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 .
Election/Restrictions
Applicant's election with traverse of Invention 1 (claims 1-16) in the reply filed on 10/31/2025 is acknowledged. The traversal is on the ground(s) that there is no undue burden on the Examiner to consider all claims. This is not found persuasive because the Applicant’s argument is a mere conclusory statement. As noted in the restriction requirement mailed on 9/30/2025, additional searching for distinct features of ether the product as claimed or the method as claimed represents an undue burden on the Examiner. Since the Applicant has not provided any evidence or stated on the record that the method claims are patentably indistinct from, or an obvious variant of, the product claims, the argument is unpersuasive.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-16 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.
Claim 1 recites “a slit extending from said first bonding surface toward said second bonding surface and terminating at a position that is a distance (X) away from said second bonding surface” in lines 8-10. ‘X’ appears to be defining a variable for the slit distance. However, no numerical values are provided to define the metes and bounds of the claimed slit distance. This renders the scope of claim 1 indefinite.
Claims 2-16 depend on claim 1, and are rejected under 35 USC § 112(b) for implicitly including the indefinite subject matter above.
For the purpose of compact prosecution, the Examiner has interpreted claim 1 to mean:
“…a transparent bonding structure…that has a slit extending from said first bonding surface toward said second bonding surface and terminating at a position
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 10-12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
1. Claim 10 recites “wherein said transparent bonding structure is made of an insulating material or a conductive material.” As understood by the Examiner, only two types of material are known: insulating, or conductive. Therefore, since the limitations of claim 10 include all possible known materials, claim 10 fails to further limit the claim on which it depends (claim 1).
2. Claim 11 recites “…wherein said transparent bonding structure is formed on said first surface of said epitaxial structure by a chemical deposition process or a physical deposition process” (emphasis added). The bolded text comprises a product by process limitation, and is not given patentable weight in a claim drawn to structure. Even 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 as or obvious from a product of the prior art, 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).
Since the limitations recited claim 11 fail to further limit the claim on which it depends (claim 3), claim 11 is rejected under 35 USC § 112(d) for being in improper dependent form. Claim 12 depends on claim 11, and is rejected under 35 USC § 112(d) for implicitly including the indefinite subject matter above.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 10-11, 13 and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xiong et al. (US 2021/0066551 A1).
Regarding claim 1, Xiong a light-emitting device (¶ 0012 & fig. 9), comprising:
a semiconductor substrate (¶ 0022: sapphire substrate 21);
an epitaxial structure (¶ 0014: 23, 24 and/or 25) that has a first surface facing said semiconductor substrate and a second surface opposite to said first surface (fig. 9: 23/24/25 has top/bottom surfaces, at least one of which faces 21); and
a transparent bonding structure (¶ 0021: 22) that is disposed between said first surface and said semiconductor substrate (fig. 9: 22 disposed between bottom surface of 23/24 and 21), that has a first bonding surface facing said first surface of said epitaxial structure and a second bonding surface opposite to said first bonding surface (top surface of 22 bonded to 23/24, bottom surface of 22 bonded to 21), and that has a slit extending from said first bonding surface toward said second bonding surface (fig. 10: top surface 29 of bonding layer 22 has a plurality of slits extending toward bottom surface of 22) and terminating at a position that is a distance (X) (see 35 USC § 112b rejection above: unbounded range, not given patentable weight) away from said second bonding surface (figs. 9-10: slits of roughened surface 29 terminate away from bottom surface of 22).
Regarding claim 2, Xiong teaches the light-emitting device according to claim 1, wherein said distance (X) is not smaller than 0.8 um (¶¶ 0028, 0033: thickness of 22 is 1-5um, and roughness of surface 29 is 100-500 nm, such that slit distance meets the claimed range of “not smaller than 0.8 um”).
Regarding claim 3, Xiong teaches the light-emitting device according to claim 1, wherein said first surface is a roughened surface (¶ 0020) having a regular or an irregular pattern (fig. 10) that has a maximum depth ranging from 0.5 um to 1.0 um (¶ 0033: in at least one embodiment, roughness of bottom surface of 23 and top surface of 22 has roughness of 500 nm).
Furthermore, the specification contains no disclosure of either the critical nature of the claimed maximum depth or any unexpected results arising therefrom. Where patentability is based upon particular chosen dimensions or upon another variable recited in a claim, the Applicant must show that the chosen dimensions are critical. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed, Cir. 1990).
