Ex Parte Bechtel et al

Patent Trials and Appeals Board

Jan 31, 2019

15195817 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
15/195,817
136186 7590
Lumileds (PLG)
Attn: Monica Ward
FILING DATE
06/28/2016
02/04/2019
370 West Trimble Road
San Jose, CA 95131
FIRST NAMED INVENTOR
Hans-Helmut Bechtel
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.
2012P01197US03 8639
EXAMINER
TRAN,TONY
ART UNIT PAPER NUMBER
2894
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
eofficeaction@appcoll.com
IPG_Docketing@lumileds.com
Paralegal@convergenceiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-HELMUT BECHTEL and MATTHIAS HEIDEMANN
Appeal 2018-004 798
Application 15/195,817 1
Technology Center 2800
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-15.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify the real parties in interest as Koninklijke Philips N.V.
and Lumileds LLC (Appeal Br. 2).
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Application 15/195,817
Independent claim 1 below is illustrative of the subject matter on
appeal ( emphasis added):
1. A device comprising:
a light source emitting a first spectral distribution having
a first peak wavelength in the blue spectral range,
a first luminescent material configured for absorbing a
portion of the light of the first spectral distribution and for
converting at least a portion of the absorbed light into light of a
second spectral distribution, the second spectral distribution
having a second peak wavelength in the green spectral range,
a second luminescent material configured for absorbing a
portion of the light of the first spectral distribution and/ or a
portion of the second spectral distribution and for converting at
least a portion of the absorbed light into light of a third spectral
distribution, the third spectral distribution having a third
spectral width and having a third peak wavelength,
a third luminescent material configured for absorbing a
portion of the light of at least one of the first spectral
distribution, second spectral distribution, and the third spectral
distribution and for converting at least a portion of the absorbed
light into light of a fourth spectral distribution, the fourth
spectral distribution having a fourth spectral width and having a
fourth peak wavelength,
wherein the third peak wavelength and the fourth peak
wavelength are in the orange/red spectral range, and wherein
the third luminescent material comprises particles showing
quantum confinement and having at least in one dimension a
size in the nanometer range.
The Examiner maintains the following rejections: 2
(a) claims 1-15 on the ground of nonstatutory double patenting as
being unpatentable over claims 1-16 of U.S. Application No. 14/419,951;
and
2 We refer to the Specification filed June 28, 2016 ("Spec."), the Final
Office Action dated July 6, 2017 ("Final Act"), the Appeal Brief filed Jan.
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(b) claims 1-15 under 35 U.S.C. § I02(a)/(e) as being anticipated
by Zhang et al. (US 2011/0227476 Al, published Sept. 22, 2011) ("Zhang").
ANALYSIS
Double Patenting Rejection
Claims 1-15 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1-16 of U.S. Application No.
14/419,951.
As an initial matter, we note that U.S. Application No. 14/419,951
issued as US 9,406,849 B2 on August 2, 2016, which was prior to the date
the Final Action was mailed.
Appellants do not present arguments for this rejection. Therefore, we
summarily affirm the double patenting rejection of claims 1-15.
§ 102 Rejection Zhang
Claims 1-15 are rejected under 35 U.S.C. § I02(a)/(e) as being
anticipated by Zhang.
Appellants' principle argument on appeal is that Zhang does not
disclose a third luminescent material that comprises particles showing
quantum confinement and having, at least in one dimension, a size in the
nanometer range, as recited in claim 1 (Appeal Br. 5). Specifically,
Appellants assert Zhang does not disclose quantum confinement, does not
disclose quantum dots or any other material exhibiting quantum
confinement, and although Zhang discloses phosphor powder having a size
23, 2018 ("Appeal Br."), the Examiner's Answer dated Feb. 9, 2018
("Ans."), and the Reply Brief filed Apr. 5, 2018 ("Reply Br.").
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Application 15/195,817
of less than about 200 nm, Zhang does not disclose the phosphor powder
exhibits quantum confinement, Zhang does not disclose the phosphor
powder has optical properties that depend on the size of the particles, and
Zhang' s powder is not a quantum dot material, which has a much smaller
size than the powder disclosed by Zhang (id. at 5-8; Reply Br. 1-3).
As an initial matter, we construe the limitation "quantum
confinement" of claim 1 to determine its scope and meaning.
