Ex Parte 6600175 et al

Patent Trial and Appeal Board

Nov 21, 2014

90010940 (P.T.A.B. Nov. 21, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/010,940 05/06/2010 6600175 1300-000044/US/RXA 4549
23483 7590 11/21/2014
WILMERHALE/BOSTON
60 STATE STREET
BOSTON, MA 02109
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
2814
MAIL DATE DELIVERY MODE
11/21/2014 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 CREE, INC.
Patent Owner and Appellant
____________

Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent 6,600,175 B11
Technology Center 3900
____________

Before JASON V. MORGAN, HUNG H. BUI, and
MICHELLE N. WORMMEESTER, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed on April 2, 2010 (Control Number 90/010,940).
Cree, Inc. (Appellant), the owner of the patent under reexamination,2 appeals
under 35 U.S.C. §§ 134(b) and 306 from an Examiner’s final rejection of
claims 118, 134–136, 138, and 140.3

1 The patent involved in this reexamination appeal proceeding (the ’175
Patent) issued to Bruce Baretz, and Michael A. Tischler (hereinafter “Baretz
et al.”) on July 29, 2003.
2 See Patent Assignment Abstract of Title, Reel 015286 /Frame 0635
recorded on May 5, 2004, and entered into the record of Control No.
90/010,940 as “Title Report” on May 18, 2010.
3 Original claims 1–5, 11–13, 21–24, and 26 are subject to reexamination as
per Third Party Request dated April 2, 2010. Claims 6–10, 14–20, and 25
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

2
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. An oral
hearing was conducted on November 5, 2014. A transcript of the hearing
will be made of record.
We AFFIRM.4

STATEMENT OF THE CASE
Related Proceedings
Appellant has informed the Office that there are no related appeal or
interference proceedings.

The ’175 Patent
The ’175 patent describes a light emitting assembly, shown in Fig. 6,
comprising a solid state light emitting diode (LED) which emits a first,
relatively shorter wavelength radiation in the form of blue or ultraviolet
(UV) light, and a down-converting luminophoric medium which, when
impinged by the first, relatively shorter wavelength radiation, is excited to

are not subject to reexamination. As such, claims 6–10, 14–20, and 25 will
remain intact regardless of the outcome of the reexamination. During the
reexamination, claims 27–61 were newly added on May 3, 2011, and claims
62–188 were newly added on March 26, 2012. Subsequently, claims 1–5,
11–13, 21–24, 26–117, 119–133, 137, 139, and 141–188 were canceled on
August 24, 2012 to reduce the number of issues for consideration on appeal,
leaving only six (6) claims pending on this appeal, i.e., claims 118, 134–136,
138, and 140.
4 Our decision refers to Appellant’s Appeal Brief filed on March 20, 2014
(“App. Br.”); Reply Brief filed July 9, 2014 (“Reply Br.”); Examiner’s
Answer mailed May 9, 2014 (“Ans.”); Final Office Action mailed
November 20, 2013 (“Final Rej.”); and ’175 Patent Specification issued on
July 29, 2003 (“Spec.”).
App
Reex
Paten

emit
paten
illus
Fi
asse
down
Fig.
in a p
Acco
mate
emit
phos
eal 2014-0
amination
t No. 6,60
a second,
t, 7:8–27
Fig. 6 of
tration.
g. 6 of the
mbly 80 c
a down-c
In a spec
-converte
1, with flu
olymeric
rding to A
rial which
s light in th
phorescen

07890
Control N
0,175 B1
longer wa
and Abstr
the ’175 p
’175 paten
omprising
onverting
ific embo
d to white
orescent o
matrix. ’1
ppellant,
in respon
e white v
ce.” ’175
o. 90/010
velength r
act.
atent is re
t is a sche
a solid sta
luminoph
diment, th
light by p
rganic and
75 patent,
the term “l
se to radia
isible light
patent, 7:5
,940
3
adiation in
produced
matic repr
te LED 82
oric mediu

e blue or U
ackaging t
/or inorga
Fig. 1 and
uminopho
tion emitte
spectrum
5–58 (em
the form
with addit
esentation
to emit a
m 90 to e
V light ou
he solid st
nic fluore
Abstract
ric medium
d by the s
by fluores
phasis add
of white li
ional mark
of a light
blue or UV
mit white
tput from
ate LED, s
scers or p
(emphasis
” refers “
olid state d
cence and
ed).
ght. ’175
ing for
emitting
light and
light.
the LED i
hown in
hosphors
added).
to a
evice
/or

s
App
Reex
Paten

illus
ass
inclu
filled
lumi
conv
paten
limit
oppo
claim
singl
eal 2014-0
amination
t No. 6,60
Fig. 1 of
tration.
Fig. 1 o
embly 10 c

As show
des an LE
with suit
nophoric m
ert the blu
t at 8:58–
Claims 1
ed to a sin
sed to blu
s 118 and
e-die GaN
07890
Control N
0,175 B1
the ’175 p
f the ’175
omprising
n in Fig. 1
D die 13 p
able down
edium in
e or UV li
9:8.
18 and 13
gle-die ga
e or UV li
134 are d
blue LED
o. 90/010
atent is re
patent is a
a LED di
of the ’17
ackaged w
-convertin
cluding flu
ght output
Claim
4 are the o
llium nitrid
ght as disc
irected to
in combi
,940
4
produced
schematic
e 13 and a
5 patent, t
ithin a lig
g material
orescers a
from the L

s on Appe
nly indepe
e (GaN) b
losed by th
light emiss
nation with
with addit
represent
down-con
he white L
ht-transmi
20, e.g., a
nd/or pho
ED die 1
al
ndent clai
lue LED t
e ’175 pa
ion device
a down-c
ional mark
ation of a
verting m
ED assem
ssive encl
down-con
sphors to d
3 to white
ms on app
o emit blu
tent). In p
s that incl
onverting
ing for
white LED
aterial 20.
bly 10
osure 11
verting
own
light. ’17
eal and ar
e light (as
articular,
ude a

5
e

Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

5
luminophoric medium to produce a white light. App. Br. 7. Representative
claims 118 and 134 are reproduced below:

118. A light-emission device, comprising a single-die,
two-lead gallium nitride based semiconductor blue light-
emitting diode emitting radiation; and a recipient down-
converting luminophoric medium for down-converting the
radiation emitted by the light-emitting diode, to a
polychromatic white light, wherein the luminophoric medium is
dispersed in a polymer that is on or about the single-die, two-
lead gallium nitride based semiconductor blue light-emitting
diode.

134. A light-emitting device, comprising:
at least one single-die gallium nitride based
semiconductor blue light-emitting diode (LED) coupleable with
a power supply to emit a primary radiation which is the same
for each single-die LED present in the device, said primary
radiation being a relatively shorter wavelength radiation; and
a down-converting luminophoric medium arranged in
receiving relationship to said primary radiation, and which in
exposure to said primary radiation, is excited to responsively
emit a secondary, relatively longer wavelength, polychromatic
radiation, with separate wavelengths of said polychromatic
radiation mixing to produce a white light output,
wherein each of the at least one single-die gallium nitride
based semiconductor blue light-emitting diode in interaction
with luminophoric medium receiving its primary radiation
produces white light output, and
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

6
wherein the luminophoric medium is dispersed in a
polymer that is on or about the single-die gallium nitride based
semiconductor blue light-emitting diode.
App. Br. 69 (Claims Appendix) (disputed limitations in italics, some
paragraphing added).

Prior Art References & Publications Considered
(1) Pinnow et al. (Pinnow) US 3,691,482 Sept. 12, 1972
(2) Martic et al. (Martic) US 3,743,833 July 3, 1973
(3) Wanmaker et al. (Wanmaker) US 3,793,046 Feb. 19, 1974
(4) Stevenson et al. (Stevenson) US 3,819,974 June 25, 1974
(5) Abe US 5,535,230 July 9, 1996
(6) Silsby US 5,563,621 Oct. 8, 1996
(7) Nakamura et al. (Nakamura) US 5,578,839 Nov. 26, 1996
(8) Tabuchi et al. (Tabuchi) JP 50-79379 Nov. 24, 1973
(9) Tadasu et al. (Tadasu) JP 5-152609 June 18, 1993
(10) Menda JP 6-267301 Sept. 22, 1994
(11) Admitted Prior Art in the ’175 patent (APA)
(12) CRC HANDBOOK OF CHEMISTRY AND PHYSICS E-201 (63d ed. 1983);
(13) BASF Data Sheet for Lumogen® F Violet 570;
(14) BASF Data Sheet for Lumogen® F Yellow 083;
(15) BASF Data Sheet for Lumogen® F Red 300;
(16) LIST OF LASER TYPES, Wikipedia available at
http://en.wikipedia.org/wiki/List_of_laser_types (last visited Sept. 20,
2013), Apr. 27, 2013, version available at http://en.wikipedia.org/
w/index.php?title=List_of_laser_types&oldid=552479686.
(17) Definition of “Resin” from The Free Dictionary available at
http://www.thefreedictionary.com/resin (last visited Oct. 9, 2013).
(18) Definition of “About” from The Free Dictionary available at
http://www.thefreedictionary.com/about (last visited Oct. 10, 2013).

Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

7
Expert Declarations & Other Exhibits
Appellant has provided several Declarations under 37 C.F.R. § 1.132
from several researchers and renowned experts in the field of light emitting
diodes (LEDs) including Dr. Gerald B. Stringfellow (Exhibits 5–6), Dr. Joan
Redwing (Exhibit 11), and Dr. Christian Wetzel (Exhibit 12). These
Declarations provide expert testimony regarding: (i) the state of the art
regarding LEDs and white light at the time of the invention, including
Stevenson’s original patent for a bright violet/blue LED, (ii) how the
industry was utilizing what is known as a direct-emission “triplet” approach
in which individual LEDs that emit three primary colors—red, green, and
blue (RGB)—are packaged together and then all the primary (RGB) colors
are mixed together to form white light, (iii) how those of ordinary skill in the
art including the Declarants would have pursued the RGB “triplet” approach
and avoided a “down-conversion” approach in which a phosphor material is
used to convert monochromatic light from a blue or ultraviolet (UV) LED to
create white light, as disclosed by Appellant’s invention, and (iv) how single
white LEDs were not possible until after Appellant’s invention, i.e., blue
LED in combination of “down-conversion” to produce white light as
allegedly corroborated with documentary evidence.
In addition, Appellant has provided three (3) Declarations under 37
C.F.R. § 1.132 from Dr. George Brandes (Exhibits 2–4), Director of IP
Strategy and Business Development at Cree, Inc., the patentee, to provide
testimony of second considerations of non-obviousness, including:
(i) evidence of long felt but unsolved need, (ii) unexpected results,
(iii) scientific recognition and industry acknowledgement, (iv) licensing, and
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

8
(v) commercial success of Appellant’s invention. The ’175 patent allegedly
provides documentary evidence that corroborates the Declarations and
support Appellant’s arguments. See, e.g., App. Br. 6–7 (citing Spec. col. 2,
ll. 29–31, 38–51, col. 8, ll. 26–32), 54–55 (citing, e.g., Spec. col. 1, l. 11–
col. 5, l. 59); Reply Br. 8–9 (citing Spec. col. 9, ll. 9–18), 11 (citing Spec.
col. 8, ll. 26–32), and 19 (citing Spec. col. 1, ll. 32–41).
A complete listing of these Exhibits and alleged corroborating
evidence is provided below:
Exhibit 1: Research News, FRAUNHOFER GESELLSCHAFT, 1997.
 Submitted as Exhibit A to Response dated Aug.
24, 2012. Entered into record on Nov. 20, 2013.

Exhibit 2: Declaration of Dr. George R. Brandes dated January 6,
2012 (Brandes II5).
 Submitted with Response dated Jan. 7, 2012.
Entered into the record on Jan. 26, 2012.
 Cree Licenses Remote Phosphor IP, Launches
New LEDs and Services, LEDS MAGAZINE,
INDUSTRY NEWS, Dec. 2011: submitted as Exhibit
A.
 Cree and Nichia Announces White LED Cross-
Licensing, LEDS MAGAZINE, INDUSTRY NEWS,
Feb. 2005: submitted as Exhibit B.
 Toyoda Gosei Announces Patent Agreement with
Cree, Toyoda email announcement, May 2008:
submitted as Exhibit C.

5 For consistency with the Briefs, we retain the Declaration labels used by
Appellant and the Examiner. For example, we refer to “Brandes II” even
though—because Appellants did not rely on, or submit as an exhibit, the
November 19, 2010, Declaration of Dr. Brandes—we do not refer to
“Brandes I” in our Decision.
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

9
 Cree and Osram Sign LED Patent Cross-License
Agreement, SEMICONDUCTOR TODAY, INDUSTRY
NEWS, April 2011: submitted as Exhibit D.
 Cree and Phillips Sign Comprehensive LED
Patent Cross-License Agreement, Cree email
announcement, July 2010: submitted as Exhibit E.

Exhibit 3: Declaration of Dr. George R. Brandes dated March 26,
2012 (Brandes III).
 Submitted with Response dated March 26, 2012.
Entered into the record on May 24, 2012.

Exhibit 4: Declaration of Dr. George R. Brandes dated August 23,
2012 (Brandes IV).
 Previously submitted with Response dated August
24, 2012. Entered into the record on Nov. 20,
2013.

Exhibit 5: Declaration of Dr. Gerald B. Stringfellow dated March
26, 2012 (Stringfellow II).
 Submitted with Response dated March 26, 2012.
Entered into the record on May 24, 2012.
 Research News, FRAUNHOFER GESELLSCHAFT,
1997: submitted as Exhibit N.

Exhibit 6: Declaration of Dr. Gerald B. Stringfellow dated August
23, 2012 (Stringfellow III).
 Previously submitted with Response dated August
24, 2012. Entered into the record on Nov. 20,
2013.

Exhibit 7: http://www.nichia.co.jp/en/about_nichia/history.html.
 Submitted as Exhibit B with Response dated
August 24, 2012. Entered into the record on Nov.
20, 2013.

Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

10
Exhibit 8: H.P. Maruska & D.A. Stevenson, Mechanism of Light
Production in Metal-Insulator-Semiconductor Diodes;
GaN:Mg Violet Light-Emitting Diodes, 17 SOLID STATE
ELECTRONICS 1179 (1974).
 Submitted as Exhibit C with Response dated
August 24, 2012. Entered into the record on Nov.
20, 2013.

Exhibit 9: Alfred Vollmer, White LED Developed Using
Luminescence Conversion, Nikkei Electronic Asia, July
1997.
 Submitted as Exhibit D with Response dated
August 24, 2012. Entered into the record on Nov.
20, 2013.

Exhibit 10: Applied Physics Letters 92, 143309 (2008).
 Submitted with Response dated August 24, 2012.
Entered into the record on Nov. 20, 2013.

Exhibit 11: Declaration of Dr. Joan M. Redwing dated August 24,
2012.
 Previously submitted with Response dated August
24, 2012. Entered into the record on Nov. 20,
2013.
 Shuji Nakamura et al., THE BLUE LASER DIODE:
THE COMPLETE STORY (2000): submitted as
Attachment D.
 He Tian et al., Bichromophoric Rhodamine Dyes
and their Fluorescence Properties, 26 DYES AND
PIGMENTS 159 (1994): submitted as Attachment E.
 C.J. Nuese & J.I. Pankove, Light-Emitting Diodes
– LEDs (unidentified date of publication):
submitted as Attachment F.
 Isamu Akasaki & Hiroshi Amano, Widegap
Column – III Nitride Semiconductors for UV/Blue
Light Emitting Devices, 141 J. Electrochemical
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

11
Soc’y 2266–2271 (1994): submitted as Attachment
G.
 H.P. Maruska & D.A. Stevenson, Mechanism of
Light Production in Metal-Insulator-
Semiconductor Diodes; GaN:Mg Violet Light-
Emitting Diodes, 17 SOLID STATE ELECTRONICS
1171-1179 (1974): submitted as Attachment H.

Exhibit 12: Declaration of Dr. Christian M. Wetzel dated August 24,
2012.
 Previously submitted with Response dated August
24, 2012. Entered into the record on Nov. 20,
2013.

Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

12
Examiner’s Rejections
A. Stevenson as a primary reference
(1) Claims 118, 134, and 140 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Stevenson, Pinnow, and Nakamura.
Ans. 6–18.
(2) Claims 135, 136, and 140 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Stevenson, Pinnow, Nakamura, and
Tadatsu. Ans. 18–20.
(3) Claims 138 and 140 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Stevenson, Pinnow, Nakamura, and Tabuchi. Ans.
20–22.
(4) Claims 118 and 134 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Stevenson, APA, Wanmaker, Nakamura, Tabuchi,
and Martic. Ans. 22–27.
B. Tabuchi as a primary reference
(5) Claims 118, 134, 138, and 140 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tabuchi, APA, Wanmaker, Nakamura,
and Martic. Ans. 27–35.
(6) Claims 118, 134, 138, and 140 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tabuchi, Pinnow, and Nakamura. Ans.
35–40.
(7) Claims 135 and 136 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tabuchi, Pinnow, Nakamura, and Tadatsu. Ans.
40–42.

Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

13
Issues on Appeal
Based on Appellant’s arguments, the dispositive issue on appeal is
whether the Examiner erred in rejecting claims 118, 134, and 140 under
35 U.S.C. § 103(a) as being unpatentable over Stevenson, Pinnow, and
Nakamura. In particular, the appeal turns on:
(1) Whether the combination of Stevenson, Pinnow, and
Nakamura teaches or suggests all limitations of Appellant’s claims
118, 134, and 140, including: (i) the use of a blue LED in combination
with a down-converting luminophoric medium to produce white light,
and (ii) the down-converting luminophoric medium is dispersed in a
polymer that is on or about the single-die blue GaN-based LED. App.
Br. 15–35; Reply Br. 2–9.

(2) Whether there is an objective reason supported by a
rational underpinning to combine the teachings of Stevenson, Pinnow,
and Nakamura in order to use a blue LED to create white light via
down conversion. App. Br. 4–14; Reply Br. 2–3.

(3) Whether the Examiner has engaged in impermissible
hindsight to combine the teachings of Stevenson, Pinnow, and
Nakamura in order to use a blue LED to create white light via down
conversion. App. Br. 13–14; Reply Br. 1.

(4) Whether the Examiner has accorded proper weight to
Appellant’s expert testimony in support of the conclusion of
obviousness. Reply Br. 8–20.

(5) Whether secondary considerations of non-obviousness
such as: (i) evidence of long felt but unsolved need, (ii) unexpected
results, (iii) scientific recognition and industry acknowledgement,
(iv) licensing, and (v) commercial success are sufficient to overcome
strong indications of obviousness. App. Br. 54–67; Reply Br. 17–18.
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

14
ANALYSIS
§ 103(a) Rejection of Claims 118, 134, and 140 based on
Stevenson, Pinnow, and Nakamura

Independent claim 118 defines broadly a light-emission device that
uses a blue LED in combination with a down-converting luminophoric
medium to produce white light. In particular, claim 118 recites a light-
emission device comprising:
a single-die, two-lead gallium nitride based
semiconductor blue light-emitting diode emitting radiation; and

a recipient down-converting luminophoric medium for
down-converting the radiation emitted by the light-emitting
diode, to a polychromatic white light, wherein the luminophoric
medium is dispersed in a polymer that is on or about the single-
die, two-lead gallium nitride based semiconductor blue light-
emitting diode.

App. Br. 69 (Claims Appendix) (disputed limitations in italics).
Independent claim 134 is substantially identical to independent claim
118, and further defines: (1) the relationship between the primary radiation
(light output from blue LED) and the secondary radiation having a longer
wavelength (light output from down-converting luminophoric medium) and
(2) at least one single-die GaN-based blue LED (as opposed to merely a
single-die GaN-based blue LED as recited in claim 118).
Dependent claim 140 further requires the single-die LED arranged to
directly impinge radiation to the polymer (emphasis added).

Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

15
Obviousness
In evaluating whether claims are obvious,
[1] the scope and content of the prior art are to be determined;
[2] differences between the prior art and the claims at issue are
to be ascertained; and [3] the level of ordinary skill in the
pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented.

Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). However, 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). A
prima facie case of obviousness is established when the prior art itself would
appear to have suggested the claimed subject matter to a person of ordinary
skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). The
level of ordinary skill in the art is reflected by the prior art of record. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC
Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91
(CCPA 1978).
The Examiner finds the combination of Stevenson, Pinnow, and
Nakamura discloses all limitations of Appellant’s claims 118, 134, and 140.
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

16
Ans. 6–18. For example, the Examiner finds Stevenson6 discloses a light-
emitting device comprising: (1) a single-die, two lead7 gallium nitride
(GaN)-based semiconductor LED to emit primary radiation in the violet
region of the spectrum,8 and (2) a down-converting luminophoric medium
including organic and inorganic phosphors to convert the primary radiation9

6 Professor David Stevenson along with his doctoral students at Stanford
University, Herbert Maruska and Walden Rhines, developed the first violet/
blue LED using magnesium-doped gallium nitride in 1972. Patent No.
3,819,974 was issued on June 25, 1974; however, devices built in early
1970s did not have sufficient light output (brightness level) to be of practical
use at least until 1993 when high-power, high-brightness blue LEDs were
developed by Dr. Shuji Nakamura of Nichi Corporation making high-power
white light sources practical.
7 By definition, a light emitting diode (LED) is a “two-lead” semiconductor
light source. This is because a LED is simply a basic p-n junction diode,
which emits light when activated, i.e., when a voltage is applied to the leads
forcing electrons and holes to recombine for light emission. See “LED” THE
AMERICAN HERITAGE SCIENCE DICTIONARY (Houghton Mifflin Company,
2005). As such, the term “two-lead” is inherent in every LED and, does not
add patentable weight.
8 According to the Examiner, Stevenson’s peak emission is violet, but both
blue and ultraviolet (UV) emissions are included. Ans. 8–9 (citing
Stevenson’s Fig. 4 in which light emitted from Stevenson’s LED ranges
from blue to ultraviolet (UV) and centered in violet around 400nm; see also
col. 1, ll. 10–12, 16–17; col., 3, ll. 24–28). Appellant’s experts, Dr. Joan
Redwing and Dr. Christian Wetzel, acknowledge Stevenson’s emission
spectrum contains blue and UV emission. However, the actual emission of
blue or UV light is relatively small compared to the violet emission; thus,
Stevenson’s LED is known as a violet LED and not a blue LED. See
Redwing Decl. ¶ 25 and Wetzel Decl. ¶ 24.
9 According to the Examiner, impingement of radiation emitted from LED to
the luminophoric medium dispersed in a polymer, albeit directly, indirectly
or otherwise, is a matter of design choice. Ans. 17.
App
Reex
Paten

from
Ans.
col.

illus
F

the u
exten
pow
the “
phos

10 Ac
great
(citin
eal 2014-0
amination
t No. 6,60
the GaN-
6–12 (citi
4, l. 7; Fig
Fig. 3 of
tration.
ig. 3 of S
to emit
The Exa
se of blue
t necessar
er, high-br
down-con
phors to p

cording to
er sensitiv
g Stevens
07890
Control N
0,175 B1
based LED
ng Steven
. 3 and Fig
Stevenson
tevenson d
primary r
miner ackn
LEDs and
y, the Exa
ightness b
version” o
roduce wh

the Exam
ity for the
on, col. 3,
o. 90/010
die to vis
son, col. 1
. 4).
is reprod
iscloses a
adiation in
owledges
“down-co
miner reli
lue LEDs,
f the prim
ite light an

iner, visib
human ey
l. 24–col.
,940
17
ible light
, ll. 58–64
uced below
single-die
the violet
Stevenson
nversion”
es on (1) N
and (2) Pi
ary radiati
d the mix
le light (li
e) also inc
4, l. 7).
having a lo
; col. 2, ll.
with add
, two-lead
region of
does not
to produc
akamura
nnow for e
on using a
ture of pho
ght in a sp
ludes whi
nger wav
29–31; co
itional ma
GaN-base
the spectru
implicitly
e white lig
for disclos
xplicitly d
mixture o
sphors is
ectral rang
te light. A
elength.10
l. 3, l. 24–
rkings for

d LED
m.
disclose
ht. To the
ing high-
isclosing
f
dispersed
e of
ns. 11

Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

18
in a polymer that is “about” the primary radiation. Id. at 13–17 (citing
Nakamura, col. 2, ll. 7–14, 30–33; col. 4, ll. 9–11, ll. 52–59; col. 11, l. 61–
col. 12, l. 6; and cols. 13–20 “Examples 1-28 of blue LEDs”; and Pinnow,
col. 1, l. 65–col. 2, l. 7, 15–20; col. 3, ll. 24–55; col. 6, ll. 28–30; Fig. 3 and
Abstract).
Based on these factual findings and the principles outlined in KSR,
550 U.S. at 406, the Examiner concludes the following: First, “[i]t would
have been obvious . . . to substitute Stevenson’s GaN-based LED with either
the known UV light emitting or blue light emitting GaN-based LED
disclosed in Nakamura” because such a substitution would be seen as
“simple substitution of one known element (Stevenson’s GaN-based LED)
for another known element (Nakamura’s GaN-based LED) to obtain
predictable results (as evidenced by Pinnow).” Ans. 14 (emphasis omitted).
Second, once the substitution is made [and a blue LED (instead of a violet
LED) is placed in a single die as disclosed by Stevenson], a person having
ordinary skill in the art11 would have utilized the same “down-conversion”
using a mixture of phosphors to convert the blue or UV light output from the
blue LED die to produce white light, as implicitly suggested by Stevenson
and expressly disclosed by Pinnow. Id. at 17; see also Stevenson, col. 3, l.
24–col. 4, l. 7; Pinnow, Abstract.
According to the Examiner, the reason for combining the references is
based on the recognition that some advantage or expected beneficial result
would have been produced by their combination. In re Sernaker, 702 F.2d

11 An artisan of ordinary skill is a hypothetical person who is presumed to
know the relevant prior art at the time of Appellant’s invention. In re
GPAC, 57 F.3d at 1579.
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

19
989, 994–95 (Fed. Cir. 1983). For example, Nakamura’s GaN-based LED is
more powerful than Stevenson’s GaN-based LED (i.e., Nakamura’s GaN-
based LED would provide more photons to be down-converted by the
phosphors and thereby provide brighter overall light emission from the
device) and, as such, there is an “advantage or expected beneficial result” in
using the higher-power, high brightness Nakamura LED, specifically
brighter emission by the phosphors. Ans. 110. Therefore, an artisan of
ordinary skill would have appreciated this benefit and recognized that
Nakamura’s better and brighter LED would have been an “update” using a
“modern electronic component” of Stevenson’s older, less-efficient LED.
Id. (emphasis omitted).
Nevertheless, Appellant contends: (1) the combination of Stevenson,
Pinnow, and Nakamura does not teach or suggest the subject matter of
Appellant’s claims 118, 134, and 140, i.e., the use of a blue LED in
combination with a down-converting luminophoric medium to create white
light; (2) there is no reason to combine the teachings of Stevenson, Pinnow,
and Nakamura and, in the absence of such a reason, and (3) the Examiner
has engaged in an impermissible hindsight to combine the teachings of
Stevenson, Pinnow, and Nakamura in order to use a blue LED to create
white light via down conversion as recited in Appellant’s independent claim
118, 134, and 140. App. Br. 4–35; Reply Br. 1–9. In particular, Appellant
argues:
(1) None of the art suggests, let alone teaches, the use
of a blue LED and “down-conversion” to create white light
because (i) Stevenson only discloses a violet LED, not blue,
(ii) Pinnow relies on a blue argon gas laser as a light source, a
very different thing from a blue LED, and (iii) Nakamura
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

20
teaches a blue LED but provides no teaching or suggestion of
“down-conversion” (App. Br. 21–29);

(2) No one skilled in the art would turn to Stevenson if
they were considering the creation of white light from an LED
because Stevenson’s LED is a very low power, MIS type device
that was unsuitable for the creation of white light (id. at 29–30);

(3) No one skilled in the art would turn to Pinnow if
they were considering the creation of white light from an LED
because Pinnow relies on an extremely high power laser that is
very different from an LED (id. at 30–33);

(4) Nakamura fails to suggest using a blue LED and
down-conversion to create white light (id. at 33–34);

(5) Stevenson and Pinnow, if combined, do not yield
white light (id. at 35); and

(6) The combination of Stevenson, Pinnow, and
Nakamura still fails to teach or suggest “luminophoric medium
. . . dispersed in a polymer” (id. at 35–36).

