Ex Parte Collins et al

Patent Trial and Appeal Board

Nov 29, 2017

13017983 (P.T.A.B. Nov. 29, 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.
13/017,983 01/31/2011 Brian Thomas Collins 5308-1238IP 7714
65106 7590
MYERS BIGEL, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
EXAMINER
DICKEY, THOMAS L
ART UNIT PAPER NUMBER
2826
NOTIFICATION DATE DELIVERY MODE
12/01/2017 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):
u spto @ my ersbigel. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN THOMAS COLLINS, JASPER CAB ALU,
MATTHEW DONOFRIO, AND NATHANIEL O. CANNON
Appeal 2017-000949
Application 13/017,983
Technology Center 2800
Before TERRY J. OWENS, ROMULO H. DELMENDO,
and MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 17, 22, 32, 34, 38, 41—43, 53, and 55—57. We have jurisdiction under
35 U.S.C. § 6(b).
Appeal 2017-000949
Application 13/017,983
Appellants’1 invention is directed to light emitting diodes that have
high color rendering index ("CRT'). Spec. 12. According to Appellants, the
invention seeks to consistently reproduce LEDs with the same or similar
emission characteristics. Id. 8—13. Claim 17 illustrates the subject matter
on appeal and is reproduced below:
17. A light emitting device, comprising:
a light emitting diode (“LED”) that emits light having a
dominant wavelength between about 460 nanometers and 470
nanometers;
a conformal recipient luminophoric medium that is
configured to down-convert at least some of the light emitted
by the LED, the conformal recipient luminophoric medium
having upper and lower surfaces that conform to an upper
surface of the LED, the conformal recipient luminophoric
medium including at least:
a first LuAG:Ce phosphor that down-converts the
radiation emitted by the first and second LEDs to radiation
having a peak wavelength in the green color range between 535
nanometers and 545 nanometers and that has a full width half
maximum emission bandwidth of at least 110 nanometers;
a second YAG:Ce phosphor that down-converts
the radiation emitted by the first and second LEDs to radiation
having a peak wavelength between 545 nanometers and 565
nanometers;
a third phosphor that down-converts the radiation
emitted by the first and second LEDs to radiation having a peak
wavelength between 630 nanometers and 650 nanometers; and
1 The real party in interest is identified as Cree, Inc. of Durham, North
Carolina. App. Br. 1.
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Application 13/017,983
a heat curable binder material,
wherein the phosphors included in the recipient
luminophoric medium and the LED are configured to together
emit warm white light having a correlated color temperature
between about 2500K and 3300K and having a CRI of at least
90,
wherein a ratio of the first LuAG:Ce phosphor to
second YAG:Ce phosphor is between 1.5-to-l and l-to-1.5 by
weight.
We refer to the Claims Appendix to the Appeal Brief for the
text of independent claims 32 and 38. App. Br. 20-21.
Appellants (App. Br. 4) request review of the following rejections
from the Examiner’s Final Office Action:
I. Claims 32 and 34 rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
II. Claims 17, 56 and 57 rejected under 35 U.S.C. § 103(a) as
unpatentable over Li et al. (US 2010/0181582 Al, published July 22, 2010,
hereinafter “Li”), Harbers et al. (US 2011/0216522 Al, published September
8, 2011, hereinafter “Harbers”), and Srivastava et al. (US 2004/0007961 Al,
published January 15, 2004, hereinafter “Srivastava”).
III. Claim 22 rejected under 35 U.S.C. § 103(a) as unpatentable over Li,
Harbers, Srivastava, and Cannon et al. (US 2009/0179213 Al, published
July 16, 2009, hereinafter “Cannon”).
IV. Claim 53 rejected under 35 U.S.C. § 103(a) as unpatentable over Li,
Harbers, Srivastava, and Shei et al. (US 2010/0059733 Al, published March
11, 2010, hereinafter “Shei”).
V. Claim 38 rejected under 35 U.S.C. § 103(a) as unpatentable over Li
and Boerekamp et al. (WO 2009/083887 Al, published July 9, 2009,
Hereinafter “Boerekamp”).
VI. Claim 41—43 and 55 rejected under 35 U.S.C. § 103(a) as
unpatentable over Li, Boerekamp, and Shei.
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Application 13/017,983
Appellants present arguments addressing only independent claims 17
(Rejection II), 32 (Rejection I) and 38 (Rejection V). See generally App. Br,
Accordingly, for each of these rejections and those related thereto, we limit
our discussion to the issues related to the independent claims. The
dependent claims in each ground of rejection (and any related rejections)
stand or fall with their respective independent claims.
