PHILIPS LIGHTING HOLDING B.V.

Patent Trials and Appeals BoardJan 21, 2021

2020001052 (P.T.A.B. Jan. 21, 2021)

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. 15/507,889 03/01/2017 Egbertus Reinier JACOBS 2014P00991WOUS 3165 138325 7590 01/21/2021 Signify Holding B.V. 465 Columbus Avenue Suite 330 Valhalla, NY 10595 EXAMINER HATZILAMBROU, MARK ART UNIT PAPER NUMBER 2891 NOTIFICATION DATE DELIVERY MODE 01/21/2021 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): Gigi.Miller@signify.com jo.cangelosi@signify.com kim.larocca@signify.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EGBERTUS REINIER JACOBS, MARC ANDRE DE SAMBER, ERIC CORNELIS EGBERTUS VAN GRUNSVEN, and ESTHER ANNA WILHELMINA GERARDS JANSSEN Appeal 2020-001052 Application 15/507,889 Technology Center 2800 Before TERRY J. OWENS, LINDA M. GAUDETTE, and SHELDON M. MCGEE, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 The Appellant2 appeals under 35 U.S.C. § 134(a), from the Examiner’s decision finally rejecting claims 11–30.3 1 This Decision includes citations to the following documents: Specification filed March 1, 2017 (“Spec.”); Final Office Action dated Mar. 6, 2019 (“Final Act.”); Appeal Brief filed July 2, 2019 (“Appeal Br.”); and Examiner’s Answer dated Sept. 11, 2019 (“Ans.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Signify North America Corporation. Appeal Br. 1. 3 We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2020-001052 Application 15/507,889 2 We AFFIRM. CLAIMED SUBJECT MATTER The invention relates to “a lighting system in which a light output can be provided from a surface, with the LED light sources not visible or barely visible to the eye when turned off.” Spec. 1:18–20. The system may be used for automobile side and signaling lights, as well as in other applications “where the aesthetic quality of a painted surface should not be compromised by the inclusion of lighting functionality.” Id. at 1:20–22. Claim 11, reproduced below, is illustrative of the claimed subject matter: 11. A surface coated with a lighting arrangement, comprising: a first conductive layer over the surface, the first conductive layer being for connection to a first electrical terminal; an array of LED lighting elements over the first conductive layer, each LED lighting element comprising a pad with top and bottom electrical contacts, wherein at least a fraction of the LED lighting elements are upwardly facing with their top contacts facing away from the surface; a spray paint coating which fills spaces between the LED lighting elements, and partially covers the LED lighting elements but with the top contacts of the upwardly facing LED lighting elements exposed and with light output windows formed in the spray paint coating for the upwardly facing LED lighting elements; and a second conductive layer over the spray paint coating and the exposed contacts, the second conductive layer being for connection to a second electrical terminal. Appeal Br. 22 (Claims App.). Appeal 2020-001052 Application 15/507,889 3 REFERENCES The Examiner relies on the following prior art: Name Reference Date Chitnis US 2008/0179611 A1 July 31, 2008 Kim US 2010/0314637 A1 Dec. 16, 2010 Lerman US 2011/0193105 A1 Aug. 11, 2011 Weidner US 2012/0228666 A1 Sept. 13, 2012 Tischler US 2013/0187178 A1 July 25, 2013 Corporon US 2015/0345723 A1 Dec. 3, 2015 REJECTIONS 1. Claims 23 and 29 are rejected under 35 U.S.C. § 112(b) as indefinite. Final Act. 3. 2. Claim 11, 16, 17, 19, 22, 23, 25, 28, and 29 are rejected under 35 U.S.C. § 103 over Weidner and Kim. Final Act. 4. 3. Claim 12 is rejected under 35 U.S.C. § 103 over Weidner, Kim, and Tischler. Final Act. 10. 4. Claim 13 is rejected under 35 U.S.C. § 103 over Weidner, Kim, and Chitnis. Final Act. 11. 5. Claims 14, 15, 20, 21, 26, and 27 are rejected under 35 U.S.C. § 103 over Weidner, Kim, and Corporon. Final Act. 11. 6. Claims 18, 24, and 30 are rejected under 35 U.S.C. § 103 over Weidner, Kim, and Lerman. Final Act. 14. OPINION The Examiner rejected claims 23 and 29 under 35 U.S.C. § 112(b) as indefinite because the limitation “the portion of the spray coating” lacks Appeal 2020-001052 Application 15/507,889 4 antecedent basis. Final Act. 3. The Appellant does not dispute the rejection. Appeal Br. 20. Accordingly, we summarily sustain this ground of rejection. The Examiner rejected claims 11, 16, 17, 19, 22, 23, 25, 28, and 29 as obvious over Weidner and Kim. Final Act. 4–10. The Appellant argues in support of patentability of the following individual claims or claim groupings: (1) independent claim 11; (2) independent claims 19 and 25; and (3) dependent claims 