DETAILED ACTION
This Office Action is in response to RCE filed March 16, 2026.
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
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 1-4 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Niwa et al. (US 2021/0135058) in view of Kim et al. (US 2012/0043575)
Regarding claim 1, Niwa et al. disclose a semiconductor light-emitting device (Fig. 1) comprising: a p-type AlGaN-based semiconductor layer (28) ([0048]); a p-type electrode (composite structure of electrode including 30, 32 and 38p) ([0053]-[0055] and [0061]) provided on the p-type AlGaN-based semiconductor layer, because (a) Applicant does not specifically claim what the p-type electrode does, and what it looks like, and (b) therefore, any conductive structure that includes the claimed ohmic metal layer and barrier layer can be referred to as “a p-type electrode” since the transitional phrase “comprising” does not preclude presence of another component layer or other component layers in the p-type electrode, wherein the p-type electrode includes: an ohmic metal layer (30) ([0053]) placed on a p-type AlGaN-based semiconductor layer side; and a barrier layer (composite layer of 32 and 38p) ([0055] and [0062]) that contains a TiN layer (32) ([0055]), because (a) Applicant does not specifically claim what the barrier layer does, and what it looks like, and (b) therefore, any conductive structure including the claimed TiN and Ti layers can be referred to as “a barrier layer” regardless of its function, shape or size, and wherein when a region of the barrier layer (peripheral region of p-side electrode covering layer 32) that does not overlap an electrical connection region (interface region of 38p and not-shown pad, which is top surface of 38p) between a pad (not-shown pad, but disclosed in secondary reference of Kim et al.) and the barrier layer in a top view is defined as a surface diffusion inhibiting surface, because this limitation is a definition of a term “surface diffusion inhibiting surface”, and the barrier layer further has a Ti layer ([0062]), a surface of the Ti layer forming the surface diffusion inhibiting surface, because (a) this limitation is inherent and is also directed to an intended use of “a surface of the Ti layer” especially since (i) Applicant does not specifically claim what the surface diffusion inhibiting surface does, (ii) how efficiently “a surface of the Ti layer” functions as “the surface diffusion inhibiting surface”, (iii) what or which element/atom diffuses in, on, into or onto the surface of the Ti layer, and (iv) therefore, any Ti layer surface can be referred to as “a surface diffusion inhibiting surface”, and (b) the Ti/Au or Ti/Pt/Au stack structure disclosed by Niwa et al. has a Ti layer at the top or at the bottom, and the Ti layer has “a surface of the Ti layer.”
Niwa et al. differ from the claimed invention by not comprising a pad provided on the p-type electrode, wherein the barrier layer is placed closer to the pad than the ohmic metal layer, and the surface diffusion inhibiting surface is formed in a ring-shaped pattern.
Kim et al. disclose a semiconductor light-emitting device (Fig. 4) comprising: a p-type AlGaN-based semiconductor layer (140) ([0045]); a p-type electrode (composite electrode including 150 and 182) ([0057] and [0060]) provided on the p-type AlGaN-based semiconductor layer; and a pad (396) ([0082]) provided on the p-type electrode, wherein the p-type electrode includes: an ohmic metal layer (150) placed on a p-type AlGaN-based semiconductor layer side; and a barrier layer (182) that is placed closer to the pad than the ohmic metal layer, and wherein when a region of the barrier layer that does not overlap an electrical connection region (interface region of 182 and 396) between the pad and the barrier layer in a top view is defined as a surface diffusion inhibiting surface, and the barrier layer further has a Ti layer ([0057]), a surface of the Ti layer forming the surface diffusion inhibiting surface, which is inherent and is also directed to an intended use of a surface of the Ti layer as discussed above.
Since both Niwa et al. and Kim et al. teach a semiconductor light-emitting device, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the semiconductor light-emitting device disclosed by Niwa et al. can further comprise a pad provided on the p-type electrode of Niwa et al. as disclosed by Kim et al., wherein the barrier layer is placed closer to the pad than the ohmic metal layer, because forming solders for a flip-chip electrical connection as shown in Fig. 4 of Kim et al. has been well-known to one of ordinary skill in the art, and thus the semiconductor light-emitting device disclosed by Niwa et al. can also be employed for a flip-chip electrical connection for desired applications; in this case, the lateral size of the pad 396 of Kim et al. would be the same with or similar/comparable to the lateral size of the top surface of the p-type electrode of Niwa et al. as shown in Fig. 4 of Kim et al., exposing the top surface of the p-side electrode covering layer 32 made of TiN of Niwa et al. to meet the claim limitations cited above except for the “ring-shaped pattern”.
Further regarding claim 1, Niwa et al. in view of Kim et al. differ from the claimed invention by not showing that the surface diffusion inhibiting surface is formed in a ring-shaped pattern.
Kim et al. further disclose that the barrier layer 182 has a circle shape in Fig. 1.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the surface diffusion inhibiting surface disclosed by Niwa et al. can be formed in a ring-shaped pattern, because it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that, in addition to the top portion of the barrier layer 38p disclosed by Niwa et al. having a circular shape in plan view as disclosed by Kim et al., the pad 396 disclosed by Kim et al. can have a circle shape, a square shape or a rectangular shape in plan view, which have been the three most commonly employed shapes of a solder such as the solders 396/398 of Kim et al. due to symmetry of forming and surface energy of the solders; in this case, the surface diffusion inhibiting surface would be formed in a ring-shaped pattern, especially because (a) Applicant does not specifically claim what the term “ring-shaped” refers to, and (b) therefore, any shape that has a closed-loop shape with a hollow center can be referred to be “ring-shaped”.
