Ex Parte Baretz et al

Patent Trial and Appeal Board

Jan 30, 2017

12131119 (P.T.A.B. Jan. 30, 2017)

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.
12/131,119 06/01/2008 Bruce Baretz 4241-198-CON2-DIV2 5246
7590
Hultquist IP
P.O. Box 14329
RESEARCH TRIANGLE PARK, NC 27709
EXAMINER
HORIKOSHI, STEVEN Y
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
hip@hultquistip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE BARETZ and MICHAEL A. TISCHLER
Appeal 2015-002092
Application 12/131,119
Technology Center 2800
Before JOHN A. EVANS, JASON J. CHUNG, and JOHN D. HAMANN,
Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—4, 6—25, 27—35, 37—43, and 45—71,
which are all the claims pending in the application. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.3
1 We heard oral arguments on January 6, 2017. A transcript of the hearing
will be added to the record in due course.
2 The Appeal Brief identifies Cree, Inc., as the real party in interest. App.
Br. 4.
3 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed July 27, 2014, “App. Br.”), the Reply Brief
(filed November 29, 2014, “Reply Br.”), the Examiner’s Answer (mailed
September 29, 2014, “Ans.”), the Final Office Action (mailed April 4, 2014,
Appeal 2015-002092
Application 12/131,119
STATEMENT OF THE CASE
The claims relate to a light emitting diode assembly wherein the
emitted blue light is down converted to white light. See Abstract.
Related Appeals, Interferences, and Trials
Appellants inform the Board that an appeal is pending currently
before the Patent Trial and Appeal Board in U.S. Patent Reexamination
Control No. 90/010,940, relating to an ex parte reexamination of related U.S.
Patent No. 6,600,175 which is by Appellant Cree, Inc. App. Br. 4. Those
proceedings have concluded wherein the Board DENIED Institution of Inter
Partes Review. See Kingbright Electronics Co. LTD. v. Cree, Inc.,
IPR2015-00741, Paper 8 (PTAB Aug. 20, 2015)(“Petitioner does not
demonstrate a reasonable likelihood of prevailing in showing the
unpatentability of claims 1—26 of the ’175 Patent”).
Appellants further inform the Board that Requests for Reexamination
have been filed in the following patents having family relationships to the
aforementioned U.S. Patent 6,600,175 and to the present U.S. Patent
Application 12/131,119:
• U.S. Patent 7,615,795 (“the ’795 Patent”) (Reexamination Control
90/013,225), AFFIRMED, Ex Parte Cree, Inc., 2016-003118 (PTAB
Sept. 30, 2016);
• U.S. Patent 7,943,945 (“the ’945 Patent”) (Reexamination Control
90/013,226), AFFIRMED, Ex Parte Cree, Inc., 2016-003136 (PTAB
Sept. 30, 2016); and,
“Final Act.”), and the Specification (filed June 1, 2008, “Spec.”) for their
respective details.
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Appeal 2015-002092
Application 12/131,119
• U.S. Patent 8,502,247 (“the ‘247 Patent”) (Reexamination Control
90/013,227), AFFIRMED, Ex Parte Cree, Inc., 2016-003386 (PTAB
Sept. 30, 2016).
The Invention
Claims 1,37, and 43 are independent. An understanding of the
invention can be derived from a reading of illustrative Claim 1, which is
reproduced below with some formatting added:
1. A method of obtaining a white light output of a determined
chromatic character, said method comprising:
providing at least one GaN-based LED die configured to
emit blue light; and
providing a luminophoric medium comprising a
multiplicity of luminophoric materials in which the multiple
luminophoric materials are provided in relative amounts with
respect to one other so that white light of the determined
chromatic character is produced as said white light output when
the luminophoric medium interacts with emitted light from the at
least one GaN-based LED die.
