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 .
DETAILED ACTION
A request for continued examination (RCE) under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action mailed on 10/23/2025 ("10-23-25 Final OA") has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/23/2026 ("02-23-26 Submission") has been entered when the RCE was filed on 03/23/2026.
In the 02-23-26 Submission, the Applicant substantively amended claims 1
and 8.
Currently, amended claims 1-3 and 5-20 are pending and are examined below.
Response to Arguments
Applicant's amendments to the independent claim 1 have overcome the 35 U.S.C. 112(b) rejection of claims 1-3 and 5-71 set forth starting on page 7 under line item number 1 of the 08-01-18 Final OA.
Applicant's amendments to independent claim 1 have overcome the 35 U.S.C. 102(a)(1) rejection of claims 1-3 set forth starting on page 4 under line item number 2 of the 10-23-25 Final OA.
Applicant's amendments to independent claim 1 have overcome the 35 U.S.C. 102(a)(1) rejection of claims 1-3, 5, 8, 13 and 15 as being anticipated by Zhu set forth starting on page 10 under line item number 3 of the 10-23-25 Final OA.
Substantive amendments to the independent claim 1 required further consideration and search, however. New grounds of rejections are provided below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7, 9-13 and 15-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Section 2173.02.I. of the MPEP provides the following guidance on how pre-issuance claims under examination are construed differently than patented claims:
Patented claims are not given the broadest reasonable interpretation during court proceedings involving infringement and validity, and can be interpreted based on a fully developed prosecution record. While "absolute precision is unattainable" in patented claims, the definiteness requirement "mandates clarity." Nautilus, Inc. v. Biosig Instruments, Inc., 527 U.S. __, 134 S. Ct. 2120, 2129, 110 USPQ2d 1688, 1693 (2014). A court will not find a patented claim indefinite unless the claim interpreted in light of the specification and the prosecution history fails to "inform those skilled in the art about the scope of the invention with reasonable certainty." Id. at 1689.
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The Office does not interpret claims when examining patent applications in the same manner as the courts. In re Packard, 751 F.3d 1307, 1312, 110 USPQ2d 1785, 1788 (Fed. Cir. 2014); In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). The Office construes claims by giving them their broadest reasonable interpretation during prosecution in an effort to establish a clear record of what the applicant intends to claim. Such claim construction during prosecution may effectively result in a lower threshold for ambiguity than a court's determination. Packard, 751 F.3d at 1323-24, 110 USPQ2d at 1796-97 (Plager, J., concurring). However, applicant has the ability to amend the claims during prosecution to ensure that the meaning of the language is clear and definite prior to issuance or provide a persuasive explanation (with evidence as necessary) that a person of ordinary skill in the art would not consider the claim language unclear. In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)( claims are given their broadest reasonable interpretation during prosecution "to facilitate sharpening and clarifying the claims at the application stage"); see also In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Here, the independent claim 1 is indefinite, because it is unclear whether “the microLED structure” in line 6 is the same as “the microLED structure in lines 3 and 4 as after performing the mesa etch on the microLED structure, the microLED structure is no longer the same as the microLED structure recited in lines 3 and 4 since the microLED structure recited in lines 3 and 4 underwent a physical change from the mesa etch. For the purpose of advancing the examination of the instant application, “the microLED structure” in line 6 has been interpreted to be different than the microLED structure in lines 3 and 4.
Claims 2-7 are indefinite, because they depend from the indefinite claim 1.
Claim 9 is indefinite for the same reason that the independent claim 1 is indefinite.
Claim 10 is indefinite because it depends from the indefinite claim 9.
Claim 11 is indefinite for the same reason that the independent claim 1 is indefinite.
Claim 12 is indefinite because it depends from the indefinite claim 11.
Claim 13 is indefinite for the same reason that the independent claim 1 is indefinite.
Claim 15 is indefinite for the same reason that the independent claim 1 is indefinite.
Claim 16 is indefinite for the same reason that the independent claim 1 is indefinite.
Claim 17 is indefinite for the same reason that the independent claim 1 is indefinite.
Independent claim 18 is indefinite for the same reason that the independent claim 1 is indefinite.
