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 .
Information Disclosure Statement
Information disclosure statements (IDS) were submitted on 5/30/24, 9/19/24, and 7/14/25. Accordingly, the information disclosure statements are being considered by the Examiner and initialed copies of the forms are attached to this correspondence.
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 (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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 49-58, 60, 61, and 66-68 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ohkawa (US Patent Application Publication No. 2020/0119523) (“Ohkawa”).
Regarding Claim 49, Ohkawa teaches a micro light emitting diode (LED) chip structure, comprising: a semiconductor substrate (Figure 2A, item 210); an electrical contact layer (Figure 2A, item 205) on the semiconductor substrate; a first-type conductive layer (Figure 2A, item 215) on the electrical contact layer; an active light emitting layer (Figure 2A, item 225) on the first-type conductive layer; and a second-type conductive layer (Figure 2A, item 240) on the active light emitting layer.
The language “wherein a surface of the micro LED chip structure close to the second-type conductive layer is obtained after a substrate layer is removed” is directed to the process of making a surface of a micro LED chip structure. It is well settled that "product by process" limitations in claims drawn to structure are 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 Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, 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 otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language "wherein a surface of the micro LED chip structure close to the second-type conductive layer is obtained after a substrate layer is removed " only requires a “surface of the micro LED chip structure close to the second-type conductive layer”, which does not distinguish the invention from Ohkawa, who teaches the structure as claimed.
Regarding Claim 50, Ohkawateaches the structural requirements of the claims as the language “a surface of the second- type conductive layer is obtained after an organic material layer is removed” is directed to the process of making a surface of a micro LED chip structure. It is well settled that "product by process" limitations in claims drawn to structure are 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 Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, 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 otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language " a surface of the second- type conductive layer is obtained after an organic material layer is removed" only requires a “surface of the micro LED chip structure close to the second-type conductive layer”, which does not distinguish the invention from Ohkawa, who teaches the structure as claimed
Regarding Claim 51, Ohkawa teaches the structural requirements of the claims as the language “the organic material layer is an ultraviolet (UV) curable bonding layer” is directed to the process of making a surface of a micro LED chip structure. It is well settled that "product by process" limitations in claims drawn to structure are 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 Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, 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 otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language " the organic material layer is an ultraviolet (UV) curable bonding layer" only requires a “surface of the micro LED chip structure close to the second-type conductive layer”, which does not distinguish the invention from Ohkawa, who teaches the structure as claimed.
Regarding Claim 52, Ohkawa further teaches a thickness of the second-type conductive layer is smaller than a thickness of the first-type conductive layer (see Figure 2B, note thickness difference between 240A and 215).
Regarding Claim 53, Ohkawa further teaches a second-type spacer layer (Figure 2A, items 230+235) between the active light emitting layer and the second-type conductive layer ,wherein the second-type spacer layer is used for forming a PN junction structure with the active light emitting layer and the first-type conductive layer (note light is emitted from the structure, thus the layer is “used” to form a PN junction with the active light emitting layer), and wherein the second-type conductive layer includes one or more second-type conductive transition layers (see Figure 2A, note items 230 and 235).
Regarding Claim 54, Ohkawa teaches the first-type conductive layer is an N-type layer and the second-type conductive layer is a P-type layer (¶0023), or wherein the first-type conductive layer is a P-type layer and the second-type conductive layer is an N-type layer.
Regarding Claim 55, Ohkawa further teaches wherein the semiconductor substrate is an integrated circuits (IC) substrate (¶0038).
Regarding Claim 56, Ohkawa further teaches the electrical contact layer is a metal bonding layer (¶0022). The language “wherein the semiconductor substrate and the first-type conductive layer are bonded together through a bonding process” is directed to the process of making a surface of a micro LED chip structure. It is well settled that "product by process" limitations in claims drawn to structure are 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 Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, 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 otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language “wherein the semiconductor substrate and the first-type conductive layer are bonded together through a bonding process" only requires the structures to be bonded together, which does not distinguish the invention from Ohkawa, who teaches the structure as claimed.
Regarding Claim 57, Ohkawa further teaches a first-type cladding layer (Figure 2A, item 220) between the first-type conductive layer and the active light emitting layer.
Regarding Claim 58, Ohkawa further teaches an oxide layer (Figure 2B, item 240A) within the first-type cladding layer or between the first-type conductive layer and the first- type cladding layer.
Regarding Claim 60, Ohkawa further teaches comprising a second- type cladding layer (Figure 2B, item 240A) between the second-type conductive layer (Figure 2B, item 240B) and the active light emitting layer.
Regarding Claim 61, Ohkawa further teaches an oxide layer (Figure 2B, item 240A) within the secind-type cladding layer or between the second-type conductive layer and the second- type cladding layer.
