Ex parte RUTAN et al.

Board of Patent Appeals and Interferences

May 12, 1998

08148020 (B.P.A.I. May. 12, 1998)

Application for patent filed November 4, 1993. According1
to appellants, the application is a continuation of Application
07/806,803, filed December 6, 1991, abandoned; which is a
continuation of Application 07/539,638, filed June 18, 1990,
abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DOUGLAS M. RUTAN,
CURTIS E. SCOTT, JEANNINE A. WOYANSKY
and
KATHERINE L. McGINNIS
_____________
Appeal No. 95-3288
Application 08/148,0201
______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON and FLEMING, Administrative Patent
Judges.
Appeal No. 95-3288
Application 08/148,020
2
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection
of claims 1, 5 through 7, 9 through 13, 15 through 18 and 22
through 28, all of the claims pending in the present application.
Claims 2 through 4, 8, 14, 19 through 21 and 29 have been
canceled.
The invention relates to an improved shield for high
pressure sodium vapor lamps. More particularly, the invention
relates to an improved shielding of the getter using a ceramic
disk located between the arc tube and getter. The ceramic disk
shields the getter from radiation emitted by the arc tube. On
page 11 of the specification, Appellants disclose that the shield
is shown as element 88 in Figure 2 and is optically opaque, heat-
resistant and thermally stable, electrically non-conductive and
non-outgassing. Appellants disclose on page 12 of the
specification, that shield 88 is shown in greater detail in
Figure 4 and is made of a sintered polycrystalline alumina
ceramic disk. The shield is made about 1mm thick of sintered
polycrystalline alumina of from 94-96% Al O with the remainder2 3
Appeal No. 95-3288
Application 08/148,020
3
being primarily SiO and perhaps a minor amount of sintering2
aids.
The independent claim 1 is reproduced as follows:
1. A high pressure sodium vapor arc discharge lamp
which comprises a hermetically sealed, light transmissive,
vitreous outer envelope containing (i) a light transmissive,
hermetically sealed ceramic arc tube enclosing within an amalgam
of sodium and mercury, an inert starting gas and a pair of
electrodes in spaced apart relationship, (ii) a getter sensitive
to radiation emitted by said arc tube, said getter having been
flashed from a getter containing ring onto said envelope by means
of RF flashing, and (iii) an optically opaque, heat-resistant and
electrically insulative alumina shield located within said outer
envelope between said arc tube and said getter which shields said
getter from radiation emitted by said arc tube and which is
located close enough to said getter ring and in a manner such
that it would have interfered with said RF flashing of said
getter if it had been electrically conductive, said lamp also
having means for providing electricity to said electrodes.
The Examiner relies on the following references:
King 3,420,593 Jan. 7, 1969
Scott, Jr. et al. (Scott) 3,935,495 Jan. 27, 1976
Davis et al. (Davis) 3,979,633 Sept. 7, 1976
Osteen 4,137,484 Jan. 30, 1979
Charles et al. (Charles) 4,285,732 Aug. 25, 1981
Phillipp et al. (Phillipp) 4,221,993 Sept. 9, 1980
Strok 4,580,075 Apr. 1, 1986
Aelterman et al. (Aelterman) 4,910,427 Mar. 20, 1990
Carleton 5,008,583 Apr. 16, 1991
Claims 1, 5 and 23 stand rejected under 35 U.S.C.
Appeal No. 95-3288
Application 08/148,020
4
§ 103 as being unpatentable over Scott in view of Aelterman,
Charles and either Davis, King or Carleton. Claims 6, 7, 9
through 11, 12, 25, 13, 15 through 17 and 27 stand rejected under
35 U.S.C. § 103 as being unpatentable over Scott in view of
Aelterman, Osteen, Charles and either Davis, King or Carleton.
Claim 18 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Scott in view of Aelterman, Osteen, Charles
and either Davis, King or Carleton and further in view of Strok.
Claims 22, 24, 26 and 28 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Aelterman, Carleton, Osteen, Phillipp,
Charles and either Davis or King.
Rather than reiterate the arguments of Appellants and
the Examiner, reference is made to the brief and answer for the
respective details thereof.
OPINION
We will not sustain the rejection of claims 1, 5
through 7, 9 through 13, 15 through 18 and 22 through 28 under
35 U.S.C. § 103.
ANALOGOUS ART
Appeal No. 95-3288
Application 08/148,020
5
Appellants argue that the Charles disclosure of
improved alumina is not analogous art. Appellants maintain that
Charles does not pertain to the same field endeavor as
Appellants' field of high pressure discharge lamps and that
Charles is not concerned with the problems faced by Appellants.
In determining whether a claim would have been obvious
at the time of the invention, the Examiner must first determine
the scope and content of the prior art. Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). "Although § 103
does not, by its terms, define the 'art to which [the] subject
matter [sought to be patented] pertains,' this determination is
frequently couched in terms of whether the art is analogous or
not, i.e., whether the art is 'too remote to be treated as prior
art.'" In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058, 1060 (Fed.