Regarding claim 10, Xiong teaches the light-emitting device according to claim 1, wherein said transparent bonding structure is made of an insulating material or a conductive material (¶ 0022).
Regarding claim 11, Xiong teaches the light-emitting device according to claim 3, wherein said transparent bonding structure is formed on said first surface of said epitaxial structure (fig. 9: 22 formed on 1st surface of 23/24/25) by a chemical deposition process or a physical deposition process (see 35 USC § 112d rejection above: process limitations are not given patentable weight).
Regarding claim 13, Xiong teaches the light-emitting device according to claim 1, further comprising an insulating protective layer (¶ 0036: 26) that covers said second surface and a sidewall of said epitaxial structure (fig. 9: 36 covers upper surface and sidewall of 23/24/25).
Regarding claim 15, Xiong teaches the light-emitting device according to claim 1, further comprising a first electrode structure and a second electrode structure (¶ 0037: 27, 28) that are located on said second surface of said epitaxial structure (fig. 9: 27 and 28 located at least indirectly on top surface of 23/24/25),
wherein said epitaxial structure includes a first semiconductor layer (¶ 0014: 25), a second semiconductor layer (23) and an active layer (24) disposed between said first semiconductor layer and said second semiconductor layer (fig. 9: 24 disposed between 25 and 23), said first electrode structure is electrically connected to said first semiconductor layer (fig. 9: 27 connected to 25), and
said second electrode structure is electrically connected to said second semiconductor layer (fig. 9: 28 connected to 23).
Regarding claim 16, Xiong teaches the light-emitting device according to claim 1, wherein said light-emitting device is a red light-emitting device or an infrared light-emitting device (¶ 0016).
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.
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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Xiong as applied to claim 11 above, and further in view of Nagao et al. (PG Pub. No. US 2023/0352454 A1).
Regarding claim 12, Xiong teaches the light-emitting device according to claim 11, wherein said second bonding surface of said transparent bonding structure is a polished surface (¶ 0040).
The Examiner notes that the limitation “polished with a removal thickness of not smaller than 0.8 um and not greater than 1.5 um” has not been given patentable weight. Claim 12 is drawn to a product (light-emitting device) and is therefore limited by the structure of the device. The limitations noted above are directed to a method of material removal, rather than the device structure itself. For example, a method of forming a structure to a 10nm thickness, a method of removing 5um from a 15nm structure, or a method of removing 10um from a 20um structure would all result in patentably indistinct 10um structures. Since the amount of material removed does not limit the resulting structure, the limitation noted above is not given patentable weight.
Xiong is silent to said second bonding surface having a surface roughness (Ra) not greater than 10 nm.
Nagao teaches bonding first and second surfaces (¶ 0041: surface of 2 bonded to surface of 3, similar to 21 and 22 of Xiong), a bonding surface having a surface roughness (Ra) not greater than 10 nm (¶ 0052: bonding surface of 2 includes surface roughness of 0.01 to 1 nm).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to configure the bonding surface roughness of Xiong not greater than 10 nm, as a means to provide high flatness, thereby preventing the generation of minute voids (Nagao, ¶ 0052).
Furthermore, 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. In the instant case, the general conditions of bonding surface roughness are disclosed by Nagao.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Xiong as applied to claim 13 above, and further in view of Lee et al. (PG Pub. No. US 2020/0220047 A1).
Regarding claim 14, Xiong teaches the light-emitting device according to claim 13, comprising an insulating protective layer (26).
Xiong is silent to wherein said insulating protective layer is a transparent insulating layer.
Lee teaches a light-emitting device (fig. 11 among others) including a transparent insulating protective layer (¶ 0042: 160).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to configure the insulating protective layer of Xiong with the transparency of Lee, as a means to optimize the light output from the device and corresponding high luminance.
Allowable Subject Matter
Claims 4-9 would be allowable if rewritten to overcome the rejection(s) under 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.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach or clearly suggest the limitations stating:
“a density of one of said at least two bonding layers which is in direct contact with said epitaxial structure is greater than a density of one of said at least two bonding layers which is not in direct contact with said epitaxial structure” as recited in claim 4.
Claims 5-9 depend on claim 4 and would be allowable for implicitly including the allowable subject matter above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN TURNER whose telephone number is (571)270-5411. The examiner can normally be reached M-F 8am-5pm.
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, Eva Montalvo can be reached at 571-270-3829. 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.
/BRIAN TURNER/Examiner, Art Unit 2818