Ex Parte VAN DE VEN et alDownload PDFPatent Trial and Appeal BoardNov 8, 201713425689 (P.T.A.B. Nov. 8, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 931 100 NP 2567 EXAMINER TUMEBO, TSION M ART UNIT PAPER NUMBER 2875 MAIL DATE DELIVERY MODE 13/425,689 03/21/2012 25191 7590 11/08/2017 BURR & BROWN, PLLC PO BOX 7068 SYRACUSE, NY 13261-7068 Antony Paul VAN DE VEN 11/08/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTONY PAUL VAN DE VEN, THOMAS G. COLEMAN, and GERALD H. NEGLEY Appeal 2017-001166 Application 13/425,689 Technology Center 2800 Before DONNA M. PRAISS, CHRISTOPHER L. OGDEN, and MICHAEL G. McMANUS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 1 In this opinion, we refer to the Specification filed Mar. 21, 2012 (“Spec.â€), the Final Office Action dated June 2, 2015 (“Final Act.â€), the Appeal Brief filed Mar. 2, 2016 as supplemented July 14, 2016 (“App. Br.â€), the Examiner’s Answer dated Sept. 23, 2016 (“Ans.â€), and the Reply Brief filed Oct. 24, 2016 (“Reply Br.â€). Appeal 2017-001166 Application 13/425,689 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1—17 and 20-25 as obvious under 35 U.S.C. § 103(a) over Imai,3 Lesniak,4 and Ishidu.5 App. Br. 10; Final Act. 3.6 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The subject matter on appeal relates to a lighting device comprising a light source and a heat dissipation element comprising sintered silicon carbide as one material of the heat dissipation element. Spec. 3:23—25. According to the Specification, “[t]he use of sintered silicon carbide ... is particularly well suited for lighting devices that comprise one or more solid state light emitters ... in order to dissipate heat from the solid state light emitters.†Id. at 3:33—4:1. Claim 1 is illustrative (disputed matter italicized): 1. A lighting device comprising: at least a first light source; and at least a first heat dissipation element, at least a first region of the first heat dissipation element comprising at least one material selected from among (1) sintered silicon carbide, (2) a sintered mixture of silicon carbide and at least one other ceramic material, (3) a sintered mixture of silicon carbide and at least one metal other than aluminum, (4) a sintered mixture of silicon carbide, at least one other ceramic material and at least one metal other than aluminum and (5) a sintered mixture of 2 Appellants identify Cree, Inc. as the real party in interest. App. Br. 1. 3 Imai et al., US 2010/0007267 Al, pub. Jan. 14, 2010 (“Imaiâ€). 4 Lesniak et al., US 2002/0160902 Al, pub. Oct. 31, 2002 (“Lesniakâ€). 5 Ishidu et al., US 2006/0118808 Al, pub. June 8, 2006 (“Ishiduâ€). 6 The rejections of claim 26 under 35 U.S.C. §§ 103(a) and 112, 4th paragraph, stand withdrawn because the claim has been cancelled. Ans. 2. 2 Appeal 2017-001166 Application 13/425,689 silicon carbide, at least one other ceramic material and at least one metal, the first light source oriented such that at least a portion of light emitted from the first light source is directed toward at least a first portion of the first region of the first heat dissipation element. App. Br. A-l (Claims App’x). Independent claim 25 is similar to claim 1 with the exception that it does not include the option of solely sintered silicon carbide being the “at least one material selected†from the claimed list of materials. Id. at A-5 (Claims App’x). OPINION The Examiner finds that appealed claims 1—17 and 20—25 would have been obvious to one of ordinary skill in the art at the time of the invention for the reasons stated on pages 3—8 of the Final Office Action.7 Appellants argue claims 1—13, 15, 21, and 22 as a group, claims 14, 16, 17, and 20 as a second group, claims 23 and 24 as a third group, and separately argue the rejection of claim 25. App. Br. 11—23. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), claims 2—13, 15, 21, and 22 will stand or fall together with independent claim 1, claims 16, 17, and 20 will stand or fall with claim 14, and claim 24 will stand or fall with claim 23. Claims 1—13, 15, 21, and 22 Appellants argue that the Examiner erred in rejecting claim 1 over the combination of Imai, Fesniak, and Ishidu because sintering the crystalline silicon carbide with dopants used to make the substrate in Imai “would 7 Although the Examiner lists claims 1—26 in the statement of the rejection (Final Act. 3), the Examiner does not make any findings regarding claims 18 and 19 in the discussion that follows. 3 Appeal 2017-001166 Application 13/425,689 introduce defects and destroy the crystallinity on which Imai ’267 relies to provide its substrate with fluorescence.