DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 and 7-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “a passivation layer proximate the second side of the epitaxial layer; a first type contact proximate the second side of the epitaxial layer… a contact interconnect extending through the passivation layer to the epitaxial layer; the ceramic layer forming a continuous ceramic bond between the ceramic layer and the second side of the epitaxial layer.”
The Examiner notes that elected embodiment Fig. 7 (7A-7E) and related text neither uses term “passivation layer” nor the reference numerals 34, 42, 44. Instead the embodiment describes ceramic bond 702 as being applied at the bottom side 12B of the epitaxial layer structure 12 and cover the contacts 38, 40 of each of the LED chips 10(4) [0211], with fig 7 depicting an epitaxial layer 14 between top side 12T and bottom side 12B without the discrete reflective layer, barrier layer, passivation layer stack expressly drawn and labeled in Fig. 1.
Fig. 1 and Fig. 2 as disclosed directed to a top side substrate removal and carrier support operation. It doesn’t state and can’t its face be read to establish that Fig. 7 distinct bottom side treatment (application of permanent ceramic bond 702 directly to side 12B, covering contacts 38, 40 [0211] retains the intervening barrier layer/ reflective layer/passivation layer stack of Fig. 1, 2, as opposed to a simplified bottom side architecture developed for Fig. 7 ceramic bond process specifically.
Applicant is invited to identify, with specificity, where the written description as filed reasonably conveys possession of a passivation layer and contact interconnect extending through that passivation layer to the epitaxial layer and the ceramic layer forming a continuous ceramic bond between the ceramic layer and the second side of the epitaxial layer as applied to Fig. 7 embodiment or to amend the claims to conform to disclosure of the elected embodiment as written. See MPEP 2163,2163.04
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Claims 2-5 and 7-14 are rejected as being dependent on Claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-5, 7-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andrews et al. (US 2020/0203419 A1) in view of Andrews et al. (US 2019/00744266 A1; hereinafter Andrews/266) and Hin et al. (US 2020/0312904 A1).
Regarding Claim 1, Andrews (Fig. 6I, H) discloses a light emitting diode (LED) chip, comprising:
an epitaxial layer (82) comprising a first side and a second side (top and bottom as depicted on Fig. 6i) (“LED structure 82 may include a plurality of epitaxial layers deposited by metal organic chemical vapor deposition MOCVD”) [0069];
a first type contact (an cathode 92 and electrode 98) proximate the second side of the epitaxial layer (82) (Fig. 6i); and
a ceramic layer (108 between and on a sides of 92 and 98) bonded to the second side of the epitaxial layer (82) and positioned horizontally adjacent to the first type contact (an cathode 92 and electrode 98), the ceramic layer material, (“The underfill material 108 may comprise TiO.sub.2 particles suspended in a silicone binder. In certain embodiments, a weight ratio of TiO.sub.2 to silicone is in a range of 50% to 150%. In certain embodiments, the weight ratio of TiO.sub.2 to silicone is about 100%, or about 1:1.”) [0075], the ceramic layer (108 between and on a sides of 90 and 92) forming a continuous ceramic bond between the ceramic layer (108) and the second side of the epitaxial layer (bottom as depicted on Fig. 6i),
and a bottommost surface of the ceramic layer (108 between and on a sides of 90) is coplanar with a bottommost surface the first type contact (an cathode 92 and electrode 98). (See Fig. 6H-6I bottommost surface of 92,98 and 108 are coplanar at interface with 95),
the bottommost surface of the first type contact (92, 98) being exposed for receiving external electrical connections (95).
The Examiner notes that limitation “forming a continuous ceramic bond between the ceramic layer and the second side of the epitaxial layer” is interpreted under broadest reasonable interpretation in view of the originally filed specifications (See [0211-2017] and Fig. 7E] and is considered to be met as long as there are no gaps between ceramic layer (108) and the second side of the epitaxial layer (bottom of 82). (See Fig. 6H, 6i of Andrews).
Further Andrews states that silicone based material 108 degrades under high light flux [0075-0076] and that submount 95 disclosed as optionally temporary [0081] However, doesn’t show or characterize the resulting structure after submount is removed or separated..
Examiner notes that “being exposed for receiving external electrical connections” is a functional language.
While features of an apparatus may be recited either structurally or functionally, claim directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959).
Andrews does not explicitly disclose a passivation layer proximate the second side of the epitaxial layer, the first contact comprising a contact interconnect extending through the passivation layer to the epitaxial layer and a bottommost surface of the ceramic layer is coplanar with a bottommost surface the first type contact and that the ceramic layer being devoid of organic material.
