Ex Parte Yoo et al

Patent Trial and Appeal Board

May 10, 2017

12991745 (P.T.A.B. May. 10, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/991,745 11/09/2010 Jae Soo Yoo HI-0530 1383
34610 7590 05/12/2017
KED & ASSOCIATES, LLP
P.O. Box 8638
Reston, VA 20195
EXAMINER
TANG, SUIAN
ART UNIT PAPER NUMBER
2814
NOTIFICATION DATE DELIVERY MODE
05/12/2017 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAE SOO YOO, KYUNG PIL KIM,
HYUN JU LEE, and CHANG SOO KIM
Appeal 2016-001753
Application 12/991,745
Technology Center 2800
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 3, 4, 6—10, 13, 14, 16—20, and
29—31 of Application 12/991,745 (“the ’745 Application”) under 35 U.S.C.
§ 103(a) as obvious. Final Act. 2—13 (Nov. 25, 2014). Appellants1 seek
reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM-IN-PART.
1 LG Innotek Co., Ltd. is identified as the real party in interest. Appeal
Br. 2.
Appeal 2016-001753
Application 12/991,745
STATEMENT OF THE CASE
The Examiner finally rejected claim 30 as indefinite and claims 1,3,
4, 6—10, 13, 14, 16—20 and 29—31 as obvious. Final Act. 2—13.
In a response after final action, Appellants amended claim 30 to
provide antecedent basis for the limitation “the first conductive type
semiconductor layer” and thereby obviate the Examiner’s rejection on the
basis of indefmiteness. Amendment dated Jan. 15, 2015. This amendment
was entered by the Examiner on February 23, 2015. Accordingly, we regard
the rejection on the basis of indefmiteness to be moot. We consider the
remaining rejections below.
BACKGROUND
The ’745 Application relates to a phosphor, a phosphor manufacturing
method, and a white light emitting device. Abst. The Specification
describes an embodiment where two or more phosphors have the same
composition (chemical formula) but differ in their crystal structures such
that they emit light of different wavelengths when excited. Spec. 14.
Claims 1 and 6 are representative of the ’745 Application’s claims and
are reproduced below from the Claims Appendix to the Appeal Brief:
1. A luminescent material for use with a light emitting
device, comprising a composition of one of SrsAlSEO^Ns/siEu,
Sr2AlSi307/2N4:Eu2, Sr2AE SEOnvNx/vEm, or
Sr2AESiOi3/2N4/3:Eu2, wherein at least one peak intensity of
light in a wavelength of between about 480nm to about 680nm
is provided by the luminescent material when excited by light
from the light emitting device, and
wherein the composition has a crystal structure in which a
portion of a Si-N bonding of a silicon nitride is substituted for
an Al-N bonding or an Al-0 bonding, and
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Application 12/991,745
further wherein the luminescent material of said composition
has peak wavelengths in different wavelength bands, and the
crystal structure for the luminescent material of said
composition having one of the peak wavelengths in the
different wavelength bands is different from the crystal
structure of the luminescent material of said composition
having another one of the peak wavelengths in the different
wavelength bands.
6. A light emitting device, comprising:
a body;
a light emitting diode provided over the body; and
a luminescent material provided over the light emitting diode,
the luminescent material comprises at least one of first, second
or third luminescent materials,
wherein the at least one peak intensity of light in a wavelength
of between about 510 nm to about 550nm is provided by the
first luminescent material based on light emitted from the light
emitting diode, at least one peak intensity of light in a
wavelength of between about 550 nm to about 580 nm is
provided by the second luminescent material based on light
emitted from the light emitting diode, and at least one peak
intensity of light in a wavelength of between about 590 nm to
about 650 nm is provided by the third luminescent material
based on light emitted from the light emitting diode,
wherein at least one of the first luminescent material, the
second luminescent material, or the third luminescent material
has a composition of at least one of Sr3AlSi2C>9/2N8/3:Eu,
Sr2AlSi307/2N4:Eu2, S^AESEOnvNx/siEm, or
Sr2AESiOi3/2N4/3:Eu2 and
wherein the composition has a crystal structure in which a
portion of a Si-N bonding of a silicon nitride is substituted for
an Al-N bonding or an Al-0 bonding, and
further wherein the first or second or third luminescent material
of said composition has peak wavelengths in different
wavelength bands, and the crystal structure for the first or
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second or third luminescent materials of said composition
having one of the peak wavelengths in the different wavelength
bands is different from the crystal structure of the first or
second or third luminescent material of said composition
having another one of the peak wavelengths in the different
wavelength bands.
