Ex Parte 8502247 et al

Patent Trial and Appeal Board

Sep 29, 2016

90013227 (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.
90/013,227 05/09/2014 8502247 REEX-024-US 5233
23448 7590 09/30/2016
Hultquist IP
P.O. Box 14329
RESEARCH TRIANGLE PARK, NC 27709
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 2016-003386
Reexamination Control No. 90/013,227
Patent 8,502,247 B21
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 May 1, 2014. Cree, Inc. (Appellant), the owner
of the patent under reexamination,2 appeals under 35 U.S.C. §§ 134(b) and
306 from an Examiner’s final rejection of claims 1-68.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.3

1 The patent involved in this reexamination appeal proceeding (“the ’247
patent”) issued to Bruce Baretz, and Michael A. Tischler on August 6, 2013.
2 See Appellant’s Appeal Brief 4, filed on October 26, 2015 (“App. Br.”).
3 Our decision refers to the Appellant’s Appeal Brief (“App. Br.”) and Reply
Brief, filed January 19, 2016 (“Reply Br.”) and the Examiner’s Answer,
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STATEMENT OF THE CASE
Related Proceedings
The ’247 patent issued from U.S. Application 12/131,118 and claims
priority to U.S. Application 08/621,937, which issued as U.S. Patent
6,600,175 (“the ’175 patent”). The ’175 patent was the subject matter of Ex
parte Reexamination 90/010,940 and Appeal 2014-007890. During the
appeal of the reexamination of the ’175 patent, the Board affirmed the
Examiner’s rejection of all the 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 ’247 patent is also related to US 7,943,945 B2 (“the ’945
patent”), which issued from U.S. Application 11/264,124. The ’247 patent
is also related to US 7,615,795 (“the ’795 patent”), which issued from U.S.
Application 10/623,198. The ’795 Patent is the subject of Ex parte
Reexamination 90/013,225 and Appeal 2016-003118. The ’945 patent is the
subject of Ex parte Reexamination 90/013,226 and Appeal 2016-003136.
Decisions in these related appeals are mailed concurrently with this decision.
The ’247 Patent
The ’247 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

mailed November 19, 2015 (“Ans.”), and Final Office Action, mailed March
27, 2015 (“Final Rej.”).
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first, shorter wavelength radiation, is excited to emit a second, longer
wavelength radiation in the form of white light. ’247 patent, col. 12, ll. 23-
63 and Abstract.
Fig. 6 of the ’247 patent is reproduced with additional marking for
illustration.

Fig. 6 of the ’247 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
a polymeric matrix. ’247 patent, Fig. 1 and Abstract. Fig. 1 of the ’247
patent is reproduced with additional marking for illustration.
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Fig. 1 of the ’247 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. ’247 patent, col. 9, ll. 1-18.

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. ’247
patent, col. 9, l. 59 to col. 10, l. 11 and Figure 2.

Claims on Appeal
The claims of the ’247 patent have not been amended during this
reexamination. Representative claim 1 is reproduced below:
1. A light emitting device, comprising:
multiple LEDs each configured to emit blue light; and
a same luminophoric medium configured to interact with
emitted blue light from the multiple LEDs to produce down-
converted light,
wherein the emitted blue light from the multiple LEDs
and said down-converted light produce a white light output.
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App. Br. 76 (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) Yoshihiko Shibata (Shibata) JP 4-63162 May 29, 1992
(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 ’247 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) including Dr. Gerald Stringfellow (Exhibit 1), Dr. Joan
Redwing (Exhibit 2); Dr. Christian Wetzel (Exhibit 3); Dr. Wayne Cranton
(Exhibit 4), Dr. Malcolm Forbes (Exhibit 5), and Dr. Shuji Nakamura
(Exhibit 6). 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
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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 7), Director of IP Strategy and
Business Development for Appellant, and by Mr. Adam Broome (Exhibit 8),
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 supporting evidence attached to these
declarations in support of the facts and opinions discussed therein.

Examiner’s Rejections
(1) Claims 1-6, 35-54 and 56-68 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shibata, Tadatsu, Nakamura, Tokailin,
and APA. Ans. 2.
(2) Claims 7-34 and 55 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shibata, Tadatsu, Nakamura, Tokailin, APA,
Pinnow ’478, Pinnow ’482, and Tabuchi. Ans. 2-3.

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 argues no claims separately on appeal. Accordingly all
claims stand or fall with representative claim 1.
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Appellant’s arguments are substantially directed to the contention that
down-conversion of a blue wavelength 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. 24-29.
While the prior art used to rejected in the claims is 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
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-
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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 being 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 ’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 from a
laser source 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. 6-7; 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
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wavelength light to white light using one or more phosphors was known in
the art. In particular, the Examiner found that Tokailin is directed to an
organic electroluminescent (EL) element emitting blue wavelength light,
which can emit while light after conversion by fluorescent dyes, namely
organic phosphors. See Final Rej. 6-7 (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.
Stringfellow4 who described in great detail the differences between different
light sources and concluded that such light sources are not simply
interchangeable. See App. Br. 27 (citing Stringfellow Decl. ¶¶ 117-121);
Reply Br. 10 and 14-16 (citing Forbes Decl. ¶¶ 18-22 for the proposition that
“a photon is not just a photon”). Indeed, Dr. Forbes5 explains that “[l]ight

