, HUI JEY ART UNIT PAPER NUMBER 2895 MAIL DATE DELIVERY MODE 02/19/2016 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 STANTON EARL WEAVER JR., CHEN-LUN HSING CHEN, BORIS KOLODIN, THOMAS ELLIOT STECHER, JAMES REGINELLI, DEBORAH ANN HAITKO, XIANG GAO, and IVAN ELIASHEVICH ____________________ Appeal 2014-004029 Application 10/582,377 Technology Center 2800 ____________________ Before LINZY T. McCARTNEY, TERRENCE W. McMILLIN, and MELISSA A. HAAPALA, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1–6, 15–31, and 38–41. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2014-004029 Application 10/582,377 2 STATEMENT OF THE CASE The present application “relates to surface-mounted light emitting diodes for indicator lights, illumination applications, and the like.” Spec. 4– 6. Claims 1, 21, and 39 are independent. Claim 1 illustrates the claimed subject matter: 1. A light emitting package comprising: a chip carrier having top and bottom principal surfaces; at least one light emitting chip attached to the top principal surface of the chip carrier; and a lead frame attached to the top principal surface of the chip carrier but not to the bottom principal surface of the chip carrier. REJECTIONS Claims 1–6, 16, 30, 31, and 40 stand rejected under 35 U.S.C. § 102(b) as anticipated by Chun (US 5,384,873; iss. Jan. 24, 1995). Claims 15, 17–29, 38, 39, 41 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Chun and one or more of Yoshigai (US 5,606,199; iss. Feb. 25, 1997), Kuo (US 5,369,529; iss. Nov. 29, 1994), Kamada (US 2003/0168720 A1; pub. Sept. 11, 2003), Lebby (US 5,428,704; iss. June 27, 1995), Yagi (US 6,642,618 B2; iss. Nov. 4, 2003), Cunningham (US 6,005,262; iss. Dec. 21, 1999), Kropp (US 2004/0136658 A1; pub. July 15, 2004); and Peterson (US 6,674,159 B1; iss. Jan. 6, 2004). Claims 1–6, 15–31, and 38–41 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Peterson and one or more of Kamada, Lebby, Yoshigai, and Cunningham. Appeal 2014-004029 Application 10/582,377 3 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments, and we disagree with Appellants that the Examiner erred. We adopt the Examiner’s findings, reasoning, and conclusions set forth in the Final Rejection and Answer to the extent they are not inconsistent with the analysis below. § 103 Rejection over Peterson, Kamada and Lebby Claim 1 Appellants contend Peterson’s “TAB leadframe” does not teach the “lead frame” recited in claim 1 because the TAB leadframe “would not provide a lead frame with electrical leads extending away from the package.” App. Br. 23. Appellants also argue Peterson discloses that electrical leads numbered 40, 88, and 89 attach to the side of a package, not the “top principal surface of the chip carrier” as required by claim 1. Id. at 24. We find Appellants’ arguments unpersuasive. First, claim 1 does not recite “a lead frame with electrical leads extending away from the package” as argued by Appellants. Id. at 23. Rather, claim 1 simply recites “a lead frame attached to the top principal surface of the chip carrier but not to the bottom principal surface of the chip carrier.” App. Br. 32. Appellants’ contention that Peterson does not teach “a lead frame with electrical leads extending away from the package” is therefore incommensurate with the scope of claim 1. Second, Appellants’ argument that Peterson does not disclose that electrical leads 40, 88, and 89 attach to “the top principal surface of the chip carrier” does not adequately address all of the Examiner’s findings. The Appeal 2014-004029 Application 10/582,377 4 Examiner found Peterson discloses a configuration of “a chip carrier 16 or 81” and “a lead f[r]ame . . . 980” that teaches the claimed “lead frame attached to the top principal surface of the chip carrier but not to the bottom principal surface of the chip carrier.” See Final Act. 14 (citing Peterson Figs. 10A–10D, 11D–12B, 14A–14C, 18, 19, 21; 18:49–54, 30:30–35); see also id. at 25–26. As acknowledged by Appellants, Peterson’s Figure 21 depicts “leads (980) [that] appear to be attached to the top surface of the device.” Reply Br. 17. In the Reply Brief, Appellants present for the first time substantive challenges to the Examiner’s combination of Peterson’s leads 980 with the teachings of the other cited references, despite the Examiner explicitly articulating this combination in the Final Action. See id.; Final Act. 14, 25– 26. Appellants have waived these challenges by failing to raise them in the Appeal Brief. See Ex parte Borden, 93 USPQ.2d 1473, 1474 (BPAI) (informative). Third, Appellants assert Peterson does not teach “at least one light emitting chip” and “a lead frame” that are both attached “to the top principal surface of the chip carrier.” App. Br. 24. In Appellants’ view, the “top” of Peterson’s device is the side that emits light through a window. Id. Because the device’s LED and electrical traces are on the opposite side of the device, Appellants argue the device does not have