Ex Parte Fukai et al

Patent Trial and Appeal Board

Jan 23, 2017

13297008 (P.T.A.B. Jan. 23, 2017)

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.
13/297,008 11/15/2011 Yasuo Fukai 514242034200 8924
25227 7590 01/25/2017
MORRTSON fr FOFRSTFR T T P
EXAMINER
1650 TYSONS BOULEVARD GARLEN, ALEXANDER K
SUITE 400
MCLEAN, VA 22102 ART UNIT PAPER NUMBER
2875
NOTIFICATION DATE DELIVERY MODE
01/25/2017 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):
EOfficeVA @ mofo.com
PatentDocket @ mofo. com
pair_mofo @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YASUO FUKAI, YOSHIYUKI TAKAHIRA,
KOJI TAKAHASHI, YOSUKE MAEMURA, and
YOSHITAKA TOMOMURA
Appeal 2016-001429
Application 13/297,008
Technology Center 2800
Before ROMULO H. DELMENDO, MONTE T. SQUIRE, and BRIAN D.
RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1 and 3—20. We have jurisdiction. 35 U.S.C.
§ 6(b). We REVERSE.
1 According to the Appellants, the real party in interest is Sharp Kabushiki
Kaisha. Appeal Br. 2.
Appeal 2016-001429
Application 13/297,008
STATEMENT OF THE CASE
Appellants describe the invention as a headlamp having a laser
element and light emitting section for emitting fluorescence upon receiving
the laser beam. Spec., Abstract. The headlamp could be used for a vehicle.
Spec. 3:17—24. Claim 1, reproduced below with emphases added to certain
key recitations, is illustrative of the claimed subject matter:
1. A light emitting device comprising:
an excitation light source for emitting excitation light;
a light emitting section, including a sealing material
made from an inorganic material, for emitting fluorescence
upon receiving the excitation light emitted from the excitation
light source; and
a heat releasing section having a contact surface and a
bottom surface opposite from the contact surface, the contact
surface of the heat releasing section being in contact with the
light emitting section for releasing heat generated in the light
emitting section in response to the excitation light emitted
onto the light emitting section,
wherein the light emitting section and the heat releasing
section are provided so that the light emitting section is located
entirely within a range of 0.2 mm or less from the contact surface,
the excitation light source is a semiconductor laser and
provided on a side of the bottom surface with respect to the heat
releasing section,
the heat releasing section is made of a rigid transparent
material,
the excitation light passes through the heat releasing
section so that the light emitting section is irradiated with the
excitation light, and
the heat releasing section is placed between the
excitation light source and the light emitting section so that
the excitation light enters a light incident surface of the light
emitting section and fluorescent light is released from a
2
Appeal 2016-001429
Application 13/297,008
surface of the light emitting section, which is opposite from
the light incident surface.
Appeal Br.2 11 (Claims App’x).
REJECTION ON REFERENCES
On appeal, the Examiner maintains the rejection of claims 1 and 3—20
under 35 U.S.C. § 103 as unpatentable over Takeda et al., US 7,165,871 B2,
Jan. 23, 2007 (hereinafter “Takeda”) in view of Suenaga, US 2004/0120155
Al, June 24, 2004, and further in view of Ouderkirk et al., US
2004/0145895 Al, July 29, 2004 (hereinafter “Ouderkirk”). Ans. 2.
ANALYSIS
The Examiner finds that Takeda discloses a vehicle headlamp with a
light emitting section and most other recited elements of claim 1. Final Act.
3. The Examiner finds, however, that Takeda fails to disclose or suggest a
heat releasing section as recited by claim 1. Id. The Examiner finds that
Ouderkirk teaches a transparent sapphire heat releasing section as recited by
claim 1 and concludes that it would have been obvious to provide the
Ouderkirk heat sink on the light emitting section of Takeda “to provide
adequate heat dissipation for such light emitting section while not blocking
the light into or out of such section.” Id. at 7; see also id. at 4—5 (discussing
Ouderkirk); Ans. 4—5 (providing same explanation for motivation to
