Ex Parte Wierer et al

Patent Trial and Appeal Board

Aug 8, 2016

13309887 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/309,887 12/02/2011
136186 7590 08/10/2016
Lumileds LLC
370 West Trimble Road
San Jose, CA 95131
FIRST NAMED INVENTOR
Jonathan J. Wierer JR.
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.
2004P01691US03 6577
EXAMINER
FAN, BO
ART UNIT PAPER NUMBER
2815
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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):
nancy.glynn@philips.com
us-ip@patentlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte JONATHAN J. WIERER, JR.,
SERGE BIERHUIZEN, AURELIEN J. F. DAVID,
MICHAEL R. KRAMES, and RICHARD J. WEISS
Appeal2015-000797
Application 13/309,887
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellants 1 filed an appeal under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1, 2, 5, 7-11, and 16.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.3
1 Appellants identify the real party in interest as Philips Lumileds Lighting
Company LLC and Koninklijke Philips Electronics N.V. Appeal Br. 2.
2 Claims 15, 17, 19-26, and 34 have been withdrawn from consideration.
3 Our decision refers to Appellants' amended Specification (Spec.) filed
December 2, 2011, the Non-Final Office Action (Non-Final Act.) mailed
March 13, 2014, Appellants' Appeal Brief (Appeal Br.) filed July 3, 2014,
the Examiner's Answer (Ans.) mailed August 18, 2014, and Appellants'
Reply Brief (Reply Br.) filed October 15, 2014.
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Application 13/309,887
STATEMENT OF THE CASE
The subject matter on appeal relates to wavelength converting
semiconductor light emitting devices (see, e.g., claim 1 and Spec i-f 2).
Appellants disclose that efficient light emitting diodes (LEDs) emit light
having a peak wavelength in one region of the light spectrum. Spec. i-f 3.
Light generated by an LED can be converted to light have a longer
wavelength by using a wavelength-converting material, such as a phosphor.
Spec. ,-r 4.
Appellants disclose the wavelength-converting material can be
included in a layer, such as a layer of resin, covering a III-nitride die. Spec.
i-f 5. However, a III-nitride LED operates at high power and high
temperature, which causes the layer including the wavelength-converting
material to degrade, reduces light extraction efficiency of the LED, and
makes the appearance of the LED undesirable. Spec. i-f 7. Appellants further
disclose a phosphor can be provided in the form of a thin film or conformal
layer but these forms can be difficult to handle because they are fragile.
Spec. i-f 40. In view of these considerations, Appellants disclose a device in
which wavelength converting materials are formed as self-supporting
ceramic slabs. Id.
Independent claim 1, reproduced below from the Claims Appendix to
Appellants' Appeal Brief, is illustrative of the subject matter on appeal. The
limitations at issue are italicized.
1. A device comprising:
a semiconductor structure comprising:
a light emitting layer disposed between an n-type
region and a p-type region; and
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a repeating variation in refractive index formed
within or on a surface of the semiconductor structure,
wherein the refractive index varies in a direction parallel
to a major surface of the light emitting layer; and
a ceramic layer disposed in a path of light emitted by the
light emitting layer, the ceramic layer comprising a wavelength
converting material, the ceramic layer comprising a self-
supporting slab, wherein a surface of the ceramic layer is
textured.
Appeal Br. 1 7.
The claims on appeal stand rejected as follows: 4
(1) claims 1, 2, 5, 7-11, and 16 under 35 U.S.C. § 112, second
paragraph, as being indefinite;
(2) claims 1, 2, 5, 7-11, and 16 under 35 U.S.C. § 102(b) as being
anticipated by Erchak;5 and
(3) claims 1, 2, 5, 7-11, and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Mueller. 6
4 The following rejections have been withdrawn by the Examiner: the
rejection of claims 1, 2, 5, 7-11, and 16 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement and the
rejection of claims 1, 2, 5, 7-11, and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Erchak et al., US 7 ,211,831 B2, issued May 1, 2007
("Erchak"), in view ofRossner et al., US 2004/0145308 Al, published July
29, 2004 and Takahara et al., US 6,504,156 Bl, issued Jan. 7, 2003. Ans. 3.
The objection to the drawings (Non-Final Act. 2) is also not before us on
appeal.
5 Erchak et al., US 7,211,831 B2, issued May 1, 2007.
6 Mueller et al., US 2005/0269582 Al, published Dec. 8, 2005.
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ANALYSIS
Rejections under 35 U.S. C. § 112, Second Paragraph
Claims 1, 2, 5, 7-11, and 16 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. For the reasons given below, we will
not sustain this rejection. We separately address below the issues raised in
the Examiner's rejection.
