Ex Parte Takeda et al

Board of Patent Appeals and Interferences

Jun 30, 2009

10525014 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKASHI TAKEDA,
KENJI ONO, and
SUSUMU MIYAZAKI
____________

Appeal 2009-003716
Application 10/525,014
Technology Center 1700
____________

Decided1: June 30, 2009
____________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
KAREN M. HASTINGS, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claim 5. Claims 3, 4, and 6, the other pending claims in the

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 10/525,014

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above-identified application, were indicated to be allowable by the
Examiner. We have jurisdiction under 35 U.S.C. § 6(b).2
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal “relates to a phosphor and a vacuum
ultraviolet radiation excited light-emitting device comprising the phosphor”
and more particularly “to the phosphor having high luminescence when
excited by vacuum ultraviolet ray and to the vacuum ultraviolet radiation
excited light-emitting device comprising the phosphor” (Spec. 1, ll. 7-14).
According to page 1, lines 16-17, of the Specification:
Phosphors are used in a vacuum ultraviolet radiation
excited light-emitting devices such as plasma display panels…
and rare gas lamps. Phosphors which emit lights under
excitation with vacuum ultraviolet rays have already been
known.

Details of the appealed subject matter are recited in claim 5, the only claim
on appeal, which is reproduced below:
5. A vacuum ultraviolet radiation excited light-emitting device
comprising a phosphor represented by formula

(M11-eLn2e)3(M21-fLn1f)2M36O18

wherein M1 is at least one metal element selected from the group consisting
of Ca, Sr, and BA, M2 is at least one metal element selected from the group
consisting of Y, La, Gd, and Lu, M3 is at least one metal element selected
from the group consisting of Si and Ge and oxygen, Ln1 is at least one metal
element selected from the group consisting of Ce, Pr, Nd, Pm, Sm, Eu, Tb
Dy, Ho, Er, Tm, Yb, and Mn, Ln2 is at least one element selected from the

2 An oral hearing was held on June 9, 2009.
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group consisting of Sm, Eu, Yb, and Mn, e is from 0 to 0.5, f is from 0 to
0.5, and the sum of e and f is not less than 0.

The Examiner relied upon the following prior art reference as
evidence of anticipation:
Konijnendijk EP 0 021 536 A1 Jan. 7, 1981
The Examiner further relied upon the following references to explain
the teaching of Konijnendijk:
Shiramizu US 2002/0023670 A1 Feb. 28, 2002
Srivastava US 6,982,046 B2 Jan. 3, 2006
Sawada US 2007/0072093 A1 Mar. 29, 2007
Appellants relied upon the following literature:
Shigeo Shionoya et al (Shionoya), Phosphor Handbook, “Luminescence
properties,” p. 727 (unknown publication date).

The Examiner rejected claim 5 under 35 U.S.C. § 102(b) as
anticipated by the disclosure of Konijnendijk (Ans. 3-4).

ISSUE AND CONCLUSION
Have Appellants identified reversible error in the Examiner’s finding
that Konijnendijk teaches the claimed vacuum ultraviolet radiation excited
light-emitting device within the meaning of 35 U.S.C. § 102(b)? On this
record, we answer this question in the negative.

FINDINGS OF FACT
1. Appellants do not dispute the Examiner’s finding that Konijnendijk
teaches silicate-based phosphor compositions corresponding to those
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claimed and their use in low-pressure mercury vapor lamps.
(Compare Ans. 3 with App. Br. 9-13).
2. Konijnendijk teaches that its silicate-based phosphor compositions are
used to form “luminescent screens and lamps” (p. 1, ll. 1-2).
3. Konijnendijk teaches that the phosphor compositions (luminescent
materials) “can be properly excited, for examply [sic., example,] by
ultra-violet radiation, in particular by short-wave ultra-violet
radiation” (p. 2, ll. 15-19).
4. Konijnendijk teaches that “[o]n excitation by the short-wave ultra-
violet radiation from a low-pressure mercury vapour discharge lamp
(predominantly 254 nm), the silicate luminesced efficiently . . . (p. 7,
ll. 3-6).
5. Shionoya relied upon by Appellants teaches (p. 727) that:
The wavelength region between about 0.2 and 200-nm is called
the vacuum-ultraviolet (abbreviated to VUV) region; most of
the VUV spectrometers need to be evacuated in this region
because of the opacity of oxygen in air to this radiation.

