Ex Parte AndrewsDownload PDFPatent Trial and Appeal BoardMay 24, 201612887067 (P.T.A.B. May. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/887,067 09/21/2010 Peter S. Andrews 65106 7590 05/26/2016 MYERS BIGEL & SIBLEY, P.A. P.O. BOX 37428 RALEIGH, NC 27627 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 5308-1262 1781 EXAMINER ARORA, AJAY ART UNIT PAPER NUMBER 2892 NOTIFICATION DATE DELIVERY MODE 05/26/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): uspto@myersbigel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER S. ANDREWS 1 Appeal2014-006961 Application 12/887 ,067 Technology Center 2800 Before ALLEN R. MacDONALD, JON M. JURGOV AN, and MICHAEL M. BARRY, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-24 and 26-33. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellant identifies Cree, Incorporated as the real party in interest. App. Br. 1. Appeal2014-006961 Application 12/887,067 Introduction Appellant describes the invention as relating "particularly to semiconductor light emitting devices including wavelength conversion materials." Spec. i-f 1. Claims 1 and 29 are exemplary of the subject matter at issue: 1. A method of making a semiconductor light emitting device, comprising: pos1t10ning a stencil on a substrate such that a semiconductor light emitting element disposed on the substrate is positioned within an opening in the stencil, wherein the semiconductor light emitting element comprises an upper light emitting surface and a tapered side light emitting surface, wherein the opening substantially conforms to a shape of the light emitting element and comprises a corresponding tapered wall; depositing a phosphor-containing material in the opening to form a coating on one or more light emitting surfaces of the semiconductor light emitting element; curing the material; and removing the stencil and the substrate from the semiconductor light emitting element. 29. A method of making a semiconductor light emitting device, comprising: positioning a stencil on a substrate such that a semiconductor light emitting element disposed on the substrate is positioned within an opening in the stencil; depositing a phosphor-containing material in the opening to form a coating on a light emitting surface of the semiconductor light emitting element, wherein the light emitting surface emits light having a first dominant wavelength upon the application of a voltage to the semiconductor light emitting element, and wherein phosphor particles in the phosphor-containing material 2 Appeal2014-006961 Application 12/887,067 convert light emitted by the light emitting surface to light having a second dominant wavelength different from the first dominant wavelength; measuring light conversion by the phosphor-containing material as the phosphor-containing material is being deposited in the stencil opening; causing phosphor particles in the material to become arranged in a densely packed layer within the material at the light emitting surface, when the amount of phosphor-containing material is sufficient to convert light to a desired color point; and curing the material without disturbing the densely packed layer of phosphor particles. App. Br. 19, 23 (Claims App'x). Rejections Claims 1-10, 18, 19, and 22 stand rejected under 35 U.S.C. § 103(a) over Li et al. (US 2010/0181582 Al; publ. July 22, 2010) ("Li") and Leung et al. (US 2005/0062140 Al; publ. Mar. 24, 2005) ("Leung"). Final Act. 2- '7 I• Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) over Li, Leung, and Lee et al. (US 7,549,905 B2; iss. June 23, 2009) ("Lee"). Final Act. 8. Claims 13, 14, 24, 27, and 28 stand rejected under 35 U.S.C. § 103(a) over Li, Leung, and Russell et al. (US 2009/0153022 Al; publ. June 18, 2009) ("Russell '022"). Final Act. 9-12. Claim 15 stands rejected under 35 U.S.C. § 103(a) over Li, Leung, Russell '022, and Russell et al. (US 2008/0054279 Al; publ. Mar. 6, 2008) ("Russell '279"). Final Act. 12-13. 3 Appeal2014-006961 Application 12/887,067 Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) over Li, Leung, Russell '022, and Stokes et al. (US 6,917,057 B2; iss. July 12, 2005) ("Stokes"). Final Act. 13-14. Claims 20 and 23 stand rejected under 35 U.S.C. § 103(a) over Li, Leung, and Mueller et al. (US 2008/0048200 Al; publ. Feb. 28, 2008) ("Mueller"). Final Act. 14--15. Claim 21 stands rejected under 35 U.S.C. § 103(a) over Li, Leung, Mueller, and Brunner et al. (US 2009/0212308 Al; publ. Aug. 27, 2009) ("Brunner"). Final Act. 15. Claim 26 stands rejected under 35 U.S.C. § 103(a) over Li, Leung, Russell '022, and Boardman et al. (US 7,314,770 B2; iss. Jan. 1, 2008) ("Boardman"). Final Act. 16. Claim 29 stands rejected under 35 U.S.C. § 103(a) over Li, Russell '022, and Negley (US 2008/0076316 Al; publ. Mar. 27, 2008). Final Act. 16-18. Claim 30 stands rejected under 35 U.S.C. § 103(a) over Li, Russell '022, Negley, and Porter et al. (US 2002/0167262 Al; publ. Nov. 14, 2002) ("Porter"). Final Act. 18. Claims 31 and 32 stand rejected under 35 U.S.C. § 103(a) over Li, Russell '022, Negley, and Stokes. Final Act. 19. Claim 33 stands rejected under 35 U.S.C. § 103(a) over Li, Russell '022, Negley, and Leung. Final Act. 19. 4 Appeal2014-006961 Application 12/887,067 Claim 1 ANALYSIS The Examiner's rejection of claim 1 relies on Li to teach all limitations except the requirements for (a) a tapered side light emitting surface of a light emitting element along with a corresponding tapered wall in an opening in a stencil, and (b) removing the substrate from the light emitting element, for which the rejection relies upon Leung. Final Act. 2--4. Appellant argues the Examiner errs by combining Leung with Li because Leung teaches away from the use of stencils. App. Br. 6-10. Appellant also argues that, even if the combination were proper, "Leung still fails to disclose or suggest the use of a stencil having a tapered wall corresponding to a tapered side light emitting surface of a light emitting element." App. Br. 9. The Examiner answers that Leung "is not being relied upon for the use of stencils as that teaching is present in the primary reference Li" and "every technology (stencils) has some advantages and disadvantages - simply pointing [out] some (or many) disadvantages of [a] technology or technique does [not] suggest that the technology cannot be used under any circumstances." Ans. 20. We agree. