Ex Parte Dutta

Patent Trial and Appeal Board

Feb 22, 2017

13808923 (P.T.A.B. Feb. 22, 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.
13/808,923 01/08/2013 Partha S. Dutta RPI-164US 7705
23122 7590 02/24/2017
RATNFRPRFSTTA
EXAMINER
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PARTHA S. DUTTA
Appeal 2015-008290
Application 13/808,923
Technology Center 2800
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner2 to reject claims 1—13 of Application 13/808,923.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
BACKGROUND
The subject matter on appeal relates to a method of manufacturing a
down-converting substrate that is capable of emitting multiple individual
wavelengths and producing a full spectrum broad wavelength white light
1 Appellant identifies the real party in interest as Rensselaer Polytechnic
Institute. Appeal Brief dated April 13, 2015 (“App. Br.”) at 1.
2 Final Action entered September 12, 2014 (“Final Act.”) at 4-14.
Appeal 2015-008290
Application 13/808,923
source. Specification (“Spec.”) p. 3,11. 5—7. The substrate is a phosphor
material that is grown as a crystal from melt. Id., 11. 24—25. Claim 1, the
sole independent claim on appeal, is representative of the subject matter:
1. A method of manufacturing a down-conversion substrate
for use in a light system, the method comprising:
forming a first crystallography layer comprising one or more
phosphor materials and, optionally, applying at least one
activator to the crystallography layer;
heating the crystallography layer at a temperature to promote
crystal growth in the crystallography layer; and
drawing out the crystallography layer and allowing the
crystallography layer to cool to form the down-conversion
substrate.
App. Br. 11, Claims Appx.
REFERENCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Beeson et al.,
Gorgoni et al.,
Harbers et al.,
Kameshima et al.,
Krames et al.,
Raring et al.,
US 2008/0042153 Al
US 2005/0193942 Al
US 2007/0215890 Al
US 2009/0072700 Al
US 2008/0121919 Al
US 2010/0025656 Al
Feb. 21, 2008 (“Beeson”)
Sept. 8, 2005 (“Gorgoni”)
Sept. 20, 2007 (“Harbers”)
Mar. 19, 2009 (“Kameshima”)
May 29, 2008 (“Krames”)
Feb. 4, 2010 (“Raring”)
THE REJECTIONS
1. Claims 1, 5, and 9-10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Beeson and Gorgoni.
2. Claims 2 and 6—8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Beeson, Gorgoni, and
Harbers.
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Appeal 2015-008290
Application 13/808,923
3. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Beeson, Gorgoni, and Kameshima.
4. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Beeson, Gorgoni, and Krames.
5. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Beeson, Gorgoni, Harbers, and
Krames.
6. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Beeson, Gorgoni, Harbers, Krames,
and Raring.
DISCUSSION
The Examiner finds that Beeson teaches all steps of the method
recited in claim 1, except for “drawing out the crystallography layer and
allowing the crystallography layer to cool to form the down-conversion
substrate.” Final Act. 5, citing Beeson || 65—67, 73, and Figs. 1A—ID. The
Examiner further finds, however, that the recited drawing and cooling step is
a “well known step in a method of manufacturing a substrate” (Final Act. 5)
and determines that it would have been obvious to a person of ordinary skill
in the art to have modified Beeson’s method by including such a step, as
taught by Gorgoni, in order to reduce stress in the single crystal. Final Act.
5—6, citing Gorgoni || 2, 16, 26.
Appellant argues that the Examiner has provided no rationale for how
the process of Gorgoni relates to the method disclosed by Beeson, and thus
the combination of Beeson and Gorgoni lacks articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.
App. Br. 8. Specifically, Appellant argues as follows:
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Appeal 2015-008290
Application 13/808,923
The Examiner has failed to provide any rational explanation as
to how one of ordinary skill in the art would have added the
drawing out step [of Gorgoni] to the process of Beeson ....
More fundamentally, why would one of ordinary skill use the
drawing out step of the Czochralski process [of Gorgoni] to
form a single-crystalline boule on top of an already formed
wavelength conversion layer?
Reply Br. 6.
We find reversible error in the determination of obviousness. As
Appellant persuasively explains, the processes disclosed by Beeson and
Gorgoni are not compatible; none of the techniques described in Beeson
involves drawing a seed crystal from a melt, and none of the techniques
described in Gorgoni involves depositing material on a substrate. Reply Br.
4—6. The Examiner’s reasoning that a person of ordinary skill in the art
would have added Gorgoni’s drawing step to Beeson’s process “in order to
reduce stress in the single crystal” (Ans. 4) does not address the issue of
incompatibility of Beeson and Gorgoni, as raised by Appellant. Further, the
Examiner’s finding that a drawing step was extremely well-known and
described in Gorgoni in language like Appellant’s claim language (Ans. 4—6)
does not overcome the failure to explain why a person of ordinary skill in
the art would have added that step to Beeson’s method. Accordingly, we
cannot sustain the rejection of claim 1 or the dependent claims, which are
also premised on the combination of Beeson and Gorgoni.
DECISION
We reverse the rejections of claims 1—13.
REVERSED
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