Ex Parte 7959312 et al

Patent Trial and Appeal Board

Jan 13, 2015

90012708 (P.T.A.B. Jan. 13, 2015)

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.
90/012,708 10/22/2012 7959312 125775.00002 7186
20277 7590 01/14/2015
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
EXAMINER
MCNEIL, JENNIFER C
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/14/2015 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 SAMSUNG ELECTRONICS, Co., Ltd.
Patent Owner and Appellant
____________

Appeal 2014-007775
Reexamination Control 90/012,708
Patent 7,959,312
1

Technology Center 3900
____________

Before MAHSHID D. SAADAT, DANIEL N. FISHMAN, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Samsung Electronics Co., Ltd. (hereinafter “Appellant”), the real
party in interest of Patent 7,959,312 (‘312 patent), appeals under 35 U.S.C.
§§ 134(b) and 306 from the Examiner’s rejection of original claims 8, 10–
14, 19, and 21–23 of the ‘312 patent and new claims 31, and 33–37. We
have jurisdiction under 35 U.S.C. §§ 6(b) and 306.
We affirm.

1
Issued to inventors Chul Hee Yoo, et al., on June 14, 2011, based on
Application 12/081,726, filed April 21, 2008, which was a divisional of
Application 11/987,830, filed December 5, 2007.
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STATEMENT OF THE CASE
This Ex Parte Reexamination Proceeding
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by Carlos R. Villamar (Ex Parte Reexamination
Request for U.S. Patent No. 7,959,312) on October 22, 2012.

Related Litigations
Appellant has identified no other judicial proceedings related to the
‘312 patent (App. Br. 2).

The Invention and Representative Claim on Appeal
The ‘312 patent relates to a white light emitting device including a
blue light emitting diode (LED) chip and a red phosphor and a green
phosphor disposed around the blue LED chip (‘312 patent, col. 2, ll. 18–33).
The blue LED chip may have a full width at half-maximum (FWHM) of 10
to 30 nm (id., at col. 2, ll. 34–37).
Representative original claim 8 on appeal reads as follows (with
emphasis):
8. A white light emitting device comprising:
a blue light emitting diode chip having a full width at
half-maximum of 10 to 30 nm;
a red phosphor disposed around the blue light emitting
diode chip, the red phosphor excited by the blue light emitting
diode chip to emit red light; and
a green phosphor disposed around the blue light emitting
diode chip, the green phosphor excited by the blue light
emitting diode chip to emit green light,
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wherein the red light emitted from the red phosphor has a
color coordinate falling within a space defined by four
coordinate points (0.5448, 0.4544), (0.7079, 0.2920), (0.6427,
0.2905) and (0.4794, 0.4633) based on the CIE 1931
chromaticity diagram, and the green light emitted from the
green phosphor has a color coordinate falling within a space
defined by four coordinate points (0.1270, 0.8037), (0.4117,
0.5861), (0.4197, 0.5316) and (0.2555, 0.5030) based on the
CIE 1931 color chromaticity diagram.
App. Br., Appendix A, Claims on Appeal.

Prior Art Relied Upon
Baretz US 6,600,175 B1 July 29, 2003
Mueller (Mueller ’691) US 6,686,691 B1 Feb. 3, 2004
Mueller (Mueller ’638) US 2005/0184638 A1 Aug. 25, 2005
Nagatomi US 2005/0189863 A1 Sept. 1, 2005
Sakuma US 2006/0208262 A1 Sept. 21, 2006
Philips WO 03/080763 A1 Oct. 2, 2003

Regina Mueller-Mach, and Gerd O. Mueller, White light emitting
diodes for illumination, PROC. SPIE, vol. 3938 (2000), pp. 30–41 (“Mueller-
Mach”).
Naoto Hirosaki, et al., Characterization and properties of green-
emitting β-SiAlON:Eu
2+
powder phosphors for white light emitting diodes,
APPL. PHYS. LET., vol. 86, 211905 (2005), pp. 1–3 (“Hirosaki”).
Kyota Uheda et al., Luminescence Properties of a Red Phosphor,
CaAlSiN3: Eu
2+
, for White Light-Emitting Diodes, ELECTROCHEM. & SOL.
STATE LET., vol. 9, No. 4, pp. H22–H25 (2006), available online February
15, 2006 (“Uheda”).
Y. Q. Li et al., Luminescence properties of red-emitting M2Si5N8:Eu
2+

(M=Ca, Sr, Ba) LED conversion phosphors, J. ALLOYS & COMPOUNDS, vol.
417 (2006), pp. 273–279, available online November 3, 2005 (“Li”).

