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 .
Status of Claims
Claims 17-19 are cancelled. Claims 1-16 and 20 are pending. Claims 1, 2, 12 and 20 are amended. Claim 1 is an independent claim. Claims 4-9, 14-16 and 20 are withdrawn. Claims 1-3, 10-13 are currently examined on the merits.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “light control structures” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Claim 12 is 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 12 recites "... the semiconducting substrate has any crystal orientation …", which is not described in the specification as originally filed.
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.
Claim 2 is 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.
The recited in claim 2 “…the light controlling structures are at an interface between the ELO layers and the host substrate …” constitutes an indefinite subject matter. Parent claim 1 already recites “the light controlling structures in the ELO layers”; It is not clear whether “the light controlling structures in the ELO layers” or “the light controlling structures are at an interface between the ELO layers and the host substrate”. Therefore, the metes and bounds of claim 2 are not readily ascertainable. Clarification and/or correction are/is required.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
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 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2 and 11-13 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Kamikawa et al (WO 2018204916 A1, “Kamikawa”), or, in the alternative, under 35 U.S.C. 103 as being unpatentable over Kamikawa et al (WO 2018204916 A1, “Kamikawa”).
Regarding claim 1, Kamikawa (entire document) teaches a method of providing one or more ELO layers light-emitting devices comprising preparing a host substrate 101/103 (page 5 lines 1-9, page 8 lines 1-5); forming/depositing a growth restrict mask 102 on the host substrate 101/103 (abstract, page 5 lines 5-10, page 9 lines 1-5, page 20 lines 9-10), wherein one or more patterns are formed in the growth restrict mask 102 on the host substrate 101/103 (page 5 lines 10-15, page 9 lines 9-18, page 20 lines 9-11), and the growth restrict mask 102 includes opening areas 105 that expose the host substrate 101/103 (abstract, page 5 lines 10-20, page 9 lines 9-26); growing one or more epitaxial lateral overgrowth (ELO) layers 106 on the host substrate 101/103 from the opening areas in the growth restrict mask (figs 1 and 2), and then laterally over the growth restrict mask and the patterns formed in the growth restrict mask 102 (figs 1 and 2), wherein the patterns are transferred onto the ELO layers 106, resulting in GaN-based layers/structures in the ELO layers (figs 1 and 2, col 5 lines 15-27, page 8 lines 7-25); and growing one or more device layers 108 on or above the ELO layers (figs 1 and 2, col 5 line 24 to col 6 line 14, page 8 lines 7-25, page 20 line 20-23), wherein the device layers 108 emit light using the resulting layers/structures in the ELO layers (figs 1 and 2, page 8 lines 16-25).
Kamikawa teaches a same/similar process of the patterns being transferred onto the ELO layers resulting structures in the ELO layers as addressed above. Even if it is not clearly envisaged that the resulting structure is light control structure, it still would have been reasonably expected to one skilled in the art before the effective filing date that the patterns being transferred onto the ELO layers would have resulted in light controlling structures in the ELO layers in Kamikawa, because the same or similar process is expected to produce the same or similar results/effects. It is axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. See MPEP 2144 II.
Regarding claim 2, Kamikawa teaches that the light controlling structures/layers are at an interface between the ELO layers and the host substrate (figs 1 and 2).
Regarding claim 11, Kamikawa teaches that the host substrate is a Ga-based (semiconducting) substrate (abstract, page 5 lines 5-9, page 10 lines 14-15).
Regarding claim 12, Kamikawa teaches that the GaN-based substrate may be any planes of c-plane, a-plane, m-plane and semipolar plane (page 8 lines 2-5, page 23 lines 21-25)
Regarding claim 13, Kamikawa teaches the growth restrict mask is comprised of one or more layers (page 9 lines 1-5).
Claims 3 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kamikawa as applied to claim 1 above, and further in view of Takehiro Yoshida (WO 2020096045 A1, US 20210391427 A1 used as corresponding English translation, “Yoshida”).
Regarding claim 3, Kamikawa teaches the patterns as addressed above, but does not explicitly teach the patterns comprise one or more random valley-hill patterns. However, Yoshida teaches a method, wherein patterns comprise one or more random valley-hill (valley/mountain/peak) patterns (0095-0100, 0284, 0400). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Kamikawa per teachings of Yoshida in order to promote growth of layers for controlling light emission (0042, 0043, 0095, 0232 and 0284).
Regarding claim 10, Kamikawa teaches the host substrate as addressed above, but does not explicitly teach the host substrate having trenches. However, Yoshida teaches a method, wherein the host substrate has valleys with lengths (trenches) (fig 10(a), 0398, 0399). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Kamikawa per teachings of Yoshida in order to promote growth of layers for controlling light emission (0042, 0043, 0095, 0232 and 0284).
Response to Arguments
Applicant's arguments filed 05/11/2026 have been fully considered but they are not persuasive.
Applicant’s arguments that Yoshida does not disclose “a growth restrict mask with patterns and opening areas” as recited in claim 1 have been considered, but not found persuasive because Yoshida is not applied to claim 1, and the arguments do not apply to the new ground rejection provided above.
Applicant’s arguments that “There are no patterns that comprise light controlling structures in the ELO layers of Kamikawa” have been considered, but not found persuasive. As applicant already noted, Kamikawa describes forming a growth restrict mask with a plurality of striped opening areas directly or indirectly upon a GaN- based substrate, and then growing a plurality of semiconductor layers upon the GaN-based substrate using the growth restrict mask. Furthermore, as addressed above, Kamikawa teaches a same/similar process of the patterns being transferred onto the ELO layers resulting structures in the ELO layers (figs 1 and 2, col 5 lines 15-27, page 8 lines 7-25). Even if it is not clearly envisaged that the resulting structure is light control structure, it still would have been reasonably expected to one skilled in the art before the effective filing date that the patterns being transferred onto the ELO layers would have resulted in light controlling structures in the ELO layers in Kamikawa, because the same or similar process is expected to produce the same or similar results/effects. It is axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. See MPEP 2144 II.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it is examiner’s position that an anticipation case and/or a prima facie case of obviousness is well-established per teachings/combination of the instantly cited references.
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 Hua Qi whose telephone number is (571)272-3193. The examiner can normally be reached 9am-6pm.
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, Kaj Olsen can be reached at (571) 272-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HUA QI/ Primary Examiner, Art Unit 1714
Prosecution Insights