Ex Parte 6,590,235 et al

Patent Trials and Appeals Board

Sep 18, 2013

95001733 - (D) (P.T.A.B. Sep. 18, 2013)

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.
95/001,733 08/30/2011 6,590,235 3108.001REX0 4273
22850 7590 09/18/2013
OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/18/2013 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
________________

SEOUL SEMICONDUCTOR CO., LTD and
SEOUL SEMICONDUCTOR, INC.
REQUESTERS

v.

KONINKLIJKE PHILIPS ELECTRONICS,
N.V. and PHILIPS LUMILEDS LIGHTING COMPANY LLC
PATENT OWNERS AND APPELLANTS
________________

Appeal 2013-008724
Reexamination Control 95/001,733
Patent 6,590,235 B2
Technology Center 3900
________________

Before KEVIN F. TURNER, STANLEY M. WEINBERG, and
JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owners Koninklijke Philips Electronics, N.V. and Philips
Lumileds Lighting Company LLC (“Patent Owners”) appeal from the
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Examiner’s rejection of claims 1-17. We have jurisdiction under 35 U.S.C.
§§ 134 and 315.
Claims 9 and 13-171 are rejected under 35 U.S.C. § 112, 1st
paragraph. Right of Appeal Notice (RAN) 6-7.
Claims 1, 2, 9, 11, and 12 are rejected under 35 U.S.C. § 102(b) as
anticipated by Umemoto (JP H07-140966; published Dec. 17, 1996). RAN
8-15.
Claims 3-8 and 10-17 are rejected under 35 U.S.C. § 103(a) as
obvious over Umemoto and Shimizu (US 5,998,925; issued Dec. 7, 1999).
RAN 15-23.
Claim 9 is rejected under 35 U.S.C. § 103(a) as obvious over
Umemoto and either of Polmanteer (US 4,418,165; issued Nov. 29, 1983)
and Admitted Prior Art (APA). RAN 23-27.
Claims 13-17 are rejected under 35 U.S.C. § 103(a) as obvious over
Umemoto, Shimizu, and either of Polmanteer and APA. RAN 27.
Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as obvious
over Umemoto and APA. RAN 27-28.
Claims 1-3, 9, 11, and 12 are rejected under 35 U.S.C. § 102(b) as
anticipated by Inagaki (JP H08-5094; published Feb. 18, 1997). RAN 28-34.
Claims 4-8 and 10-17 are rejected under 35 U.S.C. § 103(a) as
obvious over Inagaki and Shimizu. RAN 34-40.

1 RAN 6 states claims 9 and 13-16 are rejected on this ground. RAN 7
includes claim 17 as similarly rejected. Because claim 17 depends from
rejected claim 13, we conclude that claim 17 has also been rejected on this
ground.
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Claim 9 is rejected under 35 U.S.C. § 103(a) as obvious over Inagaki
and Polmanteer. RAN 40-42.
Claims 13-17 are rejected under 35 U.S.C. § 103(a) as obvious over
Inagaki, Polmanteer, and Shimizu. RAN 42-43.
Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as obvious
over Inagaki and APA. RAN 43.
Claims 1-3, 5, 6, and 9-17 are rejected under 35 U.S.C. § 102(a) as
anticipated by Sakano (JP H9-343481; published Aug. 25, 1998). RAN 44-
52.
Claims 4, 7, 8, and 10-12 are rejected under 35 U.S.C. § 103(a) as
obvious over Sakano and Shimizu. RAN 53-56.
Claims 1-17 are rejected under 35 U.S.C. § 103(a) as obvious over
Shimizu and Price (Stephen J. Price, et al., “Encapsulation of Optoelectronic
Devices for Severe Environments,” 26th Electronic Components Conference,
386-389 (1976)). RAN 56-67.
Claims 1-17 are rejected under 35 U.S.C. § 103(a) as obvious over
Shimizu and Thome (US 4,034,466; issued July 12, 1977). RAN 67-71.
Claims 9 and 13-17 are rejected under 35 U.S.C. § 103(a) as obvious
over Shimizu, Thome, and Polmanteer. RAN 72-75.
We affirm.

STATEMENT OF THE CASE
Patent Owners have informed us that U.S. Patent No. 6,590,235 (the
’235 patent) is one patent involved in the litigation styled Koninklijke Philips
Electronics, N.V., et al. v. Seoul Semiconductor Company, Ltd., et al. and
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Seoul Semiconductor Company, Ltd., et at. v. Philips Lumileds Lighting
Company LLC, et al., No. 8:11-cv-00356 (C.D. Cal. filed Mar. 4, 2011).
App. Br. 1, 34 (Related Proceedings App’x).
The ’235 patent relates to light emitting diode (LED) packaging and
encapsulation. Col. 1, ll. 13-14. Claims 1 and 9 are illustrative and
reproduced below:
1. A light emitting diode (LED) component
comprising:
an LED chip emitting light having a wavelength in a
range of 200 to 570 nanometers; and
an optic encapsulating the LED chip, the optic
comprising:
an outer optically transmissive shell of rigid
material; and
a quantity of resilient, optically transmissive
material inside the shell.

9. The LED component of claim 1 wherein the resilient,
optically transmissive material comprises a silicone material
being transmissive to light in the wavelength range from
ultraviolet through green, wherein the silicone material
maintains its transmissiveness when exposed to a temperature
of 100°C over operating conditions in excess of 1000 hours.

