Ex Parte Honda

Board of Patent Appeals and Interferences

Sep 12, 2002

08649487 (B.P.A.I. Sep. 12, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HISASHI HONDA
____________
Appeal No. 2000-1324
Application No. 08/649,487
____________
ON BRIEF
____________
Before KRASS, RUGGIERO, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 17 and 18, which are all of the claims
pending in this application.
Appellant's invention relates to a luminaire with a photo
catalytic layer formed on the outer surface thereof for absorbing
ultraviolet radiation produced by the light source within the
luminaire and for decomposing malodorous sources and dust
particles and the like. The photo catalytic layer is 0.01 to 0.3
microns thick and is formed of anatase form of titanium oxide.
Appeal No. 2000-1324
Application No. 08/649,487
1 The examiner refers to this reference as Fujishima, Akira's first
name. We will use the last name of Akira. Further, our understanding of this
reference is based upon a translation provided by the Translations Branch of
the Patent and Trademark Office, a copy of which is attached to this decision.
2
Claim 17 is illustrative of the claimed invention, and it reads
as follows:
17. A lighting apparatus comprising:
a luminaire having a light-transmitting portion;
a light source housed in the luminaire, the light source
radiating ultraviolet rays having a wavelength below 410 nm;
a photo catalytic layer provided on an outer surface of the
light-transmitting portion, the photo catalytic layer
substantially including anatase form of titanium oxide and having
a thickness of 0.01 to 0.3 microns; and
wherein the light source is housed in the luminaire so that
the light source irradiates an inner surface of the light-
transmitting portion and the catalytic layer receives the
ultraviolet rays having at least 0.01 nW/cm2 intensity through
the light-transmitting portion.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Taoda et al. (Taoda) 5,650,126 Jul. 22, 1997
(filed Sep. 25, 1995)
Akira et al. (Akira)1 JP 7-111104 Apr. 25, 1995
(Japanese Kokai)
Claims 17 and 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Akira in view of Taoda.
Reference is made to the Examiner's Answer (Paper No. 19,
mailed November 15, 1999) for the examiner's complete reasoning
Appeal No. 2000-1324
Application No. 08/649,487
3
in support of the rejection, and to appellant's Brief (Paper No.
15, filed May 25, 1999), Supplemental Brief (Paper No. 18, filed
September 24, 1999), and Reply Brief (Paper No. 20, filed January
14, 2000) for appellant's arguments thereagainst.
OPINION
We have carefully considered the claims, the applied prior
art references, and the respective positions articulated by
appellant and the examiner. As a consequence of our review, we
will reverse the obviousness rejection of claims 17 and 18.
Independent claim 17 recites, in pertinent part, "a photo
catalytic layer provided on an outer surface of the light-
transmitting portion [of the luminaire]" (underlining ours for
emphasis). Although Akira clearly states (e.g., Translation page
6) that the titanium oxide or photo catalytic layer is formed on
the inner surface of the cover component of the lighting system,
the examiner contends (Answer, pages 4-5) that "[i]t would have
been obvious to have a layer inside or outside of the
transmitting portion, since this would fall withing [sic] the
routine design capabilities of the artisan."
The examiner has clearly overlooked the explicit teaching of
Akira (Translation, page 6) that "[t]he semiconductor is directly
irradiated by the light emitter because it (the semiconductor)
Appeal No. 2000-1324
Application No. 08/649,487
4
adheres to the inner surface of the cover component, which
thereby allows an effective photocatalytic reaction to ensue."
Modifying Akira's lighting device to include the photo catalytic
layer on the outside surface would destroy the purpose of the
invention. The Federal Circuit has held that "a proposed
modification [is] inappropriate for an obviousness inquiry when
the modification render[s] the prior art reference inoperable for
its intended purpose." In re Fritch, 23 USPQ2d 1780, n. 12,
citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). Accordingly, it would not have been obvious to the
skilled artisan to modify Akira's lighting device to have the
photo catalytic layer on the outside surface.
The examiner further asserts (Answer, page 5) that:
It would have been an expedient of an artisan to use
layer on outside or inside of the transmitting portion,
since applicant has not disclosed that layer on the
outside surface solves any stated problem or is for any
particular purpose and it appears that the invention
would perform equally well with layer on the inside
surface.
However, appellant (throughout the specification) discloses
forming the photo catalytic layer on the outer surface to
decompose materials attached to the surface of the luminaire such
as sources of bad smells and dust, nicotine or oil stains, while
still absorbing harmful ultraviolet radiation.
Appeal No. 2000-1324
Application No. 08/649,487
5
Also, the examiner states (Answer, page 6) that "to use a
titanium oxide layer in a luminaire for deodorizing purpose,
he/she [the artisan] must have to coat such layer on the glass
globe since the lamp 61 is housed in the globe 63. If artisan
coats the lamp 61 . . ., it would serve no purpose." However, as
pointed out by appellant (Reply Brief, page 2), the examiner has
failed to appreciate how Akira's device accomplishes its
deodorizing function. Akira discloses (Translation, pages 10-
11):
The air in the cover component (3) becomes heated at
this time, and is discharged to the outside from the
gas discharge aperture (3B). Fresh air simultaneously
flows in from the outside through the influx aperture
(3A) therein (3). The odoriferous and harmful gases
flow into the cover component (3) along with the air,
are rendered odorless and harmless by the
photocatalytic reaction, and discharged to the outside.
Orderly repetition of this process purifies the entire
room interior space and other enclosed places.
Thus, contrary to the examiner's assertions, the titanium oxide
layer does not need to be on the outside of the luminaire for
deodorizing purposes, as Akira clearly discloses a device which
accomplishes such functions with the photo catalytic layer on the
inner surface of the luminaire. Therefore, the examiner has
failed to provide appropriate evidence or a convincing line of
reasoning to establish a prima facie case of obviousness.
Appeal No. 2000-1324
Application No. 08/649,487
6
Consequently, we cannot sustain the rejection of claim 17 or
claim 18, dependent therefrom.
CONCLUSION
The decision of the examiner rejecting claims 17 and 18
under 35 U.S.C. § 103 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
apg/vsh
Appeal No. 2000-1324
Application No. 08/649,487
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