In support of these arguments, Appellant relies on expert testimony
from Dr. Gerald B. Stringfellow (Exhibits 5–6), Dr. Joan Redwing (Exhibit
11), and Dr. Christian Wetzel (Exhibit 12) to describe: (i) the state of the art
regarding LEDs and white light at the time of the invention, including
Stevenson’s original patent for a violet/blue LED, (ii) how the industry at the
time was utilizing what is known as a direct-emission “triplet” approach in
which individual LEDs that emit three primary colors—red, green, and blue
(RGB)—are packaged together and then all the primary (RGB) colors are
mixed together to form white light, (iii) how those of ordinary skill in the art
including the Declarants would have pursued the RGB “triplet” approach
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

21
and avoided a “down-conversion” approach in which a phosphor material is
used to convert monochromatic light from a blue or ultraviolet (UV) LED to
create white light, as disclosed by Appellant’s invention, and (iv) how single
white LEDs were not possible until after Appellant’s invention, i.e., blue
LED in combination of “down-conversion” to produce white light as
corroborated with documentary evidence. Stringfellow II Decl. ¶¶ 38–41
(Exhibit 5); Stringfellow III Decl. ¶¶ 14–28 (Exhibit 6); Redwing Decl.
¶¶ 15–103 (Exhibit 11); and Wetzel Decl. ¶¶ 17–125 (Exhibit 12).
For example, Dr. Stringfellow12 testifies: (1) during the history of
LEDs from 1960s to mid-1990s, researchers directed their efforts to the
development of better monochromatic primary color LED devices, via
direct-emission “triplet” approach “because researchers believed that if they
achieved successful red, green, and blue [(RGB)] monochromatic light
sources, then they could create any other color of interest by mixing these
monochromatic light sources” (Stringfellow III Decl. ¶ 14); (2) Stevenson
discloses the original, seminal work on a bright violet/blue LED in early
1974, known as a “MIS” device, but no work was ever done or proposed to
use Stevenson’s MIS device to produce white light (id. ¶¶ 20–22) and no one
of ordinary skill in the art would look to Stevenson for anything to do with
production of white light (id. ¶ 24); (3) no LED devices would utilize
phosphors to produce white light prior to Appellant’s invention disclosed in

12 Dr. Stringfellow is a member of the National Academy of Engineering, a
Fellow of the IEEE and a worldwide-recognized expert in the field of LEDs
with over 46 years of experience and over 350 peer-reviewed articles. See
Stringfellow III Decl. ¶¶ 4–5, 10–11. Dr. Stringfellow is well qualified to
testify regarding the technology in this re-examination proceeding.
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

22
the ’175 patent because the industry was focused on using a direct-emission
“triplet” approach (id. ¶¶ 24–26); and (4) at the time of the invention, there
was no focus on the use of “down-conversion” because (a) it would waste
energy, (b) it was no longer needed to create primary color, and (c) it
entailed increased cost and complexity (id. ¶ 26).
Likewise, Dr. Joan Redwing13 acknowledges light emitted from LEDs
can undergo a process known as “down-conversion” where the light is
subsequently passed through a layer of phosphors or other luminophoric
(i.e., light emitting) material and converted to light having a longer
wavelength (Redwing Decl. ¶ 12), but nevertheless testifies that no person of
ordinary skill in the art would have used a “down-conversion” process to
create white light (id. ¶ 15) because: (1) such “down-conversion” process
causes energy loss and therefore loss of luminous intensity whereas the
production of white light requires a significant amount of power and
brightness (id. ¶ 16), (2) the blue or violet LEDs in existence prior to the
1994–1996 timeframe had very low optical power, and given these
disadvantages, and (3) an artisan of ordinary skill would have been
dissuaded from considering “down-conversion” and would instead utilize
the direct emission RGB “triplet” approach to produce white light (id. ¶¶
16–18).

13 Dr. Redwing is the Professor of Materials Science and Engineering,
Chemical Engineering & Electrical Engineering, as well as the chair of the
Intercollege Graduate Degree Program in Materials Science and Engineering
at Pennsylvania State University, an expert in the field of LEDs and GaN-
based semiconductor devices with over 240 peer-reviewed articles. See
Redwing Decl. ¶¶ 4–5, 7. Dr. Redwing is also well qualified to testify
regarding the technology in this re-examination proceeding.
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

23
Similarly, Dr. Christian Wetzel14 also testifies: (1) the generally
accepted means of obtaining white light was to combine red, green, and blue
LEDs (i.e., RGB “triplet” approach) (Wetzel Decl. ¶ 17), and (2) an artisan
of ordinary skill would have pursued the use of RGB “triplet” approach to
generate white light, and would have been dissuaded from pursuing
phosphors “down-conversion” of LED light to white because phosphors
were more expensive than other semiconductor materials (id. ¶¶ 18–20).
Based on the testimony of three renowned experts in the field of
LEDs, each of whom was a person having ordinary skill in the art at the time
of the invention and each of whom testified that Appellant’s invention, i.e.,
the use of a blue LED and “down-conversion” to create white light was not
obvious and an artisan of ordinary skill would have pursued a direct-
emission RGB “triplet” approach using red, green, and blue LEDs, instead
of pursuing “down-conversion” with a luminophoric medium, Appellant
argues there is no reason to use a blue LED to create white light via down
conversion. App. Br. 12–14; Reply Br. 1–5. According to Appellant, the
expert testimony is corroborated with contemporaneous documents,
including:
(1) Dr. Nakamura15—a highly renowned figure in the
LED field and a person of extraordinary skill in the art at the

14 Dr. Wetzel is the Wellfleet Career Development Constellation Professor,
Future Chips at Rensselaer Polytechnic Institute, an expert in the field of
LEDs and GaN-based LEDs with over 150 peer-reviewed articles. See
Wetzel Decl. ¶¶ 5, 7. Dr. Wetzel is also well qualified to testify regarding
the technology in this re-examination proceeding.
15 Dr. Shuji Nakamura “is famous for his work with bright blue LEDs and is
a named inventor on two of the references relied on in the Final Office
Action: U.S. Patent No. 5,578,839 to Nakamura et al. (‘Nakamura’) and
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

24
time of the invention—characterized the “down-conversion”
approach as “impossible” in his book, THE BLUE LASER
DIODE: THE COMPLETE STORY 230 (2000) (Exhibit 11 –
Attachment D);

(2) Nichia’s Executive Vice President, Mr. Tazaki,
praised the Appellant’s invention as “pioneering.” See LEDs
Magazine, Industry News, Feb. 2005 (Exhibit 2); and

(3) Alfred Vollmer, writing for Nikkei Electronics
Asia in 1997, summarized the situation as: “Single white light-
emitting diodes (LEDs) were not feasible to date as LEDs emit
monochromatic light only. The mixture of colors making up
white light was up to now only possible by combining three
different diodes” (Exhibit 9) (emphasis added).

App. Br. 4–10; Reply Br. 3–4.
We do not find Appellant’s arguments and proffered evidence
persuasive to show reversible error on the part of the Examiner. In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner
had failed to make a prima facie case, the Board would not have erred in
framing the issue as one of reversible error because it has long been the
Board’s practice to require an appellant to identify the alleged error in the
examiner’s rejections). Rather, we find the Examiner has provided a
comprehensive response, supported by a preponderance of evidence, to each
of the contentions raised by Appellant and, as such, adopt as our own the

Japan Patent Application Publication H05-152609 to Tadatsu et al.
(‘Tadatsu’).” App. Br. 4 n.3. Dr. Nakamura is one of the three recipients of
the 2014 Nobel Prize for Physics “for the invention of efficient blue light
emitting diodes, which has enabled bright and energy-saving white light
sources.” Nobel Prize winners at http://www.nobelprize.org/nobel_prizes/
physics/laureates/2014/nakamura-facts.html (last visited Nov. 19, 2014).
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

25
Examiner’s findings and reasons well-stated in the Examiner Answer at
pages 43–134.
Nevertheless, we note Appellant’s arguments are predicated upon:
(1) multiple attacks of Stevenson, Pinnow, and Nakamura individually,
(2) mischaracterization of the Examiner’s reliance on these references, and
(3) improper bodily incorporation of Pinnow into Stevenson. App. Br. 1–41.
For example, Stevenson is not relied upon for disclosing a blue LED
(Nakamura is). Ans. 6–13, 67. Nor is Stevenson relied upon for an express
disclosure of the creation of white light. Id. at 15, 82–85. Likewise,
Pinnow, not Stevenson, is relied upon for teaching phosphors dispersed in a
polymer. Id. at 87–89. Instead, Stevenson is merely relied upon for the
general teaching of a two-lead, GaN-based LED on a single die. Id. at 6–13.
Similarly, Pinnow is not relied upon for disclosing the use of a blue argon
gas laser as a light source; rather, a “down-conversion” approach to create
white light. Id. at 17–19, 24–25, 31–33. And, Pinnow, not Nakamura, is
relied upon for utilizing a “down-conversion” approach to create white light.
Id. at 26–28, 33–34. As such, Appellant’s arguments regarding: (1) why
Stevenson’s LED—a very low power, MIS type device—was unsuitable for
the creation of white light, (2) why Pinnow’s high power laser was
incompatible with LEDs, and (3) Stevenson and Pinnow, if combined, do
not yield white light, are misplaced and unpersuasive. App. Br. 29–35.
One cannot show nonobviousness by attacking references individually
when the rejection is based on a combination of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). Each reference cited by the Examiner
must be read, not in isolation, but for what it fairly teaches in combination
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

26
with the prior art as a whole. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Nor can nonobviousness be demonstrated by physically
combining the references. In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983); see also 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.”). All the features of the secondary reference need not
be bodily incorporated into the primary reference, see Keller, 642 F.2d at
425, and one having ordinary skill in the art is not compelled to blindly
follow the teaching of one prior art reference over the other without the
exercise of independent judgment, see Lear Siegler, Inc. v. Aeroquip Corp.,
733 F.2d 881, 889 (Fed. Cir. 1984). See also KSR, 550 U.S. at 421 (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). “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.”
Keller, 642 F.2d at 425.
Contrary to Appellant’s arguments, we agree with the Examiner: (1)
Stevenson and Nakamura teach a two-lead, GaN-based blue LED on a single
die, (2) Stevenson and Pinnow teach a “down-conversion” via phosphors
from LED light, including phosphors dispersed in a polymer located “about”
the LED (Ans. 117–121) and, given the presumed knowledge by an artisan
of ordinary skill regarding the relevant prior art at the time of Appellant’s
invention, (3) the combined teachings of Stevenson, Pinnow, and Nakamura
would have suggested to an artisan of ordinary skill to use a blue LED on a
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

