Ex Parte Hagemann et al

Patent Trials and Appeals Board

May 13, 2019

14629629 - (D) (P.T.A.B. May. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/629,629 02/24/2015 Volker Hagemann
27623 7590 05/13/2019
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2133.271USU 2386
EXAMINER
BANNAN, TIJLIE A
ART UNIT PAPER NUMBER
2875
MAIL DATE DELIVERY MODE
05/13/2019 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
Ex parte VOLKER HAGEMANN, BERND HOPPE,
GUENTER WEIDMANN, and SEONG-WON KIM
Appeal2018-001765
Application 14/629,629
Technology Center 2800
Before JEFFREY T. SMITH, JAMES C. HOUSEL,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 3-20, and 23-27 of
Application 14/629,629 under 35 U.S.C. § 103. Final Act. (Jan. 6, 2017) 2-
12. Appellant 1 seeks reversal of these rejections pursuant to 35 U.S.C. §
134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
1 The Appellant is the Applicant, Schott AG, which is also identified as the
real party in interest. Appeal Br. 1.
Appeal2018-001765
Application 14/629,629
BACKGROUND
The present application generally relates to the cooling of converter
arrangements for light sources with high luminance such as high power
projectors. Spec. ,r 2. The described converter arrangement comprises a
carrying wheel having a converter provided with fluorescent materials on
one side of the carrying wheel so as to convert impinging light (primary
light) into light having a different wave length and emitting such light
(secondary light). Id. ,r 13. A converter arrangement depicted in the
drawings of the application is reproduced below.
Spec., Fig. 3. Figure 3 shows a converter arrangement with a carrying wheel
2 and a circular ring shaped converter 3, where the diameter of the carrying
wheel is greater than the diameter of the converter. Id. ,r 40. In an
embodiment, the converter consists of multiple segments 31, 32, 33, each of
different converter materials so that different converter materials are
illuminated, and different colors emitted, when the carrying wheel rotates.
Id. ,I 76.
The buildup of excessive heat at the converter is undesirable as it may
lead to accelerated degradation of the converter material and may also lead
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Application 14/629,629
to a decrease in conversion efficiency or a color change of the emitted
secondary light. Id. ,r 10. The Specification teaches that a larger carrying
wheel enhances heat dissipation. Id. ,r 15. Specifically, the Specification
provides that "[t]he advantage of the enlarged total area of the carrying
wheel ... especially comes into effect, if the used material allows for
distributing the heat to be removed from the converter onto the total area of
the converter arrangement." Id.
Claims 1 and 5 are illustrative of the subject matter on appeal and are
reproduced below:
1. A converter arrangement for light sources, comprising:
an axially pivotable carrying wheel having a total area;
a converter fixed on one side of the carrying wheel, the
converter comprising fluorescent material sufficient to convert
impinging light into light having a different wave length by
fluorescence and sufficient to emit the light having the
different wave length, the converter being delimited by an
outer boundary curve that defines an area of the converter;
and
a ratio of the total area to the area of the converter that
is at least 4.5: 1.
5. The converter arrangement as claimed in claim 1,
further comprising a heat dissipation that is greater than
150WK-1m-2*F, wherein Fis the area in square meters.
Appeal Br. 17 (Claims App.).
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Appeal2018-001765
Application 14/629,629
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1, 3-7, 10, and 15-20 are rejected under 35 U.S.C. § 103 as
obvious over Sugiyama. 2 Final Act. 2---6.
2. Claims 8 and 9 are rejected under 35 U.S.C. § 103 as obvious over
Sugiyama in view of Coushaine et al. 3 Id. at 6-7.
3. Claim 11 is rejected under 35 U.S.C. § 103 as obvious over
Sugiyama in view of Jeoung et al. 4 Id. at 7-8.
4. Claims 12-14 are rejected under 35 U.S.C. § 103 as obvious over
Sugiyama in view of Inamoto. 5 Id. at 8-9.
5. Claims 23-27 are rejected under 35 U.S.C. § 103 as obvious over
Sugiyama in view of Meyer et al. 6 Id. at 9-12.
DISCUSSION
Rejection 1. The Examiner rejected claims 1, 3-7, 10, and 15-20 as
obvious over Sugiyama. Id. at 2---6.
The Examiner determined that Sugiyama does not explicitly teach the
claimed ratio of the area of the carrying wheel to the area of the converter.
Final Act. 3. The Examiner further determined, however, that Sugiyama
teaches the general conditions of the claim. The Examiner relied upon the
2 US 2011/0116253 Al, published May 19, 2011 ("Sugiyama").
3 US 2005/0243559 Al, published Nov. 3, 2005 ("Coushaine").
4 WO 2012/138020 Al, published Oct. 11, 2012 ("Jeoung").
5 US 2003/0095349 Al, published May 22, 2003 ("Inamoto").
6 US 2009/0187234 Al, published July 23, 2009 ("Meyer").
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Application 14/629,629
following figure of Sugiyama as teaching the general conditions of the
claims.
,.~~·····
/78,80
.J,,'
Sugiyama, Fig. 1 Oa. Figure 1 Oa of Sugiyama is a schematic view of a
"transmission/reflection type phosphor wheel" including a yellow phosphor
layer 73 and a transparent region 74. Id. ,r,r 98-99.
The Examiner determined that Sugiyama teaches a wheel 78 ( or 80) 7
having a converter (phosphor layer 73) and a portion of the wheel external to
the converter. The Examiner measured the radii of the wheel and the
phosphor and calculated the ratio of the area of the wheel to that of the
converter (phosphor). Final Act. 3. The Examiner further determined that
one of skill in the art would have known that the ratio of the area of the
converter to that of the entire wheel would affect the light output:
One of ordinary skill in the art would recognize that providing a
slightly smaller area of converting material would allow for a
little less light to be converted which would yield the
predictable result of a light output with slightly more source
light (for example blue if the source is blue).
7 Sugiyama appears to use numeral 78 to refer to a "transmission type"
phosphor wheel and numeral 80 to refer to a "reflection type" phosphor
wheel. Sugiyama ,r,r 99, 104.
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Application 14/629,629
Final Act. 3. Similarly, the Examiner determined that "the amount of
conversion material on Sugiyama's conversion wheel (fig. lOa-c) is
significantly less than the total area of the wheel and one of ordinary skill
would also recognize the amount of conversion material is directly
proportional to the amount of light which is converted in a lighting device
(i.e. a result effective variable)." Answer 3.
Appellant asserts error on several bases with regard to the rejection of
claims 1, 4, 7-15, 17, 19, 23, 24, and 27. See Appeal Br. 5 ("Independent
claims 1, 17 and 23, as well as dependent claims 4, 7-15, 19, 24, and 27
stand or fall together") ( emphasis omitted).
First, Appellant argues that the Examiner improperly relied upon
measurements from Sugiyama. Appeal Br. 5-7. It is well settled that
"[a]bsent any written description in the specification of quantitative values,
arguments based on measurement of a drawing are of little value." In re
Wright, 569 F.2d 1124, 1127 (CCPA 1977). Precise proportions should not
be read into patent drawings when the patent does not expressly provide
such proportions. Nystrom v. TREX Co., 424 F.3d 1136, 1149 (Fed. Cir.
2005). Accordingly, we accept Appellant's arguments that the Examiner
may not rely upon precise measurements absent support in the written
description. This is not, however, dispositive of the rejection. While patent
drawings are not working drawings drawn to scale, that which is clearly
depicted in a patent drawing is not to be disregarded. In re Mraz, 455 F.2d
1069, 1072 (CCPA 1972); In re Heinrich, 268 F.2d 753, 755-56 (CCPA
1959). Here, Figure 1 Oa shows a carrying wheel having an area greater than
the converter area. Further, the Examiner has determined that the ratio of
the areas is a result-effective variable. Answer 3.
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Application 14/629,629
"A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective." In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). "[W]here the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation." In re
Aller, 220 F.2d 454,456 (CCPA 1955) (cited by E.I. DuPont de Nemours &
Co. v. Synvina C. V., 904 F.3d 996, 1006 (Fed. Cir. 2018)). Similarly, "the
discovery of an optimum value for a result-effective variable generally does
not require an inventive step." In re Gardner, 449 F. App'x 914, 917 (Fed.
Cir. 2011).
Appellant asserts that the Examiner has not made an adequate
showing that the ratio of converter area to wheel area is result-effective.
Appellant further argues that the claimed ratio is critical.
In this case, the Examiner has not established that the ratio of the area
of the conversion material to that of the carrying wheel was recognized to be
a result-effective variable as to heat dissipation. Answer 3. Although
Sugiyama teaches an embodiment where the ratio of converted (secondary)
light to nonconverted (primary) light is controlled so as to achieve a desired
color tone (Sugiyama ,r 70), the Examiner does not point out any teaching in
Sugiyama regarding heat dissipation. Thus, there is little or no evidence to
indicate whether a converter arrangement having the claimed ratio would
result from optimizing the carrying wheel of Sugiyama to achieve the
desired color tone. See Ex parte Collison, Appeal No. 2010-002734 (BPAI
Feb. 29, 2012); Ex parte Hudson, Appeal No. 2014-008073 (PTAB April 11,
2016). Accordingly, based on the present record, Appellant has shown a
deficiency in the Examiner's determination that "a ratio of the total area [ of
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Application 14/629,629
the carrying wheel] to the area of the converter that is at least 4. 5: 1" would
have been an obvious result of routine experimentation.
In view of the foregoing, Appellant has shown error in the rejection of
claim 1. For the same reasons, Appellant has shown error in the rejection of
independent claims 17 and 23 which include the same limitation discussed
above. Appellant has shown error in the rejection of claims 2-16, 18-20,
and 24--27 by virtue of dependency. Appeal Br. 17-20 (Claims App.).
Rejections 2-4. The Examiner rejected claims 8, 9, 11, and 12-14
over Sugiyama in combination with certain secondary references. Final Act.
6-9. Appellant indicates that such claims stand or fall with independent
claim 1. Appeal Br. 5. As we have found Appellant's arguments
concerning claim 1 to be persuasive, we determine that Appellant has shown
error with regard to the rejections of dependent claims 8, 9, 11, and 12-14.
Rejection 5. The Examiner rejected claims 23-27 as obvious over
Sugiyama in view of Meyer. Final Act. 9-12. Appellant relies upon the
same arguments as presented in regard to the rejection of claim 1 with regard
to the rejection of claim 23. Appeal Br. 5-9. As we have found such
arguments to be persuasive, we determine that Appellant has shown error
with regard to the rejections of claim 23. As claims 24--27 depend from
claim 23, we similarly determine that Appellant has shown error with regard
to the rejections of claims 24--27.
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Application 14/629,629
CONCLUSION
The rejections of all claims as obvious are reversed.
REVERSED
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