Ex Parte JansmaDownload PDFBoard of Patent Appeals and InterferencesJan 16, 200910867084 (B.P.A.I. Jan. 16, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JON B. JANSMA ____________ Appeal 2008-3939 Application 10/867,084 Technology Center 1700 ____________ Decided: January 16, 2009 ____________ Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and JEFFREY B. ROBERTSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests reconsideration of our Decision of September 25, 2008 (“Decision”) wherein we sustained the Examiner's rejections of the appealed claims under 35 U.S.C. § 103(a). Appellant contends that: Appeal 2008-3939 Application 10/867,084 the Board overlooked the key fact that the Tateiwa reference specifically teaches away, in all cases, from dissolving rare earth compounds in a phosphor-coating liquid. A review of the Board’s Decision indicates that this fact was not given proper weight in evaluating the current obviousness rejection and affirming the Examiner; it was absent from the Board’s findings of fact. The appellant believes that had the facts regarding Tateiwa’s teachings against dissolving a rare earth compound been properly found, the resulting ‘teaching away’ would have presented that reference’s proposed combination with Bruno in a new light, and the Examiner’s Section 103(a) rejections of the claims would have been reversed. (Request for Rehearing “Request” 2.) (Emphasis in original). We have reviewed our Decision in light of the arguments presented by Appellant in the Request. However, we are not persuaded that our Decision was in error. Appellant’s argument is unpersuasive because it is based on the incorrect proposition that we overlooked Tateiwa’s teachings with respect to the use of solid rare earth particles. Indeed, Appellant quotes the Decision on page 8, where we explicitly addressed Appellant’s arguments in this regard. (Request 6 and 8). Appellant contends that Tateiwa teaches a specific composition and nowhere teaches that the coating steps “may or should be applied to other compositions.” (Request 7). However, in the Decision, we stated that Appellant’s argument unduly focuses on the individual teachings of the reference rather than what the prior art conveys as a whole. See Keller, 642 F.2d at 425-26; Merck & Co., Inc., 800 F.2d at 1097-98. Tateiwa is relied on for teaching the equivalence of processes of applying phosphor coatings to fluorescent bulb surfaces, not for the particular coating composition applied. 2 Appeal 2008-3939 Application 10/867,084 (Decision 8). Appellant argues that the Examiner has not considered Tateiwa as a whole, but instead “cherry-picks” particular coating steps out of Tateiwa. (Request 7). Appellant contends that Tateiwa teaches the skilled artisan that different compositions are not equivalent and cannot be equivalently applied. (Request 7). Appellant’s arguments are not persuasive, because as we stated in the Decision: Although Tateiwa discloses use of a medium that does not dissolve the rare earth compound, there is no teaching in Tateiwa that expressly discredits, criticizes or otherwise discourages the use of a medium that dissolves the rare earth compound. Thus, Tateiwa does not teach away from rare earth compounds in solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). (Decision 8). Appellant argues that Tateiwa expressly discourages dissolved rare earth compounds. (Request 8 and 9). However, Tateiwa’s disclosure regarding fine particles does not amount to an express criticism of the use of dissolved materials or that Tateiwa’s coating process would be inoperable with Bruno’s composition. Appellant argues that Tateiwa’s coating methods are not necessarily applicable to Bruno’s composition, and would not necessarily produce the results predicted by the Examiner. (Request 7). Appellant’s argument is not persuasive because: Appellant has provided no additional evidence that the solubility of the rare earth compound would affect the coating performance to rebut the Examiner’s finding that one of ordinary skill in the art would have had a reasonable expectation of success in applying the method of Tateiwa to the compositions of Bruno. 3 Appeal 2008-3939 Application 10/867,084 (Decision 8). Appellant also argues for the first time in this appeal that “the inventors of Tateiwa found that coating compositions having fine particles of rare earth compounds (i.e. undissolved) improve luminous flux (see col. 2, lines 32-38).” (Request 5) (emphasis in original). Appellant argues that we “did not lend due weight to the fact that Tateiwa teaches that the rare earth compounds of the phosphor-coating liquid must be present in the form of fine particles” and that Tateiwa discloses the “negative consequences of dissolving those particles (damaged luminous flux), which derive [sic] Tateiwa’s invention of its stated function.” (Request 6) (emphasis in original). This is the first time on appeal that Appellant has argued that Tateiwa’s improvements in luminous flux are solely the result of the physical state of the materials (i.e., solid particles versus dissolved material), rather than the chemical difference between the rare earth compounds employed by Tateiwa and the alkaline earth borates or glasses of the prior art. In accordance with 37 C.F.R. § 41.52, because such new arguments are not made regarding a “recent relevant decision of the Board or a Federal Court” or in response to a new grounds of rejection under § 41.50(b), Appellant’s newly advanced arguments have not been considered. In conclusion, based on the foregoing, we have granted Appellant’s request to the extent that we have reconsidered our decision, but we deny Appellant’s request to make any change therein. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 4 Appeal 2008-3939 Application 10/867,084 DENIED PL Initial: sld PEARNE & GORDON LLP 1801 EAST 9TH STREET SUITE 1200 CLEVELAND, OH 44114-3108 5 Copy with citationCopy as parenthetical citation