6. Srivastava explains (col. 1, ll. 21-32) (emphasis added) that:
A drawback of known mercury low-pressure gas
discharge lamps resides in that the action of UV radiation
having very short wavelengths on the phosphor coating, the
recombination of mercury ions and electrons on the phosphor
surface, or the incidence of excited mercury atoms and
electrons on the phosphor layer causes the emissivity of the
phosphors to decrease in the course of time. This emissivity
loss results in a reduction of the electro-optical efficiency in the
course of the service life of the lamp. This degradation is
particularly substantial under the influence of VUV (vacuum
UV) radiation having a wavelength below 200 nm, and
manifests itself as a shift of the color of light.
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Therefore, effort has been devoted to finding means to
reduce the damaging effect of VUV radiation on the phosphors
of mercury discharge lamps.

7. Sawada explains (p. 5, paras 0055 and 0056)(emphasis added) that:
The wavelength of the vacuum-ultraviolet light is usually
set into the range of 100 nm to 250 nm. The wavelength of the
vacuum-ultraviolet light used in the invention is preferably set
into the range of 150 nm to 200 nm.
A light source for the vacuum-ultraviolet light may be
selected from an excimer lamp, a low-pressure mercury lamp,
and other various light sources.

8. Shiramizu explains in the Description of the Related Art section that
the term “vacuum ultraviolet light” includes a wavelength of 254 nm
in an ozone atmosphere (p. 1, para 0008).
9. Shiramizu further explains (p. 2, para. 0030)(emphasis added) that:
Prior art of removing organic matters in general includes
one that employs UV/ozone gas, wherein vacuum ultraviolet
light of wavelengths 254 nm, 185 nm, etc. emitted by a low
pressure mercury lamp are used.

PRINCIPLES OF LAW
In making a patentability determination, analysis must begin with the
question, “what is the invention claimed?” since “[c]laim interpretation, . . .
will normally control the remainder of the decisional process.” Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987).
Claim terms are given their broadest reasonable construction consistent with
the specification during patent prosecution. In re Icon Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)(“[T]he PTO must give claims
their broadest reasonable construction consistent with the specification. . . .
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Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.”); In re Bigio,
381 F.3d 1320, 1324 (Fed. Cir. 2004) (“[T]he PTO gives a disputed claim
term its broadest reasonable interpretation during patent prosecution.”).
When the Specification does not contain express definitions for the disputed
claim terms, “the fact that appellants can point to definitions or usages [in
extrinsic evidence] that conform to their interpretation does not make the
PTO’s definition unreasonable when the PTO can point to other sources that
support its interpretation.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997)
This longstanding broadest reasonable interpretation principle is based
on the notion that “during patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
That is, a patent applicant has the opportunity and responsibility to remove
any ambiguity in claim term meaning by amending the application. “Only in
this way can uncertainties of claim scope be removed, as much as possible,
during the administrative process.” Zletz, 893 F.2d at 322. “[A]s applicants
may amend claims to narrow their scope, a broad construction during
prosecution creates no unfairness to the applicant or patentee.” Icon Health,
496 F.3d at 1379.
Although a patent applicant is entitled to be his or her own
lexicographer of patent claim terms, the applicant must provide definitions
for such claim terms in the Specification with sufficient clarity to provide a
person of ordinary skill in the art with clear and precise notice of the
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meaning that is to be construed. In re Corr, 347 F.2d 578, 580 (CCPA
1965) Otherwise, limitations appearing in the specification but not recited in
the claim are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp.,
343 F.3d 1364, 1369 (Fed. Cir. 2003).
Under 35 U.S.C. § 102(b), anticipation is established only if “each
and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros., Inc.,
v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).
“[W]hen the PTO shows sound basis for believing that the products
[devices] of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990) (citing In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re
Best, 562 F.2d 1252, 1255 (CCPA 1977) (When “the claimed and prior art
products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.” ). “‘[T]he PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. . . . Whether the rejection
is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the
same . . . [footnote omitted].’” In re Fitzgerald, 619 F.2d 67, 70 (CCPA
1980) (quoting In re Best, 562 F.2d at 1255).
“[T]here is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims. In re Schreiber,
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128 F.3d 1473, 1478 (Fed. Cir. 1997). Yet, choosing to define functionally,
i.e., by what it does, carries with it a risk. Schreiber, 128 F.3d at 1478. As
our reviewing court stated in Schreiber, 128 F.3d at 1478 quoting In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971):
Where the patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.