ANALYSIS
CLAIMS 9 AND 13-17 -- 35 U.S.C. § 112, 1ST PARAGRAPH (WRITTEN
DESCRIPTION)
In the Amendment filed February 16, 2012, Patent Owners amended
claim 9 to further recite “wherein the silicone material maintains its
transmissiveness when exposed to a temperature of 100°C over operating
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conditions in excess of 1000 hours.” For support, Patent Owners cited the
’235 patent, col. 4, ll. 10-18, which states.
LED components according to the invention have been
found to be stable over long lifetimes, greatly in excess of 1000
hours. Stability has been measured by exposure to low (-55°
C.) through high temperatures (in excess of 100° C.), and low
through high humidity (0-85% RH) operation. Stability also has
been measured by exposure to high internal and external UV
through green radiation, such as would be experienced during
operation in outdoor environments.
The Examiner finds “[t]he ’235 patent states that the overall stability
is in excess of 1000 hours, not that the stability at 100°C is in excess of
1000 hours.” RAN 7. See also Ans. 5-6.
Patent Owners argue “[o]ne of ordinary skill in the art would read
column 4 [of the ’235 patent] to state that the components were tested at
1000 hours of operation at a constant set of conditions, such as temperature.”
App. Br. 7-8.
“[T]he test for sufficiency [of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). “And while the description requirement does not
demand any particular form of disclosure, or that the specification recite[s]
the claimed invention in haec verba, a description that merely renders the
invention obvious does not satisfy the requirement.” Id. at 1352 (internal
citations omitted).
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The ’235 patent (col. 4, ll. 10-18) describes lifetime as being in excess
of 1000 hours and further describes stability measured by exposure to low
through high temperatures, low through high humidity, and UV through
green radiation. Accordingly, the LED components are exposed to various
conditions over the lifetime. The Specification does not, however, disclose
that Patent Owners measured stability specifically while the claimed silicone
material was “exposed to a temperature of 100°C over operating conditions
in excess of 1000 hours” as claimed. At best, the cited part of the
Specification states that over the course of 1000 hours, LED components
were exposed to a range of temperatures and fails to disclose that the LED
components were exposed to any single temperature, including 100°C, for
an entire 1000 hours.
We therefore agree with the Examiner that the Specification fails to
disclose exposure at 100°C in excess of 1000 hours as recited in claim 9.
We, therefore, sustain the rejection under 35 U.S.C. § 112, 1st
paragraph, of claims 9 and 13-17, which recite the same limitation as claim
9.

CLAIMS 1, 2, 11, AND 12 -- ANTICIPATION BY UMEMOTO
The Examiner finds Umemoto describes all limitations of claim 1.
RAN 8-13. The Examiner maps Umemoto’s epoxy resin 5 (Figure 1) to the
recited outer optically transmissive shell of rigid material. RAN 9.
Patent Owners argue Umemoto does not teach the recited outer
optically transmissive shell of rigid material because Patent Owners’
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Specification teaches epoxy resin is unsuitable due to having a “yellowing”
problem. App. Br. 9-12.
In response, the Examiner finds that Patent Owners’ Specification
does not exclude optically transmissive epoxies, even if they might yellow
after some undefined period of use under certain conditions. See Ans. 7
(citing the ’235 patent, col. 2, ll. 40-55, stating that “[t]he term ‘optic’
broadly applies to any optically transmissive member.”).
In addition, the ’235 patent (col. 4, ll. 33-39) states
FIG. 2 shows an LED cover configured as per a first preferred
embodiment of the invention. A hard outer shell 20 is suitably
shaped, e.g., as a lens. The shell may be made of any suitable
optically transmissive material, preferably a stable material
such as cyclic-olefin copolymers or other optical plastics,
glasses, ceramics, or other transparent materials such as
Aluminum Oxide.
The ’235 patent (col. 4, ll. 33-39) describes the optically transmissive
material for the outer shell in connection with preferred embodiments.
However, “[t]hough understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim.” See
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). See also In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(Although the claims are interpreted in light of the specification, limitations
from the specification are not read into the claims.).
That said, claim 1 recites “an outer optically transmissive shell of
rigid material” which is not limited to excluding epoxy resin or excluding a
material that may degrade over time. The fact that epoxy resin may not be a
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preferred material does not preclude a finding that Umemoto’s epoxy resin 5
(Figure 1) describes the recited outer optically transmissive shell of rigid
material, as broadly recited in claim 1.
We sustain the rejection based on Umemoto of claim 1, and of claims
2, 11, and 12, which are not argued separately.

CLAIMS 3-8 AND 10 -- OBVIOUSNESS OVER UMEMOTO AND SHIMIZU
Patent Owners do not present further arguments for patentability of
claims 3-8 and 10 over Umemoto and Shimizu. See App. Br. 8.
Claims 3-8 and 10 depend from claim 1. Accordingly, we sustain the
Examiner’s rejections based on Umemoto and Shimizu of claims 3-8 and 10.

THE REMAINING REJECTIONS
Review of alternative prior art bases for rejection to claims, which
have already been determined to be appropriately rejected over the prior art,
is discretionary. See, e.g., In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir.
2009) (not reaching rejections based on obviousness when claims already
rejected as anticipated). We exercise our discretion and decline to reach the
merits of the remaining rejections.

ORDER
The Examiner’s decision rejecting claims 1-17 is affirmed.
Extensions of time for taking any subsequent action in connection
with this appeal are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

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AFFIRMED

peb
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For Third Party Requester:

LORI A. GORDON, ESQ.
STERNE KESSLER GOLDSTEIN & POX, PLLC
1100 NEW YORK AVE, N.W.
WASHINGTON, D.C. 20005

For Patent Owner:

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA VA 22314