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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) were submitted on 12/4/23, 7/29/24, and 5/2/25. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
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 3-5 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.
Claims 3-5 recite the term “about”. The term "about" is a relative term which renders the claim indefinite; it is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. “About” is defined as "almost or nearly—used to indicate that a number, amount, time, etc., is not exact or certain” (see Merriam Webster online dictionary). The term “about” modifies a target, and implicitly requires boundaries at some maximum value above the target and at some minimum value below the target beyond which one is not “about” the target any more. Neither the claims, nor the specification, defines these boundaries. Thus, it is unclear whether one must be within some small percentage of deviation of the target (such as 0.01 %, 0.1 %, 1 %, 2 %, 5 %, 10 %, or some other percentage) or within a certain number of units of the target and specifically which of these possible values defines the boundaries. If one were to poll 100 people having ordinary skill in the art, there would be many different responses for the boundaries. Thus, determining whether one is infringing the limitation is subjective, rather than objective, and thus the claim is unclear. Therefore, the claims are rejected as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant, regards as the invention.
Claims 4-5 include a horizontal wavy line character (tilde) in reference to numerical ranges. In the English language, the tilde generally means “approximately”, “about”, or “around” or “similar to”. In the context of numerical ranges in the claims and common usage, the meaning of the tildes in the claims is unclear. Examiner assumes this is a typographical error and interprets the tildes in the claims as dashes (-), which are typically used to indicate a closed range of values. However, appropriate correction and/or clarification is requested.
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.
Claim(s) 1-6 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Genei et al. (U.S. 2014/0077221 A1; “Genei”) in view of Sundgren et al. (U.S. 2016/0276534 A1; “Sundgren”).
Regarding claim 1, Genei discloses a light-emitting diode, comprising:
Multiple point-like transparent conductive electrodes (discontinuous rectangular portions of 26, Fig. 2E),
A dielectric layer (90, Fig. 2E) disposed around each of the point-like transparent conductive electrodes ([0064]); and
An epitaxial composite layer (50, Fig. 2E) comprising an epitaxial layer (32, Fig. 2E) disposed both on each of the point-like transparent conductive electrodes (discontinuous rectangular portions of 26, Fig. 2E) and the dielectric layer (90, Fig. 2E), and electrically connected to each of the point-like transparent conductive electrodes (discontinuous rectangular portions of 26, Fig. 2E) ([0053]).
Yet, Genei does not disclose the epitaxial layer is a carbon-doped gallium arsenide epitaxial layer. However, Sundgren discloses an epitaxial composite layer comprising an comprising a carbon-doped gallium arsenide layer epitaxial layer (25, Fig. 1) ([0052]). This has the advantage of utilizing a higher electron mobility material which advantageously improves device performance. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to modify the invention of Genei with the epitaxial layer comprising carbon-doped gallium arsenide epitaxial layer, as taught by Sundgren, so as to improve device performance.
Regarding claim 2, Genei discloses the materials of the point-like transparent conductive electrodes (discontinuous rectangular portions of 26, Fig. 2E) comprise indium tin oxide ([0064]).
Regarding claim 3, Genei discloses point-like transparent conductive electrodes (discontinuous rectangular portions of 26, Fig. 2E) distributed and overlapping the epitaxial composite layer (50, Fig. 2E) but does not disclose the ratio of the total distribution area of the point-like transparent conductive electrodes to the area of the epitaxial composite layer is about 3.5% to 8%. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to select a ratio of the total distribution area of the point-like transparent conductive electrodes to the area of the epitaxial composite layer to be 3.5% to 8%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 4, Sundgren discloses the thickness of the carbon-doped gallium arsenide epitaxial layer is within the range of 100 and 1000 angstroms (Å) ([0048]).
Regarding claim 5, Sundgren discloses the carbon-doped gallium arsenide epitaxial layer is highly doped ([0037]) but does not disclose its concentration is between 4x1019-1.5x1020/cm3. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to select a carbon doping concentration of the carbon-doped gallium arsenide epitaxial layer to be 4x1019-1.5x1020/cm3, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 6, Genei discloses the epitaxial composite layer (50, Fig. 2E) further comprises a first semiconductor layer (54, Fig. 2E), a light-emitting layer (40, Fig. 2E), a second semiconductor layer (29, Fig. 2E) and a third semiconductor layer (31, Fig. 2E), and wherein the third semiconductor layer (31, Fig. 2E) is disposed on the epitaxial layer (32, Fig. 2E), the second semiconductor layer (29, Fig. 2E) is disposed on the third semiconductor (31, Fig. 2E), the light-emitting layer (40, Fig. 2E) is disposed on the second semiconductor layer (29, Fig. 2E), and the first semiconductor layer (54, Fig. 2E) is disposed on the light-emitting layer (40, Fig. 2E).
Regarding claim 11, Genei discloses an upper electrode (60a, Fig. 2E) disposed on the epitaxial composite layer (50, Fig. 2E) and not vertically overlapping with the point-like transparent conductive electrodes (discontinuous rectangular portions of 26, Fig. 2E).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 11 of copending Application No. 18/512,642 in view of Genei et al. (U.S. 2014/0077221 A1; “Genei”).
This is a provisional nonstatutory double patenting rejection.
Claims 1-2 of the instant application generally corresponds to claim 1 of the ‘642 application. Yet, the ‘642 application does not disclose the point-like conductive electrodes are transparent. However, Genei discloses a plurality of point-like conductive electrodes are transparent (discontinuous rectangular portions of 26, Fig. 2E) ([0064]; “ITO”). Because both claim 1 of the ‘642 application and Genei teach methods of forming light emitting diodes, it would have been obvious to one skilled in the art at the time the invention was effectively filed to substitute one method for the other to achieve the predictable result of forming the plurality of point-like conductive electrodes to be transparent. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Claim 3 of the instant application generally corresponds to claims 1 and 4 of the ‘642 application in view of Genei. Yet, claims 1 and 4 of the ‘642 application in view of Genei do not disclose the ratio of the total distribution area of the point-like conductive electrodes to the epitaxial composite layer must be within 3.5% and 8%. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to select a ratio of the total distribution area of the point-like conductive electrodes to the epitaxial composite layer to be within 3.5% and 8%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim 4 of the instant application corresponds to claim 5 of the ‘642 application in view of Genei.
Claim 5 of the instant application corresponds to claim 6 of the ‘642 application in view of Genei.
Claim 6 of the instant application corresponds to claim 2 of the ‘642 application in view of Genei.
Claim 7 of the instant application corresponds to claim 3 of the ‘642 application in view of Genei.
Claim 11 of the instant application corresponds to claim 12 of the ‘642 application in view of Genei.
Allowable Subject Matter
Claims 8-10 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.
Conclusion
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/REEMA PATEL/Primary Examiner, Art Unit 2812 1/21/2026