Ex Parte Brukilacchio et al

Patent Trial and Appeal BoardNov 13, 2012

11291369 (P.T.A.B. Nov. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/291,369 12/01/2005 Thomas J. Brukilacchio 0325/US 8925 30333 7590 11/14/2012 FRANCIS J. CAUFIELD 6 APOLLO CIRCLE LEXINGTON, MA 02421-7025 EXAMINER REAMES, MATTHEW L ART UNIT PAPER NUMBER 2893 MAIL DATE DELIVERY MODE 11/14/2012 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 THOMAS J. BRUKILACCHIO, CHARLES A. DEMILO, DAVID A. DOYLE, and RYAN C. WILLIAMSON ____________ Appeal 2010-004128 Application 11/291,369 Technology Center 2800 ____________ Before JOHN A. JEFFERY, DENISE M. POTHIER, and DAVID C. MCKONE, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004128 Application 11/291,369 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-11 and 13-23. Claims 12 and 24-28 have been canceled. App. Br. 5.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Invention Appellants’ invention relates to a deposition process that sprays a phosphor matrix coating on a light emitting diode (LED) array to achieve high color uniformity, consistency, and efficiency. See generally Abstract. Claim 1 is reproduced below with the key disputed limitation emphasized: 1. A method of depositing uniform layers of a matrix containing light converting materials onto light emitting diode chips, said method comprising the steps of: mixing at least powder of a light converting material in a silicone based elastomer support matrix to provide a homogeneous mixture having a substantially uniform distribution of said material throughout; introducing a carrier into said mixture of light converting material and support matrix to reduce the viscosity of said mixture for further processing; atomizing said mixture; and, depositing one or more layers of said mixture onto at least one light emitting diode chip to form at least one substantially uniform matrix layer containing said light converting material. The Examiner relies on the following as evidence of unpatentability: Izuno US 2004/0061433 A1 Apr. 1, 2004 Suenaga US 2005/0194601 A1 Sept. 8, 2005 1 Throughout this opinion, we refer to: (1) the Appeal Brief filed December 1, 2008 and supplemented January 30, 2009; (2) the Examiner’s Answer mailed April 28, 2009; and (3) the Reply Brief filed June 16, 2009. Appeal 2010-004128 Application 11/291,369 3 The Rejection The Examiner rejected claims 1-11 and 14-23 under 35 U.S.C. § 103(a) as unpatentable over Izuno and Suenaga. Ans. 3-6. The Contentions Regarding representative claim 1, the Examiner finds that Izuno teaches all the limitations, except for mixing a light converting powder material in a silicone-based elastomer support matrix. Ans. 3-4. In particular, the Examiner finds Izuno teaches mixing a light converting powder material in a silicone resin matrix (Ans. 3) but not in a silicone-based elastomer matrix, for which Suenaga is cited (Ans. 4, 7). Appellants argue that Izuno teaches away from combining with Suenaga. App. Br. 13. Appellants contend that Izuno describes the disadvantages of using polymers as support matrices for fluorescent substances and recommends using ceramic or glass. App. Br. 14-15; Reply Br. 2. Thus, Appellants conclude an ordinarily skilled artisan would not look to Suenaga’s teachings of using a polymeric support medium, such as a silicone elastomer, for a phosphor in an LED and that combining Suenaga with Izuno would change Izuno’s principle of operation. App. Br. 13, 15-16. ISSUE Under § 103, has the Examiner erred in rejecting claim 1 by proposing to use Suenaga’s teaching of a silicone-based elastomer as the silicone resin in Izuno’s support matrix? More specifically, does Izuno discourage an ordinarily skilled artisan from following the path of using Suenaga’s silicone-based elastomer for Izuno’s support matrix? Appeal 2010-004128 Application 11/291,369 4 ANALYSIS Based on the record before us, we find no error in the Examiner’s rejection of claim 1, which recites, in pertinent part, mixing a light converting powder material in a silicone-based elastomer support matrix. The Examiner finds that Izuno teaches mixing a powder of light converting material in a support matrix. Ans. 3. Appellants do not challenge this finding (see App. Br. 13-16), but rather concentrate on Izuno’s Background Art section in arguing that Izuno teaches away from using a silicone elastomer support matrix. See App. Br. 13-14. We disagree. We acknowledge Izuno states that the prior art use of resins in LEDs is subject to deterioration and discoloration. See ¶¶ 0006-09. Yet and notably, the Examiner explains (Ans.7) that Izuno explicitly teaches that the inventive method can be applied in forming a coating layer made from a silicone resin containing a fluorescent substance and to organic resins of the prior art. ¶ 0080. This indicates that Izuno did not intend to exclude all resins from the invention, and contrary to Appellants’ assertions, Izuno’s invention is not limited to using ceramic or glass (App. Br. 14-15; Reply Br. 2). In further support of this position, Izuno discusses on several occasions using resins, including a silicone resin, within the coating material or mixing resins with a light converting powder. For example, Izuno describes mixing a fluorescent powder substance in a silicone resin to achieve a desired color blending. ¶ 0156. Izuno further provides an example (designated Example 9) of a coating layer having a fluorescent material mixed with silicone resin. See heading and ¶ 0377. The mention of silicone resin in Izuno is therefore more than “an aside[.]” Reply Br. 2. Appeal 2010-004128 Application 11/291,369 5 All these teachings in Izuno illustrate that a resin may not be desirable as a support matrix in some embodiments (see ¶¶ 0006-09), but may nonetheless be included in other embodiments (¶¶ 0080, 0156, 377). In essence, Izuno teaches and suggests that an ordinarily skilled artisan would have recognized the advantages and disadvantages in selecting a silicone resin support matrix for an LED application, and that balancing such engineering trade-offs involves design considerations well within the level of ordinarily skilled artisan. Also, even assuming, without deciding, that using a silicon resin as a support matrix would render Izuno’s device somewhat inferior, this does not make a known or obvious composition patentable. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Rather, “[a] reference may be read for all that it teaches, including uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (citations omitted); see also id. at 1334 (The Federal Circuit has explained “that just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.”). Based on the above, we find that Appellants have presented unpersuasive evidence that Izuno discourages an ordinarily skilled artisan from following the path of using a support matrix containing a silicone- based elastomer as taught by Suenaga for Izuno’s support matrix. That is, Suenaga teaches a known silicone resin in an LED environment that includes a silicone elastomer. Suenaga further teaches and suggests that using a silicone elastomer as the silicone resin, such as that discussed in Izuno, would have improved heat-resistance and reliability. See Ans. 4 (citing Suenaga ¶ 0150), 7. Additionally, as stated above, Izuno does not Appeal 2010-004128 Application 11/291,369 6 discourage an ordinarily skilled artisan from following this path set out by Suenaga. Independent claims 3 and 23 are similar in scope with independent claim 1, and the above discussion equally applies to these claims. For the foregoing reasons, Appellants have not persuaded us of error in the rejection of independent claim 1 and claims 2-11 and 13-23 not separately argued with particularity. CONCLUSION The Examiner did not err in rejecting claims 1-11 and 13-23 under § 103. DECISION The Examiner’s decision rejecting claims 1-11 and 13-23 is affirmed. 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 rwk