Ex Parte SchmidtDownload PDFPatent Trial and Appeal BoardMay 27, 201411911675 (P.T.A.B. May. 27, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PETER J. SCHMIDT ____________ Appeal 2012-007085 Application 11/911,675 Technology Center 2800 ____________ Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007085 Application 11/911,675 2 Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-9 under 35 U.S.C. § 103(a) as unpatentable over Mueller1 in view of Menkara.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. ANALYSIS Independent claims 1 and 9 are illustrative of the claimed subject matter (see Claims App’x) and each recites the same formula for an alkaline earth metal sulfide phosphor compound. The sole subject of the dispute in this appeal relates to a part of that formula as discussed below. “On appeal to the Board, an applicant can overcome a rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.” In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (emphasis omitted). After thorough review of the respective positions provided by Appellant and the Examiner, we AFFIRM the § 103(a) rejection on appeal for essentially the reasons presented by the Examiner, including the Response to Argument section. We add the following primarily for emphasis. The only issue in dispute is whether the formula for the alkaline earth metal sulfide phosphor compound disclosed in Menkara teaches or suggests the claimed alkaline earth metal sulfide phosphor compound formula (App. Br. 6, 7). 1 Mueller-Mach et al., (hereinafter “Mueller”), US 2004/0256974 A1, published Dec. 23, 2004. 2 Menkara et al., US 2005/0023546 A1, published Feb. 3, 2005. Appeal 2011-007085 Application 11/911,675 3 Appellant’s argument that the claimed subject matter is nonobvious because the formula of Menkara does not disclose the claimed relationship of “1-y” for the sulfur and “y” for the selenium as required by claims 1 and 9, with 0 ˂ y ˂ 1 (App. Br. 6, 7; Reply Br. 2-4) is unavailing as it fails to consider the prior art as a whole. Menkara teaches phosphors useful for white light emitting diodes of the formula MSxSey: B, and that x and y (each of the sulfur and selenium components of the compound) may be any value between about 0 and 1, “subject to the proviso that the sum of x and y is equal to any number in the range of between about 0.75 and about 1.25” (Menkara abstract; Ans. 7). Appellant’s argument focuses on the fact that Menkara does not identically disclose the relation of sulfur and selenium of “1-y” and “y” as depicted in their formula. However, the amounts of sulfur and selenium in Menkara overlap the claimed ranges for these same components in Appellant’s phosphor compound. When claimed ranges overlap or lie inside ranges disclosed by the prior art for every component in a claim, a prima facie case of obviousness is established. Cf., e.g., In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Indeed, the law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. These cases have consistently held that Appellant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Accordingly, since the Examiner has established a reasonable basis to conclude that the claimed invention would have been obvious, the burden shifts to the Appellant to rebut the prima facie case by providing evidence of Appeal 2011-007085 Application 11/911,675 4 unexpected results, based on comparisons with the closest prior art and commensurate in scope with the claimed subject matter, or a showing that the prior art teaches away from the claimed invention in any material respect. See, e.g., In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003); and Geisler, 116 F. 3d at 1469-70. Appellant has not met this burden on this record. Accordingly, we affirm the § 103 rejection on appeal. We affirm the Examiner’s decision to reject all of the pending claims. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED lp Copy with citationCopy as parenthetical citation