Ex Parte Jansma

Board of Patent Appeals and Interferences

Sep 25, 2008

10867084 (B.P.A.I. Sep. 25, 2008)

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
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Decided: September 25, 2008
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Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appeal 2008-3939
Application 10/867,084

Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 14, 15, 20, 21, and 23-25.1 (Examiner’s
Answer entered November 14, 2007, hereinafter “Ans.”). We have
jurisdiction pursuant to 35 U.S.C. § 6(b) (2002).
We AFFIRM.
THE INVENTION
Appellant’s claimed invention is directed to a method for providing a
coating layer on a glass envelope of a fluorescent lamp. The method
comprises providing a suspension of 1-10 wt. % of coating layer substrate
particles in deionized water, dissolving yttrium salt in the suspension, and
acidifying the suspension to a pH of 3-6. (Spec. 3, ll. 15-18, 9, ll. 4 and 14-
17). The resulting suspension is applied to the inner surface of a glass
envelope, and then dried, causing the yttrium salt to recrystallize. (Spec. 3,
ll. 19-25, 10, l. 21- 11, l. 2). The deposited layer is then baked to further dry
the coating layer as well as to oxidize the recrystallized yttrium salt to form
yttria. (Spec. 3, ll. 25-28, 11, ll. 6-8). Appellant also claims that a film of
crystallized yttrium salt is coated over the surfaces of the coating layer
substrate particles and the inner surface of said glass envelope. (Spec. 7, ll.
14-18). Appellant further claims that the substrate particles are phosphor
particles. (Spec. 7, ll. 1-18).
Claims 14, 15, and 20, reproduced below, are representative of the
subject matter on appeal.
14. A method of providing a coating layer on a glass envelope
of a fluorescent lamp comprising the steps of:

1 Claims 16-19 and 22 have been withdrawn from consideration and claims
1-13 have been canceled. (Appeal Brief filed August 31, 2007, hereinafter
“Br.,” 3).
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(a) providing a suspension of 1-10 wt.% coating layer
substrate particles in a suspension medium of
deionized water;
(b) dissolving a yttrium salt in said suspension;
(c) acidifying said suspension to bring the suspension
to a pH of 3-6;
(d) applying said suspension to the inner surface of the
glass envelope of said fluorescent lamp;
(e) drying said suspension on said inner surface of
said glass envelope to provide an at least partially
dried coating layer, said dissolved yttrium salt
being at least partially recrystallized thereby; and
(f) baking said coating layer to dry said coating layer,
and to oxidize said recrystallized yttrium salt to
yttria, said yttria being dispersed throughout said
coating layer.

15. A method according to claim 14, step (e) further
comprising providing a film of crystallized yttrium salt coated
over the surfaces of said coating layer substrate particles and
said inner surface of said glass envelope.

20. A method according to claim 14, wherein said coating layer
is a phosphor layer, said coating layer substrate particles being
phosphor particles.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bruno 5,382,452 Jan. 17, 1995
Tateiwa 5,417,886 May 23, 1995

The Examiner rejected claims 14, 15, 20, 21, and 23-25 under 35
U.S.C. § 103(a) as being unpatentable over Bruno in view of Tateiwa. The
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Application 10/867,084

Examiner found that Bruno did not teach applying a suspension to the inner
surface of a glass envelope where drying and baking of the resulting coating
layer occurs on the glass envelope. (Ans. 3). The Examiner found that
Tateiwa teaches that coating particles and decomposable compounds may be
co-deposited directly onto the surface of fluorescent lamps prior to calcining
and decomposition. (Ans. 4). The Examiner determined that it would have
been obvious to deposit the slurry of Bruno prior to drying and calcining in
view of Tateiwa in order to reduce the number of steps. (Ans. 4).
Appellant contends that Tateiwa does not teach that coating particles
and decomposable compounds may be co-deposited onto the surface of
fluorescent lamps. (Br. 12). Appellant argues that the phosphor particles
and the rare earth compounds in Tateiwa are solids, and that Tateiwa teaches
not to dissolve the rare earth compounds. (Br. 13 and 14). Appellant also
argues that Bruno is directed to making luminescent particles while Tateiwa
starts with luminescent particles, such that one of ordinary skill in the art
would not have combined these references without guidance from present
claim 14. (Reply Brief filed Jan. 1, 2008, hereinafter “Rep.,” 2). Appellant
argues that the same results are not necessarily achieved by applying the
composition of Bruno in the process of Tateiwa. (Rep. 2). Appellant further
contends that the calcining step disclosed in Bruno is performed at
temperatures that would damage the glass envelope if carried out after
coating the envelope. (Rep. 3).
ISSUE
Has Appellant shown that the Examiner erred in determining that the
appealed claims would have been obvious to one of ordinary skill in the art
over the cited prior art of record?
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Application 10/867,084

