Ex Parte 7,547,114 B2 et al

Patent Trial and Appeal BoardApr 25, 2014

90011694 (P.T.A.B. Apr. 25, 2014)

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. 90/011,694 05/16/2011 7,547,114 B2 1055.101 1352 53720 7590 04/25/2014 Chen Yoshimura LLP Attention Ying Chen 333 W. El Camino Real, Suite 380 Sunnyvale, CA 94087 EXAMINER GAGLIARDI, ALBERT J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 04/25/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YLX LTD. Patent Owner ____________ Appeal 2014-003969 Reexamination Control 90/011,694 Patent US 7,547,114 B2 Technology Center 3900 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2014-003969 Reexamination Control 90/011,694 Patent US 7,547,114 B2 2 YLX Ltd., the owner (hereinafter “Owner”) of the Patent under reexamination (hereinafter the “’114 Patent”), appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 1-4, 6-10, 12, 13, 15-23, and 26-32. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We affirm-in-part. I. STATEMENT OF THE CASE This reexamination proceeding arose from a third-party request for ex parte reexamination filed by Dariush G. Adli (Request for Ex Parte Reexamination filed May 16, 2011, hereinafter “Request”) for Requestor. The ’114 Patent issued to Yi Li and Li Xu on June 16, 2009 from Application 11/830,311 filed on July 30, 2007. According to the Request, claims 1-4, 7-10, 12, 13, 15, 26-29, 31, and 32 of the ’114 Patent are anticipated by Japanese Patent Publication No. 2004-341105A to Kato (“Kato”) (Request 18-31); claims 1, 14, 16-19, 27, and 30-32 are unpatentable over Kato in view of U.S. Patent Publication No. 2007/0019408 A1 to McGuire (“McGuire”)(Request 36-51); and claims 6, 20, 21, 23, and 24 are unpatentable over Kato in view of U.S. Patent No. 7,070,300 B2 to Harbers (“Harbers”)(Request 51-54). Kato was not cited during the prosecution of the ’114 Patent. Owner appeals from the Examiner’s rejection of the claims of the ’114 Patent over Kato, McGuire, and Harbers during reexamination. Appeal 2014-003969 Reexamination Control 90/011,694 Patent US 7,547,114 B2 3 A. INVENTION The ’114 Patent relates to generating high brightness multicolor light using wavelength conversion (col. 1, ll. 8-10). B. CLAIMS Claims 1-4, 6-24, and 26-32 are subject to reexamination and have been rejected. Claims 1-33 are original patent claims. Claims 5, 25, and 33 are not subject to reexamination. Claims 1, 27, 31, and 32 are independent. Claims 1 and 31 are illustrative. 1. An illumination device for providing multicolor light, comprising: a light source for generating an excitation light in a blue wavelength region; a plate including two or more segments, wherein one or more of the segments each contains a wavelength conversion material capable of absorbing the excitation light and emitting light having wavelengths different from that of the excitation light, wherein a first segment contains a first wavelength conversion material, and a second segment either contains a different wavelength conversion material which absorbs a portion of the excitation light and transmits a portion of the excitation light to produce a combined light or contains no wavelength conversion material, wherein a part of the plate is disposed on an optical path of the excitation light, and wherein the plate and the excitation light are moveable relative to each other so that different segments are exposed to the excitation light at different times; and a dichroic element disposed between the wavelength conversion material and the light source, the dichroic element transmitting the excitation light and reflecting light emitted by the wavelength conversion materials. 31. A method for generating multicolor light, comprising: generating an excitation light using a light source; directing the excitation light onto a segment of a plate, the plate having two or more segments, wherein one or more of the segments each Appeal 2014-003969 Reexamination Control 90/011,694 Patent US 7,547,114 B2 4 contains a wavelength conversion material capable of absorbing the excitation light and emitting light having wavelengths different from that of the excitation light, wherein a first segment contains a first wavelength conversion material, and a second segment either contains a different wavelength conversion material or contains no wavelength conversion material; moving the plate and the excitation light relative to each other so that different