16, 17, 22, 23, 28, and 29. Appeal Br. 8–16. Weidner Figure 2 is reproduced below. Weidner Figure 2 is a schematic view of optoelectronic module 100. Weidner ¶¶ 33, 37. Module 100 includes carrier 1 that can be formed with an electrically conducting material. Id. ¶¶ 4, 36. Module 100 includes two side- by-side radiation-emitting semiconductor chips 2 having first contact areas 2A that are electrically connected to carrier 1’s contact locations 1A via electrically conductive conducting structures 8. Id. ¶ 36. Semiconductor chips 2 are applied to mounting area 11 (shown in Figure 1) of carrier 1 at second contact areas 2B. Id. Electrically insulating layer 4, a ceramic material applied by a laminating process, covers exposed side areas 9 and Appeal 2020-001052 Application 15/507,889 5 radiation exit areas 3 of semiconductor chips 2, carrier 1’s mounting area 11, and region 21 (shown in Figure 1), such that the electrically insulating layer 4 runs without interruption between contact locations lA and first contact areas 2A. Id. Electrically insulating layer 4 includes first cutout 4A that runs without interruption between semiconductor chips 2 such that radiation exit areas 3 of semiconductor chips 2 are exposed. Id. ¶ 37. Kim discloses a heat releasing semiconductor package 100 comprising non-conductive heat releasing layer 90 formed over semiconductor device 50. Kim ¶¶ 19, 20. Heat releasing layer 90 may be a heat releasing paint “including an organic or inorganic coating material, such as ceramic.” Id. ¶¶ 20, 21. The heat releasing paint may be applied by a spray nozzle. Id. ¶ 35. The Examiner found that Weidner discloses the claim 11 invention except for explicitly disclosing that electrically insulating layer 4 is a spray paint coating. Final Act. 4. The Examiner found that the ordinary artisan would have used a spray paint coating as electrically insulating layer 4 in Weidner’s device based on Kim’s disclosure that a spray paint coating provides “good thermal characteristics at low cost.” Final Act. 5; see, e.g., Kim ¶ 40. The Appellant argues that the material used for Weidner’s electrically insulating layer 4 is completely different from the claimed “spray paint coating.” Appeal Br. 9. The Appellant further argues that Kim’s structure differs from the claim 11 structure because Kim lacks any disclosure of LEDs, is directed to completely covering a surface with a spray paint coating, and does not teach or suggest applying a conductive layer over a paint layer. Id. at 10–12. These arguments are not persuasive because they fail to identify reversible error in the Examiner’s fact finding and reasoning. Appeal 2020-001052 Application 15/507,889 6 As the Examiner reemphasizes in the Answer, the rejection is based on a finding that Weidner teaches the claim 11 structure except for describing electrically insulating layer 4 as a spray paint coating. Ans. 4. The Examiner found that the ordinary artisan would have replaced Weidner’s electrically insulating coating with a spray paint coating as described in Kim. See id. at 4–5 (citing Final Act. 4). Thus, the Appellant’s arguments that Kim’s structure and the claimed structure differ, and that the Examiner failed to explain why the ordinary artisan would have modified Kim’s structure, are not persuasive. See Appeal Br. 10–13. Rather, a showing of reversible error in the Examiner’s prima facie case of obviousness would require some explanation or evidence as to why it was erroneous or unreasonable for the Examiner to determine that (1) the claimed “spray paint coating” reads on Kim’s spray paint coating, (2) the ordinary artisan would have replaced Weidner’s electrically insulating layer 4 with Kim’s spray paint coating, or (3) Weidner’s structure, as modified to include Kim’s spray coating, would not meet one or more of the claim limitations. The Appellant has not met this burden. See, e.g., Appeal Br. 13 (“Although Weidner teaches a second conductive layer over an ‘electrically insulating layer’ (see FIG. 2 showing item 8 placed over item 4), Weidner fails to teach placing a conductive layer over a spray paint coating. When combining the teachings of Weidner and Kim, the concept of positioning conductive material over a spray paint coating is completely lacking.”). Turning to independent claim 19, the Appellant argues that the Examiner reversibly erred in rejecting this claim for the same reasons discussed as to claim 11. See Appeal Br. 15–16. The Appellant further argues that the Examiner has not identified a prior art teaching of “a painted Appeal 2020-001052 Application 15/507,889 7 surface on one hand and a