Ex Parte Schmidt et al

Patent Trial and Appeal BoardMar 22, 2017

12525085 (P.T.A.B. Mar. 22, 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. 12/525,085 02/02/2010 Peter J. Schmidt 2007P00173 WOUS 5016 136186 7590 03/24/2017 T limileHs; T T .P (Patent T aw firming EXAMINER 370 West Trimble Road San Jose, CA 95131 YANG, JAY ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 03/24/2017 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): nancy.glynn@philips.com us-ip@patentlawgroup.com IPG_Docketing @philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER J. SCHMIDT, LUCAS JOHANNES ANNA MARIA BECKERS, JOERG MEYER, BABY-SERIYATI S CHREINEMACHER, and HERBERT S CHREINEM ACHER Appeal 2016-001842 Application 12/525,085 Technology Center 1700 Before LINDA M. GAUDETTE, JULIA HEANEY, and LILAN REN, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 1 This Decision includes citations to the following documents: Specification filed July 30, 2009 (“Spec.”); Final Office Action mailed Dec. 18, 2014 (“Final”); Appeal Brief filed Apr. 16, 2015 (“Appeal Br.”); Examiner’s Answer mailed Sept. 28, 2015 (“Ans.”); and Reply Brief filed Nov. 25, 2015 (“Reply Br.”). Appeal 2016-001842 Application 12/525,085 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1—14. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Claim 14 is representative of the invention, and is reproduced below: 14. A monolithic ceramic luminescence converter comprising a composite material comprising at least one luminescent compound comprising at least one activator in a host lattice and at least one non-luminescent compound, wherein the luminescent compound and the non-luminescent compound each comprise silicon and nitrogen and wherein the host lattice and the non-luminescent compound are different materials. Appeal Br. 13 (Claims App’x). Claim 1, the only other independent claim on appeal, recites “[a]n illumination system comprising a radiation source and a monolithic ceramic luminescence converter” comprising the same features recited in claim 14. Id. at 10. The claims stand rejected under 35 U.S.C. § 103(a) as unpatentable over the following combinations of references (Final 3—6): 1. claims \-A and 6—14 over Schmidt et al. (WO 2006/072918 Al, pub. July 13, 2006 (citations to US 2008/0165523 Al, pub. July 10, 2008 (“Schmidt”))) and Tamaki et al. (US 2004/0135504 Al, pub. July 15, 2004 (“Tamaki”)); and 2. claim 5 over Schmidt, Tamaki, and Ketcham et al. (US 5,175,132, iss. Dec. 29, 1992 (“Ketcham”)). 2 Appellants identify the real party in interest as Koninklijke Philips Electronics N.V. Appeal Br. 2. 2 Appeal 2016-001842 Application 12/525,085 The Examiner finds Schmidt discloses a monolithic ceramic luminescence converter comprising a “phosphor (i.e., activator doped in host)” (Final 4) which meets the claim limitation “at least one luminescent compound comprising at least one activator in a host lattice” (claims 1 and 14; see Final 4 (“Schmidt. . . discloses partially doped inorganic lattice compounds as phosphor materials.”)). The Examiner finds Tamaki discloses metal-doped luminescent lattice compounds (i.e., phosphors), and that one of ordinary skill in the art would have incorporated one of these compounds into Schmidt’s converter based on Schmidt’s teaching that the converter may include additional phosphor materials. Final 4. The Examiner finds the incorporated metal-doped luminescent lattice compound also would include undoped host lattice material. Id. The Examiner further finds this undoped lattice material meets the claim limitation of a “non-luminescent compound” that is a different material than the host lattice of Schmidt’s luminescent compound. Id. at 4—5. See also Appeal Br. 8 (“Restated, the rejection combines a first phosphor described in Schmidt with a second phosphor described in Tamaki, and takes the position that the second phosphor includes a doped, luminescent portion, and an undoped, non-luminescent portion.”). Appellants argue the Examiner reversibly erred in finding Tamaki’s metal-doped luminescent lattice compounds include a non-luminescent compound. Appeal Br. 8. Appellants contend that the Examiner’s finding is contrary to the meaning of the term “phosphor,” i.e., “a luminescent material.” Id. Appellants explain that the Examiner’s position is analogous to an argument that salt water contains a fresh water portion by virtue of the presence of water molecules (corresponding to the host lattice of Tamaki’s 3 Appeal 2016-001842 Application 12/525,085 phosphor material) between the sodium and chloride ions (corresponding to the dopant in Tamaki’s phosphor material). Reply Br. 3. Appellants also argue the Examiner has not identified a disclosure in the references to support a finding that Tamaki’s lattice comprises a non-luminescent compound as recited in claims 1 and 14. See Appeal Br. 8. In response, the Examiner contends Appellants’ position is based on an overly narrow interpretation of the claim term “non-luminescent compound.” Ans. 7. Having reviewed the Specification, we are not persuaded by the Examiner’s argument. Rather, we find Appellants’ interpretation of the claim term “non-luminescent compound” as limited to a distinct, non- luminescent material that does not encompass the matrix portion of a phosphor material, is consistent with the use of this term in the Specification. See, e.g., Spec. 2:15—25 (describing a prior art non- luminescent material as a material used in combination with a phosphor, but not as part of a phosphor); id. at 6:31—7:5 (describing the converter as comprising two distinct phases: a luminescent compound comprising an activator in a host lattice, and a composite material comprising a non- luminescent compound); id. at 10:24—27 (“The above-described non- luminescent compounds do not form a solid solution with the luminescent particles, the luminescent particles stay as independent dispersed particles phase separate from the non-luminescent phase, forming an evenly dispersed phase.”). In sum, Appellants have argued persuasively that the Examiner reversibly erred in finding Schmidt’s monolithic ceramic luminescence converter, as modified to include Tamaki’s metal-doped luminescent lattice 4 Appeal 2016-001842 Application 12/525,085 compound, would have resulted in a composite material comprising at least one luminescent compound and at least one non-luminescent compound as recited in claims 1 and 14. Accordingly, the Examiner’s decision to reject claims 1—14 is: REVERSED 5