As a preliminary matter, we note Appellants do not contest the
rejection of claims 17, 22, 53, 56, and 57 under 35 U.S.C. § 112, second
paragraph that was maintained by the Examiner. App. Br. 4; Final Act. 2;
Ans. 3. We therefore summarily affirm the Examiner’s rejection of claim
17, 22, 53, 56, and 57 under 35 U.S.C. § 112, second paragraph.2
OPINION
Rejection under 35 U.S.C. § 112, first paragraph (written description)
of Independent Claim 32 (Rejection I)
We AFFIRM.
2 Cf. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“In the event of.
. . a waiver, the PTO may affirm the rejection of the group of claims that the
examiner rejected on that ground without considering the merits of those
rejections.”). See also Manual of Patent Examining Procedure (MPEP) §
1205.02 (9th ed. Mar. 2014, Rev. November 2015) (“If a ground of rejection
stated by the [Ejxaminer is not addressed in the [Ajppellanf s brief,
[Ajppellant has waived any challenge to that ground of rejection and the
Board may summarily sustain it, unless the [Ejxaminer subsequently
withdrew the rejection in the [Ejxaminer’s [Ajnswer.”). See also 37 CFR
41.39(a)(1).
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Application 13/017,983
The Examiner found that the Specification, as originally filed, does
not provide written description for the subject matter in claim 32 because,
while the Specification discloses all of the features/elements recited in the
claim, there is no disclosure of all these features/elements together in a
single embodiment. Final Act. 7; App. Br. 8.
In arguing the rejection, Appellants points to different embodiments
showing support for the elements of the contested subject matter. App. Br.
4-7; Spec. H 60, 93, 116-124, 150, 153, 157, 158, Figures 9A-9D. 14A-
14E. Appellants further argue that the Specification expressly states that the
different disclosed embodiments can be combined to provide a plurality of
different embodiments. App. Br. 8; Spec. 1198.
We are unpersuaded by these arguments and agree with the
Examiner’s finding that the Specification fails to provide descriptive support
for the disputed subject matter of independent claim 32. Ans. 5—11.
Appellants do not direct us to any portion of the Specification providing
descriptive support for the disputed subject matter. Instead, Appellants’
arguments are essentially that the descriptive support of the subject matter of
claim 32 would have been obvious to the skilled artisan based on the
disclosure on paragraph 198 of the Specification. App. Br. 8. However, as
noted by the Examiner (Ans. 11), obviousness is not the proper standard for
determining whether a claim complies with the written description
requirement of 35 U.S.C. § 112 11. Lockwood v. Am. Airlines, 107 F.3d
1565, 1572 (Fed. Cir. 1997) (“[Description which renders obvious the
invention ... is not sufficient.”).
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Application 13/017,983
Accordingly, we affirm the Examiner’s rejection of claims 32 and 34
under 35 U.S.C. § 112, first paragraph, for the reasons presented above and
given by the Examiner.
Prior Art Rejections of
Independent Claims 17 (Rejection II) and 38 (Rejection V)
Claim 17 (Rejection II)3
Claim 17 is directed to a light emitting device comprising a light
emitting diode (LED) having a 3-phosphor conformal recipient
luminophoric medium where (1) the medium comprises a first LuAG:Ce
phosphor to down-convert the radiation emitted by the LED to radiation
having a peak wavelength in the green color range between 535 nanometers
and 545 nanometers and that has a full width half maximum emission
bandwidth of at least 110 nanometers and a second YAG:Ce phosphor and
(2) the medium has a ratio of LuAG:Ce phosphor to YAG:Ce phosphor
between 1.5-to-l and l-to-1.5 by weight.
There is no dispute that Li discloses a light emitting diode that differs
from the subject matter of claim 17 in that Li does not disclose the claimed
phosphor composition for the conformal recipient luminophoric medium.
App. Br. 10; Final Act. 7—8; Li || 60-70, 78, 79, 95—108, Figures 4d, 6.
Specifically, Li does not disclose (1) the claimed LuAG:Ce phosphor
component and (2) the claimed ratio of the LuAG:Ce phosphor to a second
YAG:Ce phosphor. Final Act. 7—8.
3 A discussion of the reference to Srivastava is unnecessary for disposition
of this rejection because Appellants do not contest the Examiner’s findings
of facts with respect to this reference. Final Act. 11; see generally App. Br.