†App. Br. 11. According to Appellants, “[sjintering SiC would not provide the 6 H SiC crystals required by Imai ’267.†Id. Appellants summarize the disclosures of Imai {id. at 12—15) and conclude: Persons of skill in the ceramic arts would recognize immediately that sintering SiC to make a substrate for the device disclosed in Imai ’267 would introduce defects and destroy the crystallinity on which Imai ’267 relies to provide its substrate with fluorescence. A person of skill in the art would know that sintering SiC would not provide the 6 H SiC crystals required by Imai ’267. Persons of skill in the art know that techniques such as chemical vapor deposition are employed to provide 6 H SiC crystals. Id. at 15. Appellants concur with the Examiner that Lesniak teaches that sintered SiC is distinguished by high hardness, an ability to withstand high temperatures, high thermal conductivity, resistance to thermal shocks and oxidation and a high resistance to abrasion and corrosion, but contend that Lesniak does not disclose that sintered SiC would possess the qualities of emitting visible light when excited by radiation as Imai describes for its fluorescent substrate. Id. at 15—16. Thus, Appellants assert, the Examiner erred in not providing a valid basis for modifying Imai with the sintered SiC taught by Lesniak. Id. at 16. Appellants further argue that the Examiner erred because Ishidu likewise “provides absolutely no disclosure of suggestion that sintered SiC would possess the properties that Imai ’267 requires the fluorescent substrate to possess†concluding that “[wjithout such features, the lighting device of Imai ’267 would not function as intended†and, therefore, would not be an obvious substitution of materials. Id. at 18. 4 Appeal 2017-001166 Application 13/425,689 The Examiner responds that Appellants provide no evidence or proof that sintered silicon carbide cannot be doped with at least one of B, Al, or N in order to excite and emit visible light when excited by radiation emitted from the LED elements as taught by Imai. Ans. 2—3. The Examiner finds that Imai teaches that Si or SiC is doped with wavelength conversion fluorescent material in order to possess the wavelength conversion properties. Id. at 3 (citing Imai 45, 75, 78). The Examiner further finds that Imai discloses silicon carbide as the heat dissipation element, which both Lesniak and Ishidu disclose has higher heat dissipation efficiency when sintered silicon carbide is used in place of regular silicon carbide. Id. at 4. Regarding the combination of references, the Examiner responds that it would have been obvious to modify Imai by replacing the silicon carbide heat dissipation element with a sintered silicon carbide heat dissipation element as taught by Lesniak and Ishidu in order to prevent rises in temperature that could result in reduced light emitting efficiency and shifting of wavelengths of light affecting color. Id. In the Reply Brief, Appellants argue that the Examiner’s Answer “completely overlooks], however, the clear disclosure in Imai ’267 that a specific crystalline structure (namely, 6 H type SiC crystals having a periodic structure every six layers) is needed in order to follow the disclosure in Imai ’267.†Reply Br. 2—3. Appellants also argue that the Examiner fails to “provid[e] any basis for asserting that sintering SiC . . . would provide 6 H type SiC crystals having a periodic structure every six layers.†Id. at 3. According to Appellants, the Examiner provides no “rationale for asserting that sintering SiC and later doping the sintered SiC . . . would be a predictable solution to provide 6 H type SiC crystals 5 Appeal 2017-001166 Application 13/425,689 having a periodic structure every six layers let alone to provide a substrate having such a crystal structure and that emits fluorescent light. . . when excited by UV radiation.†Id. We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejectionsâ€)). We are not persuaded by Appellants’ arguments that the Examiner reversibly erred in rejecting claim 1 over the combination of Imai, Lesniak, and Ishidu for the reasons stated in the Final Action and Answer. We add the following primarily for emphasis. Appellants do not dispute that Imai discloses its specific crystalline structure is a heat dissipation element. Ans. 4; Imai 171. Appellants also do not dispute or adequately rebut the Examiner’s finding that sintered SiC doped with B, Al, or N would excite and emit light from the SiC fluorescent substrate. Ans. 3; Reply Br. 3. In addition, Appellants do not dispute the Examiner’s finding that Lesniak and Ishidu evidence it was known that higher heat dissipation efficiency could be achieved when sintered silicon carbide is used in place of regular silicon carbide. Ans. 4. The trouble with Appellants’ assertion (Reply Br. 3) that Imai teaches “the specific crystal structure [is] need[ed] to provide a ‘fluorescent substrate’†is that it is not supported by the evidence cited in the record on Appeal. Imai discloses that “[t]he SiC fluorescent substrate 10 can be produced by any suitable method.