Ex Parte Hofmann et al

Patent Trial and Appeal Board

Mar 28, 2018

14074938 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/074,938 11108/2013
138325 7590 03/30/2018
PHILIPS LIGHTING HOLDING B.V.
465 Columbus A venue
Suite 330
Valhalla, NY 10595
FIRST NAMED INVENTOR
Bernd Hofmann
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.
2006P00957US01 8016
EXAMINER
NEGRON, ISMAEL
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
03/30/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
kim.larocca@lighting.com
jo.cangelosi@lighting.com
Gigi.Miller@lighting.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERND HOFMANN and
HANS-HELMUT BECHTEL
Appeal2017-006893
Application 14/074,938 1
Technology Center 2800
Before JEFFREY T. SMITH, A VEL YN M. ROSS, and BRIAND. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction. 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellant is the Applicant, Philips Lighting Holding B.V., which
according to the Appeal Brief, is also the real party in interest. Appeal Br. 3.
Appeal2017-006893
Application 14/074,938
STATEMENT OF THE CASE2
Appellant describes the invention as relating to a light delivery device
for medical purposes such as endoscopy. Spec. 1:9--10. The Specification
states that the invention seeks to allow a change in color temperature while
maintaining light flux and/or light density. Id. at 2: 1--4. Appellant's light
delivery device is illustrated by Figure 1, which is reproduced below.
1
l._..:
.i
Figure 1 depicts a "very schematic cross-sectional partial view of a light
delivery device according to a first embodiment of [Appellant's] invention."
Spec. 10:23-24.
Claims 1, 6, and 17 are the three independent claims on appeal.
Claims 1 and 1 7, reproduced below with emphases added to key recitations,
are illustrative of the claimed subject matter:
2 In this opinion, we refer to the Final Office Action dated July 6, 2016
("Final Act."), the Appeal Brief filed November 3, 2016 ("Appeal Br."), the
Examiner's Answer dated January 27, 2017 ("Ans."), and the Reply Brief
filed March 21, 2017 ("Reply Br.").
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Application 14/074,938
1. A method of delivering light from a light delivery
device, the light delivery device comprising:
at least one LED having a first peak emission
wavelength,
at least one auxiliary LED having a second peak emission
wavelength different from the first peak emission wavelength,
and
at least one ceramic wavelength conversion element
placed longitudinal to a path of light emitted by the at least one
LED and orthogonal to a path of light emitted by the at least
one auxiliary LED, wherein the at least one conversion
element includes a first surface area for receiving the light
emitted by the at least one LED, a second surface area for
receiving the light emitted by the at least one auxiliary LED,
and a third surface area for emitting converted light, the
converted light being converted within the at least one
conversion element, and wherein the first surface area is smaller
than the second surface area and the third surface area is
smaller than a sum of the first and second surface areas; the
method comprising:
switching on the at least one LED, and
switching on the at least one auxiliary LED, so as to
change the color temperature of the converted light emitted
from the third surface area.
1 7. A light delivery device, comprising:
a wavelength conversion element having a first input
surface area, a second input surface area, and an output surface
area, the second input surface area being larger than and non -
planar with the first input surface area,
a first LED source configured to emit first light having a
first peak emission wavelength toward the first input surface
area of the wavelength conversion element;
a second LED source configured to emit second light
having a second peak emission wavelength different from
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Application 14/074,938
the first peak emission wavelength toward the second input
surface area of the wavelength conversion element; and
wherein the second LED source is controlled such that an
intensity of the second light adjusts a color temperature of
converted light emitted from the output surface area of the
wavelength conversion element; and
wherein the converted light is converted within the at
least one conversion element.
Appeal Br. 17 (Claims App.).
REJECTION
On appeal, the Examiner maintains the rejection of claims 1-20 under
35 U.S.C. § 103(a) as unpatentable over Tarsa et al., U.S. Patent No.
6,350,041 Bl, Feb. 26, 2002 ("Tarsa"), in view of Rutherford et al., U.S.
Patent No. 7 ,316,497 B2, Jan. 8, 2008 ("Rutherford").
ANALYSIS
Claims 6-21. Because Appellant focuses its argument on claim 1 7
(see, e.g., Appeal Br. 7, 12) and because claim 6 has similar scope in
relevant aspects discussed below, we first focus on these two independent
claims as well.
With respect to claim 17, the Examiner finds that Tarsa discloses a
light delivery device as, for example, depicted in Figure 3 g that includes a
first and second LED source of different colors wherein the second LED
source is controlled to adjust the temperature of the emitted light. Final Act.
12-13 (citing Tarsa). Figure 3g ofTarsa is reproduced below.
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Application 14/074,938
F'fG.,.., .3' g' . . l. ""'"'-....:..: ...
