Ex Parte Ng et al

Board of Patent Appeals and Interferences

Nov 10, 2010

10616759 (B.P.A.I. Nov. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte KEE YEAN NG and WEN UA OU
_____________

Appeal 2009-007195
Application 10/616,759
Technology Center 2800
______________

Before ROBERT E. NAPPI, MAHSHID D. SAADAT, and THOMAS S.
HAHN, Administrative Patent Judges.

NAPPI, 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 2009-007195
Application 10/616,759

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 7 and 18 through 24.
We affirm.
INVENTION
The invention is directed to a method of fabricating an LED light
source. See Page 2 Appellants’ Specification. Claim 7 is reproduced below:
7. A method for fabricating a light source comprising:
mounting a chip having a primary light source on a substrate,
said primary light source emitting light of a first wavelength;
connecting power terminals on said chip to corresponding
power terminals on said substrate for powering said primary light
source; and
mounting a performed transparent cap over said chip, said cap
comprising a wavelength-converting material for converting a portion
of said light of said first wavelength to a second wavelength, wherein
said transparent cap comprises a spherical surface and has a constant
thickness.

REFERENCES
Reeh US 2001/0000622 A1 May 3, 2001
Kawae US 2002/0080501 A1 Jun. 27, 2002
Lin US 2003/0098651 A1 May 29, 2003
Mueller-Mach (Mach) US 6,630,691 B1 Oct. 7, 2003
Shiiki US 6,762,551 B2 Jul. 13, 2004
Ibbetson US 2005/0093430 A1 May 5, 2005
2

Appeal 2009-007195
Application 10/616,759

REJECTIONS AT ISSUE
The Examiner has rejected claims 7, 19, and 21 through 24 under 35
U.S.C. § 102(b) as being anticipated by Kawae. The Examiner’s rejection is
on pages 4 and 5 of the Answer.2
The Examiner has rejected claims 7, 18 through 21, and 23 through 24
under 35 U.S.C. § 102(e) as being anticipated by Ibbetson. The Examiner’s
rejection is on pages 5 and 6 of the Answer.
The Examiner has rejected claim 24 under 35 U.S.C. § 102(e) as
being anticipated by Shiiki. The Examiner’s rejection is on page 6 of the
Answer.
The Examiner has rejected claims 18 and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Kawae in view of Lin. The Examiner’s rejection
is on page 7 of the Answer.
The Examiner has rejected claims 22 and 24 under 35 U.S.C. § 103(a)
as being unpatentable over Reeh in view of Mach. The Examiner’s rejection
is on pages 7 and 8 of the Answer.

ISSUES
Rejection under 35 U.S.C. § 102(b) based on Kawae.
Appellants’ contentions, on pages 8 through 11 of the Brief,3 with
respect to this rejection present us with the issue: did the Examiner err in
finding that Kawae teaches a cap with a constant thickness? Appellants’

2 Throughout this decision we refer to the Examiner’s Answer dated
September 25, 2008.
3 Throughout this decision we refer to the Appeal Brief dated May 30, 2008
3

Appeal 2009-007195
Application 10/616,759

arguments on pages 8 through 11 of the Brief group claims 7, 19, 21, and 23
together and separately address independent claim 24. Accordingly we
address this rejection as it applies to representative claims 7 and 24. Claim 7
recites that the cap has a “spherical surface and has a constant thickness.”
Claim 24 recites “wherein said transparent cap comprises a planar sheet
having a constant thickness.”

Rejection under 35 U.S.C. § 102(e) based on Ibbetson
Appellants’ contentions, on pages 12 through 15 of the Brief, with
respect to this rejection present us with the issue: did the Examiner err in
finding that Ibbetson teaches a cap with a constant thickness?

Rejection under 35 U.S.C. § 102(e) based upon Shiiki.
Appellants’ contentions, on pages 16 and 17 of the Brief, with respect
to this rejection present us with the issue: did the Examiner err in finding
that Shiiki teaches a cap with a constant thickness?

