Ex Parte 7615795 et al

Patent Trial and Appeal Board

Sep 29, 2016

90013225 (P.T.A.B. Sep. 29, 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.
90/013,225 05/09/2014 7615795 REEX-023-US 2476
23483 7590 09/30/2016
WILMERHALE/BOSTON
60 STATE STREET
BOSTON, MA 02109
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
09/30/2016 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 CREE, INC.
Patent Owner and Appellant
____________

Appeal 2016-003118
Reexamination Control No. 90/013,225
Patent 7,615,795 C11
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed on April 29, 2014 (Control Number 90/013,225).
Cree, Inc. (Appellant), the owner of the patent under reexamination,2 appeals

1 The patent involved in this reexamination appeal proceeding (“the ’795
patent”) issued to Bruce Baretz, and Michael A. Tischler on November 10,
2009. Original claims 1-16 of the ’795 patent were subject to Ex Parte
Reexamination 90/012,746, for which Ex Parte Reexamination Certificate
US 7,615,795 C1, issued on July 22, 2013 (“the ’746 reexamination”). In
the ’746 reexamination, the patentability of claim 9 was confirmed, claims 1
and 7 were cancelled, claims 17 and 18 were added, and the remaining
claims were amended to depend from the new sole independent claim 17.
See Ex Parte Reexamination Certificate US 7,615,795 C1.
2 See Appeal Brief 4, filed September 23, 2015 (“App. Br.”).
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under 35 U.S.C. §§ 134(b) and 306 from an Examiner’s final rejection of
claims 2-6 and 8-18.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.3

STATEMENT OF THE CASE
Related Proceedings
The ’795 patent is a continuation of U.S. Application 08/621,937,
which issued as U.S. Patent 6,600,175 (“the ’175 patent”), which was the
subject matter of Ex parte Reexamination 90/010,940 and Appeal 2014-
007890. On appeal in the reexamination of the ’175 patent, the Board
affirmed the Examiner’s rejection of all the appealed claims in a Decision
mailed November 21, 2014. The Board’s Decision was affirmed by the
Federal Circuit on March 21, 2016. In re Cree, Inc., 818 F.3d 694 (Fed. Cir.
2016).
The ’795 patent is also related to US 7,943,945 B2 (“the ’945
patent”), which issued from U.S. Application 11/264,124, which is a
continuation of the application that became the ’795 patent. The ’945 patent
is the subject of Ex parte Reexamination 90/013,226 and Appeal 2016-
003136. The ’795 patent is also related to US 8,502,247 B2 (“the ’247
patent”), which issued from U.S. Application 12/131,118, a division of the
application that became the ’945 patent. The ’247 patent is the subject of Ex

3 Our decision refers to Appellant’s Appeal Brief filed on September 23,
2015 (“App. Br.”); Reply Brief filed December 30, 2015 (“Reply Br.”);
Examiner’s Answer mailed November 3, 2015 (“Ans.”); Final Office Action
mailed February 23, 2015 (“Final Rej.”).
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parte Reexamination 90/013,227 and Appeal 2016-003386. Decisions in
these related appeals are mailed concurrently with this decision.

The ’795 Patent
The ’795 patent describes a light emitting assembly, shown in Fig. 6,
comprising a solid state light emitting diode (LED) which emits a first,
shorter wavelength radiation in the form of blue or ultraviolet (UV) light,
and a down-converting luminophoric medium which, when impinged by the
first, shorter wavelength radiation, is excited to emit a second, longer
wavelength radiation in the form of white light. ’795 patent, col. 12, ll. 7-40
and Abstract.
Fig. 6 of the ’795 patent is reproduced with additional marking for
illustration.

Fig. 6 of the ’795 patent is a schematic representation of a light emitting
assembly 80 comprising a solid state LED 82 emitting a blue or UV light
and a down-converting luminophoric medium 90 emitting a white light.

In a specific embodiment, blue wavelength light output from an LED
is down-converted to white light by packaging the solid state LED, shown in
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Fig. 1, with fluorescent organic and/or inorganic fluorescers or phosphors in
a polymeric matrix. ’795 patent, Fig. 1 and Abstract. Fig. 1 of the ’795
patent is reproduced with additional marking for illustration.

Fig. 1 of the ’795 patent is a schematic representation of a white LED
assembly 10 comprising a LED die 13 in contact with a surrounding down-
converting material 20 enclosed by a wall 7 of a light transmissive enclosure
11. ’795 patent, col. 8, l. 52 to col. 9, l. 2.

Fig. 4 of the ’795 patent is reproduced below.