Cir. 1992) citing In re Sovish, 769 F.2d 738, 741, 226 USPQ 771,
773 (Fed. Cir. 1985).
In making this determination, we must consider two
criteria. First, it must be determined if the prior art is from
the same field of endeavor, regardless of the problem addressed.
Secondly, even if the prior art is not in the same field of
Appeal No. 95-3288
Application 08/148,020
6
endeavor, it must be determined whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved. In re Clay, supra, 966 F.2d at 658-659,
23 USPQ2d at 1060. With respect to the field of endeavor, there
is little dispute that Charles is not within the same field of
endeavor as high pressure discharge lamps. However, Charles may
still be analogous if it is "reasonably pertinent to the
particular problem with which the inventor is involved." Id.
See also In re Paulsen, 30 F.3d 1475, 1481, 31 USPQ 2d 1671,
1675-76 (Fed. Cir. 1994).
The Examiner has showed that the prior art reference,
Aelterman, is concerned with providing a shield for a high
pressure discharge lamp that is heat resistant and electrically
insulative. Aelterman teaches that mica provides these desirable
characteristics. The Examiner also showed that the prior art
references, Davis, King or Carleton, teach that ceramic provides
these desirable characteristic and serves as a shield in lamps.
Thus, the prior art would have led those skilled in the art to
consult the ceramic arts for a suitable material to provide a
suitable shield in the high pressure discharge lamp. Thus, we
find that Charles, a teaching within the ceramic arts, is
Appeal No. 95-3288
Application 08/148,020
7
reasonably pertinent and therefore we find that the references
applied are analogous.
Combinability
Appellants also argue on pages 11-13 of the brief that
there is no basis to combine Charles with the other cited
references and if they were combined they do not teach an
optically opaque alumina shield. It is the burden of the
Examiner to establish why one having ordinary skill in the art
would have been led to the claimed invention by the express
teachings or suggestions found in the prior art, or by
implications contained
in such teachings or suggestions. In re Sernaker, 702 F.2d 989,
995, 217 USPQ 1, 6 (Fed. Cir. 1983). "Additionally, when
determining obviousness, the claimed invention should be
considered as a whole; there is no legally recognizable 'heart'
of the invention." Para-Ordnance Mfg. v. SGS Importers Int’l,
Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 117 S.Ct. 80 (1996) citing W. L. Gore & Assocs.,
Appeal No. 95-3288
Application 08/148,020
8
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
We note that Charles teaches an optically translucent
alumina ceramic. See column 1, lines 4-5. We note that all of
the Appellants' claims recite "optically opaque, heat-resistant
and electrically insulative alumina shield." We note that
Charles is entirely concerned with solving the problem of pro-
viding an optically translucent alumina ceramic. In column 1,
lines 21-48, Charles teaches that it is known in the prior art
that MgO, at a small level, is a necessary constituent in alumina
ceramics if a high degree of translucency is to be obtained in
the sintering process. Charles further teaches that the prior
art processes result in an excess of MgO which forms second phase
inclusions. These second phase inclusions are undesirable as
they contribute to light scattering and decrease the degree of
translucency. Charles discloses in column 2, lines 5-30, a
process that ensures the proper amount of MgO so as to provide
an optically translucent alumina.
Furthermore, we fail to find any suggestion of using
the Charles ceramic as an optically opaque, heat-resistant and
Appeal No. 95-3288
Application 08/148,020
9
electrically insulative alumina to shield the getter from
radiation emitted by an arc tube in a high pressure sodium vapor
lamp as recited in Appellants' claims. The Federal Circuit
states that "[t]he mere fact that the prior art may be modified
in the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d 1260,
1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). "Obviousness may not be established using hindsight or in
view of the teachings or suggestions of the inventor." Para-
Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239, citing W. L.
Gore, 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13.
We fail to find any suggestion in Charles that suggests
that the Charles ceramic has the needed characteristic to use
as the claimed shield in a lamp. Charles is only concerned with
optical translucent transmission properties which are not prop-
erties needed to solve the shielding problem. Therefore, we
find that the Examiner has failed to show that the prior art
Appeal No. 95-3288
Application 08/148,020
10
suggested the desirability of the modification as suggested by
the Examiner.
We have not sustained the rejection of claims 1, 5
through 7, 9 through 13, 15 through 18 and 22 through 28 under 35
U.S.C. § 103. Accordingly, the Examiner's decision is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-3288
Application 08/148,020
11
Stanley C. Corwin
General Electric Company
Nela Park
Cleveland, OH 44112