Ex Parte Osten et al

Patent Trials and Appeals Board

Jul 26, 2018

14475628 - (D) (P.T.A.B. Jul. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/475,628 09/03/2014
83956 7590 07/30/2018
Viering, Jentschura & Partner mbB - OSR
c/o
444 Brickell A venue
Suite 51270
Miami, FL 33131
FIRST NAMED INVENTOR
Andreas Osten
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P57205US 4366
EXAMINER
KRYUKOV A, ERIN
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
07/30/2018 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):
patint@vjp.de
vjp-us@vjp.de
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS OSTEN and JACK L. BURWICK
Appeal 2017-011745
Application 14/475,628
Technology Center 2800
Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 7-24. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellant is the applicant, OSRAM Gesellschaft mit beschraenkter
Haftung (GmbH), which, according to the Appeal Brief, is the real party in
interest. Appeal Brief filed February 23, 2017 ("App. Br."), 2.
Appeal 2017-011745
Application 14/475,628
STATEMENT OF THE CASE
Appellant claims a dental light (independent claim 1) and a method
for providing chromatically stable illumination (independent claim 16).
Claim 1 illustrates the subject matter on appeal and is reproduced below
with contested language italicized:
1. A dental light comprising:
an array of light emitting diode (LED) assemblies, the
array compnsmg
at least one first LED assembly comprising:
at least one first LED element configured to
emit a first light according to a first spectral
distribution,
at least one conversion phosphor fixed
within said first light, the at least one conversion
phosphor configured to convert at least a portion of
said first spectral distribution to a converted
spectral distribution of light,
at least one filter fixed within said converted
spectral distribution of light, the at least one filter
configured to block at least a portion of the
converted spectral distribution to emit a filtered
spectral distribution of light, and
a first power lead connected to said at least
one first assembly LED element,
at least one second LED assembly comprising:
at least one second LED element configured
to emit light according to a second spectral
distribution, and
a second power lead connected to said at
least one second LED element,
wherein light having the filtered spectral distribution is
emitted from said array when said first power lead is connected
to a power source, and
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wherein light having a combined spectral distribution
comprising the filtered and second spectral distributions2 when
both first and second power leads are connected to a power
source and
wherein the light emitted from said at least one second
LED element is emitted from said at least one second LED
assembly without conversion by a phosphor.
App. Br. 26 (Claims Appendix) ( emphasis and spacing added).
The Examiner sets forth the following rejections in the Final Office
Action entered August 19, 2016 ("Final Act."), and maintains the rejections
in the Examiner's Answer entered August 7, 2017 ("Ans."):
I. Claims 7-10 and 12-15 under 35 U.S.C. § 103 as
unpatentable over Katsuda (US 2005/0003321 Al, published January
6, 2005) in view of Tanaka (US 2010/0207134 Al, published August
19, 2010), and Negley (US 2009/0108269 Al, published April 30,
2009);
II. Claim 11 under 35 U.S.C. § 103 as unpatentable over Katsuda
in view of Tanaka, Negley, and Jessop (US 2013/0344456 Al, published
December 26, 2013);
III. Claims 16-21 35 U.S.C. § 103 as unpatentable over Katsuda in
view of Tanaka; and
IV. Claims 22-24 35 U.S.C. § 103 as unpatentable over Katsuda in
view of Tanaka and Brukilacchio (US 2003/0218880 Al, published
November 27, 2003).
2 Claim 1 appears to be missing "is emitted from said array" following
recitation of "wherein light having a combined spectral distribution
comprising the filtered and second spectral distributions."
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Application 14/475,628
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, 3 we affirm the Examiner's rejections of
claims 7-13 and 16-24 under 35 U.S.C. § 103 for the reasons set forth in the
Final Action, the Answer, and below, and reverse the Examiner's rejection
of claims 14 and 15 under 35 U.S.C. § 103 for the reasons set forth below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner had
failed to make a prima facie case, "it has long been the Board's practice to
require an applicant to identify the alleged error in the examiner's
rejections").
