DETAILED ACTION
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 Group II and Species I in the reply filed on 3/26/2026 is acknowledged. The traversal is on the ground(s) that it should be no undue burden on the Examiner to consider all claims in a single application (Remarks 1). This is not found persuasive because there would be a serious search and/or examination burden if restriction were not required, because Groups I-II and Species I-II require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries).
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-5 and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group/Species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/26/2026.
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.
Claims 6-7, 9, 11-12, 14, 16 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chao et al. (US 2017/0179341 A1, hereinafter “Chao”).
Regarding independent claim 6, Figure 14A of Chao discloses a light-emitting device, comprising:
a substrate 10/102 (collectively 10 “substrate” and 102 “convex structures”- ¶0027); and
an epitaxial structure 51/52 (collectively 51 and 52 “semiconductor stack”- ¶¶0044, 0055) formed on an upper surface of the substrate 10/102, the epitaxial structure 51/52 including a first semiconductor layer 512 (“doped layer”- ¶0048), an active layer 521 (“active layer”- ¶0048), and a second semiconductor layer 522 (“doped layer”- ¶0048) which are disposed on the upper surface of the substrate 10/102 in such order;
the substrate 10/102 having a substrate edge region surrounding and exposed from the epitaxial structure 51/52, the substrate edge region including a first substrate edge region (i.e., the region of 10/102 which is flat at the outer edges of 10s) and a second substrate edge region (i.e., the region of 10/102 which includes 102a) which is more proximate to the epitaxial structure 51/52 than the first substrate edge region;
the first substrate edge region having a first uneven toothed surface or an even flat surface, the second substrate edge region having a second uneven toothed surface which has a height (i.e., the height of 102a) greater than a height of the first uneven toothed surface, or the even flat surface (i.e., the height of the flat surface of 10s).
Regarding claim 7, the limitation “wherein the height of the first uneven toothed surface is not greater than 2 µm” is moot/not applicable, because the prior art of Chao satisfies the alternative limitation of wherein the first substrate edge region is an even flat surface as detailed in the claim 6 rejection.
Regarding claim 9, Figure 14A of Chao discloses wherein the epitaxial structure 51/52 has a boundary sidewall (B) which extends downward continuously from the second semiconductor layer 522 and has a bottom end meeting the substrate edge region, and wherein no step is formed on at least a portion (i.e., the bottom portion of the sidewall of 51) of the boundary sidewall of the epitaxial structure 51/52.
Regarding claim 11, Figure 14A of Chao discloses wherein the epitaxial structure 51/52 has a boundary side wall which extends downward continuously from the second semiconductor layer 522 and has a bottom end meeting the substrate edge region, and wherein no step is formed on a portion (i.e., the bottom portion of the sidewall of 51) of the boundary sidewall of the epitaxial structure 51/52 while a step is formed on a remaining portion (i.e., the collective sidewalls of 51/52 including the step not including the bottom portion of the sidewall of 51) of the boundary sidewall of the epitaxial structure 51/52 other than the portion of the boundary sidewall, the step being provided for forming an electrode 14 (“electrode”- ¶0023).
Regarding claim 12, Figure 14A of Chao discloses the light-emitting device further comprising an insulation layer (i.e., “current blocking layer… insulating”- ¶0052) which covers the substrate edge region, since the current blocking layer would indirectly cover the substrate edge region in a diagonal direction, each of the second uneven toothed surfaces including a plurality of protrusions 102a (“structures”- ¶0046) which have a pointed cone-shape, and each of the protrusions 102a of the second uneven toothed surface having an arcuate side wall.
Note, the limitations associated with the “first uneven toothed surface” are moot/not applicable, because the prior art of Chao satisfies the alternative limitation of wherein the first substrate edge region is an even flat surface as detailed in the claim 6 rejection.
Regarding claim 14, Figure 14A of Chao discloses wherein a thickness of the substrate 10/102 in the first substrate edge region is smaller than a thickness of the substrate 10/102 in the second substrate edge region.