Claims 19 and 20 are indefinite, because they depend from the indefinite independent claim 18.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
(1). Determining the scope and contents of the prior art.
(2). Ascertaining the differences between the prior art and the claims at issue.
(3). Resolving the level of ordinary skill in the pertinent art.
(4). Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Patent No. US 10,418,510 B1 to Oyer et al. (“Oyer”).
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Regarding independent claim 1, Oyer teaches a method of treating a micro Light-Emitting Diode (microLED) structure (see Fig. 3A-3C, for example), the method comprising:
forming a microLED structure 305 comprising an epilayer of gallium nitride (GaN) (see Fig. 3A);
performing a mesa etch on the microLED structure 305 (col. 6, ln 24-36 - “FIG. 3B shows a GaN mesa 320 formed by etching the GaN layers 305 of FIG. 3A down to the substrate 315…”); and
after performing the mesa etch on the microLED structure 305, performing a dry etch on the microLED structure 320 to remove an outer portion of the epilayer of the GaN (Rough Surface 330), and no wet etch process is performed on the microLED structure 320 between the mesa etch and the dry etch (please compare FIG. 3B and 3C).
Oyer does not specify that less than 30 nm is removed from the outer portion of the epilayer from performing a dry etch.
The only difference between the claimed method and the method taught by Oyer is a claimed thickness of the epilayer being removed of less than 30 nm.
However, according to Section 2144.05 of the MPEP, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Here, Oyer teaches a general condition of the outer portion of the epilayer that is removed to the extent that its surface is roughened. Unless the Applicant can show that the claimed specific condition of the thickness of the epilayer that is removed being less than 30 nm produces unexpected results that are different in kind and not different in degree over said general condition of the surface being roughened as taught by Oyer, claim 1 would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because it would not be inventive to discover the optimum or workable ranges by routine experimentation.
Moreover, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Court held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (see MPEP 2144.04).
Since the only difference between the claimed method and the method taught by Oyer is a relative dimension of the outer portion of the epilayer that is removed being less than 30 nm, the Court would be more likely than not hold that the claimed method is not patentably distinct from the method taught by Oyer. Moreover, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art modify the method such that thickness of the epilayer being removed is less than 30 nm with a reasonable expectation of providing a microLED structure that is in the nanometer scale as the one of ordinary skill in the semiconductor art is incentivized to make adjustments to size to fit an intended purpose of making device smaller as market forces demand that the device scale down with Moore's Law.
Regarding claim 2, a limitation of "inducing crystallographic defects in a surface of the microLED structure during the mesa etch such that the defects cause a non-radiative recombination of currents that reduce the light output of the microLED structure" can be construed an intended result or intended property of the method step of performing the mesa etch on the microLED structure.
Construing the limitation as intended result, how a limitation is treated is governed by specific facts of a case - what is actually being recited in the limitation. Section 2111.04 of the MPEP differentiates a "wherein" clause that recite intended result of a process step from the "wherein" clause that does not. According to Section 2111.04 of the MPEP, "The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case. In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), the court held that when a "whereby" clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Id. However, the court noted (quoting Minton v. Nat ’l Ass ’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) that a "whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited." Id." In other words, if the "wherein" clause simply expresses the intended result of a process step positively recited, the "wherein" clause is fully considered, but not given patentable weight. Please note that each and every limitation of the claims of the instant application has been fully considered by the examiner (A consideration of a limitation does not necessarily mean that the limitation has been given patentable weight.).
Since the limitation above can be construed as an intended result of the positively-recited method steps of claim 2, the limitation above is not afforded patentable weight following the rationale behind the holding in Minton v. Nat ’l Ass ’n of Securities Dealers, Inc.
Construing the limitation as intended property, even if the lmitations were construed not be an intended-result of the positively-recited method step, it may be construed as an intended property conferred by the method step of performing a mesa etch on the microLED structure.
According to Section 2112.III. of the MPEP, "Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102/103 rejection is appropriate for these types of claims as well as for composition claims {underlined for emphasis}."