Rejection I
Claims 7-10
Appellant argues claims 7-10 as a group on the basis of claim 7, to
which we accordingly limit our discussion. App. Br. 11-14; 37 C.F.R.
§ 4I.37(c)(l)(iv).
Katsuda discloses an imaging apparatus for diagnosing dental caries
that includes a luminous means and an imaging means. ,r,r 2, 88, 95.
Katsuda discloses that when the luminous means irradiates white light and
3 We do not consider any new argument Appellant raises in the Reply Brief
that Appellant could have raised in the Appeal Brief. 37 C.F.R.
§4I.37(c )(1 )(iv); 37 C.F.R. § 41.41 (b )(2) (arguments raised for the first time
in the Reply Brief that could have been raised in the Appeal Brief will not be
considered by the Board unless good cause is shown).
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Application 14/475,628
exciting light onto a tooth, the imaging means receives light reflected from
the tooth, receives fluorescence generated from the exciting light, and
produces visual and fluorescence diagnostic images of the tooth. ,r,r 17, 88,
93. Katsuda discloses an embodiment in which luminous means 2 is
comprised of two white light emitting diodes ( white LEDs) 2a, two infrared
light emitting diodes (infrared LEDs) 2b, and two ultraviolet light emitting
diodes (ultraviolet LEDs) 2c. ,r 94; Fig. 4.
Katsuda discloses that the imaging apparatus can include a radiation
source selection means ( also referred to as a light source selection switch)
comprising analog switches connected between a power source and
individual light emitting diode elements. ,r,r 111, 122; Fig. 13. Katsuda
discloses that power can be selectively supplied to each of the light emitting
diode elements by turning the switches on and off. ,r,r 111, 122; Fig. 13.
The Examiner finds that "LED elements are commonly known to have
power leads connecting to the LED elements in order to provide power to
the LED element so that the LED element may function properly to provide
illumination." Ans. 2. Because this finding is reasonable and Appellant
does not challenge it, we accept it as fact. Reply Br. 2--4; In re Kunzmann,
326 F.2d 424, 425 n.3 (CCPA 1964). The Examiner further finds that
Katsuda's disclosure in Figure 13 of providing power to individual light
emitting diode elements from a power source using power leads that connect
the light emitting diode elements with the power source through switches
would have suggested connecting the individual light emitting diode
elements disclosed in Katsuda to separate power leads. Ans. 2. Appellant
does not dispute the Examiner's further finding that Tanaka discloses first
and second power leads connected to first and second light emitting diode
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elements, respectively, that provide power to each light emitting diode
element. Compare Final Act. 4--5, with App. Br. 11-25.
In view of these disclosures in Katsuda and Tanaka, the Examiner
concludes that "it would have been obvious to have combined the teaching
of Tanaka [] with the invention of Katsuda [] to allow the LED elements of
Katsuda[] to be provided with electrical power, thereby allowing a user to
emit the light from the device when desired." Final Act. 5; Ans. 3.
The Examiner further finds that although Katsuda discloses a white
light emitting diode (white LED) 2a, Katsuda does not explicitly disclose a
conversion phosphor fixed within light emitted from the white light emitting
diode (white LED) 2a, and does not explicitly disclose that light is emitted
from a second light emitting diode without conversion by a phosphor. Final
Act. 5; Ans. 4. The Examiner finds, however, that "LEDs which emit at
least white light are conventionally formed by an LED die emitting a light of
short wavelength such as blue, green, or ultraviolet wavelengths, and
converted to white light using a phosphor." Ans. 4. Because this finding is
reasonable and Appellant does not challenge it, we accept it as fact. Reply
Br. 2--4; Kunzmann, 326 F .2d at 425 n.3.
Further supporting the Examiner's official notice, Negley discloses
that it was well known in the art at the time of Appellant's invention to
utilize a phosphor to convert light emitted from an LED from one
wavelength to another, including utilizing a yellow phosphor to convert light
emitted from blue light emitting diode device to white light. ,r 3.
