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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 30, 2026 has been entered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 16, 18, 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Nelson et al (US Patent 10665759) in view of Schwach et al (US Patent 7223998).
Regarding claim 16, Nelson teaches light emitting structure (Fig. 6, 600) comprising:
a light emitting region configured to emit light having a primary peak wavelength (Fig. 6, 620, active region, blue LED at 500nm);
a partially reflective region (Fig. 6, 610 and 615), wherein the partially reflective region comprises a Distributed Bragg Reflector comprising GaN (Fig. 2, 210/215 and Fig. 6, 610/615 are equivalent structures. See also col 2 lines 44-50, col 4 lines 15-19, and col 7 lines 29-46);
a reflective region (Fig. 6, 630);
a colour conversion region (Fig. 6, 640); and
wherein the light emitting region is positioned at least partially between the partially reflective region and the reflective region (Fig. 6, 620 between 610 and 630) and the partially reflective region is positioned at least partially between the colour conversion region and the light emitting region (Fig. 6, 630 between 640 and 610)
wherein the partially reflective region is configured to reflect light of a predetermined range of wavelengths and allow light outside the predetermined range of wavelengths to pass through the partially reflective region, wherein the primary peak wavelength is outside the predetermined range of wavelengths (col 4, lines 34-43).
Nelson does not specifically teach a roughened region formed from an undoped material between the colour conversion region and the partially reflective region, the roughened region configured to increase light extraction into the colour conversion region (it is noted that Nelson does teach a roughened region formed from a not intentionally doped material between these regions, col 3, lines 11- 24, roughening of the substrate)
Schwach teaches a roughened region formed from an undoped material (Fig. 5B, undoped material 522, col 7, lines 36-41).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Nelson to include a roughened, undoped region as taught by Schwach in order to improve light extraction and color mixing in the device.
Furthermore, the present claim is drawn to a device, thus the method of “a roughened region formed from an undoped material” does not patentably distinguish the claimed invention from that of the invention of Nelson as modified.
It should be noted that a "product by process claim" is directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); and In re Marosi et al., 218 USPQ 289, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in " product by process" claims or not. Note that applicant has the burden of proof in such cases, as the above caselaw makes clear. See also MPEP 2113 [R-1]. Therefore, this limitation of “a roughened region formed from an undoped material” is only directed to the final product of which Nelson as modified discloses as seen in the rejection above.
Regarding claim 18, Nelson as modified teaches the limitations of claim 16 upon which claim 18 depends.
Nelson teaches wherein the reflective region comprises an Ag-based mirror (col 7, line 40).
Regarding claim 21, Nelson as modified teaches the limitations of claim 16 upon which claim 21 depends.
Nelson teaches wherein the light emitting region comprises one or more epitaxial quantum wells (col 3, lines 43-45).
Regarding claim 22, Nelson as modified teaches the limitations of claim 16 upon which claim 22 depends.
Nelson teaches wherein the light emitting region is configured to emit light with a primary peak wavelength that corresponds to blue light (col 2, lines 61-64).
Regarding claim 23, Nelson as modified teaches the limitations of claim 16 upon which claim 23 depends.
Nelson teaches wherein the predetermined range of wavelengths comprises wavelengths of light longer than 500 nm such that wavelengths shorter than 500 nm are outside the predetermined range of wavelengths (col 8, lines 44-46, blue light wavelength of 500nm can be "tailored" to).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Nelson et al (US Patent 10665759 B2) and Schwach et al (US Patent 7223998) as applied to claim 16, and further in view of Schwarzmaier et al (US publication 20200274031).
Regarding claim 19, Nelson as modified teaches the limitations of claim 16 upon which claim 19 depends.
Nelson as modified does not specifically teach comprising bonding a handling device to the reflective region. It is noted that Nelson does teach “n-type contact 635 and p-type contact 630 may be redistributed to form bond pads with a dielectric/metal stack, as is known in the art” (col 7, lines 54-56).