However, Andrews (Fig. 1, 11) in a different embodiment discloses a passivation layer (50) proximate a second side of an epitaxial layer (21, 22, 25), a first contact (61, 63) comprising a contact interconnect (61) extending through the passivation layer (50) to the epitaxial layer (21, 22, 25).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify a light emitting diode (LED) chip in Andrews such that a passivation layer proximate the second side of the epitaxial layer, the first contact comprising a contact interconnect extending through the passivation layer to the epitaxial layer in order to allow externally accessible contacts connect to epitaxial layers [0052-0053] and to prevent moisture from reaching epitaxial layer and avoid chemical interactions and allow underfill material more easily cover all lateral surfaces of interpixel spaces [0092-0095].
Andrews does not explicitly disclose that a bottommost surface of the ceramic layer is coplanar with a bottommost surface the first type contact and the ceramic layer being devoid of organic material.
Andrews/266 (Fig. 17E) discloses a bottommost surface of a ceramic layer (236) is coplanar with a bottommost surface a first type contact (229).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify a light emitting diode (LED) chip in Andrews such that a bottommost surface of the ceramic layer is coplanar with a bottommost surface the first type contact in order to allow externally accessible contacts connect to epitaxial layers [0181] and to have LED chip separated from temporary surmount and being able to be attached to external electrical connection without submount or lead frame [0247]
Andrews does not explicitly disclose the ceramic layer being devoid of organic material.
Hin (Fig. 2, 3) discloses a ceramic layer (244) being devoid of organic material. (“Inorganic binders may include sol-gel (e.g., a sol-gel of TEOS or MTMS) or liquid glass (e.g., sodium silicate or potassium silicate), also known as water glass. In embodiments, binders may include fillers that adjust physical properties. Fillers may include inorganic nanoparticles, silica, glass particles or fibers or other materials capable of improving optical or thermal performance.”) [0031]
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify a light emitting diode (LED) chip in Andrews in view of Hin and select material for the binder such that the ceramic layer being devoid of organic material in order to solve photodegradation issue of Andrews and improving optical or thermal performance of the LED [0031] and since the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (See MPEP 2144.07).
Regarding Claim 2, Andrews in view of Andrews/266 and Hin discloses the LED chip of claim 1, wherein
the LED chip (pixelated portion 104a) forms a portion of a wafer comprising a plurality of integrally coupled LED chips (104a, 104b,104c).
The Examiner noted that limitation “integrally coupled” is considered to be met as long as LEDs are attached to the same submount 95 (See Fig. 9H)
Regarding Claim 3, Andrews in view of Andrews/266 and Hin discloses the LED chip of claim 1, wherein
the LED chip (104a) forms a portion of a wafer comprising a plurality of LED chips (104a, 104b, 104c) integrally coupled and separated by ceramic sidewalls (see 108 between 104a, 104b, 104c) bounding the epitaxial layer (82) of each of the plurality of LED chips (104a, 104b, 104c).
The Examiner noted that limitation “integrally coupled” is considered to be met as long as LEDs are attached to the same submount 95 (See Fig. 9H)
Regarding Claim 4, Andrews in view of Andrews/266 and Hin discloses the LED chip of claim 1, further comprising
a second type contact (cathode 92, 98) proximate the second side of the epitaxial layer (82) (See Fig. 6H).
Regarding Claim 5, Andrews in view of Andrews/266 and Hin discloses the LED chip of claim 4, wherein
the bottommost surface of the ceramic layer (108) is coplanar with a bottommost surface of the second type contact (cathode 92, 98)
(See Fig. 6H-6I bottommost surface of 92, 98 and 108 are coplanar at interface with 95)
Regarding Claim 7, Andrews in view of Andrews/266 and Hin discloses the LED chip of claim 1, wherein
the ceramic layer (108 between and on a sides of 90 and 92) (244 Hin) comprises a ceramic powder. (“as light-altering particles suspended in an insulating binder or a matrix.” “TiO.sub.2 particles”) [0075] [244; 0031 Hin]
Regarding Claim 8, Andrews in view of Andrews/266 and Hin discloses the LED chip of claim 1, wherein
the ceramic layer (108 between and on a sides of 90 and 92) comprises at least one of sapphire, silicon dioxide, titanium dioxide (“TiO2”), aluminum oxide, zirconium, magnesium oxide, graphite, silicon carbide, or boron nitride. (“The underfill material 108 may comprise TiO.sub.2 particles suspended in a silicone binder. In certain embodiments, a weight ratio of TiO.sub.2 to silicone is in a range of 50% to 150%. In certain embodiments, the weight ratio of TiO.sub.2 to silicone is about 100%, or about 1:1.”) [0075] [244; 0031 Hin]
Regarding Claim 9, Andrews in view of Andrews/266 and Hin discloses the LED chip of claim 1, further comprising
a ceramic sidewall (See 108 on sides of 82 in Fig. 6H) bounding the epitaxial layer (82), the ceramic sidewall comprising at least 50% inorganic material. (“The underfill material 108 may comprise TiO.sub.2 particles suspended in a silicone binder. In certain embodiments, a weight ratio of TiO.sub.2 to silicone is in a range of 50% to 150%. In certain embodiments, the weight ratio of TiO.sub.2 to silicone is about 100%, or about 1:1.”) [0075]
Regarding Claim 10, Andrews in view of Andrews/266 and Hin discloses the LED chip of claim 9, wherein
the ceramic layer (108 between and on a sides of 90 and 92) (244, Hin) and the ceramic sidewall (108 on sidewall of 82) comprise at least one of:
a white light reflecting material;
a black light absorbing material; or
a phosphor light converting material.
