Ex Parte TIAN

Board of Patent Appeals and Interferences

Jul 29, 2003

09416914 (B.P.A.I. Jul. 29, 2003)

The opinion in support of the decision being entered today was not written for publication and is not
binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte
YONGCHI TIAN
___________
Appeal No. 2001-2124
Application No. 09/416,914
____________
ON BRIEF
____________
Before LIEBERMAN, DELMENDO and MOORE, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner refusing
to allow claims 1 through 17 which are all the claims pending in this application.
Appeal No. 2001-2124
Application No. 09/416,914
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THE INVENTION
The invention is directed to a method for coating inorganic particles. These particles
have a particle size of about 1 to 100 micrometers. The coating particles have a particle size
of about 1 to 100 nanometers, corresponding to 0.001 micrometers to 0.1 micrometers,
which surrounds the inorganic particles. The mixture is thereafter fired, separated from
uncoated inorganic particles and dried. Additional limitations are described in the following
illustrative claims.
THE CLAIMS
Claims 1, 8, 14 and 17 are illustrative of the appellant’s invention and are reproduced
below.
1. A method of coating inorganic particles comprising mixing inorganic particles having a
particle size of about 1 to 100 micrometers with a sufficient amount of coating particles
having a particle size of about 1 to 100 nanometers to surround said inorganic particles,
firing the mixture at a temperature high enough to soften or melt the coating particles,
thereby encapsulating the micrometer-sized particles, but at a temperature low enough so that
the surface properties of the micrometer-sized particles remain unchanged,
separating out any uncoated micrometer-sized particles by reacting or dissolving them
in a solvent, and
drying the coated particles.
6. A method according to claim 5 wherein the phosphor is a europium activated
strontium sulfide phosphor.
8. A method according to claim 6 wherein the phosphor is a europium activated calcium
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Application No. 09/416,914
3
sulfide phosphor.
14. A method of coating inorganic particles comprising:
dry mixing inorganic particles having a particle size of about 1 to 100 micrometers
with coating particles having a particle size of about 1 to 100 nanometers, and
firing the mixture at a temperature high enough to soften or melt the nanometer-sized
coating particles.
17. A method for coating inorganic particles comprising:
dry mixing MS: Eu phosphor particles where M is a calcium or strontium having a
particle size of from 1 to 100 micrometers with silica particles having a particle size of 2 to
50 nanometers; and
firing the mixture of phosphor particles and silica particles to a temperature of at least
the softening point for said silica particles.

THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the following references:
Lehmann 3,617,332 Nov. 2, 1971
Schulze 4,684,540 Aug. 4, 1987
Hase et al. (Hase) 4,874,985 Oct. 17, 1989
Aihara et al. (Aihara) 5,330,791 Jul. 19, 1994
Umeya et al. (Umeya) 5,489,449 Feb. 6, 1996
Appeal No. 2001-2124
Application No. 09/416,914
1A rejection under 35 U.S.C. § 112, second paragraph has been withdrawn by the examiner.
4
THE REJECTIONS1