Regarding Claim 66, Ohkawa teaches an epitaxial structure for a micro light emitting diode (LED), comprising: a semiconductor substrate (Figure 2B, item 210); an electrical conductive layer of a first conductivity type (Figure 2B, item 215) on the semiconductor substrate; a cladding layer of the first conductivity type (Figure 2B, item 220) on the electrical conductive layer of the first conductivity type; a first oxide layer within the cladding layer of the first conductivity type or between the electrical conductive layer of the first conductivity type and the cladding layer of the first conductivity type (Figure 2B, item 240A, note ); an active light emitting layer (Figure 2B, item 225) on the cladding layer of the first conductivity type; a cladding layer of a second conductivity type (Figure 2B, item 230) on the active light emitting layer; and an electrical conductive layer (Figure 2B, item 245)of the second conductivity type on the cladding layer of the second conductivity type.
Regarding Claim 67, Ohkawa further teaches a second oxide layer (Figure 2B, item 240B) within the cladding layer of the second conductivity type or between the cladding layer of the second conductivity type and the electrical conductive layer of the second conductivity type.
Regarding Claim 68, Ohkawa teaches an epitaxial structure for a micro light emitting diode (LED), comprising: a semiconductor substrate (Figure 2B, item 210); an electrical conductive layer (Figure 2B, item 215) of a first conductivity type on the semiconductor substrate; a cladding layer (Figure 2B, item 220) of the first conductivity type on the electrical conductive layer of the first conductivity type; an active light emitting layer (Figure 2B, item 225) on the cladding layer of the first conductivity type; a cladding layer of a second conductivity type (Figure 2B, item 240A) on the active light emitting layer; an electrical conductive layer of the second conductivity type (Figure 2B, item 240B) on the cladding layer of the second conductivity type; and a first oxide layer (Figure 2B, item 240A, ¶0024) within the cladding layer of the second conductivity type or between the cladding layer of the second conductivity type and the electrical conductive layer of the second conductivity type.
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.
The factual inquiries 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 59, 62, 63, and 64 are rejected under 35 U.S.C. 103 as being unpatentable over Ohkawa as applied to claims 58, 61, 49, and 60 above.
Regarding Claim 59, Ohkawa teaches Claim 58 as indicated above. Ohkawa does not specifically teach the material of the oxide layer is AlxOGa1-xAs, and x is greater than or equal to 0.9 and less than 1. However, it would have been obvious to use the known material in the device of Ohkawa, as it has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). MPEP § 2144.07.
Regarding Claim 62, Ohkawa teaches Claim 61 as indicated above. Ohkawa does not specifically teach the material of the oxide layer is AlxOGa1-xAs, and x is greater than or equal to 0.9 and less than 1. However, it would have been obvious to use the known material in the device of Ohkawa, as it has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). MPEP § 2144.07.
Regarding Claim 63, Ohkawa teaches Claim 49 as indicated above. Ohkawa does not specifically teach wherein a ratio of a thickness of the second-type conductive layer to a thickness of the first-type conductive layer is 1.5 to 2 (although Ohkawa does teach a size difference between the layers in Figure 2B), however it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the relative sizes of the layers, 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.
Regarding Claim 64, Ohkawa teaches Claim 60 as indicated above. Ohkawa further teaches the second-type conductive layer includes one or more second-type conductive transition layers (see Figure 2B, items 240A and 240B). Ohkawa does not specifically teach a ratio of a thickness of the second-type cladding layer to a total thickness of the one or more second-type conductive transition layers is 1 to 2.5, however it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the relative sizes of the layers, 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.
Regarding Claim 65, Ohkawa further teaches wherein the second-type conductive layer includes one or more second-type conductive transition layers (Figure 2B, item 240A+240B). Ohkawa does not specifically teach the one or more second-type conductive transition layers comprise sequentially a lower second-type conductive transition layer, a middle second-type conductive transition layer, and an upper second-type conductive transition layer in a direction from the semiconductor substrate to the first-type conductive layer, and wherein a conductivity of the lower second-type conductive transition layer is less than that of the middle second-type conductive transition layer, and the conductivity of the middle second-type conductive transition layer is less than that of the upper second-type conductive transition layer. However, absent a showing of criticality with respect to the number of layers (a result effective variable), it would have been obvious to a person of ordinary skill in the art at the time of the invention to adjust the thickness through routine experimentation in order to achieve optimized light emission. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
El-Ghoroury et al. (US Patent Application Publication No. 2019/0378957)
Pan et al. (US Patent Application Publication No. 2014/0042485)
Ryu et al. (US Patent Application Publication No. 2011/0133175)
Chae et al. (US Patent Application Publication No. 2008/0286894)
Song (US Patent Application Publication No. 2007/0034857)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK W TORNOW whose telephone number is (571)270-7534. The examiner can normally be reached M-Th 6:30-4:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Landau can be reached at 571-272-1731. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MARK W. TORNOW
Primary Examiner
Art Unit 2891
/MARK W TORNOW/Primary Examiner, Art Unit 2891
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