27
single die to create white light via “down-conversion” because Nakamura’s
blue LED is more powerful than Stevenson’s older, less-efficient LED in
terms of power and brightness and, as such, is more suitable with a “down-
conversion” process to produce white light. Ans. 16–17, 110.
We also do not find Appellant’s expert testimony from Dr.
Stringfellow (Exhibits 5–6), Dr. Redwing (Exhibit 11), and Dr. Wetzel
(Exhibit 12) probative as to the dispositive question of whether an artisan of
ordinary skill would have considered “down-conversion” of a blue LED to
create white light, not before but after the emergence of high brightness and
efficient blue LEDs developed by Dr. Shuji Nakamura in late 1993. Rather,
we find the Examiner has provided a comprehensive response, supported by
a preponderance of evidence, to each of the contentions raised by Appellant
and, as such, adopt as our own the Examiner’s findings, considerations of
Appellant’s expert testimonies and reasons well-stated in the Examiner
Answer at pages 43–134.
At the outset, we agree with Appellant that the dispositive issue
presented in this appeal is simple and straightforward: was it obvious at the
time of the invention to use an LED, in particular a blue LED, to create
white light via down-conversion as recited in the claims? Reply Br. 21.
The answer to that question need not require (1) hundreds of pages of
briefing, expert testimony from Dr. Stringfellow, Dr. Redwing, and Dr.
Wetzel, and corroborating evidence, and (2) in response, a 192-page, single-
space Examiner’s Answer. Rather, the answer to that question is a simple
resounding “yes” particularly, in light of high-power, high-brightness blue
LEDs developed by Dr. Shuji Nakamura in late 1993, a major breakthrough
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

28
in light technology for which he was awarded the 2014 Nobel Prize for
Physics.”16
In our view, Appellant’s invention is nothing more than a new
application of a high-power, high-brightness blue LED developed by Dr.
Nakamura in late 1993 on a single die, and that application is predictable
according to the blue LED’s inherent functions, particularly, in view of:
(1) the state of the art in LEDs, (2) the market demand for white light and
design trends to create white light, (3) a finite number of identified,
predictable solutions available to convert light from LEDs into white light
(i.e., direct-emission “triplet” approach vs. “down-conversion” approach),
(4) advantages and/or disadvantages of utilizing (i) the direct-emission
“triplet” approach and (ii) the “down-conversion” approach to create white
light, and (5) the sensibility of picking and choosing the “down-conversion”
approach over the direct-emission “triplet” approach because light emitted
from a single-die blue LED could now be down-converted directly into
white light without the need of multiple “RGB” LEDs positioned on the
same single die, via direct emission “triplet” approach.
Appellant’s experts, Drs. Stringfellow, Redwing, and Wetzel,
acknowledge: (1) Stevenson’s seminal work on a violet/blue LED in early
1974, and (2) at the time of Appellant’s invention in early 1996, there were
two known approaches to produce white light from LEDs. One was a direct-
emission “triplet” approach in which individual LEDs that emit three
primary colors—red, green, and blue (RGB)—are packaged together and

16 See Nobel Prize winners at http://www.nobelprize.org/nobel_prizes/
physics/laureates/2014/nakamura-facts.html (last visited Nov. 19, 2014).
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

29
then all the primary (RGB) colors are mixed together to form white light.
The other was a “down-conversion” approach in which a phosphor material
is used to convert monochromatic light from a blue or ultraviolet (UV) LED
to create white light, much in the same way a fluorescent light bulb works.
See Stringfellow Decl. ¶¶ 24–26; Redwing Decl. ¶¶ 12, 16–18; Wetzel Decl.
¶¶ 17–20. We find ample evidence of record supports the Examiner’s
showing that “it is well within the level of skill of the [artisan of ordinary
skill at the time of Appellant’s invention] to select a mixture of phosphors
(i.e., luminescent materials) to produce white light” upon excitation primary
radiation sources emitting blue or UV light, including, for example: (1)
Pinnow, col. 1, ll. 51–56; col. 6, ll. 28–30; (2) Appellant’s Admitted Prior
Art (APA), col. 3, l. 40 – col. 4, l. 42; (3) Tabuchi, pages 3–5; (4) Menda ¶¶
21–23, and Fig. 4; (5) Abe, col. 2, ll. 20–36; and (6) Appellant’s own
admitted prior art (APA), ’175 patent, col. 10, ll. 41–65. Ans. 44–50, 97–
108.
Dr. Redwing and Dr. Wetzel further testify the main reason the
“down-conversion” process was not used in connection with the then
existing LEDs prior to the 1994–1996 timeframe was because: (1) such a
“down-conversion” process requires a significant amount of power and
brightness to create white light, and LEDs available during that timeframe
did not have enough power and brightness level, and (2) phosphors were
more expensive than other semiconductor materials. See Redwing Decl.
¶¶ 16–18 and Wetzel Decl. ¶¶ 18–20 (emphasis added). According to Dr.
Redwing and Dr. Wetzel, because of these disadvantages, an artisan of
ordinary skill would have been dissuaded from considering “down-
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

30
conversion” and would instead utilize the direct emission RGB “triplet”
approach to produce white light. Redwing Decl. ¶¶ 16–18.

Probative Value of Expert Testimony & Corroborating Evidence
All Appellant’s expert testimonies from Drs. Stringfellow, Redwing,
and Wetzel are compelling and are considered persuasive relative to: (1) the
general state of the art in LEDs, (2) the two primary approaches to produce
white light from LEDs available at the time of the invention in early 1996,
and (3) the question of whether an artisan of ordinary skill would have been
dissuaded from considering “down-conversion” and would instead utilize
the direct emission RGB “triplet” approach to produce white light.
However, Appellant’s expert testimonies do not account for: (1) the design
need or market pressure for white light LEDs with sufficient power and
brightness, (2) the finite number of solutions to create white light based on
LEDs, (3) the level of skill by an artisan of ordinary skill, and (4) the
emergence of high-power, high brightness blue LEDs by Dr. Shuji
Nakamura in late 1993 and the impact of those bright blue LEDs in creating
white light sources.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill in the art has good reason to
pursue the known options within his or her technical grasp. If
this leads to the anticipated success, it is likely the product not
of innovation but of ordinary skill and common sense.
KSR, 550 U.S. at 402–03.
An artisan of ordinary skill (i.e., a person having ordinary skill in the
art) is a hypothetical person who is presumed to know all the relevant prior
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

31
art at the time of Appellant’s invention (in 1996), including, for example: (1)
Stevenson’s seminal work on a violet/blue LED, (2) two known approaches
to create white light based on LED, and (3) Nakamura’s high-power, high-
brightness blue LEDs in 1993 using gallium nitride revolutionized LED
lighting, making high-power light sources practical. In re GPAC, 57 F.3d at
1579. Those persons “must be [also] presumed to know something” about
the art “apart from what the references disclose.” In re Jacoby, 309 F.2d
513, 516 (CCPA 1962). Thus, that person is presumed to have the technical
competence and experience of skilled artisans working in the area of the
subject invention and of the manner in which problems were solved,
including sufficient skill to experiment with known approaches to create
white light and decide on the best approach in view of the then newly
developed high-power, high-brightness blue LEDs by Dr. Nakamura at the
time of Appellant’s invention, i.e., ’175 patent. Ans. 122–129. Once the
high-power, high-brightness blue LEDs developed by Dr. Nakamura became
available in late 1993 (two years before Appellant’s invention), the
disadvantages of the “down-conversion” process using phosphors dissipated
and such a process became available as a preferred solution to high-power,
high-brightness blue LEDs to create white light.
We have reviewed all Appellant’s expert testimonies from
Drs. Stringfellow, Redwing, and Wetzel. However, we do not consider
these testimonies to be probative as to the question of whether an artisan of
ordinary skill would have considered “down-conversion” of a blue LED to
create white light, especially after the high brightness and high efficient blue
LEDs developed by Dr. Nakamura became available in late 1993. Likewise,
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

32
we are not persuaded by corroborating evidence, including: (1) Dr. Shuji
Nakamura’s Chapter 10.4 of his book, THE BLUE LASER DIODE: THE
COMPLETE STORY (2000) in which Appellant has characterized as an
acknowledgement the “down-conversion” approach was “impossible” until
recently (Exhibit 11 – Attachment D); (2) Nichia’s Executive Vice
President, Mr. Tazaki, praised Appellant’s invention as “pioneering” (see
LEDS MAGAZINE, INDUSTRY NEWS, Feb. 2005 (Exhibit 2)); and (3) Alfred
Vollmer, writing for Nikkei Electronics Asia in 1997, summarized the
situation as: “Single white light-emitting diodes (LEDs) were not feasible to
date as LEDs emit monochromatic light only. The mixture of colors making
up white light was up to now only possible by combining three different
diodes” (Exhibit 9) (emphasis added).
Contrary to Appellant’s characterizations, Chapter 10.4 of Dr.
Nakamura’s book describes the opposite: “it has been impossible to obtain
white LEDs until recently due to the lack of highly efficient blue and green
LEDs.” THE BLUE LASER DIODE: THE COMPLETE STORY 230 (2000). The
same chapter also discusses the two approaches to create white light:
(1) direct-emission “triplet” approach in which individual LEDs that emit
three primary colors—red, green, and blue (RGB)—are packaged together
and then all the primary (RGB) colors are mixed together to form white
light; and (2) “down-conversion” approach in which a phosphor material is
used to convert light from a blue LED to create white light. In fact,
Dr. Nakamura concludes the “triplet” approach as more expensive because
“RGB” LEDs are required instead of single-color LEDs. As a result,
Nakamura suggests fabricating white LEDs using blue LEDs in combination
App
Reex
Paten

with
requ

LED
show
expe
chip
Fig.
inc
i.