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Appeal 2015-002092
Application 12/131,119
References and Rejections
The Examiner relies upon the prior art as follows:
Thorington, et al., US 3,670,193 June 13, 1972
Collins, et al., US 3,676,668 July 11, 1972
Hosford US 3,819,973 June 25, 1974
Schoberl US 4,047,075 Sept. 6, 1977
(“Schoberl, ’075”)
Schoberl US 4,143,394 Mar. 6, 1979
(“Schoberl, ’394”)
Thornton, Jr. US 4,176,299 Nov. 27, 1979
Ray US 4,211,955 July 8, 1980
Murakami, et al., US 4,559,470 Dec. 17, 1985
Beers, et al., US 4,638,214 Jan. 20, 1987
Ohta, et al., US 4,678,285 July 7, 1987
Carter, et al., US 5,210,051 May 11, 1993
Imamura US 5,283,425 Feb. 1, 1994
Hyche US 5,439,971 Aug. 8, 1995
Tabuchi Japan S50-79379 Nov. 24, 1973
Tadatsu, et al., Japan H05-152609 June 18, 1993
1. Claims 1-3, 8, 9, 11, 14-16, 19, 27, 28, 37-39, 43, 45, 49, and 53
stand rejected under 35 U.S.C. §103(a) as obvious over Tadatsu and
Beers. Final Act. 9—14.4
2. Claims 1-3, 8, 9, 11, 14-16, 19, 27, 28, 37-39, 43, 45, 49, 53, and 71
stand rejected under 35 U.S.C. §103(a) as obvious over Tadatsu,
Beers, and Thornton. Final Act. 14—15.
3. Claim 7 stands rejected under 35 U.S.C. §103(a) as obvious over
Tadatsu, Beers, Tabuchi, and Murakami. Final Act. 15—16.
4 Claim 71 is listed in the heading, but not discussed in the body, of the first
ground of rejection. Claim 71 is listed in the heading and discussed in the
body, of the second ground of rejection. We, therefore, consider Claim 71 to
stand rejected under the second ground of rejection.
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Application 12/131,119
4. Claims 10, 12, 13, 20—25, 34, 35, 56—61, 68, and 69 stand rejected
under 35 U.S.C. § 103(a) as obvious over Tadatsu, Beers, Imamura,
and Ohta. Final Act. 16—17.
5. Claims 17, 18, 29-31, 47, 50, 56—59, 62, and 65—67 stand rejected
under 35 U.S.C. § 103(a) as obvious over Tadatsu, Beers, and Tabuchi.
Final Act. 17—20.
6. Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as obvious
over Tadatsu, Beers, Tabuchi, and Collins. Final Act. 20-21.
7. Claim 63 stands rejected under 35 U.S.C. § 103(a) as obvious over
Tadatsu, Beers, Tabuchi, and Hosford. Final Act. 21.
8. Claim 64 stands rejected under 35 U.S.C. § 103(a) as obvious over
Tadatsu, Beers, Tabuchi, and Schoberl, ’394. Final Act. 22.
9. Claims 40, 41, and 48 stand rejected under 35 U.S.C. § 103(a) as
obvious over Tadatsu, Beers, and Thorington. Final Act. 22—23.
10. Claim 42 stands rejected under 35 U.S.C. §103(a) as obvious over
Tadatsu, Beers, Thorington, and Hyche. Final Act. 23—24.
11. Claim 46 stands rejected under 35 U.S.C. § 103(a) as obvious over
Tadatsu, Beers, and Carter. Final Act. 24—25.
12. Claims 51 and 52 stand rejected under 35 U.S.C. § 103(a) as obvious
over Tadatsu, Beers, and Schoberl, ’075. Final Act. 25—26.
13. Claim 70 stands rejected under 35 U.S.C. §103(a) as obvious over
Tadatsu, Beers, and Ray. Final Act. 26—27.
ANALYSIS
We have reviewed the rejections of claims 1—4, 6—25, 27—35, 37-43,
and 45—71 in light of Appellants’ arguments that the Examiner erred. We
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Appeal 2015-002092
Application 12/131,119
consider Appellants’ arguments seriatim, as they are presented in the Appeal
Brief, pages 6-41.
Claims 1-3, 8,9,11,14-16,19,27,28,37-39,43,45,49, and 53:
Obviousness over Tadatsu and Beers
Tadatsu and Beers fail to teach a blue LED.
