Ex Parte Peeters et al

Patent Trial and Appeal Board

Aug 25, 2016

12301698 (P.T.A.B. Aug. 25, 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.
12/301,698 11/20/2008 Martinus Petrus Joseph Peeters 2006P00720WOUS 1926
138325 7590 03/01/2017
PHILIPS LIGHTING HOLDING B.V.
465 Columbus Avenue
Suite 330
Valhalla, NY 10595
EXAMINER
GEBREMARIAM, SAMUEL A
ART UNIT PAPER NUMBER
2811
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
kim.larocca@philips.com
j o. c angelosi @ philips. com
Gigi.Miller@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTINUS PETRUS JOSEPH PEETERS, RENE
JAN HENDRIKS, ALDEGONDA LUCIA WEIJERS, and
CLAUDIA MUTTER
Appeal 2015-003067
Application 12/301,698
Technology Center 2800
Before BEVERLY A. FRANKLIN, AVELYN M. ROSS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This Decision on Rehearing responds to Appellants’ October 31,
2016, Request for Rehearing (hereinafter “Req. Reh’g”) of our Decision on
Appeal mailed August 29, 2016 (hereinafter “Decision”). In that Decision,
we affirmed the Examiner’s decision to reject claims 1—8, 10—11, and 13—22
under 35 U.S.C. § 103(a) as unpatentable over the combination of
Appeal 2015-003067
Application 12/301,698
Takahashi1 in view of Mueller ’2492 and Rossner3 (relevant to claims 13 and
14) {generally Req. Reh’g).
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
Arguments not raised in briefs before the Board and evidence not previously
relied on in the briefs are not permitted in a request for rehearing, except as
permitted by 37 C.F.R. §§ 41.52(a)(2) through (a)(4). We review the points
of the Decision contested by Appellants and determine whether we erred in
fact finding or applying the law, and further determine whether any such
error changes the outcome of the Decision when viewing all the evidence
and arguments anew in light of the preponderance of the evidence standard.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“patentability is
determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument”); Gardner v. TEC
Sys., Inc., 725 F.2d 1338, 1345 (Fed. Cir. 1984) (any error concerning
nonessential facts is harmless and not a basis for reversal).
Appellants contend that the Board overlooked the Examiner’s failure
to establish a prima facie case of obviousness. Req. Reh’g 1—2. In
particular, Appellants “respectfully request that the Board determine whether
Mueller illustrates that the purported optimization of the concentration of the
nanoparticle mass fraction as asserted by the Examiner would result in the
1 Takahashi et al., US 6,791,116 B2, issued September 14, 2004 (hereinafter
“Takahashi”).
2 Mueller et al., US 2003/0227249 Al, published December 11, 2003
(hereinafter “Mueller ’249”).
3 Rossner et al., US 2004/0145308 Al, published July 29, 2004 (hereinafter
“Rossner”).
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Appeal 2015-003067
Application 12/301,698
claimed mass fraction.'1'’ Id. at 3. Appellants criticize that “the Examiner has
only shown that the references teach the use of scattering particles; the
Examiner has not shown that the claimed range would be found through
routine optimization of light extraction” and that the Board erred in
accepting the Examiner’s findings without evidence. Id. at 4.
Appellants’ argument is unpersuasive. “[Wjhere the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.” In re
Alter, 220 F.2d 454, 456 (CCPA 1955). “A recognition in the prior art that a
property is affected by the variable is sufficient to find the variable result-
effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir.
2012). Although optimization of a variable known to be result effective is
generally prima facie obvious, as the predecessor to our reviewing court
explained over thirty years ago, “[w]e have found exceptions to this rule [set
forth in In re Alter] in cases where the results of optimizing a variable,
which was known to be result effective, were unexpectedly good.” In re
Antonie, 559 F.2d 618, 620 (CCPA 1977).
As explained in our Decision, the Examiner finds that Takahashi
teaches each element of the instant invention with the exception that “the
mass fraction of said scattering particles in said scattering layer is about
1/6.” Decision 5. However, “Mueller provides evidence that concentration
of the nanoparticles is understood to be a result effective variable to be
optimized through routine experimentation.” Id. at 8. Mueller ’249 teaches
adjusting the scattering of particles in the scattering layer will improve light
extraction because of the increase in refractive index. Decision 6—7 (citing
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Application 12/301,698
Mueller ’249, Tflf 33—34); see also Final Act. 6 and Ans. 3. Specifically,
Mueller ’249 recognizes that
for the case of nanoparticles of a material such as cerium oxide
or titanium oxide having a refractive index of about 2.3 to about
2.4 dispersed in an epoxy or silicon having a refractive index of
about 1.5... the refractive index of the mixture varies from about
1.5 to about 1.8 as the volume fraction of the nanoparticles in the
mixture varies from about 0 to about 0.35. The upper limit on
the refractive index of such a mixture is set by the dispensability
of the nanoparticles in the host material as well as by the
refractive indices of the nanoparticles and of the host material.
The inventors believe, for example, that cerium oxide and
titanium oxide nanoparticles may be dispersed in silicone to
volume fractions exceeding about 30% to about 40%. Hence, the
refractive index of such a mixture may be adjusted such that, for
example, conventional doped yttrium aluminum garnet (YAG)
phosphor particles, which typically have an index of refraction
of about 1.8, would not substantially scatter light if dispersed in
the mixture.
Mueller ’249, |33 (emphasis added). Mueller ’249 further explains that
“[t]he increased refractive index of the mixture of nanoparticles 38 and
material 36 compared to that of material 36 alone may advantageously
decrease light scattering by and increase light extraction from phosphor
particles 40.” Id., |52; see also id., |46. From these teachings, the skilled
artisan—recognizing that improved light extraction is relevant to
dispersability—would have reason to develop optimum ranges for the result-
effective parameters, such as the claimed mass fraction of about 1/6 recited
in claim 1. Thus, the Examiner properly established a prima facie case for
obviousness. Antonie, 559 F.2d at 620.
A prima facie case of obviousness may be rebutted by showing that
the particular range yields unexpected results. Alien, 220 F.2d at 456. In
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Application 12/301,698
this instance however, there is no evidence—and Appellants do not suggest
(Req. Reh’g 4)—that a mass fraction of scattering particles in the scattering
layer in the claimed amount is critical or produces any unexpected results.
For the above reasons, we decline to modify our Decision. The
Request for Rehearing is granted to the extent we have considered
Appellants’ arguments, but denied in that the Decision will not be modified.
DENIED
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