17 D
does
editi
paten
does
http:
Nov
used
Neve
show
infor
a pre
phos
eal 2014-0
amination
t No. 6,60
“down-co
ired. (Exh
If anythi
s using blu
n, for exa
cted from
.17 Fig. 10
10.14 of N
luding a b
e., a phosp

r. Nakamu
not appea
on is publi
t. The 1st
not appea
//link.sprin
. 19, 2014)
as § 102 p
rtheless, b
nonobvio
mation ca
dictable u
phors con
07890
Control N
0,175 B1
nversion”
ibit 9).
ng, Dr. Na
e LEDs in
mple, in F
those skill
.14 of Dr.
akamura
lue LED c
hor layer

ra’s book,
r to be prio
shed after
edition w
r to be prio
ger.com/b
. As such
rior art ag
ecause Ch
usness (A
n also be r
se of Naka
sistent with
o. 90/010
phosphors
kamura ac
combina
ig 10.14 o
ed in the a
Nakamura
’s book sho
hip and a d
on top of t

THE BLUE
r art again
the filing
as not pub
r art again
ook/10.10
, Chapter
ainst Appe
apter 10.4
pp. Br. 26
elied upon
mura’s blu
the know
,940
33
, so that o
tually sug
tion with “
f Dr. Naka
rt as a pre
’s book is
ws an exa
own-conv
he blue LE
LASER D
st Appella
date of Ma
lished unti
st Appella
07%2F97
10.4 of Dr
llant’s ind
is cited an
–27, 33–34
to show h
e LED ch
ledge and
nly one blu
gests that
down-con
mura’s bo
dictable us
reproduce
mple stru
erting lum
D chip to
IODE: THE
nt’s inven
rch 26, 19
l at least 1
nt’s inven
8-3-662-0
. Nakamur
ependent
d relied u
; Reply B
ow such w
ip if down
level of th
e LED ch
fabricating
version” p
ok, would
e of a blu
d below:
cture of a w
inophoric
create wh
COMPLETE
tion becau
96 of the
997 and, l
tion either
3462-0 (la
a’s book c
claims 118
pon by Ap
r. 14–16),
hite light
-converted
ose skille
ip is
white
hosphors,
have been
e LED

hite LED
medium,
ite light.
STORY,
se its 2nd
’175
ikewise,
.
st visited
annot be
and 134.
pellant to
the same
creation is
via
d in the art

.
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

34

Likewise, the Alfred Vollmer article reinforces the teachings of
Chapter 10.4 of Dr. Nakamura’s book that scientists at the Fraunhofer
Institute for Applied Solid State Physics of Freiburg, Germany, developed
white LEDs based on Dr. Nakamura’s blue LEDs. (Exhibit 9).
Similarly, the praise from Nichia’s Executive Vice President,
Mr. Tazaki, describing Appellant’s invention as “pioneering” is misleading.
That article refers to a patent cross-license agreement between Cree and
Nichia designed to prevent future litigation and to allow Cree access to
Nichia’s patents relating to LED technology for solid-state white lighting
(Exhibit 2). The word “pioneering” was not specifically used to describe
Appellant’s invention, but was used in reference to a larger patent portfolio.

Reason to Combine
We recognize that the Examiner must articulate some “reasoning with
some rational underpinning to support the legal conclusion of obviousness.”
In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006). The reasoning is important
“because inventions in most, if not all, instances rely upon building blocks
long since uncovered, and claimed discoveries almost of necessity will be
combinations of what, in some sense, is already known.” KSR, 550 U.S. at
418–19. However, the Examiner’s reasoning need not appear in, or be
suggested by, one or more of the references on which the Examiner relies
upon. Instead, a reason to combine teachings from the prior art “may be
found in explicit or implicit teachings within the references themselves, from
the ordinary knowledge of those skilled in the art, or from the nature of the
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

35
problem to be solved.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d
1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1357 (Fed.
Cir. 1998)). “Under the correct [obviousness] analysis, any need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.” KSR, 550 U.S. at 420.
Here, the Examiner has provided a reason showing motivation by a
person of ordinary skill in the art to achieve the claimed subject matter, i.e.,
the advantage using Nakamura’s GaN-based blue LED in place of
Stevenson’s GaN-based LED on a single die in combination of “down-
conversion” phosphors to create white light. See Ans. 43–50, 110.
Appellant has not demonstrated why that reason is erroneous or why a
person of ordinary skill in the art would not have reached the conclusions
reached by the Examiner. See DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006)
(“[T]he proper question is whether the ordinary artisan possesses knowledge
and skills rendering him capable of combining the prior art references.”).
Consequently, we are not persuaded by Appellant’s arguments that the
Examiner failed to articulate a rationale for combining Stevenson, Pinnow,
and Nakamura.

Impermissible Hindsight
We are also not persuaded by Appellant’s arguments that the
Examiner has engaged in an impermissible hindsight to combine the
teachings of Stevenson, Pinnow, and Nakamura to use a blue LED to create
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

36
white light via down conversion. App. Br. 12–14; Reply Br. 1–5. We are
cognizant that our reviewing courts have not established a bright-line test for
hindsight. The U.S. Supreme Court guides that “[a] factfinder should be
aware, of course, of the distortion caused by hindsight bias and must be
cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421
(citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36 (1966)).
Nevertheless, the Court has also qualified the issue of hindsight by stating
“[r]igid preventative rules that deny factfinders recourse to common sense,
however, are neither necessary under our case law nor consistent with it.”
KSR, 550 U.S. at 421.
In this appeal, we see the hindsight question before us as a balancing
test, i.e., whether: (1) the Examiner’s proffered combination of references is
merely “the predictable use of prior art elements according to their
established functions” (KSR, 550 U.S. at 417), consistent with common
sense; or, (2) an artisan would not have reasonably combined the cited
references in the manner proffered by the Examiner but for having the
benefit of the claim to use as a guide (i.e., impermissible hindsight).
After reviewing the respective teachings and suggestions of the cited
references, we find weight of the evidence shows the proffered combination
is merely a predictable use of prior art elements according to their
established functions. Therefore, on this record, we are not persuaded the
Examiner engaged in impermissible hindsight, as Appellant contends. App.
Br. 12–14; Reply Br. 1–5. Moreover, Appellant has not demonstrated the
Examiner’s proffered combination of references would have been “uniquely
challenging or difficult for one of ordinary skill in the art.” See Leapfrog
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

37
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418).

Evidence of Nonobviousness Based on Secondary Considerations
Factual inquiries for an obviousness determination include secondary
considerations based on evaluation and crediting of objective evidence of
nonobviousness. Graham, 383 U.S. at 17. Notwithstanding what the
teachings of the prior art would have suggested to one with ordinary skill in
the art at the time of Appellant’s invention, the totality of the evidence
submitted, including objective evidence of nonobviousness, may lead to a
conclusion that the challenged claims would not have been obvious to one
with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed.
Cir. 1984). Secondary considerations may include any of the following:
long-felt but unsolved needs, failure of others, unexpected results,
commercial success, copying, licensing, and praise. See Graham, 383 U.S.
at 17; Leapfrog Enters., 485 F.3d at 1162.
Evidence of nonobviousness must be commensurate in scope with the
claimed invention. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (citing
In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)); In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998). In that regard, in order to be accorded
substantial weight, there must be a nexus between the merits of the claimed
invention and the evidence of secondary considerations. In re GPAC Inc.,
57 F.3d at 1580. “Nexus” is a legally and factually sufficient connection
between the objective evidence and the claimed invention, such that the
objective evidence should be considered in determining nonobviousness.
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

38
Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392
(Fed. Cir. 1988). The burden of showing that there is a nexus lies with
Appellant. Id.; see also In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994).
Appellant argues that there is substantial evidence of nonobviousness
based on secondary considerations. In support of these arguments,
Appellant relies on three Declarations under 37 C.F.R. § 1.132 from Dr.
George Brandes (Exhibits 2–4), a Director of IP Strategy and Business
Development at Cree, Inc., to provide testimony of non-obviousness,
including: (1) evidence of long felt but unsolved need, (2) unexpected
results, (3) scientific recognition and industry acknowledgement,
(4) licensing, and (5) commercial success of Appellant’s invention also
allegedly corroborated with documentary evidence. Again, we are not
persuaded, and adopt as our own the Examiner’s findings and reasons well-
stated in the Examiner Answer at pages 173–191. Nevertheless, for
purposes of completeness, the evidence pertaining to each secondary
consideration is discussed separately below.

(1) Long-Felt but Unsolved Need
Establishing long-felt need requires objective evidence that an art
recognized problem existed in the art for a long period of time without
solution. In particular, the evidence must show that the need was a
persistent one that was recognized by those of ordinary skill in the art. In re
Gershon, 372 F.2d 535, 539 (CCPA 1967).
Appellant argues the Specification of the ’175 patent describes the
need for a white light single-die LED that would be useful for application,
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

39
and that the white light single-die LED problem eluded solution for a
number of years. App. Br. 54 (citing ’175 patent at col. 1, l. 11–col. 5,
l. 59). In addition, Appellant argues: (1) Stevenson, which issued June 25,
1974, attests to the long-standing character of this long felt but unsolved
need, and (2) the 1997 information release of Fraunhofer Institute, Freiberg,
Germany, which states that “three years ago [i.e., in 1994] . . . the emission
of white light by a single chip LED was still impossible” (Exhibit 5, 16
(citing Attachment N)) and such “information release evidences a time span
of 20 years over which ‘the emission of white light by a single chip LED
was still impossible,[’] []until solved by the present inventors in making the
invention disclosed.” App. Br. 54–55. Appellant also argues a single die
LED white light device remained an elusive goal for many years since the
only LED approach was considered viable for white light production was the
combination of three LEDs, each of a different primary color (red, blue,
green, respectively)—so-called LED “triplets.” Id. (citing ’175 patent,
col. 3, ll. 17–28).
We find Appellant’s arguments misleading, however. First, nowhere
in the ’175 patent or Stevenson is there a description of this long felt but
unsolved need as Appellant argues. As correctly recognized by the
Examiner,
Stevenson . . . successfully solved the problem in exactly the
same manner as claimed: using a luminophor (phosphor) to
convert blue-to-UV light from a GaN-based LED to visible
light, including white light. That is all that is claimed, and it
was successfully done by others (Stevenson . . .) 20 years
before the time of the ’175 patent. Thus, there is no unsolved
need. Instead, that which Appellant and its declarants make
clear is that there was a long felt need for a white LED device
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

40
that was bright enough to be commercially viable. The key to
the brightness issue was the invention of a LED emitting
sufficiently bright light in the UV-to-blue, or to green, range of
the spectrum, and that was done by others, e.g. Nakamura, not
by the inventors of the ’175 patent. . . .

