Ex Parte 7943945 et al

Patent Trial and Appeal Board

Sep 29, 2016

90013226 (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.
90/013,226 05/09/2014 7943945 REEX-022-US 6949
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 2016-003136
Reexamination Control No. 90/013,226
Patent 7,943,945 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. Cree, Inc. (Appellant), the
owner of the patent under reexamination,2 appeals under 35 U.S.C. §§

1 The patent involved in this reexamination appeal proceeding 7,943,945 B2
(the “’945 Patent”) issued to Bruce Baretz, and Michael A. Tischler on May
17, 2011. The ’945 Patent was the subject of ex parte reexamination
90/012,748 (“the ’748 reexamination”), which resulted in the issuance of an
Ex Parte Reexamination Certificate 7,943,945 C1 on September 20, 2013.
During the ’748 reexamination, claims 1, 17, and 29 were cancelled,
independent claim 42 and dependent claim 43 were added, and claims 2-16,
18, 21-28 were determined to be patentable as amended, and claims 19-20
and 30-41 were confirmed to be patentable in their original form. No claims
have been cancelled or amended in the present reexamination.
2 See Appellant’s Appeal Brief 1, filed on October 5, 2015 (“App. Br.”).
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134(b) and 306 from an Examiner’s final rejection of claims 2-16, 18-28 and
30-43.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.3

STATEMENT OF THE CASE
Related Proceedings
The ’945 patent issued from U.S. Application 11/264,124, which is a
continuation of the application that became US 7,615,795 (“the ’795
patent”). The ’795 patent is a continuation of U.S. Application 08/621,937,
which issued as U.S. Patent 6,600,175, which was the subject matter of Ex
parte Reexamination 90/010,940 and Appeal 2014-007890. On appeal, the
Board affirmed the Examiner’s rejection of all the appealed claims on appeal
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 ’945 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 ’795 Patent is the subject of Ex
parte Reexamination 90/013,225 and Appeal 2016-003118. The ’247 patent
is the subject of Ex parte Reexamination 90/013,227 and Appeal 2016-

3 Our decision refers to the Appellant’s Appeal Brief filed October 5, 2015
(“App. Br.”) and Reply Brief, filed December 30, 2015 (“Reply Br.”) and
the Examiner’s Answer, mailed November 3, 2015 (“Ans.”), and Final
Office Action, mailed March 3, 2015 (“Final Rej.”).
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003386. Decisions in these related appeals are mailed concurrently with this
decision.
The ’945 Patent
The ’945 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. ’945 patent, col. 12, ll. 28-
67 and Abstract.
Fig. 6 of the ’945 patent is reproduced with additional marking for
illustration.

Fig. 6 of the ’945 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
Fig. 1, with fluorescent organic and/or inorganic fluorescers or phosphors in
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a polymeric matrix. ’945 patent, Fig. 1 and Abstract. Fig. 1 of the ’945
patent is reproduced with additional marking for illustration.

Fig. 1 of the ’945 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. ’945 patent, col. 8, l. 63 to col. 9, l. 12.

In another embodiment, the luminophoric medium need not be
contained in a polymer matrix, but alternatively may be dispersed in an
enclosing wall 7, or provided as a coating on a housing wall 7 surface. ’945
patent, col. 9, l. 54 to col. 10, l. 6 and Figure 2.

Claims on Appeal
Claims 42 and 43 are the only independent claims on appeal. App.
Br. 88, Claim App’x. Representative claims 42 and 43 are reproduced
below:
42. (Original) A light emission assembly, comprising at
least one light emission device including a blue light LED
emitting radiation, and a luminophoric medium impinged by
radiation emitted from the blue light LED and responsively
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emitting radiation in a range of wavelengths, which combine to
produce a white light output from the light emission device,
wherein said luminophoric medium comprises phosphor
material, and wherein said light emission device comprises at
least one of the characteristics of:
(i) the luminophoric medium being at least one of coated
on and dispersed in light transmissive material enclosing the
blue light LED; and
(ii) the luminophoric medium being in contact with an
emitting face of the blue light LED.
43. (Original) A light emission assembly, comprising at
least one light emission device including a blue light LED
emitting radiation, and a luminophoric medium impinged by
radiation emitted from the blue light LED and responsively
emitting radiation in a range of wavelengths, which combine to
produce a white light output from the light emission device,
wherein said light emission device comprises the luminophoric
medium being at least one of coated on and dispersed in light-
transmissive material forming a wall of an enclosure in which
the blue light LED is disposed, and wherein said luminophoric
medium comprises phosphor material.
App. Br. 88 (Claims Appendix).