Regarding independent claim 16, Figure 14A of Chao discloses a light-emitting device, comprising:
a substrate 10/102 (collectively 10 “substrate” and 102 “convex structures”- ¶0027); and
an epitaxial structure 51/52 (collectively 51 and 52 “semiconductor stack”- ¶¶0044, 0055) formed on an upper surface of the substrate 10/102, the epitaxial structure 51/52 including a first semiconductor layer 512 (“doped layer”- ¶0048), an active layer 521 (“active layer”- ¶0048), and a second semiconductor layer 522 (“doped layer”- ¶0048) which are disposed on the upper surface of the substrate 10/102 in such order;
wherein the substrate 10/102 has a substrate edge region surrounding and exposed from the epitaxial structure 51/52, the substrate edge region including a first substrate edge region (i.e., the region of 10/102 which is flat at the outer edges of 10s) and a second substrate edge region (i.e., the region of 10/102 which includes 102a) which is more proximate to the epitaxial structure 51/52 than the first substrate edge region;
a thickness (of the substrate 10/102 in the first substrate edge region is smaller than a thickness of the substrate 10/102 in the second substrate edge region.
Regarding claim 19, Figure 14A of Chao discloses the light-emitting device further comprising an insulation layer (i.e., “current blocking layer… insulating”- ¶0052) which covers the substrate edge region, since the current blocking layer would indirectly cover the substrate edge region in a diagonal direction.
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 8, 13, 15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable and obvious over Chao.
Regarding claim 8, Chao does not expressly disclose wherein the height of the second uneven toothed surface is not greater than 2 µm.
However, it would have been obvious to form the height of the second uneven toothed surface within the claimed range, since it has been held by the Federal circuit that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. (In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)).
Regarding claim 13, Chao does not expressly disclose wherein the substrate edge region of the substrate has a width ranging from 4 µm to 20 µm.
However, it would have been obvious to form the width of the substrate edge region of the substrate within the claimed range, since it has been held by the Federal circuit that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. (In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)).
Regarding claim 15, Chao does not expressly disclose wherein the first substrate edge region has a width greater than a width of the second substrate edge region.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the first substrate edge region to have a width greater than a width of the second substrate edge region for the purpose of choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (KSR International Co. v. Teleflex Inc. 82 USPQ2d 1385 (2007)), since the first substrate edge region can have a width which is only less than, equal to, or greater than a width of the second substrate edge region.
Regarding claim 20, Chao does not expressly disclose wherein the first substrate edge region has a width greater than a width of the second substrate edge region.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the first substrate edge region to have a width greater than a width of the second substrate edge region for the purpose of choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (KSR International Co. v. Teleflex Inc. 82 USPQ2d 1385 (2007)), since the first substrate edge region can have a width which is only less than, equal to, or greater than a width of the second substrate edge region.
Allowable Subject Matter
Claims 10 and 17 are 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.
Regarding claim 10, the prior art of record including Chao, either singularly or in combination, does not disclose or suggest the combination of limitations including, but not limited to, “wherein the epitaxial structure has a boundary sidewall which extends downward continuously from the second semiconductor layer and has a bottom end meeting the substrate edge region, and wherein no step is formed on all part of the boundary sidewall of the epitaxial structure, the second substrate edge region surrounding the epitaxial structure, and the first substrate edge region surrounding the second substrate edge region”.
Regarding claim 17, the prior art of record including Chao, either singularly or in combination, does not disclose or suggest the combination of limitations including, but not limited to, “wherein a part of the substrate in the first substrate edge region is formed with a first uneven toothed surface, and a part of the substrate in the second substrate edge region is formed with a second uneven toothed surface which has a height greater than a height of the first uneven toothed surface”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Chang et al. (US 2023/0077761 A1), which discloses a light-emitting device comprising protrusions along a substrate edge region.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY C CHANG whose telephone number is (571)272-6132. The examiner can normally be reached Mon- Fri 12pm-10pm.
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, Eliseo Ramos-Feliciano can be reached at (571)-272-7925. 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 CHANG/Primary Examiner, Art Unit 2817
Prosecution Insights