To the extent that the ’175 patent may disclose
information directed to making the white LEDs bright enough
to be of practical value in commercial applications such as
backlights for LEDs (Brief, p. 54), none of this is claimed in the
claims at issue in this reexamination, so the point is moot.

Ans. 173 (emphasis added).
Second, the Fraunhofer press release is an advertisement that does not
identify any problem existing in the art for a long period of time without
solution. Id. at 174. Third, and contrary to Appellant’s arguments, the
direct emission “triplet” approach was not the only approach considered
viable for white light production. As testified by Drs. Stringfellow,
Redwing, and Wetzel, the “down-conversion” approach was also available
for white light production but was not used because LEDs available before
the 1994–1996 timeframe did not have enough power and/or brightness level
to be practical. See Stringfellow Decl. ¶¶ 24–26; Redwing Decl. ¶¶ 12, 16–
18; Wetzel Decl. ¶¶ 17–20. Thus, we do not find Appellant’s arguments and
proffered evidence to be persuasive.

(2) Unexpected Results
“[U]nexpected results [relied upon to rebut a prima facie case of
obviousness] . . . must be shown to be unexpected compared with the closest
prior art.” In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991)
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

41
(citation omitted). Such evidence must be commensurate in scope with the
degree of patent protection desired. In re Grasselli, 713 F.2d 731, 743 (Fed.
Cir. 1983). In addition, the difference in results relied upon to establish
nonobviousness must be shown to be truly unexpected by one of ordinary
skill in the art. Pfizer Inc. v. Apotex Inc., 480 F.3d 1348, 1371 (Fed. Cir.
2007). Thus, it is not enough to merely show that there is a difference—
even a significant difference. Rather, the difference in results must be
shown to be unexpected by one of ordinary skill in the art. In re Harris, 409
F.3d 1339, 1344 (Fed. Cir. 2005).
In this case, Appellant has not performed any comparison relative to
the closest prior art. Nor has Appellant directed us to any evidence
indicating that an artisan of ordinary skill would have considered the
difference in results to be truly unexpected. Instead, Appellant simply
advances two arguments: (1) the invention of a single die white light LED
embodied an unexpected result, and (2) the invention was surprisingly found
to provide white light LED devices that are in fact capable of producing
white light of sufficient uniformity and intensity for general applications.
App. Br. 55–56.
While attorney arguments are helpful when directing us to evidence in
the record, the arguments themselves do not constitute evidence. Here,
Appellant’s arguments are speculative and unsupported by objective
evidence. Ans. 176. Argument of counsel cannot take the place of evidence
lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA
1977); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). As such,
these arguments are entitled to little probative value. In re Geisler, 116 F.3d
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

42
1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984). Thus, we find Appellant’s arguments and proffered evidence
unpersuasive.

(3) Scientific Recognition and Industry Acknowledgement
Appellant argues because failure of the art to achieve white light
emission from a single LED, and failure of the art to achieve commercially
viable organic light emitting devices, Appellant’s invention is a remarkable
breakthrough in the form of a single LED device for the production of white
light. App. Br. 56. In addition, Appellant cites press releases from Nichia in
Japan and Fraunhofer Institute in Germany, as evidence of commercial
success and/or industry acknowledgement. Appellant further relies on the
Declaration of Dr. Brandes (Exhibit 2) to support a claim that the ’175
patent has been recognized in the optoelectronics and illumination products
industry as a patent claiming a fundamental advance in the field of LED
device and display technology.
We do not find Appellant’s arguments and proffered evidence
persuasive and, as such, adopt the Examiner’s response outlined in
Examiner’s Answer. Ans. 176–178. In particular, Fraunhofer’s 1997
release states, inter alia:
This problem was solved by a research team at the
Fraunhofer- Institut für Angewandte Festkörperphysik IAF in
Freiburg (Germany) and, at the same time, by their colleagues
at Nichia Chemical Industries in Japan. Their innovative idea
was to generate white light by luminescence conversion. They
combined a blue emitting GaN LED with an organic dye or an
inorganic phosphor, emitting at longer wavelengths, to
synthesise white light by additive colour mixing. Peter
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

43
Schlotter, a member of the IAF research team, points out a
further advantage of the new luminescence conversion LEDs
(LUCOLEDs): “LUCOLEDs allow to extend the range of
colours emitted by LEDs to whatever colour is required,
depending on which conversion dyes or phosphors are used.
Even purple light, which is impossible to be generated by
conventional LEDs, can be emitted by LUCOLEDs.” For the
invention of the single chip white emitting LED the research
team at the IAF was awarded the 1997 Fraunhofer Prize.

This simple but innovative and low cost process,
developed in close cooperation with Siemens AG, will enable
mass production of white emitting LEDs. Siemens plans to
start up production of white light single chip LEDs in 1998.

App. Br. 57–58 (citing Fraunhofer-Gesellschaft: Research News Special
1997) (Exhibit 5) (emphasis added).
As correctly recognized by the Examiner, these praises and
acknowledgements are directed to the invention of others, i.e., Nichia and
Siemens AG, and not Appellant’s invention. Ans. 176. To the extent
Appellant intends to argue these belated praises and press releases are
directed to Appellant’s invention filed in the PTO two (2) years earlier, we
see these press releases and praises as strong evidence of obviousness, rather
than non-obviousness—in view of blue LEDs available from Dr.
Nakamura—the entire industry was adopting the known “down-conversion”
process via phosphors to create white light.

(4) Licensing
Licensing alone is insufficient for purposes of commercial success.
See EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898 (Fed. Cir. 1985)
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

44
(evidence of licensing is a secondary consideration which must be carefully
appraised as to its evidentiary value because licensing programs may
succeed for reasons unrelated to the unobviousness of the product or
process, e.g., license is mutually beneficial or less expensive than defending
infringement suits) (emphasis added). When a license of a patent is
presented as evidence of the success of a patent, the patentee must provide
additional evidence of the importance of the claimed invention within the
license. Id. Without a showing of nexus, “the mere existence of . . . licenses
is insufficient to overcome the conclusion of obviousness” when there is a
strong prima facie case. SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp.,
225 F.3d 1349, 1358 (Fed. Cir. 2000). Moreover, evidence of license
agreements can also be disregarded if the terms of the licenses or the
circumstances under which they were granted are not disclosed. See Iron
Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir.
2004).
Appellant relies on two (2) Declarations of Dr. George R. Brandes
under 37 C.F.R. §1.132 (Brandes Decl. II—Exhibit 2) (Brandes Decl. IV—
Exhibit 4) to show the patentee, Cree’s licensing and cross-licensing
programs as evidence the recognition of the ’175 patent by major companies
in the optoelectronics and illumination products industry, e.g., Nichia Corp.
(Exhibit 2B), Toyota Gosei (Exhibit 2C), Osram GrmbH (Exhibit 2D),
Philips (Exhibit 2E), and the royalty-bearing license agreements involving
the ’175 patent with various companies, including: Aurora Energie, Horner
APG, Ledzworld Technology, Vexica Technology, and Wyndsor Light
(Exhibit 2A) as well as Stanley, Rohm, Kingbright Electronics Co., Ltd., and
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

45
Seoul Semiconductor, Inc. App. Br. 58–60 (citing Brandes Decl. II—
Exhibits 2A–E).
However, we note Exhibits 2A–2E are nothing more than press
releases and media reports regarding the licensing and cross-licensing
between the patentee, Cree and these companies to allow access to each
other’s patented LED chip and packaged LED technology, including white
LED technology without fear of future litigation. Appellants do not show
these licensing programs are directed to the subject matter of the ’175 patent.
In fact, none of these license agreements makes any specific reference to the
’175 patent, except for the license issued to Cotco Holdings requiring the
mark “Powered by Cree®, U.S. Patent No. 6,600,175” on products produced
pursuant to the license. Brandes Decl. IV ¶ 7. Nevertheless, Dr. Brandes
testifies that confidential provisions prevent disclosure of particular
provisions of these license agreements. Id. ¶¶ 7–8.
In the absence of the specific terms of these licenses or the
circumstances under which they were granted, we do not see how these
licenses are probative of non-obviousness of the ’175 patent claims at issue,
as correctly observed by the Examiner. Ans. 178–180. As such, we are not
persuaded by Appellant’s arguments regarding his licensing programs.

(5) Commercial Success
Appellant bears the initial burden of proving that there is a nexus
between the claimed invention and the commercial success. Ormco Corp. v.
Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006).
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

46
Appellant relies on a 3rd Declaration of Dr. George R. Brandes under
37 C.F.R. §1.132 (Brandes Decl. III – Exhibit 3) to show commercial
success of the invention, via market research data of LED/white light
products. App. Br. 60–61 (citing Brandes Decl. III ¶¶ 21–22). Appellant
further attempts to show the nexus between the claimed invention and the
commercial success, via Dr. Brandes’ own characterization of “nexus.” Id.
at 62–65 (citing Brandes Decl. III ¶¶ 24–40).
However, market research data of LED/white light products is not
actual sale data; rather, potential sale data. Even if market research data
were sale data, such sale data is hardly indicative of the commercial success
of the subject matter disclosed in the ’175 patent. As correctly recognized
by the Examiner, market research data or even sale data does not, in and of
itself, establish a nexus between the claimed invention and commercial
success. For such a nexus to exist there must be evidence that it was the
claimed invention that caused the increased sale. Ans. 181. Dr. Brandes’
Declaration does not show a correlation between the claimed invention and
the sales numbers, much less that the licensing of the ’175 patent had
anything at all to do with commercial success. Id.
Likewise, Dr. Brandes’ own characterization of “nexus” is nothing
more than an allegation or a conclusory statement in the form of an affidavit
and, as such, does not take the place of factual evidence. See, e.g., In re
Lindner, 457 F.2d 506, 508 (CCPA 1972) (“The affidavit and specification
do contain allegations that synergistic results are obtained with all the
claimed compositions, but those statements are not supported by any factual
evidence . . . . [M]ere conclusory statements in the specification and
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

47
affidavits are entitled to little weight when the Patent Office questions the
efficacy of those statements.”).
We find Appellant’s arguments unpersuasive and proffered evidence
of commercial success not commensurate in scope with the claims. We also
find the evidence is insufficient to exclude the possibility of commercial
success due to other factors, and Appellant provides only market research
data and does not show commercial success absent evidence as to market
share. In our view, the record is completely silent on whether the
commercial success was caused by the subject matter of the ’175 patent as
distinct from the prior art.
Because the evidence of secondary considerations in support of
nonobviousness does not outweigh the strong evidence of obviousness, we
sustain the Examiner’s rejection of claims 118, 134, and 140 under
35 U.S.C. § 103(a) based on Stevenson, Pinnow, and Nakamura.
“[E]vidence of secondary considerations does not always overcome a strong
prima facie showing of obviousness.” Asyst Techs., Inc. v. Emtrak, Inc., 544
F.3d 1310, 1316 (Fed. Cir. 2008).

