1
`
`.
`
`.
`
`AWW
`
`' 2775-198(PC49000)3%
`
`IN THE UNITEDSTATES PATENT AND TRADEMARK OFFICE
`
`g,
`
`BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
`
`In re United States Patent Application of:
`
`#17
`
`Examiner:
`
`Jerome Jackson
`
`Art Unit:
`
`2503
`
`
`
`Applicants: Bruce H. Baretz and Michael
`A. Tischler
`
`Serial No.:
`
`08/621,937 /
`
`Date Filed: March 26, 1996
`
`4%.: nth
`.
`Title: SOLID STATE WHITE LIGHT
`
`EMITTER AND DISPLAY USING SAME
`
`t
`
`EXPRESS MAIL CERTIFICATE
`It hereby is certified by the person identified below that this paper is being mailed by sueb person to the
`Commissioner of Patents and Trademarks on the date specified.
`in an envelope addressed to the A istant
`Commissioner tor Patents. Washington. DC 2023!. and Expr s Mailed under the provisions of 37 CFR 1.1%
`I.
`Q
`
`Signatureofl’
`% % Q?!
`a Mailing'l'hisl’aper
`534m {L Micfflfin—
`'76) (a a
`Name otPersun Mailing This Pa e.-
`211:6. Zrzaoo
`£29 I
`Date of Mailing
`&
`mitigates—2 93 9 :25
`Express Mail Label Number
`
`.
`
`BRIEF ON APPEAL
`
`This is an appeal under 35 U.S.C. § 134 from the Final Rejection dated September 2, 1999, of the
`
`claims 1-6, 8, 10-18, and 20-29 of US. Patent Application No. 08521337, which claims have
`
`been amended by an Amendment Responding to September 2, 1999 Office Action submitted
`
`under 37 C.F.R. § 1.116.
`
`STATUS OF CLAIMS
`
`Claims 1-6, 8, 10-13, and 20-29 are pending in the subject application; all of these claims have
`
`been finally rejected.
`
`OHM/2000 WEED 00000018 00521937
`01 Fcuao
`300.00 DP
`
`Nichia EX2012
`
`Nichia EX2012
`
`

`

`A copy of the appealed claims 1-6, 8, 10-18, and 20-29 (as amended after Final Rejection) is
`
`attached in Appendix A hereof.
`
`STATUS OF AMENDMENTS
`
`An Amendment Responding to September 2, 1999 Office Action, was submitted after Final
`
`Rejection pursuant to 37 CPR. § 1.116 on December 2, 1999. No Advisory Action regarding
`
`this Amendment has been received as of the date of filing of this Appeal Brief. The claims listed
`
`in Appendix A include minor amendments made to the claims in said Amendment.
`
`SUMMARY OF THE INVENTION
`
`The applicants‘ claimed invention is a light emitting device, comprising:
`
`at least one single-die semiconductor light—emitting diode (LED) coupleable with a power
`
`supply to emit a primary radiation which is the same for each single-die semiconductor LED
`
`present
`
`in the device, said primary radiation being a relatively shorter wavelength radiation
`
`outside the visible white light spectrum; and
`
`a down-converting luminophoric medium arranged in receiving relationship to said
`
`primary radiation, and which in exposure to said primary radiation responsiver emits radiation at
`
`a multiplicity of wavelengths and in the visible white light spectrum, with said radiation of said
`
`multiplicity of wavelengths mixing to produce a white light output.
`
`a...
`
`_..«-—p.-..~u
`
`Nichia EX2012
`
`Nichia EX2012
`
`