segments are exposed to the excitation light at different times to generate emitted light of different colors; projecting the light of different colors emitted from the wavelength conversion materials toward a display screen using a microdisplay imager; modulating the light source; controlling the relative movement of the plate and the light source, the microdisplay imager, and the modulation of the light source in a synchronized manner to generate an image on the display screen. C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: McGuire US 2007/0019408 A1 Jan. 25, 2007 Harbers US 7,070,300 B2 July 4, 2006 Kato JP 2004-341105 A Dec. 2, 2004 Claims 31 and 32 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Kato. Claims 1-4, 7-10, 12, 13, 15-19, and 26-30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kato in view of McGuire. Claims 6 and 20-23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kato, McGuire in further view of Harbers. Appeal 2014-003969 Reexamination Control 90/011,694 Patent US 7,547,114 B2 5 II. ISSUES The main issues before us are whether the Examiner has erred in finding: 1) Kato teaches “modulating the light source” and “controlling… the modulation of the light source,” as recited in claim 31 (emphases added); and 2) the combination of Kato and McGuire teaches or would have suggested “a light source for generating an excitation light in a blue wavelength region” wherein “a second segment either contains a different wavelength conversion material… or contains no wavelength conversion material,” as recited in claim 1 (emphases added)? III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. The ’114 Patent 1. The ’114 Patent’s Figure 4 is reproduced below: Appeal 2014-003969 Reexamination Control 90/011,694 Patent US 7,547,114 B2 6 Figure 4 shows a projection system comprising light source 100, focusing optics 102, rotary wheel with wavelength conversion materials 104, light integrator 202, relay optics 204, prism 206, micro-display imager 208, and projection lens 210 (col. 4, ll. 52-56); wherein the light source is a light emitting diode or a laser diode emitting in the ultraviolet (UV) and/or blue region (Abstract). 2. The ’114 Patent’s Figure 3b is reproduced below: Figure 3b shows rotary wheel 104 divided into two or more segments each containing a wavelength conversion material (col. 4, ll. 17-19). Appeal 2014-003969 Reexamination Control 90/011,694 Patent US 7,547,114 B2 7 Kato 3. Kato’s Figure 1 is reproduced below: Figure 1 shows a projection-type display system wherein ultraviolet radiation from light source 102 enters color wheel 102 first (¶ [0018]), then light modulation is carried out with spatial-light modulator 106 via prism 105 through relay lens 103 and reflective mirror 104, and the image is projected onto a screen using projection lens 107 (¶ [0020]). 4. Kato’s Figure 3(a) is reproduced below: Appeal 2014-003969 Reexamination Control 90/011,694 Patent US 7,547,114 B2 8 Figure 3(a) discloses a color wheel, wherein when the color wheel rotates, one by one, the ultraviolet radiation from the light source irradiates with the field 401 → 402 → 403 and emits the colored light of a repetition of R→ G→ B (¶ [0034]). 5. A colored presentation becomes possible by driving these colored light and spatial-light-modulation machines by pulse-width modulation (¶ [0035]). McGuire 6. McGuire discloses a light source 110 that produces high energy (shorter wavelength) light and is capable of exciting a phosphor, wherein the light source produces ultraviolet (UV) or blue light and excites phosphors that produce visible light therefrom (¶ [0024]). 7. In an example, a phosphor wheel illuminator includes a blue light source for illuminating the phosphor color wheel, and the color wheel comprises three different regions each producing a different color light with a first region comprised of materials that are substantially non-fluorescing (¶ [0033]). IV. ANALYSIS 35 U.S.C. § 102(b) With respect to claims 31 and 32, Owner contends “[m]odulating the light source itself [as claimed] is different from spatial modulation of the converted color lights [as set forth in Kato]” (App. Br. 6). In particular, Owner contends “Kato does not disclose a modulator that modulates the light source 101, let alone the synchronized manner of modulation of the Appeal 2014-003969 Reexamination Control 90/011,694 Patent US 7,547,114 B2 9 light source as required by the ‘controlling’ steps of Claims 31 and 32” (App. Br. 7). Kato discloses rotating the color wheel, irradiating the color wheel with the ultraviolet radiation from a light source, and emitting colored light from the wheel (FF 3-4), wherein a colored presentation becomes possible by driving these colored light and the spatial-light modulator (FF 5). Although we agree with the Examiner that “the terms ‘driving’ and ‘pulse width modulation’ are terms of art associated with intensity modulation of an LED” (Ans. 15), we cannot find any clear teaching in the sections of Kato referenced by the Examiner of any “driving” or “pulse width modulation” of the LED, i.e., the light source itself, as required by claim 31. That is, we find no clear teaching in the referenced sections of Kato of the LED 101 ever being modulated. Instead, the cited portions of Kato merely disclose the colored light and the spatial-light modulator are driven using pulse-width modulation (FF 5). Since the Examiner has not made a clear distinction as to which embodiments of Kato teach the “modulating the light source” and “controlling… the modulation of the light source” (claim 31), the Examiner has failed to meet the initial burden of proof required for the anticipation rejection pursuant to 35 U.S.C. § 102(b). Therefore, on this record, we are constrained to reverse the Examiner’s rejection of representative claims 31 and 32 falling therewith over Kato. 35 U.S.C. § 103(a) As for independent claims 1 and 27, although Owner concedes “McGuire describes a light source which may be a UV or blue light source” Appeal 2014-003969 Reexamination Control 90/011,694 Patent US 7,547,114 B2 10 and also “employing a blue light source for illuminating the phosphor color wheel which has a non-fluorescing region” (App. Br. 10), Owner argues “it would not have been obvious to combine Kato with McGuire to arrive at [the claimed invention]” (App. Br. 9). In particular, Owner asserts if Kato were to be modified by the teachings of McGuire, “the resulting system would fail to function” (App. Br. 10). Thus, Owner asserts “[i]f the light source is changed from UV to blue light, the phosphors will need to be changed so that they will absorb blue light, and some of the reflection films” will also need to be changed “so that they pass blue light” (id.). However, the Examiner finds “McGuire teaches both a three- phosphor design using a UV light source and a two-phosphor design using a blue light source with a non-fluorescing section” (Ans. 21) and concludes “the McGuire reference demonstrates that the modification of Kato as proposed … would be within the skill of a person of ordinary skill in the art” (id.). The Examiner explains “the proposed modification is a simple substitution of some known elements for other known elements to obtain predictable results” (Ans. 22). That is, although the Examiner agrees with Owner that to change the light source in Kato to a blue light, “the phosphors would need to be changed” (Ans. 19) and that “certain reflection films may need to be changed or altered” (Ans. 20), the Examiner concludes “such substitutions or replacements would have been both routine and predictable to a person of ordinary skill in the art” (id.) We agree with the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness. Appeal 2014-003969 Reexamination Control 90/011,694 Patent US 7,547,114 B2 11 As discussed above, Kato discloses a projection system light source 101 for generating an excitation light (FF 3) and a wheel/plate 102 including two or more segments (FF 4). The ’114 Patent’s claimed projection system similarly shows a light source 100 (FF 1) and a wheel/plate 104 including two or more segments (FF 2). Thus, the only claimed feature missing from Kato is an expressed teaching that the light source generates excitation light “in a blue wavelength” region wherein one segment in the wheel/plate “either contains a different wavelength conversion material… or contains no wavelength conversion material” (claim 1). However, as Owner concedes, McGuire discloses “a light source which may be a UV or blue light source” and also “employing a blue light source for illuminating the phosphor color wheel which has a non- fluorescing region” (App. Br. 10; FF 6-7). That is, McGuire discloses “a light source for generating an excitation light in a blue wavelength region” and a plate/wheel with a region that “contains no wavelength conversion