Ex Parte Fiedler et al

Patent Trial and Appeal Board

Jul 29, 2014

11659604 (P.T.A.B. Jul. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte TIM FIEDLER, FRANK JERMANN, and
JORG STRAUSS
________________

Appeal 2012-007853
Application 11/659,604
Technology Center 2800
________________

Before TERRY J. OWENS, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
Appellants claim a light source. Claim 1 is illustrative:
1. A light source having a low color temperature, comprising:
a primary radiation source which emits in a blue spectral range; and
a layer of two phosphors connected upstream of the primary radiation
source, both phosphors partially converting primary radiation from the
primary radiation source, wherein a first phosphor of the two phosphors
originates from a class of green-emitting chlorosilicates, doped with
europium, resulting in an empirical formula Ca8-x-yEuxMnyMg(SiO4)4Cl2,
where x≥ 0.005 and 0≤y≤ 1, and wherein a second phosphor of the two
Appeal 2012-007853
Application 11/659,604

2
phosphors is an orange/red nitridosilicate of a formula (Ca1-aSra)2Si5N8:Eu,
where 0≤ a≤0.15, components of the formulas being mixed such that a color
temperature of at most about 3550 K is achieved.

The References
Ellens et al. (Ellens) US 2003/0146690 A1 Aug. 7, 2003
Bogner et al. (Bogner) US 6,649,946 B2 Nov. 18, 2003
Wang et al. (Wang) US 2006/0028122 A1 Feb. 9, 2006
The Rejections
Claims 1-20 stand rejected under 35 U.S.C. § 103 over Ellens in view
of Bogner and Wang.
OPINION
We affirm the rejection.
Appellants argue the claims in the following groups: 1) claims 1-10
and 12-18, 2) claim 11, and 3) claims 19 and 20 (Br. 5-12). We therefore
limit our discussion to one claim in each group, i.e., claims 1, 11 and 19.
Claims 2-10 and 12-18 stand or fall with claim 1, and claim 20 stands or
falls with claim 19. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Ellens discloses an LED-based white-emitting illumination unit
comprising at least one yellow-emitting phosphor and one green-emitting
phosphor (¶ 1). “The essential factor is that the yellow phosphors are so
broad-banded that they also have a sufficient proportion of the emission in
the red spectral region, in particular a proportion of at least 20% of their total
emission in the visible region lies in the spectral region ≥ 620 nm” (¶ 7).
The green-emitting phosphor can have the formula Ca8-xEuxMg(SiO4)4Cl2
(¶ 14), where x is between 0.005 and 1.6 (¶ 14), which is within Appellants’
Appeal 2012-007853
Application 11/659,604

3
claim 1’s formula Ca8-x-yEuxMn yMg(SiO4)4Cl2 when y = 0. Ellens also
discloses a similar Mn-containing phosphor (¶¶ 31-32).
Bogner discloses a white light-emitting LED comprising a yellow-to-
red-emitting phosphor which can be used with a green-emitting phosphor
(col.1, ll. 9-11; col. 2, ll. 11-12, 32-34). Two of the disclosed phosphors
(EC/HU 31/00 and EC/HU 42/00; col. 4, ll. 65-66; col. 5, ll. 32-34) are
within Appellants’ claim 1’s orange/red nitridosilicate formula. The
phosphor can be used with a chlorosilicate phosphor emitting mainly in the
480-600 nm range (col. 6, ll. 12-17). (Ellens discloses an Eu-doped
chlorosilicate phosphor having a 522 nm mean wavelength (¶ 36)).
Appellants argue that one of ordinary skill in the art would not have
used Bogner’s yellow-to-red-emitting phosphor with Ellens’ green-emitting
phosphor because Ellens uses a blue-yellow-green approach rather than a
red-green-blue approach to improve color rendering (¶ 6-7, 13, 18) (Br. 6-7).
Ellens’ disclosure that the yellow phosphor must have a sufficient
proportion of emission in the red spectral region (¶ 7) would have led one of
ordinary skill in the art, through no more than ordinary creativity, to use
Bogner’s yellow-to-red emitting phosphor (col. 1, ll. 9-11) as Ellens’ yellow
phosphor. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (in
making an obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ”). One of ordinary skill in the art further would have been led to do
so because1) both Ellens (¶ 1) and Bogner (col. 2, ll. 11-12) desire white
light, 2) Ellens’ chlorosilicate is a green-emitting phosphor (¶ 1) and Bogner
teaches that Bogner’s phosphor can be used with a green-emitting phosphor
Appeal 2012-007853
Application 11/659,604