Appeal Br. 35—37 (Claims App.).
REJECTION
On appeal, the Examiner maintains the following rejections:
1. Claims 1,3, and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Himaki et al. (US 2006/0076883 Al,
pub. Apr. 13, 2006) (hereinafter “Himaki”) in view of Li et al. (Li, Y. et al.,
“Crystal, Electronic and Luminescence Properties of Eu2+ -doped
Sr2Ah-xSii+x07-xNx, 8 Science and Technology of Advanced Materials 607—
616 (2007)) (hereinafter “Li”). Final Act. 3—5.
2. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Maeda et al. (US 2004/0245532 Al, pub. Dec. 9,
2004) (hereinafter “Maeda”) in view of Li. Id. at 5—6.
3. Claims 7, 9, 10, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hirosaki et al. (US 2008/0143246 Al,
pub. June 19, 2008) (hereinafter “Hirosaki ’246”2) in view of Li. Id. at 6—7.
4. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Hirosaki ’246 in view of Hirosaki, N., et al., Blue-
2 Referred to by the Examiner as “Hirosaki.”
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Emitting AIN: Eu2+ Nitride Phosphor for Field Emission Displays, 91 Appl.
Phys. Lett. 061101 (2007) (hereinafter “Hirosaki”3). Id. at 7—8.
5. Claims 13, 14, 16, 18, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Hirosaki ’246 and Li in
view of Maeda. Id. at 8—9.
6. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Hirosaki ’246, Li and Maeda in view of Shieh et al.
(US 2005/0057145 Al, pub. Mar. 17, 2005) (hereinafter “Shieh”). Id. at 9—
10.
7. Claims 29 and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hirosaki ’246 and Li, and further in
view of Han et al. (US 2008/0251781 Al, pub. Oct. 16, 2008) (hereinafter
“Han”). Id. at 10-11.
8. Claim 31 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Ohba et al. (US 5,076,860, iss. Dec. 31, 1991) (hereinafter “Ohba”) in
view of Hirosaki ’246, Li, and Shieh. Id. at 11—13.
DISCUSSION
Rejection 1. The Examiner rejects independent claim 1 and
dependent claims 3 and 4 as obvious over Himaki in view of Li. Appellants
argue that this rejection is in error on several bases. First, they assert that
Himaki’s disclosure is too broad to teach any of the specific phosphors of
claim 1. Appeal Br. 18—20. Second, they argue that the references do not
3 Referred to by the Examiner as “Xie.”
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teach a luminescent material having peak wavelengths in different bands and
differing crystal structures as required by claim l.4 We need only address
this second limitation, the “crystal structure difference” limitation, as will
become apparent below.
Appellants argue that Rejection 1 is mistaken because neither Himaki
nor Li teach that the “the crystal structure for the luminescent material of
said composition having one of the peak wavelengths in the different
wavelength bands is different from the crystal structure of the luminescent
material of said composition having another one of the peak wavelengths in
the different wavelength bands” as required by claim 1. Appeal Br. 35
(Claims App.). That is, claim 1 requires that a composition of a single
claimed formula have differing crystal structures and emission spectra. Id.;
Spec. 14—15. The Specification indicates that the crystal structure for a
given phosphor may vary depending upon its method of manufacture. Spec.
14, 18.
The Examiner relies upon both Himaki and Li as each teaching the
crystal structure difference. Final Act. 3^4. Specifically, the Examiner finds
that Figure 60 of Himaki teaches the crystal structure difference. Figure 60
depicts an emission spectrum with a peak at approximately 460 nm and a
lesser peak at approximately 580 nm. Himaki, Fig. 60. The Himaki
specification states only that “FIG. 60 is a chart showing the luminescence
spectrum of the light-emitting device 1 related to the present invention.” Id.,
1142. This provides insufficient information to conclude that the peaks of
4 This limitation is referred to by the Appellants as the “crystal structure
difference.” Appeal Br. 14. We adopt this nomenclature for convenience.
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Figure 60 of Himaki are produced by a luminescent material with different
crystal structures.
