Ex Parte Kundaliya et al

Patent Trial and Appeal Board

Sep 5, 2018

14932642 (P.T.A.B. Sep. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/932,642 11/04/2015
24252 7590
OSRAM SYLVANIA Inc.
200 Ballardvale Street
Wilmington, MA 01887
09/05/2018
FIRST NAMED INVENTOR
Darshan Kundaliya
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.
2012Pl6381US01 1694
EXAMINER
MAYEKAR, KISHOR
ART UNIT PAPER NUMBER
1795
MAIL DATE DELIVERY MODE
09/05/2018 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 DARSHAN KUNDALIY A and KAILASH MISHRA
Appeal 2017-011243
Application 14/932,642
Technology Center 1700
Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
SHELDON M. McGEE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 10-16
and 18.2, 3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants identify the real party in interest as "OSRAM SYLVANIA
Inc." (Appeal Brief filed (hereinafter "Br.") 1 ).
2 Br. 3-5; Final Office Action entered November 7, 2016 (hereinafter "Final
Act.") 2-5; Examiner's Answer entered June 12, 2017 (hereinafter "Ans.")
2-5.
3 Claim 17, which is also pending, has been objected to as being dependent
on a rejected base claim but otherwise indicated as allowable (Ans. 5).
Appeal 2017-011243
Application 14/932,642
I. BACKGROUND
The subject matter on appeal relates to a method for producing thin
film wavelength converters for light emitting diodes (LEDs) (Specification
filed November 4, 2015 (hereinafter "Spec.") ,r,r 1---6). Representative claim
10 is reproduced from the Claims Appendix to the Appeal Brief (Br. 6), with
key limitations emphasized and line spacings added, as follows:
10. A method of forming a thin film wavelength converter,
compnsmg:
depositing a first thin film layer of at least one first
wavelength conversion material on a substrate using a first
deposition process;
depositing, on the substrate or the first wavelength
conversion material, an electrically conductive layer using a
second deposition process; and
depositing a second thin film layer of at least one second
wavelength conversion material on said electrically conductive
layer using an electrophoretic deposition process;
wherein:
said first thin film layer is configured to convert incident
primary light from a light source in a first wavelength range to
secondary light in a second wavelength range, the first thin film
layer having a thickness ranging from about 10 nanometers (nm)
to about 20 micrometers (µm); and
said second thin film layer is configured to convert at least
one of said primary light and said secondary light to tertiary light
in a third wavelength range, said second wavelength range being
different from said third wavelength range.
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Application 14/932,642
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains two rejections: 4
A. Claim 18 under AIA 35 U.S.C. § 112(a) as failing to comply
with the written description requirement; and
B. Claims 10-16 and 18 under 35 U.S.C. § 103 as unpatentable
over Ng et al. 5 (hereinafter "Ng") in view of Aliyev6 or further in
view of Wu et al. 7 (hereinafter "Wu").
(Ans. 2-5; Final Act. 2-5.)
III. DISCUSSION
Rejection A. Claim 18, which was added in an Amendment filed
September 8, 2016, recites (Br. 7): "The method of claim 10, wherein said
second thin film is devoid of epoxy, silicone or glass."
The Examiner finds that the claim violates the written description
requirement under 35 U.S.C. § 112(a) because the Specification, as filed
originally, does not provide sufficient support so as to reasonably convey to
one skilled in the relevant art that the Appellants had possession of the
claimed subject matter including the negative limitation "devoid of epoxy,
silicone or glass" (Ans. 2-3, 7).
The Appellants contend that "the recited subject matter is believed
inherently present in the disclosure of the present application, support also
4 The Examiner states that a rejection under 35 U.S.C. § 112(a) of claim 11
has been withdrawn (Ans. 2).
5 US 7,265,488 B2, issued September 4, 2007.
6 US 2009/0242921 Al, published October 1, 2009.
7 US 2007/0145884 Al, published June 28, 2007.
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Application 14/932,642
having been pointed out at e.g. i-f58 at pp. 14-15 of the [S]pecification" (Br.
5).
We disagree with the Appellants. Nothing in the cited Specification
description indicates that the Appellants had possession of a sub-genus of
"second thin film" that excludes epoxy, silicone, or glass (Spec. ,r 58).
Indeed, it appears that the negative limitation was introduced in an attempt
to distinguish the claimed subject matter over Ng (see Ng col. 4, 11. 1--4).
Absent sufficient descriptive support in the original disclosure, the
introduction of such a negative limitation to define the claimed subject
matter reciting an undisclosed sub-genus violates the written description
requirement of 35 U.S.C. § 112(a). Ex parte Grasselli, 231 USPQ 393, 394