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Xianqing Piao et al., Characterization and luminescence properties of
Sr2Si5Ni8:Eu
2+
phosphor for white light-emitting-diode illumination, APPL.
PHYS. LET., vol. 88, 161908 (2006), pp. 1–3, available online April 18, 2006
(“Piao”).
Admitted Prior Art (APA), (‘312 patent, col. 1, ll. 25–28).
The Rejections on Appeal
Mueller ‘691 as the primary reference:
Claims 8 and 10–13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mueller ‘691 and Mueller-Mach.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mueller ‘691, Mueller-Mach, and Uheda.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mueller ‘691, Mueller-Mach, and Mueller ‘638.
Claims 31 and 33–36 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mueller ‘691, Mueller-Mach, and APA.
Claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mueller ‘691, Mueller-Mach, APA, and Uheda.
Claim 37 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mueller ‘691, Mueller-Mach, APA, and Mueller ‘638.
Claims 19, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mueller ‘691, Mueller-Mach, and Baretz.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mueller ‘691, Mueller-Mach, Baretz, and APA.
Philips as the primary reference:
Claims 8 and 10–13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Philips, Mueller-Mach, Li, and Piao.
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Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Philips, Mueller-Mach, Li, Piao, and Uheda.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Philips, Mueller-Mach, Li, Piao, and Mueller ‘638.
Claims 31 and 33–36 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Philips, Mueller-Mach, Li, Piao, and APA.
Claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Philips, Mueller-Mach, Li, Piao, APA, and Uheda.
Claim 37 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Philips, Mueller-Mach, Li, Piao, APA, and Mueller ‘638.
Claims 19, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Philips, Mueller-Mach, Li, Piao, and Baretz.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Philips, Mueller-Mach, Li, Piao, Baretz, and APA.
Sakuma as the primary reference:
Claims 8, 10–13, 19, and 21–23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sakuma, Mueller-Mach, Uheda,
Nagatomi, and Hirosaki.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sakuma, Mueller-Mach, Uheda, Nagatomi, Hirosaki, and
Mueller ‘638.
Claims 31 and 33–36 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sakuma, Mueller-Mach, Uheda, Nagatomi, Hirosaki, and
APA.
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Claim 37 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sakuma, Mueller-Mach, APA, Uheda, Nagatomi,
Hirosaki, and Mueller ‘638.

