Ex Parte Schowalter et al

Patent Trial and Appeal BoardMar 29, 2018

14596806 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/596,806 01114/2015 23517 7590 04/02/2018 MORGAN, LEWIS & BOCKIUS LLP (BO) 1111 PENNSYLVANIA A VENUE, N.W. WASHINGTON, DC 20004 FIRST NAMED INVENTOR Leo J. Schowalter 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 ATTORNEY DOCKET NO. CONFIRMATION NO. CIS-0l8C117307743001 8510 EXAMINER TRINH, MICHAEL MANH ART UNIT PAPER NUMBER 2822 NOTIFICATION DATE DELIVERY MODE 04/02/2018 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): kcatalano@morganlewis.com patents@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LEO J. SCHOWALTER, JIANFENG CHEN, and JAMES R. GRANDUSKY 1 Appeal2017-004803 Application 14/596,806 Technology Center 2800 Before BEYERL YA. FRANKLIN, JAMES C. HOUSEL, and MERRELL C. CASHION, JR., Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants request our review under 35 U.S.C. Â§ 134 of the Examiner's final decision rejecting claims 19--22 and 26-44. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). STATEMENT OF THE CASE Claim 19 is illustrative of Appellants' subject matter on appeal and is set forth below: 19. An illumination device comprising: 1 Appellants identify the real party in interest as Crystal IS, Inc. App. Br. 2. Appeal2017-004803 Application 14/596,806 a ultraviolet (UV) light-emitting semiconductor die; a rigid lens for extracting light from the light-emitting semiconductor die; and a layer of encapsulant attaching the rigid lens to the light- emitting semiconductor die, wherein (i) a thickness of the encapsulant is insufficient to prevent propagation of thermal expansion mismatch-induced strain between the rigid lens and the light-emitting semiconductor die, and (ii) the rigid lens has (a) a substantially hemispherical portion and (b) a substantially cylindrical portion disposed between the substantially hemispherical portion and the layer of encapsulant, the substantially cylindrical portion having a straight vertical sidewall. THE REJECTIONS 2 1. Claims 39 and 42 are rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. 2. Claims 19--22, 26-30, 32, 34, 36-38, 39, and 42 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Camras et al. (US 2008/0023719 Al; publ. Jan. 31, 2008) (hereinafter "Camras '719") taken with LeBoeuf (US 6,921,929 B2; iss. July 26, 2005) and Yoon (KR 10-2005-0028630; publ. Oct. 12, 2006). 3. Claims 33 and 35 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Camras '719, LeBoeuf, and Yoon, as applied to claims 19--22, 26-30, 32, 34, and 36-38, and further with Schowalter et al. (US 2007/0101932 Al; publ. May 10, 2007) (hereinafter "Schowalter"). 2 The rejection of claims 39 and 42 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement has been withdrawn. Ans. 2. 2 Appeal2017-004803 Application 14/596,806 5. Claim 31 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Camras '719, LeBoeuf, and Yoon, taken with Camras et al. (US 2011/0062469 Al; publ. Mar. 17, 2011) (hereinafter "Camras '469"), Hsiao et al. (US 7 ,832,885 B2; iss. Nov. 16, 2010) (hereinafter "Hsiao"), and Yagi (US 2003/0094664 Al; publ. May 22, 2003). 6. Claims 40, 41, 43, and 44 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Camras '719 taken with LeBoeuf and Yoon, as applied to claims 19--22, 26-30, 32, 34, 36-38, 39, and 42 and further of Huang et al. (US 2010/0073940 Al; publ. Mar. 25, 2010) (hereinafter "Huang"). 7. Claims 19--22, 26-29, 32, 34, 36-38, 39, and 42 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Paolini et al. (US 2009/0072263 Al; publ. Mar. 19, 2009) (hereinafter "Paolini") taken with LeBoeuf and Yoon. 8. Claims 33 and 35 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Paolini, LeBoeuf, and Yoon, as applied to claims 19--22, 26-29, 32, 34, 36-38, 39, and 42 above and further of Schowalter. 9. Claims 30 and 31 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Paolini, LeBoeuf, and Yoon, as applied to claims 19-22, 26-29, 32, 34, 36-38, 39, and 42 above and further of Camras '469, Camras '719, Hsiao, and Yagi. 10. Claims 40, 41, 43, and 44 are rejected under 35 U.S.C. 3 Appeal2017-004803 Application 14/596,806 Â§ 103(a) as being unpatentable over Paolini, LeBoeuf, and Yoon, as applied to claims 19--22, 26-29, 32, 34, 36-38, 39, and 42 and further of Huang. ANALYSIS Upon consideration of the evidence and each of the respective positions set forth in the record, we find that the preponderance of the evidence supports Appellants' positions in the record. Accordingly, we reverse each of the Examiner's rejections on appeal essentially for the reasons provided by Appellants in the record, and add the following for emphasis. Rejection 1 The Examiner states that the scope and meaning of the limitation of ''wherein the substantially cylindrical portion of the rigid lens degrades a photon extraction efficiency of the illumination device" is indefinite and unclear. Final Act. 5. The Examiner states that claims 39 and 42 do not recite a comparison with regard to degrading the photo extraction efficiency. Ans. 3. Appellants explain that the plain meaning of claims 39 and 42 is that the substantially cylindrical portion of the rigid lens is degrading the photon extraction efficiency as compared to an illumination device that lacks such a feature. In this context, Appellants explain that the Specification (p. 15, 11. 