(Bd. App. 1983) ("[T]he negative limitations recited in the present claims,
which did not appear in the specification as filed, introduce new concepts
and violate the description requirement of the first paragraph of 35 U.S.C.
[§] 112."), aff'd mem., 738 F.2d 453 (Fed. Cir. 1984).
Rejection B. The Appellants rely on the same arguments for claims
10-16 and 18 (Br. 3-5). Therefore, we confine our discussion to claim 10,
which we select as representative pursuant to 37 C.F.R. § 4I.37(c)(l)(iv).
As provided by this rule, claims 11-16 and 18 stand or fall with claim 10.
The Examiner finds that Ng describes a method including every
limitation recited in claim 10 except for limitations pertaining to "the
deposition of the second thin film layer by [an] electrophoretic deposition
process, the deposition of an electrically conductive layer, and the thickness
of the first thin film layer" (Ans. 3). Regarding the first two differences, the
Examiner relies on Aliyev's teachings and concludes (id. at 4):
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Application 14/932,642
[I]t would have been obvious to one having ordinary skill in the
art ... to use an electrophoretic deposition process and to have
an electrically conductive layer [as shown in Aliyev] in Ng's
method ... for the benefit of forming a coating of the second thin
film layer and providing electrical conductivity to a surface for
the electrophoretic deposition process.
Regarding the third difference, the Examiner relies on both Aliyev and Wu
for suitable phosphor coating layer thicknesses and concludes that "the
selection of the thin film layer [thickness] would have been within the level
of ordinary skill in the art" (id.).
The Appellants do not contest the third difference (Br. 3-5). Rather,
the Appellants contend that Ng discloses wavelength converting layers that
are based on "a matrix of epoxy, silicone[,] or glass, which one of ordinary
skill understands are all too viscous to suggest [the Appellants'] claimed
depositing a second thin film layers [sic] using an electrophoretic
deposition" (id. at 4 ). According to the Appellants, "these matrix materials
in Ng would suggest to one of ordinary skill they are non-conducting, and
therefore also teaches away from use of electrophoretic deposition" (id.).
Regarding Aliyev, the Appellants argue that Aliyev teaches coating a
conductive layer atop an LED, and, therefore, "could in no way be
considered to show or suggest [the Appellants'] embodiment at Fig. 6 of
depositing a second wavelength conversion layer" (id.). Relative to the
Appellants' Figure 4 embodiment, the Appellants argue that "Aliyev's layers
are out of order" (id.).
We discern no persuasive merit in the Appellants' arguments, and,
therefore, these arguments fail to reveal any reversible error in the
Examiner's rejection as entered against claim 10. In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011).
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Application 14/932,642
As the Examiner finds (Ans. 6), Ng does not limit the phosphor
materials (i.e., wavelength converting materials) to those based on epoxy,
silicone, or glass. Instead, Ng teaches phosphor (nano )particles generally-
i.e., phosphor (nano )particles suspended in an optically clear medium
without regard to conductivity (Ng col. 4, 11. 1--4). Moreover, the Examiner
relies additionally on Aliyev's teachings-not solely Ng's teachings-to
demonstrate the obviousness of implementing a coating technique in which a
phosphor coating layer is formed on a conductive layer by electrophoresis in
forming Ng's second wavelength converting material 208 as shown in Ng's
Figure 2 (Ans. 3--4). In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) ("Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.").
Although Aliyev teaches an embodiment in which a phosphor coating
layer is deposited by electrophoresis on a conductive layer that appears to be
coated directly on an LED chip (Aliyev ,r 46), a person having ordinary skill
in the art would have drawn a reasonable inference that the disclosed
technique would also be suitable for depositing phosphor materials on a
conductive layer that is not deposited directly on an LED substrate (id. ,r 48).
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.").
As for the Appellants' arguments based on their Figure 6D, we agree
with the Examiner (Ans. 6) that claim 10 is not limited to the Figure 6D
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Application 14/932,642
embodiment in which the two wavelength conversion layers are provided on
opposite sides of the substrate.
For these reasons, we uphold the Examiner's rejection as maintained
against claim 1 0.
IV. SUMMARY
Rejections A and Bare sustained. Therefore, the Examiner's final
decision to reject claims 10-16 and 18 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).
AFFIRMED
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