The Examiner further relies on Negley's disclosure of a monolithic
light emitter that includes multiple light emitting diode elements (LEDs)
made of the same material, and distinct phosphors that cover individual
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groups of the LEDs. Final Act. 5---6; Negley ,r,r 127, 148; Fig. 1. Negley
discloses that use of such distinct phosphors covering groups of LEDs, in
combination with a single group of LEDs uncovered by a phosphor, results
in emission of light of different wavelengths from each group of LEDs ( red,
green, and blue) to produce white light. ,r,r 148, 150. Negley further
discloses that utilizing light emitting diode devices (LEDs) that are made of
the same material reduces the environmental impact on the light emitter
because the effect of temperature on all of the light emitting diode devices is
the same. ,r 127.
The Examiner determines that because white light is conventionally
produced from LEDs using a phosphor, one of ordinary skill in the art would
have been led to modify the white light emitting diode (white LED) 2a
disclosed in Katsuda to include a phosphor as taught by Negley, without
altering the light emitted by a second light emitting diode in Katsuda's
apparatus, so as to provide similar LEDs in Katsuda's apparatus that would
reduce effects from differing environmental conditions, such as temperature
changes. Final Act. 6; Ans. 4--5.
Appellant argues that Katsuda's apparatus includes "one cluster of
LED light sources, which are powered by a single power lead," and "[t]here
is no need for a second power lead because there is only one set of LED
lights," and in addition, a switch allows combinations of fewer than all of the
LEDs to be illuminated. App. Br. 11. Appellant further asserts that "there is
no indication that adding a second power lead would actually improve
Katsuda's light output, or even make any change to Katsuda's light output",
and Appellant argues that the Examiner's rationale for modifying Katsuda's
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apparatus with separate power leads as disclosed in Tanaka therefore "fails
to meet the legal criteria for obviousness." App. Br. 12.
However, one of ordinary skill in the art would have understood that
the radiation source selection means disclosed in Katsuda having switches
that connect a power source to individual light emitting diode elements, and
the separate power leads disclosed in Tanaka that each connect to individual
light emitting diode elements, would function interchangeably to selectively
provide power to individual light emitting diode elements. Accordingly,
given this interchangeability, one of ordinary skill in the art would have
expected that the separate power leads disclosed in Tanaka could be
successfully substituted for Katsuda's radiation source selection means to
selectively power the individual light emitting diode elements in Katsuda's
apparatus, as recited in claim 7, regardless of whether the substitution would
improve the light output ofKatsuda's apparatus. 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."); KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,417 (2007) (quoting Sakraida v. Ag Pro,
Inc., 425 U.S. 273, 282 (1976) ("[W]hen a patent 'simply arranges old
elements with each performing the same function it had been known to
perform' and yields no more than one would expect from such an
arrangement, the combination is obvious."); In re Kubin, 561 F.3d 1351,
1360 (Fed. Cir. 2009) ("[ o ]bviousness does not require absolute
predictability of success ... all that is required is a reasonable expectation of
success.") ( emphasis omitted, citing In re O 'Farrell, 853 F .2d 894, 903-04
(Fed. Cir. 1988)).
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Appellant further indicates that for purposes of this appeal, Appellant
will assume that the Examiner's rationale for combining Katsuda with
Negley-reducing effects from differing environmental conditions-relates
to avoiding unequal color degradation of LEDs during their lifetime, known
as "color shift." App. Br. 13-14. Appellant argues that color shift is
irrelevant to Katsuda because Katsuda creates an image of a tooth by
illuminating the tooth with very narrow range of light, 400 nm ±30, and
color shift only affects the edges of a produced light spectrum. Id.
Appellant argues that "it is nearly inconceivable that an LED color shift
would render [Katsuda's] LED unable to produce a range of 60 nm of light.