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Fig. 4 of the ’795 patent is a schematic partial cross-sectional view of a
display 30 employing an array of light emitting assemblies 10 (shown as
individual enclosures 11) of Figure 1. ’795 patent, col. 11, ll. 23-32.
The display 30 may be selectively illuminated, and/or all illuminated
simultaneously, to be used as a back lighting illumination panel, such as for
a liquid crystal display (LCD). Id., col. 11, ll. 23-41. Alternatively, blue
LEDs may be arranged in an array and surrounded by an enclosure
comprising the white-light emitting phosphor to form an electroluminescent
cell apparatus. Id., col. 11, l. 46 to col. 12, l. 13 and Fig. 5.
Claims on Appeal
Claim 17 is the only independent claim on appeal. App. Br. 64-66,
Claim App’x. Claim 17 is directed to a liquid crystal display with a back
light structure that includes at least one LED assembly of the invention.
Specifically, representative claim 17 is reproduced below:
17. A liquid crystal display comprising a back light
structure including at least one LED and phosphor assembly in
which the LED is a blue LED and is energizable to emit
radiation and the phosphor is arranged to be impinged by
radiation from the blue LED so that the LED and phosphor
assembly produces white light back light illumination for the
liquid crystal display.

App. Br. 66 (Claims Appendix).
Prior Art References & Publications Considered
(1) Russay et al. (Russay) US 5,008,658 Apr. 16, 1991
(2) Tokailin et al. (Tokailin) US 5,126,214 June 30, 1992
(3) Yoshihiro Nagano (Nagano) JP 4-269718 Sept. 25, 1992
(4) Tadatsu et al. (Tadatsu) JP 5-152609 June 18, 1993
(5) Donald A. Streck (Streck) US 5,278,545 Jan. 11, 1994
(6) Nakamura et al. (Nakamura) US 5,578,839 Nov. 26, 1996
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(7) Admitted Prior Art in the ’795 patent (APA)

Expert Declarations & Other Exhibits
Appellant has provided several Declarations under 37 C.F.R. § 1.132
from several researchers and renowned experts in the field of light emitting
diodes (LEDs) and visual display technology including Dr. Shuji Nakamura
(Exhibit 10), Dr. Gerald B. Stringfellow (Exhibit 5), Dr. Wayne Cranton
(Exhibit 6), and Dr. Malcolm Forbes (Exhibit 7). These Declarations
provide expert testimony regarding: (i) the state of the art regarding LEDs
and white light at the time of the invention, (ii) how the industry was
utilizing what is known as a direct-emission “triplet” approach in which
individual LEDs that emit three primary colors—red, green, and blue
(RGB)—are packaged together and then all mixed to form white light, (iii)
how those of ordinary skill in the art including the Declarants would have
pursued the RGB “triplet” approach and avoided a “down-conversion”
approach in which a phosphor material is used to convert monochromatic
light from a blue or ultraviolet (UV) LED to create white light, as disclosed
by Appellant’s invention, (iv) how single white LEDs were made possible
by Appellant’s invention, i.e., blue LED in combination of “down-
conversion” to produce white light, (v) the use of LEDs in displays,
particularly in liquid crystal displays (LCDs), and (vi) the differences
between light emitted from different light sources.
In addition, Appellant has provided declarations under 37 C.F.R. §
1.132 by Dr. George Brandes (Exhibit 8), Director of IP Strategy and
Business Development for Appellant, and by Adam Broome (Exhibit 9),
General Counsel for Appellant, to provide testimony of second
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considerations of non-obviousness, including: (i) evidence of long felt but
unsolved need, (ii) unexpected results, (iii) scientific recognition and
industry acknowledgement, (iv) licensing, and (v) commercial success of
Appellant’s invention.
Additional evidence submitted by Appellant includes:
Exhibit 1: Alfred Vollmer, White LED Developed Using
Luminescence Conversion, Nikkei Electronic Asia, July
1997.

Exhibit 2: FRAUNHOFER GESELLSCHAFT, Research News, 1997
(Special Issue).

Exhibit 3: Cree and Nichia Announces White LED Cross-Licensing,
LEDS MAGAZINE, INDUSTRY NEWS, Feb. 2005.

Exhibit 4: Shuji Nakamura et al., THE BLUE LASER DIODE: THE
COMPLETE STORY (1997).

Examiner’s Rejections
(1) Claims 2-6 and 8-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Russay, Tadatsu, Nakamura, Tokailin, and
admissions in the ’795 patent. Final Rej. 3-9; Ans. 2.
(2) Claims 2-6 and 8-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Streck, Tadatsu, Nakamura, Tokailin, and
admissions in the ’795 patent. Final Rej. 9-14; Ans. 2.
(3) Claims 2-6 and 8-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nagano, Nakamura, Tokailin, and admissions in the
’795 patent. Final Rej. 14-19; Ans. 3.