combine Ouderkirk and Takeda).
Appellants contend that a person of ordinary skill would have had no
reason to combine Ouderkirk’s heat sink with Takeda. Appeal Br. 6—9. In
2 In this decision, we refer to the Final Office Action mailed April 15, 2015
(“Final Act.”), the Appeal Brief filed July 16, 2015 (“Appeal Br.”), the
Examiner’s Answer mailed October 1, 2015 (“Ans.”), and the Reply Brief
filed November 16, 2015 (“Reply Br.”).
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Appeal 2016-001429
Application 13/297,008
particular, Appellants argue that the purpose of Ouderkirk’s transparent heat
sink is to prevent deterioration of polymeric SP and LP filters3 that are not a
part of the Takeda apparatus. Id. at 6—7; 9. A preponderance of the
evidence supports Appellants’ position. Ouderkirk describes its transparent
heat sink as being between the phosphor layer (i.e., the light emitting
section) and the interference filter (i.e., the polymeric LP filter). Ouderkirk
1 80. Ouderkirk explains that overheating may degrade its polymeric filters
(id. at | 84) and that placement of the transparent heat sink on the filter can
improve the filter’s lifetime (id. at | 85).
In the Appeal Brief, Appellants further contend Takeda’s device
would be inoperable if Ouderkirk’s SP reflector were added to it. Appeal
Br. 7—8. The Examiner responds by stating that the proposed modification
of Takeda would only add the transparent heat sink and not the polymeric SP
or LP filter/reflectors. Ans. 3^4.
Thus, the Examiner’s position is that even without adding the SP or
LP filters, it would have been obvious to add the transparent heat sink to
Takeda “in order to provide adequate heat dissipation for [Takeda’s] light
emitting section while not blocking the light into or out of such section” and
to allow cooling of Takeda’s reflector. Ans. 3. As explained above,
however, a preponderance of the evidence suggests that the purpose of
Ouderkirk’s heat sink is to prevent overheating of the polymeric SP and LP
3 Ouderkirk refers to the LP and SP filters as both filters and reflectors. See,
e.g., Ouderkirk || 36 (referring to LP reflector 24 and SP reflector 26), 68
(referring to LP and SP filters). Both terms appear to refer to the same
aspect. See, e.g., Ouderkirk || 9 (explaining that LP reflector reflects UV
light not absorbed by phosphor layer), 72 (explaining that LP filter does not
reflect shortwave light).
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Appeal 2016-001429
Application 13/297,008
filters. A preponderance of evidence in the present record does not establish
that Takeda (which lacks the SP and LP filters) would benefit from
Ouderkirk’s heat sink or that reflector 1144 of Takeda would be an
inadequate heat sink for Takeda’s purposes. Appeal Br. 8—9; Reply Br. 2—3.
The Examiner has therefore not adequately established a reason why a
person of skill would have add Ouderkirk’s heat sink to Takeda. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (“a patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the art.”). Accordingly, we do not
sustain the Examiner’s rejection of claim 1 or of claims that depend from
claim 1.
Independent claim 20 includes the same recitations concerning a heat
releasing section as claim 1. Thus, for the reasons explained above, we also
do not sustain the Examiner’s rejection of claim 20. We likewise do not
sustain the rejection of claims depending from claim 1 or claim 20.
DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
1 and 3—20.
REVERSED
4 Appellants assert that Takeda’s reflector 114 would be an adequate heat
sink for fluorescent material 112 because it is metal. Appeal Br. 8—9. The
Examiner appears to concede that reflector 114 is metal. Ans. 4 (referring to
“metal reflector 114 of Takeda”). Moreover, in an earlier Office Action, the
Examiner took the position that reflector 114 could be a heat releasing
section. August 7, 2014, Office Action 3. We have not, however, identified
a teaching of Takeda expressly stating whether or not reflector 114 is metal.
In any event, our opinion does not rely on this particular fact.
5