Thus, Katsuda appears to present no need for a phosphor." App. Br. 14;
Reply Br. 3. Appellant further contends that "[i]f Examiner wishes to argue
that a skilled person would add a phosphor to improve color stability, it is
incumbent upon the examiner to state why improved color stability would be
advantageous, which the Examiner has not done." Reply Br. 4.
Appellant further argues, with respect to the Examiner's
uncontroverted finding that white light is conventionally produced from
LEDs using a phosphor, that "conforming to a conventional practice is not
obvious, unless the conventional practice benefits Katsuda, which Examiner
has failed to show." Reply Br. 3.
However, Katsuda is silent as to the particular type of LED utilized
for the white light emitting diode (white LED) 2a in Katsuda's imaging
apparatus, leaving it to one of ordinary skill in the art to select an appropriate
white light emitting diode (white LED) for use in the apparatus. In view of
the Examiner's uncontroverted finding that white light is conventionally
produced from LEDs using a phosphor, and in view ofNegley's disclosure
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of a light emitter that produces white light from LEDs by utilizing
phosphors, one of ordinary skill in the art reasonably would have been led to
utilize a phosphor in Katsuda's light emitting diode 2a to produce white light
from the LED, as recited in claim 7.
Contrary to Appellant's argument, such use of a conventional
phosphor to achieve Katsuda's intended purpose of producing white light
from a light emitting diode need not have improved or benefitted Katsuda's
apparatus in order to render inclusion of the phosphor in Katsuda's apparatus
obvious. Rather, mere use of known materials for their intended functions in
a known environment to accomplish an expected result would have been
prima facie obvious. KSR, 550 U.S. at 417. Appellant's arguments are
therefore unpersuasive of reversible error in the Examiner's rejection.
We accordingly sustain the rejection of claims 7-10 under 35 U.S.C. §
103.
Claims 12 and 13
Although Appellant addresses claims 12 and 13 separately, the
arguments Appellant provides for claim 13 are substantially the same as
arguments Appellant presents for claim 12. App. Br. 14--18. We
accordingly address claims 12 and 13 together.
Claim 12 depends from claim 7 and requires the at least one first LED
element and the at least one second LED element to be substantially
functionally identical. Claim 13 depends from claim 7 and requires the first
spectral distribution of light emitted from the first LED element and the
second spectral distribution of light emitted from the second LED element to
be substantially identical.
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The Examiner finds that Katsuda does not explicitly disclose that
white light emitting diode (white LED) 2a is substantially functionally
identical to a second light emitting diode in Katsuda's apparatus, and does
not explicitly disclose that white light emitting diode (white LED) 2a and a
second light emitting diode emit light having substantially identical spectral
distributions. Final Act. 7-9. The Examiner relies on Tanaka to address
these features explicitly missing from Katsuda's disclosures. Id.
Appellant does not dispute the Examiner's finding that Tanaka
discloses a lighting device comprising a plurality of light emitting diode
units (LEDs) of the same type that produce light free of color shift because
the LEDs "are similarly varied by the ambient environment and the aged
deterioration." Compare Final Act. 8, with App. Br. 14--18; Tanaka ,r 4--6,
10. Nor does Appellant dispute the Examiner's finding that substantially
identical LED elements as disclosed in Tanaka would have substantially
identical spectral distributions. Compare Final Act. 8, with App. Br. 14--18.
Based on these disclosures in Tanaka, the Examiner determines that one of
ordinary skill in the art would have modified Katsuda's apparatus to make
the white light emitting diode (white LED) 2a substantially functionally
identical to a second light emitting diode in the apparatus, such that light
emitted from both LEDs would have substantially identical spectral
distributions, to avoid a color shift that could adversely affect the imaging
capability of Katsuda's apparatus. Final Act. 8-9; Ans. 5-8.