Moreover, "extrinsic evidence may be considered when it is used to
explain, but not to expand, the meaning of a reference." In re Baxter,
952 F.2d 388, 390 (Fed. Cir. 1991). As stated by our reviewing court:
It is sometimes appropriate to consider extrinsic evidence to explain
the disclosure of a reference. Such factual elaboration is necessarily
of limited scope and probative value, for a finding of anticipation
requires that all aspects of the claimed invention were already
described in a single reference: a finding that is not supportable if it is
necessary to prove facts beyond those disclosed in the reference in
order to meet the claim limitations. The role of extrinsic evidence is
to educate the decision-maker to what the reference meant to persons
of ordinary skill in the field of the invention, not to fill gaps in the
reference. . . . If it is necessary to reach beyond the boundaries of a
single reference to provide missing disclosure of the claimed
invention, the proper ground is not § 102 anticipation, but § 103
obviousness.

Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576-
1577 (1991).

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ANAYLSIS
Appellants do not dispute the Examiner’s finding that Konijnendijk
teaches low-pressure mercury lamps comprising silicate-based phosphor
compositions corresponding to those claimed phosphor compositions.
According to Konijnendijk, the phosphor compositions in these low pressure
mercury lamps, like those of Appellants’ vacuum ultraviolet radiation
excited light-emitting devices, can be excited by ultra-violet radiation, in
particular by short-wave ultraviolet radiation (the short-wave ultraviolet
wavelength is defined as 254 nm). Thus, the Examiner has a sound basis or
reason to believe that Konijnendijk’s low-pressure mercury lamps possess
the claimed functional characteristic i.e., devices possessing the claimed
“vacuum ultraviolet radiation excited light-emitting” function.
Appellants rely on Shionoya to rebut the Examiner’s prima facie case
of anticipation. Shionoya states (p. 727) that:
The wavelength region between about 0.2 and 200-nm is
called the vacuum-ultraviolet (abbreviated to VUV) region;
most of the VUV spectrometers need to be evacuated in this
region because of the opacity of oxygen in air to this radiation.

However, nowhere does Shionoya state that Konijnendijk’s low-pressure
mercury lamps do not possess the claimed “vacuum ultraviolet radiation
excited light-emitting” function. We initially note that Konijnendijk’s low-
pressure mercury lamps can be excited by ultraviolet radiation in general,
not just by short-wave ultraviolet radiation (254 nm). Secondly, we note
that the vacuum ultraviolet light region defined by Shionoya does not
exclude a wavelength of 254 nm in an ozone atmosphere. Thus, on this
record, Appellants simply have not shown that Konijnendijk’s low-pressure
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mercury lamps do not possess the claimed “vacuum ultraviolet radiation
excited light-emitting” function.
Shiramizu, Sawada, and Srivastava referred to by the Examiner also
explain that Konijnendijk’s low-pressure mercury lamps necessarily or
inherently possess the claimed “vacuum ultraviolet radiation excited light-
emitting” function. For instance, Shiramizu explains in the Description of
the Related Art section that the term “vacuum ultraviolet light” is also used
to include a wavelength of 254 nm in an ozone atmosphere. Shiramizu also
discloses (p. 2, para. 0030) (emphasis added) that:
Prior art of removing organic matters in general includes
one that employs UV/ozone gas, wherein vacuum ultraviolet
light of wavelengths 254 nm, 185 nm, etc. emitted by a low
pressure mercury lamp are used.

Consistent with the above disclosure of Shiramizu, both Sawada, and
Srivastava further explain that lower-pressure mercury lamps possess the
claimed vacuum-ultraviolet light emitting function.
Thus, based on the totality of record, including due consideration of
Appellants’ arguments and evidence, we determine that the preponderance
of evidence weighs most heavily in favor of anticipation within the meaning
of 35 U.S.C. § 102(b).
DECISION
The decision of the Examiner rejecting claim 5 under 35 U.S.C.
§ 102(b) is affirmed.
AFFIRMED

cam
Appeal 2009-003716
Application 10/525,014

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