†Imai 145. Imai also discloses doping 6 Appeal 2017-001166 Application 13/425,689 the substrate with Al, N, or B to achieve the desired properties (App. Br. 13). Specifically, Imai states that fluorescent light is emitted by the substrate “as a result of the recombination of donors and acceptors when excited by UV radiation.†Imai 144. According to Imai, N is a donor impurity and Al and B are acceptor impurities. Id. 143. Therefore, we are not persuaded by Appellants’ argument (Reply Br. 2—3) that Imai teaches it is the specific crystalline structure of 6 H type SiC crystals having a periodic structure every six layers that is responsible for providing the property of fluorescence. Moreover, the rejection is not based upon a bodily incorporation of Lesniak and Ishidu into Imai. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.â€) (citations omitted); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.â€). Appellants do not adequately show error in the Examiner’s finding that sintered silicon carbide doped with N, Al, or B would excite and emit visible light when excited by radiation emitted from the LED elements (Ans. 2—3). Appellants have not asserted that the proposed modification of Imai would have been beyond the capabilities of a person of ordinary skill in the art. Absent such an assertion, we “take account of the inferences and creative steps that a person of ordinary skill in the art would employ,†and find a person of ordinary skill in the art would have overcome those 7 Appeal 2017-001166 Application 13/425,689 difficulties within their level of skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.â€); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,†as well as routine steps, that an ordinary artisan would employ). We also find unpersuasive Appellants’ argument that the Examiner’s combination of references fails to provide any valid basis for the combination (App. Br. 18; Reply Br. 3). The Examiner cites Lesniak and Ishidu’s teaching that sintered silicon carbide has higher heat dissipation efficiency than regular silicon carbide as the reason to modify Imai. Ans. 4. Appellants do not dispute this finding. App. Br. 18. Therefore, the Examiner’s finding that one skilled in the art would have had reason to modify Imai’s substrate by substituting a sintered silicon carbide for Imai’s crystalline silicon carbide in order to improve the heat dissipation efficiency of Imai’s substrate is supported by the preponderance of the evidence. Similarly, Appellants’ assertion that the modification of Imai by the teachings of Lesniak and Ishidu would not be expected to provide the properties required by Imai (App. Br. 14), specifically the light transmission and conversion properties disclosed by Imai {id. at 18), is unpersuasive because it is not supported by evidence. Appellants provide no evidence that sintered SiC, when subsequently doped with Al, N, or B as taught by Imai, would not have been expected to emit visible light when excited by radiation emitted from the LED elements. Ans. 2. It is insufficient that Imai discloses a particular crystalline silicon carbide used in forming its fluorescent 8 Appeal 2017-001166 Application 13/425,689 substrate with dopants (App. Br. 18) when Imai also discloses doping the substrate with Al, N, or B to achieve the desired properties {id. at 13). According to Imai paragraphs 43 and 44, fluorescent light is emitted by the substrate “as a result of the recombination of donors and acceptors when excited by UV radiation†where N is a donor impurity and Al and B are acceptor impurities. Thus, the Examiner’s findings are supported by the preponderance of the evidence on this record. Indeed, it is recognized that “[ojften, it will be necessary for a court to look to interrelated teachings of multiple patents.†KSR, 550 U.S. at 418. In addition, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.