Ex parte Seder

Board of Patent Appeals and Interferences

Nov 30, 2000

08301279 (B.P.A.I. Nov. 30, 2000)

Application for patent filed September 6, 1994,1
entitled "Serpentine Avionics Fluorescent Tube With Uniformity
Of Luminance And Chromaticity," which is a continuation of
Application 08/021,366, filed February 23, 1993, now
abandoned.
- 1 -
The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
_______________
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte THOMAS A. SEDER

Appeal No. 1998-0873
Application 08/301,2791

ON BRIEF

Before BARRETT, FLEMING, and HECKER, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1998-0873
Application 08/301,279
- 2 -
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 7-13. Claims 1-6 are
canceled.
We reverse, but enter a new ground of rejection.
BACKGROUND
The disclosed invention is directed to a fluorescent
tube having one or more "U" shaped bends, wherein the
phosphor layer is produced by dragging a spray nozzle
through the tube while phosphors are being pumped through a
hose to the nozzle and out on to the inner surface of the
tube.
Claim 7 is reproduced below.
7. A miniature fluorescent tube comprising;
a nonlinear tube having a first end and a second
end and at least one "U" shaped portion there between;
and,
a phosphor layer disposed in said tube by pumping
phosphors through a hose coupled to a spray nozzle and
dragging the hose and spray nozzle from said first end
through said tube to said second end while phosphors
are being pumped out the nozzle on to the tube.
The Examiner relies on the following prior art:
Mossel et al. (Mossel) 4,081,714 March 28, 1978
Muta 4,216,738 August 12,
1980
Appeal No. 1998-0873
Application 08/301,279
- 3 -
Young 4,337,414 June 29, 1982
Claims 7-13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mossel, Young, and Muta.
We refer to the Final Rejection (Paper No. 12) (pages
referred to as "FR__") and the Examiner's Answer (Paper
No. 16) (pages referred to as "EA__") for a statement of the
Examiner's position, and to the Appeal Brief (Paper No. 15)
(pages referred to as "Br__") for a statement of Appellant's
arguments thereagainst.
OPINION
Obviousness
The Examiner's rejection attempts to show the
obviousness of the process of forming the phosphor layer.
As noted in the new ground of rejection, infra, such
process-of-making limitations are not entitled to patentable
weight in a product claim except to the extent they produce
a different product. Nevertheless, since the rejection is
not based on the product, we must consider the process
limitations.
The Examiner finds that Mossel teaches the concept of
spraying the inside of a linear tube with phosphor while
Appeal No. 1998-0873
Application 08/301,279
- 4 -
moving the nozzle with respect to the lamp envelope (FR2;
EA4). However, Mossel does not teach spraying the inside of
a tube with one or more "U" shaped bends. The Examiner
finds that Young discloses (at col. 5, lines 67-68) that
there should be a uniform coating of phosphor material
(FR2-3; EA4). The Examiner finds (FR3; EA5) that Muta
teaches an apparatus "to ensure a complete coating in a
simple manner not only for straight pipes but for bent and
curved pipes as well" (Muta, col. 2, lines 13-15). The
Examiner essentially concludes that it would have been
obvious to provide a uniform phosphor coating on a tube with
one or more "U" bends in view of Young and to modify the
tube spraying apparatus of Mossel in view of the teachings
of Muta (FR3-4; EA5).
Appellant argues (Br3):
The references do not teach how to phosphor coat
the inside of [the] lamp tube after it is bent into a
nonlinear shape. Moreover, it does not even suggest
the feasability [sic] of modifying their approach to
accomplish phosphor coating after the tube is bent.
The Applicant believes that the sewer painting
teachings of Muta do not suggest the modification or
combination of the references to arrive at the claimed
invention.
Appeal No. 1998-0873
Application 08/301,279
- 5 -
On balance, we agree with Appellant that there is no
motivation to combine the references to arrive at the
claimed process steps. The lamp references to Mossel and
Young do not suggest the feasibility of coating a lamp tube
with phosphor after it has been bent into a nonlinear shape
by using a nozzle dragged through the tube. While Young
discloses that the phosphor coating should be uniform, it
contemplates only the two kinds of phosphor application
processes disclosed as prior art by Appellant (col. 16,
lines 1-17). Muta discloses painting large underground
water pipes and there is no suggestion that the arrangement
could be used in coating fluorescent tubes. Thus, the only
apparent motivation for one of ordinary skill in the lamp
art to look to the painting arrangement in Muta to coat a
