Ex Parte Kubon et al

Patent Trial and Appeal Board

Dec 27, 2018

15150196 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
15/150, 196
136186 7590
Lumileds (PLG)
Attn: Monica Ward
FILING DATE
05/09/2016
12/31/2018
370 West Trimble Road
San Jose, CA 95131
FIRST NAMED INVENTOR
Marcus Kubon
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.
2004P01973US02 4673
EXAMINER
CARTER, WILLIAM JOSEPH
ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
12/31/2018 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 MARCUS KUBON and GERALD SCHOLAK 1
Appeal2018-000951
Application 15/150, 196
Technology Center 2800
Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-13. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to discharge lamps, such as those
found in automobile headlights. Spec. 1:3--4, 1: 10-11; Claim 1. Claim 1 is
reproduced below from page 9 (Claims Appendix) of the Appeal Brief:
1 The Appellant is the Applicant, Koninklijke Philips N.V., which is also
identified as the real party in interest. See App. Br. 2.
Appeal2018-000951
Application 15/150, 196
1. Vehicle discharge lamp with
- a discharge vessel ( 16) for generating an arc discharge between
two electrodes (22), the discharge vessel (16) containing an inert
gas and metal halides,
- that lamp ( 10) further comprising an outer envelope (20)
surrounding that discharge vessel (16), said outer envelope (20)
being made of a transparent material containing Potassium in a
maximum concentration of 10 ppm by relation to the weight,
- where said metal halides are contained in said discharge vessel
in an amount of 3---6 µg/µl of the inner volume of the discharge
vessel ( 16).
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
1. Claims 1---6 and 9-13 2 over Uemura (US 6,495,962 B2, issued Dec.
17, 2002) and Kubon (US 2003/0048052 Al, published Mar. 13, 2003);
2. Claims 7 and 8 over Uemura, Kubon, and Kaneko
(US 6,586,891 B2, issued July 1, 2003).
ANALYSIS
After review of the cited evidence in the appeal record and the
positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner's rejections.
2 The Examiner's header for this rejection omits claims 9 and 11. See
Ans. 4. The Examiner's analysis, however, includes a discussion of claims 9
and 11. See Final Act. 4; Ans. 5---6. In the Appeal Brief, the Appellant
asserts that the subject matter of claims 9 and 11 is patentable for reasons
similar to independent claim 1. App. Br. 2. We determine that the omission
of claims 9 and 11 from the statement of rejection is harmless error because
the discussion of the rejection by the Examiner includes claims 9 and 11,
and the Appellant addresses those claims in the principal Brief.
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Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action, and in the Examiner's Answer. See generally Final Act. 2-8;
Ans. 2-12.
The Appellant presents separate arguments only for claims 1 and 12.
We address those claims below. The remaining claims on appeal will stand
or fall with claim 1, from which they depend.
Claim 1. The Examiner finds that Uemura teaches or suggests each
element of claim 1 except "an outer envelope containing Potassium in a
maximum concentration of about 10 ppm by relation to weight." Ans. 4. As
to the claimed range of 3-6 µg/µl of metal halides, the Examiner finds that
Uemura teaches a metal halide concentration range that overlaps the claimed
range, resulting in a prima facie case of obviousness. Id. at 8 (citing Uemura
at 4:52-54, 5:50-55). As to the potassium, the Examiner finds that Kubon
"teaches an outer envelope containing potassium in a maximum
concentration of 10 ppm by relation to the weight." Id. at 4 (parenthetical
citations omitted). The Examiner concludes that it would have been obvious
to combine Kubon with Uemura "in order to make the outer envelope harder
so that undesired crystallization does not so readily occur and to achieve as
constant properties as possible over the service life of the lamp." Id. at 5
(parenthetical citations omitted).
The Appellant argues that Uemura teaches away from the recited
metal halide concentration range of 3-6 µg/µl because Uemura teaches that a
range of about 30-55 µg/µl desirably produces a quick rise of luminous flux.
App. Br. 3---6; Reply Br. 1-8.
That argument is not persuasive of reversible error. Uemura expressly
teaches that "[t]he amount of metal halides should be in the range of about 5
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mg to about 110 mg per 1 cc by a volume of the discharge space 1 c."
Uemura at 4:51-53. There is no dispute that the Uemura's units of mg/cc is
the same as the units µg/µl recited by claim 1. Uemura also expressly
teaches that a metal halide concentration of about 5-35 mg/cc is a
"preferable" range for achieving "a good color of visible light from the
discharge vessel." Id. at 5:51-55. Thus, on two separate occasions Uemura
expressly teaches metal halide concentration ranges that overlap the claimed
range. "[E]ven a slight overlap in range establishes a prima facie case of
obviousness." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Although "an applicant may overcome a prima facie case of obviousness by
establishing that the claimed range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range," id.
at 1330, the Appellant has not argued criticality or unexpected results as to
