Ex Parte Martin et al

Patent Trial and Appeal Board

Jun 26, 2013

12403926 (P.T.A.B. Jun. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL S. MARTIN, GERD O. MUELLER,
REGINA B. MUELLER-MACH, HELENA TICHA, and
LADISLAV TICHY1
____________

Appeal 2011-006346
Application 12/403,926
Technology Center 2800
____________

Before JENNIFER S. BISK, JAMES B. ARPIN, and DAVID C. McKONE,
Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3-9, and 11. Claims 2 and 10 are cancelled. App. Br.
2.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Koninklijke Philips Electronics N.V. is the real party-in-interest.
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Application 12/403,926

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INVENTION
Appellants’ invention relates to semiconductor, light emitting devices
provided with separately-fabricated, wavelength converting elements. See
generally Abstract. The wavelength converting element, e.g., phosphor
embedded in glass, is produced in a sheet that is separated into individual
wavelength converting elements, which are bonded to light emitting devices.
Id. Claim 1 is illustrative and is reproduced below with a disputed limitation
emphasized:
1. A light emitting device, comprising:

a stack of layers including semiconductor layers having an
active region;

an optically transparent element; and

an inorganic wavelength converting element being a bonding
layer between the stack and the optically transparent element,

wherein the inorganic wavelength converting element
comprises phosphor embedded into a glass.

The Examiner relies on the following as evidence of unpatentability:
Camras
Collins III
Baret
Kato
Reeh
Ng
US 2002/0030194 A1
US 2002/0187571 A1
US 2003/0108820 A1
US 6,809,340 B2
US 6,812,500 B2
US 2005/0206301 A1
Mar. 14, 2002
Dec. 12, 2002
June 12, 2003
Oct. 26, 2004 (filed Sep. 19, 2002)
Nov. 2, 2004 (filed Dec. 6, 2000)
Sep. 22, 2005 (filed Mar. 18, 2004)

2 Throughout this opinion, we refer to (1) the Appeal Brief (App. Br.) filed
July, 27, 2010; (2) the Examiner’s Answer (Ans.) mailed October 27, 2010;
and (3) the Reply Brief (Reply Br.) filed December 21, 2010.
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THE REJECTIONS
1. The Examiner rejected claims 1, 6, 7, and 11 under 35 U.S.C. § 103(a)
as unpatentable over Ng and Reeh. Ans. 4-5; Final Rej. 3-5.
2. The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Ng, Reeh, and Collins. Ans. 5.
3. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Ng, Reeh, and Baret. Id. at 6.
4. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Ng, Reeh, and Kato. Final Rej. 6-7.
5. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Ng, Reeh, and Camras. Id. at 7-8.
Because the Examiner has withdrawn the rejections to claims 7-9
under § 103(a) in the Answer (Ans. 2-3, 7), we do not reach the merits of or
otherwise review the rejections to those claims in this opinion.