"U"-shaped fluorescent tube is found in Appellant's
disclosure, the use of which is hindsight. "The 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,
23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992), citing
Appeal No. 1998-0873
Application 08/301,279
- 6 -
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). Accordingly, we conclude that the Examiner has
failed to establish a prima facie case of obviousness as to
independent claims 7 and 10. The rejection of claims 7-13
is reversed.
New ground of rejection under 37 CFR § 1.196(b)
Claims 7, 10, and 11 are rejected under 35 U.S.C. § 102
as anticipated by Appellant's admitted prior art (APA) which
states (specification, p. 3):
Another [prior art] method [for making serpentine
fluorescent tubes] has been to bend uncoated tubes into
a "U" shape and then apply the phosphors via the
typical phosphor slurry flush coat method used for
linear tubes. Success has been claimed for uniform
application of phosphors to "U" shapes using the flush
coat method, but "S" shaped or "M" shaped tubes have
not been uniformly phosphor coated with the typical
slurry deposition method.
The claims are in product-by-process format because
they define the phosphor layer in a miniature fluorescent
tube (claim 7) or lamp (claim 10) by the process of how the
phosphor layer is applied. Product-by-process claims are
treated differently for patentability purposes during
ex parte examination in the USPTO than for infringement and
Appeal No. 1998-0873
Application 08/301,279
- 7 -
validity purposes during litigation. See Atlantic
Thermoplastics Co. v. Faytex Corp., 970 F.2d 834, 846,
23 USPQ2d 1481, 1490-91 (Fed. Cir. 1992). The patentability
of product-by-process claims is discussed in In re Thorpe,
777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985):
[E]ven though product-by-process claims are limited by
and defined by the process, determination of
patentability is based on the product itself.
[Citations omitted.]
The patentability of a product does not depend on
its method of production. If the product in a
product-by-process claim is the same as or obvious from
a product of the prior art, the claim is unpatentable
even though the prior product was made by a different
process. [Citations omitted.]
Process limitations must be given weight to the extent they
produce a different structure.
The question is whether the product is the same as or
obvious over the prior art. In this case, the APA admits
that "U"-shaped tubes have been uniformly coated by the
slurry flush coat method. Thus, there is no structural
difference in the phosphor layer applied by this prior art
method versus Appellant's method. Claims 7, 10, and 11 are
anticipated.
Appeal No. 1998-0873
Application 08/301,279
- 8 -
By contrast, the phosphor coated product produced by
the other disclosed prior art process of heating a linear
phosphor-coated tube to its working temperature and then
bending it (specification, pp. 3-4), is not the same as the
phosphor coated product produced by Appellant's claimed
process of dragging a nozzle through the tube while pumping
phosphors onto the tube because bending after coating causes
the efficiency of the phosphors to be diminished and causes
cracks in the phosphor coating, whereas Appellant's process
does not create these problems. Thus, the structural
properties of the phosphor layer are different and the
product is different.
The APA states that a uniform coating has not been
achieved with "S" shaped or "M" shaped tubes. Thus, the
product of claims 8, 9, 12, and 13 is different from the APA
because it impliedly has a more uniform coating than the
APA.
CONCLUSION
The rejection of claims 7-13 is reversed.
A new ground of rejection is entered as to claims 7,
10, and 11 pursuant to 37 CFR § 1.196(b).
Appeal No. 1998-0873
Application 08/301,279
- 9 -
This decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1,
1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that, "[a]
new ground of rejection shall not be considered final for
purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to
the new ground of rejection to avoid termination of
proceedings (37 CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating
to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which
event the application will be remanded to the
examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals
and Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED - 37 CFR § 1.196(b)
Appeal No. 1998-0873
Application 08/301,279
- 10 -
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF
PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART N. HECKER )
Administrative Patent Judge )
Appeal No. 1998-0873
Application 08/301,279
- 11 -
ROCKWELL INTERNATIONAL CORPORATION
Patent Dept., M/S 175-100
400 Collins Road, N.E.
Cedar Rapids, IA 52498