14405194 - (D) (P.T.A.B. Jul. 22, 2020)

LUMILEDS LLC

Patent Trials and Appeals BoardJul 22, 2020

14405194 - (D) (P.T.A.B. Jul. 22, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/405,194 12/03/2014 Marcel Rene Bohmer 2012P00249WOUS 5163 159028 7590 07/22/2020 Innovation Counsel LLP 2890 Zanker Road Suite 200 San Jose, CA 95134 EXAMINER EDMONDSON, LYNNE RENEE ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 07/22/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): IPG_Docketing@lumileds.com docket@innovationcounsel.com lumileds@maxval.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARCEL RENE BOHMER, HENDRIX JOHANNES BOUDEWIGN JAGT, and ANTONIUS WILHELMUS MARIA De LAAT ____________ Appeal 2019-004879 Application 14/405,194 Technology Center 1700 ____________ Before KAREN M. HASTINGS, MICHAEL G. McMANUS, and JANE E. INGLESE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 requests our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1, 3–10, 18, and 19. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). “Lumileds LLC” is identified as the real party in interest (Appeal Br. 1). Appeal 2019-004879 Application 14/405,194 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of the subject matter on appeal (emphasis added to highlight key disputed limitations): 1. An optical composition employed in a light source, the optical composition comprising: a mixture of polysilsesquioxane and polysiloxane, the polysilsesquioxane comprising repeating units of the formula [R SiO1.5], each R independently being hydrogen or a C1-C12 alkyl, aryl, alkene, arylene, alkenyl or alkoxy, and the polysiloxane being mixed in said polysilsesquioxane; and a plurality of particles dispersed in said mixture, said particles lacking organic surface modification and being stabilized by the polysilsesquioxane as needed in the light source. (Appeal Br., Claims Appendix 8). REJECTIONS The Examiner maintains the following rejections. Claims 1, 3–9, 18, and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Dop (WO 2010/063955 A2, published June 10, 2010; relying upon US 2011/0236341 A1, published Sept. 29, 2011 as its translation). Claims 1, 3–6, 9, 10, 18, and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Rubinsztajn (US 2003/0071366 A1, published Apr. 17, 2003). Claims 7 and 8 are rejected under 35 U.S.C. § 103 as being unpatentable over the combined prior art of Rubinsztajn and Boardman (US 2006/0105480 A1, published May 18, 2006). Appeal 2019-004879 Application 14/405,194 3 OPINION Upon consideration of the evidence of record and each of Appellant’s contentions as set forth in the Appeal Brief, we determine that Appellant has not identified reversible error in the Examiner’s rejections (See generally Ans. mailed Apr. 5, 2019). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection). We sustain the rejections for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. The § 103 Rejections based on Rubinsztajn Appellant relies upon the same arguments for all of the claims, including claims 7 and 8 which were separately rejected over Rubinsztajn in view of Boardman (Appeal Br. 6, 7). It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264– 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). There is no dispute that Rubinsztajn is analogous art. Rather, Appellant argues that Rubinsztajn does not disclose or suggest “a mixture of polysilsesquioxane and polysiloxane” (Appeal Br. 5), nor does it disclose “particles lacking organic surface modification and being stabilized by the Appeal 2019-004879 Application 14/405,194 4 polysesquioxane as needed in the light source” (Appeal Br. 6; emphasis added). These arguments are not persuasive of reversible error for the reasons explained by the Examiner (Ans. 8–12 (Answer filed April 5, 2019)). Appellant’s argument fails to consider the breadth of the claim language (which, for example, encompasses no stabilization since “as needed” renders this a conditional limitation), the applied prior art as a whole, and the inferences that one of ordinary skill would have made. As the Examiner points out, Rubinsztajn encompasses mixtures of silicone epoxy resins, and suggests both polysilsesquioxane and polysiloxane (Ans. 6). Accordingly, one of ordinary skill would have readily inferred that the at least one silicone epoxy resin of Rubinsztajn may include both resins for predictable results (generally Ans.). Appellant has not sufficiently explained why the claimed subject matter is “more than the predictable use of prior art elements [or steps] according to their established functions.” KSR, 550 U.S. at 417; In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (“It is [generally considered] prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.”). The Examiner also points out that Rubinsztajn includes the same particles as claimed in Appellant’s composition, thus it is reasonable to expect that any needed stabilization would occur in the mixture that is rendered obvious by Rubinsztajn’s disclosures (e.g., Ans. 11, 12). Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” or even Appeal 2019-004879 Application 14/405,194 5 routine steps, that an ordinary artisan would employ); Cf. In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“In particular, the statement [in In re Wright] that a prima facie obviousness rejection is not supported if no reference shows or suggests the newly-discovered properties and results of a claimed structure is not the law.”) (overruling-in-part In re Wright, 848 F.2d 1216 (Fed. Cir. 1988)); see also Dillon, 919 F.2d at 692 (explaining that where the prior art gives reason or motivation to make the claimed invention, the burden and opportunity to produce evidence such as unexpected results then falls on an applicant to rebut that prima facie case). Appellant makes no further arguments regarding the Examiner’s rejections of any of the claims dependent on claim 1. Accordingly, we sustain the Examiner’s rejections of claims 1, 3–10, 18, and 19 based on Rubinsztajn, including the rejection of claims 7 and 8 based on Rubinsztajn and Boardman. The § 103 Rejection based on Dop Because we have sustained rejections of all the claims, it is not necessary to reach or discuss the remaining rejection based on Dop, as all of pending claims have been addressed and found unpatentable. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). Nonetheless, we summarily affirm that rejection as well, noting that Appellant’s argument that Dop is not analogous art is not well taken. The scope of the field of endeavor is a factual determination based on the scope of the application’s written description and claims. In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004). As pointed out by the Examiner, Dop is concerned with an optical composition as construed by the Examiner (Ans. 4, 5). Appeal 2019-004879 Application 14/405,194 6 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–10, 18, 19 103 Dop 1, 3–10, 18, 19 1, 3–6, 9, 10, 18, 19 103 Rubinsztajn 1, 3–6, 9, 10, 18, 19 7, 8 103 Rubinsztajn, Boardman 7, 8 Overall Outcome 1, 3–10, 18, 19 TIME PERIOD FOR RESPONSE 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