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 .
Response to Requirement for Information
The applicant responded to a requirement for information.
The applicant noted “Applicant submitted the interrogatories to Google's Gemini AI and received the following answers”.
The applicant noted: “The estimated bandgap of the compound”. The examiner submits that Gemini “estimated” the bandgap. Since the applicant did respond with the claimed material bandgap, there is a question as to whether the specification has possession of all the claimed species.
Response to Arguments
Applicant's arguments filed 2/4/26 have been fully considered but they are not persuasive.
The applicant alleges “Inchinose also does not teach or suggest the claimed UVTC”. The examiner disagrees Inchinose et al. disclose transparent contact (7) made of beta- Ga2O3 [0059] (fig. 1), which is made of the same claimed material, and would inherently have the same properties. Therefore, the applicant’s arguments are unpersuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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, 3, 6-15, 17, 20-27 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.
Lack of written description for a contact made of silicon oxide and aluminum oxide
Claims 1 and 15 disclose “an oxide that is an alloy composition of (Ga, Al, In, B, Mg, Fe, Si, Sn)O”.
Claims 3 and 17 disclose “GanAlsIntBuMgvFewSixSnyO where 0 ≤ n ≤ 1, 0 ≤ x ≤ 1, 0 ≤ y ≤ 1, and n+s+t+u+v+w+x+y =1”.
Claims 1 and 15 would encompass claims 3 and 17.
The formula “GanAlsIntBuMgvFewSixSnyO where 0 ≤ n ≤ 1, 0 ≤ x ≤ 1, 0 ≤ y ≤ 1, 0 ≤ z ≤ 1 and n+s+t+u+v+w+x+y =1”would encompass both silicon oxide and aluminum oxide, which are well known insulators (i.e. they would not function as a contact in order to conduct electricity).
Lack of written description for amendment to specification and claims 3 and 17
Originally filed claim 3 and 17 disclose GanAlsIntBuMgvFewSixSnyOz where 0 ≤ n ≤ 1, 0 ≤ x ≤ 1, 0 ≤ y ≤ 1, 0 ≤ z ≤ 1 and n+s+t+u+v+w+x+y+z=1.
Newly amended deleted the variable composition of oxygen or “z”and now claims 3 and 17 disclose “GanAlsIntBuMgvFewSixSnyO where 0 ≤ n ≤ 1, 0 ≤ x ≤ 1, 0 ≤ y ≤ 1, 0 ≤ z ≤ 1 and n+s+t+u+v+w+x+y =1”.
Page 3 of the specification filed 4/12/23 defines oxide broadly.
Page 3 line 17 explicitly discloses “As used herein, the term "oxide" refers to any alloy composition of the (Ga, Al, In, B, Mg, Fe, Si, Sn)O semiconductors having a formula GanAlsIntBuMgvFewSixSnyOz where 0 ≤ n ≤ 1, 0 ≤ x ≤ 1, 0 ≤ y ≤ 1, 0 ≤ z ≤ 1 and n+s+t+u+v+w+x+y+z=1”.
The applicant’s representative fails to point to another part of the originally filed specification that would support the claim amendment.
The applicant cites to the provisional application to give support but the provisional only support part of the formula. The provisional only discloses “The device of claim 1, wherein the ultraviolet transparent contact contains some aluminum and/or indium and/or gallium and/or boron, such that the ultraviolet transparent contact is comprised of an alloy composition that has the formula GanAlxInyBzO” not GanAlsIntBuMgvFewSixSnyO.
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, 3, 6-15, 17, 20-27 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 15 disclose a “ultraviolet transparent contact is composed of an oxide that is an alloy composition of (Ga, Al, In, B, Mg, Fe, Si, Sn)O”.
Claims 3 and 17 disclose “the transparent contact is comprised of alloy composition … having…GanAlsIntBuMgvFewSixSnyO where 0 ≤ n ≤ 1, 0 ≤ x ≤ 1, 0 ≤ y ≤ 1, and n+s+t+u+v+w+x+y =1”.
The formula “GanAlsIntBuMgvFewSixSnyO where 0 ≤ n ≤ 1, 0 ≤ x ≤ 1, 0 ≤ y ≤ 1, 0 ≤ z ≤ 1 and n+s+t+u+v+w+x+y =1”would encompass both silicon oxide and aluminum oxide, which are well known insulators (i.e. they would not function as a contact in order to conduct electricity).
