Rohinni, LLC

Patent Trials and Appeals BoardJan 26, 2021

2020001053 (P.T.A.B. Jan. 26, 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. 16/013,755 06/20/2018 Cody Peterson R088-0018USC14 3942 134698 7590 01/26/2021 Lee & Hayes P.C. 601 W Riverside Avenue Suite 1400 Spokane, WA 99201 EXAMINER CHEN, XIAOLIANG ART UNIT PAPER NUMBER 2848 NOTIFICATION DATE DELIVERY MODE 01/26/2021 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): LHPTO@leehayes.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CODY PETERSON, CLINTON ADAMS, SEAN KUPCOW, and ANDREW HUSKA Appeal 2020-001053 Application 16/013,755 Technology Center 2800 Before LINDA M. GAUDETTE, GEORGE C. BEST, and JEFFREY R. SNAY, 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, 13, and 15–20.3 1 This Decision includes citations to the following documents: Specification filed June 20, 2018 (“Spec.”); Final Office Action dated Feb. 11, 2019 (“Final Act.”); Appeal Brief filed Oct. 2, 2019 (“Appeal Br.”); Examiner’s Answer dated Nov. 1, 2019 (“Ans.”); and Reply Brief filed Nov. 21, 2019 (“Reply Br.”). 2 The word “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Rohinni, LLC. Appeal Br. 3. 3 We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2020-001053 Application 16/013,755 2 We AFFIRM. CLAIMED SUBJECT MATTER The invention relates to a circuit component for a display comprising a plurality of unpackaged micro-sized LEDs connected to a substrate. See infra claim 11. According to the Specification, at the time the application was filed, conventional fabrication processes for a single discrete device, such as an LED, included packaging the device in a plastic or ceramic package such as a mold or enclosure. Spec. ¶ 6. The packaged device, which included die contacts connected to pins/wires for interfacing/interconnecting with circuitry, was then plugged into the circuit assembly of a product during its manufacture. Id. ¶¶ 6–7. The smallest thickness achievable in the final product was necessarily limited by the thickness of the circuit assembly’s largest packaged device. See id. ¶ 7. According to the Specification, the inventive circuit assembly is made by attaching unpackaged devices, such as LEDs, directly to the substrate, thereby enabling the production of a thinner end product as compared to the prior art circuit assemblies. Id. ¶ 24. Claim 11, reproduced below, is illustrative of the claimed subject matter: 11. A circuit component for a display, comprising: a substrate; a circuit trace having a predetermined pattern disposed on a surface of the substrate; a plurality of unpackaged micro-sized LEDs connected to the substrate via the circuit trace, the plurality of unpackaged micro-sized LEDs being distributed across the surface of the substrate; and one or more substrate orientation datum points located on the substrate and positioned relative to each other with respect Appeal 2020-001053 Application 16/013,755 3 to a first portion of the circuit trace and a second portion of the circuit trace such that a shape and relative spatial orientation of the first portion of the circuit trace and the second portion of the circuit trace are determined accurately with respect to an alignment of transfer components of an apparatus that performs a transfer of the plurality of unpackaged micro-sized LEDs from a supply of unpackaged micro-sized LEDs. Appeal Br. 14 (Claims App.). REFERENCES The Examiner relies on the following prior art: Name Reference Date Tischler US 2011/0315956 A1 Dec. 29, 2011 Tischler II US 2014/0167611 A1 June 19, 2014 Aoki US 2015/0262729 A1 Sept. 17, 2015 REJECTIONS 1. Claims 11, 15–18, and 20 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Tischler. Final Act. 3. 2. Claim 13 is rejected under 35 U.S.C. § 103 as unpatentable over Tischler in view of Tischler II. Final Act. 8. 3. Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable over Tischler in view of Aoki. Final Act. 9. OPINION The Examiner found that Tischler anticipates claims 11, 15–18, and 20. Final Act. 3–7. The Appellant’s principal argument is that the Examiner reversibly erred in rejecting these claims because Tischler does not disclose features recited in claim 11’s last paragraph. See generally Appeal Br. 6–11. Regarding the obviousness rejections of claims 13 and 19, the Appellant Appeal 2020-001053 Application 16/013,755 4 additionally asserts that the secondary references do not disclose or suggest the claim 11 features that are absent in Tischler’s circuit component. See id. at 12–14. For the reasons discussed below, we are not persuaded of reversible error in the Examiner’s rejections. The Examiner found that the limitations recited in claim 11’s last paragraph are met by Tischler’s alignment features (e.g., 1360, 1382) which may be marks or holes in traces 121 of lighting system 101’s substrate 111. Final Act. 3–5; Ans. 4; see Tischler Figs. 13G–I. The Examiner found that Tischler teaches that the alignment features may be optical, visual, mechanical, electronic, or electro/optical alignment features that are “designed to aid human and/or machine-vision systems in the location and placement of [a] patch on the lighting system.” Final Act. 5; see Tischler ¶¶ 104, 106, 130. The Examiner found that Tischler’s patch 100 comprising LEE4 130 with conductive traces 120 on substrate 110, as well as alignment features (e.g., 1350, 1381), is a “transfer component” as recited in claim 11. See Final Act. 4–5; Ans. 4–5; Tischler Figs. 13H–I. The Examiner found that the alignment features in lighting system 101’s substrate 111 are used to accurately align patch 100’s traces 120 and LEE 130 with lighting system 101’s traces 121 and failed LEE 131. See Final Act. 4; Ans. 4–5; Tischler Figs. 1A–C; 13A–I. In other words, the Examiner found that Tischler’s alignment