Ex Parte Ng

Board of Patent Appeals and Interferences

Jan 22, 2009

10803266 (B.P.A.I. Jan. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEE YEAN NG
____________

Appeal 2008-6012
Application 10/803,266
Technology Center 2800
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Decided: January 22, 2009
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Before CHARLES F. WARREN, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a device and method for emitting composite
output light. Claims 1, 8 and 14 are illustrative:
1. A device for emitting composite output light, said device comprising:

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Application 10/803,266

a light source that emits original light, the light source including
a fluorescent layer having a property to convert some of said original light
into first converted light; and
a wavelength-conversion region optically coupled to said light
source to receive some of said original light and said first converted light,
said wavelength-conversion region including a fluorescent material having a
property to convert some of said original light into second converted light,
said original light, said first light and said second converted light being
components of said composite output light.

8. A method for emitting composite output light, said method
comprising;
generating original light within a light source;
converting some of said original light into first converted light
within said light source;
converting some of said original light into second converted
light outside of said light source; and
emitting said original light, said first converted light and said
second converted light as components of said composite output light.

14. A device for emitting composite output light, said device comprising;
a semiconductor die that emits first light of a first peak
wavelength, said semiconductor die including a fluorescent substrate having
a property to convert some of the first light into second light of second peak
wavelength; and
a wavelength-conversion region positioned to receive at least
some of said first light and said second light, said wavelength-conversion
region having a property to convert some of said first light into third light of
a third peak wavelength, said first light, said second light and said third light
being components of said composite output light.

The Reference
Takahashi 2002/0043926 A1 Apr. 18, 2002
The Rejection
Claims 1-20 stand rejected under 35 U.S.C. § 102(b) over Takahashi.
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OPINION
The Examiner’s rejection is affirmed as to claims 1-13 and reversed as
to claims 14-20. Because our rationale regarding the affirmance is
substantially different than that of the Examiner, we denominate the
affirmance as involving a new ground of rejection under
37 C.F.R. § 41.50(b). We introduce a new ground of rejection of claim 14
under 37 C.F.R. § 41.50(b), and leave it to the Examiner to address
claim 14’s dependent claims 15-20.
Rejection of claims 1-13
Among claims 1-13 the Appellant argues only the independent claims,
i.e., claims 1 and 8 (Br. 4-7). We therefore limit our discussion to those
claims. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
Claim 1
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Takahashi discloses, expressly or inherently, the use of a
fluorescent layer in combination with a wavelength-conversion region
including a fluorescent material?
Findings of Fact
Takahashi discloses “a light-emitting unit constituted by a
combination of a light-emitting device and a fluorescent material” (¶ 0002).
“[A] part of the light emitted from the light-emitting device is subjected to
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wavelength conversion by the fluorescent material” (¶ 0062). In one
embodiment the light emitting device (10) is mounted into a cup portion (33)
that is filled with a plurality of layers of an epoxy resin (fluorescent resin 35)
containing differing concentrations of fluorescent materials (36) (¶¶ 0079,
0080, 0083). In another embodiment a fluorescent layer (37) containing
fluorescent materials (36) covers either the light emitting device’s substrate
surface or both the substrate surface and side surfaces “so that the
fluorescent resin 35 can be omitted” (¶¶ 0097, 0098; Figs. 6A, 6B).
Analysis
The Examiner relies upon Takahashi’s fluorescent layer 37 containing
fluorescent materials 36 as corresponding to the Appellant’s fluorescent
layer, and Takahashi’s fluorescent resin 35 containing fluorescent
materials 36 as corresponding to the Appellant’s wavelength-conversion
region including a fluorescent material (Ans. 3). The Examiner argues that
Takahashi’s disclosure that fluorescent resin 35 “can be omitted” (¶ 0097)
indicates that fluorescent resin 35 can be present along with fluorescent
layer 37 (Ans. 7).
The Appellant argues that Takahashi’s disclosure that fluorescent
resin 35 can be omitted implies that fluorescent layer 37 replaces fluorescent
resin 35 (Br. 5).
Takahashi’s disclosures that “a fluorescent layer 37 … maybe [sic]
provided … so that the fluorescent layer 35 can be omitted” (¶ 0097) and
that fluorescent layer 37 contains fluorescent materials 36 (¶¶ 0097, 0098)
indicate that fluorescent layer 35, which is an epoxy (¶¶ 0080, 0083), can be
omitted such that instead of the fluorescent materials 36 being in that epoxy,
they are part of fluorescent layer 37.
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Thus, that Examiner has not established that Takahashi discloses,
expressly or inherently, the use of fluorescent layer 35 and fluorescent
layer 37 in combination.
However, in Takahashi’s embodiment wherein a plurality of
fluorescent resin 35 layers has a concentration gradient of fluorescent
materials 36 (¶ 0083), an inner layer corresponds to the Appellant’s
fluorescent layer and the next layer corresponds to the Appellant’s
wavelength-conversion region including fluorescent material. Takahashi
indicates that the original light that is not wavelength converted in the inner
layer passes through that layer to the next layer (¶ 0062). Takahashi’s
disclosure that part of the light that enters a layer is wavelength converted
and part passes through that layer unconverted, see id., indicates that part of
the original light that enters Takahashi’s second layer is wavelength
converted as required by the Appellant’s claim 1. As required by the
Appellant’s claim 1, the composite output light comprises the light that is
wavelength converted in the inner layer, the light that is wavelength
converted in the next layer, and original light that passes through the layers.
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that Takahashi discloses, expressly or inherently, a fluorescent
layer in combination with a wavelength-conversion region including a
fluorescent material. Because our rationale differs substantially from that of
the Examiner, we denominate the affirmance of claim 1 and its dependent
claims 2-7 as involving a new ground of rejection under 37 C.F.R.
§ 41.50(b).