The Examiner additionally finds that Figures 7, 9, and 11 of Li teach
the crystal structure difference. Final Act. 4. Figure 7 of Li is described as
depicting “Excitation and emission spectra of Sri.96Euo.o4Al2-xSii+x07-xNx
varying with x (kexc = 325 nm, and kem = 530 and 560 nm for x = 0 and x =
0.2-0.6, respectively).” Li 613. That is, it shows the excitation and
emission spectra of four phosphors with four separate formulas. Claim 1
requires “the crystal structure for the luminescent material of said
composition ... is different from the crystal structure of the luminescent
material of said composition.” The term “said composition” draws
antecedent basis from the limitation “comprising a composition of one of
[four phosphors] . . . .” (Emphasis added). That is, the crystal structure
difference limitation requires that the two phosphors have the same formula
but different crystal structures with different peak emission wavelengths.
Figure 7 of Li shows the excitation and emission spectra of phosphors of
four different formulas (where x may be 0.0, 0.2, 0.4, or 0.6). Id. Figure 9
is similar to Figure 7, differing only in the molar coefficients. Id. at 614.
Likewise, Figure 11 depicts “[c]hanges in the emission spectra with Eu
concentration and temperature for Sr2-yEuyAl2-xSii+x07-xNx (x = 0.04) under
excitation at 325 nm.” That is, Figure 11 shows phosphors of four different
formulas at five separate temperatures. Accordingly, none of Figures, 7, 9,
or 11 of Li teach the crystal structure difference of claim 1.
In view of the foregoing, we are constrained to reverse the rejection of
claim 1 and its dependents. Accordingly, we need not reach Appellants’
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first argument, that the disclosures of Himaki and Li are too broad to teach
the specific phosphors enumerated in the claim.
Rejection 2. The Examiner rejected claim 6 as obvious over Maeda
in view of Li. Final Act. 5—6. Appellants allege that this rejection is in error
on two bases. First, they argue that Li does not teach or suggest the specific
compounds of claim 6 (which are the same specific compounds listed in
claim 1) for the same reasons as with regard to claim 1. Appeal Br. 23. Asa
second basis of error, Appellants allege that Li does not teach the crystal
structure difference for the same reasons advanced in regard to claim 1. Id.
23—24. We address Appellants’ arguments regarding the crystal structure
difference first.
Claims 1 and 6 each include a limitation pertaining to a difference in
the crystal structure of the phosphors; however, the limitations are not
identical. Claim 1, as noted above, requires luminescent materials of the
same formula to have varying crystal structures and peak wavelengths. The
language of claim 6 differs so as to permit a broader interpretation.
Claim 6 requires “wherein at least one of the first luminescent
material, the second luminescent material, or the third luminescent material
has a composition of at least one of [the four specified formulas].” Appeal
Br. 36 (Claims App.) (underscoring added). Thus, any of the “luminescent
materials” may include multiple phosphors.
The crystal structure difference limitation of claim 6 further requires a
composition
wherein the first or second or third luminescent material of said
composition has peak wavelengths in different wavelength
bands, and the crystal structure for the first or second or third
luminescent materials ... is different from the crystal structure
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of the first or second or third luminescent material of said
composition.
Because the luminescent material may include multiple phosphors (of
different formulas) the claim is broad enough to encompass the
compositions of several phosphors having different crystal structures and
different peak wavelengths as taught by the prior art. See Li, Figure 2
(showing relationship between crystal lattice parameters and molar
coefficients), Fig. 11 (phosphors of different formulas emit light at different
peak wavelengths); Maeda 1 54 (different phosphors emit light at different
peak wavelengths). Given this claim construction and the disclosures of the
cited references, Appellants have failed to show error in the Examiner’s
finding that Li teaches the crystal structure difference. See In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed.Cir.1998) (holding claims obvious that were
broad enough to sweep in the prior art, stating that “the name of the game is
the claim.”).
We now turn to Appellants’ first argument against the second
rejection —that the disclosure of Li is too broad to teach the specific
phosphors listed in claim 6.5 Appeal Br. 23.
The Examiner finds that Li teaches as follows:
Li’s compositions of luminescent material (S^Ab-xSii+xCb-
XdNx:Eu and Sr2-yAl2-xSii+x07-xNxEuy) and the claimed
luminescent material (SnAlSLOgvNx/vEu, Sr2AlSi3C>7/2N4:Eu2,
Sr2AbSi20i3/2N8/3:Eu2, and Sr2AhSiOi3/2N4/3:Eu2) are obvious
specific examples of oxynitride luminescence materials
SraAlbSicOdNe:Eu.
5 Appellants assert that the Examiner uses an improper “obvious to try”
approach in finding that Li would suggest the claimed compounds to a
person of ordinary skill in the art. Appeal Br. 18—22.