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, 3-4, 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shur et al. (US 2017/0117437) in view of Inchinose et al. (US 2008/0142795).
Regarding claim 1, Shur et al. disclose a substrate (12) (fig 1A), an n-type region (18, fig 1A, AlGaN) formed on or above the substrate, an active region (19) [0040, Al.sub.xGa.sub.1-xN with 0≦x≦1, would emit UV light because the disclosed composition is within the claimed range AlxInyGa1-x-yN where 0 ≤ x ≤ 1, 0 ≤ y ≤ 1. Moreover, GaN has a bandgap of 3.4 eV. MPEP 2112.01 [R-10.2019] discloses “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).”] formed on or above the n-type region, a p-type region (20, transparent AlGaN, fig. 1A) formed on or above the active region, and at least one ultraviolet transparent contact (UVTC) (22)[0042, the p-type contact layer 22 can comprise metallic regions annealed to the p-type AlGaN layer 20. These regions can be transparent to …the target radiation] formed on or above the p- type region, and the n-type region [0078 discloses 54 is transparent, and 0067 discloses layer 54 is made up of AlGaN, and figure 1A discloses layer18 is AlGaN, therefore since layer 18 is the same material as the transparent layer the examiner submits 18 is transparent ], the p-type region (figure 1A) and the ultraviolet transparent contact [0042] are transparent to the UV light .
Shur et al. fails to explicitly disclose an ultraviolet transparent contact made of an alloy composition of (Ga. Al. In, B. Mg. Fe. Si. Sn)O.
Inchinose et al. disclose transparent contact (7) made of beta- Ga2O3 [0059] (fig. 1). (Selim US 20230377903 discloses the beta- Ga2O3 has a bandgap of 4.5 to 5ev[0049].)
The combination would result in the active layer, GaN, having a lower band gap than beta- Ga2O3.
The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference.
One of ordinary skill in the art could have combined the elements as claimed by known methods (using the transparent contact made of beta- Ga2O3 in an LED), and that in combination, each element merely performs the same function as it does separately.
One of ordinary skill in the art would have recognized that the results of the combination were predictable (i.e. beta- Ga2O3 would perform as a transparent contact).
Regarding claims 3 and 4, Inchinose et al. disclose transparent contact (7) made of beta- Ga2O3 [0059] (fig. 1).
Regarding claim 6, Shur et al. disclose the ultraviolet transparent contact is deposited [0042, 0045]. The way in which the ultraviolet transparent contact is deposited does not patentably distinguish the claim. MPEP 2113 I discloses“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same… the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 7, Shur et al. disclose the ultraviolet transparent contact (7) is bonded on or above the p-type layer (6) (fig. 1).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shur et al. (US 2017/0117437) (Shur 2017), in view of Inchinose et al. (US 2008/0142795) as applied to claim 1 above, and further in view of Park (US 20170309780) Selim (US 20230377903) and Shur et al. (US 2019/0207059)(hereinafter Shur 2019).
Shur 2017 and Inchinose et al. disclose the invention supra.
Regarding claims 8, Shur 2017 and Inchinose et al. fails to explicitly disclose the n-type region, the p-type region and the ultraviolet transparent contact each has a bandgap larger than the active region.
Selim discloses the beta- Ga2O3 has a bandgap of 4.5 to 5ev[0049].
Shur 2019 disclose the UV LED use AlGaN because of the tunable band gap between 3.4 and 6.2 eV [0004].
Park disclose if n-type and p-type nitride semiconductor layers have smaller energy band-gaps than energy of UV light emitted from an active layer, UV light emitted from the active layer can be absorbed into the n-type and p-type nitride semiconductor layers in the light emitting diode [0002].
The combination of Shur 2017 in view of Inchinose et al. Park Selim and Shur et al. Shur 2019 disclose the claimed invention except for the active layer having a smaller band gap than the n-type layer the p-type layer and the transparent contact. It would have been obvious to one of ordinary skill in the art at the time the invention was made to tune the band gap of the active layer to be less than 4.4 eV (through tuning) and make the band gaps of the n-type layer greater than 4.5 eV(through tuning) the p-type layer greater than 4.5 eV (through tuning) and the transparent contact 4.5 eV-5.0eV, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In Re Aller, 105 USPQ 233.
