Semiconductor Energy Laboratory Co., Ltd.

Patent Trials and Appeals Board

Oct 21, 2020

2020000230 (P.T.A.B. Oct. 21, 2020)

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.
15/278,750 09/28/2016 Satoshi Seo 0553-1350 6249
24628 7590 10/21/2020
HUSCH BLACKWELL LLP
HUSCH BLACKWELL SANDERS LLP WELSH & KATZ
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606
EXAMINER
BOHATY, ANDREW K
ART UNIT PAPER NUMBER
1796
MAIL DATE DELIVERY MODE
10/21/2020 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 SATOSHI SEO, TAKEYOSHI WATABE, and
SATOMI MITSUMORI

____________

Appeal 2020-000230
Application 15/278,750
Technology Center 1700
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
WESLEY B. DERRICK, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1–3, 5–14, 16–18, 20, and 21 under
35 U.S.C. § 102(a)(1) as anticipated by Kitano (US 2013/0134395 A1; May
30, 2013).2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Semiconductor Energy Laboratory
Co., Ltd. as the real party in interest (Appeal Br. 1).
2 The Examiner indicated the subject matter of claims 15 and 19 was
allowable (Final Act. 6).
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We AFFIRM.

Independent claim 1 is illustrative:
1. A light-emitting element comprising:
a guest material; and
a host material,
wherein a LUMO level of the guest material is lower than
a LUMO level of the host material,
wherein an energy difference between the LUMO level of
the guest material and a HOMO level of the guest material is
larger than an energy difference between the LUMO level of the
host material and a HOMO level of the host material,
wherein the guest material is configured to convert triplet
excitation energy into light emission, and
wherein the energy difference between the LUMO level of
the guest material and the HOMO level of the guest material is
larger than transition energy calculated from the absorption edge
of an absorption spectrum of the guest material by 0.4 eV or
more.
Appellant only presents arguments to the claims as a group (Appeal
Br. 5–10; Reply Br. 2–7). Accordingly, all of the claims stand or fall
together, including independent claims 1, 2 and 3.

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ANALYSIS
We have reviewed each of Appellant’s arguments for patentability.
However, we determine that a preponderance of the evidence supports the
Examiner’s finding that the claimed subject matter of the appealed claims is
anticipated within the meaning of § 102 in view of the applied prior art of
Kitano. Accordingly, we sustain the Examiner’s § 102 rejection on appeal
for essentially those reasons expressed in the Answer, including the
Examiner’s Response to Argument section.
We add the following primarily for emphasis.
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (Fed. Cir. 2011) (BPAI
2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections.”).
“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification . . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id.
It is also well settled that when a claimed product reasonably appears
to be substantially the same as a product disclosed by the prior art, the
burden is on the applicant to prove that the prior art product does not
necessarily or inherently possess characteristics attributed to the claimed
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product, and that it is of no moment whether the rejection is based on § 102
or § 103 since the burden on the applicant is the same. In re Spada, 911
F.2d 705, 708 (Fed Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA
1977).
Appellant has not provided any persuasive reasoning or credible
evidence to refute the Examiner’s determination that the host and guest
materials taught and described in Kitano would inherently possess the
claimed properties claimed in each of claims 1-3 (e.g., Ans. 5–11; generally
Appeal Br., Reply Br.). Attorney’s arguments in a brief cannot take the
place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Appellant has not met its burden to show that the light emitting element
described in Kitano as set out by the Examiner does not inherently satisfy
the claimed invention.3
Appellant has also argued that the undisputed value of 0.36 eV for the
guest material in Kitano relied upon by the Examiner for its “energy
difference” being larger than the “transition energy” of the guest material as
recited in each independent claim does not fall within the claimed range of
“0.4 eV or more” (Appeal Br. 9, 10). This argument is not persuasive of
reversible error. Appellant has not directed us to any limiting definition in
the Specification for the claim term “0.4 eV or more.” The Appellant has
not shown error in the Examiner’s determination that based on the known
rules of significant figures, 0.36 would be rounded to 0.4 (Ans. 11, 12).
Contrary to Appellant’s argument, a plain reading of the claims does not

3 Notably, since Kitano and this case share a common assignee, Appellant is
in the best position to provide such evidence.
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require a value of 0.40 eV or more (e.g., Reply Br. 5).4 In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (limitations not appearing in the claim may not be
relied upon for patentability).
Thus, applying the broadest reasonable interpretation of the argued
claim term, we agree with the Examiner that the value of 0.36 eV is
encompassed by the claim language (Ans. 11, 12). Accordingly, Appellant
does not provide any persuasive reasoning or evidence that the Examiner’s
finding of anticipation based on Kitano is unreasonable.
Accordingly, the Examiner has presented a prima facie case of
unpatentability of the article as recited in each of claims 1, 2, and 3 for all
the reasons set forth in the Final Action and Answer. A preponderance of the
evidence supports the Examiner’s rejection of independent claims 1, 2, and 3
and their respective dependent claims which are not separately argued.

4 The Reply Brief dated October 7, 2019, includes arguments presented for
the first time. For example, Appellant argues for the first time that the
Specification distinguishes by its examples 0.36 eV from 0.44 eV such that
the claimed “0.4 eV or more” must be interpreted as “0.4000…eV or more”
(Reply Br. 5, also Reply Br. 4). Any argument not presented in the Appeal
Brief will not be considered when filed in a Reply Brief, absent a showing of
good cause explaining why the argument could not have been presented in
the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”); see also Optivus Tech., Inc.
v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument
raised for the first time in the Reply Brief is considered waived); 37 C.F.R. §
41.41(b)(2) (2013). Appellant has not shown good cause why this new
argument could not have been presented in the Appeal Brief. Accordingly,
we decline to consider these arguments.

Appeal 2020-000230
Application 15/278,750

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DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–14,
16–18, 20, 21

102(a)(1) Kitano
1–3, 5–14,
16–18, 20, 21

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)(iv).

AFFIRMED