Claim 1 recites, inter alia, “providing at least one GaN-based LED die
configured to emit blue light.” Appellants contend “none of the references
cited in the Office Action discloses a blue LED.” App. Br. 21. Appellants
argue “Tadatsu discloses a violet LED (to produce blue, not white light).”
Id. at 20. Appellants further argue Beers teaches phosphor which may be
excited with low pressure, mercury vapor ultraviolet fluorescent lamps (not
LEDs) to emit green (not white) light. Id.
In separate Declarations, Drs. Redwing and Stringfellow state that
their search of the literature prior to Appellants priority date failed to
elucidate any reference to down-conversion of blue LEDs. App. Br. 9, 15.
The Examiner finds that “the literature does not disclose the use of
blue LEDs to create down converted white light.” Ans. 24. The Examiner
finds the primary reference, Tadatsu teaches down-conversion of LED light.
The Examiner mis-quotes Tadatsu as teaching “down-conversion of GaN
blue LED.” Ans. 29. Tadatsu discloses “LED’s employing gallium nitride
related compound semiconductors have a main emission peak at around
430nm and also have another emission peak in the ultraviolet range of
around 370nm. . . .” “Such LED’s, however, have a disadvantage in that
their luminosity factor is poor because the emission color is close to violet,
as their emission wavelength indicates.” Tadatsu, 1 5 (emphasis added).
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Application 12/131,119
Experts in the field believed the current state of the art rendered down
conversion of blue LED light to be “impossible.” Such experts include Dr.
Shuji Nakamura, an inventor of the Tadatsu reference and a declarant for
Appellants.5
The claims recite down-conversion of blue light. Whereas, Tadatsu
teaches down-conversion of violet and ultraviolet light. Tadatsu teaches
blue LEDs do not exist, but are the subject of research: “currently realized
LED’s are infrared, red, yellow and green light emitting ones. Blue and
ultraviolet LED’s are not yet realized.” Tadatsu, 1 5. Tadatsu reports
“[rjesearch [into lower wavelength LED] is being conducting with
semiconductors . . . .” Id. Tadatsu then discloses their inventive
ultraviolet/violet (but not blue) LED. Id.
Tadatsu and Beers fail to teach down-conversion of blue LED light.
Appellants contend no reference teaches down-conversion of blue
LED light. App. Br. 20. Appellants argue Tadatsu teaches down-conversion
of violet LED light. Id. Appellants argue Beers does not relate at all to
LEDs, but teaches down-conversion of ultraviolet mercury-vapor lamps. Id.
The Examiner finds Tadatsu teaches down-conversion and Beers
teaches use of phosphors to make white light. Ans. 22. The Examiner finds
“despite [Declarant] Nakamura and Vollmer’s6 characterizations, one having
5 App. Br. 6 (Citing Shuji Nakamura et al., THE BLUE LASER DIODE:
THE COMPLETE STORY (Second Edition 2000), at 230-31 (Ex. A of
Brandes Declaration 1).
6 Alfred Vollmer, White LED Developed Using Luminescence Conversion,
Nikkei Electronics Asia, July 1997 (“Single white light-emitting diodes
(LEDs) were not feasible to date as LEDs emit monochromatic light only.
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Application 12/131,119
ordinary skill in the art would consider down-conversion as a technology
deserving attention.” Ans. 21.
We are not persuaded that “deserving attention,” as found by the
Examiner, is the same as a “reasonable expectation of success.” We find
this especially so where, prior to the present appeal, the inventor of the
Examiner’s principle reference characterized the Examiner’s approach as
“impossible.” See Note 4.
Because all claims stand rejected under a combination of references
including Tadatsu and Beers, we decline to sustain the rejection of claims 1—
4, 6-25, 27-35, 37—43, and 45-71.
DECISION
The rejection of Claims 1—4, 6—25, 27—35, 37-43, and 45—71 under
35 U.S.C. §103 is REVERSED.
REVERSED
The mixture of colors making up white light was up to now only possible by
combining three different diodes”).
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