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Application 13/017,983
(1) LuAG:Cephosphor component
The Examiner finds Harbers discloses a conformal recipient
luminophoric medium comprising a 3-phosphor containing composition
comprising a LuAG:Ce phosphor to down-convert radiation emitted by an
LED to radiation having a peak wavelength in the green color range between
508—528 nm with a full width half maximum emission bandwidth of at least
110 nm. While the Examiner recognizes this peak wavelength range is not
the claimed peak wavelength range of 535—545 nm, the Examiner
determines that Harbers’s disclosed range for the LuAG:Ce peak wavelength
is close enough to the claimed peak wave length range that one skilled in the
art would have reasonably expected Harbers’s LuAG:Ce phosphor to have
the same properties as the claimed LuAG:Ce phosphor when used in a
phosphor composition for producing a white light emitting diode. Final Act.
10-11.
Appellants argue Harbers teaches away from a phosphor composition
having a LuAG:Ce phosphor component having the claimed peak
wavelength range because Harbers teaches that the peak wavelengths of the
LuAG:Ce phosphor component (green phosphor) and of the yellow
phosphor component should be 35nm apart. App. Br. 10. Appellants
additionally argue that Harbers suggests the LuAG:Ce peak wavelength
should be between 508—528 nm to compensate for a lower range deficiency
and, thus, increasing this peak wavelength impacts the ability to compensate
for this lower range deficiency. App. Br. 11.
We are unpersuaded by these arguments and agree with the
Examiner’s determination of obviousness. Ans. 12—19. Moreover, as
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recognized by the Examiner, Harbers’s disclosure of having the peak
wavelengths of the various phosphor components at least 35 nm apart from
one another is a general guideline that suggests a preferred embodiment.
Ans. 16; Harbers 127. Further, Harbers’s disclosure of a LuAG:Ce having
the peak wavelength of 508—528 nm is, at best, also a preferred embodiment
where this particular LuAG:Ce may be employed if there is a need to
compensate for a deficiency resulting from a specific spectral response.
Harbers 127.
It is well settled that a reference may be relied upon for all that it
discloses and not merely the preferred embodiments as suggested by
Appellants. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (“all disclosures of the prior art, including unpreferred
embodiments, must be considered” (quoting In re Lamberti, 545 F.2d 747,
750 (CCPA 1976))); In re Fracalossi, 681 F.2d 792, 794 n.l (CCPA 1982)
(explaining that a prior art reference’s disclosure is not limited to its
examples.). Given Harbers’s broad disclosure noted above and Appellants’
recognition that, at least, the particular FuAG:Ce disclosed by Harbers is a
suggestion (App. Br. 11), Appellants have not adequately explained why
Harbers would have taught away from a FuAG:Ce phosphor component
having the claimed peak wavelength range. Appellants have not adequately
explained how the preferred embodiments detract from the broader
disclosure of Harbers. Thus, Appellants have not adequately explained
reversible error in the Examiner’s determination of obviousness.
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Application 13/017,983
(2) Ratio of the LuAG:Ce phosphor to a second YAG:Ce phosphor
To address this deficiency, the Examiner finds Harbers’s disclosed 3-
phosphor containing composition comprising a ratio of the LuAG:Ce
phosphor to a second YAG:Ce phosphor calculated to be between 1.57 to 1
and 18 to 1 by weight. Final Act. 9-10; Harbers 127, Figure 2. The
Examiner acknowledges that this ratio of phosphors is not the claimed ratio
for FuAG:Ce phosphor to YAG:Ce phosphor of between 1.5 to 1 and 1 to
1.5. Final Act. 9—10. However, the Examiner determines that Harbers’s
calculated Harbers’s phosphor ratio of 1.57 to 1 is close enough to the
claimed ratio of FuAG:Ce to YAG:Ce phosphors of 1.5 to 1 that one skilled
in the art would have reasonably expected Harbers’s phosphor composition
to have the same properties as the claimed phosphor composition for
producing a white light emitting diode. Final Act. 10—11.
Appellants argue that Harbers does not explicitly disclose a FuAG:Ce
to YAG:Ce ratio of 1.574 and teaches away from the claimed ratio of
FuAG:Ce to YAG:Ce because Harbers also discloses phosphor ratios that
are farther from the claimed phosphor ratio. App. Br. 12; Harbers H 37, 41.
Appellants additionally argue that the Examiner did not consider (a) that the
performance of the device depends on the relative amounts of the three
phosphors present in the phosphor composition and (b) that the mixing of
phosphors is an unpredictable art. App. Br. 12—13.
We are unpersuaded by these arguments for the reasons presented by
the Examiner. Ans. 19—25. With respect to Harbers’s calculated LuAG:Ce
4 We choose to use the Examiner’s calculated number of 1.57 instead of
Appellants’ rounded number of 1.6 for purposes of clarity and consistency.