Here, the limitation above does not positively limit the method steps of claim 2, because it can be construed to be an intended property conferred by the method steps of claim 2. The method steps taught by Oyer is inherently capable of conferring the intended property as recited in the limitation above, because Oyer teaches each and every method step of claim 2. Since the examiner has the burden of producing evidence to support the conclusion above, the burden of proof shifts to the Applicant to show otherwise.
Regarding claim 3, a limitation of "removing the crystallographic defects in the surface of the microLED structure during the dry etch" can be construed an intended result or intended property of the method step of performing a dry etch on the microLED structure.
Construing the limitation as intended result, since the limitation above can be construed as an intended result of the positively-recited method steps of claim 3, the wherein clause above is not afforded patentable weight following the rationale behind the holding in Minton v. Nat ’l Ass ’n of Securities Dealers, Inc.
Construing the limitation as intended property, even if the limitation were construed not be an intended-result of the positively-recited method step, it may be construed as an intended property conferred by the method step of performing a dry etch on the microLED structure. Here, the limitation above does not positively limit the method steps of claim 3, because it can be construed to be an intended property conferred by the method steps of claim 3. The method steps taught by Oyer is inherently capable of conferring the intended property as recited in the limitation above, because Oyer teaches each and every method step of claim 3. Since the examiner has the burden of producing evidence to support the conclusion above, the burden of proof shifts to the Applicant to show otherwise.
Claims 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Oyer in view of Zhu and further in view of Kawasaki (previously-cited Pub. No. US 2020/0075290 A1 to Kawasaki et al.).
Regarding independent claim 18, Oyer teaches a method Oyer teaches a method of treating a micro Light-Emitting Diode (microLED) structure (see Fig. 3A-3C, for example), the method comprising:
forming a microLED structure 305 comprising an epilayer of gallium nitride (GaN) (see Fig. 3A);
performing a mesa etch on the microLED structure 305 (col. 6, ln 24-36 - “FIG. 3B shows a GaN mesa 320 formed by etching the GaN layers 305 of FIG. 3A down to the substrate 315…”); and
after performing the mesa etch on the microLED structure 305, performing a dry etch on the microLED structure 320 to remove an outer portion of the epilayer of the GaN (Rough Surface 330).
Oyer does not teach implementing the method on instructions on one or more non-transitory computer-readable when executed by one or more processors, cause the one or more processor to perform operations comprising:
Zhu teaches one or more non-transitory computer-readable media ("para [0320] - "Features of the present invention can be implemented in, using, or with the assistance of a computer program product, such as a storage medium (media) or computer readable storage medium (media) having instructions stored thereon/in which can be used to program a processing system to perform any of the features presented herein. The storage medium can include, but is not limited to, high-speed random access memory, such as DRAM, SRAM, DDR RAM or other random access solid state memory devices, and may include non-volatile memory, such as one or more magnetic disk storage devices, optical disk storage devices, flash memory devices, or other non-volatile solid state storage devices. Memory optionally includes one or more storage devices remotely located from the CPU(s). Memory or alternatively the non-volatile memory device(s) within the memory, comprises a non-transitory computer readable storage medium.") comprising instructions that, when executed by one or more processors, cause the one or more processors to perform operations" ("Stored on any machine readable medium (media), features of the present invention can be incorporated in software and/or firmware for controlling the hardware of a processing system, and for enabling a processing system to interact with other mechanisms utilizing the results of the present invention. Such software or firmware may include, but is not limited to, application code, device drivers, operating systems, and execution environments/containers." (para [0321]).
However, Zhu does not specifically disclose the executable instructions on CRM.
Kawasaki teaches how to encode an executable instruction on CRM to cause one or more processors to perform operations (para [0056] - " The disclosed embodiments can employ various computer-implemented operations involving data stored in computer systems. These operations are those requiring physical manipulation of physical quantities. Any of the operations described herein that form part of the embodiments are useful machine operations. The embodiments also relates to a device or an apparatus for performing these operations. The apparatus may be specially constructed for a special purpose computer. When defined as a special purpose computer, the computer can also perform other processing, program execution or routines that are not part of the special purpose, while still being capable of operating for the special purpose."; para [0057] - " One or more embodiments can also be fabricated as computer-readable code on non-transitory computer-readable medium. The computer-readable medium is any data storage that can store data, which can be thereafter be read by a computer system. Examples of the computer-readable medium include hard drives, network attached storage (NAS), ROM, RAM, compact disc-ROMs (CD-ROMs), CD-recordables (CD-Rs), CD-rewritables (CD-RWs), magnetic tapes and other optical and non-optical data storage devices. The computer-readable medium can include computer-readable tangible medium distributed over a network-coupled computer system so that the computer-readable code is stored and executed in a distributed fashion.").