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ANALYSIS
In our affirmance, we adopt the Examiner’s finding and conclusions
as our own. Any additional findings and analysis provided below are
included for emphasis and further explanation.
Appellant do not present separate arguments for any particular claim
on appeal. Accordingly, all of the claims stand or fall with representative
claim 17.
Appellant’s arguments are substantially directed to the contention that
down-conversion of a blue LED to white light using phosphors (1) was not
expressly taught or expressly suggested in the prior art, (2) was not
considered by any of the experts who testified in the art at the time of the
invention, (3) would not have been considered by such experts because of
the known power loss and lack of color gamut available using a down
converted blue LED, particularly when compared to the triplet (red, blue and
green) LED approach that was conventional in the art to make white light,
particularly for use with an LCD, and (4) was not obvious as evidenced by
commercial success, licensing and industry praise. App. Br. 46-48.
While the prior art references used to reject the claims are different in
the present case than in the reexamination of the ’175 patent, substantially
identical arguments as to whether it would have been obvious to use known
phosphors to down-convert Nakamura’s blue LED to white light were
addressed and found non-persuasive in the related Board decision in the
reexamination of the ’175 patent, which was affirmed in In re Cree, Inc.,
818 F.3d 694 (Fed. Cir. 2016). See Board Decision 19-20, Reexamination
90/010,940, mailed November 21, 2014 (“Board Decision”). To the extent
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that Appellant’s arguments and evidence are consistent with the findings and
determinations affirmed by the Federal Circuit, we decline to revisit them
here. We discuss the application of the Board and Federal Circuit decisions
to the evidence of record in this case, to the extent they are different.
Independent claim 118 of the ’175 patent was directed to a light-
emission device that uses a blue LED in combination with a down-
converting luminophoric medium to produce white light. In particular,
claim 118 (emphasis added) recited a light-emission device comprising:
a single-die, two-lead gallium nitride based
semiconductor blue light-emitting diode emitting radiation; and

a recipient down-converting luminophoric medium for
down-converting the radiation emitted by the light-emitting
diode, to a polychromatic white light, wherein the luminophoric
medium is dispersed in a polymer that is on or about the single-
die, two-lead gallium nitride based semiconductor blue light-
emitting diode.

Board Decision 28. The Federal Circuit affirmed the Board’s determination
that claim 118 was unpatentable under 35 U.S.C. § 103(a) as obvious over
Stevenson, in view of Pinnow ’482, and Nakamura. Cree, 818 F.3d at 704.

Tokailin and Pinnow ’482
In the Decision affirming the rejections of the claims in the ’175
patent, the Board found that Pinnow ’4824 disclosed the down conversion of

4 US Patent 3,691,482, issued September 12, 1972 to Pinnow et al (“Pinnow
’482”). Pinnow ’482 was relied upon by the Examiner in rejections
maintained in the reexaminations of the ’175 patent, the ’247 patent, and the
’945 patent, discussed above. The Examiner relied on Pinnow ’482 in the
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blue wavelength light to white light using phosphors and stated that “nothing
in Pinnow [’482] suggests that the particular source of primary radiation is
important to the down-conversion process.” Cree, 818 F.3d at 699. Indeed,
Pinnow ’482 teaches using phosphor to convert blue wavelength light to
white light, which is the same teaching the Examiner finds is disclosed by
Tokailin in the present case. Pinnow ’482, col. 1, ll. 5-7 and 42-50, col. 3, ll.
28-34; see Final Rej. 5; Tokailin, col. 2, ll. 49-51 and Example 3 (col. 20, l.
60 to col. 21, l. 35).
In the present case, the Examiner relies on the teachings of Tokailin to
support the finding that down conversion of blue wavelength light to white
light using one or more phosphors was known in the art. The Examiner
found that Tokailin describes an organic electroluminescent (EL) element
emitting blue wavelength light, which can emit white light after conversion
by fluorescent dyes, namely organic phosphors. See Final Rej. 5 (citing,
inter alia, Tokailin, col. 2, ll. 49-51 and Example 3 (col. 20, l. 60 to col. 21,
l. 35)).
As in the case of the ’175 patent, Appellant argues that the source of
light is relevant and that the skilled artisan would not applied the teaching of
Tokailin to light sources other than an organic EL element emitting blue
wavelength light. As evidence, Appellant relies on the testimony of Dr.
Forbes5 who described in great detail the differences between different light

reexamination of the ’175 patent in the same way as the Examiner relied on
Tokailin in the present reexamination.
5 Dr. Forbes is renowned in the field of photochemistry, having over 30
years of experience in research concerned with photochemical reactions,
including research involving the excited states of organic molecules for a
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sources, and specifically testifies that “a photon is not always just a photon.”
See Reply Br. 15-17 (citing Forbes Decl. ¶ 18-22); App. Br. 19-20 and 49-
50. Dr. Forbes explains that “[l]ight excitation sources have different
characteristics, yielding photons that can differ in wavelength, in number, in
polarization (spin angular momentum), and in phase (coherence), and all of
these characteristics can give them different behavior under different
circumstances.” Forbes ¶ 18. Dr. Forbes cites to references that discuss the
effects of “intensity,” “phosphor concentration,” the polymer containing the
photoluminescent molecules, and “optical geometry” on wavelength.
Forbes, ¶¶ 19-21. Dr. Forbes also discusses a lack of literature for the use of
phosphors with LED technology. Forbes ¶ 22.
The argument is not persuasive, for the same reason discussed in the
reexamination of the ’175 patent. See Cree, 818 F.3d at 699. Namely,
Tokailin evinces that the use of phosphors to down convert blue wavelength
light to white light was known in the art, and the record supports a finding
that a skilled artisan would have had a reasonable expectation of success in
applying phosphors for this purpose despite the particular source of blue
wavelength light, as discussed in further detail below. Appellant has not
demonstrated the Examiner’s proffered combination of references would