"During examination, ~claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and .. ,
claim language should be read in light of the specification as it would
be interpreted by one of ordinary skill in the art''' (In re Am. Aced., q/Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 9 l 0
F.2d 831,833 (Fed. Cir. 1990))). Paragraph 18 of the Specification states
the following (emphases added):
Quantum confinement means that the particles have
optical properties that depend on the size of the particles.
Examples of such materials are quantum dots, quantum rods and
quantum tetrapods. The third luminescent material comprises at
least particles that have at least in one dimension a size in the
nanometer range. This means, for example, that, if the particles
are substantially spherical, their diameter is in the nanometer
range. Or, this means, for example, if they are wire-shaped, that
a size of a cross-section of the wire is in one direction in the
nanometer range. A size in the nanometer range means that their
size is at least smaller than 1 micrometer, thus, smaller than 500
nanometer, and larger or equal to 0.5 nanometer. In an
embodiment, the size in one dimension is smaller than 50
nanometer. In another embodiment the size in one dimension is
in the range from 2 to 3 0 nanometer.
When considered in isolation, the first sentence of the above passage
would simply define "quantum confinement" as particles having optical
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properties that depend on their size. This definition appears to be broad
because it indicates that particles of any size that vary any optical property
when their size changes in any amount would exhibit quantum confinement.
The above passage, however, also discusses particles having a size "in the
nanometer range," as recited in claim 1. Therefore, it is unclear from the
above passage whether "quantum confinement" occurs for particles of any
size or only those having "a size in the nanometer range."
Appellants' arguments illustrate this issue. Appellants argue the
Examiner conflates the "quantum confinement" limitation of claim 1 and the
"size in the nanometer range" limitation of claim 1 (Reply Br. 2). However,
Appellants further contend:
The present specification teaches "quantum confinement
means that the particles have optical properties that depend on
the size of the particles." Practically speaking, quantum
confinement means that, for a given composition, smaller sized
particles ( for example, 2-3 nm sized particles) emit light at
shorter wavelengths whereas larger sized particles (for example,
5-6 nm sized particles) emit light at longer wavelengths.
(Id. at 3). Therefore, Appellants' arguments indicate the phenomenon of
quantum confinement is restricted to particles having a smaller size.
Because Appellants' disclosure does not clearly set forth how one of
ordinary skill in the art would understand the limitation "quantum
confinement," we tum to extrinsic sources to determine how one of ordinary
skill in the art would understand this limitation. 3
3 "The inquiry into how a person of ordinary skill in the art understands a
claim term provides an objective baseline from which to begin claim
interpretation." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
2005). In many cases, courts look to public sources to demonstrate what one
of ordinary skill in the art would have understood disputed claim language to
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One reference entitled "Quantum confinement,"4 dated October 30,
2006, states "[ q]uantum confinement is change [sic] of electronic and optical
properties when the material sampled is of sufficiently small size - typically
10 nanometers or less." Thus, not only does quantum confinement cause a
change in optical properties, as stated in paragraph 18 of Appellants'
Specification, but this occurs for materials of a "small size," not materials of
any particle size. The reference indicates that such a "small size" is for
materials in the nanometer range by stating the size is "typically 10
nanometers or less" and by discussing crystal sizes on the order of 3.6 nm
and 6-7 nm. In other words, when a material is of a sufficiently small size,
the material may exhibit quantum confinement.
Further, paragraph 54 ofVlahovic et al. (US 2009/0321261 Al,
published Dec. 31, 2009) ("Vlahovic") states ( emphases added):
The quantum confinement effect occurs when electron and
hole pairs are spatially confined within the nanostructure. When
the size of a nanostructure is on the level of a hundred
nanometers or less the confinement breaks the periodic potential,
and thereby collapses the energy "bands" into separated energy
levels. The energy level distribution in such nanostructures
becomes discontinuous, since the charges cannot obtain arbitrary
energy values but rather only discrete ones. The energy level
distribution and other material properties in such nanostructures
depend, among other factors, on the size and the shape of the
mean. ld. at 1314. Such sources include '"the words of the claims
themselves, the remainder of the specification, the prosecution histmy, and
extrinsic evidence concerning relevant scientific principles, the meaning of
technical terms, and the state of the art."' Id. (quoting Innova/Pure Water,
Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir.
2004)).
4 http://phycomp.technion.ac. il/-anastasy/thesis/node 10 .html (last visited
January 24, 2019).
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nano structures.
Thus, Vlahovic also indicates that one of ordinary skill in the art would have
understood "quantum confinement" as a phenomenon that causes material
properties to depend upon the size of a material and quantum confinement
can occur when a material is nano-sized, such as a size on the order of a
hundred nanometers or less.