Appellant argues that "Tanaka's technology of avoiding color shift is
irrelevant to Katsuda" because Katsuda's apparatus produces only an
extremely narrow wavelength of light---400 nm ±30--which makes a
general color shift extremely unlikely to affect the utility of Katsuda' s
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apparatus. App. Br. 15-17. Appellant contends that even if Katsuda's LED
were to experience a color shift, it would make no difference to the overall
performance of Katsuda's apparatus, and the apparatus would still be able to
produce the very narrow range of light relevant to the apparatus' function.
App. Br. 15. Appellant further contends that modifying Katsuda's apparatus
to make white light emitting diode (white LED) 2a substantially functionally
identical to a second light emitting diode as proposed by the Examiner
would only solve the problem of color shift due to lumen reduction4, but
would not address color shift due to chromacity change 5, which Appellant
contends is necessarily the type of color shift implicated by the Examiner's
assertion that color shift could impair the imaging capability of Katsuda's
apparatus. Reply Br. 4---6.
However, Appellant's arguments imply that Katsuda's imaging
apparatus utilizes only light having a wavelength of 400 nm ±30 to diagnose
dental carries, which is contrary to Katsuda's express disclosures.
Specifically, Katsuda discloses that the imaging apparatus described in the
reference identifies dental carries by irradiating white light onto a tooth
(from white light emitting diode (white LED) 2a) and receiving white light
reflected from the tooth with an imaging means that produces a visible light
4 Appellant asserts that "Lumen Reduction" occurs when the light output
from an LED is reduced over time. Reply Br. 4. Appellant contends that
although Lumen Reduction is just a dimming of light produced from an
LED, rather than a change in the light's color, LEDs often produce light in
group (such as a red, green, and blue LEDs producing a white light), and an
uneven Lumen Reduction among the LEDs in such a group causes a
functional change in the overall color produced. Id.
5 Appellant asserts that "Chromacity Change" occurs when an individual
LED's output experiences a limited color shift over time due to ageing or
yellowing of the capsule around the LED. Reply Br. 4.
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image of the tooth. ,r,r 17, 93-95. Katsuda discloses attaching a light
receiving filter that passes only light having wavelength greater than 430 nm
to the imaging means, irradiating the tooth with exciting light emitted from a
light emitting diode having a wavelength of 400 +/-30 nm, and receiving
fluorescence generated from the exciting light with the imaging means,
which produces a fluorescence image of the tooth in which lesions are
shown in orange or Mars yellow. ,r,r 17, 94, 99, 104. Katsuda discloses
pinpointing the location of dental carries in the tooth by overlapping the
fluorescence image with the visible light image. ,r 105.
Accordingly, contrary to Appellant's argument, Katsuda's imaging
apparatus not only utilizes a light emitting diode to emit exciting light
having a wavelength of 400 nm ±30, but the apparatus also utilizes LED 2a
to produce white light. Appellant's assertion that Katsuda's apparatus
produces only an extremely narrow wavelength of light (400 nm ±30) does
not take into consideration Katsuda's disclosure of producing white light to
obtain a visible image of a tooth, undermining the basis for Appellant's
assertion that "Tanaka's technology of avoiding color shift is irrelevant to
Katsuda." App. Br. 17.
In addition, Appellant does not direct us to any evidence
substantiating the assertion that color shift would make no difference to the
overall performance ofKatsuda's apparatus. App. Br. 14--18. Nor does
Appellant point to any evidence supporting the assertion that modifying
Katsuda's apparatus to make white light emitting diode (white LED) 2a
substantially functionally identical to a second light emitting diode would
not address color shift (caused by chromaticity change). Id. Unsupported
attorney arguments cannot take the place of evidence necessary to resolve a
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disputed question of fact. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997) ("An assertion of what seems to follow from common experience
is just attorney argument and not the kind of factual evidence that is required
to rebut a prima facie case of obviousness."); Icon Health & Fitness, Inc. v.
Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) ("[a]ttorney argument is
not evidence" and cannot rebut other admitted evidence); In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take
the place of evidence.")' In re Schulze, 346 F.2d 600,602 (CCPA 1965)
("Argument in the brief does not take the place of evidence in the record.").