"
Figure 3 g is a sectional view of a multiple element lamp as taught by Tarsa.
Tarsa 4:34--35; 7:19--23. The Examiner finds that disperser 45 ofTarsa (id.
at 7 :23-26) corresponds to claim 1 7 's recited conversion element. Final
Act. 12-13. In particular, the Examiner finds that the right-most semi-
hemispherical structure of Figure 3g (directly above the UV light)
corresponds to the conversion element. Ans. 4 (wavelength conversion
element 45 arranged to convert light from the second UV LED into yellow).
The Examiner finds that the second LED source is the "blue light" of Tarsa's
Figure 3g. Final Act. 13.
The Examiner finds that Tarsa "fails to disclose the second input
surface area being larger than, and non-planar with, the first input surface
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Application 14/074,938
area; providing the first light toward the first input surface area of the
wavelength conversion element 45." Id. at 13. The Examiner finds,
however, that Rutherford teaches LEDs having an orientation relative to a
wavelength conversion element that is the same as that of claim 17 (aside
from Rutherford not teaching that the LEDs with different peak emission
wavelengths). Id. at 13-14 (citing Rutherford).
In particular, the Examiner refers to Figure IA of Rutherford, which is
reproduced below.
Figure 1 A of Rutherford schematically illustrates an embodiment of a
volume fluorescent light unit according to the principles of the Rutherford
invention. Rutherford 2: 11-14.
The Examiner concludes that it would have been obvious to a person
of skill in the art to provide Tarsa with a wavelength modifier such as that of
Rutherford configured to provide the yellow light desired by Tarsa in order
to provide a more uniform light output. Ans. 8.
Appellant argues that the Examiner's obviousness conclusion is not
adequately based on teachings from the cited art. Id. at 12; see also Reply
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Br. 5-7. In particular, Appellant argues that neither of the Examiner's cited
references teach first and second lights with different peak emission
wavelengths where the first light emits toward a first side of the conversion
element (the side having a smaller surface area) and where the second light
emits toward the second side of the conversion element (the side with the
larger surface area). Appeal Br. 7; see also Reply Br. 3.
The Examiner appears to rely on two theories of obviousness. First,
the Examiner concludes that
it would have been obvious ... to simply substitute the known
conversion element of RUTHERFORD et al. for the conversion
element in the patented light delivery device of TARSA et al.,
to obtain the predictable result of providing a high efficiency
conversion element for down-converting light from the LED, as
per the teaching of RUTHERFORD et al.
Final Act. 14 (emphasis added). As explained above, the "conversion
element" of Tarsa, according to the Examiner, is labeled as 45 in Tarsa's
Figure 4g. Our understanding of the Examiner's rejection is that the
substitution proposed in the quotation supra would be a replacement of
Tarsa's disperser 45 that is directly above the UV light in Figure 4g. See
Ans. 4 (referring to "wavelength conversion element 45 arranged to convert
light from the second UV LED into yellow"), 5 (finding that Tarsa's "blue
light is not emitted directly towards the wavelength conversion
element 45").
Appellant argues that "any light from Tarsa's blue lamp 42 is not
emitted toward disperser 45." Appeal Br. 8. The Examiner responds by
finding that "some of the blue light dispersed by the semicircular end of
element 42 (as [depicted] in Figure 3g of TARSA et al.) would indeed
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Application 14/074,938
impinge on the wavelength conversion element 45, therefore broadly
meeting the 'towards the first input surface' limitation." Ans. 5.
We agree with the Examiner that the preponderance of the evidence
(including Figure 3g) indicates light from the Tarsa's "BLUE LIGHT"
would reach disperser 45 after passing through, for example, the disperser
situated above the blue light. This alone, however, does not meet the
recitations of claim 1 7. Rather claim 1 7 requires that the "second LED
source" (which the Examiner maps to Tarsa's BLUE LIGHT) be
"configured to emit second light ... toward the second input surface area of
the wavelength conversion element." Appeal Br. 17 (Claim App.) The
Examiner does not adequately explain how Tarsa's "BLUE LIGHT" (i.e.,
the blue light emitting LED at the bottom of Figure 3 g that the Examiner
maps to the second LED source) is configured to emit light toward disperser
45 (i.e., disperser 45 at the upper right of Figure 3g that the Examiner maps
to the conversion element). Rather, Figure 3g indicates that the blue LED
emits light upward into the separator portion of the light (labeled 42).
Whether or not light from the disperser above the blue LED eventually
reaches the disperser above the UV light is not relevant to whether the blue
LED itself (i.e., the second LED source) is configured to emit light "toward
the second input surface area of the wavelength conversion element." As
such, we do not sustain the Examiner's rejection of claim 17 based on a
simple substitution (Final Act. 14) of Tarsa Figure 3g's upper-right disperser
45 with the conversion element of Rutherford.