Prior Art References & Publications Considered
(1) Pinnow et al. (Pinnow ’482) US 3,691,482 Sept. 12, 1972
(2) Pinnow et al. (Pinnow ’478) US 3,699,478 Oct. 17, 1972
(3) Tabuchi et al. (Tabuchi) JP 50-79379 Nov. 24, 1973
(4) Russay et al. (Russay) US 5,008,658 Apr. 16, 1991
(5) Tokailin et al. (Tokailin) US 5,126,214 June 30, 1992
(6) Tadatsu et al. (Tadatsu) JP 5-152609 June 18, 1993
(7) Nakamura et al. (Nakamura) US 5,578,839 Nov. 26, 1996
(8) Admitted Prior Art in the ’945 patent (APA)
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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) including Dr. Gerald B. Stringfellow (Exhibit 5), Dr. Wayne
Cranton (Exhibit 6), Dr. Malcolm Forbes (Exhibit 7), and Dr. Shuji
Nakamura (Exhibit 10). These Declarations provide expert testimony and
exhibit evidence regarding: (i) the state of the art regarding LEDs and white
light at the time of the invention, (ii) how the display 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 did not consider and would have 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, and (iv) 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 Mr. Adam Broome (Exhibit 9),
General Counsel for Appellant, to provide testimony, and exhibit evidence,
of second considerations of non-obviousness, including: (i) scientific
recognition and industry acknowledgement, (ii) licensing, and (iii)
commercial success of Appellant’s invention.
We further consider the follow exhibits:
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Exhibit 1: Alfred Vollmer, White LED Developed Using
Luminescence Conversion, Nikkei Electronic Asia, July
1997.

Exhibit 2: Research News, FRAUNHOFER GESELLSCHAFT, 1997.

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 2-9, 13, 14, 18-28, 30-34, 36, 38-40, 42 and 43 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Tabuchi,
Nakamura, Tokailin, and APA. Ans. 2.
(2) Claims 4, 10-12, 15, 16 and 41 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tabuchi, Nakamura, Tokailin, APA, and
Russay. Ans. 3.
(3) Claim 37 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tabuchi, Nakamura, Tokailin, APA, and Pinnow ’482.
Ans. 3.
(4) Claim 35 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tabuchi, Nakamura, Tokailin, APA, and Pinnow ’482 and
Pinnow ’478. Ans. 3.
(5) Claims 2-9, 13, 14, 18-24, 27, 28, 30, 33, 34, 36 and 39-43
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tadatsu,
Nakamura, Tokailin, and APA. Ans. 3.
(6) Claims 4, 10-12, 15 and 16 stand rejected under 35 U.S.C.
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§ 103(a) as being unpatentable over Tadatsu, Nakamura, Tokailin, APA, and
Russay. Ans. 3-4.
(7) Claim 37 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tadatsu, Nakamura, Tokailin, APA, and Pinnow ’482.
Ans. 4.
(8) Claim 35 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tadatsu, Nakamura, Tokailin, APA, and Pinnow ’482 and
Pinnow ’478. Ans. 4.
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’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,
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
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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
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.
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Tokailin and Pinnow ’482
In the Decision affirming the rejections of the claims in the ’175
patent, the Board found that Pinnow ’482 disclosed the down conversion of
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. 7-8; Tokailin, col. 2, ll. 49-51 and Example 3 (col. 20,
l. 60 to col. 21, l. 35).
In the present case, in addition to Pinnow ’482, 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 teaches 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. 7-8 (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.
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Forbes4 who described in great detail the differences between different light
sources, and specifically testifies that “a photon is not always just a photon.”
See App. Br. 22; Reply Br. 9 and 15-16 (citing Forbes Decl. ¶ 18-22). 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 and Pinnow ’482 evince 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

4 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
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 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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expectation of success in applying phosphors for this purpose despite the
particular source of blue wavelength light, as discussed in detail below.
Appellant has not demonstrated the Examiner’s proffered combination of
references would 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 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. ¶ 68. 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
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using light sources with vastly different intensity and wavelength breadth.
For example, Tokailin’s EL light has a broad wavelength band and low
intensity, and Pinnow ’482’s laser light has a narrow wavelength band and
high intensity. Id. Thus, given that two different blue light sources could be
down converted, the Examiner had reasonable basis to find 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 ’945 patent, col. 3, ll. 47-
59 (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
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variability in combining the teachings of the prior art did not equate to a
conclusion that success was unlikely).
The Federal Circuit agreed with the Board that the statements of three
of Cree’s experts, including Dr. Stringfellow,5 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

5 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.
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combine Stevenson’s6 use of LEDs to create primary colors with Pinnow
[’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
provide the reason a skilled artisan would have combined using phosphors to
down-convert LEDs to create alternative wave-length light, as taught by
either Tabuchi or Tadatsu, with Tokailin’s use of phosphors to turn short-
wavelength light to white light. Like the Stevenson publication cited in the
rejections in the reexamination of the ’175 patent, the Examiner relies on
either Tabuchi 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