(“such as light-altering particles suspended in an insulating binder or a matrix. The light-altering material may include a material or particles that are configured to reflect, refract, or otherwise redirect light, or even absorb light generated from the active layer portions 84-1 to 84-3.” [0075] [0031 Hin]
Claim(s) 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andrews et al. (US 2020/0203419 A1) in view of in view of Andrews et al. (US 2019/00744266 A1; hereinafter Andrews/266) and Hin et al. (US 2020/0312904 A1) and further in view of Yao et al. (US 2011/0266560 A1).
Regarding Claim 11, Andrews in view of Andrews/266 and Hin discloses the LED chip of claim 1, further comprising:
a wavelength conversion element comprising at least one lumiphore, (“the pixelated-LED chip may include lumiphoric materials, including phosphors or other conversion materials, and other physical optical structures that are integral with the pixelated-LED chip.”) [0036]
Andrews does not explicitly disclose the wavelength conversion element proximate the first side of the epitaxial layer; and a transparent bonding layer between the wavelength conversion element and the epitaxial layer.
Yao (Fig. 6) discloses a wavelength conversion element comprising at least one lumiphore (“coating 30 may preferably comprise a phosphor-loaded silicone”) [0058], the wavelength conversion element (30) proximate a first side (top as depicted in Fig. 6) of an epitaxial layer (16, 14); and a transparent bonding layer (“ a thin, transparent adhesive layer 38”) [0062] between the wavelength conversion element (38) and the epitaxial layer (16, 14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the LED chip in Andrews in view of Andrews/266 and Hin and Yao such that the wavelength conversion element proximate the first side of the epitaxial layer; and a transparent bonding layer between the wavelength conversion element and the epitaxial layer in order to have an LED can then emit a white light combination of blue and yellow light [0058, 0062]
Regarding Claim 12, Andrews in view of Andrews/266 and Hin and Yao discloses the LED chip of claim 11, wherein
the wavelength conversion element (30, Yao) is attached to the epitaxial layer (16, 14 Yao) via direct or indirect wafer bonding. (See Fig. 6 of Yao)
Examiner notes that “via direct or indirect wafer bonding” is a functional language.
While features of an apparatus may be recited either structurally or functionally, claim directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959).
Regarding Claim 13, Andrews in view of Andrews/266 and Hin and Yao discloses the LED chip of claim 11, wherein
the wavelength conversion element (30, Yao) comprises phosphor [0058]
Andrews in view of Hin and Yao does not explicitly disclose at least one of a ceramic material or phosphor in glass.
However, Yao discloses the wavelength conversion element (30, Yao) includes phosphor and glass, inorganic glass, spin-on glass among limited amount of other materials. [0057, 0058, 0062]
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the LED chip in Andrews in view of Andrews/266 and Hin and Yao such that the wavelength conversion element (30, Yao) comprises at least one of a ceramic material or phosphor in glass since the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (See MPEP 2144.07) and to have material that exhibits excitation in the blue and/or UV emission spectrum, provides a desirable peak emission, has efficient light conversion, and has acceptable Stokes shift [0058]
Regarding Claim 14, Andrews in view of Andrews/266 and Hin and Yao discloses the LED chip of claim 11, wherein
the transparent bonding layer (38, Yao) comprises an inorganic material. (“a thin, transparent adhesive layer 38 with a desired refractive index is used, with one possible suitable material being silicone.”) [0062]
Response to Arguments
Applicant’s arguments concerning newly added limitations, see Page 4, filed 07/13/2026, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 103 as being unpatentable over Andrews et al. (US 2020/0203419 A1) in view of Hin et al. (US 2020/0312904 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made by combination of new embodiment under 35 U.S.C. 103 as being unpatentable over Andrews et al. (US 2020/0203419 A1) in view of Andrews et al. (US 2019/00744266 A1; hereinafter Andrews/266) and Hin et al. (US 2020/0312904 A1).
