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 .
Response to Amendment
Claims 11, 12, and 18 have been amended; and claims 1-20 are currently pending.
Priority
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d).
Claim Rejections - 35 USC § 112
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.
Claim 19-20 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.
Amended claim 18 requires “a first light-emitting unit and a second light emitting unit located in the front mask openings on the front surface of the substrate.”
Claim 19’s second alternative recites “a material of the first mask layer comprises aluminum nitride; and the first light-emitting unit is located in a non-opening region of the first mask layer, and the second light-emitting unit is located in the front mask opening.” This alternative is now inconsistent with, and outside the scope of, amended parent claim 18.
Claim 20 is rejected under 35 U.S.C. 112(d) by virtue of its dependency on rejected claim 19 and incorporating the same defect.
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 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. (Chang-Mo Kang et al, “Hybrid Full-Color Inorganic Light-Emitting Diodes Integrated on a Single Wafer Using Selective Area Growth and Adhesive Bonding”, , 25 September 2018, 4413-4422, 5, ACS Photonics, hereinafter “Kang”) in view of Wang et al. (US 2016/0301027 A1, hereinafter “Wang”).
In regards to claim 18, Kang discloses (See, for example, Fig. 1) a light-emitting device, comprising:
a substrate (Sapphire substrate) comprising a front surface and a back surface opposite to each other; a first mask layer disposed on the front surface of the substrate and comprising front mask opening (SiO2, dielectric mask layer, See Fig. 1a ) formed by performing patterning process on the first mask layer; a first light-emitting unit and a second light-emitting unit located in the front mask openings on the front surface of the substrate (blue InGaN LED grown in the 500 µm diameter mask opening and green InGaN LED grown in the 300 µm diameter mask opening, both on the front surface, See Fig. 1a; p. 4419-20), wherein the first light emitting unit and the second light-emitting unit are formed by growing a semiconductor epitaxial layer on the front surface of the substrate based on the first mask layer after the patterning process (selective area growth (SAG) of the InGaN epitaxial layers on the front surface through the openings of the patterned SiO2 mask, Fig. 1a; pp.4413-4414) , and the semiconductor epitaxial layer is doped with a first element during growth (indium incorporated into the InGaN epitaxial layer during MOCVD selective area growth, pp. 4413-4414); and a component proportion of the first element in the first light-emitting unit is different from a component proportion of the first element in the second light-emitting unit (See, blue and green InGaN LEDs formed on the front surface through SAG, where the different mask opening sizes result in different In (indium) incorporation rates, producing different components of In between the blue LED and green LED, See pp. 4413-4414)); and a third light-emitting unit located on the back surface of the substrate ((red, AlGaInP) LED integrated onto the same substrate and on the same side as of the green and blue LEDs, See, for example, Fig. 1).
Kang fails to explicitly teach a third light-emitting unit formed on the back surface of the substrate by turning the substrate upside down to expose the back surface of the substrate.
However, Wang discloses (See, for example, annotated Fig. 3 included below) a third light-emitting unit (501) formed on the back surface (20b) of the substrate (20) by turning the substrate upside down to expose the back surface of the substrate (third light emitting unit 501 located on the back surface 20b of the substrate 20, annotated Fig. 3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify Kang’s device by placing the third light-emitting unit on the back surface (opposite to the surface where the first and second light emitting units directly placed), as taught by Wang’s arrangement of light emitting units on opposite sides of a substrate, in order to reduce signal crosstalk between driving circuits for different color LEDs and to enable independent driving of the RGB subpixels.
Amended claim 18 is directed to “A light emitting device comprising,” and is therefore a product claim. The amendment adds the following recitations, each of which defines the claimed device by reference to the process by which it is made:
front mask opening formed by performing patterning process on the first mask layer;
the first light emitting unit and the second light-emitting unit are formed by growing a semiconductor epitaxial layer on the front surface of the substrate based on the first mask layer after the patterning process;
the semiconductor epitaxial layer is doped with a first element during growth;
a third light-emitting unit formed on the back surface of the substrate by turning the substrate upside down to expose the back surface of the substrate
Pursuant to MPEP 2113, “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). Determination of patentability is based on the product itself, and the process recitations are given weight only to the extent they impart distinct structural characteristics to the final product.
Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983).
In regards to claim 19, Kang as modified above disclose (See, Fig. 1) a material of the first mask layer comprises silicon oxide and/or silicon nitride (SiO2 dielectric mask , See page 4419), the first mask layer comprises a first front mask opening (formed with larger size , 500µm, page 4419) and a second front mask opening (300µm, See Page 4419), and an opening area of the first front mask opening (to form the blue LEDs, 500 µm diameter) is greater than an opening area of the second front mask opening (to form the green LEDs, 300 µm diameter); and the first light-emitting unit is located in the first front mask opening (blue InGaN LED), and the second light-emitting unit (green InGaN Led) is located in the second front mask opening.
In regards to claim 20, Kang as modified above discloses (See, for example, Fig. 1 and page 4419) forming a patterned dielectric mask layer (SiO2) on a substrate surface and forming light emitting units in the mask openings through metalorganic chemical vapor deposition. This technique is applied to the front surface.
Though Kang does not to explicitly teach forming a second mask layer on the back surface of the substrate with back mask openings for the third light-emitting unit, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to form a second mask layer on the back surface of the substrate with back mask openings for defining the locations of the third light emitting unit, because Kang already teaches using a patterned dielectric mask with openings to define LED growth positions on the front surface of the substrate, and a person of ordinary skill in the art rationale should be sufficient for applying it to the back surface.
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Allowable Subject Matter
Claim 1 is allowed over prior art of record.
The following is an examiner' s statement of reasons for allowance: The prior art of record neither anticipates nor renders obvious the claimed subject matter of the instant application as a whole either taken alone or in combination, in particular, prior art of record does not teach the combination of in-situ doped epitaxial growth through a patterned mask on the front surface with substrate flipping onto a transportation substrate and subsequent back-side LED formation on the same substrate.
Claims 2-17 are also allowed as being dependent of the allowed independent base claim.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments filed on 6/26/2026 have been fully considered but are not persuasive.
Applicant argues that claim 18 has been amended to incorporate the features identified as allowable in the office action mailed on 04/28/2026, and that Kang and Wang fail to teach the feature.
The reason for allowance was directed to claim 1, “A manufacturing method of a light emitting device.” Claim 18 is “A light emitting device.” The acts recited in claim 1 are affirmative method steps entitled to full patentable weight; the corresponding recitation in claim 18 define a product by the process of its manufacture and are given weight only insofar as they impart distinct structure. MPEP 2113. An indication that a manufacturing sequence is allowable as a method is not an indication that a device recited in terms of that sequence is allowable as a product.
Applicant identified no structure recited that is absent from Kang and Wang, and does not traverse the mapping of record. The Remarks present attorney argument only; no declaration or comparative evidence of a structural difference has been submitted. Attorney argument cannot take the place of evidence. In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); MPEP 2145(I).
Applicant argues claims 19-20 are allowable for the reasons given for claim 18 and for their specific features, without identifying those features. Claim 18 is not allowable for the reasons above, and the specific recitations of claims 19-20 were addressed above and were not traversed.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERMIAS T WOLDEGEORGIS whose telephone number is (571)270-5350. The examiner can normally be reached on Monday-Friday 8 am - 5 pm E.S.T..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Britt Hanley can be reached on 571-270-3042. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERMIAS T WOLDEGEORGIS/Primary Examiner, Art Unit 2893