OBVIOUSNESS REJECTION OVER NG AND REEH
Regarding representative claim 1, the Examiner finds that Ng
discloses all of the limitations of claim 1, except for wherein the inorganic
wavelength converting element, e.g., Ng’s fluorescent material 122,
comprises phosphor embedded into a glass. Ans. 4; see Ng, Fig. 1.
Nevertheless, the Examiner finds that Reeh teaches that its luminescence
conversion element is composed of an inorganic phosphor, which is
embedded in an inorganic glass having an advantageously low melting point.
Ans. 4 (citing Reeh, col. 8, ll. 11-14). The Examiner concludes that it
would have been obvious to a person of ordinary skill in the relevant art at
the time of the invention to modify Ng’s light emitting device to form the
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inorganic wavelength converting element, e.g., fluorescent material 122,
from a phosphor embedded in glass to obtain such an element with a low
melting point. Ans. 4-5.
Appellants argue that Ng does not teach or suggest that fluorescent
materials 122 is “a bonding layer,” and, in particular, that Ng does not teach
or suggest that fluorescent material 122 bonds a stack of layers, e.g., Light
Emitting Diode (LED) die 102, to an optically transparent element, e.g.,
lamp 110. App. Br. 5-6; Reply Br. 2.
ISSUE
Under § 103(a), has the Examiner erred in rejecting claim 1 by finding
that Ng and Reeh, collectively, teach or suggest “an inorganic wavelength
converting element being a bonding layer between the stack and the
optically transparent element” (emphasis added), as recited in claim 1?
ANALYSIS
1. Claim Construction
We begin by construing the disputed limitation of claim 1 which calls
for, in pertinent part, “an inorganic wavelength converting element being a
bonding layer between the stack and the optically transparent element”
(emphasis added). In construing this limitation, we apply the broadest
reasonable interpretation of the words in their ordinary usage, as those words
would be understood by one of ordinary skill in the art, taking into account
any definitions supplied by Appellants’ Specification. In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997).
During prosecution, Appellants amended claim 1 to include the
limitations of dependent claim 10 and expressly required that Appellants’
wavelength converting element be “a bonding layer between the stack and
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the optically transparent element.” Responsive Amendment (dated Jan. 26,
2010) 2, 4. A pertinent definition of the term “bond” is “something that
binds, fastens, confines, or holds together.” RANDOM HOUSE WEBSTER’S
COLLEGE DICTIONARY 151 (2d Random House ed. 1999). Referring to
Figure 6, Appellants describe how wavelength converting element 204 may
bond to the stack of layers, e.g., LED die 210, and to the optically
transparent element, e.g., lens 210, by creating the wavelength converting
element by embedding the phosphor particles in a low melting point glass
and reheating wavelength converting element 204 between LED die 210 and
lens 230. Spec. ¶ [0048]. Thus, based on its ordinary usage, we interpret the
term “a bonding layer” of the inorganic wavelength converting element to
recite a layer that binds, fastens or holds together each of the “stack of
layers” and the “optically transparent element.”
2. Teachings of Ng
Referring to Ng’s Figure 1, the Examiner contends that Ng discloses a
light emitting diode 100 comprising a fluorescent material 122 between LED
die 102 and lamp 110. Ans. 6-7 (citing Ng, ¶ [0022]). Further, the
Examiner contends that “[t]he inorganic wavelength converting element 122
is considered as a bonding layer because it is formed between and physically
contacted the stack of semiconductor layers and the optically transparent
element 110 as seen in Fig. 1 of Ng.” Id. at 7 (emphasis added). Despite the
physical contact between the identified elements of Ng, the Examiner fails to
demonstrate that Ng’s fluorescent material 122 binds to both Ng’s LED die
102 and lamp 110. Id. Moreover, although Ng teaches that the fluorescent
material 122 is mixed with an epoxy, apparently as a binding medium for
organic dyes, organic phosphors, or nanophosphors (Ng, ¶¶ [0022]-[0023]);
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the Examiner does not demonstrate that this epoxy or any other component
of fluorescent material 122 is used for bonding fluorescent material 122 to
adjacent elements.
Because the Examiner fails to demonstrate that Ng teaches or suggests
an inorganic wavelength converting element that is a “bonding layer”
between the “stack of layers” and the “optically transparent element,” as
recited in Appellants’ claim 1; the Examiner has failed to demonstrate that
Ng and Reeh teach or suggest all of the limitations of claim 1. Thus, we
conclude that the Examiner has failed to establish a prima facie case of
obviousness with respect to independent claim 1.
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of: (1) independent claim 1 and (2) of dependent claims 6 and
11, for similar reasons. Therefore, we do not sustain the rejection of these
claims.

OBVIOUSNESS REJECTIONS OVER NG, REEH, AND COLLINS OR
BARET
As noted above, the Examiner rejected claims 3 and 4 under § 103(a)
as unpatentable over Ng, Reeh, and Collins; and claim 5 under § 103(a) as
unpatentable over Ng, Reeh, and Baret. Ans. 5-6. Each of these claims
depends directly from independent claim 1. In view of the Examiner’s error
in rejecting independent claim 1 and because the Examiner does not
demonstrate that either Collins or Baret supplies the limitations of claim 1
that is missing from Ng and Reeh, we conclude that the rejections of claims
3-5 are untenable. In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988); see also
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MPEP § 2143.03. Therefore, we do not sustain the rejections of these
dependent claims.

CONCLUSION
The Examiner erred in rejecting claims 1, 3-6, and 11 under § 103(a).

DECISION
The Examiner’s decision rejecting claims 1, 3-6, and 11 is reversed.

REVERSED

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