Ex Parte Lee et al

Patent Trial and Appeal Board

Jan 30, 2015

11569060 (P.T.A.B. Jan. 30, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CHUNG-HOON LEE,
GUNDULA ROTH,
and WALTER TEWS
__________

Appeal 2012-007969
Application 11/569,060
Technology Center 2800
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1–5 and 7–21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Claim 1 is representative of the subject matter on appeal and is reproduced
below from the Claims Appendix of the Appeal Brief dated December 6, 2011
(“App. Br.”).
1. A light emitting device, comprising:
Appeal 2012-007969
Application 11/569,060

2

at least three light emitting diodes having different peak
emission wavelengths to emit primary light in a blue, green, or red
wavelength range;
a molded part encapsulating the at least three light
emitting diodes; and
a wavelength-converter to convert the primary light into
secondary light in a visible light wavelength range, the wavelength-
converter being disposed in the molded part,
wherein the wavelength-converter comprises a mixture of
phosphors comprising a first phosphor to emit blue light, a second
phosphor to emit green to yellow light, and a third phosphor to emit
yellow to red light.
App. Br. 18.
The claims on appeal stand rejected as follows:
(1) claims 1–5, 7–14, 16–18, 20, and 21 under 35 U.S.C. § 103(a) as
unpatentable over West1 in view of Himaki2;
(2) claim 15 under 35 U.S.C. § 103(a) as unpatentable over West in view
of Himaki, and further in view of Shimomura3; and
(3) claim 19 under 35 U.S.C. § 103(a) as unpatentable over West in view
of Himaki, and further in view of Setlur.4
The Appellants present arguments in support of the separate patentability of
claims 1, 8, 9, and 20. See App. Br. 2–3. Therefore, for purposes of this appeal,
claims 1, 8, 9, and 20 stand alone. Dependent claims 2–5, 7, 10–14, 16–18, and 21
stand or fall with the patentability of claim 1, and the patentability of claims 15 and

1 US 2005/0001537 A1, published January 6, 2005.
2 US 2006/0076883 A1, published April 13, 2006.
3 US 2004/0251809 A1, published December 16, 2004.
4 US 2005/0029927 A1, published February 10, 2005.
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Application 11/569,060

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according to “Embodiment 2” of the invention.
Himaki discloses that “[w]hen the phosphor 11 is fixed around the surface of
the light-emitting element 10 in the light-emitting device of Embodiment 2, a resin
(a transparent resin) is preferably utilized.” Himaki ¶ 225; see also Himaki ¶ 235.
The Examiner finds that the transparent resin 12 corresponds to the “molded part”
recited in claim 1. Ans. 5.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to replace the phosphor-converted LED disclosed in West with the
LED disclosed in Himaki. Ans. 11.
The Appellants argue that the device disclosed in West “is based on mixing
light in a gas-filled mixing chamber in order to achieve particular refractive and
reflective properties, and these properties would not be predictably realized if a
solid [i.e., molded part 12 in Himaki] replaced the gas.” App. Br. 10–11. For this
reason, the Appellants argue that one of ordinary skill in the art would not have
combined West and Himaki in the manner claimed. App. Br. 11.
Contrary to the Appellants’ arguments, the Examiner is not proposing to
substitute the gas in West’s mixing chamber 35 with Himaki’s transparent resin 12.
Rather, in the rejection on appeal, the Examiner is proposing to replace West’s
phosphor-converted LED with Himaki’s LED. Ans. 11. In other words, the
Examiner is merely substituting one equivalent (i.e., the phosphor-converted LED
of West) for another equivalent (i.e., light-emitting device of Himaki comprising
phosphor 11 and transparent resin 12). See In re Fout, 675 F.2d 297, 301 (CCPA
1982) (“Express suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.”). The Appellants have failed to direct
us to any error in the Examiner’s finding that the phosphor-converted LED
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Application 11/569,060