features in lighting system 101’s substrate 111 are “capable of being used” for accurately determining “a shape and relative spatial orientation of the first portion of the circuit trace and the second portion of 4 Tischler defines “LEE” (light-emitting element) as including microLEDs. Tischler ¶ 7. Appeal 2020-001053 Application 16/013,755 5 the circuit trace [(traces 121)] . . . with respect to an alignment of transfer components [(multiple LEEs 130)]” (claim 11). Noting that claim 11 is a product claim, the Examiner did not accord patentable weight to the remaining language in claim 11’s last paragraph. See Final Act. 6; Ans. 5. Specifically, the Examiner determined that the claim 11 recitation “an apparatus that performs a transfer of the plurality of unpackaged micro-sized LEDs from a supply of unpackaged micro-sized LEDs” relates to the process of making the claimed circuit component and does not distinguish the claimed circuit component’s structure from Tischler’s structure. See Final Act. 6. We agree with the Examiner that the argued claim language does not add a structural limitation to the claim 11 “circuit component.” Rather, this language is functional language that describes only the substrate orientation datum points’ intended use: to enable an apparatus to find the proper locations for placement of multiple unpackaged micro-sized LEDs on a substrate. See Textron Innovations Inc. v. Am. Eurocopter Corp., 498 F. App’x 23, 28 (Fed. Cir. 2012) (“In cases in which functional language adds a structural limitation to an apparatus claim, however, it does so because the language describes something about the structure of the apparatus rather than merely listing its intended or preferred uses.”). Functional recitations in an apparatus claim are given weight in that the corresponding prior art structures must possess the capability of performing the recited function. See Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991). The Appellant argues, and we agree, that the Examiner incorrectly determined that the argued claim language is a product-by-process Appeal 2020-001053 Application 16/013,755 6 limitation. See Appeal Br. 10; Reply Br. 2. However, we view the Examiner’s mischaracterization as harmless error because the Examiner properly considered whether Tischler’s alignment features would have been capable of use by an apparatus to locate the position on a substrate for placement of a plurality of unpackaged micro-sized LEDs. See Final Act. 5– 6. The Appellant argues that Tischler includes alignment features for a different purpose—“to assist in aligning the entire pre-prepared patch onto a previously formed circuit substrate having a faulty light source, as part of an ‘illumination system’”—but does not persuasively explain why the alignment features would not have been capable of being use in the manner recited in claim 11. Appeal Br. 10–11; Reply Br. 3–4. The Appellant argues that Tischler does not explicitly describe the positioning of the alignment features in the manner recited in claim 11, for example, their relative positioning. Reply Br. 4–5. This argument is not persuasive because “[t]he anticipation analysis asks solely whether the prior art reference discloses and enables the claimed invention, and not how the prior art characterizes that disclosure.” Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1324 n.6 (Fed. Cir. 2003). Referring to Tischler Figures 1 and 13, the Examiner explained how the claim limitations read on Tischler’s alignment features. See Final Act. 4–5. The Appellant has not persuaded us that these findings are erroneous or unreasonable. In addition to arguing that Tischler does not disclose the limitations in claim 11’s last paragraph, the Appellant argues that “the light-emitting element patch product of Tischler is a repair system that is completely different from Appellant’s product” and Tischler’s “repair patch having a single LEE simply cannot be interpreted as ‘a plurality of unpackaged Appeal 2020-001053 Application 16/013,755 7 micro-sized LEDs connected to the substrate via the circuit trace, the plurality of unpackaged micro-sized LEDs being distributed across the surface of the substrate.’” Appeal Br. 10–11; see also Reply Br. 3–4. As explained above, Tischler’s characterization of its structure is not relevant to an anticipation analysis. As found by the Examiner, Tischler discloses that substrate 111 includes a plurality of unpackaged micro-sized LEDs (LEEs 130, 132). See Final Act. 3–4; Tischler Figure 1D (illustrating operational LEEs 132, and LEE 130 positioned over failed LEE 131). Tischler discloses that patch 100 includes “at least one LEE 130” for placement over failed LEEs on substrate 111. Tischler ¶¶ 68–69 (emphasis added). Thus, we are not persuaded that the Examiner erred in finding that Tischler describes a substrate having a plurality of unpackaged micro-sized LED’s (LEEs 130, 132) distributed across its surface, and that Tischler’s substrate 111 includes orientation datum points (alignment features) such that substrate 111 is capable of use in an apparatus that transfers a plurality of unpackaged micro- sized LEDs (LEEs 130) to the substrate. In sum, for the reasons discussed above, we are not persuaded of reversible error in the Examiner’s prior art rejections. Any arguments not explicitly addressed in this decision are unpersuasive for the reasons explained in the Final Office Action and the Answer. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 11, 15–18, 20 102(a)(1) Tischler 11, 15– 18, 20 13 103 Tischler, Tischler II 13 19 103 Tischler, Aoki 19 Appeal 2020-001053 Application 16/013,755 8 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed Overall Outcome: 11, 13, 15–20 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