Applicant's arguments on Pages 5-7 filed 07/13/2026 have been fully considered but they are not persuasive.
Regarding Applicant’s Arguments that Hin’s inorganic binders are attributed only to a separate elements, not to underfill 233
The Examiner notes that Hin’s [0031] opens by stating that an LED array assembly may include an optically and electrically insulating material that is organic, inorganic or a combination organic/inorganic binder or filler material. Every subsequent sentence in the paragraph (including the sol-gel/liquid glass sentence) elaborates on that genus. Under Applicant’s construction, the express “inorganic” option in the antecedent sentence would be left without any disclosed exemplification anywhere in Hin, an implausible reading of the paragraph.
Further, sol-gel/ligiid glass sentence is not limited to the “another binder” element. That sentence recites generally that inorganic binders may include sol-gel (TEOS or MTMS) or liquid glass (sodium silicate or potassium silicate). It contains no reference tying to the preceding sentences that “binders may include fillers that adjust physical properties.” and that “Fillers may include inorganic nanoparticles, silica, glass particles” are likewise generic to “binders”.
The Examiner notes that even accepting Applicant’s construction arguendo, the rejection still stands. The Examiner notes that a reference is prior art for everything it teaches, including non-preferred and alternative embodiments (MPEP 2123(II)). Hin’s “another organic/inorganic binder, filler or sidewall” is expressly used in conjunction with the underfill within the same LED array assembly. Substituting one insulating binder material disclosed for use in a given assembly for another insulating binder material disclosed for use in the same assembly in the simple substitution of one known element for another to obtain predictable result. [MPEP 2144.06]
Further, Applicant’s reliance on Hin [0030] is misplaced. That paragraph states that the underfill may be a polymeric binder. Permissive language does not constitute a teaching the underfill must be polymeric or must contain organic material.
Regarding Applicants Arguments regarding teaching away and change in principle of operation.
The Examiner notes that Claim 1 requires that the ceramic layer be “devoid of organic material,” and form “a continuous ceramic bond”. It does not recite that the ceramic layer in non-flowable, incompressible or solid as applied. Applicant’s characterization of the claim as reciting “a solid non-flowable ceramic body” appears for the first time and is not supported by the originally filed specification. To the contrary, Applicants specification [0211] discloses that the permanents ceramic bond 702 is applied by ceramic pasters, spin-on-dielectrics, and/or sol-gel reactions (using inorganic colloidal suspension and gelation in a continuous liquid phase). Applicant’s own ceramic layer is applied in a flowable, liquid-phase.
In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a solid non-flowable ceramic body) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Examiner notes that a prior art reference that "teaches away" from the claimed invention is a significant factor to be considered in determining obviousness; however, "the nature of the teaching is highly relevant and must be weighed in substance. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
Neither reference criticizes, discredits or discourages inorganic binders, Hin affirmatively suggests inorganic binders as one of three options. The disclosure of an alternative is not teaching away. Both references supply an affirmative motivation towards inorganic, higher modulus material. Andrews [0076-0077] identifies CTE mismatch between underfill and the submount as failure point causing detachments during curing and teaches that adding TiO particles to lower the CTE and further teaches that high durometer underfill provides mechanical stability and anchoring to prevent anode-cathode pairs from detaching from electrode pairs. Inorganic sol-gel and liquid glass binders and ceramic particle loaded exhibit lower CTE and higher hardness than silicone or epoxy binders. One of ordinary skill in the art before the effective filing date of the claimed invention would be motivated to adopt Hin’s inorganic binders in Andrews underfill to achieve the CTE reduction and mechanical anchoring Andrews seeks.
Regarding Applicant arguments that the contact surface is not exposed.
The Examiner notes that Andrews expressly discloses externally accessible contacts at the chips lower surface [0052]. Adnrews in [0057] further confirms that the exposed cathodes 61 and 62 permit separate electrical connections to be made to each flip-chip LED.
Examiner notes that “being exposed for receiving external electrical connections” is a functional language.
While features of an apparatus may be recited either structurally or functionally, claim directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959).
Bonding an exposed contact to a submound is a use of that contact, not a structural alteration of the chip.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DMITRIY YEMELYANOV whose telephone number is (571)270-7920. The examiner can normally be reached M-F 9a.m.-6p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Landau can be reached at (571) 272-1731. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DMITRIY YEMELYANOV/ Examiner, Art Unit 2891
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