Ex Parte Takashima

Patent Trial and Appeal Board

Jul 26, 2016

12685069 (P.T.A.B. Jul. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/685,069 0111112010
23456 7590 07/28/2016
PATTERSON Intellectual Property Law, P.C.
1600 DIVISION STREET, SUITE 500
NASHVILLE, TN 37203
FIRST NAMED INVENTOR
Jun Takashima
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.
N8226.118 6610
EXAMINER
LI,MEIYA
ART UNIT PAPER NUMBER
2811
NOTIFICATION DATE DELIVERY MODE
07/28/2016 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):
docket@IPLA WGROUP.COM
jdh@iplawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUN TAKASHIMA 1
Appeal2015-000700
Application 12/685,069
Technology Center 2800
Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
JEFFREY R. SNAY, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 14, 15, 25, and 26. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
1 Panasonic Electric Works Co., Ltd. is identified as the real party in interest.
App. Br. 1.
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Application 12/685,069
Appellant claims an illumination device 70 comprising a substrate 72,
a first set of one or more light-emitting devices 14d wherein each device in
the first set further comprises a light emitting element 16, a transparent
enclosure 18, as well as a phosphor excitable by light emitted from the light
emitting element, and a second set of a plurality of light-emitting devices
14e wherein each of the second set of devices further comprises a light
emitting element 16, a transparent enclosure 18, as well as a phosphor, and
wherein the plurality of light-emitting devices are varied in a color
temperature to reduce color unevenness (independent claim 1, Figs. 2 and 8).
Appellant also claims a similar illumination device comprising a substrate
72 having a central portion and an outer portion circumferentially disposed
about the central portion, one or more light-emitting units 74 comprising one
or more central light-emitting devices 14d positioned in a central portion,
and a plurality of outer light-emitting devices 14e positioned in an outer
portion (remaining independent claim 14, Figs. 2 and 8).
Further details of the claimed subject matter are set forth in
representative claims 1 and 14, a copy of which taken from the Claims
Appendix of the Appeal Brief appears below.
1. An illumination device comprising:
a substrate;
a first set of one or more light-emitting devices mounted
on a first portion of the substrate, each light-emitting device in
the first portion further comprising
a light emitting element and
a transparent enclosure sealing the light emitting element
and
a phosphor excitable by light emitted from the light
emitting element, the phosphor in each device in the first set
further comprising a combination ratio associated with a first
color temperature;
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Application 12/685,069
a second set of a plurality of light-emitting devices
mounted on a second portion of the substrate and
circumferentially disposed about the first set of devices, and
each of the second set of devices further comprising
a light emitting element and
a transparent enclosure sealing the light-emitting element
and
a phosphor excitable by light emitted from the light-
emitting element, the phosphor in each of the second set of
devices further comprising a combination ratio associated with
a second color temperature higher than the first color
temperature; and
wherein the plurality of light-emitting devices are varied
in a color temperature to reduce color unevenness.
14. An illumination device comprising:
a substrate;
one or more light-emitting units positioned along a
surface of said substrate, a portion of the substrate surface
corresponding to each light-emitting unit further comprising a
central portion and an outer portion circumferentially disposed
about the central portion, each of said one or more light-
emitting units further comprising:
one or more central light-emitting devices positioned in
the central portion associated with the light-emitting unit, each
device in the central portion having a first color temperature,
and
a plurality of outer light-emitting devices positioned in
the outer portion, each device in the outer portion having a
second color temperature higher than the first color
temperature.
App. Br. 25-26 (Claims Appendix).
The Examiner rejects claims 1, 15, and 25 as well as the claims which
depend therefrom under the 2nd paragraph of 35 U.S.C. § 112 for failing to
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Application 12/685,069
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention.2
Concerning the claim 1 recitation "wherein the plurality of light-
emitting devices are varied in a color temperature to reduce color
unevenness," the Examiner considers the phrase "the plurality of light-
emitting devices" to lack clarity as to whether the devices in question are
those of the first set or the second set (see, e.g., Ans. 2-3). However, for the
reasons given by Appellant, one having ordinary skill in this art would
understand that "the plurality" refers to both the first and second sets of
light-emitting devices particularly because the devices of both sets are
disclosed as possessing the recited characteristics of varying in color
temperature to reduce color unevenness (App. Br. 15-16 (citing, e.g., Spec.
ii 60)).
Similarly, the Examiner considers the claim 15 phrase "the color
temperature for the light-emitting device" to lack clarity (1) as to whether
"the color temperature" in this phrase refers to the first color temperature or
the second color temperature recited in parent claim 14 and (2) as to whether
"the light-emitting device" in this phrase refers to the central or the outer
light-emitting devices recited in the parent claim (see, e.g., Ans. 3--4). We
2 In the Final Action, the Examiner rejected all appealed claims under the 2nd
paragraph of § 112 on the grounds that various recitations caused these
claims to be indefinite (Final Action 2-3). In the Answer, the Examiner
withdrew this rejection as to some the claim recitations (Ans. 2) but defends