Therefore, Appellant's unsupported assertions are unpersuasive of
reversible error in the Examiner's determination that color shift could
adversely affect the imaging capability of Katsuda's apparatus, which would
be remedied by making the white light emitting diode (white LED) 2a of
Katsuda's apparatus substantially functionally identical to a second light
emitting diode in the apparatus, as disclosed in Tanaka, such that light
emitted from both LEDs would have substantially identical spectral
distributions.
In view of the undisputed conventional use of phosphors to convert
ultraviolet light emitted from a light emitting diode into white light
(discussed above), and in view of Tanaka's disclosure of utilizing the same
type of light emitting diode units (LEDs) in a lighting device to produce
light free of color shift, one of ordinary skill in the art reasonably would
have been led to utilize substantially functionally identical light emitting
diode elements for the white light emitting diode (white LED) 2a and
ultraviolet light emitting diode (ultraviolet LED) 2c of Katsuda's apparatus,
which would emit light having substantially identical spectral distributions,
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as recited in claims 12 and 13, respectively, to avoid color shift as disclosed
in Tanaka. As discussed above, the ordinarily skilled artisan would have
utilized a phosphor to convert the ultraviolet light emitted from light
emitting diode (white LED) 2a so as to produce white light from this LED.
Appellant further points out that in addition to LEDs, Katsuda
discloses that suitable light sources for the imaging apparatus described in
the reference include a laser oscillator and a halogen light. App. Br. 15.
Appellant contends that "[ w ]hereas LEDs are associated with degradation
and color shift, there is no indication that laser oscillators or halogen lights
share the same level of concern," and"[ w Jere avoiding degradation and
color shift of particular importance in Katsuda, emphasis could have been
placed on using a lighting method (like halogen) that experiences minimal
degradation and color shift." App. Br. 15-16.
However, although Katsuda is silent regarding potential disadvantages
of the various light sources-including laser oscillators and halogen lights-
described in the reference, one of ordinary skill in the art nonetheless
reasonably would have been aware of known disadvantages associated with
each type of light source. Consequently, any failure in Katsuda to
emphasize use of a specific lighting method (such as halogen) does not
establish that avoidance of a known disadvantage associated with another
lighting method (such as LED color shift) is of particular importance to
Katsuda's method. Therefore, Appellant's arguments are unpersuasive of
reversible error in the Examiner's determination that LED color shift could
adversely affect the imaging capability of Katsuda's apparatus, providing
reason to adopt Tanaka's known solution to the problem.
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We accordingly sustain the Examiner's rejection of claims 12 and 13
under 35 U.S.C. § 103.
Claims 14 and 15
We need consider only claim 14 because claim 15 depends from claim
14.
As set forth above, claim 7 requires the first LED assembly to include
a first LED element configured to emit light according to a first spectral
distribution, a phosphor configured to convert at least a portion of the first
spectral distribution to a converted spectral distribution of light, and a filter
fixed within the spectral distribution of light converted by the phosphor
configured to block at least a portion of the converted spectral distribution so
as to emit a filtered spectral distribution of light. Claim 7 further requires
the second LED assembly to include an LED element that emits light
according to a second spectral distribution. Claim 10 depends indirectly
from claim 7 and requires the filter to be configured to block light having the
second spectral distribution. Claim 14 depends from claim 10 and requires
the filter to be configured to block light in the range of 380-450 nm, and
requires the second LED assembly to be configured to emit light in the range
of 3 80-450 nm.
With respect to claim 7, the Examiner finds that Katsuda discloses
that the imaging apparatus described in the reference comprises a first LED
assembly including first white light emitting diode 2a. Final Act. 3. As
discussed above, the Examiner concludes that one of ordinary skill in the art
would have been led to modify white light emitting diode 2a to include a
phosphor configured to convert at least a portion of a first spectral
distribution emitted by the diode. Final Act. 6; Ans. 4--5. The Examiner
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finds that Katsuda discloses that the first LED assembly also includes a filter
configured to block at least a portion of the spectral distribution emitted by
first light emitting diode 2a (and converted by the proposed phosphor).
