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 § 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, 20-23 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);
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 17, Nelson as modified teaches the limitations of claim 16 upon which claim 17 depends.
Nelson teaches wherein the partially reflective region comprises a Distributed Bragg Reflector (Fig. 2, 210 and Fig. 6, 610 are equivalent structures. see also col 2 lines 44-50 and col 4, lines 15-19).
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 20, Nelson as modified teaches the limitations of claim 16 upon which claim 20 depends.
Nelson teaches wherein the light emitting structure comprises a GaN based structure (col 3, lines 11-15).
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 1, and further in view of Schwarzmaier et al (US publication 20200274031).
Regarding claim 19, Nelson as modified teaches the limitations of claims 1 and 16 upon which claims 7 and 19 respectively depend.
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 presented on January 15, 2026 are persuasive as to the method claim which presents specific method steps relating to forming a light emitting structure with the undoped region and can be seen in the Allowable Subject Matter section above. As to the product claims, claims 16-23, these claims and the specific limitation in claim 16 of “a roughened region formed from an undoped material” is related to a product by process (see MPEP 2113) and is only directed to the final product of which Nelson as modified discloses as seen in the rejection above. Applicant is invited to claim more structural limitations that would only be present in a roughened region that was formed by an undoped material that would be structurally different than a roughened region that was formed from either a not intentionally doped or an intentionally doped region.
While most of the arguments are directed to the ‘forming’ language and, therefore, the method steps, Applicant does argue that the 103 rejection is not proper based on additional structures presented in Schwach. But the main reason for Schwach is simply to teach that a roughened structure could be formed from an undoped region, and not to bring in or teach every structural limitation of Schwach into Nelson. Applicant argues there is no reason or motivation to combine, this is also respectfully traversed, while one of ordinary skill in the art would recognize that this could provide improved re-emission and color mixing in the device, it is understood the roughening could be formed by an undoped layer, not intentionally doped layer, or a doped layer, and understanding that there does not appear to be any significant structural difference, and engineer would find it obvious to try each of the options creating multiple final products and to then test their usefulness. Further, it could be argued that Nelson has the same final product as the claimed invention and could be considered a 35 U.S.C 102 rejection, Schwach is only taught in to introduce that it is known to consider forming a roughening layer from an undoped material, see MPEP 1207.03(a)(II)(2) stating that a lack of novelty is the epitome of obviousness.
Conclusion
THIS ACTION IS MADE FINAL. 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 NICHOLAS HUTSON whose telephone number is (571)270-1750. The examiner can normally be reached Mon-Fri 8am-5pm.
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/NICHOLAS LELAND HUTSON/ Examiner, Art Unit 2818
/JEFF W NATALINI/ Supervisory Patent Examiner, Art Unit 2818