Ex Parte Juang et al

Patent Trial and Appeal Board

Jun 12, 2017

13158931 (P.T.A.B. Jun. 12, 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.
13/158,931 06/13/2011 Yuan-Ren JUANG 4448/0410PUS1 1477
60601 7590 06/12/2017
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
EXAMINER
EDMONDSON, LYNNE RENEE
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
06/12/2017 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 YUAN-REN JUANG, JEN-SHRONG UEN,
and CHIH-LUNG LIN
____________

Appeal 2017-002311
Application 13/158,931
Technology Center 1700
____________

Before JEFFREY T. SMITH, BRIAN D. RANGE,
and LILAN REN, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 2, 6–13, 15–19, 35, 38 and 42.1 We have jurisdiction under
35 U.S.C. § 6.
We REVERSE.

1 The rejection of pending claims 36-37, 39-41, 43, and 44 have been
withdrawn by the Examiner. (Final Act. 8, 9; Ans. 2).
Appeal 2017-002311
Application 13/158,931

2
STATEMENT OF THE CASE
Appellants’ invention relates to phosphor material having high
brilliance, which can be used in combination with a semiconductor light-
emitting element to fabricate a light emitting device of high brilliance.
(Spec. 3). Independent claim 1 is reproduced below:
1. A phosphor, comprising a constituent having formula
CapSrqZnmAaBbOtNn:Eur,
wherein A is selected from the group of aluminum and yttrium;
B is selected from the group of silicon and germanium;
0.2≤p≤0.65;
0.342≤q≤0.792;
0≤m≤0.005;
0≤t≤0.3;
0.00001≤r≤0.l;
a=l,
0.8≤b≤1.2; and
2.7≤n ≤3.1; and
a normalized dissolved content of calcium of the phosphor is
1~25 ppm of weight;
wherein the normalized dissolved content of calcium of the
phosphor is equal to a calcium dissolved content of the phosphor
in a solution/a calcium detected content of the phosphor.

The Examiner maintains the following rejection:
Claims 1, 2, 6–13, 15–19, 35, 38 and 42 are rejected under 35
U.S.C. § 103(a) as unpatentable over Hirosaki et al. (US
2007/0007494 A1 Pub. Jan. 11, 2007) (hereinafter Hirosaki).

Appeal 2017-002311
Application 13/158,931

3
OPINION2
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have identified reversible error in the Examiner’s
determination that one of ordinary skill in the art would have expected the
phosphor of Hirosaki to inherently have properties required by independent
claims 1 and 11. Accordingly, we reverse the Examiner’s § 103(a) rejection
of the above claims for the reasons set forth in the Briefs. We add the
following.
Appellants argue the Examiner’s rejection is improper because
Hirosaki fails to disclose or suggest that the amount of Ca may be within a
specific range of 0.2–0.65 and the amount of Sr may be within a specific
range of 0.342–0.792. In addition, Hirosaki silent regarding any normalized
dissolved content of calcium of the phosphor. In other words, Hirosaki fails
to disclose, or even suggest the composition, as well as the normalized
dissolved content of calcium of 1~25ppm by weight, as recited in claim 1
and of the present application. In view of the above, one skilled in the art
would not find a teaching or suggestion for choosing the selected elements
along with the specific ratios thereof from the very broad disclosure of
Hirosaki. (App. Br. 5–8). Appellants also argue phosphors having the same
formula can have different normalized dissolved content of calcium. (Id. at
6–7). Appellants argue the phosphor manufactured according to the process
disclosed in Hirosaki is different from that of those manufactured by the
process according to the present application. (Id. at 8–10).

2 We limit our discussion to independent claims 1 and 11.
Appeal 2017-002311
Application 13/158,931

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The Examiner has not established Hirosaki discloses or suggests that
the amount of Ca may be within a specific range of 0.2–0.65 and the amount
of Sr may be within a specific range of 0.342–0.792. The Examiner found
Hirosaki discloses the phosphor comprising MaAbDcEdXe wherein M is at
least Eu and A is Ca and Sr. (Final Act 3). The Examiner found Hirosaki’s
phosphor requires M and A to be present in amounts where, a+b=1 and a
within the parameter of 0.00001≤a≤0.1. (Final Act 3; Hirosaki ¶ 49). The
Examiner has not identified a teaching that would have indicated both Ca
and Sr would both be present within a specific range of 0.2–0.65 and 0.342–
0.792, respectively as required by the claimed invention.
The Examiner also has not established that the phosphor
manufactured according to the process disclosed in Hirosaki is substantially
the same as those manufactured by the process according to the present
application and resulting in the phosphor having the normalized dissolved
content of calcium required by the claimed invention. Appellants have
presented evidence from the Specification and the Declaration, submitted
May 26, 2015, to establish that phosphor having the same composition does
not necessarily have the same normalized dissolved content of calcium.
(App. Br. 6, 14–17). The Examiner has not presented an accurate
assessment of the evidence presented by Appellants. (Ans. 13). The
Examiner does not appear to appreciate that the evidence establishes
phosphor that is compositionally the same but is formed by different
techniques does not always result in the same normalized dissolved content
of calcium. Appellants also identified US 8,030,839 as providing an
explanation that they believe phosphor having the same composition can
have distinct microstructures thus resulting in the difference in content of
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Application 13/158,931

5
normalized dissolved calcium. (App. Br. 10). The Examiner has not
provided a persuasive technical explanation why the evidence presented is in
error.
For the foregoing reasons and those stated in the Brief, we determine
that the Examiner’s conclusion of obviousness is not supported by facts.
“Where the legal conclusion [of obviousness] is not supported by facts it
cannot stand.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, the Examiner’s rejection of claims 1, 2, 6–13, 15–19, 35, 38
and 42 over Hirosaki is reversed.
ORDER
The Examiner’s prior art rejections of claims 1, 2, 6–13, 15–19, 35, 38
and 42 under 35 U.S.C. § 103(a) are reversed.

REVERSED