Final Act. 3--4 ( citing Katsuda ,r 101; Fig. 3). The Examiner finds that
Katsuda discloses that the imaging apparatus includes a second LED
element 2b configured to emit a second light according to a second spectral
distribution. Final Act. 4 (citing Katsuda ,r,r 94, 99; Fig. 4).
With respect to claim 14, the Examiner finds that Katsuda does not
explicitly disclose that the filter is configured to block light in the range of
3 80--450 nm, and does not explicitly disclose that the second LED element
2b is configured to emit light in the range of 3 80--450 nm. Final Act. 9.
However, the Examiner determines that one of ordinary skill in the art would
have been able to select a filter capable of blocking light in the range of
3 80--450 nm, and would have been able to select a second LED element
configured to emit light in the range of 3 80--450 nm, to achieve a desired
light output. Final Act. 9. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to modify Katsuda's filter to be configured to block
light in the range of 380--450 nm, and to modify Katsuda's second LED
element 2b to be configured to emit light in the range of 3 80--450nm, to
achieve a desired light output distribution from Katsuda's apparatus so as to
obtain only required information. Id. (citing Katsuda ,r 101).
However, although one of ordinary skill in the art may have been able
to modify the filter in Katsuda's first LED assembly to allow it to block light
in the range of 380--450 nm, and may have been able to modify Katsuda's
second LED element 2b to allow it to emit light in the range of 3 80--450 nm,
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as Appellant points out (App. Br. 18-22), the Examiner does not adequately
explain why one or ordinary skill in the art would have done so. In
particular, the Examiner does not explain why modifying the filter in
Katsuda's first LED assembly to allow it to block visible light having a
wavelength of 3 80-450 nm emitted from white light emitting diode element
2a, and modifying Katsuda's second LED element 2b--which is an infrared
light emitting diode-to allow it to emit visible light having a wavelength of
380-450 nm, would be useful in Katsuda's apparatus that produces visible
and fluorescence images of a tooth by irradiating the tooth with white light
and with exciting light that generates fluorescence.
Therefore, the Examiner does not articulate reasoning having rational
underpinning sufficient to establish that one of ordinary skill in the art would
have been led to modify the filter in Katsuda's first LED assembly to allow
it to block light in the range of 380-450 nm, and to modify Katsuda's second
LED element 2b to allow it to emit light in the range of 380-450 nm. KSR
550 U.S. at 418 ("[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.")
It follows that the Examiner fails to establish a prima facie case of
obviousness of the subject matter recited in claims 14 and 15 within the
meaning of 35 U.S.C. § 103(a). In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992) ("[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability").
We accordingly do not sustain the Examiner's rejections of claims 14
18
Appeal 2017-011745
Application 14/475,628
and 15 under 35 U.S.C. § 103(a).
Rejections II-IV
We summarily sustain the Examiner's rejections of claims 11 and 16-
24 because Appellant does not contest these rejections6• 37 C.F.R. §
4I.37(c)(l)(iv); see also Manual of Patent Examining Procedure (MPEP) §
1205.02 (9th ed. Mar. 2014) ("If a ground of rejection stated by the
examiner is not addressed in the appellant's brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain
it, unless the examiner subsequently withdrew the rejection in the
examiner's answer.").
DECISION
We affirm the Examiner's rejections of claims 7-13 and 16-24 under
35 U.S.C. § 103, and reverse the Examiner's rejection of claims 14 and 15
under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
6 Although Appellant mentions claim 16 in the first sentence of the
"Detailed Arguments" section of the Appeal Brief (App. Br. 11 ), Appellant
makes no further mention of claim 16 in the arguments section of the Appeal
Brief, and thus does not present arguments directed to the patentability of
this claim. App. Br. 11-25.
19