Ex parte Strok et al.

Board of Patent Appeals and Interferences

Dec 24, 1998

08332317 (B.P.A.I. Dec. 24, 1998)

Application for patent filed October 31, 1994. 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journal and (2) is not binding precedent of the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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JACK M. STROK, GARY R. ALLEN
and THOMAS G. PARHAM
____________
Appeal No. 97-2909
Application No. 08/332,3171
____________
ON BRIEF
____________
Before CALVERT, Administrative Patent Judge and McCANDLISH,
Senior Administrative Patent Judge and STAAB, Administrative
Patent Judge.
CALVERT, Administrative Patent Judge.
Appeal No. 97-2909
Application No. 08/332,317
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
21, all the claims in the application.
The invention in issue is summarized on page 3 of
appellants’ brief as follows:
The invention is an arc tube with a visible-
light-transparent film which is coated on the
cold regions of the arc tube but not on the hot
regions. The film transmits visible radiation
and absorbs ultraviolet radiation emitted by the
arc to impose an additional heat load on the
cold regions so that the metal halides will not
condense and so that a high metal halide vapor
pressure can be maintained. The transparent
film is not coated on the hot regions, since
additional heat load at the hot regions would be
detrimental. The transparent film also reflects
infrared radiation emitted by the arc tube back
to the arc to increase efficiency and further
increase the temperature of the cold region due
to decreased thermal emittance. The transparent
film is preferably a dichroic coating having
alternating layers of high and low index of
refraction refractory materials.
The appealed claims are reproduced in the appendix of
appellants’ brief.
The references applied in the final rejection are:
Meulemans et al. (Meulemans) 4,307,315 Dec.
22, 1981
Parham et al. (Parham) 4,949,005 Aug. 14,
1990
Appeal No. 97-2909
Application No. 08/332,317
3
Arlt et al. (Arlt) 5,017,839 May 21,
1991
Bergman et al. (Bergman) 5,059,865 Oct.
22, 1991
The appealed claims stand finally rejected under 35
U.S.C.
§ 103 as unpatentable over the following combinations of
references:
(1) Claims 1 to 11, Arlt in view of Meulemans;
(2) Claims 12 to 14, Arlt in view of Meulemans and Parham;
(3) Claims 15 to 21, Arlt in view of Meulemans and Bergman.
With respect to rejection (1), the examiner notes that
Arlt discloses a light generating means in a vitreous light-
transmitting envelope which is coated with a "dichroic coating
9 of titanium dioxide and silicon dioxide" (col. 3, lines 38
and 39). Since these are the same materials of which
appellants’ coating may be made, i.e., titania and silica, and
are claimed in claim 14, the examiner asserts that the coating
would inherently absorb ultraviolet while transmitting visible
light, as recited in appellants’ claims (answer, page 5). The
examiner takes the position that the claimed light source
would have been obvious because "Meulemans teaches only
Appeal No. 97-2909
Application No. 08/332,317
4
coating part of the lamp for providing heat stability, and
therefore, to provide heat stability in the lamp of Arlt, one
could provide a partial coating" (id.).
We will not sustain this rejection. In the first place,
as appellants point out in their reply brief, Meulemans does
not disclose a "coating" on the envelope, as the examiner
states, but rather the use of doped UV-absorbing glass for the
"cold" regions of the lamp. Also, we are not convinced that
the coating of Arlt would necessarily be UV-absorbent,
especially since Arlt discloses using doped glass to absorb UV
radiation (col. 3, lines 44 to 47).
In any event, we do not consider that it would have been
obvious to one of ordinary skill to modify Arlt as proposed by
Appeal No. 97-2909
Application No. 08/332,317
5
the examiner. Arlt discloses coating the entire lamp envelope
with an IR-reflective coating in order to aid in providing a
fast start when switched on, and it is not evident why one of
ordinary skill would reduce this capability by eliminating
part of the coating. Meulemans does not furnish a motivation
for doing so, because Meulemans relates to UV absorption,
rather than to the IR reflection for which Arlt’s coating is