Schwarzmaier teaches comprising bonding a handling device to the reflective region (Fig. 2V, 7 carrier attached to 11 n-doped region of reflective region, opposite side of substrate in stack).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Nelson as modified to include bonding a handling device to the reflective region as taught by Schwarzmaier in order to facilitate further processing of the structure and improve the structural and physical properties of the device.
Allowable Subject Matter
Claims 1-4 and 6-11 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, the prior art does not teach or render obvious "forming undoped material between the substrate and the partially reflective region; removing the substrate; and roughening the undoped material following removal of the substrate and prior to forming the colour conversion region on the roughened undoped material" and in the combination as claimed.
Claims 2-4 and 6-11 further limit allowable claim 1 therefore are allowable for the same reasons as above.
Response to Arguments
Applicant’s arguments filed on April 30, 2026 have fully considered but they are not persuasive.
Regarding claim 16:
Applicant argues that Nelson teaches away from the claimed invention by teaching the skilled person to roughen the growth substrate to improve light conversion such that a skilled person would not look to Schach. Applicant also argues that Nelson teaches to remove the buffer/nucleation layer which is contradictory to the claimed invention that requires retaining this layer and subsequently roughening it and thus does not suggest or motivate a skilled person to retain the buffer layer and modify it for the purpose of improved light extraction. Finally to this argument the applicant states that there could be unknown light transmittances with the Nelson LED having both a roughed growth substrate and a roughed undoped region with a texture surface.
As claim 16 is drawn to a device and not a method, how and when the layer is roughened is moot. A person skilled in the art would be always be looking to improve and modify to provide benefits to the device and not necessarily stop at a singular improvement to “increase light extraction in the colour conversion region”. Nelson teaches that a surface of the growth substrate "may be patterned, roughened, or textured before growth.." and "a surface of the growth substrate opposite the growth surface, (i.e. the surface through which a majority of light is extracted in a flip chip configuration), may be patterned, roughened or textured before or after growth, which may improve light extraction from device." col 3 lines 11-24. The surface of the growth substrate opposite the growth surface is understood to be similar to the undoped region in the instant application. In prior arguments the applicant argued that this area in Nelson is taught to be "not intentionally doped", col 3 lines 25-42, a point ceded to the applicant in a prior office action. Schwach does teach an undoped, roughened region (Fig. 5B, undoped material 522, col 7, lines 36-41) and was taught into the 103 rejection of claim 16. This undoped and roughened region in Schwach is also on the DBR as in the instant application. The applicant's argument is unconvincing and the 103 rejection is upheld as in the prior office action.
Applicant further argues that Nelson does not teach or render obvious “the partially reflective region comprises a Distributed Bragg Reflector comprising GaN”. Nelson Col 2 lines 51-60 states “Described herein are a reflective structure for a light emitting device and methods for making the same. In general, a reflective structure is disposed on a surface of or within an n-type region of an III-nitride semiconductor structure. The reflective structure may include multiple layer pairs of alternating high and low indices of refraction, which reflects light through total internal reflection. An illustrative example of a reflective structure is a distributed Bragg reflector (DBR). Other reflectors can be used without departing from the scope of the description and claims herein.” The Nelson n-type region of 615 in combination with reflector 610 are described in col 7 lines 29-67 and similar structure layers 210 and 215 are described in col 4 lines 15-34 “the difference in index of refraction between layers 210 and 215 is due to the composition of layers 210 and 215. An illustrative structure and composition for a reflector is a semiconductor distributed Bragg reflector (DBR). For example, lower index of refraction layers 210 may be aluminum indium nitride (AlInN), and higher index of refraction layers 215 may be gallium nitride (GaN).”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS HUTSON whose telephone number is (571)270-1750. The examiner can normally be reached Mon-Fri 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeff Natalini can be reached at 571 272 2266. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/NICHOLAS LELAND HUTSON/ Examiner, Art Unit 2818
/JEFF W NATALINI/ Supervisory Patent Examiner, Art Unit 2818
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