Ex Parte Haacke et al

Board of Patent Appeals and Interferences

May 1, 2012

10503426 (B.P.A.I. May. 1, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL HAACKE and MARC F. R. JANSSEN
____________

Appeal 2010-000637
Application 10/503,426
Technology Center 2800
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Before DEBRA K. STEPHENS, GREGORY J. GONSALVES, and
JASON V. MORGAN, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000637
Application 10/503,426

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-3, 5-14, 16, 17, and 19-22. (App. Br. 4.) Claims 4, 15, and 18
were cancelled. (Id.) We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The Invention
Exemplary independent claim 1 follows:
1. A mercury-free high-pressure discharge lamp
having a discharge vessel which comprises an at least
substantially infrared-reflecting coating on lower wall portions
of the discharge vessel in an operational position and not
substantially on wall portions opposite the lower wall portions,
wherein an upper edge of the coating in the operational position
extends in a declining substantially straight line towards a
center portion of the discharge vessel until reaching a bottom
portion of the discharge vessel, a dimensioning of said coating
being chosen such that after switching-on of the lamp, a
temperature of light-generating substances collected on the
coated wall portions is increased to an extend that said
substances enter the gaseous state at least substantially.

The Examiner rejected claims 1-3, 5-7, 9, 11-13, 16, 21, and 22 under
35 U.S.C. § 103(a) as being unpatentable over Sakai (JP 2000-348678) in
view of Johnson (U.S. Patent No. 4,281,267). (Ans. 3-8.)
The Examiner rejected claims 1, 2, 5, 7, 9-14, 16, 17, and 19-22 under
35 U.S.C. § 103(a) as being unpatentable over Strok (U.S. Patent No.
5,952,768) in view of Johnson. (Ans. 8-13.)
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Strok, Johnson, and Anzai (U.S. Patent No. 4,837,478).
(Ans. 13-14.)
Appeal 2010-000637
Application 10/503,426

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ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
Did the Examiner establish that it would have been an obvious design
choice to arrange a coating in a discharge lamp such that “an upper edge of
the coating in the operational position extends in a declining substantially
straight line towards a center portion of the discharge vessel until reaching a
bottom portion of the discharge vessel,” as recited in independent claim 1,
and as similarly recited in independent claim 12?
Did the Examiner establish that Johnson discloses a coating that
“forms two substantially circular sections when viewed from below the lamp
in the operational position,” as recited in independent claim 21?

ANALYSIS
After acknowledging that neither the combination of Sakai and
Johnson nor the combination of Strok and Johnson disclose a coating with
“the edge of the coating extending in a declining, substantially straight line
towards a center portion of the discharge vessel” (Ans. 5 and 9), the
Examiner asserts that this claimed feature would have been an obvious
design choice. (Id.) Appellants argue that the Examiner did not establish
that this claim feature would have been an obvious design choice. (App. Br.
13.) For example, Appellants explain that this claim feature improves the
luminous efficiency of the discharge lamp. (Id. at 13-19.) Appellants
further argue that “[n]ot a single prior art reference is provided to
substantiate the position forwarded by the Examiner that the curved line of
Johnson would perform equally well . . .” (Reply Br. 4 (emphasis omitted).)
Appeal 2010-000637
Application 10/503,426

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We agree. Although the Examiner explained that other features may
improve the luminous efficiency of the discharge lamp, she did not
demonstrate that the claimed feature absent from the prior art, would not
further improve the lamp’s efficiency. (Ans. 14-27.) Thus, a coating as
recited is not a minor difference between the prior art and the claimed device
as both the structure (coating extending in a declining, substantially straight
line towards a center portion of the discharge vessel) and function it
performs (luminous efficiency) are not minor differences. For these reasons
and the additional reasons expressed by Appellants (App. Br. 13-19; Reply
Br. 2-14), we will not sustain the Examiner’s rejections of independent
claims 1 and 12, or the rejections of the claims dependent therefrom.
With respect to independent claim 21, the Examiner asserts that
Figures 3 and 4 of Johnson disclose a coating that “forms two substantially
circular sections when viewed from below the lamp in the operational
position . . .” (Ans. 11.) Appellants argue that these figures do not show the
claimed feature. (App. Br. 20-21.) We agree. The Examiner did not set
forth any persuasive explanation as to how the figures of Johnson disclose
the claimed feature. (See Ans. 11 and 28.) For this reason as explained
more fully by Appellants (App. Br. 20-21), we will not sustain the rejections
of independent claim 21 or the rejections of the claims dependent therefrom.

DECISION
We reverse the Examiner’s decision rejecting claims 1-3, 5-14, 16, 17,
and 19-22.

REVERSED
Appeal 2010-000637
Application 10/503,426

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