†Id. Thus, the fact that the cited references describe different forms of silicon carbide does not alone support Appellants’ argument that the lighting device of Imai would not function as intended if modified by the combined teachings of the references (App. Br. 15). Therefore, we are not persuaded of reversible error in any of the Examiner’s findings as to Imai, Lesniak, and Ishidu and the Examiner’s determination that the claimed method would have been obvious to one of ordinary skill in the art over the combination of cited prior art. In sum, we affirm the Examiner’s rejection of claim 1 as obvious over the combination of Imai, Lesniak, and Ishidu. Claims 14, 16, 17, and 20 Appellants argue that the Examiner erred in rejecting claim 14 over the combination of Imai, Lesniak, and Ishidu because the proposed modification of Imai “would introduce defects and destroy the crystallinity 9 Appeal 2017-001166 Application 13/425,689 on which Imai ’267 relies to provide its substrate with fluorescence.†App. Br. 19. As with claim 1, Appellants argue that because Imai does not disclose a fluorescent substrate of sintered SiC, it would not have been obvious to replace Imai’s substrate with the material of Lesniak and Ishidu. Id. at 20. For the same reasons discussed above in connection with claim 1, we are not persuaded of reversible error in any of the Examiner’s findings as to Imai, Lesniak, and Ishidu and the Examiner’s determination that the claimed method would have been obvious to one of ordinary skill in the art over the combination of cited prior art. In sum, we affirm the Examiner’s rejection of claim 14 as obvious over the combination of Imai, Lesniak, and Ishidu. Claims 23 and 24 Appellants argue that the Examiner erred in rejecting claim 23 over the combination of Imai, Lesniak, and Ishidu because the proposed modification of Imai “would introduce defects and destroy the crystallinity on which Imai ’267 relies to provide its substrate with fluorescence.†App. Br. 21. As with claim 1, Appellants argue that because Imai does not disclose a fluorescent substrate of sintered SiC, it would not have been obvious to replace Imai’s substrate with the material of Lesniak and Ishidu. Id. For the same reasons discussed above in connection with claim 1, we are not persuaded of reversible error in any of the Examiner’s findings as to Imai, Lesniak, and Ishidu and the Examiner’s determination that the claimed method would have been obvious to one of ordinary skill in the art over the combination of cited prior art. 10 Appeal 2017-001166 Application 13/425,689 In sum, we affirm the Examiner’s rejection of claim 23 as obvious over the combination of Imai, Lesniak, and Ishidu. Claim 25 Appellants argue that the Examiner erred in rejecting claim 25 over the combination of Imai, Lesniak, and Ishidu because the proposed modification of Imai “would introduce defects and destroy the crystallinity on which Imai ’267 relies to provide its substrate with fluorescence.†App. Br. 22. As with claim 1, Appellants argue that because Imai does not disclose a fluorescent substrate of sintered SiC, it would not have been obvious to replace Imai’s substrate with the material of Lesniak and Ishidu. Id. at 23. Appellants additionally assert that Imai does not disclose or suggest any mixture of silicon carbide and another ceramic material and/or any metal other than aluminum. Id. The Examiner does not respond to Appellants’ argument that Imai does not disclose or suggest a mixture of silicon carbide and another ceramic material. Although Appellants do not dispute that Imai discloses a different ceramic material than Lesniak and Ishidu because Imai discloses a crystalline SiC material, claim 25 is not met by regions of the substrate comprising a sintered SiC and regions comprising crystalline SiC. This is because claim 25 does not recite a mixture of sintered silicon carbide and another ceramic material, but, rather, recites “a sintered mixture of silicon carbide and at least one other ceramic material.†Therefore, substitution of sintered SiC in the composition of Imai in at least a region of the heat dissipation element as the Examiner finds (Final Act. 3) does not disclose a 11 Appeal 2017-001166 Application 13/425,689 sintered mixture of silicon carbide and at least one other ceramic material as required by claim 25. Accordingly, we reverse the Examiner’s rejection of claim 25 as obvious over the combination of Imai, Lesniak, and Ishidu. CONCLUSION We affirm the Examiner’s decision to reject claims 1—17 and 20—24 as obvious under 35 U.S.C. § 103(a). We reverse the Examiner’s decision to reject claim 25 as obvious under 35 U.S.C. § 103(a). DECISION The Examiner’s decision is affirmed-in-part. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED-IN-PART 12 Copy with citationCopy as parenthetical citation