Rejection under 35 U.S.C. § 103(a) based Kawae in view of Lin
Appellants’ argue, on pages 18 of the Brief that this rejection is in
error for the reasons discussed with respect to the anticipation rejection of
claim 7 based upon Kawae. Thus, Appellants’ arguments directed to this
rejection present us with the same issue as discussed with respect to the
anticipation of claim 7 based upon Kawae.

4

Appeal 2009-007195
Application 10/616,759

Rejection under 35 U.S.C. § 103(a) based Reeh in view of Mach
Appellants’ contentions, on pages 27 through 29 of the Brief, with
respect to this rejection present us with two issues:
a) did the Examiner err in finding that the combination of Reeh and
Mach teaches a cap with a constant thickness?
b) did the Examiner err in finding that the skilled artisan would
combine Reeh and Mach?

ANALYSIS
Rejection under 35 U.S.C. § 102(b) based on Kawae.
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that Kawae teaches a cap with a constant thickness. With respect
to claim 7, the Examiner finds that Kawae teaches that it was known in the
prior art to make the cover of a constant thickness. Answer 9. We concur
with this finding by the Examiner. We note that the prior art cover is shown
in Figures 9 and 10, see paragraphs 0016, 0017. While paragraph 0059 also
identifies that using a constant thickness may create an irregular beam
pattern, and that the beam pattern can be made more evenly distributed by
using a variable thickness cover, the reference does nonetheless teach that
the cover can be a constant thickness. Thus, Appellants’ arguments have not
persuaded us of error in the Examiner’s rejection of claims 7, 19, 21, and 23.
With respect to claim 24, the Examiner finds that the cap in Figure 8
appears to be a constant thickness, and that though scale can not be inferred
from the Figures, the description in paragraph 0059 would lead the skilled
artisan to conclude that the cap in Figure 8 is of a constant thickness.
Answer 9-10. We concur with the Examiner’s finding. We additionally
5

Appeal 2009-007195
Application 10/616,759

note that in the description of Figure 7 with the variable thickness cover
which creates evenly distributed beam patterns, there is no discussion in
relation with the Figure 8 cover. Rather, we note the covers shown in
Figures 8 and 10 are discussed as being similar, albeit for different types of
LED, which further supports the Examiner’s finding. Thus, we are not
persuaded of error in the Examiner’s rejection of claim 24.
Appellants’ arguments have not addressed the Examiner’s rejection of
claim 22 as being anticipated by Kawae. Accordingly, we sustain the
rejection pro forma.

Rejection under 35 U.S.C. § 102(e) based on Ibbetson
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that Ibbetson teaches a cap with a constant thickness. With
respect to claim 7, the Examiner finds that paragraph 0050 teaches that the
lens 38 is of a constant thickness.4 Answer 5. We concur with this finding.
Paragraph 0050 states that lens include two layers and that they are of
uniform thickness. Further, we are not persuaded by Appellants’ arguments,
on page 15 of the Brief, that paragraph 0052 teach that the thickness of the
lens will vary. As stated by the Examiner on page 11 of the Answer,
paragraph 0052 is discussing the relationship between thickness of the cover
to the size and type of light. Paragraph 0052 does not describe using a cap
of varying thickness with some particular light source. Accordingly,
Appellants’ arguments have not persuaded us of error in the Examiner’s

4 We note that the Answer contains a typo in that it refers to Figure 5 which
does not contain lens item 36 as described in paragraph 50, whereas Figure 3
depicts lens item 36.
6

Appeal 2009-007195
Application 10/616,759

rejection of claims 7, 18 through 21 and 23 through 24 as being anticipated
by Ibbetson.

Rejection of claim 24 under 35 U.S.C. § 102(e) based on Shiiki.
Appellants’ arguments have persuaded us that the Examiner erred in
finding that Shiiki teaches a cap with a constant thickness. The Examiner
states that:
Shiiki shows use of variations of sizes and shapes (see e.g. fig. 3).
Therefore one of ordinary skill in the art would understand if Shiiki
intended for layer 5 to vary it would have been described. Further,
minor changes in the thickness of layer 5 would cause optical shaping.
Shiiki does not teach any optical shaping.

