Lee International

The subject invention related to a laser device in which a lasing material is an organic material. The Intellectual Property Trial and Appeal Board (IPTAB) reversed the Final Rejection of the subject invention determining that the subject invention has an inventive step over prior art references (“D1” to “D3").

In the decision, the IPTAB conceded Lee International’s arguments that the subject invention and prior art References are different in terms of the feature relating to a focus mechanism. Specifically, Lee International argued that the subject invention is directed to a focus mechanism arranged to focus light emitted from an OLED onto a laser device.  However, i) D1 does not explicitly disclose any feature corresponding to such focus mechanism, ii) there is no reason to adopt the feature relating to the shape of the substrate of D2 to D1, and iii) even if D1 and D2 are combined, the focus mechanism of the subject invention cannot be derived.  In addition, iv) conceiving the focus mechanism of the subject invention based on a combination of D1 and D2 would involve additional efforts that one of ordinary skill in the would not have undertaken.  As such, the IPTAB determined that such additional efforts do not fall within the scope of ordinary creativity.

This case is a good example illustrating that an inventive step should be examined not only based on whether all features of a claimed invention are disclosed in view of a combination of prior art References, but also whether one of ordinary skill in the art could have actually conceived the claimed invention from the combination considering the structures and the operation principles disclosed in prior art references together.