material,” as required by claim 1. Further, we agree with the Examiner “the McGuire reference demonstrates that the modification of Kato as proposed [by replacing Kato’s UV light source with blue light source, and thus providing the wheel with a non-fluorescing region] would be within the skill of a person of ordinary skill in the art” (Ans. 21). That is, McGuire discloses that blue light source may be used in place of UV light source (FF 6), and that, using a blue light source, a 2-phosphor design with a region of no wavelength conversion material would be used (FF 7). We agree with the Examiner “the proposed Appeal 2014-003969 Reexamination Control 90/011,694 Patent US 7,547,114 B2 12 modification is a simple substitution of some known elements for other known elements to obtain predictable results” (Ans. 22). The Supreme Court has determined that the conclusion of obviousness can be based on the background knowledge possessed by a person having ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The skilled artisan is “[a] person of ordinary creativity, not an automaton.” Id. at 421. We are not persuaded, and Owner has presented no persuasive evidence that such application of a blue light source instead of a UV light source was “uniquely challenging or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). In fact, even the ’114 Patent indicates that a blue light source may be used in place of a UV light source (FF 1). Although Owner asserts that if Kato were to be modified by the teachings of McGuire, “the resulting system would fail to function” since “the phosphors will need to be changed so that they will absorb blue light, and some of the reflection films” will also need to be changed “so that they pass blue light” (App. Br. 10), Owner appears to view the combination in a different perspective than that of the Examiner. The issue here is not whether the skilled artisan would have bodily incorporated the entire system of McGuire into the entire system of Kato without further modification, but whether the skilled artisan, upon reading McGuire’s teaching of a blue light source in place of a UV light source, would have found it obvious to use a blue light source in place of the UV light source of Kato. We find no error Appeal 2014-003969 Reexamination Control 90/011,694 Patent US 7,547,114 B2 13 with the Examiner’s ultimate legal conclusion that it would have been obvious to use a blue light source in the system of Kato (Ans. 19-20). Although the Examiner agrees with Owner that, to change the light source in Kato to a blue light source, “the phosphors would need to be changed” (Ans. 19), and that “certain reflection films may need to be changed or altered” (Ans. 20), we agree with the Examiner’s finding “such substitutions or replacements would have been both routine and predictable to a person of ordinary skill in the art” (id.). Accordingly, we find Owner has not shown the Examiner erred in rejecting independent claim 1 and independent claim 27 falling therewith over Kato and McGuire. Owner does not provide separate arguments for dependent claims 2-4, 7-10, 12, 13, 15-19, 26, and 28-30 depending respectively from claims 1 and 27 (App. Br. 11). Accordingly, claims 2-4, 7-10, 12, 13, 15-19, 26, and 28-30 fall with claims 1 and 27. As for claims 6 and 20-23, Owner merely contends “Harbers does not cure this deficiency of Kato and McGuire” (id.). However, as discussed above with respect to claim 1 from which claims 6 and 20-23 depend, we find no deficiency with the Examiner’s reliance on Kato and McGuire. Accordingly, we also affirm the Examiner’s rejection of claims 6 and 20-23 over Kata and McGuire in further view of Harbers. Appeal 2014-003969 Reexamination Control 90/011,694 Patent US 7,547,114 B2 14 V. SUMMARY/CONCLUSION We sustain the Examiner’s rejection of claims 1-4, 6-10, 12, 13, 15-23, and 26-30 but reverse the Examiner’s rejection of claims 31 and 32. VI. DECISION The Examiner’s decision rejecting claims 1-4, 6-10, 12, 13, 15-23, and 26-30 is affirmed, but the decision adverse to the patentability of claims 31 and 32 is reversed. Requests for extensions of time in this proceeding are governed by 37 C.F.R. §§ 1.956 and 41.79(e). AFFIRMED-IN-PART Patent Owner: Chen Yoshimura LLP Attention Yin Chen 333 W. El Camino Real Suite 380 Sunnyvale, CA 94087 Third Party Requester: Dariush G. Adli Adli Law Group P.C. 633 West Fifth Street Suite 5880 Los Angeles, CA 90071 kis