Ex Parte Rains et al

Patent Trial and Appeal Board

Sep 8, 2016

12729788 (P.T.A.B. Sep. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121729,788 03/23/2010
23122 7590
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
09/12/2016
FIRST NAMED INVENTOR
Jack C. Rains JR.
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.
075588-0051 7864
EXAMINER
FAROKHROOZ,FATIMAN
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
09/12/2016 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACK C. RAINS, JR and DAVID P. RAMER
Appeal2015-002632
Application 12/729,788 1
Technology Center 2800
Before JOSEPH L. DIXON, LARRY J. HUME, and
LINZY T. McCARTNEY, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-3, 6-14, 16, 18-20, 23-25, and 35--42. Appellants
have previously canceled claims 4, 5, 15, 17, 21, 22, and 26-34. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the real party in interest is ABL IP Holding
LLC. App. Br. 1.
Appeal2015-002632
Application 12/729,788
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention relates to a tubular
lighting products using solid state source and semiconductor nanophosphor,
e.g. for florescent tube replacement. Title.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to limitations dispositive to our Decision):
1. A tubular lamp for producing visible light,
compnsmg:
a solid state source for producing electromagnetic
energy, the solid state source comprising a semiconductor chip
and an enclosure about the semiconductor chip;
a tubular container positioned outside the enclosure, the
tubular container formed of optically transmissive material
having an interior volume; the tubular container having a first
end section with an external surface coupled to receive
electromagnetic energy received from the solid state source, a
second end section opposite the first end section, and an
elongated tubular longitudinal section between the first and
second end sections, wherein the elongated tubular longitudinal
section is configured to act as a light guide with respect to the
electromagnetic energy received from the solid state source;
a reflector at the second end section of the tubular
container, configured to longitudinally reflect electromagnetic
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
July 15, 2014); Reply Brief ("Reply Br.," filed Dec. 8, 2014); Examiner's
Answer ("Ans.," mailed Nov. 3, 2014); Final Office Action ("Final Act.,"
mailed Mar. 21, 2014); and the original Specification ("Spec.," filed
Mar. 23, 2010).
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Appeal2015-002632
Application 12/729,788
energy from the solid state source back through the light guide
of the elongated tubular longitudinal section;
a reflector at the first end section of the tubular
container, configured to longitudinally reflect at least some
electromagnetic energy back through the light guide of the
elongated tubular longitudinal section;
a bearer material at least substantially filling an interior
volume of the tubular container; and
a plurality of doped semiconductor nanophosphors
dispersed in the bearer material in the container, the tubular
container and bearer material being configured to provide
deployment of the doped semiconductor nanophosphors outside
the enclosure of the solid state source and remotely from the
semiconductor chip of the solid state source, each doped
semiconductor nanophosphor being of a type excited in
response to the electromagnetic energy received from the solid
state source for re-emitting visible light,
wherein the longitudinal section of the tubular container
is also configured to allow lateral emission of light produced by
excitation of the doped semiconductor nanophosphors when
excited by the electromagnetic energy received from the solid
state source, and
wherein:
(a) the visible light output produced by excitation of the
doped semiconductor nanophosphors is at least substantially
white;
(b) the visible light output produced by excitation of the
doped semiconductor nanophosphors has a color rendering
index ( CRI) of 7 5 or higher; and
( c) the visible light output produced by excitation of the
doped semiconductor nanophosphors has a color temperature in
one of the following ranges:
2, 725 ± 145° Kelvin;
3,045 ± 175° Kelvin;
3,465 ± 245° Kelvin; and
3,985 ± 275° Kelvin.
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Appeal2015-002632
Application 12/729,788
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Margerum et al. ("Margerum") US 5,099,343
Elofson US 2005/0279915 Al
Kong
Gillies et al. ("Gillies")
Miller
US 2008/0043480 Al
US 2008/0246017 Al
US 2010/0124058 Al
Rejections on Appeal
Mar. 24, 1992
Dec. 22, 2005
Feb.21,2008
Oct. 9, 2008
May 20, 2010
RI. Claims 1-3, 6-14, 20, 23-25, 35-37, and 39--42 stand rejected
under 35 U.S.C. § 103(a) as being obvious over the combination of Elofson,