variety of fields including magnetic imagine, photodynamic cancer
therapies, quantum computing, photodegradation of polymers, and solar fuel
production, to name a few. Forbes Decl. ¶¶ 1-10. It appears that Dr.
Forbes’s work specifically in the field of LED technology is limited to
processing proposals for funding programs that develop phosphors for LED
applications from July 2011 to June of 2014. Id. ¶ 4. Dr. Forbes is well
qualified to testify generally as to the state of the art of photochemistry at the
time of the invention.
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have been “uniquely challenging or difficult for one of ordinary skill in the
art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Appellant’s experts point out the differences in blue wavelength light
sources known in the art but do not explain why these differences, which
were known to the skilled artisan, would have reasonably created a lack of
expectation of success in down-converting blue wavelength light from LED
sources using phosphors as recited in the claimed subject matter. For
example, Tokailin specifically teaches controlling the concentration of
phosphors and the thickness of phosphor containing films to routinely
change the wavelength of emitted light. Tokailin, col. 17, ll. 1-22. We note
that Tokailin also teaches using a plurality of phosphors. See Tokailin, col.
26, ll. 13-16 and claim 2. We have not been directed to adequate evidence
that the skilled artisan would not have been successful in using the approach
described in Tokailin using Nakamura’s blue LED to achieve a white light
with only routine experimentation.
To the contrary, as explained below, the prior art teaches success in
down-converting blue wavelength light to white light as taught in Tokailin
and Pinnow ’482 using light sources in the art having vastly different
characteristics. See Stringfellow Decl. ¶ 38-42 and 57-65 (comparing in
detail Pinnow ’482’s laser, Tokailin’s EL device, and Nakamura’s high
intensity blue LED). The evidence that differences in light sources exist
does not, alone, rebut the fact that phosphors had been used in the prior art to
down-convert blue wavelength light to white light using light sources with
vastly different intensity and wavelength breadth. Tokailin’s EL light has a
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broad wavelength band and low intensity, and Pinnow ’482’s laser light has
a narrow wavelength band and high intensity. Stringfellow Decl. ¶ 63.
Thus, given that two different blue light sources could be down converted,
the Examiner had reasonable basis to find that that Nakamura’s blue LED,
having some characteristics similar to EL light, some characteristics similar
to laser light, and some characteristic in between EL light and laser light,
would be expected to also be used with phosphors to create white light. Id.
Further, Dr. Forbes testifies that there is a body of literature
describing the use of phosphors in the fluorescent tube industry and the CRT
(cathode ray tube) industry. Forbes ¶ 22; see also ’795 patent, col. 3, ll. 39-
51 (describing that conventional fluorescent lamps use phosphors to down-
convert ultraviolet light emitted from excited mercury atoms into white
light). Thus, despite the differences in photon sources, the evidence
supports a finding that the skilled artisan would have had a reasonable
expectation of success using phosphors to down-convert blue wavelength
light to white from a variety of sources, including the new high intensity
LEDs, such as taught by Nakamura, using routine experimentation. See In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Obviousness does
not require absolute predictability.”); Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1367–369 (Fed. Cir. 2007) (“[T]he expectation of success need only
be reasonable, not absolute”); Velander v. Garner, 348 F.3d 1359, 1368
(Fed. Cir. 2003) (holding that “expense, time, and effort” involved due to
variability in combining the teachings of the prior art did not equate to a
conclusion that success was unlikely).
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The Federal Circuit agreed with the Board that the statements of three
of Cree’s experts, including Dr. Stringfellow,6 who provided substantially
identical testimony in this case, supported a finding that down-conversion
from blue LED to white light was a known, but disfavored, option prior to
the availability of high intensity blue LEDs such as Nakamura’s. See Cree,
818 F.3d 700-701; Stringfellow Decl. ¶ 31 (“[T]he industry was focused on
LEDs that directly emitted the color of interest and there was no
consideration of the use of down-conversion. If they had considered it, they
would have dismissed down-conversion because (a) it would waste energy;
(b) it was no longer needed to create primary colors; and (c) it entailed
increased cost and complexity.”). In particular, the Federal Circuit agreed
that down-conversion of LEDs was known but not a considered practical
solution for forming white light due to loss of energy and brightness. See
Cree, 818 F.3d 700-701.

