11411858 (B.P.A.I. Aug. 29, 2011)

Ex Parte Jones

Board of Patent Appeals and InterferencesAug 29, 2011

11411858 (B.P.A.I. Aug. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte JOSEPH BACHIR JONES __________ Appeal 2009-012719 Application 11/411,858 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and MICHAEL P. COLAIANNI, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision finally rejecting claims 29-62 which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2009-012719 Application 11/411,858 2 The subject matter on appeal is directed to a piece of equipment comprising a photoluminescent material and a method for improving visibility using the same photoluminescent material. Claim 29, reproduced below, is illustrative. 29. A moveable piece of equipment for use in supporting a military operation, the moveable piece of equipment comprising: a photoluminescent application to a surface of the moveable piece of equipment comprising a plurality of strontium aluminate phosphor crystals, wherein the photoluminescent application exhibits a luminance of greater than or equal to 0.05 millicandela per square meter (mcd/m2) for a period of at least 4000 minutes. Br., Claims Appendix.1 The following Examiner’s rejections are before us on appeal: (1) Claims 29-34, 43, 46-51, and 60 are rejected under 35 U.S.C. § 102(a) as anticipated by Ohkoshi.2 (2) Claims 29-32, 34, 35, 37, 43, 46-49, 51, 52, 54, and 60 are rejected under 35 U.S.C. § 102(e) as anticipated by Landry.3 (3) Claims 29, 30, 32-34, 46, 47, 50, and 51 are rejected under 35 U.S.C. § 102(e) as anticipated by Goedel.4 (4) Claims 29-34, 38, 42, 44-51, 55, 59, 61, and 62 are rejected under 35 U.S.C. § 102(b) as anticipated by Fischer.5 1 Appeal Brief dated October 3, 2008. 2 WO 2004/044065 A1 dated May 27, 2004. Our consideration of Ohkoshi is based on US 2006/0014031 A1 published January 19, 2006, which the Examiner relies on, without objection by the Appellant, as evidence of the disclosure of WO 2004/044065 A1. 3 US 2006/0046093 A1 published March 2, 2006. 4 US 2005/0034648 A1 published February 17, 2005. Appeal 2009-012719 Application 11/411,858 3 (5) Claims 29-33, 38-40, 42, 46-50, 55-57, and 59 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Zampa6 and Murayama.7 (6) Claims 36 and 53 are rejected under 35 U.S.C. § 103(a) as unpatentable over Landry. (7) Claims 41 and 58 are rejected under 35 U.S.C. § 103(a) as unpatentable over Fischer. B. ISSUE Did the Examiner reversible err in finding that each of Ohkoshi, Landry, Goedel, Fischer, and Murayama describes a strontium aluminate phosphor material applied to the surface of an article wherein the material exhibits a luminance of greater than or equal to 0.05 millicandela per square meter (mcd/m2) for a period of at least 4000 minutes? For the reasons set forth below, we answer this question in the affirmative. C. DISCUSSION The Examiner finds that each of Ohkoshi, Landry, Goedel, Fischer, and Murayama describes a strontium aluminate phosphor material applied to the surface of an article. The Examiner finds that the phosphor material described in each of these references inherently exhibits the claimed luminance because the material is the same as the claimed strontium aluminate phosphor material. Ans. 3- 5.8 5 US 6,696,126 B1 issued February 24, 2004. 6 US 5,415,911 issued May 16, 1995. 7 US 5,424,006 issued June 13, 1995. 8 Examiner’s Answer dated January 16, 2009. Appeal 2009-012719 Application 11/411,858 4 The Appellant argues that the luminescent properties of a particular material do not necessarily flow from the material. Rather, the Appellant argues that the luminescent properties of a particular material depend on the quality of the photoluminescent pigment used, as well as the make-up and use of the composition containing the pigment material. For support, the Appellant directs our attention to paragraphs [0046] and [0047] of the Specification. Br. 11, 15, 19, 24, 32. According to the Specification, the type of phosphor is one of several factors that are said to effect luminance performance. Spec., para. [0033]. The Appellants disclose that the concentration of SrAl crystals and/or the size of the crystals as well as the thickness of the luminescent layer are said to effect luminance performance. Spec., paras. [0046], [0047]. Thus, based on the record before us, the mere fact that Ohkoshi, Landry, Fischer, and Murayama each describe the same type of phosphor recited in the claims on appeal is not sufficient to support a finding of inherency. For this reason, the § 102(a) rejection based on Ohkoshi, the § 102(e) rejection based on Landry, the § 102(b) rejection based on Fischer, and the § 103(a) rejection based on the combination of Zampa and Murayama are reversed. As for Goedel, there is no dispute that Goedel describes a lanthanide doped strontium aluminate photoluminescent material having an afterglow corresponding to a luminance of at least 0.3 mCd/m2 for at least 1000 minutes. Br. 18, Goedel, para. [0008]. This range overlaps, but does not anticipate, the claimed range of greater than or equal to 0.05 mcd/m2 for a period of at least 4000 minutes.9 See 9 We understand that “mCd/m2” and “mcd/m2” are both abbreviations for millicandela per square meter. Appeal 2009-012719 Application 11/411,858 5 Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006) (the disclosure of a genus is not necessarily a disclosure of every species that is a member of that genus). Therefore, the § 102(e) rejection based on Goedel is reversed. Finally, the Examiner rejects dependent claims 36 and 53 under § 103(a) based on Landry and claims 41 and 58 under § 103(a) based on Fischer. However, the Examiner does not contend that the claimed luminance is rendered obvious by the teachings of either of these references. For example, the Examiner finds that Landry discloses a photoluminescent layer having a thickness that overlaps the claimed range, but the Examiner does not contend that this overlap results in a luminance within the claimed range.10 See Ans. 6. Therefore, these rejections are also reversed. C. DECISION The decision of the Examiner is reversed. REVERSED tc/sld 10 The Appellant contends that the thickness disclosed in Landry “encompasses” the thickness recited in claims 36 and 53. Br. 34.