Ex Parte Koole et al

Patent Trial and Appeal Board

Dec 8, 2016

13637909 (P.T.A.B. Dec. 8, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/637,909 12/05/2012 Roelof Koole 2010P00349WOUS 5999
136186 7590
Lumileds LLC
370 West Trimble Road
San Jose, CA 95131
12/12/2016 EXAMINER
MARTIN, BETHANY LAMBRIGHT
ART UNIT PAPER NUMBER
1758
NOTIFICATION DATE DELIVERY MODE
12/12/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
nancy.glynn@philips.com
us-ip@patentlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROELOF KOOLE, ARJAN JEROEN HOUTEPEN and
CORNELIS REINDER RONDA
Appeal 2015-006423
Application 13/637,909
Technology Center 1700
Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
BRIAN D. RANGE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-006423
Application 13/637,909
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2
finally rejecting claims 1—13 and 16—22. We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM.
The invention relates to “a luminescent converter for converting parts of
the spectrum of incident light to larger wavelengths” that has “improved
characteristics in terms of efficiency and cost.” Specification filed Sept. 27, 2012
(“Spec.”) 1:6—7, 21—22. Claim 1 is illustrative of the invention, and is reproduced
below:
1. A solar power generator comprising:
a luminescent solar concentrator having a luminescent
converter configured to absorb a first light having a first wavelength
within a solar spectrum and emit a second light having a second
wavelength within a reemission spectrum, the luminescent converter
comprising a matrix and fluorophores within or on the matrix, the
fluorophores comprise magic-sized clusters (MSCs) of a luminescent
material; and
a photo cell arranged to receive the second light from the
luminescent converter.
App. Br. 12 (Claims App’x).
The Examiner maintains the following rejections under pre-AIA 35 U.S.C. §
103(a) (see Examiner’s Answer mailed Apr. 16, 2015 (“Ans.”), 3—14):
1. claims 1—5, 8—10, 12, 13, 16, 20, 21, and 22 over Debije et al. (US
2009/0044861 Al, pub. Feb. 19, 2009) and Evans et al. (Ultrabright PbSe Magic-
Sized Clusters, American Chemical Society, Nano Lett. 8(9), 2896—2899
(2008)(“Evans”));
1 Appellants identity the real party in interest as Koninklijke Philips N.V. Appeal
Brief filed Dec. 23, 2014 (“App. Br.”), 2.
2 Final Office Action mailed July 29, 2014 (“Final Act.”).
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Appeal 2015-006423
Application 13/637,909
2. claims 6 and 17 over Debije, Evans, and Bramer et al. (PbSe/PbS and
PbSe/PbjSei-x S Core/Shore Nanocrystals, Adv. Funct. Mater. 15, 111 1—1116
(2005) (“Brumer”));
3. claims 7, 18, and 19 over Debije, Evans, and Maskaly et al. (US
2010/0013376 Al, pub. Jan. 21, 2010 (“Maskaly”)); and
4. claim 11 over Debije, Evans, and Bhaumik et al. (US 2010/0043875
Al, pub. Feb. 25, 2010 (“Bhaumik”)).3
Appellants rely on limitations in claim 1 in support of patentability as to all
appealed claims. See generally, App. Br. 3—10. Specifically, Appellants contend
the Examiner reversibly erred in determining the invention as recited in claim 1
would have been obvious because:
(i) neither Debije nor Evans teaches or suggest a luminescent solar
concentrator having magic-sized clusters (MSC’s) of a luminescent
material; (ii) the proposed combination changes the functionality of
the photoluminsecent materials of Debije, and (iii) neither Debije nor
Evans provide any evidence that one skilled in the art would have had
a reasonable] expectation that the MSCs of Evans can be predictably
substituted for the photo luminescent material of Debije to improve
solar cell efficiency.
Id. at 3^4.
The Examiner fully addresses Appellants’ arguments in the Response to
Argument section of the Answer, and convincingly explains why these arguments
3 The Examiner does not explicitly identify the rejection of claims 4, 5, and 16
under 35 U.S.C. § 112, 2nd paragraph, as having been withdrawn. See generally
Ans.; Reply Brief filed June 16, 2015 (“Reply Br.”), 2—3. The Examiner, however,
does not include this rejection in the discussion of the grounds of rejection
applicable to the appealed claims (Ans. 2—14) and indicates, in the Advisory
Action mailed October 9, 2014, that the rejection of claims 4, 5, and 16 under 35
U.S.C. § 112, 2nd paragraph, was overcome by Appellants’ Amendment filed
September 29, 2014. We, therefore, view the rejection under 35 U.S.C. § 112, 2nd
paragraph, as having been withdrawn.
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Application 13/637,909
are not persuasive of error in the facts and reasons relied upon by the Examiner in
determining the claimed invention would have been obvious in view of the applied
prior art. See Ans. 14—20. We find a preponderance of the evidence on this appeal
record supports the Examiner’s conclusion of obviousness as to claims 1—13 and
16—22, and adopt the Examiner’s fact finding and reasoning, as set forth in the
Final Office Action and the Answer, in sustaining the Examiner’s rejections of
claims 1—13 and 16—22. We add the following comments to address arguments in
the Reply Brief.
Appellants argue the disclosure in Debije relied upon by the Examiner does
not support a finding that the ordinary artisan would have had a reasonable
expectation of success in using MSCs as the luminescent molecules in Debije’s
solar concentrator. See Reply Br. 4—6. Appellants argue, more specifically, that
one of ordinary skill in the art would have understood from Debije that “the spatial
orientation of its photoluminescent material [i]s essential for improving efficiency
of its luminescent solar cell” and, therefore, “would not have had a reason to, and
instead [would have been] discouraged from substituting the oriented
photoluminescent material of Debije with MSCs” “which do not require any spatial
alignment in a particular direction” {id. at 4—5), i.e., which do not have a prevailing
spatial orientation (App. Br. 6). Appellants contend Debije’s disclosure does not
support the Examiner’s finding that spatial orientation of the photoluminescent
material comes from the alignment of the polymer matrix containing the material.
Reply Br. 4—5. Appellants argue that, to the contrary, Debije paragraph 102
teaches “the spatial orientation of its photoluminescent material can be achieved by
having both an oriented material and an aligned polymer matrix.” Id. at 5.
In finding that spatial orientation of the photoluminescent material comes
from the alignment of the polymer matrix, the Examiner relies not only on
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Appeal 2015-006423
Application 13/637,909
paragraph 102 of Debije, but also on paragraphs 103—109. See Ans. 17. In
paragraph 105, Debije discloses that “[t]he alignment of the photoluminescent
material is achieved by immobilising the photoluminescent material within an
aligned polymer matrix.” Likewise, in paragraph 84, relied upon by Appellants in
support of their argument (Reply Br. 4), Debije expressly discloses that the
improved efficiency of the inventive luminescent object is achieved by
“an aligned polymer that contains an oriented photoluminescent material[,] [t]he
alignment of the polymer [being] used to induce the orientation of the
photoluminescent material.” Debije 1 84; see also id. 118 and dependent claim 35
(indicating that a luminescent layer comprising an aligned polymer containing an
oriented photoluminescent material is merely a preferred embodiment); Syntex
(U.S.A.) LLCv. Apotex, Inc., 407 F.3d 1371, 1379-80 (Fed. Cir. 2005) (“A
statement that a particular combination is not a preferred embodiment does not
teach away absent clear discouragement of that combination.”); In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed in the . . . application.”). Accordingly, we are not persuaded that
the Examiner erred in finding the spatial orientation of the photoluminescent
material in Debije’s luminescent converter comes from the alignment of the
polymer matrix containing the material.
Appellants also argue the disclosure in Evans relied upon by the Examiner
does not support a finding that the ordinary artisan would have had a reasonable
expectation of success in using MSCs to improve efficiency in a luminescent solar
concentrator, because Evans discloses that different types of luminescent MSCs
demonstrate different fluorescent properties, e.g., “PbSe MSCs ‘emit in the NIR
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Application 13/637,909
[(near-infrared)] with remarkably high fluorescence quantum yields,” while “CdSe
MSCs ... are ‘characterized by extremely broad and weak emission.’” Reply Br.
5 (quoting Evans 2986 12, 2987 13).
Appellants’ argument is not persuasive because it fails to identify error in
the Examiner’s specific finding that the ordinary artisan would have “employ[ed]
PbSe MSCs as the luminescent molecules in Debije’s solar concentrator” based on
Evans’ disclosure that “the use of PbSe MSCs produces a high fluorescence
quantum yield” (Final Act. 8 (emphasis added)).
In sum, for the reasons expressed in the Final Office Action, the Answer,
and above, we are not persuaded of error in the Examiner’s conclusion of
obviousness as to claims 1—13 and 16—22.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. §1.136(a)(l)(iv).
AFFIRMED
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