ANALYSIS
The Examiner finds Mueller ‘691, Philips, and Sakuma do not teach
or suggest a blue LED chip having a full width at half maximum of 10 to
30 nm, for which the Examiner relies on Mueller-Mach—a reference
common to all the above-listed rejections. The Examiner specifically finds
Mueller-Mach discloses:
(In,Ga)N technology allows to manufacture diodes for any
color between about 400 and 580 nm today, 590 to 670 nm is
the realm of high power (AI,Ga, In)P. Typically the line width
of the nitride-based LEDs varies between 20 and 35 nm
(fwhm) and of the phosphide-based ones between 15 and 25
nm.
(Ans. 11 (citing Mueller-Mach, p. 30, § 1.1, “General Considerations”)).
The Examiner concludes modifying the blue LED of Mueller ‘691, Philips,
or Sakuma with the teachings of a blue light emitting diode chip having a
full width at half maximum of less than 30 nm disclosed in Mueller-Mach
would have been obvious for achieving higher light energy or intensity in a
narrower wavelength range (see Ans. 11, 26–27, 44–45).
Appellant relies on the Declaration by Dr. Mueller and Dr. Mueller-
Mach, who are also the authors of the Mueller-Mach reference, filed under
37 C.F.R. § 1.132 (the Declaration) and further characterizes the disclosure
of the Mueller-Mach reference as insufficient to show that a blue LED chip
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had a full width at half maximum of less than 30 nm at the time the article
was written (App. Br. 8). Appellant specifically states:
The cited statement refers to a general nitride-based LED chip
at the time the article was written, not specifically a blue LED
chip. Furthermore, in Fig. 12b of White Light Emitting Diodes
for Illumination (page 30) experimental results show emitted
blue light of a two phosphor LED having a blue light
wavelength with an fwhm greater than 30 nm, which was the
state of the art at the time the article was written.
(Id.). Appellant further states that the Declaration explains the disclosed line
width of between 20 and 35 nm (fwhm) refers to a general nitride-based
LED chip and “does not mean that a blue LED chip had a full width at half-
maximum of 10 to 30 nm at the time the article was written . . .” (App. Br.
10). Appellant concludes the Mueller-Mach reference “cannot be relied on
for the teaching of a blue light emitting diode chip having a full width at
half-maximum of 10 to 30 nm” (id.).
The Examiner points out the Mueller-Mach reference suggests that the
fwhm of a blue LED based on (In,Ga)N composition would be 25–35 nm,
which is disclosed as the typical range for such nitride-based LEDs (Ans.
63). The Examiner also asserts one of ordinary skill in the art would have
relied on the disclosure of the Mueller-Mach reference to modify the blue
LED of Mueller ‘691 to produce white light by using (In,Ga)N-based LEDs
having relatively narrow fwhm of 20 to 35 nm (Ans. 65).
We agree. As further stated by the Examiner (id.), simply because the
authors of the Mueller-Mach reference may not have been aware of blue
LEDs having an fwhm of less than 30 nm at the time the article was written
does not show either that such diodes did not exist at that time or that it
would not have been obvious to one of ordinary skill in the art to modify
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Mueller ‘691 using such narrow line diodes (id.). Additionally, Appellant’s
reliance on Figure 12b of Mueller-Mach and Figure 4 of Lowery (U.S.
Patent 6,351,069 B1, issued Feb. 26, 2002) to show the state of the art with
respect to blue LED having an fwhm greater than 30 nm (App. Br. 9–10)
does not persuade us that the state of the art only supported an fwhm of
greater than 30 nm. These two figures show combined emissions from blue,
green, and red LEDs, instead of focusing on the fwhm corresponding to the
narrow line width produced by a blue LED alone.
The Examiner further challenges the accuracy of the statements made
in the Declaration as to whether diodes having an fwhm of 25–35 nm did not
exist at the time the article was written, by citing teachings from Teraguchi
(U.S. Patent 5,751,021, issued May 12, 1998; Fig. 6 and col. 5, ll. 16–25)
and Udagawa (U.S. Patent 5,886,367, issued March 23, 1999; col. 10, ll. 61–
62) (Ans. 65–66). The Examiner finds the cited portions of Teraguchi and
Udagawa disclose that the LED emitting in the blue range has a narrow line
at about 15 and 7 nm fwhm, respectively (id.). Contrary to Appellant’s
argument that Teraguchi and Udagawa do not suggest a white light emitting
device comprising such blue light LED (Reply Br. 8–9), Teraguchi and
Udagawa are not relied on by the Examiner in rejecting the claims. Rather,
these references are cited merely to show blue LED chips had a full width at
half-maximum of less than 30 nm at the time the Mueller-Mach article was
written. We, therefore, agree with the Examiner that the Mueller-Mach
reference properly discloses “(In,Ga)N technology allows to manufacture
diodes for any color between about 400 and 580 nm” that includes a blue
LED, having a line width of the nitride-based LED between 20 and 35 nm,
which overlaps the range recited in claim 8.
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Appellant also contends that the disclosure of a narrow line width in
Mueller ‘691 does not suggest that the fwhm of the blue LED should be
reduced to less than 30 nm (App. Br. 12–13). The Examiner points to
different teachings in Mueller ‘691 and Mueller-Mach and explains that the
teaching value of Mueller-Mach is the specific range of 20–35 nm fwhm for
the blue LED used in generating white light, as taught by Mueller ‘691 (Ans.
72–79). We agree with the Examiner’s findings and conclusion and adopt
them as our own.
Next, Appellant contends a person of ordinary skill in the art would
not have been motivated to combine the references and the Examiner has
used hindsight instead of articulating a valid rationale for the combination
(App. Br. 13–14). However, we agree with the Examiner’s findings and the
stated rationale with respect to the combination of the references and adopt
them as our own (see Ans. 79–81).
In view of the discussion above and the Examiner’s findings and
conclusions with respect to the Mueller-Mach reference, we are unpersuaded
by Appellant’s arguments that the proposed combination of Mueller-Mach
reference with Mueller ‘691 does not teach or suggest a blue light emitting
diode chip having a full width at half-maximum of 10 to 30 nm.
Appellant relies on similar arguments presented for the rejections
based on Philips or Sakuma, in combination with the other cited prior art
(App. Br. 17–45). The Examiner provides a comprehensive response to
each of the arguments raised by Appellant and points to the relevant
teachings in the applied prior art references (Ans. 81–94). Similarly, we
agree with the Examiner’s findings and the stated rationale with respect to
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the proposed combination based on Philips or Sakuma and adopts them as
our own.
DECISION
On the record before us, we conclude that the Examiner did not err in
rejecting claims 8, 10–14, 19, 21–23, 31, and 33–37 under 35 U.S.C.
§ 103(a).
Accordingly, the Examiner’s decision that claims 8, 10–14, 19, 21–23,
31, and 33–37 are unpatentable is affirmed.

TIME PERIOD FOR RESPONSE
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).

AFFIRMED

FOR PATENT OWNER:

McDermott Will & Emery LLP
The McDermott Building
500 North Capitol Street, NW
Washington, DC 20001

FOR THIRD PARTY REQUESTER:

Carlos R. Villamar
The Villamar Firm PLLC
3424 Washington Drive
Falls Church, VA 22041

ELD