26-27), including Figure 11, makes it clear that the cylindrical portion of the lens degrades the photon extraction efficiency compared to "embodiments in which the lens 130 is purely hemispherical 4 Appeal2017-004803 Application 14/596,806 (i.e., no cylindrical component)". Appeal Br. 6; Reply Br. 4. We are persuaded by such argument, and reverse Rejection 1. Rejections 2 and 7 The dispositive issue is whether the applied art suggests the aspect of claim 19 pertaining to: the rigid lens has (a) a substantially hemispherical portion and (b) a substantially cylindrical portion disposed between the substantially hemispherical portion and the layer of encapsulant, the substantially cylindrical portion having a straight vertical sidewall. The Examiner relies upon the secondary references of LeBoeuf or Yoon for teaching this aspect of the claimed subject matter. Final Act. 7, 13. The Examiner states that it would have been obvious to have formed the ultraviolet light-emitting semiconductor die of Camras or Paolini, by employing the rigid lens having the substantially hemispherical portion and the substantially cylindrical portion having a straight vertical sidewall, as taught by LeBoeuf (Fig. 2) or Yoon (Figures 1--4), for attaching to a semiconductor light emitting die as shown by LeBoeuf or Yoon, because of the desirability to employ the rigid lens to converge the light emitted from the LED light, with a reduced photon extraction efficiency due to the cylindrical portion, but narrow the beam of light so that the light beam can be precisely focused at smaller target. Final Act. 7-8, 13. Appellants argue, inter alia, that the Examiner's stated rationale for making the proposed modification comes from Appellants' Specification regarding the effects of the claimed rigid lens, which is impermissible. 5 Appeal2017-004803 Application 14/596,806 Appeal Br. 12-14. MPEP Â§Â§ 2142, 2145(X)(A). Appellants submit that such teachings are absent from the cited references. Appeal Br. 13-14. In response, the Examiner refers to column 3, lines 56-66 of LeBouf for teaching that the lens/ encapsulant may be shaped as desired to direct the emitted light. Ans. 12-13. However, as pointed out by Appellants in the Reply Brief, this teaching is not a teaching of the effects of employment of a substantially cylindrical lens shape, and such specific teachings cannot be found in the applied art. In the Reply Brief, Appellants reiterate that the Examiner's rationale is gleaned from their Specification and not from the applied art. Appellants argue that both LeBoeuf and Yoon are silent regarding the effects of a substantially cylindrical lens shape. Reply Br. 6. Appellants state that the only portion of the current record relevant to the specific impact of lenses having substantially cylindrical portions is Appellants' own Specification, which discloses: "[i]n preferred embodiments, the lens shape has a cylindrical component and a hemispherical component in order to, e.g., narrow the far field pattern" (Spec., p. 4, 11. 25-26) and "[t]he radiation pattern of a light- emitting semiconductor die 100, e.g., an LED, may also be improved via selection of the inorganic lens material and the shape of its surface . . . [ t ]he far field pattern may be reduced even further via use of a cylindrical-hemispherical lens" (Spec., p. 14, 11. 1-8). Reply Br. 6-7. We are persuaded by such argument as the Examiner does not adequately resolve this point or otherwise demonstrate any reason in the prior art for including a cylindrical lens component in the structures of either Camras or Paolini. 6 Appeal2017-004803 Application 14/596,806 We thus agree with Appellants that the rejection is improper because the Examiner relies on information gleaned solely from Appellants' Specification. MPEP Â§ 2142 states that "impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art". "'Any judgement on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper"' (MPEP Â§ 2145(X)(A), quoting In re McLaughlin, 443 F.2d 1392, 1395(CCPA1971)). Due to the lack of teachings in the cited art and the fact that the rationale is only present on the record in Appellants' Specification, it logically follows that the reasoning has been improperly gleaned from Appellants' own Specification, and therefore the combination of applied art is an exercise of impermissible hindsight. Accordingly, we reverse Rejections 2 and 7. Rejections 3-6, and 8-10 involve the same deficiency and therefore we reverse these rejections for the same reason. DECISION Each rejection is reversed. REVERSED 7