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 .
DETAILED ACTION
This action is responsive to the application No. 18/404,200 filed on 01/04/2024.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
Acknowledgment is made of Applicant’s Information Disclosure Statement (IDS) form PTO-1449. These IDS has been considered.
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 1-2, 9, 14 and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2019075547 to Ito (Machine translation is provided by the examiner, see attached).
Regarding independent claim 1, Ito discloses a semiconductor light-emitting device (Fig. 2) comprising:
a substrate (Fig. 2: 10),
a semiconductor layer (21) that is laminated on the substrate (10) and that generates light (see page 3, last paragraph); and
a metal layer (under BRI, the combinations of 17 and 12 is currently considered to be a metal layer; see page 4, second paragraph) that is interposed between the substrate (10) and the semiconductor layer (21) and that has a laminated structure (12 and 17) including Au films each of which is made of an Au-based metal (see page 4, second paragraph);
wherein a ratio of a total thickness of the Au films with respect to a thickness of the semiconductor layer is not less than 0.03 and not more than 0.25 (It is noted that the thickness of the Au film 12 is 0.5 μm and the thickness of the Au film 17 is 0.1 μm and the thickness of the semiconductor layer is 5.5 μm. The total thickness of the Au films is therefore 0.6 μm. So, 0.6 μm divided by 5.5 μm (which is the thickness of the semiconductor layer) is 0.109 which is not less than 0.03 and not more than 0.25 as require by the claim. (see page 4, paragraphs 2 and 4)
Regarding claim 2, Ito discloses wherein the thickness of the semiconductor layer is not less than 4 μm and not more than 10 μm (such as 5.5 μm, see page 4, paragraph 4), and the total thickness of the Au films is not less than 0.3 μm and not more than 1 μm. It is noted that the thickness of the Au film 12 is 0.5 μm and the thickness of the Au film 17 is 0.1 μm, so the total thickness of the Au films is 0.6 μm which is not less than 0.3 μm and not more than 1 μm.
Regarding claim 9, Ito discloses a pad electrode (Figs. 1 and 9: 6, 67 or 89) that is laminated on the semiconductor layer (85) and that has a laminated structure including Au pad films each of which is made of an Au-based metal (see page 11, paragraphs 5-6).
Regarding claim 14, Ito discloses wherein the pad electrode (6) has a main body portion formed in a circular shape (page. 5, last paragraph) as view in plan and an arm portion (branch) linearly led out from the main body portion (Fig. 1).
Regarding claim 18, Ito discloses a translucent conductor layer (Fig. 2: 22) interposed between the metal layer (12, 17) and the semiconductor layer (21) so as to be electrically connected to the metal layer (17, 12) and the semiconductor layer (21).
Regarding claim 19, Ito discloses wherein the substrate (82) is made of a silicon substrate (page 3, paragraph 5)
Regarding claim 20, Ito discloses wherein the semiconductor layer (21) is made of a compound semiconductor layer (page 4, paragraph 3).
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.
Claims 3-8 10-12 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2019075547 to Ito.
Regarding claim 3, Ito discloses a wherein the ratio of the total thickness of the Au films with respect to the thickness of the semiconductor layer is 0.109 which is not less than 0.04 as require by claim. (see the calculation in claim 1).
However, Ito does not explicitly teach wherein the ratio of the total thickness of the Au films with respect to the thickness of the semiconductor layer is not more than 0.08.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to provide a ratio not more than 0.08 for the total thickness of the Au films with respect to the thickness of the semiconductor layer as taught by Ito.
The motivation to do so is that a total thickness of the Au films with respect to the thickness of the semiconductor layer provides the predictable result of providing a ratio which is necessary of Ito.
While the cited prior art does not explicitly disclose the particular claimed value, the teachings therein would have led one of ordinary skill in the art at the time of invention to discover the claimed value during routine experimentation and optimization.
The Applicant has not presented persuasive evidence that the claimed values are for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without the specific claimed values). Also, the applicant has not shown that the claimed values produce a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Thus, because it has been held that where “the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05; In re Aller, 220 F.2d 454, 456, 105 USPQ 223, 225 (CCPA 1955)), it would have been obvious to add the claimed values to the rest of the claimed invention.
Regarding claim 4, Ito discloses wherein the thickness of the semiconductor layer is not less than 6 μm (which is 5.5 μm), and the total thickness of the Au films is not less than 0.4 μm and not more than 0.5 μm.
However, Ito does not explicitly teach wherein the thickness of the semiconductor layer is not more than 9 μm.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to provide a thickness of the semiconductor layer as taught by Ito.
The motivation to do so is that a semiconductor layer provides the predictable result of providing a total thickness of 5.5 μm which is necessary of Ito.
While the cited prior art does not explicitly disclose the particular claimed value, the teachings therein would have led one of ordinary skill in the art at the time of invention to discover the claimed value during routine experimentation and optimization.