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the method taught by Oyer with the teachings of Zhu and Kawasaki who teach an embodiment of storing executable instructions on one or more processors to cause the processor(s) to perform operations to carry out the method steps of Zhu and Kawasaki, because "One of ordinary skill in the art would have been capable of applying this known technique to a known device (method, or product) that was ready for improvement and the results would have been predictable to one of ordinary skill in the art." (citing Section 2143.I.C. of the MPEP) which would help to automate the method steps without the aid of a human operator.
Regarding claim 20, the combination of Oyer, Zhu and Kawasaki teaches wherein the instructions are stored as recipe (Kawasaki, para [0052] - "process recipe"), and the one or more processors are part of a controller (Kawasaki, para [0055] - "The method 700 is executed by one or more processors of a plasma reactor, e.g., processors of one or more of the impedance matching networks (i.e., matches), processors of one or more of RF generators, a processor of pulse controller, etc. Examples of a processor include an application specific integrated circuit (ASIC), a programmable logic device (PLD), a microprocessor, a microcontroller, a central processing unit (CPU), etc.) for the semiconductor processing chamber.").
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claim 5 would be allowable if it is rewritten in independent form to include all of the limitations of the base claim 5 or the base claim 1 is amended to include all of the limitations of claim 5, and the 35 U.S.C. 112(b) rejection of the base claim 1 is successfully traversed.
Claim 6 would be allowable if it is rewritten in independent form to include all of the limitations of the base claim 6 or the base claim 1 is amended to include all of the limitations of claim 6, and the 35 U.S.C. 112(b) rejection of the base claim 1 is successfully traversed.
Claim 7 would be allowable if it is rewritten in independent form to include all of the limitations of the base claim 7 or the base claim 1 is amended to include all of the limitations of claim 7, and the 35 U.S.C. 112(b) rejection of the base claim 1 is successfully traversed.
Independent claim 8 is allowed, because the prior art of record, singularly or in combination, fails to disclose or suggest, in combination with the other claimed elements in claim 8,
flowing a first gate to penetrate a surface of the epilayer of GaN and form a layer in an outer portion of the epilayer of GaN; and
flowing a second gas to selectively remove the layer in the outer portion of the epilayer of GaN.
Claim 9 would be allowable if the 35 U.S.C. 112(b) rejection of claim 9 is successfully traversed.
Claim 10 is allowable because it depends from the allowable claim 9.
Claim 11 would be allowable if the 35 U.S.C. 112(b) rejection of claim 11 is successfully traversed.
Claim 12 is allowable because it depends from the allowable claim 11.
Claim 13 would be allowable if the 35 U.S.C. 112(b) rejection of claim 11 is successfully traversed.
Claim 14 is allowed, because it depends from the allowed independent claim 8.
Claim 15 would be allowable if the 35 U.S.C. 112(b) rejection of claim 15 is successfully traversed.
Claim 16 would be allowable if the 35 U.S.C. 112(b) rejection of claim 16 is successfully traversed.
Claim 17 would be allowable if the 35 U.S.C. 112(b) rejection of claim 17 is successfully traversed.
Claim 19 would be allowable if it is rewritten in independent form to include all of the limitations of the base claim 18 or the base claim 18 is amended to include all of the limitations of claim 19 and the pending 35 U.S.C. 112(b) rejection of the claims 18 and 19 are successfully traversed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL JUNG whose telephone number is (408)918-7554. The examiner can normally be reached on 8:30 A.M. to 7 P.M.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eliseo Ramos-Feliciano can be reached on (571) 272-7925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL JUNG/Primary Examiner, Art Unit 2817 02 April 2026
1 The statutory statement incorrectly listed claims 16-20 under line item number 1 on page 3 of the 10-23-25 Final OA.
Prosecution Insights