`

`Cited in Final Rejection:
`
`REFERENCES
`
`Tadatsu: Unexamined Japanese patent application disclosure No. Hei 05-152609 in the names
`
`of Tadatsu and Nakamura (hereafter “Tadatsu”) discloses a blue LED with improved brightness
`
`and visibility obtained by down—converting the violetr’ultraviolet output of a GaAlN LED through
`
`excitation of a single fluorescent dye or pigment embedded in the resin molding encasing the
`
`LED.
`
`Tokailin: U.S. Patent No. 5,126,214 to Tokailin et a1. (hereinafter “Tokailin") discloses the use
`
`of organic electroluminescent material with fluorescent wavelength-changing material
`
`in
`
`electroluminescent lamps.
`
`Chao: Zhang Jin Chao, et 31., “White Light Emitting Glasses”, J. of Solid State Chem, No. 93,
`
`pg. 17-9 (1991) (hereinafter “Chao") discloses the d0ping of borates LnMgBSOm (Ln = rare
`
`earth) with cerium and terbium, cerium and manganese, or cerium, terbium, and manganese. The
`
`Chao structures are glass, formed by casting molten mixed materials into a graphite mold. The
`
`glass structures are then excited by a monochromator light source and a nitrogen laser source.
`
`Amano:
`
`H. Amano,
`
`et
`
`al.,
`
`“Photoluminescence of Mg—doped
`
`p-type GaN and
`
`Electroluminescence of GaN p-n Junction LED” J. Lumion, Vol. 48/49, pp. 666—70 (1991)
`
`(hereinafter “Amano”) discloses the use of sapphire as a GaN device substrate for a solid-state
`
`an.-
`
`LED.
`
`Nichia EX2012
`
`Nichia EX2012
`
`

`

`-
`
`I
`
`Geusic: US. Patent No. 3,593,055 to Geusic, et. al. (hereinafter "Geusic") discloses the use of
`
`an up-converting phosphor to shift the output of an infrared LED into the visible light spectrum,
`
`thus producing a red LED of increased brightness and visibility.
`
`Applicant’s prior art admissions:
`
`the applicants' alleged "admission" relates generally to
`
`knowledge imputed by the Examiner of "other soloid [sic] state sources for producing near
`
`ultraviolet photons.“
`
`ISSUES
`
`1.
`
`Are claims 1-6, 8, 10-18, and 20-29 patentable under 35 U.S.C. § 103(a) over Tadatsu in
`
`view of Tokailin and Chao?
`
`2.
`
`Are claims 1-6, 8, 10-18, and 20-29 patentable under 35 U.S.C. § 103(a) over Tadatsu in
`
`View of Tokailin and Chao, and further in view of applicant‘s prior art admissions, Amano, and
`
`Geusic?
`
`3.
`
`Are significant secondary considerations (long felt but unsolved need, failure of others,
`
`and commercial successfscientific recognition) probative evidence of the nonobviousness of this
`
`invention?
`
`GROUPING OF THE CLAIMS
`
`The claims on appeal (claims 1-6, 8, 10-18, and 20-29) constitute a unitary group of claims
`
`presenting common issues in respect of their patentability. Claim 1
`
`is representative of the
`
`group.
`
`Nichia EX2012
`
`Nichia EX2012
`
`

`

`ARGUMENT
`
`35 U.S.C.
`
`103 a
`
`
`
`l. The claimed invention is atentable over Tadatsu in view of Tokailin and Chao.
`
`None of Tadatsu, Tokailin, or Chao, taken alone, contains any derivative basis for the claimed
`
`invention. The references relate to widely diSparate art areas, and none contains any suggestion
`
`or motivation for combination with any other. The Examiner has failed to establish a primafacie
`
`case that motivation for such combination existed in the art at the time of the invention.
`
`Tadatsu
`
`Tadatsu discloses a blue LED with improved brightness and visibility obtained by down-
`
`converting the violetfultraviolet output of a GaAlN LED through excitation of a single
`
`fluorescent dye or pigment embedded in the resin molding encasing the LED.
`
`The Examiner in reference to Tadatsu has stated that “[i]t appears that the conversion emission
`
`results in emission of a plurality of wavelengths in the visible spectrum similar to applicant's
`
`claims." (Office Action of September 8, 1999, page 2, paragraph 2). The Examiner has further
`
`contended at page 3, paragraph 4, that the Tadatsu device is not monochromatic, as it emits light
`
`at a more than one wavelength. The term “monochromatic” does not necessarily mean “having
`
`one wavelength” since it can refer to “having or appearing to have only one color."1 The Tadatsu
`
`device, while not strictly monochromatic, is mono-coior- It is “monochromatic” in the sense that
`
`its goal and achievement is the emission of a single color of visible light — bright blue.
`
`The Tadatsu device comprises two light sources, one primary and one secondary. A gallium
`
`nitride LED with characteristic emission peaks at 430 nm (visible, violet) and 370 nm, (invisible,
`
`‘ AMERICAN HERITAGE DICTIONARY 882 (3" ed. I993).
`
`Nichia ‘EX201 2
`
`
`
`
`th'wil'“~'9““
`
`Nichia EX2012
`
`