Impermissible hindsight
The Federal Circuit determined that the Board “provided a sufficient,
non-hindsight reason to combine the references,” namely “[t]he availability
of the high-powered Nakamura LED thus provided the motivation to
combine Stevenson’s7 use of LEDs to create primary colors with Pinnow

6 Dr. Stringfellow is a member of the National Academy of Engineering, a
Fellow of the IEEE and a worldwide-recognized expert in the field of LEDs
with over 46 years of experience and over 350 peer-reviewed articles. See
Stringfellow Decl. ¶¶ 3-13. Dr. Stringfellow is well qualified to testify
regarding the state of the art of LED technology at the time of the invention.
7 US Patent 3,819,974, issued June 25, 1974 to Stevenson et al
(“Stevenson”). Similar to the teachings of Tadatsu and Nagano, Stevenson
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[’482]’s use of a short-wavelength light source to create white light.” Cree,
818 F.3d 701. The Federal Circuit found that Board did not err in finding
Cree’s arguments regarding the high output-power of a laser versus that of
an LED and that “color mixing and phosphor selection are more difficult
when using a source with a broader emission spectrum” to be unpersuasive.
Id. The Court relied on the Examiner’s finding that “it certainly is factual
evidence that those of skill in the art have sufficient understanding of the
scientific and engineering principles to choose phosphors for a broadband,
UV-to-blue primary radiation source.” Id. at 701-2.
The same reasoning applies to the prior art and evidence of record in
the present case. The availability of the high-powered Nakamura LED
provided the reason a skilled artisan would have combined using phosphors
to down-convert LEDs to create alternative wave-length light, as taught by
either Nagano or Tadatsu, with Tokailin’s use of phosphors to turn short-
wavelength light particularly to white light. Like the Stevenson publication
cited in the rejections in the reexamination of the ’175 patent, the Examiner
relies on either Nagano or Tadatsu to show that it was known in the art at the
time of the invention to use phosphors to down-convert short wavelength
LED light to longer wave-length light in the visible spectrum. Specifically,
the Examiner found that Tadatsu teaches a phosphor dispersed in a resin
enclosing an overlying an LED. Final Rej. 6. Tadatsu teaches that the light

teaches a violet LED, have a broad spectrum that includes some blue
wavelengths and some UV wavelengths, that is down-converted using
phosphors to longer wavelength light in visible spectrum. The Examiner
relied on Stevenson in the reexamination of the ’175 patent in the same way
as Tadatsu or Nagano in the present reexamination.
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is in a spectral range of 370 nm to 430 nm, i.e., the blue to ultraviolet
spectrum, and that the phosphor down-converts the short wave-length light
to “a variety of” longer wave-lengths in the visible spectrum. Id. (citing
Tadatsu ¶ 9). The Examiner also finds that Nagano teaches a liquid crystal
display comprising a back light structure including using LEDs in
combination with phosphors for backlighting illumination of an LCD. Final
Rej. 14-15 (citing Nagano ¶¶ 3, 9, 10, 14, and Figure 1). Nagano is silent
about the color of the LED used and the color of light emitted from the
phosphor. Id. Nagano acknowledges the low illumination achieved by
using LEDs as side lighting for a back lit LCD, but describes that
illumination can be improved using the phosphor for direct emission and
using a reflector plate. Nagano, ¶¶ 4, 10, and 11.
Like Pinnow ’482, cited in the reexamination of the ’175 patent, the
Examiner relies on Tokailin to show that it was known in the art at the time
of the invention to use phosphors to down-convert blue wavelength light
specifically to white light. Final Rej. 5.
As in the reexamination of the ’175 patent, we find that the ’795
patent describes that white light from a solid state device was a desirable
outcome with many known uses. See ’795 patent, col. 2, ll. 26-61. We
further agree with the Board’s statement that was quoted by the Federal
Circuit (Cree, 818 F.3d at 699):
Appellant’s invention is nothing more than a new application of
a high-power, high-brightness blue LED developed by Dr.
Nakamura in late 1993 on a single die, and that application is
predictable according to the blue LED’s inherent functions,
particularly, in view of: (1) the state of the art in LEDs, (2) the
market demand for white light and design trends to create white
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light, (3) a finite number of identified, predictable solutions
available to convert light from LEDs into white light (i.e.,
direct-emission “triplet” approach vs. “down-conversion”
approach), (4) advantages and/or disadvantages of utilizing (i)
the direct emission “triplet” approach and (ii) the “down-
conversion” approach to create white light, and (5) the
sensibility of picking and choosing the “down-conversion”
approach over the direct-emission “triplet” approach because
light emitted from a single-die blue LED could now be down-
converted directly into white light without the need of multiple
“RGB” LEDs positioned on the same single die, via direct
emission “triplet” approach.
Board Decision 28.
Appellant’s renowned experts in the field of LEDs each testified that
the use of a blue LED and “down-conversion” to create white light was not
obvious and that an artisan of ordinary skill would have pursued a direct-
emission RGB “triplet” approach using red, green, and blue LEDs. Thus,
Appellant argues the Examiner has provided no reason to use a blue LED to
create white light via down conversion. App. 45; Reply Br. 6-9.
For example, Dr. Nakamura8 testifies that his work in Tadatsu and his
seminal work in the development of a high-intensity blue LED described in