used. If anything, Meulemans might teach doping part, rather
than all, of the glass of Arlt’s envelope 2 in order to
provide selective UV absorption. However, since Meulemans
says nothing about IR reflection, it would not suggest
applying Arlt’s IR-reflective coating to less than the entire
envelope. The examiner’s assertion that this modification of
Arlt "could" be provided does not make the modification
obvious, since its desirability is not suggested by the prior
art. In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783-
84 (Fed. Cir. 1992).
Rejections (2) and (3) will likewise not be sustained,
since the Parham and Bergman references applied therein do not
overcome the deficiencies of the combination of Arlt and
Meulemans noted above.
Appeal No. 97-2909
Application No. 08/332,317
6
Rejection Under 37 CFR § 1.196(b)
Pursuant to 37 CFR § 1.196(b), claims 1 to 21 are
rejected
Appeal No. 97-2909
Application No. 08/332,317
7
under 35 U.S.C. § 103 as unpatentable over Meulemans in view
of Bergman. As noted above, Meulemans discloses a light
source of the type claimed in which the cold regions of the
vitreous envelope are made of transparent, UV-absorbing quartz
glass, and the hot regions are made of normal (UV-permeable)
quartz glass. Bergman discloses the same type of light source
in which the vitreous envelope 16 may have a coating 42
consisting of alternating layers of tantalum oxide and silicon
dioxide or titanium oxide and silicon dioxide (col. 4, lines 2
to 6). This coating reflects infrared energy and also
"absorbs the ultraviolet energy of the lamp 16" (col. 4, lines
13 to 15). In view of this disclosure, it would have been
obvious to one of ordinary skill in the art to use Bergman’s
UV-absorbing coating on the lamp of Meulemans instead of the
UV-absorbing glass portions 2 of Meulemans, this being simply
the use of one known UV-absorbing means in place of another.
As for claim 15 et seq., it would have been obvious to provide
the Meulemans lamp with a reflector in view of Bergman’s
disclosure thereof.
We recognize that both in appellants’ specification (page
3, lines 20 to 27) and in their brief (page 6, lines 1 to 9),
Appeal No. 97-2909
Application No. 08/332,317
8
they criticize the Meulemans lamp structure as being
laborious, expensive and impractical. Appellants also argue
in their brief
Appeal No. 97-2909
Application No. 08/332,317
9
(pages 6 to 7) that using a transparent film instead of
Meulemans’ doped quartz pieces is "not a mere matter of design
choice," but "there are many advantages" to applying a film to
portions of an undoped quartz arc tube vs. putting together
such a tube from pieces of doped and undoped quartz glass.
However, the fact that a modification of the prior art may
produce beneficial results is not conclusive on the question
of obviousness, but rather, if such results are expected, they
are evidence of obviousness. Ex parte Novak, 16 USPQ2d 2041,
2043 (BPAI 1989); affd. mem., 899 F.2d 1228, 16 USPQ2d 2043
(Fed. Cir. 1990). Here, we consider that it would have been
expected by one of ordinary skill that it would be less
laborious and/or expensive to apply a coating to a known lamp
envelope than to fabricate a new envelope out of pieces of two
different kinds of quartz glass. Therefore, the asserted
advantages resulting from appellants’ invention are not
persuasive that claims 1 to 21 would not have been obvious
over Meulemans in view of Bergman.
Appeal No. 97-2909
Application No. 08/332,317
10
Conclusion
The examiner’s decision to reject claims 1 to 21 is
reversed. Claims 1 to 21 are rejected pursuant to 37 CFR
§ 1.196(b).
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. . . .
Appeal No. 97-2909
Application No. 08/332,317
11
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals
and Interferences upon the same recond. . . .
Appeal No. 97-2909
Application No. 08/332,317
12
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)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
HARRISON E. MCCANDLISH ) APPEALS
Senior Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
SLD
Appeal No. 97-2909
Application No. 08/332,317
13
Pearne, Gordon, McCoy & Granger, LLP
1200 Leader Building
Cleveland, OH 44114
Shereece
Appeal No. 97-2909
Application No. 08/332,317
APJ CALVERT
APJ STAAB
APJ MCCANDLISH
REVERSED
Prepared: November 9, 1999