`

`O
`
`‘
`
`Q
`
`ultraviolet) is the primary source. A fluorescent pigment which down converts the visible light,
`
`producing a peak brightness at 480 nm (visible, bright blue) is the secondary source. The
`
`purpose and function of the Tadatsu device is to achieve a strong emission at a single wavelength
`
`for improved brightness at the color blue. Any emissions at other wavelengths are parasitic and
`
`represent inefficiencies, and thus deficiencies, of the Tadatsu device. “The goal of the present
`
`invention is to improve the brightness and visibility of a light emitting diode .
`
`.
`
`.” (Tadatsu,
`
`paragraph 0006, second sentence).
`
`In light of this stated goal, the Tadatsu emission at 3?0 nm --
`
`in the ultraviolet rangez, which cannot be detected by human vision -- is clearly parasitic,
`
`resulting solely from inefficiency in the conversion of this light by the fluorescent pigment.
`
`It
`
`contributes nothing to Tadatsu's goal of “improv[ing] the brightness and visibility of a light
`
`emitting diode." Similarly, Tadatsu describes the visible output of the LED alone, tie. the visible
`
`light peak at 430 nm, as “deficient in that visual brightness is poor due to light emission that has
`
`a nearly violet coloration.” (Tadatsu, paragraph 0005, last sentence, emphasis added). Thus both
`
`of the primary emissions of the Tadatsu device at 370 nm and 430 nm are parasitic, undesirable,
`
`inefficient, and do not contribute to the goal of the Tadatsu device, which is improved brightness
`
`and visibility by emission of a single bright blue color, at wavelength 480 nm.
`
`Hence, while the Tadatsu device is not strictly monochromatic in its emissions,
`
`it is mono-
`
`colored. Tadatsu does not, for example, mix the visible violet output of a gallium nitride LED
`
`with red light (via a red—emitting florescent pigment) to produce purple. Tadatsu does not mix
`
`the visible violet output of a gallium nitride LED with red and green light (via apprOpriate
`
`florescent pigments) to produce white light. Nothing in Tadatsu teaches or suggests the mixing
`
`of different colors of light to obtain a desired output color. Tadatsu simply and solely shifts the
`
`low visibility monochromatic violet output at 430 nm to a high visibility monochromatic blue
`
`output at 480 nm. (Tadatsu, paragraph 0008, last sentence). The remaining emissions at 430 nm
`
`2 GRANT R. FOWLES, INTRODUCTION To MODERN OPTICS, Table 1.3, p.
`http:!timagers.gsfc.nasa.govlemslvisiblehtml
`
`I I (1975). See also
`
`Nichia EX2012
`
`Nichia EX2012
`
`

`

`Best A‘ble Copy
`
`.
`
`and 370 nm simply represent inefficiencies in the wavelength conversion and parasitic output of
`
`the primary light source, respectively. These superfluous emissions contribute nothing to
`
`Tadatsu's stated goal of increasing the visibility and brightness of its blue emission. Tadatsu
`
`does not blend or mix these wavelengths to alter its single—color output, and nothing in Tadatsu
`
`provides a teaching or motivation to do so.
`
`In contrast, the light emitting device of the present invention is not only polychromatic in the
`
`technical sense of emitting more than a single wavelength of light, it is truly multi-color in that
`
`different wavelengths of light are deliberately blended to produce a polychromatic output. None
`
`of the red, green, or blue emissions of the fluorescent pigments of the present invention could be
`
`characterized as parasitic or superfluous. All are vital to achieving the goal of present invention
`
`— a white light LED.
`
`Indeed,
`
`it
`
`is the generation of all
`
`three wavelengths through down
`
`conversion via an inorganic luminophoric medium, and their mixing to fundamentally alter the
`
`character of the light output by an LED, that is the essential non-obvious inventive achievement
`
`of the present invention.
`
`The state-of-the-art in mixing red, green, and blue light to form a white light LED, at the time of
`
`the applicants’ invention, is embodied in U.S. Patent 4,922,704 to Stimson (“Stinson“). The
`
`structure disclosed in this reference comprises three separate LEDS, producing red, green, and
`
`blue light, respectively, arranged together within a single housing. The Stinson tripartite LED
`
`contains three separate anodes and requires three separate current drive circuits.
`
`Applicants’ single-source, two-lead, simple, inexpensive LED represents a significant advance in
`
`the state-of-the-art. By utilizing both the down conversion of ultraviolet
`
`light through the
`
`excitation of luminous phosphors to generate the red, green and blue components of white light,
`
`and by mixing those colors to produce white light, applicants achieved that which had eluded the
`
`entire industry for many years - a single, simple, unitary white light LED. The combination of
`
`Nichia EX2012
`
`Nichia EX2012
`
`