claim 1, and, as explained herein, we are not persuaded that Uemura teaches
away from the claimed range.
We recognize that Uemura discloses that a metal halide concentration
range of about 30-55 mg/cc causes "the luminous flux [to] rise[] quickly."
Uemura at 5:45--47. That disclosure, however, does not teach away from a
lower concentration range, such as that of claim 1, because it does not
"criticize, discredit, or otherwise discourage" lower ranges. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). On the contrary, Uemura
expressly discloses the use of a concentration range of 5-35 µg/µl to achieve
"a good color of visible light from the discharge vessel," and it discloses the
use of a concentration range of 30-55 µg/µl to achieve a quick rise of
luminous flux. A person of ordinary skill in the art would have recognized
from the express teachings of Uemura the suitability of utilizing metal halide
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concentrations within the full range of 5-35 µg/µl as described by the
reference. Additionally, we observe that the Appellant cites no evidence for
the contention that concentrations below 30 µg/µl would not "pass the
brightness test for vehicle lighting." See App. Br. 4. Uemura mentions "a
brightness test," Uemura at 1 :20, and then, as described above, goes on to
describe concentration ranges of metal halide as low as 5 µg/µl as suitable
for its invention, with no indication that such concentrations may not pass
the brightness test.
Additionally, we are not persuaded that Uemura's disclosure of
specific working examples that have metal halide concentrations from
17.347 to 30.357 µg/µl "teaches against low metal halide concentrations."
App. Br. 5; Reply Br. 3-8. Those working examples do not negate
Uemura's disclosure of metal halide concentration ranges that overlap the
claimed range. See In re Mills, 470 F.2d 649,651 (CCPA 1972) ("[A]
reference is not limited to the disclosure of specific working examples.").
On this record, we are not persuaded of reversible error in the
Examiner's rejection of claim 1.
Claim 12. Claim 12 depends from claim 1 and narrows the metal
halide concentration range to "5±0.25 µg per µl of the inner volume of the
discharge vessel ( 16)." The Appellant argues that this range exhibits
unexpected results relative to the closest prior art. App. Br. 6-7. The
burden of providing evidence to show unexpected results rests with the
Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). The Appellant
has not carried that burden.
"[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
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art." In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). "[I]t
is not enough to show that results are obtained which differ from those
obtained in the prior art: that difference must be shown to be an unexpected
difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (emphasis in
original). Here, other than the use of the word "surprisingly" in the
Specification, the Appellant directs us to no argument or evidence that the
results based on the claimed range of range of 5±0.25 µg/µl metal halide
were actually unexpected. Even assuming that the Appellant's results are
superior to the results of the prior art, "any superior property must be
unexpected to be considered as evidence of non-obviousness." See Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (emphasis in
original). "[I]t is well settled that unexpected results must be established by
factual evidence. 'Mere argument or conclusory statements in the
specification does not suffice."' In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)).
As set forth above, the prior art expressly discloses a range of metal
halide concentrations that overlaps the claimed range, and it expressly
teaches benefits associated with the disclosed range of 5-35 µg/µl. The
Appellant alleges that a 50% reduction in metal halide concentration ( 10
µg/µl vs. 5 µg/µl) yields, in one example, "about a 22 to 27% improvement"
and, in another example, "about 14% improvement over the closest prior
art." App. Br. 7. Those differences do not appear to be the type of
"substantially improved results," see In re Soni, 54 F.3d 746, 751 (Fed. Cir.
1995) (emphasis in original) (37% increase in molecular weight leads to 50-
fold increase in tensile strength), or "result[ s] ... different in kind and not
merely in degree," see In re Aller, 220 F .2d 454, 456 (CCP A 1955), that
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might be considered unexpected absent a persuasive explanation from the
Appellant.
Additionally, the Appellant fails to show that any relied-upon data
involves a comparison to the closest prior art. As the Appellant
acknowledges, the comparative example has a metal halide concentration of
10 µg/µl. App. Br. 7. As set forth above, Uemura discloses that a halide
concentration range of 5-35 µg/µl desirably yields "a good color of visible
light." Given that the lower end of Uemura's range is 5 µg/µl, which falls
within the range of claim 12, we are not persuaded that the relied-upon
comparison with a metal halide concentration of 10 µg/µl represents the
closest prior art.
On this record, we are not persuaded of reversible error in the
Examiner's rejection of claim 12.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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