Therefore it would have been obvious to one of ordinary skill at the time the invention was filed to combine the teachings of Shur 2017 in view of Inchinose et al. Park Selim and Shur et al. Shur 2019 because the combined teachings would direct one of ordinary skill in the art to form a LED where the active region has a lower band gap (i.e. through band gap tuning) than the n-type layer the p-type layer and the transparent contact so that the light from the active layer will not be absorbed by the the n-type layer the p-type layer and the transparent contact [Park 0002].
Claim(s) 9, 10, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shur et al. (US 2017/0117437) in view of Inchinose et al. (US 2008/0142795) as applied to claim 1 above, and further in view of Yonkee et al. (WO2018/035322) , (2021/0104504 is the child of WO2018/035322 and has the same disclosure. The examiner will use the paragraph numbers in 2021/0104504 to evidence where elements are disclosed).
Shur 2017 and Inchinose et al. disclose the invention supra. Shur et al. disclose n-type region is a first n-type region
Shur 2017 and Inchinose et al. fail to disclose, a second n-type region is formed on or above the p-type region, wherein the second n-type region is transparent to the UV light.
Yonkee et al. disclose a second n-type region [0324] is formed on or above the p-type region [0324], wherein the second n-type region is transparent to the UV light [0324].
The combination of Shur et al and Inchinose et al. and Yonkee et al. would result in
the ultraviolet transparent contact is formed on or above the second n-type region (i.e. above both the p-type region and the second n-type region).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the teachings of Shur et al. and Yonkee et al. because second n-type region on the p-type region will form a tunnel junction and will result in current spreading and improve hole injections into the p-type region [Yonkee et al. 0320] and enables high light extraction efficiency UV LEDs by improving current spreading [Yonkee et al. 0324].
Regarding claim 10, Yonkee et al. disclose the second n-type region forms a tunnel junction with the p-type region [320,324].
Regarding claim 14, Yonkee et al. disclose wherein the second n-type region is a comprised of n-AlGaN (1916)(see fig. 19a).
Claim(s) 15, 17-18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shur et al. (US 2017/0117437) in view of Inchinose et al. (US 2008/0142795)
Regarding claim 15, Shur et al. disclose a substrate (12) (fig 1A), an n-type region (18) formed on or above the substrate, an active region (19) [0040, Al.sub.xGa.sub.1-xN with 0≦x≦1, would emit UV light because the disclosed composition is within the claimed range AlxInyGa1-x-yN where 0 ≤ x ≤ 1, 0 ≤ y ≤ 1. Moreover, GaN has a bandgap of 3.4 eV. MPEP 2112.01 [R-10.2019] discloses “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).”] formed on or above the n-type region, a p-type region (20, transparent AlGaN, fig. 1A) formed on or above the active region, and at least one ultraviolet transparent contact (UVTC) (22)[0042, the p-type contact layer 22 can comprise metallic regions annealed to the p-type AlGaN layer 20. These regions can be transparent to …the target radiation (i.e. UV)] formed on or above the p- type region, and the n-type region [0078 discloses 54 is transparent, and 0067 discloses layer 54 is made up of AlGaN, and figure 1A discloses layer18 is AlGaN, therefore since layer 18 is the same material as the transparent layer the examiner submits 18 is transparent ], the p-type region (figure 1A) and the ultraviolet transparent contact [0042] are transparent to the UV light .
Inchinose et al. disclose transparent contact made of beta- Ga2O3 [0059] (fig. 1). (Selim US 20230377903 discloses the beta- Ga2O3 has a bandgap of 4.5 to 5ev[0049].)
Shur et al. fails to explicitly disclose an ultraviolet transparent contact made of an alloy composition of (Ga. Al. In, B. Mg. Fe. Si. Sn)O.
Inchinose et al. disclose transparent contact (7) made of beta- Ga2O3 [0059] (fig. 1). (Selim US 20230377903 discloses the beta- Ga2O3 has a bandgap of 4.5 to 5ev[0049].)
The combination would result in the active layer, GaN, having a lower band gap than beta- Ga2O3.
The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference.
One of ordinary skill in the art could have combined the elements as claimed by known methods (using the transparent contact made of beta- Ga2O3 in an LED), and that in combination, each element merely performs the same function as it does separately.