`

`0'
`
`it
`
`down conversion of ultraviolet light through luminescent phosphors and the mixing of these
`
`secondary single-color light sources to produce polychromatic white light was not rendered
`
`obvious to one of ordinary skill in the art at the time of the invention by Tadatsu’s single—color
`
`down conversion.
`
`Tokailin
`
`Tokailin discloses the use of organic electroluminescent material with fluorescent wavelength-
`
`changing material in electroluminescent lamps. Electroluminescent lamps are capacitive devices,
`
`excited by AC current. Electroluminescent lamps are generally planar in construction, and find
`
`application primarily in backlighting of LCD diaplays. LEDs are diodes, excited by DC current,
`
`and normally configured to present of a resistive load (in series with a current-limiting resister,
`
`and shunted to ground). LEDs find application in a broad variety of lighting situations, and have
`
`very little overlap with electroluminescent lamps in the OEM or commercial
`
`lighting market.
`
`The art areas are thus disparate and non-analogous. Lacking any motivation expressed in
`
`Tadatsu or Tokailin to combine the teachings of the two, some motivation for the combination
`
`must be found in the art. The Examiner has cited no such motivation.
`
`Additionally, the fluorescent down—converting material in Tokailin depends on, and is carefully
`
`engineered to function with, organic electroluminescent material. As discussed in the
`
`application for this invention, organic LEDs were problematic and not commercially available at
`
`time of the invention.
`
`Until recently, most light emitting diodes have been a semiconductor-based
`
`and most electrode luminescent devices have been inorganic based. While
`
`organic materials have
`
`been
`
`utilized
`
`to prepare
`
`certain thin-film
`
`electroluminescent devices
`
`[e.g., Tokailin], no organic based LEDs are
`
`commercially available. Further, opganic-based LEDs are at present plagued
`
`by extremely short operational lifetimes due to degradation of the organic
`
`Nichia EX2012
`
`Nichia EX2012
`
`

`

`The race to produce a white light LED was waged in R&D labs throughout the world, by the
`
`brightest talent, and consuming millions of dollars. lts apparent winners were lauded in scientific
`
`and trade journals, and awarded prestigious prizes for their apparent victory. How, then, could
`
`applicants' prior conception and reduction to practice be characterized as obvious to one of
`
`ordinary skill in the art?
`
`CONCLUSION
`
`For the reasous presented above, the rejections of claims 1-6, 8, 10-18 and 20-29 under 35 U.S.C.
`
`§ 103(a) should be reversed.
`
`This brief is provided in triplicate. An oral hearing is not requested.
`
`Enclosed with this appeal brief is a check in the amount of $300 payable to Commissioner of
`
`Patents and Trademarks, pursuant to 37 C.F.R. §l.17(c). Please charge any deficiency and credit
`
`any excess payment to Deposit Account No. 08-3284 of Intellectual Property/'l'echnology Law.
`
`INTELLECTUAL PROPERTY!
`TECHNOLOGY LAW
`P.0. Box “319
`Research Triangle Park. NC 21709
`Telephone: (919} 09-9350
`Fax: (919)419-9356
`Attorney File: 2711498 (PC49fl'flO)
`
`Respectfully‘ submitted,
`
`52/44?» a.
`
`Edward H. Green, 111
`Attorney for Applicants
`Registration No. 42,604
`
`18
`
`Nichia EX2012
`
`Nichia EX2012
`
`