Gillies, and Margerum. Ans. 3.
R2. Claims 16, 19, and 38 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of Elofson, Gillies, 11argert1m, and
Kong. Ans. 13.
R3. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Elofson, Gillies, Margerum, Kong, and
Miller. Ans. 14.
ISSUE
Appellants argue (App. Br. 5-11; Reply Br. 1-8) the Examiner's
rejection of claim 1under35 U.S.C. § 103(a) as being obvious over the
combination of Elofson, Gillies, and Margerum is in error. These
contentions present us with the following issue:
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Application 12/729,788
Did the Examiner err in finding the cited prior art combination teaches
or suggests a tubular lamp for producing visible light having a tubular
container, that includes, inter alia, "a reflector at the second end section of
the tubular container, configured to longitudinally reflect electromagnetic
energy from the solid state source back through the light guide of the
elongated tubular longitudinal section," and "a reflector at the first end
section of the tubular container, configured to longitudinally reflect at least
some electromagnetic energy back through the light guide of the elongated
tubular longitudinal section," as recited in claim 1?
ANALYSIS
We agree with particular arguments advanced by Appellants with
respect to claims 1-3, 6-14, 16, 18-20, 23-25, and 35--42 for the specific
reasons discussed below. We highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
Appellants contend the cited prior art combination fails to teach or
suggest a tubular lamp, and further fails to teach or suggest a tubular
container therein having first and second end reflectors, as claimed. App.
Br. 5-10. Appellants particularly argue "Margerum does not teach the first
and second reflectors at either end of a tubular container, as recited in
claims 1 and 25; and the citation of Margerum for that recited feature in the
rejection is reversible error." App. Br. 10.3
"A prima facie case of obviousness is established when the teachings
from the prior art itself would appear to have suggested the claimed subject
3 Appellants make further contentions regarding asserted errors in the
Examiner's rejection, but we find this issue to be dispositive such that we
need not reach the merits of Appellants' additional arguments.
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Appeal2015-002632
Application 12/729,788
matter to a person of ordinary skill in the art." Jn re Bell, 991 F.2d 781, 783
(Fed. Cir. 1993) (quoting In re Rinehart, 531 F .2d 1048, 1051 (CCP A
1976))(emphasis added).
The Examiner merely states, without any specificity, that Margerum
teaches the contested limitation. See Final Act. 5; Ans. 6. We find the
Examiner's rejection completely lacks any mapping of the contested
limitation to the cited Margerum reference.
[A ]11 that is required of the office to meet its prima facie burden
of production is to set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of § 132. As the statute itself instructs, the
examiner must "notify the applicant," "stating the reasons for
such rejection," "together with such information and references
as may be useful in judging the propriety of continuing
prosecution of his application." 35 U.S.C. § 132.
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011); see also Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990).
Although the Examiner has set forth the statutory basis of the
rejection, the Examiner failed to make a prima facie case of obviousness in
the Final Rejection because the Examiner did not make any findings
regarding specific limitations in the above-noted claims, particularly with
respect to the Margerum reference.
Accordingly, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the combined
teachings and suggestions of the cited prior art combination to teach or
suggest the disputed limitations of claim 1, such that we find error in the
Examiner's resulting legal conclusion of obviousness. Therefore, we cannot
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Application 12/729,788
sustain the Examiner's obviousness rejection of independent claim 1, as well
as independent claim 25, which recites the disputed limitations in
commensurate form. For the same reasons, we also reverse the rejections of
all claims that depend therefrom, including § 103 Rejections R2 and R3 of
claims 16, 18, 19, and 38.
CONCLUSION
The Examiner erred with respect to obviousness Rejections RI
through R3 of claims 1-3, 6-14, 16, 18-20, 23-25, and 35--42 under 35
U.S.C. § 103(a) over the cited prior art combinations of record, and we do
not sustain the rejection.
DECISION
We reverse the Examiner's decision rejecting claims 1-3, 6-14, 16,
18-20, 23-25, and 35--42.
REVERSED
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