One of ordinary skill in the art would have recognized that the results of the combination were predictable (i.e. beta- Ga2O3 would perform as a transparent contact).
Regarding claims 17 and 18, Inchinose et al. disclose transparent contact made of beta- Ga2O3 [0059] (fig. 1).
Regarding claim 20, Shur et al. disclose the ultraviolet transparent contact is bonded on or above the p-type layer [0042].
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shur et al. (US 2017/0117437) (Shur 2017), in view of Inchinose et al. (US 2008/0142795) as applied to claim 15 above, and further in view of Park (US 20170309780) Selim (US 20230377903) and Shur et al. (US 2019/0207059)(hereinafter Shur 2019).
Shur 2017 and Inchinose et al. disclose the invention supra.
Regarding claims 8, Shur 2017 and Inchinose et al. fails to explicitly disclose the n-type region, the p-type region and the ultraviolet transparent contact each has a bandgap larger than the active region.
Selim discloses the beta- Ga2O3 has a bandgap of 4.5 to 5ev[0049].
Shur 2019 disclose the UV LED use AlGaN because of the tunable band gap between 3.4 and 6.2 eV [0004].
Park disclose if n-type and p-type nitride semiconductor layers have smaller energy band-gaps than energy of UV light emitted from an active layer, UV light emitted from the active layer can be absorbed into the n-type and p-type nitride semiconductor layers in the light emitting diode [0002].
The combination of Shur 2017 in view of Inchinose et al. Park Selim and Shur et al. Shur 2019 disclose the claimed invention except for the active layer having a smaller band gap than the n-type layer the p-type layer and the transparent contact. It would have been obvious to one of ordinary skill in the art at the time the invention was made to tune the band gap of the active layer to be less than 4.4 eV (through tuning) and make the band gaps of the n-type layer greater than 4.5 eV(through tuning) the p-type layer greater than 4.5 eV (through tuning) and the transparent contact 4.5 eV-5.0eV, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In Re Aller, 105 USPQ 233.
Therefore it would have been obvious to one of ordinary skill at the time the invention was filed to combine the teachings of Shur 2017 in view of Inchinose et al. Park Selim and Shur et al. Shur 2019 because the combined teachings would direct one of ordinary skill in the art to form a LED where the active region has a lower band gap (i.e. through band gap tuning) than the n-type layer the p-type layer and the transparent contact so that the light from the active layer will not be absorbed by the the n-type layer the p-type layer and the transparent contact [Park 0002].
Claim(s) 22, 23, and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shur et al. (US 2017/0117437) in view of Inchinose et al. (US 2008/0142795) as applied to claim 15 above, and further in view of Yonkee et al. (WO2018/035322) , (2021/0104504 is the child of WO2018/035322 and has the same disclosure. The examiner will use the paragraph numbers in 2021/0104504 to evidence where elements are disclosed).
Shur 2017 and Inchinose et al. disclose the invention supra. Shur et al. disclose n-type region is a first n-type region
Shur 2017 and Inchinose et al. fail to disclose, a second n-type region is formed on or above the p-type region, wherein the second n-type region is transparent to the UV light.
Yonkee et al. disclose a second n-type region [0324] is formed on or above the p-type region [0324], wherein the second n-type region is transparent to the UV light [0324].
The combination of Shur et al and Inchinose et al. and Yonkee et al. would result in
the ultraviolet transparent contact is formed on or above the second n-type region (i.e. above both the p-type region and the second n-type region).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the teachings of Shur et al. and Yonkee et al. because second n-type region on the p-type region will form a tunnel junction and will result in current spreading and improve hole injections into the p-type region [Yonkee et al. 0320] and enables high light extraction efficiency UV LEDs by improving current spreading [Yonkee et al. 0324].
Regarding claim 23, Yonkee et al. disclose the second n-type region forms a tunnel junction with the p-type region [320,324].
Regarding claim 27, Yonkee et al. disclose wherein the second n-type region is a comprised of n-AlGaN (1916)(see fig. 19a).
Allowable Subject Matter
Claims 5 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 11-13, and 24-26 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, and 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY K SMITH whose telephone number is (571)272-1884. The examiner can normally be reached Monday-Friday, 10am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marlon Fletcher can be reached at 571-272-2063. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADLEY SMITH/Primary Examiner, Art Unit 2817