95001627 (P.T.A.B. May. 20, 2015)

Ex Parte Edmonds et al

Patent Trial and Appeal BoardMay 20, 2015

95001627 (P.T.A.B. May. 20, 2015)

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. 95/001,627 05/20/2011 John Adam Edmonds 0111597.00125US1 7701 23483 7590 05/21/2015 WILMERHALE/BOSTON 60 STATE STREET BOSTON, MA 02109 EXAMINER GAGLIARDI, ALBERT J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/21/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SEMILEDS CORPORATION Requester and Respondent v. CREE, INC. Patent Owner and Appellant ____________ Appeal 2015-001441 Reexamination Control No. 95/001,627 Patent 7,737,459 B2 Technology Center 3900 ____________ Before MARC S. HOFF, DAVID M. KOHUT, and ERIC B. CHEN, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-001441 Reexamination Control No. 95/001,627 Patent 7,737,459 B2 2 Patent Owner, Cree, Inc., appeals under U.S.C. §§ 134 and 315 (2002) the Examiner’s decision to adopt Requester’s rejection of claims 57 under certain grounds, as discussed below.1 An oral hearing was conducted with Patent Owner and Requester on April 29, 2015. We have jurisdiction under 35 U.S.C. §§ 134 and 315 (2002). We AFFIRM. STATEMENT OF THE CASE This proceeding arose from a request by SemiLEDs Corporation for an inter parte reexamination (95/001,627) of U.S. Patent 7,737,459 B2, entitled “High Output Group III Nitride Light Emitting Diodes,” and issued to Edmond et al. on June 15, 2010 (the “’459 patent”). The ’459 patent describes a light emitting diode with certain known properties. Claim 5, currently under appeal and not amended during reexamination reads as follows: 5. A light emitting diode according to claim 1 having a radiant flux at 20 milliamps current of at least 29 milliwatts at its dominant wavelength between 450 and 460 nanometers. 1 Claims 14 and 868 were cancelled in a Supplemental Amendment After Right of Appeal Notice, on May 30, 2013, and entered by the Examiner in an Examiner’s Answer, mailed on August 13, 2014. Appeal 2015-001441 Reexamination Control No. 95/001,627 Patent 7,737,459 B2 3 STATEMENT OF THE REJECTIONS,2 Requester proposes rejections of the claims over the following prior art references: Slater US 2002/0123164 A1 Sept. 5, 2002 Wierer US 6,514,782 B1 Feb. 4, 2003 Krames US 6,521,914 B2 Feb. 18, 2003 Patent Owner appeals the Examiner’s adoption of the following: Claims 5 and 6 under 35 U.S.C. § 102(b) as anticipated by Slater or Wierer or Krames. Claim 7 under 35 U.S.C. § 103(a) as obvious over Slater or Wierer or Krames. ISSUE Did the Examiner err in finding that the recited radiant flux from claims 57 is inherently disclosed or taught in Slater or Krames or Wierer? ANALYSIS At the outset, we note that Patent Owner admits that Slater, Krames, or Wierer all teach an LED having an area greater than 100,000 square microns and a dominant wavelength between 450 and 460nm, as required by claim 5.3 App. Br. 7-8. However, Patent Owner contends that none of the 2 The proposed rejections in view of Dmitriev (US 7,501,023) were previously withdrawn. RAN 8. 3 Patent Owner argues that the LEDs shown in Figures 1 and 3 of Slater are not 100,000 square microns or larger. Reb. Br. 6. This argument was not Appeal 2015-001441 Reexamination Control No. 95/001,627 Patent 7,737,459 B2 4 references teaches the recited radiant flux required by the claims. App. Br. 5; PO Reb. Br. 7. The Examiner finds (RAN 43), and Requester agrees (3PR Resp. Br. 5), that the references contain the same structure as required by the claims and, therefore, inherently also possess the same properties as recited by the claims. As a result, the Examiner finds that the burden shifts to Patent Owner to prove that the LEDs taught by the references fail to disclose or teach the same properties as the claimed invention. RAN 44. Patent Owner provides several arguments against the Examiner’s findings. App. Br. 824; Reb. Br. 219. First, Patent Owner argues that the Examiner misinterpreted the case law as requiring that the claims have to be structurally different than the prior art, even though specific properties are also claimed. App. Br. 8. Patent Owner contends that the properties must also be shown in order for a proper rejection to apply. App. Br. 8; Reb. Br. 7 Because these properties, i.e., the recited radiant flux, are not shown, Patent Owner contends that the rejections are in error. App. Br. 14; Reb. Br. 7 We are unpersuaded by Patent Owner’s arguments. The Examiner finds (RAN 44), and we agree, that when an Examiner finds a prior art reference with the same structure as the claimed invention, the burden shifts to the Patent Owner to prove that the prior art devices would not inherently possess the same characteristics and/or properties as the claimed invention. timely presented as it was not provided prior to the Rebuttal Brief. The argument is, therefore, not properly before us. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“the reply brief [is not] 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.”). Appeal 2015-001441 Reexamination Control No. 95/001,627 Patent 7,737,459 B2 5 In re Spada, cited by Patent Owner (App. Br. 910), specifically indicates that Spada did not provide sufficient evidence to show that the products were different than those of Smith. In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990). In finding that the compositions were known and not novel, the court agreed with the Board that compositions do not become patentable based on a recitation of properties. Id. We find this to be the case here. Because the Examiner finds (RAN 43), and Patent Owner admits (App. Br. 78), that the references contain LEDs with the same structure, the claimed LEDs are not patentable merely because the references do not explicitly recite the claimed properties. Patent Owner’s citation to E.I. Du Pont de Nemours & Co. is also not persuasive. App. Br. 9. While E.I. Du Pont de Nemours & Co. does indicate that an invention could be defined in part by its property limitations, the properties the invention possessed were a result of the process in which the polymers were made. E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1435-1436 (Fed. Cir. 1988). Here, Patent Owner neither argues that the structure of the LEDs nor the process in which the LEDs are made in the references is any different than that of Patent Owner’s invention. Thus, Patent Owner has not provided sufficient evidence to overcome the Examiner’s finding that the LEDs cited in the references have the same properties as those of the claimed invention. Second, Patent Owner argues that because the Slater, Krames, and Wierer references do not mention the radiant flux, there is no reason to assume that the LEDs from those references inherently possess the claimed radiant flux simply because the LEDs have an area greater than 100,000 Appeal 2015-001441 Reexamination Control No. 95/001,627 Patent 7,737,459 B2 6 square microns. App. Br. 1314; Reb. Br. 3. As support, Patent Owner provides a citation to Requester’s own evidence along with data sheets that show LED chips that exceed 100,000 square microns and do not have the recited radiant flux. App. Br. 1314; Reply Br. 34. We note that the Examiner’s finding is not based solely on the size of the LED’s area, but rather on the size and the structure of the LED. RAN 15. Also, while we agree that data sheets are reliable evidence, Patent Owner has not associated those data sheets to the same figures used by the Examiner to reject the claims. See also 3PR Resp. Br. 810. Therefore, we do not find Patent Owner’s arguments to be persuasive. Third, Patent Owner provides an expert declaration by David Slater, Jr., one of the inventors of the Slater reference, who attests that Figures 17A and 17B of Slater do not possess the recited radiant flux. App. Br. 16; Reb. Br. 915. Patent Owner’s expert also provides data sheets that contain a similar structure as Figure 17A of Slater indicating the performance characteristics of two similarly designed LED chips that do not possess the recited radiant flux required by the claims. App. Br. 1623; Reb. Br. 915. We do not find this evidence to be persuasive. As correctly indicated by Requester (3PR Resp. Br. 9), the Examiner’s finding was based on Figures 1 and 3 of Slater, not Figure 17A. Ans. 1415 and 45. While Patent Owner’s expert indicates that the embodiment of Figure 17A was constructed because the inventors believed that it would produce the highest radiant flux from the designs disclosed in the Slater reference (App. Br. 16), Appeal 2015-001441 Reexamination Control No. 95/001,627 Patent 7,737,459 B2 7 there is no evidence other than speculation and attorney argument4 that Figures 1 and 3 of Slater would not produce the recited radiant flux. Additionally, as indicated above, without evidence that Figures 1 and 3 of Slater are structurally different than the claimed invention, this evidence provided by Patent Owner does not carry sufficient weight.5 For all of the reasons stated supra, we agree with the Examiner’s adoption of Requester’s proposed rejections of claims 57 at least over Slater. Claims 57  Proposed rejections over Krames or Wierer Our conclusions above address the patentability of all of the claims on appeal and, thus, render it unnecessary to reach the propriety of the Examiner’s decision to adopt the proposed rejections of the same claims on a different basis, i.e., over Krames or Wierer. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach the other proposed and adopted rejections identified in the Right of Appeal Notice on pages 3335. 4 Patent Owner argues that “any un-built, un-commercialized embodiments would have lower radiant flux.” App. Br. 16. Attorney’s arguments cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). 5 Patent Owner argues that Figure 17 of Slater more closely resembles Figure 1 of the invention rather than Figures 1 or 3 of Slater. Reb. Br. 13. This argument was not timely presented as it was not provided prior to the Rebuttal Brief. The argument is, therefore, not properly before us. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“the reply brief [is not] 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.”). Appeal 2015-001441 Reexamination Control No. 95/001,627 Patent 7,737,459 B2 8 CONCLUSION The Examiner did not err in finding that the recited radiant flux from claims 57 is inherently disclosed or taught in Slater. DECISION We affirm the Examiner’s decision to adopt the rejection of claims 5 and 6 under 35 U.S.C. § 102(b) as anticipated by Slater and claim 7 under 35 U.S.C. § 103(a) as unpatentable over Slater. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED Appeal 2015-001441 Reexamination Control No. 95/001,627 Patent 7,737,459 B2 9 Patent Owner: Wilmer Cutler Pickering Hale and Dorr LLP 60 State Street Boston, MA 02109 Third Party Requester: Baker Botts LLP 1001 Page Mill Road, Suite 200 Palo Alto, CA 94304