portion of the paint surface that includes lighting elements, on the other hand” as required by claim 19. Id. at 15. This argument is not persuasive because it is not commensurate in scope with the claim language. See Ans. 6. As explained by the Examiner, the claim 19 phrase “a portion of the painted surface” encompasses “a sub- portion that does not include the entire surface, or . . . a portion comprising the entire surface.” Id. Thus, contrary to the Appellant’s contention, a finding that the prior art discloses a painted surface having a section that does not include a light arrangement and a distinct separate section that does include a light arrangement was unnecessary to show that the claim 19 invention would have been obvious. See Appeal Br. 15. The Appellant relies on the same arguments made as to claim 19 in support of patentability of claim 25. See Appeal Br. 16. These arguments are not persuasive for the reasons discussed above. As to dependent claims 16, 17, 22, 23, 28, and 29, the Examiner determined that these claims recite process limitations, and that the Appellant had not shown that “the method language necessarily produces a structural difference.” Final Act. 5–8, 10. The Appellant argues that “[b]y adding limitations to the ‘spray paint coating [of independent claims 11, 19, or 25],’ these claims are not converted from an apparatus/system claim to a product-by-process claim.” Appeal Br. 14. The Appellant contends that because the Examiner failed to identify teachings of the limitations recited in claims 16, 17, 22, 23, 28, and 29, the rejection of these claims should be reversed. Id. The Appellant’s argument is not persuasive. A product-by-process analysis is appropriate as to an entire claim or individual claim limitations. Appeal 2020-001052 Application 15/507,889 8 See, e.g., Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334 (Fed. Cir. 2020) (“The nesting of the product-by-process limitation within a method of treatment claim does not change the proper construction of the product-by-process limitation itself.”). We agree with the Examiner that claims 16, 17, 22, 23, 28, and 29 recite process limitations and therefore their patentability was properly considered using a product-by-process analysis. We turn next to the rejection of dependent claims 14, 15, 20, 21, 26, and 27 over the combination of Weidner, Kim, and Corporon. The Examiner relies on Corporon for a suggestion to modify the Weidner structure, as modified by Kim, to include “a transparent protective coating over the second conductive layer” (claims 14, 20, 26) and to use the structure in “an automobile body panel” (claims 15, 21, 27). The Examiner found that Corporon discloses applying a transparent protective coating on the light emitting side of a lighting device embedded in an automobile body panel “to create a smooth unobtrusive vehicle light that [is] not . . . visible to nearby observers when not in use.” Final Act. 12–14 (citing Corporon ¶¶ 5, 40). The Examiner found that the ordinary artisan would have used Weidner’s structure, as modified by Kim, in an automobile panel and included a transparent protective coating to achieve the advantages described by Corporon. Id.; see Corporon ¶ 5. Similar to its arguments in support of patentability of claim 11, the Appellant’s arguments are directed to differences between Corporon’s structure and the claimed structure, and fail to identify error in the facts and reasons relied on by the Examiner in determining that Weidner’s structure, Appeal 2020-001052 Application 15/507,889 9 as modified by Kim and Corporon, would have resulted in the inventions recited in claims 14, 15, 20, 21, 26, and 27. See Appeal Br. 16–20; Ans. 7. The Appellant requests reversal of the remaining grounds of rejection “for at least the reason that they depend on patentably-distinct independent claims.” Appeal Br. 20. For the reasons discussed above, in the Final Office Action, and in the Answer, the Appellant’s arguments are not persuasive of reversible error in the Examiner’s conclusion of obviousness as to claims 11–30. Accordingly, we sustain above-listed grounds of rejection 2–6. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 23, 29 112 Indefiniteness 23, 29 11, 16, 17, 19, 22, 23, 25, 28, 29 103 Weidner, Kim 11, 16, 17, 19, 22, 23, 25, 28, 29 12 103 Weidner, Kim, Tischler 12 13 103 Weidner, Kim, Chitnis 13 14, 15, 20, 21, 26, 27 103 Weidner, Kim, Corporon 14, 15, 20, 21, 26, 27 18, 24, 30 103 Weidner, Kim, Lerman 18, 24, 30 Overall Outcome: 11–30 Appeal 2020-001052 Application 15/507,889 10 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED