Ex Parte Lee

Patent Trial and Appeal Board

May 30, 2017

11908102 (P.T.A.B. May. 30, 2017)

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.
11/908,102 09/07/2007 Jae Hong Lee P2747US00 1417
58027 7590 06/01/2017
H.C. PARK & ASSOCIATES, PLC
1894 PRESTON WHITE DRIVE
RESTON, VA 20191
EXAMINER
MIYOSHI, JESSE Y
ART UNIT PAPER NUMBER
2896
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
PATENT@PARK-LAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte JAE HONG LEE
Appeal 2016-005544
Application 11/908,102
Technology Center 2800
Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and BRIAN
D. RANGE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—4, 9-12, 15—19, 21, and 22. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
1 Appellant identifies the real party in interest as Seoul Semiconductor Co.,
Ltd. Appeal Br. 3.
Appeal 2016-005544
Application 11/908,102
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant’s subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A light emitting apparatus, comprising:
a substrate having a support surface having a first side opposing a second
side;
a three-color light emitting device disposed on the first side of the support
surface and comprising red, green, and blue light emitting diode (LED)
chips;
a white light emitting device disposed on the second side of the support
surface and comprising second blue LED chips;
a first electrode disposed on the first side and the second side of support
surface and electrically connected to each of the LED chips;
second electrodes disposed on the first side of the support surface
surrounding the first electrode, each second electrode disposed on and
electrically connected to a respective one of the LED chips of the three-color
light emitting device;
third electrodes disposed on the second side of the support surface and
surrounding the first electrode, each third electrode disposed on and
electrically connected to a respective one of the second blue LED chips;
a molding member encapsulating the light emitting devices; and
a fluorescent substance selectively dispersed in the molding member,
and localized around the second blue LED chips of the white light emitting
device, wherein the molding member completely covers at least two LED
chips.
2
Appeal 2016-005544
Application 11/908,102
The Examiner relies on the following prior art references as evidence
of unpatentability:
Wang et al.
Andrews et al.
Nitta et al.
Fukasawa et al.
US 6,297,598 B1
Pat. Pub. 2004/0079957 Al
US 6,747,293 B2
US 6,914,267 B2
Oct. 2,2001
April 29, 2004
June 8, 2004
July 5, 2005
THE REJECTIONS
1. Claims 1, 3, 4, 9, 11, 12, 15—19, 21, and 22 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Wang in view of
Fukasawa, and Andrews.
2. Claims 1, 2, and 10 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Wang in view of Fukasawa, Andrews, and Nitta.
ANALYSIS
Rejections 1 and 2
The dispositive issue in this case is the claim interpretation of the
phrase “a fluorescent substance selectively dispersed in the molding
member.” On the one hand, the Examiner interprets the limitation “a
fluorescent substance selectively dispersed in the molding member” to be a
first element “a fluorescent substance selectively dispersed” and a second
element “in the molding member,” the first element corresponding to
element 80 as shown in figure 5 of the instant application and the second
element corresponding to element 70 as shown in figure 5 of the instant
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Appeal 2016-005544
Application 11/908,102
application. Ans. 5. The Examiner explains that the Specification requires
the division of these claim elements into separate elements because it
teaches that a dispersion of fluorescent substances is first formed, then this
dispersion is surrounded by a molding member, as taught in paragraphs 43
and 44 of the Specification. Id.
On the other hand, Appellant argues that the context and plain reading
of the phrase “a fluorescent substance selectively dispersed in a molding
member” indicates that it is the medium of the molding member having
the dispersed fluorescent substance. Appeal Br. 7—8; Reply Br. 9. Appellant
also argues that the phrase “and localized around the second blue LED
chips” as recited in claim 1 provides further details regarding the selectivity
of the dispersion of the phosphorous substance in the molding member.
Reply Br. 9—10. Appellant therefore submits that claim 1 is clear and
unambiguous as to which medium the fluorescent substance is dispersed in
and which region the fluorescent substance is dispersed.
Appellant also argues that the Examiner maintains that paragraphs
[43] and [44], and Figure 5 of the Specification “require [] the division of the
claim elements into separate elements” (Ans. 5). Reply Br. 10. Appellant
argues that this interpretation contradicts the meaning of the phrase
“fluorescent substance selectively dispersed in a molding member” because
it requires a separate and distinct layer for holding the fluorescent substance.
Appellant agrees with the Examiner that the Specification supports an
embodiment where a separate and distinct layer for holding the fluorescent
substance 80 (Spec., Figs. 12, 13, and 14). Reply Br. 10. However,
Appellant explains that there is another embodiment wherein the localized
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Appeal 2016-005544
Application 11/908,102
dispersion of the fluorescent substance 80 is in the molding member 70.
Spec., Figs. 5, 8, and 10 (illustrating the fluorescent substance 80 locally
dispersed in the molding member 70 without a defined boundary or material
separation between the localized area of dispersion and the non-dispersion
area of the molding member 70), and paras. [43] and [44] (the “fluorescent
substance 80 may be dotted ... in a state where it is mixed in a curable
resin, e.g., an epoxy . . . resin. . . . [T]he molding member 70 may be formed
of a pre-determined transparent epoxy resin through an injection molding
process.”). Appellant therefore submits that the claim as written is directed
to the embodiment where fluorescent substance 80 is locally dispersed in the
medium of the molding member 70 as illustrated in Figs. 5, 8, and 10.
Reply Br. 10.
We are persuaded by Appellant’s stated position in the record. The
words of the claim must be given their plain meaning unless the plain
meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319,
321 (Fed. Cir. 1989). Claim 1 is directed to the embodiment as explained by
Appellant. Because the Examiner did not interpret the claim as such, the
Examiner has not correctly addressed the elements of the claim when
applying the applied art, and therefore we are persuaded of error in the
Examiner’s rejection for the reasons stated by Appellant in the record. As
pointed out by Appellant, neither Fukasawa2 nor Nitta3 teaches or suggests
the claim elements because these references refer to a medium being other
than a molding member. Fukasawa, Fig. 3 and col. 6,11. 44-48
2 Fukasawa is applied in Rejections 1 and 2.
3 Nitta is applied in Rejection 2.
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Appeal 2016-005544
Application 11/908,102
(illustrating and describing a separate adhesive 29 containing a fluorescent
material disposed below the light emitting diode element 20); Nitta, Figure
25 (illustrating a second sealing element 2134 separate and distinct from the
sealing element 111 having a fluorescent element).
We thus reverse Rejections 1 and 2.
DECISION
Each rejection is reversed.
ORDER
REVERSED
4 The Examiner maps sealing element 213 of Nikka Figure 25 to the recited
“molding member” of claim 1. Final Act. 14.
6