8 Dr. Shuji Nakamura “is famous for his work with bright blue LEDs and is
a named inventor on two of the references relied on in the Final Office
Action: U.S. Patent No. 5,578,839 to Nakamura et al. (‘Nakamura’) and
Japan Patent Application Publication H05-152609 to Tadatsu et al.
(‘Tadatsu’).” App. Br. 4 n.3. Dr. Nakamura is one of the three recipients of
the 2014 Nobel Prize for Physics “for the invention of efficient blue light
emitting diodes, which has enabled bright and energy-saving white light
sources.” Nobel Prize winners at http://www.nobelprize.org/nobel_prizes/
physics/laureates/2014/nakamura-facts.html (last visited September 13,
2016). Dr. Nakamura is well qualified to testify as to the state of the art of
LED technology at the time of the invention.
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the Nakamura publication was primarily for blue LEDs to be utilized in
combination with previously developed red and green LEDs in a triplet for
white light production. Nakamura Decl. ¶¶ 10-12.
We are not persuaded that the invention is not obvious merely because
there are no express teachings in the art of a blue LED down-converted to
white light. The Examiner’s rejection is based on the obviousness of down-
converting Nakamura’s blue LED to white light and not because the
invention is expressly anticipated in the prior art.
Nor are we persuaded of non-obviousness merely because Appellant’s
experts testify that they did not consider and would not have considered
down-converting Nakamura’s blue LED to white light using known
phosphors in the art. Appellant’s experts are not the mythical person of
ordinary skill in the art who we consider in our determination of
obviousness. The hypothetical person has all relevant teaching in the art at
his disposal, including the teachings of down-conversion of other blue-light
sources to white light, such as Tokailin and Pinnow ’482. See Stand. Oil Co.
v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985) (“It is only that
hypothetical person who is presumed to be aware of all the pertinent prior
art. The actual inventor’s skill is irrelevant to the inquiry. . . . A person of
ordinary skill in the art is also presumed to be one who thinks along the line
of conventional wisdom in the art and is not one who undertakes to
innovate.”); Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437,
1449-1454 (Fed. Cir. 1984) (describing “the hypothetical person postulated
by § 103”). Accordingly, merely because Appellant’s experts did not
consider down-converting Nakamura’s blue LED to white light using known
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phosphors in the art, does not necessarily mean that it would not have been
obvious to do so. Patent Owner’s experts assert that neither they nor the
skilled artisan would have considered down-converting blue LEDs to white
light, not that doing so would have been beyond their skill level or the skill
level of the ordinary artisan.
Dr. Nakamura states that his high intensity blue LED was first
described in March 1994. Id. ¶ 11. The parent of the ’795 patent was filed
in March of 1996, and Dr. Nakamura testified that he first heard of down-
conversion of his blue LED in the work of his colleagues at Nichia Chemical
Industries, Inc. (Nichia) reported in November 1996. Id. ¶¶ 11-12 (citing K.
Bando et al., Tech. Digest, Phosphor Res. Soc., 264th Meeting, November
29 (1996)).
Contrary to Appellant’s arguments, two years of development time
and evidence of concurrent development between parties at two different
companies, Cree and Nichia, is not probative evidence of non-obviousness,
but rather, is evidence that phosphor down-conversion was ripe for
applications to newly introduced light sources, such as to Nakamura’s high
intensity blue LED. App. Br. 43 and 51; Reply Br. 5-6 (citing Leo Pharm.
Products, Ltd v. Rea, 726 F.3d 1346 (Fed. Cir. 2013)).
Appellant argues that, given the known disadvantages to down-
converting LEDs to white light which are not present in the conventional
triplet approach, i.e., using red, blue, and green (RBG) LEDs combined to
make white light, the down-conversion approach to white light would not
have been considered by one of ordinary skill in the art. App. Br. 19-21.
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These disadvantages primarily are: a significant power loss due to down-
conversion and a reduced color gamut. Id.
In support of these arguments, Dr. Cranton9 testifies regarding the
power requirements for illumination applications generally, and for LCD
backlighting specifically, and that the particular color of the white light
produced is important. Cranton Decl. ¶¶ 17 and 20. Dr. Cranton testifies
that down-converted LEDs have significant loss of power and would not
have been considered suitable, and would have been immediately rejected,
for LCD backlighting, a process that further reduces light transmission.
Cranton Decl. ¶ 20. Dr. Cranton further testifies that, for LCD applications,
the triplet approach would have been preferred for better power output and
better color gamut. Id. ¶¶ 31-32. Accordingly, Appellant argues that
because Tokailin teaches that down-conversion of organic EL light to white
light causes a 60% loss in power, such an approach that reduces power
would not be acceptable in LED applications that require significant power,
such as LCD backlighting. App. Br. 15; Reply Br. 11. Appellant also
argues that Tokailin’s white light, achieved using a blue EL light and a red
Pyridine 1 phosphor, would not have produced a broad spectrum, would lack
a green primary, and would not have been suitable for use in color LCDs.
Reply Br. 12 (citing Cranton Decl. ¶ 32).