Regarding claims 2 and 3, Niwa et al. further disclose that the ohmic metal layer (30) is a layer free of Ag ([0053]) (claim 2), and in atop view, a region (arbitrary region such as top surface region of 38p or bottom horizontal surface portion of 32) of the barrier layer (composite layer of 32 and 38p) is completely overlapped with or is included in a region (arbitrary region) of the ohmic metal layer (30) (claim 3).
Regarding claim 4, Niwa et al. in view of Kim et al. differ from the claimed invention by not showing that a thickness of the TiN layer included in the barrier layer is 100 nm or more and 2000 nm or less.
Niwa et al. further disclose that “The thickness of the p-side electrode covering layer 32 is 5 nm or larger and is, for example, about 10 nm-100 nm” ([0055]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the thickness of the TiN layer included in the barrier layer can be 100 nm or more and 2000 nm or less, because (a) the claimed thickness of the TiN layer overlaps with the thickness of the TiN layer 32 disclosed by Niwa et al., and (b) the thickness of the TiN layer or the p-side electrode covering layer 32 of Niwa et al. should be controlled and optimized to better cover and protect the underlying p-side contact electrode 30.
Regarding claim 7, Niwa et al. in view of Kim et al. differ from the claimed invention by not showing that the ohmic metal layer contains Ni and Au.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the ohmic metal layer can contain Ni and Au, because (a) Applicant does not specifically claim the contents of Ni and Au or the structure of the ohmic metal layer such as a stacked layer of Ni/Au or Au/Ni, or an alloy essentially consisting of Ni and Au, (b) therefore, as long as there is one or more atoms of Ni and Au in the ohmic metal layer, the claim limitation of claim 7 would be met, (c) Ni and Au atoms can be added to the ohmic metal layer to improve conductivity as well as reflectivity or transmittance, (d) also, Ni and Au atoms have been commonly introduced as electrode materials into a reaction chamber, and therefore, Ni and Au atoms can be incorporated as unwanted impurities into the claimed ohmic metal layer to a certain degree, or N and Au atoms can diffuse from neighboring layers into the claimed ohmic metal layer, both of which would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, and (e) it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use, In re Leshin, 125 USPQ 416.
Regarding claim 8, Niwa et al. in view of Kim et al. differ from the claimed invention by not showing that in a top view, a shortest distance between an outer periphery of the electrical connection region and an outer periphery of the region of the barrier layer is 3 µm to 50 µm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that, in a top view, a shortest distance between an outer periphery of the electrical connection region and an outer periphery of the region of the barrier layer can be 3 µm to 50 µm, because (a) the claimed shortest distance is associated with the overall lateral size of the semiconductor light-emitting device, (b) the larger the shortest distance, the greater the light intensity of the semiconductor light-emitting device would be, and (c) the claim is prima facie obvious without showing that the claimed range of the shortest distance achieves unexpected results relative to the prior art range. In re Woodruff, 16 USPQ2d 1935, 1937 (Fed. Cir. 1990). See also In re Huang, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996) (claimed ranges of a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill of art) and In re Aller, 105 USPQ 233 (CCPA 1955) (selection of optimum ranges within prior art general conditions is.
Regarding claim 9, Niwa et al. further disclose for the semiconductor light-emitting device according to Claim 1 that the barrier layer inherently inhibits migration of Ag through the pad (396 of Kim et al.) into the p-type AlGaN-based semiconductor layer (28 of Niwa et al.), because (a) Niwa et al. in view of Kim et al. disclose all the claim limitations, and (b) if Niwa et al. in view of Kim et al. do not disclose the limitation of claim 9, then claim 9 would be indefinite for not claiming an essential or critical feature to the practice of the claimed invention.
Response to Arguments
Applicant's arguments filed March 16, 2026 have been fully considered but they are not persuasive.
It appears that Applicant’s arguments in the REMARKS filed March 16, 2026 are based on the original disclosure rather than claim limitations, and MPEP 2111.01 stipulates that it is improper to import claim limitations from the specification.
It also appears that Applicant’s arguments in the REMARKS resort to attacking the teachings of the individual references of Niwa et al. and Kim et al., and in response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The Examiner notes that Applicant does not specifically claim what the “surface diffusion inhibiting surface” beyond claiming “a surface of the Ti layer forming the surface diffusion inhibiting surface”, and therefore, Applicant’s arguments in the REMARKS mentioning the location of the Ti layer and the surface diffusion inhibiting surface are not persuasive. In other words, even if arguendo the Ti layer disclosed by Niwa et al. is not disclosed above the TiN layer or the Ti layer is a buried layer, and even if the Ti layer is not in direct contact with the pad, the top, bottom or side surface of the Ti layer would be able to function inherently as a “surface diffusion inhibiting surface” against surface diffusion of unspecified elements that diffuse due to unspecified causes and mechanisms to a certain degree.
Furthermore, it appears that Applicant’s arguments in the REMARKS are also based on the limitation “an electrical connection region between the pad and the barrier layer” recited on lines 10-11 of claim 1, which are not persuasive, because the preposition “between’ does not necessarily suggest that the electrical connection region is the only region between the pad and the barrier layer, and there can be a plurality of regions “between the pad and the barrier layer”, one of which can be the claimed “electrical connection region.” If the Examiner may provide an example of usage of the preposition “between” in a broad sense, the third floor is between the first floor and the fifth floor of a building.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tasaki et al. (US 10,658,543)
Renn et al. (US 10,777,764)
Sato et al. (US 2012/0032213)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY C KIM whose telephone number is (571) 270-1620. The examiner can normally be reached 8:00 AM - 6:00 PM EST.
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, Joshua Benitez can be reached at (571) 270-1435. 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.
/JAY C KIM/Primary Examiner, Art Unit 2815
/J. K./Primary Examiner, Art Unit 2815 May 28, 2026
Prosecution Insights