Ex Parte Destain

Board of Patent Appeals and Interferences

May 26, 2010

11322801 (B.P.A.I. May. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PATRICK R. DESTAIN
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Appeal 2009-012370
Application 11/322,801
Technology Center 2800
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Decided: May 26, 2010
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Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
TERRY J. OWENS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-25, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
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The Invention
The Appellant claims a light source comprising an encapsulated light
emitting diode (LED) emitter. Claim 1 is illustrative:
1. A light source, comprising:
an LED emitter having an angular range of emitted light
θs, where 0°≤ θs ≤ 90°; and
an encapsulant that at least partially surrounds the LED
emitter;
wherein the encapsulant includes an inner lens and an
outer lens that are aligned along an optical axis, the inner lens
having a refractive index n1 and an outer convex surface, and
the outer lens having a refractive index n2 > n1, and an inner
concave surface that is in contact with the outer convex surface
of the inner lens; and
wherein the inner lens produces a first virtual image of
the LED emitter and the outer lens produces a second virtual
image of the first virtual image, the first virtual image being
disposed between the LED emitter and the second virtual
image.
The References
Oxley 4,712,163 Dec. 8, 1987
Godo 2005/0201118 A1 Sep. 15, 2005
Tamaoki 6,961,190 B1 Nov. 1, 2005
Hatanaka 2007/0064417 A1 Mar. 22, 2007
(§ 371(c)(1), (2), (4) date Apr. 14, 2006)1
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1-
7, 9-11, 13-18 and 20 over Tamaoki; claims 8-12 over Tamaoki in view of

1 There is no dispute as to whether Hatanaka, which has a PCT filing date of
Nov. 30, 2004, is prior art.
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Godo; claim 19 over Tamaoki in view of Oxley; and claims 21-25 over
Tamaoki in view of Hatanaka.
OPINION
We reverse the rejections.
Issue
Has the Appellant indicated reversible error in the Examiner’s
determination that Tamaoki would have rendered prima facie obvious, to
one of ordinary skill in the art, a light source comprising an LED emitter
having an angular range from 0 to 90° and an encapsulant including an inner
lens having an outer convex surface and an outer lens having an inner
concave surface, where the outer convex surface of the inner lens is in
contact with the inner concave surface of the outer lens?2

2 The Appellant’s claim 17 requires that the inner concave surface of the
outer lens “substantially mates with” the outer convex surface of the inner
lens (the claim uses both “convex” and “curved” to describe the curvature of
the outer surface of the inner lens). “[D]uring examination proceedings,
claims are given their broadest reasonable interpretation consistent with the
specification.” In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir.
2007), quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). The
Appellant’s Specification states that “inner lens 44 is in intimate contact
with or substantially mates with an inner surface 46a of outer lens 46”
(Spec. 6:10-11). The ordinary meaning of “mate” is “to join or fit together:
COUPLE”. Webster’s New Collegiate Dictionary 709 (G. & C. Merriam
1973). Thus, the Appellant’s Specification indicates that the broadest
reasonable interpretation of “substantially mates” consistent with the
Specification is that the term requires some degree of joining or fitting
together, i.e., contact, but not necessarily intimate contact. The Appellant’s
argument is consistent with that meaning: “Claim 17 provides inter alia,
1) an LED emitter having an angular range of emitted light θs, where 0° ≤ θs
≤ 90°; and 2) an outer lens having an inner concave surface that is in contact
with the outer convex surface of the inner lens” (Br. 10).
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Findings of Fact
Tamaoki discloses a light source comprising an LED emitter (col. 1,
ll. 9-12). In one embodiment (Fig. 1) an LED chip (13) is mounted on a
susceptor connected to and merged into a single body with a first pin (11)
(col. 11, ll. 21-24). The susceptor appears to block light rays such that the
angular range of the LED emitter is from 0 to 90° (Fig. 1).3 The LED chip is
encapsulated by a molding resin (14) having a convex top surface (col. 11,
ll. 24-28). The molding resin (14) is surrounded by a bulk-shaped lens (20)
which has a concave inner top surface and is separated from the molding
resin (14) by a storing cavity (6) (col. 11, ll. 36-44). The storing cavity (6)
confines stray light components inside it such that they do not leak from the
contour surface of the bulk-shaped lens (20) and, consequently, they
contribute to effective lighting (col. 12, ll. 4-29). In another embodiment
(Fig. 12) the light emitter is an optical fiber bundle (8023) and is separated
from a bulk-shaped lens (20) having a concave inner surface by a storing
cavity (6) in which stray light components are confined such that they
contribute to effective lighting (col. 16, ll. 7-21; col. 17, ll. 6-16). In another
embodiment (Figs. 23-24) a plural diode chip (61-63) light emitter is
encapsulated in a molding resin (14) having a convex top surface in contact
with a concave surface of a bulk-shaped lens (25) (col. 27, ll. 11-14; col. 28,
ll. 21-22). Light which propagates from the light emitter in the rear direction
(to the right in Fig. 23) is reflected by a back mirror (31) (col. 28, ll. 25-29).