Claim 14 stands rejected under 35 U.S. § 102 (b) as anticipated by Umeya.
Claims 1 through 6 and 9 through 12 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Schulze in view of Aihara and Hase.
Claims 7 and 8 stand rejected under 35 U.S.C. §103(a) as being unpatentable over
Schulze in view of Aihara and Hase and further in view of Lehmann.
Claims 13 through 16 stand rejected under 35 U.S.C. §103(a) as being unpatentable
over Schulze in view of Aihara and Hase.
Claims 17 stands rejected under 35 U.S.C. §103(a) as being unpatentable over
Schulze in view of Aihara and Hase and further in view of Lehmann.
OPINION
We have carefully considered all of the arguments advanced by the appellant and the
examiner, and agree with the examiner that the rejections of claims 1 through 12 and 14
under §§ 102(b) and 103(a) are well founded. Accordingly, we affirm the rejections for
the reasons set forth in the Answer and as discussed herein. We agree with the appellant that
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the rejections of claims 13 and 15 through 17 under 35 U.S.C. § 103(a) are not well
founded. Accordingly, we reverse these rejections.
As an initial matter, it is the appellant’s position that, “[c]laims 1-13 should be
considered together.” Claims 14 through 17 are to be considered separately. See Brief,
page 4. As noted in our Remand To The Examiner, however, “each of the rejections will be
considered separately. However, the patentability of individual claims within each group of
rejected claims will not be considered.” See Remand To The Examiner, page 3.
Accordingly, we select claims 1, 8, 13, 14 and 17 as representative of the claimed subject
matter and limit our consideration thereto. See 37 CFR §1.192(c)(7) (2000).
The Rejection under §102(b)
It is the appellant’s position that Umeya fails to anticipate claim 14 as Umeya, “teach
mixing the same size core particles with particles called ‘ultrafines’ that are 0.005 to 0.5
microns in size. These ‘ultrafines’ are much larger than the nanometer size particles required
by claim 14.” See Brief, page 5. We disagree with the appellant’s conclusion.
Umeya is directed to coated particles of inorganic materials. See column 1, lines
12-17 and 59-62. We find that the ultrafines of the inorganic material are combined with
core particles in a vapor phase. See column 2, lines 1-5 and each of the examples. It is
evident that no water is present in the combination and we conclude that the particles are
mixed while dry. Umeya teaches that “particles of the core material have usually an average
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particle size in the range of 0.1
m to 100
m, preferably 1
m to 10
m.” See column 2,
lines 50-52. We conclude that, the preferred range of core particle, 1
m to 10
m,
anticipates the particle size of “about 1 to 100 micrometers” required by the claimed subject
matter.
As to the particle size of the ultrafines, the appellant has correctly stated that Umeya
teaches an ultrafine having an average particle size in the range of 0.005
m to 0.5
m. See
column 2, lines 67-68. This size corresponds to 5 nm to 500 nm. We find, however, that
Umeya further discloses that the particle size of the ultrafines is “usually 0.1
m which
corresponds to 100 nm and is within the scope of the claimed subject matter.” We further
find that Example 2 discloses core particles having an average particle size of 1
m coated
with an ultrafine having an average particle size of 0.02
m corresponding to 20 nanometers.
We find that, Examples 3 and 4 disclose core particles having a particle size of 40-60
m
coated with ultrafines having a particle size of 0.01 to 0.05
m, corresponding to 10 to 50
nm. Each of the aforementioned examples teaches both core particle size and ultrafine
particle size within the scope of the claimed subject matter.
Based upon the above findings, we conclude that the teachings and disclosure of
Umeya are sufficient to establish a prima facie case of anticipation with respect to claim 14.
The Rejection under § 103(a) of claims 1-6 and 9-12
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With respect to the rejection over Schultze in view of Aihara and Hase, we adopt the
examiner’s position as stated in the Answer, pages 4 through 6, it being the examiner’s
position that Schultze discloses and teaches the method of claim 1 other than the particle size
of the core particles and the coating particles.
Schulze is directed to a coated pigmented phosphor and to a method for its
preparation. See column 1, lines 7-9. In addition to its disclosure of the claimed process as
found by the examiner, Schulze discloses heating the resulting dried phosphor at a
temperature of from 400o C to about 550o C for periods of about 2 hours to dehydrate a
silicate coating atop the phosphor and form a water insoluble glassy film silicate coating on the
pigmented phosphor. See column 3, lines 38-43 and Examples 1 through 3 which teach
heating for about 2 hours. The claimed subject matter requires “firing the mixture at a
temperature high enough to soften or melt the coating particles.” This limitation is expressly
disclosed in the specification at page 6, lines 5-14. The very next paragraph beginning in the
specification page 6, line 15 states that “[f]or forming a silica layer on phosphor powders,
firing can be carried out at a temperature of from about 500 to about 1100o C for from
about 20 to 120 minutes.” The teachings of Schulze, with respect to heating the silicate
coated phosphor, overlap that portion of the temperature range disclosed in the specification
between about 500 and about 550o C. We further find that Schulze utilizes both the lower
end of the temperature range, and the upper end of the time required to affect the changes in
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the coating, i.e., about 2 hours or 120 minutes. Accordingly, we conclude that Schulze
meets the requirement of the claimed subject matter in that patentee coats a pigmented
phosphor with silica for both a period of time, which falls within that disclosed in the
specification and at temperatures overlapping those of the claimed subject matter.
As for the particle size of the core particles and the silica coating, the examiner relies