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Answer 6. The Examiner further finds that Li teaches that the peak
wavelength for a given phosphor may be adjusted by varying its
composition. Id. As a consequence, the Examiner determines that the molar
coefficients are a result-effective variable and could have been reached by a
routine optimization process. Id.
Appellants point out that Li does not teach the precise formula of the
phosphors as claimed. Appeal Br. 21. Appellants further argue that one of
skill in the art would not have arrived at the compounds of claim 1 by simple
optimization because the claimed compounds were not selected solely for
their emission characteristics but rather because they have “the advantage of
being able to emit different colors using the same composition and only
having to tailor the manufacturing to accomplish this advantage.” Id. at 29.
The former argument lacks force because a disclosure in the prior art
is given effect even where broad. In re Susi, 440 F.2d 442, 445 (CCPA
1971) (affirming an obviousness rejection where the disclosure of the prior
art was “huge, but it undeniably include [d] at least some of the compounds
recited in appellant’s generic claims and it is of a class of chemicals to be
used for the same purpose as appellant's additives”). Further, both Himaki
and Li teach that the molar ratios of materials can be adjusted to achieve a
desired luminescence spectrum. Final Act. 6 (incorporating || 8—14 (citing
Himaki 146; Li Abst.)).
The latter argument (regarding the advantage of the enumerated
compounds) lacks force in the context of claim 6 because the claim does not
require the described advantage. An applicant claiming a particular range
for a result-influencing variable may offer proof that the claimed range is
critical, but that evidence “must be commensurate in scope with the claimed
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range.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). As
determined above, the crystal structure difference limitation of claim 6
permits luminescent material comprising multiple phosphors. Thus, the
claim does not require a luminescent material with a single formula having
different crystal structures, and any showing relating to such characteristic is
not commensurate in scope with the claim.
Appellants additionally argue that they have put forward evidence of
nonobviousness. Reply Br. 11—12. Objective evidence of nonobviousness
may include unexpected results created by the claimed invention and
unexpected properties of the claimed invention. In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998).
“For objective [evidence of secondary considerations] to be accorded
substantial weight, its proponent must establish a nexus between the
evidence and the merits of the claimed invention.” Wyers v. Master Lock
Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (emphasis in original) (quoting In
re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995). Here, there is insufficient
nexus between the evidence of an unexpected result (a phosphor of a single
formula that may be processed so as to emit radiation at different peak
wavelengths) and claim 6 because the crystal structure difference limitation
of the claim does not require the relevant feature.
Rejection 3. The Examiner rejected independent claim 7 and
dependent claims 9, 10, and 19 as obvious over Hirosaki ’246 in view of Li.
Final Act. 6—7 (referring, in part, to Rejection 1, || 8—14).
Appellants argue that Li does not teach or suggest any of the specific
phosphors claimed nor the crystal structure difference limitation. As with
claim 6, the crystal structure difference limitation of claim 7 is broad enough
to encompass luminescent material comprising multiple phosphors having
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different formulas. In view of our interpretation of the crystal structure
limitation of claim 7, the specifically enumerated compounds of the claim
cannot be said to be critical and we find no error in the Examiner’s rejection
in this regard. Similarly, for the reasons set forth above, we find no
reversible error in the Examiner’s findings that the crystal structure
limitation is taught by Li.
Rejections 4—7. The Examiner rejected claims 8, 13, 14, 16—18, 20,
29 and 30 in Rejections 4—7. Final Act. 7—11. These claims each depend
from claim 7 and Appellants seek reversal of these rejections on the same
basis as with regard to claim 7. Appeal Br. 34. As we have determined that
Appellants have failed to show reversible error in regard to the rejection of
claim 7, we similarly determine that Appellants have not shown reversible
error in regard to its dependents.
Rejection 8. The Examiner rejected claim 31 as obvious over Ohba,
Hirosaki’246, Li, and Shieh. Final Act. 11—13. As with earlier rejections,
the Examiner relies upon the teachings of Li regarding the specific
phosphors and the crystal structure difference. The language of the crystal
structure difference of claim 31 is similar to that of claim 1. Accordingly,
for the reasons set forth with regard to Rejection 1, we reverse the
Examiner’s rejection on the basis that the Li reference has not been shown to
teach the crystal structure difference limitation.
CONCLUSION
For the reasons set forth above, we affirm the rejections of claims 6—
10, 13, 14, and 16—30 and reverse the rejection of claims 1,3,4, and 31 of
the ’745 Application.
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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-IN-PART
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