3 In the embodiment in Figure 14B wherein the central portion of a pedestal
ring to which the first pin (11) is connected is hollow, light rays are
extracted from both the front and rear surfaces of the LED chip (col. 20,
ll. 10-16). Hence, the angular range of the emitted light is not limited to 0 to
90°.
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Analysis
The Appellant argues that Tamaoki’s Figure 1 embodiment lacks
contact between an outer convex surface of an inner lens and an inner
concave surface of an outer lens, the Figure 12 embodiment lacks an inner
lens, and the Figure 23-24 embodiment lacks a light emitter angular range of
0 to 90° (Br. 8-10). The Appellant argues that the Examiner has not shown
that one of ordinary skill in the art would have combined disparate aspects of
Tamaoki to arrive at the Appellant’s claimed invention (Br. 8).
The Examiner argues that “[i]t would have been obvious to one of
ordinary skill in the art, at the time of the invention, to use the angular range
of light source (8023) [Fig. 12] in the LED emitter (13) [Fig. 1], in order to
avoid stray light to be able to contribute to light (column 17, lines 6-20)”
(Ans. 4, 10).
Like light emitter 13 in Figure 1, light source 8023 in Figure 12 emits
stray light, and in each of those embodiments the stray light is confined
inside a storage cavity (6) (col. 12, ll. 23-25; col. 17, ll. 13-14). Tamaoki’s
Figure 12 embodiment differs more than the Figure 1 embodiment from the
Appellant’s light source because the Figure 12 embodiment has no inner
lens.
The Examiner argues that “it would have been obvious to one of
ordinary skill in the art, at the time of the invention, to use the lens
orientation of the embodiment shown in Figs. 23 and 24 in the embodiment
shown in Fig. 1, in order to mold and seal the light source to the outer lens
while allowing the produced light to propagate in a desired direction
(column 28, lines 15-25) and to simplify production because the encapsulant
will have fewer layers/parts (Figs. 1 and 23)” (Ans. 10-11).
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Tamaoki’s Figure 1 embodiment includes a storage cavity (6) between
the molding resin (14) and the bulk-shaped lens (20) to confine stray light
components (col. 12, ll. 4-29). In the Figure 23-24 embodiment, which has
no storage cavity, the inner lens convex surface contacts the outer lens
concave surface as in the Appellant’s light source. However, unlike the
Appellant’s light source, the angular range of emitted light in the Figure 23-
24 embodiment is not limited to 0 to 90°. Instead, light can propagate to the
rear of the light emitter (plural diode chips 61-63) (col. 28, ll. 24-25). That
stray light contributes to lighting by being reflected by a back mirror (31)
(col. 28, ll. 25-41). The Examiner’s argument is deficient in that the
Examiner has not explained how, if the inner and outer lenses in the Figure 1
embodiment were in contact as in the Figure 23-24 embodiment, thereby
eliminating the Figure 1 storage cavity (6), Tamaoki’s desired confinement
of the stray light would be achieved. Nor has the Examiner established that
Tamaoki would have led one of ordinary skill in the art to not desire
confinement of stray light.
As stated in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness’” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner has not provided the required articulated reasoning with
rational underpinning.
Conclusion of Law
The Appellant has indicated reversible error in the Examiner’s
determination that Tamaoki would have rendered prima facie obvious, to
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one of ordinary skill in the art, a light source comprising an LED emitter
having an angular range from 0 to 90° and an encapsulant including an inner
lens having an outer convex surface and an outer lens having an inner
concave surface, where the outer convex surface of the inner lens is in
contact with the inner concave surface of the outer lens.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1-7, 9-11, 13-18 and
20 over Tamaoki, claims 8-12 over Tamaoki in view of Godo, claim 19 over
Tamaoki in view of Oxley, and claims 21-25 over Tamaoki in view of
Hatanaka are reversed.
It is ordered that the Examiner’s decision is reversed.

REVERSED

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