§ 103(a) Rejection of Claims 135, 136, and 140 based on
Stevenson, Pinnow, Nakamura, and Tadatsu

Dependent claim 135 further requires the “luminophoric medium
dispersed in a polymer” on the single-die GaN-based blue LED.
Alternatively, dependent claim 136 requires the polymer as “contiguous to
the die side surface” of the single-die GaN-based blue LED. Claim 140
further requires the single-die LED “arranged to directly impinge radiation
on the polymer” (emphasis added).
App
Reex
Paten

featu
whit
¶ 3 a

Fig

wou

surro
abso
App
abou
perc

scop
med
pigm
eal 2014-0
amination
t No. 6,60
The Exa
res of clai
e light via
nd Fig. 2)
Fig. 2 of
. 2 of Tada
that is pos
arran
Based on
ld have be
Appellan
unded by
rbs short w
. Br. 37 (ci
t creating
eived well
Howeve
e with clai
ium disper
ent includ
07890
Control N
0,175 B1
miner furt
ms 135, 13
“down-co
.
Tadatsu i
tsu shows
itioned on
ged to dir
these fac
en obvious
t argues T
a resin mo
avelength
ting Tadat
a primary
by the hum
r, we find
ms 135, 1
sed in a po
ed in the r
o. 90/010
her relies o
6, and 14
nversion”
s reproduc
a luminop
the single-
ectly impin
tual findin
to an arti
adatsu on
ld that con
light and
su ¶¶ 7–9)
color blue
an eye. S
Appellant
36, and 14
lymer” en
esin mold
,940
48
n Tadatsu
0 in the co
phosphors
ed below.
horic med
die LED (
ge radiati
gs, the Ex
san of ordi
ly disclose
tains a flu
emits ligh
. Accordi
LED from
ee Redwi
’s argumen
0. Appell
compasse
that is pos
for disclo
ntext of us
. Ans. 18–
ium disper
11) and su
on to the p
aminer con
nary skill.
s a GaN-b
orescent d
t having a
ng to App
a violet L
ng Decl. ¶
ts are not
ant’s claim
s the fluor
itioned dir
sing addit
ing LEDs
29 (citing

sed in a p
ch a LED
olymer (5
cludes su
Ans. 19–
ased LED
ye or pigm
longer wa
ellant, Tad
ED, whic
¶ 12, 39.
commensu
ed “lumin
escent dye
ectly on th
ional
to create
Tadatsu
olymer (5)
(11) is
).
ch feature
20.
that is
ent that
velength.
atsu is
h is not
rate in
ophoric
or
e single-

s
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

49
die LED and such a single-die LED is able to directly impinge radiation to
the polymer in the manner recited in Appellant’s claims 135, 136, and 140.
For the reasons set forth above, Appellant has not persuaded us of any
error in the Examiner’s rejection of claims 135, 136, and 140. Accordingly,
we sustain the Examiner’s rejection of claims 135, 136, and 140 based on
Stevenson, Pinnow, Nakamura, and Tadatsu.

§ 103(a) Rejection of Claims 138 and 140 based on
Stevenson, Pinnow, Nakamura, and Tabuchi

Dependent claim 138 further requires the polymer as “laterally spaced
relationship” to the die side surface of the single-die GaN-based blue LED.
Again, claim 140 further requires the single-die LED “arranged to directly
impinge radiation on the polymer” (emphasis added).
The Examiner further relies on Tabuchi for disclosing additional
features of claims 138 and 140 in the context of using LEDs to create white
light via “down-conversion” phosphors. Ans. 20–22 (citing Tabuchi 3–5,
and Fig. 1).
Figure 1 of Tabuchi is reproduced below with additional markings for
illustration.
App
Reex
Paten

Fig.
th
si

wou

insid
App
Exam
Exam
Exam
Naka

eal 2014-0
amination
t No. 6,60
1 of Tabu
at is positi
ngle-die L
Based on
ld have be
Appellan
e surface o
. Br. 38 (ci
iner’s fin
iner’s An
iner’s rej
mura, and
§
Stevens
07890
Control N
0,175 B1
chi shows
oned in a
ED (4) and
r
these fac
en obvious
t argues T
f the cove
ting Tabu
ding and r
swer. For
ection of c
Tabuchi.
103(a) Rej
on, APA,
o. 90/010
a luminop
lateral spa
such a L
adiation to
tual findin
to an arti
abuchi on
r and conv
chi ¶ 2). H
esponse w
the reason
laims 138
ection of C
Wanmaker
,940
50
horic med
ced relatio
ED (11) is
the polym
gs, the Ex
san of ordi
ly teaches
erts UV l
owever, w
ell-stated
s set forth
and 140 b
laims 118
, Nakamu

ium dispe
nship to si
arranged
er (5).
aminer con
nary skill.
a phospho
ight emitte
e disagree
on pages 1
therein, w
ased on St
and 134
ra, Tabuch
rsed in a p
de die sur
to directly
cludes su
Ans. 21–
r layer tha
d to visibl
and adop
39–143 of
e sustain
evenson, P
based on
i, and Ma

olymer (1)
face of a
impinge
ch feature
22.
t coats the
e light.
t the

the
innow,
rtic

s

Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

51
Claims 118 and 134, as discussed above, are directed to light emission
devices that include a blue light-emitting diode in combination with a down-
converting luminophoric medium to produce a white light.
Appellant reiterates the same arguments presented against claims 118
and 134 based on deficiencies of Stevenson. App. Br. 38–41. In addition,
Appellant argues impermissible hindsight based on the large number of
references cited. Id. at 41.
We remain unpersuaded. As correctly noted by the Examiner,
reliance on a large number of references in a rejection does not, without
more, weigh against the obviousness of the claimed invention. In re
Gorman, 933 F.2d 982, (Fed. Cir. 1991). Moreover, APA is simply cited as
an alternative to the teachings of Pinnow, i.e., the same “down-conversion”
process via phosphors. Ans. 44–46.
As such, and for the same reasons discussed in connection with the
combination of Stevenson, Pinnow, and Nakamura, we also sustain the
Examiner’s rejection of claims 118 and 134.

CONCLUSION
On the record before us, we determine that Appellant has failed to
demonstrate any error in the Examiner’s determination that an artisan of
ordinary skill would have found it obvious to use a blue LED to create white
light via down-conversion, and that the relied upon rebuttal evidence is
insufficient to outweigh the evidence in support of obviousness.
Accordingly, we conclude that the Examiner has not erred in rejecting: (1)
claims 118, 134, and 140 under 35 U.S.C. § 103(a) as being unpatentable
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

52
over Stevenson, Pinnow, and Nakamura; (2) claims 135, 136, and 140 under
35 U.S.C. § 103(a) as being unpatentable over Stevenson, Pinnow,
Nakamura, and Tadatsu; (3) claims 138 and 140 under 35 U.S.C. § 103(a) as
being unpatentable over Stevenson, Pinnow, Nakamura, and Tabuchi; (4)
claims 118 and 134 under 35 U.S.C. § 103(a) as being unpatentable over
Stevenson, APA, Wanmaker, Nakamura, Tabuchi, and Martic.

DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 118,
134–136, 138, and 140. Because we have affirmed at least one ground of
rejection with respect to each claim on appeal, the Examiner’s decision is
affirmed. See 37 C.F.R. § 41.50(a)(1).
Our affirmance is dispositive as to claims 118, 134–136, 138, and
140. It is not necessary, therefore, to address the other, cumulative grounds
of rejection entered by the Examiner, including: (1) whether claims 118,
134, 138, and 140 are patentable under 35 U.S.C. § 103(a) over Tabuchi,
APA, Wanmaker, Nakamura, and Martic; (2) whether claims 118, 134, 138,
and 140 are patentable under 35 U.S.C. § 103(a) over Tabuchi, Pinnow, and
Nakamura; and (3) whether claims 135 and 136 are patentable under
35 U.S.C. § 103(a) over Tabuchi, Pinnow, Nakamura, and Tadatsu. See In
re Hyon, 679 F.3d 1363, 1367 (Fed. Cir. 2012) (noting that affirmance of
rejection of all claims under § 103(a) made it unnecessary to reach other
grounds of rejection); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed.
Cir. 1984) (holding that by deciding a single dispositive issue, the ITC was
not required to review other matters decided by the presiding officer).
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

53
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED
bar
Appeal 2014-007890
Reexamination Control No. 90/010,940
Patent No. 6,600,175 B1

54
For Patent Owner:

Peter M. Dichiara, Esq.
Heather M. Petruzzi, Esq.
Wilmer Cutler Pickering Hale and Dorr LLP
60 State Street
Boston, MA 02109

For Third Party Requester:

Michael E. Hilton, Esq.
Harness, Dickey & Pierce, P.L.C.
P.O. Box 828
Bloomfield Hills, Michigan 48303