Answer 12. We disagree with the Examiner’s reasoning as the Examiner has
not identified a disclosure in Shiiki that discusses the thickness of the cover
and whether it is used for optical shaping. Accordingly, we will not sustain
the Examiner’s rejection of claim 24 as anticipated by Shiiki.

Rejection under 35 U.S.C. § 103(a) based on Kawae in view of Lin
Appellants’ arguments have not persuaded us of error in this rejection.
Appellants’ arguments directed to this rejection present us with the same
issue as discussed with respect to anticipation of claim 7. As discussed
above, Appellants’ arguments have not persuaded us of error in the rejection
of claim 7. Thus, we will sustain the Examiner’s rejection of claims 18 and
20 under 35 U.S.C. § 103(a) based Kawae in view of Lin.

7

Appeal 2009-007195
Application 10/616,759

Rejection under 35 U.S.C. § 103(a) based on Reeh in view of Mach
Appellants’ arguments have persuaded us that the Examiner erred in
finding that the combination of Reeh and Mach teach or suggest a cap with a
constant thickness. Initially, we note that this argument only applies to
claim 24 as independent claim 22, the other claim included in this rejection,
does not recite a limitation directed to a cap being of a constant thickness.
The Examiner finds that Reeh suggests that layer 4/6 is of a constant
thickness and that if it is not taught it is obvious. The Examiner’s rejection
has not cited to a teaching in Reeh that discusses the thickness but rather
relies upon an interpretation based upon items 29 and 8 in Figures 2 and 3.
Answer 13. We do not find that this is sufficient evidence to support a
finding that the reference teaches or suggests a constant thickness for the
cover. Accordingly, we will not sustain the Examiner’s rejection of claim
24.
Appellants’ second argument, concerning the combination of Reeh
and Mach has not persuaded us of error in the Examiner’s rejection. Claim
22 differs from claim 24, as discussed above claim 22 does not recite that the
cover is of a constant thickness, but does include a limitation that the cap
comprises a planar sheet of a single crystal phosphor. The Examiner finds
that Reeh does not teach this limitation but that Mach does. Answer 8. The
Examiner reasons that the skilled artisan would apply Mach’s single crystal
phosphor to Reeh’s device to provide long life and provide uniform color.
Answer 8-9. We concur with the Examiner’s conclusion. The Examiner
cites to Mach’s background of the invention to show that using single crystal
phosphor has these advantages. Answer 13. We concur, column 2, lines 40-
59 support this conclusion. Thus, we consider the Examiner to have shown
8

Appeal 2009-007195
Application 10/616,759

that combining the teachings of Reeh and Mach is nothing more than the use
of known elements to perform their known functions. Accordingly, we will
sustain the Examiner’s rejection of independent claim 22 under 35 U.S.C.
§ 103(a) based Reeh in view of Mach.

CONCLUSIONS
Appellants have not persuaded us of error in the Examiner’s rejection
of:
a) claims 7, 19, 21, and 22 through 24 under 35 U.S.C. § 102(b) as
being anticipated by Kawae;
b) claims 7, 18 through 21, and 23 through 24 under 35 U.S.C.
§ 102(e) as being anticipated by Ibbetson;
c) claims 18 and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Kawae in view of Lin; and
d) claim 22 under 35 U.S.C. § 103(a) as being unpatentable over
Reeh in view of Mach.
However, Appellants’ arguments have persuaded us of error in the
Examiner’s rejection of:
a) claim 24 under 35 U.S.C. § 102(e) as being anticipated by
Shiiki; and
b) claim 24 under 35 U.S.C. § 103(a) as being unpatentable over
Reeh in view of Mach.

ORDER
As we have sustained at least one rejection of each claim, the
Examiner’s decision to reject claims 7 and 18 through 24 is affirmed.
9

Appeal 2009-007195
Application 10/616,759

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)(iv).

AFFIRMED

ELD

KATHY MANKE
AVAGO TECHNOLOGIES LIMITED
4380 ZIEGLER ROAD
FORT COLLINS, CO 80525
10