Claim 1, "self-supporting slab"
The Examiner rejects claim 1 because the language "self-supporting
slab" is indefinite. Non-Final Act. 6. Specifically, the Examiner finds it is
unclear what structure is defined by a "self-supporting slab" and the claims
do not recite a ceramic layer that is self-supporting because the ceramic
layer is disposed on structure of a device. Id.
The second paragraph of 35 U.S.C. § 112 requires the specification
"conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention."
35 U.S.C. § 112 i-f 2 (2011). "As the statutory language of 'particular[ity]'
and 'distinct[ ness]' indicates, claims are required to be cast in clear-as
opposed to ambiguous, vague, indefinite-terms." In re Packard, 751 F.3d
1307, 1313 (Fed. Cir. 2014). Exact precision is not required. The test for
determining the question of indefiniteness may be formulated as whether the
claims "set out and circumscribe a particular area with a reasonable degree
of precision and particularity." In re Moore, 439 F.2d 1232, 1235 (CCPA
1971 ). With regard to the reasonableness standard, one must consider the
language in the context of the circumstances. Packard, 751 F.3d at 1313.
Appellants cite paragraph 42 of US 2012/0074448, i.e., the published
Specification (equivalent to paragraph 40 of the originally filed
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Specification) as describing self-supporting slabs as "formed separately from
the semiconductor device, then attached to the finished semiconductor
device or used as a growth substrate for the semiconductor device." Appeal
Br. 7; Reply Br. 2. Appellants contend a self-supporting ceramic layer has a
structure that "can be manufactured, moved, and otherwise handled as a
separate structure without being damaged and without being attached to the
semiconductor device." Id. In response to the Examiner's determination
that one of ordinary skill in the art would not "associate a particular set of
pre-forming, handling, and manufacturing method limitations with a
structure of 'self-supporting,"' Appellants argue the Examiner has not
properly considered the meaning of "self-supporting" in view of the
Specification. Reply Br. 2-3.
Appellants' arguments are persuasive. The language "self-
supporting" has a reasonable degree of precision and particularity because
the Specification, particularly paragraph 42 of the publication (paragraph 40
of the originally filed Specification), sets forth a meaning of "self-
supporting" by describing supporting slabs as having a structure that "can be
manufactured, moved, and otherwise handled as a separate structure without
being damaged and without being attached to the semiconductor device."
Appeal Br. 7; Reply Br. 2.
Therefore, the language "self-supporting slab" of claim 1 is
reasonably clear in light of the Specification. As a result, we do not sustain
the Examiner's rejection of claim 1 under 35 U.S.C. § 112, second
paragraph, as indefinite for using the language "self-supporting slab."
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Claim 1, "slab" and "textured"
The Examiner rejects claim 1 by determining the language "slab"
lacks metes and bounds because a "requisite degree or at least relative
dimensions that would comprise a 'slab' are not claimed." The Examiner
also determines "the phrase 'textured' is a vague, relative phrase" that is not
defined by the claim or a standard for ascertaining a requisite degree. Non-
Final Act. 6.
Appellants contend a slab-shaped ceramic layer is readily identifiable
and distinguishable from a non-slab structure and the lack of a particular
material composition or thickness does not render the language "slab"
indefinite. Appeal Br. 9. With regard to the language "textured,"
Appellants assert paragraph 547 of the published Specification describes a
textured ceramic. Appeal Br. 5. 8
Appellants' arguments are persuasive. The mere breadth of the
language "slab" and "textured" does not render it indefinite. As stated in In
re Gardner, "[b ]readth is not indefiniteness." 427 F.2d 786, 788 (CCPA
1970). Moreover, the language "textured" has a reasonable degree of
7 Appellants refer to paragraph 56 of US 2012/0074448 Al, published
March 29, 2012, which is the publication of the application before us on
appeal. Paragraph 56 of US 2012/0074448 Al corresponds to paragraph 54
of the Specification.
8 Although this assertion is made in Appellants' argument against the
withdrawn enablement rejection, we nonetheless consider it here as relevant
to our consideration of the language, "textured," as used in the claims.
Indefiniteness is a subset of claim construction. In re Packard, 751 F.3d
1307, 1311 (Fed. Cir. 2014). To answer either question one must consult the
specification to determine the meaning of the claim terms. See United States
v. Adams, 383 U.S. 39, 49 (1966) ("[I]t is fundamental that claims are to be
construed in the light of the specifications and both are to be read with a
view to ascertaining the invention.").