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Bruno states:
It will be appreciated, however, that this optimal loading [of the
luminescent coating] will vary with 1) the size of the core
particles, 2) the relative densities of the core and luminescent
coating, 3) factors relating to the end use application, among
other factors.
(Col. 5, ll. 19-23).

2. Bruno states:
While particular emphasis in the above description has been
placed on coating a single luminescent material about a core
particle, it is to be understood that the invention covers a
plurality of luminescent coatings, e.g., the luminescent material
may comprise a plurality of, for example, successive coatings
that absorb and/or emit the same and/or different colors.
Further, the invention may be employed to provide a mixed
composition luminescent coating, e.g., a coating comprising at
least one layer which includes a plurality of luminescent
materials . . . In some cases, it can be desirable to employ a
mechanical mixture of luminescent coated particles which have
distinct sizes, compositions, among other characteristics.
(Col. 11, ll. 38-59).

3. Bruno states:
Accordingly, by appropriately selecting a core material(s),
luminescent coating(s), coating process, mixtures of coated
materials, and optional post-treatments, the luminescent
composition of the invention can be tailored to satisfy a
virtually unlimited array of end product applications.
(Col. 11, ll. 59-65).

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4. Bruno discloses that calcining takes place temperatures of about
800ºC to 1300ºC. (Col. 10, ll. 62-64)
5. Tateiwa discloses either that a coated phosphor particle may be
prepared and then formed into a phosphor-coating liquid, or that a
phosphor-coating liquid may be directly prepared and applied to
the inner wall of a fluorescent bulb. (Col. 3, ll. 12-16, col. 4, ll.
33-62).
6. Tateiwa states:
The subsequent steps for the manufacture of a lamp may be
carried out in a conventional manner. Thus, after the phosphor
layer is formed on the bulb inner wall as described above, the
bulb is formed into a circular shape (forming temperature:
around 800ºC.), if desired.
(Col. 4, l. 65 – col. 5, l. 2).

7. Tateiwa states:
The rare earth compounds used in the present invention may
be used in the form of an oxide, or may be a precursor of the
oxide, which can ultimately be converted into the
corresponding oxidic compounds, including oxides, in a baking
step, which will be explained later, or in the forming step,
including forming the bulb into a circular shape.
(Col. 2, ll. 60-66).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
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In order to establish a prima facie case of obviousness, prior art is
evaluated based on what it, as a whole, conveys to one of ordinary skill in
the art, rather than the specific teaching of each reference. In re
McLaughlin, 443 F.2d 1392 (CCPA 1971); In re Simon, 461 F.2d 1387
(CCPA 1972). In responding to a prima facie case of obviousness, one
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir.
1986).