9 Dr. Cranton has over 20 year experience in research concerned with the
technology of electronic materials for displays, thin film device fabrication
and measurement, visual display characterization, and laser processing of
materials for plastic electronics, including extensive publications in the field.
Cranton Decl. ¶¶ 7-9. Dr. Cranton is well qualified to testify regarding the
state of the art of display technology at the time of the invention, including
the use of LEDs in various displays.
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The claims of the ’795 patent are specifically directed to an LCD
comprising a phosphor down-converted LED producing white light.
However, we agree with the Examiner that the claims of the ’795 patent are
not directed to any particular power output, intensity, or particular shade or
spectrum of white light for use with an LCD. Even with a 60% loss of
power, the skilled artisan would still expect a down-converted blue LED,
particularly a high intensity LED as taught by Nakamura, to produce white
light as taught by Tokailin (and Pinnow ’482). The Examiner further
specifically relies on the teachings of Russay, Streck, and Nagano, which
teach that using LEDs in efficient backlighting of LCDs was known in the
art. Final Rej. 4, 9, and 14-15; Ans. 8-9, 16, 32, and 57-58.
Appellant has not persuasively demonstrated that Nakamura’s high
intensity LED when down-converted to white-light, as taught by Tokailin,
could not have been used in LCDs, as taught by Russay, Nagano, and Streck,
even with a 60% power loss, as taught by Tokailin. “[T]he question is
whether there is something in the prior art as a whole to suggest the
desirability, and thus the obviousness, of making the combination,” not
whether there is something in the prior art as a whole to suggest that the
combination is the most desirable combination available. In re Fulton, 391
F.3d 1195, 1200 (Fed. Cir. 2004).
Further, Dr. Cranton testifies that LEDs had advantages over
alternative backlighting source for LCDs, namely, “slimmer display profiles,
reduced environmental impact, and improved energy efficiency.” Cranton, ¶
34 (emphasis added). Dr. Cranton testifies that the “closer a display is
intended to be viewed from, the less luminance it typically requires” and that
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“[t]he ideal brightness (i.e., the peak luminance) of a display varies
depending on the application and environment.” Cranton Decl. ¶¶ 14, 15,
and 20. Dr. Cranton’s testimony is supported by the teachings of Nagano
directed to using LED lighting particularly for backlighting “small size”
devices. Nagano, ¶¶ 4 and 15.
The claims do not distinguish LCD display uses, and thus, even low-
power LCD displays would have been useful for some applications, such as
small sized or closely viewed devices. While we agree with Appellant that
the claims need not recite a specific numerical power requirement (Reply Br.
12-13), the recitation of an LCD display in claim 17 is insufficient to
distinguish known uses for lower power LEDs in LCD displays, as taught by
Russay, Streck, and Nagano, particularly for LCD displays used in
applications for which a lower power output is not critical, e.g., displays that
are viewed closely, as indicated by Dr. Cranton.
Moreover, contrary to Appellant’s repeated statements that the record
shows no criticism of the triplet approach (Reply Br. 5), Appellant does not
address the Examiner’s specific finding that, the ’795 patent admits in the
background section that disadvantages of the triplet approach were known in
the art, namely that triplet LEDs are complex (requiring multiple leads),
costly, and have low resolution in large displays. Ans. 9 (citing ’795 patent,
col. 3, ll. 10-28). Thus, the skilled artisan, knowing the advantages and
disadvantages of both the triplet approach and down-conversion, would have
used the LED technology most suitable for any particular application,
including certain backlit LCD displays.
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Repeatedly, Appellant’s arguments are predicated upon: (1) multiple
attacks of Tadatsu, Tokailin, and Nakamura individually, namely that none
of the references specifically teaches or expressly suggests down-converting
a blue LED to white light; (2) mischaracterization of the Examiner’s reliance
on these references, and (3) improper bodily incorporation of Tokailin into
Tadatsu. App. Br. 32; Reply Br. 7-8. For example, Tadatsu and Nagano are
not relied upon for disclosing a blue LED (Nakamura is), although Tadatsu
does teach the down-conversion of short wavelength light (near-blue UV
light) using phosphors. Final Rej. 6-7, 12, and 16. Nor is Tadatsu or
Nagano relied upon for an express disclosure of the down conversion of blue
wavelength light to white light using phosphors (Tokailin is). Final Rej. 6-7,
12, and 16. Nor is Tokailin relied upon for disclosure of down-conversion
of an LED (Tadatsu and Nagano are) or use of an LED in an LCD (Russay,
Streck, and Nagano are). Final Rej. 6-7, 12, and 16. As such, Appellant’s
arguments regarding the fact that: (1) Tadatsu’s LEDs did not down-convert
to white light, (2) Tokailin’s low power EL down-conversion was not an
LED down-conversion, (3) Nakamura did not teach down-conversion, and
(4) Russay, Streck, and Nagano did not specifically teach using down-
converted blue LEDs or use white light in LCDs, are misplaced and
unpersuasive. One cannot show nonobviousness by attacking references
individually when the rejection is based on a combination of references. In
re Keller, 642 F.2d 413, 425 (CCPA 1981). Each reference cited by the
Examiner must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). “[T]he test is what the combined teachings of
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the references would have suggested to those of ordinary skill in the art.”
Keller, 642 F.2d at 425.
The Examiner’s findings that: (1) Nakamura teaches a GaN-based
blue wavelength LED, (2) Tadatsu and Nagano teaches a “down-
conversion” of LED light via phosphors, (3) Tokailin teaches using
phosphors to down-convert blue wavelength light specifically to white light,
and (3) Russay, Streck, and Nagano teach using LEDs for LCD
backlighting, are well-supported by the evidence of record. We further
agree with the Examiner’s conclusion that, given the presumed knowledge
by an artisan of ordinary skill regarding the relevant prior art at the time of
Appellant’s invention, the advantage of using Nakamura’s GaN-based blue
LED in place of Nagano’s LED or Tadatsu’s GaN-based LED in
combination with “down-conversion” phosphors to create white light, as
taught by Tokailin (and Pinnow ’482) is supported by a preponderance of
the evidence. See Final Rej. 6-7, 12, and 16. Appellant has not
demonstrated why that reason is erroneous or why a person of ordinary skill
in the art would not have reached the conclusions reached by the Examiner.
See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“[T]he proper question is
whether the ordinary artisan possesses knowledge and skills rendering him
capable of combining the prior art references.”).
After reviewing the respective teachings and suggestions of the cited
references, we find that the weight of the evidence shows the proffered
combination is merely a predictable use of prior art elements (LEDs for
backlighting LCD, blue LED of Nakamura, and phosphors as taught by
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Tokailin, Tadatsu, and Nagano) according to their established functions.
Therefore, on this record, we are not persuaded the Examiner engaged in
impermissible hindsight, as Appellant contends.