6 US Patent 3,819,974, issued June 25, 1974 to Stevenson et al
(“Stevenson”). Similar to the teachings of Tadatsu or Tabuchi, Stevenson
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 Tabuchi in the present reexamination.
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Examiner found that Tabuchi teaches a phosphor layer comprising a
phosphor dispersed in a binding agent coated on the surface of a transparent
cover enclosing an LED. Final Rej. 5-6. Tabuchi exemplifies “a GaN LED
emitting near-UV light” and that the phosphor down-converts the short
wave-length light to longer wave-length visible light. Id. at 7 (citing
Tabuchi 5:1-4). The Examiner also found that Tadatsu teaches a phosphor
dispersed in a resin enclosing an overlying an LED. Id. at 18. Tadatsu
teaches that the light 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).
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. 7-8.
As in the reexamination of the ’175 patent, we find that the ’945
patent describes that white light from a solid state device was a desirable
outcome with many known uses. See ’945 patent, col. 2, l. 34 to col. 3, l. 2.
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
light, (3) a finite number of identified, predictable solutions
available to convert light from LEDs into white light (i.e.,
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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. 46-52; Reply Br. 7-9.
For example, Dr. Nakamura7 testifies that his work in Tadatsu and his
seminal work in the development of a high-intensity blue LED described in
the Nakamura publication was primarily for blue LEDs to be utilized in

7 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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combination with previously developed red and green LED 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
phosphors in the art, does not necessarily mean that it would not have been
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obvious to do so. Patent Owner’s experts only 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 ’945 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. 52; 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. 13. These
disadvantages primarily are: a significant power loss due to down-
conversion and a reduced color gamut. App. Br. 15.
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In support of these arguments, Dr. Cranton8 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. 19 (citing Cranton Decl.
¶ 32). However, we agree with the Examiner that the independent claims of
the ’945 patent are not directed to a multiple LED device for any particular

8 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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type of display, nor do the claims require any particular power output,
intensity, or particular shade or spectrum of white light. 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, thus meeting the
requirements of the claims.
Appellant presents separate arguments with respect to claims 10-12,
which, unlike claims 42 and 43, are specifically directed to a back lighting
assembly. Claim 12 specifically recites a back lit liquid crystal display
(LCD). App. Br. 66-74, Claim App’x. Claims 10-12 are rejected further in
view of Russay, which the Examiner finds teaches that using LEDs in
efficient backlighting of LCDs was known in the art, specifically as an
improvement over using incandescent bulbs for backlighting LCDs. Final
Rej. 13-14 and 45-46; Ans. 48-51.
Yet, 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, 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 cold
cathode fluorescent light (CCFL) (an alternative backlighting source for
LCDs), namely, “slimmer display profiles, reduced environmental impact,
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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 “[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.
Claims 10-12 are not limited to any particular use for an LCD display.
The claims do not disguised LCD display uses or color spectrums, and thus,
even low-power LCD displays would have been useful for some
applications. While we agree with Appellant that the claims need not recite a
specific numerical power requirement (Reply Br. 13), the recitation of an
LCD display in claim 12 is insufficient to distinguish known uses for LEDs
in LCD displays, as taught by Russay, 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 (App. Br. 41 and 52; 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. 18-36). 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 Tabuchi or 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 Tabuchi or Tadatsu. App. Br. 1–41; Reply Br.
8. For example, Tabuchi and Tadatsu are not relied upon for disclosing a
blue LED (Nakamura is), although they do teach the down-conversion of
short wavelength light (near-blue UV light) using phosphors. Final Rej. 8-9
and 20-21; Ans. 6-7. Nor are Tabuchi or Tadatsu relied upon for an express
disclosure of the down conversion of blue wavelength light to white light
using phosphors (Tokailin and Pinnow ’482 are). Final Rej. 8-9, 15-16, and
20-21; Ans. 6-7 and 31-32. As such, Appellant’s arguments regarding the
fact that: (1) Tabuchi and 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
did not specifically teach using down-converted LEDs 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 the references would have suggested to those of ordinary skill
in the art.” Keller, 642 F.2d at 425.
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The Examiner’s findings that: (1) Nakamura teaches a GaN-based
blue wavelength LED, (2) Tabuchi and Tadatsu teach a “down-conversion”
via phosphors from short (near-blue or UV) wavelength LED light,
including phosphors dispersed in a polymer located “about” the LED, (3)
Tokailin, and Pinnow ’482 teach using phosphors to down-convert blue
wavelength light to white light, 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 Tabuchi’s 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. 8-9 and 20-21. 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 (blue LED of
Nakamura and phosphors as taught by Tokailin, Tabuchi and Tadatsu)
according to their established functions. Therefore, on this record, we are
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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
’945 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
the Board finding that “the record is completely silent on whether the
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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 rather 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 2-16, 18-28
and 30-43.
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
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