upon two secondary references to Aihara and Hase each of which are directed to
embodiments likewise containing a pigmented phosphor. Aihara discloses the addition of
pigment which is attached to the phosphor. See column 5, lines 17-34. The pigmented
phosphor is thereafter coated with colloidal silica disclosed among a limited number of other
coating agents and having a grain size of 50 nm or less. See column 4, lines 33-42 and line
67 to column 5, line 16. Aihara specifically discloses that, “[i]f the grain size of a powder
exceed 50 nm, dispersability of a phosphor tends to be degraded. Therefore, a powder
having a grain size of 50 nm or less is preferably selected.” Id. We conclude, therefrom, that
it would have been obvious to one of ordinary skill in the art to have chosen a silica coating
having a particle size of 50 nm or less to coat the pigmented phosphor of Schulze.
Hase is also directed to embodiments including pigmented phosphors. See column 15,
lines 3-12 and column 18, lines 7-17 and claim 2, among other disclosures. Hase discloses
in the background of the invention, that phosphor grains having a median grain size in a range
of about 6 to 12 microns are generally utilized for the phosphor particles. See column 3,
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lines 15-20. The phosphors utilized by Hase in one embodiment have grain size in the range
of several microns to several tens of microns. See column 17, lines 48-52. Among the
examples wherein grain size of the phosphor is disclosed, we find a grain size of 8 microns,
Example 9; 9 microns, Example 12; 8 microns, Example 13; and 9 microns, Example 14.
Based upon the above considerations, we further conclude, that the examiner has
established a prima facie case of obviousness against the claimed subject matter. In our view,
the prior art would have suggested to those of ordinary skill in the art to have chosen a
phosphor particle having a particle size within the scope of the claimed subject matter, i.e., 1
to 100 microns as the pigmented phosphor of Schulze, because these sizes are the usual and
customary sizes utilized in the preparation of pigmented phosphor particles. Furthermore, as
each of the references is directed to a pigmented phosphor, there are both ample motivation
and a reasonable chance of success in choosing the particle size disclosed by Aihara and Hase
respectively. We further conclude, that the prior art has revealed that in so making or
carrying out, those of ordinary skill in the art would have had a reasonable expectation of
success. See In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
Accordingly, the teachings and disclosure of the combined references of Schulze,
Asihara and Hase are sufficient to establish a prima facie case of obviousness with respect to
claims 1-6 and 9-12.
The Rejection under § 103(a) of claims 7 and 8
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We shall also affirm the rejection of claims 7 and 8 as further relying upon a reference
to Lehmann. Lehmann discloses a europium activated calcium sulfide phosphor. See column
2, lines 14-15 and claim 6. Lehmann discloses in column 1, lines 24-27 that “[f]or
cathodoluminescent applications, the energy efficiencies of the alkaline-earth metal sulfide
phosphors are equal to the best efficiency levels obtained with other types of phosphors, such
as zinc sulfide.” Inasmuch as Schulze teaches and discloses the utilization of zinc sulfide
phosphors, column 2, line 4 and Example 3, it would have been obvious to one or ordinary
skill in the art to have substituted the alkaline earth metal sulfide phosphors for zinc sulfide
phosphors. Inasmuch as the appellant arguments are the same as those presented with respect
to the previous rejection, which arguments have been responded to in our analysis, we
conclude that the examiner has established a prima facie case of obviousness against the
claimed subject matter.
The Rejection under § 103(a) of claims 13-17
We shall not sustain the balance of the rejections of claims 13 through 17. Each of
the claims before us requires “dry mixing” inorganic particles with coating particles. The
examiner relies upon the disclosure of Schulze at column 3, lines as providing basis for, “some
dry mixing of the phosphor and coating particles.” See Answer, page 8. We find that
Schulze teaches: ”[I]t is preferred to dry the mixture with agitation to prevent agglomeration
of the phosphor while the mixture is in the blender dryer. The drying is done preferably by
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first heating at a temperature of about 100o C. for a sufficient time with agitation to remove
the water. . . . The resulting dried phosphor is then heated.” It is a matter of speculation
whether any mixing occurs following drying of the mixture. In the absence of a teaching or
suggestion that dry mixing actually occurs, we conclude that the mixing step disclosed by
Schulze is insufficient to meet the process limitations of the claimed subject matter.
DECISION
The rejection of claim 14 under 35 U.S. § 102 (b) as anticipated by Umeya is
affirmed.
The rejection of claims 1 through 6 and 9 through 12 under 35 U.S.C. § 103(a) as
being unpatentable over Schulze in view of Aihara and Hase is affirmed.
The rejection of claims 7 through 8 under 35 U.S.C. § 103(a) as being unpatentable
over Schulze in view of Aihara and Hase and further in view of Lehmann is affirmed.
The rejection of claims 13 through 16 under 35 U.S.C. § 103(a) as being
unpatentable over Schulze in view of Aihara and Hase is reversed.
The rejection of claim 17 under 35 U.S.C. § 103(a) as being unpatentable over
Schulze in view of Aihara and Hase and further in view of Lehmann is reversed.
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The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
PAUL LIEBERMAN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ROMULO H. DELMENDO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JAMES T. MOORE )
Administrative Patent Judge )
PL/lp
Appeal No. 2001-2124
Application No. 09/416,914
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BIRGIT E. MORRIS, ESQ.
16 INDIAN HEAD ROAD
MORRISTOWN, NJ 07960