4
(col. 2, ll. 32-34), and 3) Bogner teaches that the phosphor can be used with
a chlorosilicate emitting mainly in the 480-600 nm range (col. 6, ll. 12-16)
and Ellens discloses a chlorosilicate having a mean wavelength at 522 nm
(¶ 36).
Appellants argue that one of ordinary skill in the art would not have
used Bogner’s two nitridosilicates (EC/HU 31/00 and EC/HU 42/00) falling
within Appellants’ claim 1’s formula because their quantum efficiency
(26%, 37%) is less than that of the disclosed Sr-containing phosphors (59% -
73%) (Table 2), and that because Ellens does not disclose the quantum
efficiency of the yellow phosphor, one of ordinary skill in the art would not
have had a reasonable expectation of success in using Bogner’s yellow-to-
red-emitting phosphor as Ellens’ yellow phosphor (Br. 7, 9).
Bogner states that “[f]rom table 2 it can be derived that the pure Ca
samples are not as favourable as the Sr samples” (col. 5, ll. 55-56). A
reference, however, is not limited to its preferred embodiments. See In re
Kohler, 475 F.2d 651, 653 (CCPA 1973); In re Mills, 470 F.2d 649, 651
(CCPA 1972); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Instead, all
disclosures in a reference must be evaluated for what they would have fairly
suggested to one of ordinary skill in the art. See In re Boe, 355 F.2d 961,
965 (CCPA 1966). For the reasons set forth above, Ellens and Bogner
would have indicated to one of ordinary skill in the art that Bogner’s
nitridosilicate phosphors, including those falling within Appellants’
claim 1’s formula and having relatively low quantum efficiency, are suitable
for use with Ellens’ green-emitting chlorosilicate phosphor. “Obviousness
does not require absolute predictability of success …. For obviousness
Appeal 2012-007853
Application 11/659,604

5
under § 103, all that is required is a reasonable expectation of success.” In
re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988).
Appellants argue that Ellens’ 4,000 – 10,000 ºK color temperature
(¶ 10) is above Appellants’ claim 1’s color temperature of at most about
3550 ºK and claim 19’s 2000 – 3550 ºK color temperature (Br. 8, 12).
The color temperature is a property of the phosphor composition, so
the combination of Ellens’ and Bogner’s phosphors falling within
Appellants’ claims would have the color temperature of Appellants’
phosphor combination. Compare In re Papesch, 315 F.2d 381, 391 (CCPA
1963) (“From the standpoint of patent law, a compound and all of its
properties are inseparable; they are one and the same thing”).
Appellants argue regarding claims 1 and 11 that the disclosures in
Appellants’ Specification of benefits of Appellants’ phosphor combination
are evidence of unexpected results (Br. 8-10).
That argument is not well taken because Appellants have not provided
a side-by-side comparison of the claimed invention with the closest prior art
which is commensurate in scope with the claims, and explained why the
results would have been unexpected by one of ordinary skill in the art. See
In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d 731,
743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In
re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972).
Accordingly, we are not persuaded of reversible error in the rejection.

Appeal 2012-007853
Application 11/659,604

6
DECISION/ORDER
The rejection of claims 1-20 under 35 U.S.C. § 103 over Ellens in
view of Bogner and Wang is affirmed.
It is ordered that Examiner’s decision is 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).
AFFIRMED

lp