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precision and particularity when considered in light of the Specification,
particularly paragraph 54 of the Specification.
Therefore, we do not sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 112, second paragraph, as indefinite for using the
language "slab" and "textured."
Claim 1 lacking thickness or material composition
The Examiner determines claim 1 is indefinite because it does not
recite a thickness or material composition for the ceramic layer and the
thickness of a ceramic layer that can be handled will change with time.
Non-Final Act. 6-7.
Appellants contend the lack of a particular material composition or
thickness does not render claim 1 indefinite. Appeal Br. 9. As discussed
above, this argument is persuasive because the breadth of a claim is not to be
equated with indefiniteness. In addition, the Examiner's determination that
claim 1 is indefinite because the capabilities for producing a self-supporting
ceramic layer would change over time is speculative. The Examiner does
not provide adequate evidence or technical reasoning tending to show that
these capabilities could change without changing the structure of the layer.
Further, if a ceramic layer in the form of a slab can be made thinner in the
future but is still self-supporting, the ceramic layer would remain a "self-
supporting slab," as recited in claim 1. Conversely, if the ceramic layer is
not self-supporting the ceramic layer would not be "self-supporting."
In view of the above, we do not sustain the Examiner's rejection of
claim 1 under 35 U.S.C. § 112, second paragraph, as indefinite for not
reciting a thickness or material composition of the ceramic layer.
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Rejection under 35 U.S. C. § 102
Claims 1, 2, 5, 7-11, and 16 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Erchak.
The dispositive issue on appeal for the anticipation rejection is
whether the disclosure of Erchak supports the Examiner's finding that
Erchak discloses a self-supporting ceramic layer, as recited in claim 1.
The Examiner finds Erchak discloses a device including a
semiconductor structure having a light emitting layer, a repeating variation
in refractive index within or on a surface of the semiconductor structure, and
a ceramic layer. Non-Final Act. 7. The Examiner finds the ceramic layer is
self-supporting, citing Erchak's disclosure that a phosphor can be
compressed to achieve thickness uniformity. Id. Further, the Examiner
finds the material of Erchak' s ceramic layer is the same material as disclosed
in paragraph 41 of the Specification. Ans. 7.
Appellants assert the ceramic layer of Erchak, which is deposited,
such as via spin-coating, onto a surface of an n-doped layer or is compressed
does not provide a "self-supporting" ceramic layer as described in paragraph
42 of the Specification. Appeal Br. 8-9; 11. Paragraph 42 describes
forming a ceramic layer by heating a phosphor powder at high pressure until
the surface of phosphor particles softens and melts so the particles "stick
together to form a rigid agglomerate of particles."
Appellants' arguments are persuasive. It is axiomatic that during
examination proceedings, claims are given their broadest reasonable
interpretation consistent with the specification. In re ICON Health &
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Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); Jn re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Here, Appellants describe forming wavelength converting materials
such as phosphors into ceramic slabs, and refer to such ceramic slabs as
"luminescent ceramics." Spec. ,-r 40. These ceramic slabs are further
described as "generally self-supporting layers formed separately from the
semiconductor device." Id. Appellants describe that these "luminescent
ceramics may be formed by heating a powder phosphor at high pressure
until the surface of the phosphor particles begin to soften and melt." Spec. ,-r
42. The resulting self-supporting ceramic layer has a structure of partially
melted particles stuck together to form a rigid agglomerate of particles. Id.
A ceramic is an inorganic material hardened by heat. See, e.g.,
thefreedictionary.com/ceramics (accessed Aug. 5, 2016) (any of various
hard, brittle, heat-resistant and corrosion-resistant materials made by shaping
and then firing a nonmetallic mineral, such as clay, at a high temperature).
We, therefore, construe "the ceramic layer comprising a self-supporting
slab" to be a self-supporting layer of wavelength converting material
particles partially melted and stuck together to form a rigid agglomerate of
particles.
Erchak discloses a phosphor material that is deposited onto an n-
doped layer, such as via spin-coating. Erchak col. 20, 11. 35-38. Erchak
does not provide specific details of the spin-coating process or otherwise
indicate it would result in a structure of particles partially melted and stuck
together as a rigid agglomerate of particles. Similarly, although Erchak
discloses that the phosphor layer can be compressed to achieve thickness
uniformities, Erchak does not disclose specific details of this compression
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that would lead one of ordinary skill in the art to understand that Erchak
discloses, either expressly or inherently, a structure of particles partially
melted and stuck together as a rigid agglomerate of particles.