As a second theory of obviousness, the Examiner appears to maintain
that it would have been obvious to incorporate blue and UV lights of Figure
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3g into a structure such as that of Rutherford's Figure IA. In particular, the
Examiner states:
[T]he Examiner's obviousness rejection is not based on
physically replacing one conversion element for the other, but
in modifying the patented structure of T ARSA et al. in view of
the teachings provided by the wavelength conversion element
of RUTHERFORD et al. [I]t would have been well within the
level of one of ordinary skill to provide T ARSA et al. with a
wavelength modifier such as the one disclosed by
RUTHERFORD et al. configured to provide the yellow light
desired [b ]y T ARSA et al., motivated by the benefits provided
by a more uniform light output.
Ans. 8. In asserting this theory, the Examiner does not state in particular
where the person of skill would have placed the first LED source and the
second LED source, but the Examiner determines in the context of
addressing Appellant's claim 1 (a method claim having recitations similar to
those of claim 1 7) that "positioning the at least one auxiliary LED 44
orthogonally to the ceramic wavelength conversion element, as disclosed by
RUTHERFORD et al., would have flow[ ed] naturally to one of ordinary
skill in the art as necessitated by the specific illumination and/or spatial
requirements of a given application." Final Act. 6.
Appellant argues the Examiner has not adequately provided teachings
from the prior art to reach the particular arrangement of the first LED source
and second LED source of claim 17. See, e.g., Appeal Br. 6-10, 12; see also
Reply Br. passim. We agree with Appellant that because the Examiner has
not established that Tarsa teaches a second LED source that emits light
toward a wavelength conversion element as recited in claim 17 (as explained
above) and because Rutherford does not teach LED sources of different
wavelengths, the Examiner has not adequately explained how either
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reference teaches a particular orientation of different LED sources relative to
a conversion element. See, e.g., Reply Br. passim. To the extent the
Examiner takes the position that LED source location relative to the
conversion element is a result-effective variable, the Examiner has not, on
the present record, made findings adequate to establish that it was known in
the art to optimize light output by adjusting the position of different wave
length LEDs providing input to a wavelength conversion element.
Accordingly, we also do not sustain the Examiner's rejection of claim 17
based on the Examiner's second theory.
Because we do not sustain the Examiner's rejection of claim 17, we
also do not sustain the Examiner's rejection of claims 18-21 because each of
those claims depends from claim 1 7.
Appellant argues that the Examiner's rejection is in error with respect
to independent claims 1 and 6 for the same reasons as claim 17. Appeal Br.
12. We agree that the Examiner's position with respect to claim 6 is
deficient for the reasons explained above with respect to claim 1 7. We
therefore also do not sustain the Examiner's rejection of claim 6 or the
claims that depend from claim 6 (i.e., claims 7-16).
Claims 1-5.
Claim 1 and claim 17 have different scope. In particular, claim 1 does
not recite that the second LED source (referred to as an "auxiliary LED" in
claim 1) must emit light toward the wavelength conversion element. Rather,
claim 1 recites, for example, that the conversion element "includes a second
surface area for receiving the light emitted by the at least one auxiliary
LED." As explained above, a preponderance of the evidence (and, in
particular, Tarsa's Figure 3g) supports that light from Tarsa's disperser
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above the "BLUE LIGHT" reaches disperser 45. Thus, the conversion
element has a surface area for receiving light emitted from the blue LED
(i.e., the auxiliary LED). Claim 1, as written, does not require that the light
comes directly from the auxiliary LED. Accordingly, Appellant's arguments
discussed above with respect to claim 17 do not identify persuasive error in
the Examiner's first theory of obviousness.
Appellant also argues that a person of ordinary skill in the art would
not combine Tarsa and Rutherford in the manner asserted by the Examiner
because doing so would frustrate Tarsa's purpose. Appeal Br. 10-11.
Appellant's argument focuses on why the upper-left disperser of Tarsa's
Figure 3g (above the blue light) would not be substituted. Id. As explained
above, however, the Examiner's first obviousness theory is based on
substituting the upper-right disperser of Tarsa's Figure 3g (above the UV
light). Moreover, Appellant does not establish harmful error in the proposed
substitution because Tarsa teaches that its dispersers may be wavelength
conversion elements. See, e.g., Tarsa 4:63---67 ("The Disperser ... may also
contain elements ... to change the wavelength of at least some of the
incident light.").
Because Appellant does not persuasively identify error, we sustain the
Examiner's rejection of claims 1-5.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 1-5. We reverse the Examiner's rejection of claims 6-21.
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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-IN-PART
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