4 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.
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
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 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
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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. 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 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

generally as to the state of the art of photochemistry at the time of the
invention.
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expectation of success in down-converting blue wavelength light from LED
sources using phosphors as recited in the claimed subject matter have made
it unexpected that such source of blue light could not have been not have
been down-converted 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 despite the fact that EL
devices and lasers have vastly different characteristics. See Stringfellow
Decl. ¶¶ 117-121. 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.
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Further, Dr. Forbes testifies that there is a body of literature, and the
body of technology is very old, regarding using phosphors with the
fluorescent tube industry and the CRT (cathode ray tube) industry. Forbes ¶
22; see also ’247 patent, col. 3, ll. 51-63 (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).
Appellant also argues that the disclosure of white light in Tokailin’s
examples, using Pyridine 1 phosphor, is in error because the combination of
blue wavelength light with only a red phosphor would not have produced a
broad spectrum white light, but should have produced a light with a pale
green color. App. Br. 55 (citing Stringfellow Decl. ¶¶ 78-80). We note that
the claims are not directed to a pure or complete white light. We are not
willing to discount the express teachings of the prior art as producing a white
light, as a result of the opinion evidence of Patent Owner’s experts, which
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did not provide objective experimental evidence to support their opinion.
We find no reasons to conclude that Tokailin did not achieve a broad
spectrum light that appeared white. Moreover, Tokailin teaches using a
plurality of phosphors and is not limited to using solely Pyridine 1 to
achieve white light. See Tokailin, col. 26, ll. 13-16 and claim 2. Thus, the
skilled artisan would have a reasonable expectation of success in achieving a
broad spectrum light that appears white using one or more phosphors in
combination with a blue wavelength LED, as taught by Tokailin (and
Pinnow ’482).
The Federal Circuit agreed with the Board that the statements of three
of Cree’s experts, including Dr. Stringfellow, Dr. Redwing, and Dr. Wetzel,
supported a finding that down-conversion from a blue wavelength 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.
In particular, the Federal Circuit pointed to portions of the testimony of Dr.
Stringfellow, Dr. Redwing and Dr. Wetzel, who provided substantially
identical testimony in this case (compare Board Decision 21-23 with
Stringfellow Decl. ¶¶ 31, Redwing Decl. ¶¶ 16 and 21-28; Wetzel Decl. ¶¶
16-20), that down-conversion of LEDs was known but not a practical
solution for forming white light due to loss of energy and brightness. Id.

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
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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 (Pinnow ’482)
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
Tadatsu, with Tokailin’s use of phosphors to turn short-wavelength light to
white light. Like the Stevenson publication cited in the rejections in
reexamination of the ’175 patent, the Examiner relies on 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

6 US Patent 3,819,974, issued June 25, 1974 to Stevenson et al
(“Stevenson”). Similar to the teachings of Tadatsu, 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 in the
present reexamination.
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visible spectrum. Specifically, the Examiner found that Tadatsu teaches a
phosphor dispersed in a resin enclosing an overlying an LED. Final Rej. 7-
8. 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. 6-7.
As in the reexamination of the ’175 patent, we find that the ’247
patent describes that white light from a solid state device was a desirable
outcome with many known uses. See ’247 patent, col. 2, l. 38 to col. 3, l. 6.
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.,
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-
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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. 33; Reply Br. 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
Nakamura was primarily for them to be utilized in combination with
previously developed red and green LED in a triplet for white light
production. Nakamura Decl. ¶¶ 10-12; see also Stringfellow Decl. ¶ 47;
Redwing Decl. ¶¶ 22-30; Wetzel Decl. ¶¶ 19-20.
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

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 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. 11, n. 2. 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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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
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.
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Dr. Nakamura testifies that his high intensity blue LED was first
described in March 1994. Id. ¶ 11. The parent of the ’247 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 in 1994. App. Br. 22; Reply Br. 8 (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: (1) a significant power loss due to down-
conversion, (2) a reduced color gamut, (3) significant cost of phosphors.
App. Br. 26, 29, and 60; Reply Br. 5, 10-12.
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For example, 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; see also Stringfellow Decl. ¶ 47. 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. 32-33 57; Reply Br. 5-6, 10-12. 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).

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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However, we agree with the Examiner that the claims of the ’247
patent are not directed to a multiple LED device for any particular use, 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 has not persuasively demonstrated that Nakamura’s high
intensity LEDs when down-converted to white-light, as taught by Tokailin,
could not have been used 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).
Moreover, contrary to Appellant’s statements that the record shows no
criticism of the triplet approach (Reply Br. 10), Appellant does not address
the Examiner’s specific finding that the ’247 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. 8 (citing ’247 patent,
col. 3, ll. 15-40). 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.
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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. 43-59; Reply Br. 9-10. For example, Tadatsu is not
relied upon for disclosing a blue LED (Nakamura is), though Tadatsu
teaches the down-conversion of short wavelength light (near-blue UV light)
using phosphors. Final Rej. 8-9; Ans. 39-40. Nor is 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;
Ans. 39-40. 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, and (3)
Nakamura did not teach down-conversion, 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.
The Examiner’s findings that: (1) Nakamura teaches a GaN-based
blue wavelength LED, (2) Tadatsu teaches a “down-conversion” via
phosphors from short (near-blue or UV) wavelength LED light, including
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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 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; Ans. 39-40. 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 and Tadatsu) according to
their established functions. Therefore, on this record, we are not persuaded
the Examiner engaged in impermissible hindsight, as Appellant contends.

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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
’247 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
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
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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 presented 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. 39-31, 40-42 and 72-73; Reply Br.
8, 16, 22-23. 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 1-68.
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

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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, D.C. 20006

For Third Party Requester:

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