the attachments required by claim 1. Id. We find Appellants’ arguments unpersuasive. The Examine found that “the top principal surface of the chip carrier,” given its broadest reasonable interpretation in light of the specification, encompasses the side of Peterson’s device on which Peterson’s light emitting chips rests. See Appeal 2014-004029 Application 10/582,377 5 Final Act. 14 (citing, among other things, Peterson Fig. 21). This construction is consistent with the specification, as the specification refers to the side of the chip carrier on which the light emitting chip rests as “the top principal surface.” See, e.g., Spec. Fig. 1, 3:17–22. And Appellants have provided no persuasive evidence or reasoning to support their contention that “the top principal surface of the chip carrier” is the side of the carrier that emits light. See App. Br. 24. In fact, Appellants acknowledge Peterson’s “leads (980) do appear to be attached to the top surface of the device along with the microelectronic device (100).” Reply Br. 17 (emphasis added). In light of this, Appellants have not persuaded us the Examiner erred. Claim 17 Appellants contend Peterson’s TAB leadframe “does not relate to a lead frame whose electrical leads extend from portions of the lead frame attached to the top principal surface of the chip carrier and shaped to include lead portions approximately coplanar with the bottom principal surface of the chip carrier” as required by claim 17. Id. at 25. In particular, Appellants contend that, unlike Peterson’s TAB leadframe, “[t]he recited electrical leads . . . are free-standing, i.e.[,] they hold its shape.” Reply Br. 16. Appellants also contend again that Peterson discloses an electrical lead 40 attached to side of plate 16, not to the plate’s “the top principal surface” as recited in claim 17. See App. Br. 25. Finally, Appellants contend Kamada and Lebby each individually fail to teach aspects of claim 17. Id. We find Appellants’ arguments unpersuasive. Claim 17 does not require the “electrical leads” be “free-standing” as argued by Appellants. Rather, claim 17 recites “the lead frame has electrical leads extending from Appeal 2014-004029 Application 10/582,377 6 portions of the lead frame attached to the top principal surface of the chip carrier, the electrical leads being shaped to include lead portions approximately coplanar with the bottom principal surface of the chip carrier.” Id. at 34. The Examiner concluded combinations of Peterson, Lebby, and Kamada’s teachings suggests this limitation. See, e.g., Final Act. 16–17, 25–27; Ans. 49–56. Appellants’ arguments against these references individually have not persuaded us the Examiner erred, as “one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). And we find unpersuasive Appellants’ contention that Peterson fails to teach electrical leads attached to the top of Peterson’s device for the reasons set forth above with respect to claim 1. Claim 21 Appellants argue that although Lebby’s optoelectronic interface “is a surface mountable unit . . . it does not include chip carriers for its LEDS.” App. Br. 26. Moreover, Appellants assert Lebby’s optoelectronic interface “is not fairly equated with the printed circuit board of claim 21 on which the surface mountable unit is mounted.” Id. at 27. We find Appellants’ arguments unpersuasive. The Examiner found Peterson teaches the claimed “chip carrier” with “at least one light emitting chip attached to the top principal surface of the chip carrier,” and concluded combinations of Peterson, Kamada, and Lebby’s teachings suggests the subject matter recited in claim 21. See Final Act. 14, 17–19; Ans. 55–59. Appellants’ arguments against Lebby alone have not persuaded us the Examiner erred. See Keller, 642 F.2d at 426. As for Appellants’ assertion that Lebby’s “optoelectronic interface . . . is not fairly equated with the Appeal 2014-004029 Application 10/582,377 7 printed circuit board of claim 21,” Appellants have not explained why this is the case or provided evidence to support this assertion. See App. Br. 27. Accordingly, we find this assertion unpersuasive. Remaining Claims Appellants have not presented separate, persuasive patentability arguments for claims 2–6, 15, 16, 18–20, 22–31, and 38–41 with respect to the Examiner’s rejections under 35 U.S.C. § 103(a) over Peterson and one or more of Kamada, Lebby, Yoshigai, and Cunningham. We therefore sustain the Examiner’s rejections of these claims. DECISION For the above reasons, we affirm the Examiner’s rejections of claims 1–6, 15–31, and 38–41 under 35 U.S.C. § 103(a) over Peterson and one or more of Kamada, Lebby, Yoshigai, and Cunningham. Because we affirm at least one ground of rejection with respect to each claim on appeal, the Examiner's decision is affirmed. See 37 C.F.R. § 41.50(a)(1).1 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 1 We therefore do not address the Examiner’s alternative rejections under §§ 102 and 103 that involve Chun.