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disclosed in West and the LED disclosed in Himaki are equivalent. Therefore, the
§ 103(a) rejections of claims 1–5, 7, 10–18, and 21 are sustained.
2. Claim 8
Claim 8 reads as follows:
8. The device according to claim 1 or 2, wherein the
wavelength converter comprises the first phosphor comprising a peak
emission wavelength between 450 and 520 nm, the second phosphor
comprising a peak emission wavelength between 500 and 570 nm, the
third phosphor comprising a peak emission wavelength between 570
and 680 nm, and mixtures thereof.
App. Br. 19.
The Examiner finds that West discloses a phosphor-converted LED. The
Examiner, however, finds that West is silent with respect to a first, second, and
third phosphor having peak emission wavelengths within the ranges recited in
claim 8. Nonetheless, the Examiner finds that “[o]ne of ordinary skill in the art
would recognize that a range in emission wavelength is nothing more than a
conventional, industry recognized result effective variable.” Ans. 8. Based on this
finding, the Examiner concludes that:
[I]t would have been obvious to one of ordinary skill in the art at the
time the invention was made to optimize said result effective variable
so as to facilitate for provision of operability in accordance with and
in the form of routine experimental optimum workable ranges, since it
has been held that where the general conditions (blue-red emission
spectrum) of a claim are disclosed in the prior art, discovering the
optimum or workable ranges (specific emission ranges) involves only
routine skill in the art.
Ans. 8 (emphasis added).
The Appellants do not direct us to any evidence demonstrating error in the
Examiner’s finding that peak emission wavelength was known to affect the color
of emitted light, and thus is a result-effective variable. As explained in In re
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Antonie, “the discovery of an optimum value of a variable in a known process is
normally obvious.” In re Antonie, 559 F.2d 618, 620 (CCPA 1977) (citing In re
Aller, 220 F.2d 454 (CCPA 1955)). An exception to that rule is “where the results
of optimizing a variable, which was known to be result effective, were
unexpectedly good.” Antonie, 559 F.2d at 620. The Appellants have failed to
make such a showing on this record.6 Therefore, the § 103(a) rejection of claim 8
is sustained.
3. Claim 9
Claim 9 depends from claim 8 and recites “wherein each phosphor
comprises more than one phosphor component, each phosphor component
comprising a different peak emission wavelength in the corresponding wavelength
range.” App. Br. 19 (emphasis added).
The Appellants argue that “[t]he Office Action appears to make no explicit
rejection with respect to claim 9. However, the Examiner should make a rejection
of every feature recited in the claims.” App. Br. 14.
It is well-settled that an Examiner bears the initial burden of presenting a
prima facie case of unpatentability. In re Oeitker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). The Examiner’s failure, in this case, to make specific factual findings and
legal conclusions as to the subject matter of claim 9 demonstrates that the
Examiner has failed to satisfy that burden. For this reason, the § 103(a) rejection
of claim 9 is not sustained.

6 The Appellants also argue that “West is silent regarding more than one type of
phosphor, which would be necessary to teach first, second, and third phosphors.”
App. Br. 13. However, the Examiner relies on Himaki to teach first, second, and
third phosphors. See, e.g., Himaki ¶ 55.
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4. Claim 20
Referring to paragraphs 12 and 21 of Himaki, the Examiner finds that the
combined teachings of West and Himaki teach “each of the first phosphor, second
phosphor, and third phosphor comprises (Ba,Sr, Ca)xSiO4:Eu,
(Ba,Sr, Ca)xSiO4:Mn, or a mixture thereof” as recited in claim 20.7 Ans. 7
(emphasis added).
Paragraphs 12 and 21 of Himaki disclose oxynitride phosphors. The
Appellants argue that those oxynitride phosphors are not the phosphors recited in
claim 20 “at least because they contain N, which is absent from the claimed
phosphor.” App. Br. 15. The Appellants’ argument is supported by the record.
Therefore, the § 103(a) rejection of claim 20 is not sustained.
C. DECISION
The decision of the Examiner rejecting claims 1–5, 7, 8, 10–14, 16–18, and
21 under 35 U.S.C. § 103(a) as unpatentable over West in view of Himaki is
affirmed.
The decision of the Examiner rejecting claims 9 and 20 under 35 U.S.C.
§ 103(a) as unpatentable over West in view of Himaki is reversed.
The decision of the Examiner rejecting claim 15 under 35 U.S.C. § 103(a) as
unpatentable over West in view of Himaki, and further in view of Shimomura is
affirmed.

7 Claim 20 recites that “each of the first phosphor, the second phosphor, and the
third phosphor consists of (Ba,Sr,Ca)xSiO4:Eu, (Ba,Sr,Ca)xSiO4:Mn, or a mixture
thereof.” App. Br. 21 (emphasis added). The transitional phrase “consisting of”
excludes unrecited elements or ingredients. AFG Indus., Inc. v. Cardinal IG Co.,
239 F.3d 1239, 1245 (Fed. Cir. 2001).
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Application 11/569,060

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The decision of the Examiner rejecting claim 19 under 35 U.S.C. § 103(a) as
unpatentable over West in view of Himaki, and further in view of Setlur 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).
AFFIRMED-IN-PART

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