Ex Parte Takashima

Patent Trial and Appeal BoardJul 26, 2016

12685069 (P.T.A.B. Jul. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/685,069 0111112010 23456 7590 07/28/2016 PATTERSON Intellectual Property Law, P.C. 1600 DIVISION STREET, SUITE 500 NASHVILLE, TN 37203 FIRST NAMED INVENTOR Jun Takashima 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. N8226.118 6610 EXAMINER LI,MEIYA ART UNIT PAPER NUMBER 2811 NOTIFICATION DATE DELIVERY MODE 07/28/2016 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): docket@IPLA WGROUP.COM jdh@iplawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUN TAKASHIMA 1 Appeal2015-000700 Application 12/685,069 Technology Center 2800 Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and JEFFREY R. SNAY, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1, 14, 15, 25, and 26. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. 1 Panasonic Electric Works Co., Ltd. is identified as the real party in interest. App. Br. 1. Appeal2015-000700 Application 12/685,069 Appellant claims an illumination device 70 comprising a substrate 72, a first set of one or more light-emitting devices 14d wherein each device in the first set further comprises a light emitting element 16, a transparent enclosure 18, as well as a phosphor excitable by light emitted from the light emitting element, and a second set of a plurality of light-emitting devices 14e wherein each of the second set of devices further comprises a light emitting element 16, a transparent enclosure 18, as well as a phosphor, and wherein the plurality of light-emitting devices are varied in a color temperature to reduce color unevenness (independent claim 1, Figs. 2 and 8). Appellant also claims a similar illumination device comprising a substrate 72 having a central portion and an outer portion circumferentially disposed about the central portion, one or more light-emitting units 74 comprising one or more central light-emitting devices 14d positioned in a central portion, and a plurality of outer light-emitting devices 14e positioned in an outer portion (remaining independent claim 14, Figs. 2 and 8). Further details of the claimed subject matter are set forth in representative claims 1 and 14, a copy of which taken from the Claims Appendix of the Appeal Brief appears below. 1. An illumination device comprising: a substrate; a first set of one or more light-emitting devices mounted on a first portion of the substrate, each light-emitting device in the first portion further comprising a light emitting element and a transparent enclosure sealing the light emitting element and a phosphor excitable by light emitted from the light emitting element, the phosphor in each device in the first set further comprising a combination ratio associated with a first color temperature; 2 Appeal2015-000700 Application 12/685,069 a second set of a plurality of light-emitting devices mounted on a second portion of the substrate and circumferentially disposed about the first set of devices, and each of the second set of devices further comprising a light emitting element and a transparent enclosure sealing the light-emitting element and a phosphor excitable by light emitted from the light- emitting element, the phosphor in each of the second set of devices further comprising a combination ratio associated with a second color temperature higher than the first color temperature; and wherein the plurality of light-emitting devices are varied in a color temperature to reduce color unevenness. 14. An illumination device comprising: a substrate; one or more light-emitting units positioned along a surface of said substrate, a portion of the substrate surface corresponding to each light-emitting unit further comprising a central portion and an outer portion circumferentially disposed about the central portion, each of said one or more light- emitting units further comprising: one or more central light-emitting devices positioned in the central portion associated with the light-emitting unit, each device in the central portion having a first color temperature, and a plurality of outer light-emitting devices positioned in the outer portion, each device in the outer portion having a second color temperature higher than the first color temperature. App. Br. 25-26 (Claims Appendix). The Examiner rejects claims 1, 15, and 25 as well as the claims which depend therefrom under the 2nd paragraph of 35 U.S.C. Â§ 112 for failing to 3 Appeal2015-000700 Application 12/685,069 particularly point out and distinctly claim the subject matter which Appellant regards as the invention.2 Concerning the claim 1 recitation "wherein the plurality of light- emitting devices are varied in a color temperature to reduce color unevenness," the Examiner considers the phrase "the plurality of light- emitting devices" to lack clarity as to whether the devices in question are those of the first set or the second set (see, e.g., Ans. 2-3). However, for the reasons given by Appellant, one having ordinary skill in this art would understand that "the plurality" refers to both the first and second sets of light-emitting devices particularly because the devices of both sets are disclosed as possessing the recited characteristics of varying in color temperature to reduce color unevenness (App. Br. 15-16 (citing, e.g., Spec. ii 60)). Similarly, the Examiner considers the claim 15 phrase "the color temperature for the light-emitting device" to lack clarity (1) as to whether "the color temperature" in this phrase refers to the first color temperature or the second color temperature recited in parent claim 14 and (2) as to whether "the light-emitting device" in this phrase refers to the central or the outer light-emitting devices recited in the parent claim (see, e.g., Ans. 3--4). We 2 In the Final Action, the Examiner rejected all appealed claims under the 2nd paragraph of Â§ 112 on the grounds that various recitations caused these claims to be indefinite (Final Action 2-3). In the Answer, the Examiner withdrew this rejection as to some the claim recitations (Ans. 2) but defends the rejection as to certain recitations in claims 1, 15, and 25 by explaining that Appellant's arguments concerning such recitations were unpersuasive (id. at 2--4). Under these circumstances, we consider the Examiner to be maintaining in this appeal theÂ§ 112, 2nd paragraph, rejection of claims 1, 15, and 25 as well as the claims dependent thereon. 