In view of the above, we interpret "quantum confinement" as a
property that can be exhibited by a material that is nano-sized (not merely
any size), which is exhibited as optical properties that vary with particle size.
As for the particular size of the material, claim 1 recites that the third
luminescent material comprises particles "having at least in one dimension a
size in the nanometer range." As noted above, paragraph 18 of the
Specification defines this limitation by stating "[a] size in the nanometer
range means that their size is at least smaller than 1 micrometer, thus,
smaller than 500 nanometer, and larger or equal to 0.5 nanometer."
Having construed the disputed limitation of claim 1, we next analyze
the § 102 rejection of claim 1. The Examiner finds Zhang discloses a third
luminescent material comprising particles having at least one dimension of a
size in the nanometer range because Zhang discloses a "second phosphor
40" comprising particles of a size less than about 200 nm (Final Act. 5-6;
Ans. 3).
Zhang discloses the second phosphor can be formed of a powder
having an average particle size of less than about 200 nm. Zhang ,r 40.
Because the particle size range disclosed by Zhang includes sizes less than
200 nm, Zhang's particle size encompasses the "size in the nanometer
range" defined in paragraph 18 of the Specification (i.e., "at least smaller
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than 1 micrometer, thus, smaller than 500 nanometer, and larger or equal to
0.5 nanometer") and even the sizes of "several nanometers" asserted by
Appellants (Appeal Br. 8). As a result, the Examiner's findings are
supported by Zhang' s disclosure, which sets forth a reasonable basis that the
claimed property of "quantum confinement" is inherent to Zhang's nano-size
phosphor powder particles. Thus, the Examiner has set forth a prima facie
case of anticipation and Appellants' arguments do not identify a reversible
error in the Examiner's rejection.
Where patentability rests upon a property of the claimed material not
disclosed within the art, the PTO has no reasonable method of determining
whether there is, in fact, a patentable difference between the prior art
materials and the claimed material (In re Best, 562 F.2d 1252, 1255 (CCPA
1977)). Once the Examiner provides a reasonable basis to believe that the
characteristic is inherent, the burden shifts to the applicant to prove that the
prior art products do not necessarily possess the characteristics of his
claimed product (id. at 125-55 (discussing In re Swinehart, 439 F.2d 210
(CCPA 1971) and In re Ludtke, 441 F.2d 660 (CCPA 1971))).
Here, Appellants assert that specific exemplary phosphors disclosed
by Zhang would exhibit the same optical properties at particles sizes of 200
nm and 500 nm (Reply Br. 3--4). These arguments are unpersuasive because
they are mere attorney argument without citation to evidence or persuasive
technical reasoning (see In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
("Attorney's argument in a brief cannot take the place of evidence.")). In
other words, Appellants have not met their burden of proving that the
various materials disclosed by Zhang for the second phosphor (Zhang ,r,r 24--
25) including those of less than 200 nm in size would not necessarily
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possess quantum confinement or that the Examiner otherwise reversibly
erred in the rejection of claim 1.
Appellants do not argue claims 2, 3, 5, 6, 8-11, 13, and 15 separately
from claim 1 (Appeal Br. 5-9).
Appellants set forth separate arguments for claims 4, 7, 12, and 14
(Appeal Br. 8-9). These arguments, however, consist of quoting the
limitations of claims 4, 7, 12, and 14 and arguing the portions of Zhang cited
by the Examiner do not disclose the limitations.
Such "separate" arguments, however, amount to no more than a
quotation of the additional limitations of claims 4, 7, 12, and 14 and a
generic denial that the portions of Zhang cited by the Examiner teach the
additional limitations. We and our reviewing court have long held that such
"argument" does not merit separate consideration (see, e.g., In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
interpreted Rule 41.3 7 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.")). Appellants
present additional arguments at pages 4--5 of the Reply Brief but we do not
view those arguments as being responsive to the Examiner's explanation in
the Examiner's Answer, which refers to paragraphs cited in the Final Office
Action (compare Final Act. 6-8 with Ans. 4--5). Therefore, we will not
consider the arguments for claims 4, 7, 12, and 14 that were newly raised in
the Reply Brief (3 7 C.F .R. § 41.41 (b )(2) ).
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 102 rejection of claims 1-15 over
Zhang.
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DECISION
The Examiner's rejection of claims 1-15 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).
AFFIRMED
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