Ex Parte Bergenek et al

Patent Trial and Appeal Board

Sep 12, 2017

13516848 (P.T.A.B. Sep. 12, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/516,848 07/25/2012 Krister Bergenek EHF-12-1150 4447
35811 7590 09/14/2017
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
EXAMINER
HUBER, ROBERT T
ART UNIT PAPER NUMBER
2892
NOTIFICATION DATE DELIVERY MODE
09/14/2017 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):
pto.phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISTER BERGENEK, MIKAEL AHLSTEDT, and
UTE LIEPOLD
Appeal 2016-007429
Application 13/516,848
Technology Center 2800
Before PETER F. KRATZ, MONTE T. SQUIRE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 16—18, 21, 24, and 28. We have
jurisdiction pursuant to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to a radiation-emitting
semiconductor component, such as an LED comprising a luminescence
conversion layer (Spec. 11, 17).
Claim 16, the sole independent claim on appeal, is illustrative and
reproduced below:
16. A radiation-emitting semiconductor component comprising:
Appeal 2016-007429
Application 13/516,848
a semiconductor body having an active layer which, during operation,
emits electromagnetic radiation having a first wavelength A,i in a main
radiation direction,
a luminescence conversion layer formed from a glass, a glass ceramic
or a ceramic, and a refractive index ni and which converts at least part of the
emitted radiation into radiation having a second wavelength X2 greater than
the first wavelength A, and
a functional layer that improves angle dependence of the emitted
radiation,
wherein the functional layer 1) succeeds the active layer in the main
radiation direction and contains a glass, a ceramic, a glass ceramic or
sapphire, and 2) has a surface structuring, wherein the surface structuring
has a periodic structure, and the periodic structure has a period d and the
functional layer has a refractive index n2, ttA2 < G < n2 27tA.2, where G=27i/d in
a one-dimensional periodic structure and G = 4W3d in a two-dimensional
hexagonal or periodic structure, and wherein An = | n2_ni | < 0.1.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
The Examiner maintains the following ground of rejection:
Claims 16—18, 21, 24, and 28 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Krummacher in view of Grotsch and Orita.1
We reverse the stated rejection. Our reasoning follows.
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984).
1 The Examiner omits claim 21 from the statement of rejection; however,
claim 21 is included in the body of the rejection (Final Act. 3, 8).
Grotsch
Orita
Krummacher
US 2005/0151141 A1
US 2005/0285132 A1
US 2008/0079015 A1
July 14, 2005
Dec. 29, 2005
Apr. 3, 2008
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Application 13/516,848
The Examiner finds that Kmmmacher teaches, among other things,
a radiation-emitting semiconductor component that comprises a
semiconductor body having an active layer emitting radiation with a first
wavelength A,i and a luminescence conversion layer for converting the
radiation to a second wavelength k2 and a functional (light scattering
translucent) layer (Final Act 3—\\ Krummacher H 31, 32-43, 54; Figs. 1—3).
However, the Examiner finds that Krummacher fails to explicitly
disclose, inter alia, that (Final Act. 5):
(1) its light scattering (functional) layer has surface structuring
comprising a periodic structure and wherein a period d of the periodic
structure is such as to comply with a specified relationship as set forth in
claim 16, and
(2) the luminesce convergence layer has a refractive index ni that is
related to the refractive index n2 of the functional layer such that the absolute
value of n2 - ni is equal to or less than 0.1.2
The Examiner finds that Orita teaches a radiation-emitting
semiconductor component that includes surface structuring having periodic
structure (Final Act. 6; Orita Tflf 85, 87; Fig. 1).
The Examiner maintains that one of ordinary skill in the art would
have modified Krummacher’s device to include periodic structure as part of
2 In addition, the Examiner relies on Grotsch for teaching a luminesce
conversion layer that can be formed from a material, such as glass, and
maintains that one of ordinary skill in the art would have employed the
material taught by Grotsch for the luminesce layer of Krummacher (Final
Act. 4—5). Appellants do not dispute this aspect of the Examiner’s
obviousness rejection (see generally App. Br.).
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Application 13/516,848
its surface structuring so as to optimize the light extraction efficiency, as
taught by Orita (Final Act. 6; Orita H 90-101).
Concerning the claim 16 limitations pertaining to the periodic
structure being constructed such that it satisfies a specified relationship as
set forth in claim 16 and the functional layer having an index of refraction n2
that is related to the refractive index ni of the luminescence conversion layer
such that the absolute value of n2 - ni is equal to or less than 0.1, the
Examiner maintains that these limitations are “a statement of the inherent
properties and/or functions of the materials of the device,” which properties
would have been inherently arrived at from the combined teachings of the
applied prior art upon modifications as proposed by the Examiner (Final
Act. 6-7).
As argued by Appellants, however, the Examiner has not established
that modifying the light scattering layer of Krummacher by applying the
periodic structure of Orita thereto, even if there were an apparent reason do
to do so, would necessarily and/or naturally result in structure as required by
claim 16, including a functional layer that has the argued features pertaining
to the periodic structure of the surface structuring of the functional layer and
the claimed refractive index relationship (App. Br. 4—6; Reply Br. 1 4). In
this regard, Appellants describe the periodic structure satisfying the claimed
relationship as a preferred variant and/or advantageous choice, not an
inherent property of a periodic structure choice for the surface structuring
(Spec. 1127-28).
Therefore, the Examiner’s rebuttal contention errs in placing the
burden on Appellants to conclusively show that a theoretical structure that
could be made based on the Examiner’s proposed combination of references
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Application 13/516,848
would not inherently meet the argued claim 16 limitations because it
improperly shifts the burden to Appellants without the Examiner having met
the initial burden of presenting a prima facie case. In this regard, it is well
settled that when an Examiner relies upon a theory of inherency, “the
examiner must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990). In this
case, the Examiner has not provided a factual basis which supports the
Examiner’s inherency argument. “Inherency . . . may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d
578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d212, 214
(CCPA 1939)).
On this record, the Examiner’s inherency theory is not supported by
sufficient facts to show that the claimed subject matter would naturally flow
from any particularly specified modification of Krummacher set forth by the
Examiner that an ordinarily skilled artisan would have had direction to make
based on the applied teachings of the references. As stated in KSR Int 7. Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007), ‘“[r]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness’” (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
The Examiner has not otherwise carried the burden to address the
differences between the teachings of Krummacher and the claimed subject
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matter and adequately explain why, regardless of the differences, one of
ordinary skill in the art would have been led by the teachings of the applied
references to subject matter corresponding to that required by appealed
claim 16 and, correspondingly, the claims depending therefrom.
Thus, the record indicates that the Examiner used impermissible
hindsight in rejecting the Appellants’ claims. See In re Warner, 379 F.2d
1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must
rest on a factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art”). Accordingly, we do not
sustain the Examiner’s rejection as to any of the finally rejected claims on
appeal.
CONCLUSION
The Examiner’s decision to reject the appealed claims is reversed.
REVERSED
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