ANALYSIS
We confine our discussion to appealed claims 14, 15, and 20, which
contain the claim limitations representative of the arguments made by
Appellant pursuant to 37 C.F.R. § 41.37(c)(1)(vii) (2006).
We are not persuaded by Appellant’s argument that Tateiwa fails to
teach that the coating particles and decomposable compounds are co-
deposited on glass envelope surfaces of fluorescent lamps. Tateiwa clearly
discloses either that a coated phosphor particle may be prepared and then
formed into a phosphor-coating liquid, or that a phosphor-coating liquid may
be directly prepared and applied to the inner wall of a fluorescent bulb. (FF
5; Ans. 5). Thus, we are in complete agreement with the Examiner’s
conclusion that in view of Tateiwa, it would have been obvious to apply the
slurry of Bruno to the inner surface of a fluorescent bulb prior to the drying
and calcining steps in order to reduce the number of steps in preparing the
coated glass envelope. (Ans. 4).
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Appellant further argues that the references cannot be combined
because Tateiwa requires solid particles of rare earth compound as opposed
to dissolved rare earth compounds as disclosed in Bruno. However,
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. (Ans. 6).
Appellant’s contention that the process disclosed in Tateiwa would
not necessarily function with any coating compositions is also not
persuasive. 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). 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. In re Schulze, 346 F.2d
600, 602 (CCPA 1965).
Appellant also argues that Bruno requires calcining at temperatures
above 1000ºC. (Rep. 3). Appellant’s argument unduly limits Bruno’s
disclosure to the examples. See In re Heck, 699 F.2d 1331, 1332-33 (Fed.
Cir. 1983)(quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)).
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Bruno discloses that calcining takes place at temperatures of about 800ºC to
1300ºC. (FF 4). Thus, Bruno does not require calcining at temperatures
above 1000ºC. Moreover, Appellant has presented no evidence to support
the contention that the calcining temperature disclosed in Bruno would have
damaged or destroyed the glass envelope. Indeed, the references themselves
directly contradict Appellant’s argument. Tateiwa discloses that the
phosphor coating may be applied prior to formation of the bulb, and that the
rare earth compounds may be converted to oxides in the bulb-forming step.
(FF 6 and 7). Tateiwa also discloses that the bulb is formed successfully at
around 800ºC, which overlaps Bruno’s calcining temperatures of about
800ºC to 1300ºC. (FF 4 and 6). Therefore rather than damaging or
destroying the bulb, Bruno and Tateiwa provide a reasonable expectation of
success in applying the composition of Bruno to a bulb surface prior to
drying and calcining.
Regarding claim 15, the Examiner contends that excess yttrium salt
not coated on a substrate particle would necessarily be coated onto the glass
envelope. (Ans. 7). Appellant argues that there would be no excess yttrium
salt available to deposit a film on the inner surface of the surface of the glass
envelope, because the point of Bruno is to avoid wasting luminescent
material. (Rep. 6). However, Appellant’s argument fails to consider the
coating process which results from the combination of Bruno and Tateiwa as
a whole. Specifically, Bruno teaches that the loading of the luminescent
material in the coating may vary with factors relating to end use application
or other factors. (FF 1). Bruno also teaches that the coating process may be
selected to tailor the coating to a desired end product application. (FF 3).
Thus, Bruno does not contradict the Examiner’s finding that the combination
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of Bruno and Tateiwa would suggest forming a layer comprised of yttrium
salt on a substrate particle and a glass envelope. (Ans. 7).
Regarding claim 20, Appellant’s argument that Bruno teaches away
from using phosphor particles as the inert core particles is not persuasive.
Appellant contends that substituting phosphor particles for the inert core
particles would negate the cost-savings rationale disclosed in Bruno and
render the coated structure in Bruno useless. (Br. 17 and 18). Appellant
additionally argues that Bruno’s concern with the expense of phosphor
particles criticizes, discredits and discourages the use of bulk phosphor
particles. See In re Fulton, 391 F.3d at 1201. We are not persuaded. The
additional expense incurred by substituting a phosphor particle as the inert
core particle would not discourage one of ordinary skill in the art from
making the substitution proposed by the Examiner. “That a given
combination would not be made by businessmen for economic reasons does
not mean that persons skilled in the art would not make the combination
because of some technological incompatibility.” In re Farenkopf, 713 F.2d
714, 718 (Fed. Cir. 1983)(reference does not teach away from addition of
inhibitor to an Angiotensin I standard solution or composition, where
reference indicated that adding inhibitor “can be costly”). Additionally,
Bruno states that “by appropriately selecting a core material(s), luminescent
coating(s), coating process, mixtures of coated materials, and optional post-
treatments, the luminescent composition of the invention can be tailored to
satisfy a virtually unlimited array of end product applications.” (FF 3).
Thus, although Bruno is concerned with cost-efficiency, Bruno also teaches
that the core particles may be varied and multiple luminescent materials may
be employed. (FF 2 and 3). Therefore, we are not persuaded that Bruno
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teaches away from employing phosphor particles disclosed in Tateiwa as the
inert core particles as determined by the Examiner. (Ans. 7-9).

CONCLUSION
In light of the above discussion, Appellant failed to demonstrate that
the Examiner erred in rejecting claims 14, 15, 20, 21, and 23-25 under 35
U.S.C. § 103(a) as being unpatentable over Bruno in view of Tateiwa.

ORDER
The Examiner’s decision rejecting claims 14, 15, 20, 21, and 23-25 is
affirmed.
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).
AFFIRMED

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