4 Appeal2015-000700 Application 12/685,069 agree with Appellant that the claim 15 phrase refers to the first and second color temperatures respectively of the central and outer light-emitting devices (App. Br. 18-19). Indeed, claim 15 expressly recites "each of the .. . central light-emitting devices and ... outer light-emitting devices further comprising ... a phosphor ... to convert the color temperature for the light- emitting device" (emphasis added). Finally, the Examiner considers claim 25 to be indefinite because the phrase "the first portion" lacks antecedent basis (see, e.g., Ans. 4). Appellant is correct that a lack of proper antecedent basis does not render a claim indefinite if the claim can be construed with reasonable clarity (App. Br. 19). In this regard, Appellant contends that one of ordinary skill in this art would construe "the first portion" of claim 25 as referring to the "central portion" recited in parent claim 14 especially in light of the claim 25 recitation preceding the phrase in question (id. at 20). This contention is persuasive. The fact that "the first portion" lacks strict antecedent basis does not render claim 25 indefinite. For these reasons, we do not sustain the Examiner's Â§ 112, 2nd paragraph, rejection. The Examiner rejects all appealed claims under 35 U.S.C. Â§ 102(b) as anticipated by Lee (US 2009/0001392 Al, published Jan. 1, 2009). Appellant contests this rejection by presenting arguments specifically directed to independent claims 1 and 14 with no additional arguments specifically directed to dependent claims 15, 25, and 26 (App. Br. 20-23). Accordingly, these dependent claims will stand or fall with their parent independent claims. We will sustain theÂ§ 102 rejection for the reasons expressed in the Final Action, the Answer, and below. 5 Appeal2015-000700 Application 12/685,069 In rejecting the independent claims, the Examiner finds that Lee discloses an illumination device comprising a first set of one or more centrally-disposed, light-emitting devices 113 having a light-emitting element 113, a transparent enclosure 130, as well as a phosphor and a second set of a plurality of outer light-emitting devices 123 circumferentially disposed about the first set with each device 123 having a light-emitting element 123, a transparent enclosure 132, as well as a phosphor (Final Action 4 (citing Lee Figs. 1-2, i-fi-137, 40, 42). Concerning independent claim 1, Appellant argues "[t]he elements 123 are not independently associated with a transparent enclosure and a phosphor, as is explicitly required in claim 1, but are instead part of one light-emitting device 120 that collectively includes each of the elements 123 and only one transparent enclosure 132 and one phosphor" (App. Br. 22). Appellant's argument is not persuasive. We agree with the Examiner that claim 1 does not explicitly require each of the second set of light- emitting devices to be independently associated with a separate transparent enclosure and phosphor and that claim 1 encompasses the Figure 2 configuration of Lee wherein each of the second set of devices comprises a common transparent enclosure 132 and phosphor (Ans. 6). Stated differently, Lee's Figure 2 shows that each of the devices 123 comprises a transparent enclosure 132 and phosphor wherein the enclosures and phosphors are joined together, and the language of claim 1 does not exclude an embodiment wherein the recited enclosures and phosphors are joined together. In reply, Appellant contends that each of the second set of devices "must be interpreted" as comprising an independent enclosure and phosphor (Reply Br. 4---6) but does not cite any Specification disclosure requiring this interpretation. While such a specific embodiment is disclosed by Appellant 6 Appeal2015-000700 Application 12/685,069 (see, e.g., Figs. 2 and 8), the Specification expressly teaches that the invention is not limited to the specifically disclosed embodiments (see, e.g., Spec. i-fi-1 62 and 65). In the record before us, Appellant does not show error in the Examiner's finding regarding Lee or interpretation of claim 1. Regarding both independent claims 1 and 14, Appellant argues that these claims require a plurality of second set or outer light-emitting devices to be circumferentially disposed about a first set or central device whereas the outer devices of Lee are mounted atop (i.e., on a higher plane than) the central device such that these respective devices are on separate surfaces (App. Br. 22-23). Appellant does not identify any claim limitation requiring the central and outer devices to be mounted or positioned on a substrate having a flat surface whereby all the devices are in the same plane. As the Examiner points out, in the absence of a requirement for a flat substrate surface having only one plane, the claim recitation of outer devices that are circumferentially disposed about a central device encompasses Lee's Figure 2 embodiment wherein outer devices 123 on a higher substrate plane are circumferentially disposed about a central device 113 on a lower substrate plane (Ans. 5 and 8). We emphasize that the Reply Brief does not respond to the Examiner's point and does not discuss claim 14 specifically. For the reasons stated above and given by the Examiner, Appellant fails to identify error in the Examiner's finding that the independent claims are anticipated by Lee. We sustain, therefore, the Â§ 102 rejection of claims 1, 14, 15, 25, and 26. The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). 7 Appeal2015-000700 Application 12/685,069 AFFIRMED 8