Ex Parte Harbers et al

Patent Trial and Appeal Board

Jun 20, 2016

13749362 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
131749,362 01124/2013 Gerard Harbers
34036 7590 06/20/2016
Silicon Valley Patent Group LLP
4010 Moorpark Avenue
Suite 210
San Jose, CA 95117
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
XIC005-1C US 9649
EXAMINER
HAN, JASON
ART UNIT PAPER NUMBER
2875
MAILDATE DELIVERY MODE
06/20/2016 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 GERARD HARBERS and MARK A. PUGH1
Appeal2014-008528
Application 13/749,362
Technology Center 2800
Before NORMAN H. BEAMER, JAMES W. DEJMEK, and
JOHN D. HAMANN, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-8 and 10-20.2 We have jurisdiction over the remaining pending
claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Xicato, Inc. as the real party in interest. App. Br. 3.
2 The Examiner has objected to claim 9 and indicated it would be allowable
if rewritten in independent form. Final Act. 10.
Appeal2014-008528
Application 13/749,362
STATEMENT OF THE CASE
Introduction
Appellants' invention is directed to an illumination module that uses
light emitting diodes (LEDs). Spec. i-f 2. In a disclosed embodiment, an
LED module may comprise a plurality of optical components, arranged as a
stack of plates further comprising wavelength converting material. Spec.
i-f 34; Fig. 3.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
1. An apparatus comprising:
at least one light emitting diode mounted to a mounting board;
an upper housing having an internal cavity with a reflective
insert coupled therein, and a light output port, the at least one light
emitting diode emits light into the internal cavity;
a stack of a plurality of transparent or translucent plates, each
plate comprising wavelength converting material, the stack of the
plurality of transparent or translucent plates mounted over the light
output port; and
a lower housing having a cylindrically shaped surface, wherein
electrical contact to the at least one light emitting diode is provided
through the lower housing.
The Examiner's Rejections
1. Claims 1---6, 8, 10-13, 15, and 16 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Shiau (US 2007/0133197 Al;
June 14, 2007) and Matthews et al. (US 6,761,467 B2; July 13, 2004)
("Matthews"). Final Act. 3-7.
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Application 13/749,362
2. Claims 7 and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shiau, Matthews, and Turnbull et al. (US 6, 132,072;
Oct. 17, 2000) ("Turnbull"). Final Act. 5, 7-8.
3. Claims 17-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Meyer (US 7,588,351 B2; Sept. 15, 2009 (filed Sept. 27,
2007)) and Matthews. Final Act. 8-10.
Issues on Appeal
1. Did the Examiner err in finding Matthews teaches or suggests
"a stack of a plurality of transparent or translucent plates, each plate
comprising wavelength converting material," as recited in claim 1?
2. Did the Examiner err in finding the combination of Meyer and
Matthews teaches or suggests "a stack of a plurality of transparent or
translucent plates comprising phosphor mounted over [a] light output port,"
as recited in claim 17?
ANALYSIS3
Claims 1--8and10--16
Appellants contend, contrary to the Examiner's findings, Matthews
only teaches a single light modifier element rather than the claimed stack of
a plurality of transparent or translucent plates. App. Br. 10-11; Reply Br. 5-
7. In particular, Appellants contend the Examiner erroneously includes
3 Throughout this Decision, we have considered the Appeal Brief filed
April 25, 2014 ("App. Br."); the Reply Brief filed August 1, 2014 ("Reply
Br."); the Examiner's Answer mailed on June 4, 2014 ("Ans."); and the
Final Office Action ("Final Act.") mailed on November 21, 2013, from
which this Appeal is taken.
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Application 13/749,362
Matthews' light beam modifier, along with the light modifier element to
support a finding of a plurality of elements (i.e., plates). App. Br. 10-11
(citing Matthews, col. 5, 1. 55---col. 6, 1. 19).
In response, the Examiner finds Matthews teaches, or at least
suggests, the light beam modifier is not limited to being only a single device,
but may be a stack of a plurality of transparent or translucent plates for
modifying the characteristics of a light beam. Ans. 3. In particular, the
Examiner finds Matthews describes the light beam modifier as "devices for
modifying characteristics of a light beam, including devices for placing
optical filters, lenses and diffusers in the path of the light beam for altering
the light beam, as well as opaque covers for blocking the light beam."
Ans. 3 (citing Matthews, col. 1, 11. 16-21) (emphases omitted).
Appellants assert Matthews' use of the plural form (e.g., filters,
lenses, diffusers, and covers) is nothing more than "a grammatical artifact"
and does not rise to the level of "a disclosure of the number of elements."
Reply Br. 5. Appellants contend Matthews teaches only the use of a single
optical element and, assuming arguendo, even if Matthews does suggest a
plurality of optical elements, there is no teaching of "a stack" of elements.
Reply Br. 6. Rather, Appellants hypothesize "multiple filters may be placed
in a side-by-side configuration and still be within 'the path of the light
beam."' Reply Br. 6.
We are unpersuaded of Examiner error. We agree with the Examiner
that Matthews at least suggests the use of a plurality of light beam modifiers.
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