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Claim 8
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Takahashi discloses, expressly or inherently, converting
some of the original light into first converted light within the light source
and converting some of the original light into second converted light outside
the light source?
Analysis
As in the rejection of claim 1, the Examiner’s rejection of claim 8 is
based upon the combination of Takahashi’s fluorescent resin 35 and
fluorescent layer 37 (Ans. 8). As pointed out above regarding the rejection
of claim 1, that combination does not appear to be disclosed by Takahashi.
The Appellant argues that Takahashi does not disclose converting
some of the original light into first converted light within the light source
and converting some of the original light into second converted light outside
the light source (Br. 6-7).
The Appellant’s fluorescent layer for converting light within the light
source is the fluorescent substrate 112 of LED die 102 which includes an
active layer 114 that generates light (Spec. 4:14-19). Claim 8 does not
require a fluorescent substrate but, rather, requires converting some of the
original light into first converted light within the light source. In
Takahashi’s embodiment having a plurality of fluorescent resin 35 layers
with a concentration gradient of fluorescent materials 36 (¶ 0083), the inner
layer is adjacent to the light emitting device (10) similarly to the Appellant’s
fluorescent substrate 112 being adjacent to active layer 114 that generates
light (Spec. 4:17-25; Figs. 1, 2). The Appellant’s claim 8 does not exclude,
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as a light source, a light emitting device having a fluorescent layer thereon.
Hence, Takahashi’s inner fluorescent resin layer 35 reasonably can be
considered “within said light source” as that term is used by the Appellant.
Light converted in Takahashi’s next fluorescent resin 35 layer, which is
outside the inner layer, corresponds to the Appellant’s conversion of original
light to second converted light outside the light source.
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that Takahashi discloses, expressly or inherently, converting
some of the original light into first converted light within the light source
and converting some of the original light into second converted light outside
the light source. Because our rationale differs significantly from that of the
Examiner, we denominate the affirmance of claim 8 and its dependent
claims 9-13 as involving a new ground of rejection under
37 C.F.R. § 41.50(b).
Rejection of claim 14
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Takahashi discloses, expressly or inherently, a
semiconductor die including a fluorescent substrate to convert some of first
light into second light, and a wavelength-conversion region positioned to
receive at least some of the first light and the second light?
Analysis
The Examiner relies upon Takahashi’s fluorescent layer 37 (¶¶0097,
0098) as corresponding to the Appellant’s fluorescent substrate, and
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Takahashi’s fluorescent resin 35 as corresponding to the Appellant’s
wavelength conversion region (Ans. 5-6).
The Appellant argues that Takahashi does not disclose the
combination of fluorescent resin 35 and fluorescent layer 37 (Br. 7-8).
As pointed out above regarding the rejection of claim 1, Takahashi
does not appear to disclose the use of fluorescent resin 35 and fluorescent
layer 37 in combination.
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that Takahashi discloses, expressly or inherently, a
semiconductor die including a fluorescent substrate to convert some of first
light into second light, and a wavelength-conversion region positioned to
receive at least some of the first light and the second light.
New ground of rejection
Under 37 C.F.R. § 41.50(b) we enter the following new ground of
rejection.
Claim 14 is rejected under 35 U.S.C. § 103 over Takahashi.
Takahashi discloses, in one embodiment, that the surface of the
substrate (11) of a light-emitting device (10) that includes semiconductor
layers (13, 15) can be covered with a fluorescent layer (37) (¶ 0097,
Fig. 6A). Because fluorescent layer 37 covers the bottom of substrate 11, it
is either part of the substrate or also functions as a substrate.
Takahashi discloses, in another embodiment, that light-emitting
device 10 can be covered with a plurality of fluorescent resin (35) layers
having a concentration gradient of fluorescent materials (36) (¶ 0083). Any
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of those layers corresponds to the Appellant’s wavelength-conversion
region.
Takahashi does not disclose the use, in combination, of fluorescent
layer 37 and the plurality of fluorescent resin 35 layers having a
concentration gradient of fluorescent materials 36. However, Takahashi
would have led one of ordinary skill in the art, through no more than
ordinary creativity, to use that combination to obtain the combined benefit of
each component, i.e., fluorescence from both fluorescent layer 37 below
light-emitting device 10 (Fig. 6A) and fluorescent resin 35 having a
concentration gradient of fluorescent materials 36 around the sides and
above that light emitting device (Fig. 1). See KSR Int’l. Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1741 (2007) (In making an obviousness determination one
“can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ”). In that combination, the
wavelength-conversion region (plurality of fluorescent resin 35 layers
having a concentration gradient of fluorescent materials 36) would receive at
least some of the light converted by fluorescent layer 37 (compare Figs. 1
and 6A).
Hence, the use, in combination, of Takahashi’s fluorescent layer 37
and plurality of fluorescent resin 35 layers having a concentration gradient
of fluorescent materials 36 would have been prima facie obvious to one of
ordinary skill in the art.
We leave it to the Examiner to address claim 14’s dependent
claims 15-20.

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DECISION/ORDER
The rejection of claims 1-20 under 35 U.S.C. § 102(b) over Takahashi
is affirmed as to claims 1-13, and is reversed as to claims 14-20. Under
37 C.F.R. § 41.50(b), the affirmance is denominated as involving a new
ground of rejection and new ground of rejection of claim 14 is entered.

It is ordered that the Examiner’s decision is affirmed-in-part.

This decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b) (2007). 37 CFR § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."

37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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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-IN-PART, 37 C.F.R. § 41.50(b)

tc

KATHY MANKE
AVAGO TECHNOLOGIES LIMITED
4370 ZIEGLER ROAD
FORT COLLINS, CO 80525

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