Evidence of Nonobviousness Based on Secondary Considerations
The Federal Circuit agreed with the findings of the Board that
Appellant’s evidence of industry praise was not exclusively directed to the
work described in the ’175 patent (which is the same as that described in the
’795 patent), but rather to the body of work as a whole, which includes the
work of others, particularly that of the authors of the press release and
Nichia. See Cree, 818 F3d. at 702; Board Decision 42-43.
The Federal Circuit also agreed with the findings of the Board that
Appellant’s evidence of licensing lacked nexus to the merits of the invention
recited in the claims because the evidence consisted merely of press releases.
See Cree, 818 F3d. at 703. These press releases state that broad cross-
licenses were entered into with several parties and including several
technologies other than that described in the patent and that some were
intended to resolved litigation. Id.; Board Decision 44-45.
Further, the Federal Circuit agreed with the findings of the Board that
Appellant’s evidence of commercial success also lacked nexus to the merits
of the invention recited in the claims because the evidence was limited to
“sales of white light products using LEDs with lumino-phoric substances,
such as consumer products incorporating white LED backlit LCD displays,
but that there was no sufficient showing of a nexus between those sales and
the invention.” See Cree, 818 F3d. at 703. The Federal Circuit agreed with
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the Board finding that “the record is completely silent on whether the
commercial success was caused by the subject matter of the ’175 patent as
distinct from the prior art.” Id. at 704 (quoting Board Decision 47). In
particular, we note that much of the data evidence submitted in the present
case does not clearly distinguish sales or market share of white light
products using down-converted blue LEDs as opposed to white light
products using blue LEDs in an RGB triplet, but involves using “white
light” LEDs for backlighting generally, which includes triplet RGB LEDs,
for example, as compared to “cold cathode fluorescent lights (CCFLs).” See
e.g. Brandes Decl. ¶¶ 24-25 and 39-46.
The evidence present in this case directed to commercial success,
licensing, and industry praise do not appear to be substantially different from
that described and considered unpersuasive in the reexamination of the ’175
patent. Board Decision 37-47; App. Br. 27-45; Reply Br. 18 and 20-21. For
judicial efficiency, we do not reiterate all the arguments and evidence here,
but rely on the same reasoning discussed in the reexamination of the ’175
patent and affirmed by the Federal Circuit in determining that the evidence
is not sufficiently persuasive of non-obvious. See Cree, 818 F3d. at 702-
704.

CONCLUSION
As such, we AFFIRM the Examiner’s rejection of claims 2-6 and 8-
18.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
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AFFIRMED
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For Patent Owner:

Peter M. Dichiara, Esq.
Heather M. Petruzzi, Esq.
Wilmer Cutler Pickering Hale and Dorr LLP
1875 Pennsylvania Avenue, NW
Washington, DC 20006

For Third Party Requester:

Michael E. Hilton, Esq.
Harness, Dickey & Pierce, P.L.C.
P.O. Box 828
Bloomfield Hills, Michigan 48303