Ex Parte Tu et al

Patent Trial and Appeal Board

Mar 12, 2015

12440039 (P.T.A.B. Mar. 12, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JUNMING TU, JAY JOSEPH PALMER, and
GREGORY ALLEN GOLDING
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Appeal 2013-004692
Application 12/440,039
Technology Center 2800
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Before TERRY J. OWENS, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–5, 9 and 10. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a ceramic metal halide lamp. Claim 1 is
illustrative:
1. A ceramic metal halide lamp comprising a ceramic
discharge tube enclosing a gas-tight discharge space, a fill
capable of sustaining an arc discharge in the discharge space,
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Application 12/440,039

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the fill comprised of a starting gas, mercury and a mixture of
metal iodides, the metal iodides comprising sodium iodide,
thallium iodide and at least a first rare earth halide component
comprising gadolinium iodide, wherein the gadolinium iodide,
or a combination of gadolinium iodide and thulium iodide is
present in an amount within the range of about 55 to about 86
wt. % of the metal iodide mixture, and the light emission from
the lamp has a color temperature at or above 5000K.
The Reference
Hendricx US 2004/0095071 A1 May 20, 2004
The Rejection
Claims 1–5, 9 and 10 stand rejected under 35 U.S.C. § 102(b) over
Hendricx.
OPINION
We reverse the rejection. We need address only the sole independent
claim, i.e., claim 1. That claim requires an amount of either gadolinium
iodide or a combination of gadolinium iodide and thulium iodide which is
about 55 to about 86 wt% of a metal iodide mixture.
An examiner has the initial burden of establishing a prima facie case
of anticipation by pointing out where all of the claim limitations appear in a
single reference. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re
King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).
Hendricx discloses “an iodide salt filling of NaI, TlI and GdI3 in a
molar ratio of 72:4:24” (¶ 23). It is undisputed that the molar amount of
gadolinium iodide in that ratio corresponds to about 52 wt% (App. Br. 10;
Reply Br. 2–3; Ans. 5, 7). The Examiner asserts that “about 52” falls within
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Application 12/440,039

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the Appellants’ recited amount of “about 55” (Ans. 5, 7), and the Appellants
challenge that assertion (App. Br. 10; Reply Br. 2–4).
“‘[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.’” In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000))). The Examiner has not
established, and it does not appear, that the broadest reasonable
interpretation of the Appellants’ claim term “about 55” consistent with the
Specification encompasses “about 52.”
Hendricx also discloses a filling comprising “GdI3 in a molar ratio of
at least 5% and at most 45%” (¶ 9). The Examiner argues that “[s]ince a
molar ratio of 72:4:24 corresponds to 24 mol% of GdI3, and 24% mol of
GdI3 in the filling = 52 wt % of GdI3 in the filling, 45% mol of GdI3 in the
filling would be greater than 52 wt %. (In fact appellant has a claimed range
that is equivalent to 25-79 mol % of GdI3 in the filling which would
therefore overlap with 24 and up to 45 mol % of GdI3 in the filling as
disclosed by Hendrix [sic].)” (Ans. 8). The Appellants argue that
“paragraph [0009] of Hendricx is completely silent about any remaining
ingredients of the fill besides GdI3 in the molar ratio of 5% to 45%. Without
such information, the wt% of GdI3 cannot be calculated” (Reply Br. 4).
The Examiner has not established that the weight percent of GdI3 in
the relied-upon paragraph 9 of Hendricx can be calculated from Hendricx’s
disclosure or that 45% mol of GdI3 corresponds to at least about 55 wt%
regardless of what else is in the filling.
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Thus, the Examiner has not established a prima facie case of
anticipation by pointing out where all of the Appellants’ claim limitations
appear in Hendricx. Accordingly, we reverse the rejection.
DECISION/ORDER
The rejection of claims 1–5, 9 and 10 under 35 U.S.C. § 102(b) over
Hendricx is reversed.
It is ordered that the Examiner’s decision is reversed.

REVERSED

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