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. 5 Appeal2014-006961 Application 12/887,067 In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures"). A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed"). Simply because a product is described as "inferior" in some respects does not by itself constitute a teaching away from using the "inferior" product. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A teaching that a result would be inferior or less desirable is not a teaching away unless the use "would render the result inoperable." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007). Leung points out disadvantages of "stencil printing," which it describes as a "conventional method for coating an LED" (Leung i-f 9), as follows: One disadvantage of this method is that, like the syringe method above, it can be difficult to control the geometry and layer thickness of the phosphor containing polymer. The stenciling composition may not fully fill the stencil opening such that the resulting layer is not uniform. The phosphor containing composition can also stick to the stencil opening which reduces the amount of composition remaining on the LED. These problems can result in LEDs having non-uniform color temperature and LEDs that are difficult to consistently reproduce with the same or similar emission characteristics. Leung i-f 10. 6 Appeal2014-006961 Application 12/887,067 Leung's description of a method's disadvantages does not amount to teaching away from the claimed invention. The Examiner relies on Leung only for teachings of (a) tapered walls of the light emitting element, which the Examiner finds also teaches, in combination with Li's "stencil" teachings, the requirement of a corresponding tapered wall in the stencil opening, and (b) removing the substrate. Final Act. 2--4. Leung's description of the disadvantages of certain stencil technology is immaterial to the features for which the Examiner cites Leung. Moreover, Appellant has not asserted the proposed modification would have been beyond the capabilities of a person of ordinary skill in the art. "A person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Regarding Appellant's argument that Leung does not "disclose or suggest the use of a stencil having a tapered wall corresponding to a tapered side light emitting surface of a light emitting element" (App. Br. 9), we agree with the Examiner that the combination of Leung's "tapered LED" teachings and Li's "stencil" teachings render this obvious (Final Act. 2--4; Ans. 20-21 ). One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. Keller, 642 F.2d at 425. Appellant has not provided persuasive evidence or argument to show combining features from the two references was "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 418-19). 7 Appeal2014-006961 Application 12/887,067 We accordingly sustain the Examiner's rejection of claim 1. We also sustain the rejections of claims 2-24 and 26-28, which Appellant argues on the same basis as claim 1. See App. Br. 10-14. Claim 29 The Examiner relies on Negley for teaching claim 29's requirement for "measuring light conversion by the phosphor-containing material as the phosphor-containing material is being deposited in the stencil opening." Final Act. 16-18 (citing Negley i-fi-f 15, 47). Appellant argues the Examiner errs because "Negley is wholly silent as to measuring light conversion by phosphor-containing material as phosphor-containing material is being deposited as recited .... " App. Br. 15 (emphasis removed). The Examiner responds that Negley teaches that it is advantageous to measure light conversion by the phosphor-containing material before completing the process of depositing the phosphor-containing material (para 15, especially 3rd sentence and para 47, last three sentences). In general, this suggests that during a material deposition process (such as depositing phosphor), it is advantageous to monitor the final desired property of the material (such as "measuring light conversion by the phosphor- containing material" that has been deposited); i.e. establish a criteria for process control. Clearly, the process is not complete till such measurement is done and remedial measures, if required based on the measurement, are completed. Ans. 22. Negley paragraph 15 states, in relevant part, light emission of a light emitting device is measured after developing the photopatternable film comprising transparent silicone, and phosphor and a second development is performed if the light emission of the light emitting device that is measured does not conform to at least one predefined parameter, such as an emission frequency spectrum. 8 Appeal2014-006961 Application 12/887,067 (Emphasis added). Negley paragraph 47 relevantly states "light emission of the light emitting device is measured and it is determined whether the light emitting device that is measured conforms. . . . If yes, photopatteming ends. If not, the photopattemable film comprising transparent silicone and phosphor is again developed (rinsed) at Block 820 to enlarge the aperture." Photopatteming2 is a type of etching, 3 which is a technique for removing material. Negley teaches measuring light emission after depositing phosphor-containing material has completed and photopatteming has started, to determine whether to perform additional photopatteming. See Negley Figs. 7, 8, andi-fi-f 46-47. We agree with Appellants that Negley does not teach or suggest measuring light conversion while depositing phosphor-containing material as required by claim 29. We accordingly do not sustain the Examiner's rejection of claim 29. We also do not sustain the rejections of claims 30-33, which Appellant argues on the same basis as claim 29. See App. Br. 16-17. DECISION For the reasons above, we affirm the Examiner's rejections of claims 1-24 and 26-28 and reverse the rejections of claims 29-33. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 23, 2016). visited May 23, 2016). 9 Copy with citationCopy as parenthetical citation