The Applicant has not presented persuasive evidence that the claimed values are for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without the specific claimed values). Also, the applicant has not shown that the claimed values produce a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Thus, because it has been held that where “the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05; In re Aller, 220 F.2d 454, 456, 105 USPQ 223, 225 (CCPA 1955)), it would have been obvious to add the claimed values to the rest of the claimed invention.
Regarding claim 5, Another embodiment (Fig. 10) of Ito discloses wherein the metal layer includes a first Au film (114), a second Au film (113), a third Au film (115), a fourth Au film (118), and a fifth Au film (110) that are laminated in that order from a side of the substrate (see Fig. 10).
Ito teaches the total thickness of the Au films (which is 0.6 μm), but Ito fails to explicitly teach the total thickness of the Au films is a total value of a thickness of the first Au film, a thickness of the second Au film, a thickness of the third Au film, a thickness of the fourth Au film, and a thickness of the fifth Au film.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to use the total thickness of the Au films as taught by Ito.
The motivation to do so is that a semiconductor layer provides the predictable result of providing a total value of a thickness of the first Au film, a thickness of the second Au film, a thickness of the third Au film, a thickness of the fourth Au film, and a thickness of the fifth Au film which is necessary of Ito.
While the cited prior art does not explicitly disclose the particular claimed value, the teachings therein would have led one of ordinary skill in the art at the time of invention to discover the claimed value during routine experimentation and optimization.
The Applicant has not presented persuasive evidence that the claimed values are for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without the specific claimed values). Also, the applicant has not shown that the claimed values produce a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Thus, because it has been held that where “the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05; In re Aller, 220 F.2d 454, 456, 105 USPQ 223, 225 (CCPA 1955)), it would have been obvious to add the claimed values to the rest of the claimed invention.
Regarding claim 6, Ito discloses wherein the first Au film (114) is a first Au junction film (see Fig. 10), the second Au film (113) is a second Au junction film pressed and bonded to the first Au film (114; see Fig. 10), the third Au film (115) is a first Au light reflecting film, the fourth Au film (113) is an Au alloy film including an AuBe alloy or an AuCr alloy (layer 113 is interchangeable with layer 108 which is AuBe), and the fifth Au film (110) is a second Au light reflecting film.
Regarding claim 7, Ito discloses wherein a total thickness of the third Au film (115), the fourth Au film (118), and the fifth Au film (110). Ito fails to explicitly teach a total thickness of the third Au film, the fourth Au film, and the fifth Au film is equal to or more than a total thickness of the first Au film and the second Au film.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to use the total thickness of the third Au film, the fourth Au film, and the fifth Au film as taught by Ito.
The motivation to do so is that the third Au film, the fourth Au film, and the fifth Au film provides the predictable result of providing a total thickness of the third Au film, the fourth Au film, and the fifth Au film which is necessary of Ito.
While the cited prior art does not explicitly disclose the particular claimed value, the teachings therein would have led one of ordinary skill in the art at the time of invention to discover the claimed value during routine experimentation and optimization.
The Applicant has not presented persuasive evidence that the claimed values are for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without the specific claimed values). Also, the applicant has not shown that the claimed values produce a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Thus, because it has been held that where “the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05; In re Aller, 220 F.2d 454, 456, 105 USPQ 223, 225 (CCPA 1955)), it would have been obvious to add the claimed values to the rest of the claimed invention.
Regarding claim 8, Ito discloses the thickness of the first Au film, the second Au film, the third Au film, the fourth Au film and the fifth Au film.
Ito fails to explicitly discloses wherein the thickness of the first Au film is not less than 0.075 μm and not more than 0.125 μm, the thickness of the second Au film is not less than 0.075 μm and not more than 0.125 μm, the thickness of the third Au film is not less than 0.01 μm and not more than 0.1 μm, the thickness of the fourth Au film is not less than 0.05 μm and not more than 0.15 μm, and the thickness of the fifth Au film is not less than 0.05 μm and not more than 0.15 μm.
However, it would have been obvious to one of ordinary skill in the art at the time of the invention to vary, through routine experimentation, the result effect variable of the thickness of the first Au film, the second Au film, the third Au film, the fourth Au film and the fifth Au film in order to optimize the functionality of the device (see MPEP §2144.05). Further, the specification contains no disclosure of either the critical nature of the claimed thickness or any unexpected results arising therefrom and it has been held that where patentability is said to be based upon a particular chosen dimension or upon another variable recited in a claim, the Applicant must show that the chosen dimension is critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)
Regarding claim 10, Ito discloses wherein a total thickness of the Au pad films (which is 0.6 μm).
Ito fails to explicitly discloses wherein a total thickness of the Au pad films exceeds the total thickness of the Au films.
