Ex Parte Klinedinst et al

Board of Patent Appeals and Interferences

Sep 27, 2010

10883080 (B.P.A.I. Sep. 27, 2010)

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.
10/883,080 07/01/2004 Keith A. Klinedinst 04-1-762 3878
7590 09/27/2010
OSRAM SYLVANIA INC.
100 ENDICOTT STREET
DANVERS, MA 01923
EXAMINER
SZEKELY, PETER A
ART UNIT PAPER NUMBER
1796
MAIL DATE DELIVERY MODE
09/27/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte KEITH A. KLINEDINST
and DENNIS B. SHINN
________________

Appeal 2009-006486
Application 10/883,080
Technology Center 1700
________________

PETER F. KRATZ, CATHERINE Q. TIMM, and JEFFREY T. SMITH,
Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-006486
Application 10/883,080

2
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-7, all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
The Invention
Appellants’ invention relates to a basing cement for an arc discharge
lamp. Claim 1 is illustrative:
1. A basing cement for an arc discharge lamp
comprising:
an inert filler material;
a polymer for binding the filler material; and
a quantity of a non-metallic copper-containing compound
and an ingredient X, said ingredient X including a noble metal
or noble metal compound selected from the group consisting of
silver and compounds of silver, compounds of gold and
compounds of platinum.
The Examiner relies upon the following references in rejecting
the subject matter on appeal:
Klinedinst et al. 5,994,838 Nov. 30, 1999
Haitko et al. 2002/0190646 A1 Dec. 19, 2002
Dietrich et al. 6,515,421 B2 Feb. 4, 2003
PRADYOT PATNAIK, HANDBOOK OF INORGANIC CHEMICALS 842-844
(McGraw-Hill 2003)
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Application 10/883,080

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THE REJECTION
Claims 1-7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Klinedinst, Haitko, and
the Handbook of Inorganic Chemicals or Dietrich.
OPINION
The issue on appeal is: Did the Examiner reversibly err in rejecting
the appealed claims under § 103? The issue turns on whether it would have
been obvious to a person of ordinary skill in the art to formulate a basing
cement for an arc discharge lamp utilizing a combination of ingredients
known individually for inhibiting mercury from leaching.
We AFFIRM.
Appellants have not presented separate arguments for all of the
rejected claims. Rather, Appellants’ arguments are principally directed to
independent claim 1. Any claim not separately argued will stand or fall with
independent claim 1. We will address all separately argued claims. See 37
C.F.R. § 41.37(c)(1)(vii) (2009).
The Examiner found that Klinedinst discloses the use of non-metallic
copper-containing compounds disposed in a mercury vapor discharge lamp.
(Ans. 3). Klinedinst discloses the non-metallic copper-containing
compounds may be incorporated into the lamp in a variety of ways and are
present in an amount sufficient to reduce the amount of mercury that may be
leached from the lamp. (Col. 5, ll. 48-57). The Examiner found that Haitko
discloses a method of preventing the formation of leachable mercury in arc
vapor discharge lamps by utilizing an effective amount of a silver salt or
gold salt. (Ans. 3). Haitko discloses the silver salt, gold salt, or
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Application 10/883,080

4
combinations thereof are typically incorporated in the basing cement of the
lamp and have been found to have a significant effect on preventing mercury
compounds from leaching. ([0011] and [0016]). The Examiner found that
Dietrich discloses a method of preventing the formation of leachable
mercury in a mercury arc discharge lamp by utilizing noble metal coatings
such as gold, silver or Palladium. (Ans. 4). The Examiner concluded that a
person of ordinary skill in the art would have found it obvious to form a
basing cement for a lamp including the combination of components known
to be suitable for inhibition of mercury leaching.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). The question to be
asked is “whether the improvement is more than the predictable use of prior
art elements according to their established functions.” KSR, 550 U.S. at 417.
It has long been held obvious to combine two known materials for
their known function. In re Kerkhoven, 626 F.2d 846, 850 (1980). As is
evident from Klinedinst, Haitko, and Dietrich, persons of ordinary skill in
the art would have recognized that non-metallic copper-containing
compounds, silver salt, gold salt, or combinations of silver salt and gold salt,
may be incorporated into the lamp in a variety of ways to reduce the amount
of mercury that may be leached from the lamp. A person of ordinary skill in
the art would have reasonably expected that non-metallic copper-containing
compounds could be used in combination with silver salt and gold salt to
reduce the amount of mercury that may be leached from the lamp.
Appellants argue that there is no teaching, suggestion, or motivation
for modifying Klinedinst’s method of reducing leached mercury in an arc
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Application 10/883,080

5
discharge lamp. Appellants argue that the only way the Examiner could've
arrived at his conclusion to combine the cited references is through
hindsight. (App. Br. 5). Appellants further argue that Table VII of the
Specification is evidence that simply increasing the inhibitor does not
necessarily result in less leachable mercury as proposed by the Examiner.
(Id.).
We do not find appellants' arguments persuasive. A person of
ordinary skill in the art would have reasonably expected that non-metallic
copper-containing compounds, silver salt, gold salt, or combinations of
silver salt and gold salt may be incorporated into the lamp in a variety of
ways to reduce the amount of leachable mercury. The presently claimed
invention does not define specific limits on the amount of non-metallic
copper-containing compounds, silver salt, gold salt, or combinations thereof
present in the claimed composition. As pointed out by the Examiner (Ans.
5) the data presented in the Tables of the Specification supports the position
that the combination of components known to reduce the amount of
leachable mercury would provide a cumulative effect when utilized together.
Appellants have not pointed to evidence on the present record that
establishes the results obtained are different than those that would have been
expected by a person of ordinary skill in the art.
Given the above teachings, we agree with the Examiner that one of
ordinary skill in the art would have been led to form a basing cement for an
arc discharge lamp utilizing non-metallic copper-containing compounds,
silver salt, and gold salt in combination for inhibiting mercury from
leaching. KSR, 550 U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S.
273, 282 (1976)) (“[W]hen a patent ‘simply arranges old elements with each
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performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.”).
Under these circumstances, we cannot conclude that the Appellants
have established error in the Examiner's determination that the appealed
subject matter is unpatentable under 35 U.S.C. § 103. Therefore, the
rejection of claims 1-7 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

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OSRAM SYLVANIA INC.
100 ENDICOTT STREET
DANVERS, MA 01923