Ex Parte Speer et al

Patent Trial and Appeal Board

Jun 28, 2018

14075142 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/075,142 11/08/2013 Richard Speer
24252 7590 06/28/2018
OSRAM SYLVANIA Inc.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2013P00406US 8066
EXAMINER
200 Ballardvale Street OJEH, NDUKA E
Wilmington, MA 01887
ART UNIT PAPER NUMBER
2892
MAIL DATE DELIVERY MODE
06/28/2018 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 RICHARD SPEER, DAVID HAMBY, and JOHN SEL VERIAN 1
Appeal2018---000307
Application 14/075,142
Technology Center 2800
Before TERRY J. OWENS, BEYERL YA. FRANKLIN, and REN LILAN,
Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as OSRAM SYLVANIA Inc.
Appeal2018-000307
Application 14/075,142
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 1---6. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1. A flexible circuit comprising:
a perforated upper laminate sheet formed of polymeric material;
a lower laminate sheet formed of polymeric material;
a plurality of metallic conductors laminated between the perforated
upper laminate sheet and the lower laminate sheet, wherein metallic
contacts of the conductors are exposed by perforations in the
perforated upper laminate sheet;
wherein each metallic conductor comprises at least one of a metallic
ribbon, a metallic tape, and/or a metallic wire;
wherein each metallic conductor provides two metallic contacts at
opposing ends thereof, and each metallic conductor extends between
adjacent perforations;
wherein each metallic conductor is clampingly retained between the
upper and lower laminate sheets; and
a plurality of surface mount devices attached to the metallic contacts
of two adjacent metallic conductors.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Daniels et al.
Ward
Kim et al.
US 2008/0191220 Al
US 2012/0068622 Al
US 2012/0241806 Al
2
Aug. 14, 2008
Mar. 22, 2012
Sep.27,2012
Appeal2018-000307
Application 14/075,142
THE REJECTION
Claims 1---6 are rejected under 35 U.S.C. §103 as being unpatentable
over Kim in view of Daniels and further in view of Ward.
ANALYSIS
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports Appellants' position. Accordingly, we reverse the Examiner's
rejection on appeal for the following reasons.
The rejection involves the proposed modification of Daniels by
substituting the top and bottom sheets of Kim with the top and bottom sheets
of Daniels. Non-final Office Action (mailed December 19, 2016), pp. 4-5.
However, Kim requires that the sheets be insulative (Fig. 8 and i-fi-f[0142]-
[0143]), whereas Daniels' sheets are metallized (i-f [0362]. At the top of
page 5 of the Appeal Brief, Appellants argue that the proposed modification
would interfere with the intended operation of Kim. Within the context as
stated herein, we agree with Appellants' stated conclusion. "If the proposed
modification would render the prior art invention being modified
unsatisfactory for its intended purpose, then there is no suggestion or
motivation to make the proposed modification." In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984).
In view of the above, we reverse the rejection.
3
Appeal2018-000307
Application 14/075,142
The rejection is reversed.
DECISION
ORDER
REVERSED
4