However, it would have been obvious to one of ordinary skill in the art at the time of the invention to vary, through routine experimentation, the result effect variable of the thickness of the Au pad films in order to optimize the functionality of the device (see MPEP §2144.05). Further, the specification contains no disclosure of either the critical nature of the claimed thickness or any unexpected results arising therefrom and it has been held that where patentability is said to be based upon a particular chosen dimension or upon another variable recited in a claim, the Applicant must show that the chosen dimension is critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)
Regarding claim 11, Ito discloses wherein the pad electrode (Fig. 1: 67) includes a first Au pad film, a second Au pad film, and a third Au pad film that are laminated in that order (Fig. 1, different branches, 68, 69, 70) from a side of the semiconductor layer (not shown in Fig. 1).
Ito fails to explicitly discloses the total thickness of the Au pad films is a total value of a thickness of the first Au pad film, a thickness of the second Au pad film, and a thickness of the third Au pad film.
However, it would have been obvious to one of ordinary skill in the art at the time of the invention to vary, through routine experimentation, the result effect variable of the thickness of the Au pad films in order to optimize the functionality of the device (see MPEP §2144.05). Further, the specification contains no disclosure of either the critical nature of the claimed thickness or any unexpected results arising therefrom and it has been held that where patentability is said to be based upon a particular chosen dimension or upon another variable recited in a claim, the Applicant must show that the chosen dimension is critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)
Regarding claim 12, Ito discloses the thickness of the first Au pad film, the thickness of the second Au pad film and the thickness of the third Au pad film.
Ito fails to explicitly discloses wherein the thickness of the first Au pad film is not less than 0.05 μm and not more than 0.1 μm, the thickness of the second Au pad film is not less than 0.1 μm and not more than 1 μm, and the thickness of the third Au pad film is not less than 1 μm and not more than 3 μm.
However, it would have been obvious to one of ordinary skill in the art at the time of the invention to vary, through routine experimentation, the result effect variable of the thickness of the first Au pad film, the thickness of the second Au pad film and the thickness of the third Au pad film in order to optimize the functionality of the device (see MPEP §2144.05). Further, the specification contains no disclosure of either the critical nature of the claimed thickness or any unexpected results arising therefrom and it has been held that where patentability is said to be based upon a particular chosen dimension or upon another variable recited in a claim, the Applicant must show that the chosen dimension is critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)
Regarding claim 15, Ito discloses wherein the main body portion of the pad electrode has a width.
Ito fails to explicitly discloses wherein the main body portion of the pad electrode has a width of not less than 80 μm and not more than 120 μm as viewed in plan.
However, it would have been obvious to one of ordinary skill in the art at the time of the invention to vary, through routine experimentation, the result effect variable of the width of the main body portion of the pad electrode in order to optimize the functionality of the device (see MPEP §2144.05). Further, the specification contains no disclosure of either the critical nature of the claimed width or any unexpected results arising therefrom and it has been held that where patentability is said to be based upon a particular chosen dimension or upon another variable recited in a claim, the Applicant must show that the chosen dimension is critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)
Regarding claim 16, A first embodiment (Fig. 2) of Ito teaches all of the claimed limitation of claim 1 from which this claim depends.
The first embodiment of Ito fails to explicitly disclose an insulating film that is interposed between the substrate and the semiconductor layer so as to cover the semiconductor layer and that has a contact opening by which the semiconductor layer is exposed; and a contact electrode arranged in the contact opening so as to be electrically connected to the semiconductor layer; wherein the metal layer is interposed between the insulating film and the substrate so as to be electrically connected to the contact electrode.
Second embodiment of ITO (Fig. 9) teaches an insulating film (84) that is interposed between the substrate (82) and the semiconductor layer (85) so as to cover the semiconductor layer (85) and that has a contact opening (106) by which the semiconductor layer (85) is exposed and a contact electrode (107) arranged in the contact opening (106) so as to be electrically connected to the semiconductor layer (85), wherein the metal layer (122) is interposed between the insulating film (84) and the substrate (82) so as to be electrically connected to the contact electrode (107) (see page 10, paragraphs 2-8).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have provided the substrate of the first embodiment of Ito with the contact opening and the contact electrode as taught by the second embodiment of Ito so as to form a bounding surface between the first layer and the second layer (Page 10).
Regarding claim 17, Ito discloses wherein the insulating film (84) includes at least one of a silicon oxide film and a silicon nitride film (page 10, line 6).
Allowable Subject Matter
Claim 13 is 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.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 13 recites:
“wherein the pad electrode includes a Pt pad film that is interposed between the second Au pad film and the third Au pad film and that is made of a Pt-based metal.”
Each of the above recitations, interpreted in combination with all other limitations of the claim and all limitations of any claims they depend from, is not taught or rendered obvious by the prior art of record and are indicated as allowable subject matter.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub # 2020/0119230 to Ito, US Pub # 2023/0002637 to Kato et al., US Pub # 2021/0343913 to Wang et al., US Pub # 2020/0127165 to Oike et al., US Pub # 2017/0092828 to tsujiai.
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/MOHSEN AHMADI/Primary Examiner, Art Unit 2896
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