the rejection as to certain recitations in claims 1, 15, and 25 by explaining
that Appellant's arguments concerning such recitations were unpersuasive
(id. at 2--4). Under these circumstances, we consider the Examiner to be
maintaining in this appeal the§ 112, 2nd paragraph, rejection of claims 1, 15,
and 25 as well as the claims dependent thereon.
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Application 12/685,069
agree with Appellant that the claim 15 phrase refers to the first and second
color temperatures respectively of the central and outer light-emitting
devices (App. Br. 18-19). Indeed, claim 15 expressly recites "each of the ..
. central light-emitting devices and ... outer light-emitting devices further
comprising ... a phosphor ... to convert the color temperature for the light-
emitting device" (emphasis added).
Finally, the Examiner considers claim 25 to be indefinite because the
phrase "the first portion" lacks antecedent basis (see, e.g., Ans. 4).
Appellant is correct that a lack of proper antecedent basis does not render a
claim indefinite if the claim can be construed with reasonable clarity (App.
Br. 19). In this regard, Appellant contends that one of ordinary skill in this
art would construe "the first portion" of claim 25 as referring to the "central
portion" recited in parent claim 14 especially in light of the claim 25
recitation preceding the phrase in question (id. at 20). This contention is
persuasive. The fact that "the first portion" lacks strict antecedent basis does
not render claim 25 indefinite.
For these reasons, we do not sustain the Examiner's § 112, 2nd
paragraph, rejection.
The Examiner rejects all appealed claims under 35 U.S.C. § 102(b) as
anticipated by Lee (US 2009/0001392 Al, published Jan. 1, 2009).
Appellant contests this rejection by presenting arguments specifically
directed to independent claims 1 and 14 with no additional arguments
specifically directed to dependent claims 15, 25, and 26 (App. Br. 20-23).
Accordingly, these dependent claims will stand or fall with their parent
independent claims.
We will sustain the§ 102 rejection for the reasons expressed in the
Final Action, the Answer, and below.
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Application 12/685,069
In rejecting the independent claims, the Examiner finds that Lee
discloses an illumination device comprising a first set of one or more
centrally-disposed, light-emitting devices 113 having a light-emitting
element 113, a transparent enclosure 130, as well as a phosphor and a second
set of a plurality of outer light-emitting devices 123 circumferentially
disposed about the first set with each device 123 having a light-emitting
element 123, a transparent enclosure 132, as well as a phosphor (Final
Action 4 (citing Lee Figs. 1-2, i-fi-137, 40, 42).
Concerning independent claim 1, Appellant argues "[t]he elements
123 are not independently associated with a transparent enclosure and a
phosphor, as is explicitly required in claim 1, but are instead part of one
light-emitting device 120 that collectively includes each of the elements 123
and only one transparent enclosure 132 and one phosphor" (App. Br. 22).
Appellant's argument is not persuasive. We agree with the Examiner
that claim 1 does not explicitly require each of the second set of light-
emitting devices to be independently associated with a separate transparent
enclosure and phosphor and that claim 1 encompasses the Figure 2
configuration of Lee wherein each of the second set of devices comprises a
common transparent enclosure 132 and phosphor (Ans. 6). Stated
differently, Lee's Figure 2 shows that each of the devices 123 comprises a
transparent enclosure 132 and phosphor wherein the enclosures and
phosphors are joined together, and the language of claim 1 does not exclude
an embodiment wherein the recited enclosures and phosphors are joined
together. In reply, Appellant contends that each of the second set of devices
"must be interpreted" as comprising an independent enclosure and phosphor
(Reply Br. 4---6) but does not cite any Specification disclosure requiring this
interpretation. While such a specific embodiment is disclosed by Appellant
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(see, e.g., Figs. 2 and 8), the Specification expressly teaches that the
invention is not limited to the specifically disclosed embodiments (see, e.g.,
Spec. i-fi-1 62 and 65). In the record before us, Appellant does not show error
in the Examiner's finding regarding Lee or interpretation of claim 1.
Regarding both independent claims 1 and 14, Appellant argues that
these claims require a plurality of second set or outer light-emitting devices
to be circumferentially disposed about a first set or central device whereas
the outer devices of Lee are mounted atop (i.e., on a higher plane than) the
central device such that these respective devices are on separate surfaces
(App. Br. 22-23).
Appellant does not identify any claim limitation requiring the central
and outer devices to be mounted or positioned on a substrate having a flat
surface whereby all the devices are in the same plane. As the Examiner
points out, in the absence of a requirement for a flat substrate surface having
only one plane, the claim recitation of outer devices that are
circumferentially disposed about a central device encompasses Lee's Figure
2 embodiment wherein outer devices 123 on a higher substrate plane are
circumferentially disposed about a central device 113 on a lower substrate
plane (Ans. 5 and 8). We emphasize that the Reply Brief does not respond
to the Examiner's point and does not discuss claim 14 specifically.
For the reasons stated above and given by the Examiner, Appellant
fails to identify error in the Examiner's finding that the independent claims
are anticipated by Lee. We sustain, therefore, the § 102 rejection of claims
1, 14, 15, 25, and 26.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
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Appeal2015-000700
Application 12/685,069
AFFIRMED
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