As a result, the disclosure of Erchak does not support the Examiner's
finding that Erchak discloses a self-supporting ceramic layer as recited in
claim 1. For the reasons described above, we do not sustain the Examiner's
§ 102(b) rejection of claims 1, 2, 5, 7-11, and 16 over Erchak.
Rejection under 35 U.S.C. § 103
Claims 1, 2, 5, 7-11, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mueller.
The application before us on appeal is a continuation of U.S.
Application No. 11/829, 799, now abandoned, which is a continuation-in-
part of U.S. Application No. 10/861,172, which issued as US 7,361,938 B2
on April 22, 2008. Mueller is the corresponding publication of U.S.
Application No. 10/861, 172. The Examiner finds Mueller is prior art
because the claims before us on appeal have a priority date occurring after
the prior art date of Mueller. Non-Final Act. 3--4, 10.
The Examiner finds Mueller discloses a semiconductor light emitting
device comprising a light emitting layer and a ceramic layer comprising a
wavelength converting material, wherein a surface of the ceramic layer
includes a photonic crystal structure. Non-Final Act. 10-11. The Examiner
finds Mueller does not explicitly disclose the photonic crystal structure has a
repeating variation in refractive index but finds photonic crystals inherently
have variations in refractive index because periodic optical nanostructures
define the photonic crystal and affect the motion of photons. Non-Final Act.
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11. The Examiner concludes it would have been obvious to form the texture
of the photonic crystal of Mueller as a repeating variation in refractive index
to improve light extraction via a periodic lattice of holes. Non-Final Act. 11.
Appellants dispute that Mueller is prior art, arguing that the priority
date accorded by the Examiner, is erroneous, and arguing the claims on
appeal are supported by the Specification as originally filed in U.S.
Application No. 10/861, 172. Appeal Br. 11-12; Reply Br. 9-10.
Appellants contend "the rejection points to no teaching in Mueller of
'a repeating variation in refractive index formed within or on a surface of the
semiconductor structure'" as recited in claim 1 on appeal. Appeal Br. 12;
Reply Br. 11. 9 These arguments do not direct us to any error in the
Examiner's findings in support of, or the Examiner's determination that,
Mueller is prior art. Ans. 10. As stated above, the Examiner acknowledges
that Mueller does not explicitly disclose the photonic crystal structure has a
repeating variation in refractive index, but nonetheless finds photonic
crystals inherently have variations in refractive index. Non-Final Act. 11.
Appellants do not contest this finding. Based on this finding, the Examiner
concludes it would have been obvious to modify the photonic crystal of
Mueller to have a repeating variation in refractive index and provides a
rationale why one of ordinary skill in the art would have made such a
modification. Id. Appellants' arguments do not address the Examiner's
conclusion or reason to modify Mueller. At best the arguments demonstrate
9 At page 11 of the Reply Brief, Appellants argue the Examiner has not
demonstrated that the ceramic of Mueller is a semiconductor. However,
Appellants did not raise this argument in the Appeal Brief. Arguments not
timely made are deemed waived. 37 C.F.R. § 41.37(c)(l)(iv) (2014); In re
Lovin, 639 F.3d 1349, 1352-57 (Fed. Cir. 2011).
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the claims on appeal are supported as of the filing date of the present
application but do not analyze whether the claims are supported as of
Mueller's earliest date as prior art. We add that "[e]ntitlement to a filing
date does not extend to subject matter which is not disclosed, but would be
obvious over what is expressly disclosed." Lockwood v. American Airlines,
Inc., 107 F.3d 1565, 1571-1572 (Fed. Cir. 1997). Therefore, we sustain the
Examiner's rejection of claims 1, 2, 5, 7-11, and 16 under 35 U.S.C. §
103(a) as being unpatentable over Mueller.
DECISION
On the record before us:
A. the Examiner's rejection of claims 1, 2, 5, 7-11, and 16 under
35 U.S.C. § 112, second paragraph, as being indefinite is reversed;
B. the Examiner's rejection of claims 1, 2, 5, 7-11, and 16 under
35 U.S.C. § 102(b) as being anticipated by Erchak is reversed; and
C. the Examiner's rejection of claims 1, 2, 5, 7-11, and 16 under
35 U.S.C. § 103(a) as being unpatentable over Mueller 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).
AFFIRMED
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