Ex Parte Jansma

Board of Patent Appeals and Interferences

Jan 16, 2009

10867084 (B.P.A.I. Jan. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JON B. JANSMA
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Appeal 2008-3939
Application 10/867,084
Technology Center 1700
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Decided: January 16, 2009
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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.

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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.
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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).

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Appeal 2008-3939
Application 10/867,084

DENIED

PL Initial:
sld

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