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Application 13/017,983
to YAG:Ce ratio of 1.57 to 1, Appellants present no arguments contesting
the Examiner’s calculations or pointing to error in the Examiner’s
determination that Harbers’s calculated phosphor ratio is close enough to the
claimed ratio of LuAG:Ce to YAG:Ce phosphors of 1.5 to 1 that one skilled
in the art would have reasonably expected Harbers’s phosphor composition
to have the same properties as the claimed phosphor composition for
producing a white light emitting diode. See generally App. Br.; Final Act.
10-11; Ans. 20. Instead, Appellants’ arguments focus on the importance of
the third phosphor component and the unpredictability of the art. App. Br.
12—13. With respect to the third phosphor component, the argument is
unavailing because, as acknowledged by Appellants, Harbers discloses
amounts for all phosphor components. App. Br. 12; Harbers 127. Thus,
Harbers’s disclosure provides sufficient guidance to one skilled in the art to
arrive at a phosphor composition for a desired purpose. With respect to the
unpredictability of the art, we agree with the Examiner that this argument is
unsupported by adequate explanation or objective evidence. Ans. 23.
Accordingly, we affirm the Examiner’s rejections of claims 17, 22,
53, 56 and 57 under 35 U.S.C. § 103(a) (Rejections II—IV) for the reasons
presented by the Examiner and given above.
Claim 38 (Rejection V)
Independent claim 38 differs principally from independent claim 17 in
that it requires a different conformal recipient luminophoric medium for the
light emitting diode.
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We refer to the Examiner’s Final Action for a statement of the
obviousness rejection the combined teachings of Li and Boerekamp. Final
Act. 13-17.
Appellants argue that Li’s “insert” 112 molded over LED 102 is not a
conformal coating. App. Br. 14—16. Appellants further argue that the insert
is not molded over two LEDs. Id. at 16.
We are unpersuaded by these arguments for the reasons presented by
the Examiner. Ans. 26; Li | 66. In fact, Li is replete with references about
providing a conformal coating over the LED. See Li || 3, 25, 26, 34,
Abstract. Thus, the argument is unpersuasive of error.
Appellants additionally argue that the teachings of the cited art cannot
be combined because Boerekamp expressly teaches using self-supporting
ceramic layers as the recipient luminophoric medium to avoid wavelength
limitations, layers that cannot be conformally deposited. App. Br. 16—17.
We find this arguments also unavailing for the reasons presented by
the Examiner. Ans. 29. As noted by the Examiner, Boerekamp discloses the
luminescent material can be a coating. Boerekamp 10, 21 and Figure 2h.
Appellants’ argument does not address this teaching of Boerekamp.
Appellants further argue Boerekamp does not teach the claimed fist
phosphor material having a chemical formula of Lui.xYxAl50i2:Ce because
Boerekamp’s disclosed material has a full width half maximum (FWHM) of
only up to about 20 nm that does not extend into the cyan color range. App.
Br. 17; Boerekamp 4.
We are unpersuaded. The Examiner notes that Appellants define the
“cyan color range” as the range between about 480 nm and 500 nm while
Boerekamp defines “green light” as relating to light having a wavelength in
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Application 13/017,983
the range of about 500—570 nm. Ans. 30—31; Spec. 176; Boerekamp 7. As
explained by the Examiner, the lower end (500—510 nm) of Boerekamp’s
disclosed range (500-570 nm) of wavelengths for “green” light clearly lies
within 10 nm (half of a 20 nm FWHM) of the upper half (490—500 nm) of
Appellants' defined “cyan color range” (480-500 nm). Ans. 31. Appellants’
argument does not explain error in the Examiner’s finding above.
Accordingly, we affirm the Examiner’s rejections of claims 38, 41—
43, and 55 under 35 U.S.C. § 103(a) (Rejections V and VI) for the reasons
presented by the Examiner and given above.
We note that Appellants’ presented arguments for the first time in the
Reply Brief filed October 14, 2016 such as addressing the prior art rejection
of claim 17 in reference to the peak wavelength of Harbers’s phosphor
material having a separation of 70% of the claimed peak wavelength. Reply
Br. 6. Any argument not presented in the Appeal Brief will not be
considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument could not have been presented in the Appeal
Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“[T]he reply brief [is not] an opportunity to make arguments
that could have been made during prosecution, but were not. Nor is the
reply brief an opportunity to make arguments that could have been made in
the principal brief on appeal to rebut the Examiner’s rejections, but were
not.”); see also 37 C.F.R. § 41.41(b)(2). Appellants have not shown good
cause why this argument should now be considered.
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ORDER
The Examiner’s rejections under 35 U.S.C. § 112, first and second
paragraphs, are affirmed.
The Examiner’s prior art rejections under 35 U.S.C. § 103 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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