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Application 13/749,362
would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
"A person of ordinary skill is also a person of ordinary creativity, not an
automaton." Id. at 421. Further, "[a] mere duplication of parts is not
invention." In re Marcum, 47 F.2d 377, 378 (CCPA 1931) (citing Topliffv.
Topliff, 145 U.S. 156, 163 (1892)). A duplication of parts does not impart
patentability unless a new and unexpected result is produced. See In re
Harza, 274 F.2d 669, 671(CCPA1960). Appellants have not persuasively
shown a new and unexpected result is produced by the use of a stack of a
plurality of transparent or translucent plates. Additionally, we note
Appellants' Specification discloses "the functions of different components
may be combined." Spec. i-f 34.
Further, we do not find Appellants' hypothetical configuration of
multiple filters placed side-by-side to negate the Examiner's findings that
Matthews teaches or suggests "a stack" of light modifier elements, as this
proffered configuration is not consistent with the teachings of Matthews
(i.e., light modifier elements within the light beam modifier structure).
Appellants also argue "Matthews does not disclose 'transparent or
translucent plates, each including wavelength converting material."' App.
Br. 11; Reply Br. 7-8. Appellants argue "' [ w ]avelength converting
material' necessarily converts wavelengths, e.g., by absorbing particular
wavelengths of light and emitting different wavelengths of light." Reply
Br. 7-8. Appellants contend this is different than the optical filter disclosed
by Matthews. App. Br. 11.
As an initial matter, we note Matthews discloses (in the same
paragraph identified by Appellants) preferred examples of light modifying
elements to include a "translucent element for altering the light beam."
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Application 13/749,362
Matthews, col. 6, 11. 14-15. Further, the Examiner finds, and we agree,
Matthews teaches a filter to limit the color of white light to produce a blue,
red, or infrared light. Ans. 3 (citing Matthews, col. 1, 11. 22-26). The
Examiner explains the claim language insufficiently distinguishes itself from
the prior art and, therefore, Matthews is "commensurate in teaching a
wavelength converting material in the way it converts/changes/produces a
different wavelength of an illumination." Ans. 4. We are unpersuaded of
Examiner error.
For the reasons discussed supra, we do not agree with Appellants that
the Examiner erred in rejecting claim 1. According! y, we sustain the
Examiner's rejection of independent claim 1 and, for similar reasons, the
rejection of independent claim 10, which recites similar limitations and
which was not argued separately. See App. Br. 11. Further, we sustain the
Examiner's rejections of claims 2-8 and 10-16, which were not argued
separately. See App. Br. 11-12.
Claims 17-20
Claim 17 recites, inter alia, "a stack of a plurality of transparent or
translucent plates comprising phosphor mounted over the light output port."
Appellants assert the Examiner notes Meyer does not teach or suggest the
limitation at issue and instead relies on Matthews. App. Br. 12; Reply
Br. 8-9. Regarding Meyer, Appellants concede Meyer teaches an optical
structure "that may include phosphor," but assert Meyer fails to teach or
suggest a stack of a plurality of transparent or translucent plates comprising
phosphor. Reply Br. 8-9. Appellants again argue Matthews does not teach
or suggest a stack of a plurality of transparent or translucent plates and
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Application 13/749,362
further argue Matthews does not disclose the use of phosphors, which are
wavelength converting materials. App. Br. 12; Reply Br. 9.
Non-obviousness cannot be established by attacking references
individually where, as here, the ground of unpatentability is based upon the
teachings of a combination of references. In re Keller, 642 F.2d 413, 426
(CCP A 1981 ). Rather, the test for obviousness is whether the combination
of references, taken as a whole, would have suggested the patentee's
invention to a person having ordinary skill in the art. In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
We are not persuaded of Examiner error because Appellants'
arguments are not responsive to the Examiner's rejection and attack the
references separately, whereas the Examiner's rejection relies on the
combined teachings of Meyer and Matthews. Specifically, the Examiner
finds, and we agree, Meyer teaches a structure comprising phosphor
mounted over a light output port. Ans. 4 (citing Meyer, col. 5, 11. 17-22,
col. 8, 11. 17-21, Fig 3, item 290). Further, as discussed supra, the Examiner
finds, and we agree, Matthews teaches a stack of a plurality of transparent or
translucent plates. Ans. 4. Thus, the Examiner relies on the combined
teaching of Meyer and Matthews to teach or suggest the contested limitation.
Appellants' argument that Matthews fails to teach or suggest the use
of phosphor is not persuasive because the Examiner relies on Meyer for this
teaching. Accordingly, we are unpersuaded of Examiner error.
For the reasons discussed supra, we sustain the Examiner's rejection
of claim 17 and the rejection of claims 18-20, which were not argued
separately. App. Br. 13.
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Application 13/749,362
DECISION
We affirm the Examiner's decision to reject claims 1-8 and 10-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED
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