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
2. Applicant's election with traverse of Group I, Species I (Fig. 4), claims 1-9, 13-17, 9 in the reply filed on 04/24/2026 is acknowledged. The traversal is on the ground(s) that undue burden on the USPTO and lack of application of unity of invention rules. This is not found persuasive because searching in two different groups of CPC symbols would create burden on the examiner. Even for unity of invention rules the inventions listed as groups I, II do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: The groups listed above are not within the permitted combination of different categories of inventions. That is one apparatus and one process. There is no special technical feature that defines a contribution over the prior art. ( see PCT/ISA/210; US 5925087). The requirement is still deemed proper and is therefore made FINAL. Furthermore species require a different field of search (e.g., searching different subclasses or electronic resources or non patent language, or deploying different search queries); and/or the prior art applicable to one species would not likely be applicable to another species; and/or the species are likely to raise different non-prior art issues under U.S.C. 101 and/or 35 U.S.C. 112, first paragraph. Moreover claim 19 does not read on elected species of Fig. 4.
Claims 10-12, 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 04/24/2026.
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.
Claims 1-9, 13-17 are rejected under 35 U.S.C. 112(b), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites “ an etching solution from etching said semiconductor epitaxial structure” is ambiguous as it is not clear how or where the etching solution is coming from and why it is used? Is this etching solution to form roughened structure used? Is this etching solution used to further etch the device or some other layer other than said semiconductor epitaxial structure? Appropriate correction is required.
Claims 2-9, 13-17 are also rejected being dependent on rejected claim 1.
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 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 of this title, 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 1-3, 9-9, 13-15, 17 are rejected under 35 U.S.C. 103 as being obvious over Oh et al (KR 20090022286 A) in view of Hagimoto et al (JP 2007042664A).
Regarding claim 1: Oh teaches in A light-emitting device, comprising:
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a substrate 101 having a first surface (where 103 is formed on) and a second surface (bottom surface) opposite to said first surface;
a semiconductor epitaxial structure 106 having a side surface that has a roughened structure formed with protrusions (as shown), said semiconductor epitaxial structure including a first type semiconductor layer 105, an active layer 107, and a second type semiconductor layer 109 disposed on said first surface of said substrate in such order; and
an etch stop layer disposed on a surface of said semiconductor epitaxial structure away from said substrate for preventing an etching solution from etching said semiconductor epitaxial structure.
Oh does not teach about an etch stop layer disposed on a surface of said semiconductor epitaxial structure away from said substrate for preventing an etching solution from etching said semiconductor epitaxial structure.
Hagimoto teaches in Fig. 7 about an etch stop layer 21 disposed on a surface of said semiconductor epitaxial structure 24 away from said substrate for preventing an etching solution from etching said semiconductor epitaxial structure (Fig. 7 shows 24 is not etched and page 10 teaches 1” is immersed in an etching solution and layer 21 is preventing an etching solution from etching said semiconductor epitaxial structure 24)
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Therefore it would have been obvious to a person of ordinary skill in the art at the time of application was filed to have an etch stop layer in Oh’s device between the semiconductor epitaxial structure 106 and the the electrode layer 115 according to the teachings of Hagimoto and thereby the light extraction efficiency can be further improved in a light emitting device (page 1, Hagimoto)
Regarding claim 2: Hagimoto does not explicitly talk about wherein said etch stop layer includes an acid-resistant material or an alkali-resistant conductive material.
However Hagimoto teaches in page 6 about the etch stop layer is made of GaInP which is the disclosed material in applicant’s specification and therefore would be capable of performing same function.
It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ 2d 1647 (1987).
Regarding claim 3: Hagimoto teaches in page 6 about wherein said etch stop layer (GAInP considering X= 0 and Y = 0) includes a material represented by (AlXGa1-X)Ylnl-YP, where 0 ≤X ≤ 1 and 0 ≤ Y ≤ 1.
Regarding claim 8: Hagimoto teaches in page 8 (a GaAs-based material) wherein said semiconductor epitaxial structure is capable of emitting infrared light.
The recitation of “capable of emitting infrared light” does not distinguish the present invention over the prior art of Oh in view of Hagimoto who teaches the structure as claimed.
The Examiner notes that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See, e.g., In re Pearson, 181 USPQ 641 (CCPA); In re Minks, 169 USPQ 120 (Bd Appeals); In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459 (CCPA 1963). See MPEP §2114.
Regarding claim 9: Hagimoto teaches in page 4 wherein said semiconductor epitaxial structure includes a GaAs-based material.
Regarding claim 13: Oh teaches in Page 3 further comprising:
a transparent conductive layer 115 disposed on said etch stop layer opposite to said semiconductor epitaxial structure.
Regarding claim 14: Oh teaches in Page 3 wherein said transparent conductive layer (is ITO) has a light transmittance not smaller than 70%.
The recitation of “a light transmittance not smaller than 70%.” does not distinguish the present invention over the prior art of Oh in view of Hagimoto who teaches the structure as claimed.
The Examiner notes that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See, e.g., In re Pearson, 181 USPQ 641 (CCPA); In re Minks, 169 USPQ 120 (Bd Appeals); In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459 (CCPA 1963). See MPEP §2114.
Regarding claim 15: Oh teaches in Page 3 wherein said transparent conductive layer is an ITO layer or an IZO layer.
Regarding claim 16: Oh teaches wherein said substrate (GasAs similar to applicant’s substrate material) is an electrically conductive substrate.
The recitation of “electrically conductive substrate” does not distinguish the present invention over the prior art of Oh in view of Hagimoto who teaches the structure as claimed.
The Examiner notes that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See, e.g., In re Pearson, 181 USPQ 641 (CCPA); In re Minks, 169 USPQ 120 (Bd Appeals); In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459 (CCPA 1963). See MPEP §2114.
Regarding claim 17: Oh teaches in Fig. 1 further comprising a first electrode 117 and a second electrode 119 that are disposed on said transparent conductive layer and said substrate, respectively.
Claim 4 is rejected under 35 U.S.C. 103 as being obvious over Oh et al (KR 20090022286 A) in view of Hagimoto et al (JP 2007042664A) and further in view of Ikeda et al. (WO 2005106976 A1)
Regarding claim 4: Hagimoto teaches in page 6 about wherein said etch stop layer (GAInP) wherein said etch stop layer includes a GaP material.
II. A GENERIC DISCLOSURE WILL ANTICIPATE A CLAIMED SPECIES COVERED BY THAT DISCLOSURE WHEN THE SPECIES CAN BE "AT ONCE ENVISAGED" FROM THE DISCLOSURE
2131.02 Genus-Species Situations
Ikeda further teaches in Fig. 1 etch stop layer 20 is P-GaP.
It would have been obvious to one of ordinary skill in the art at the time of the invention was made to havethe material as claimed, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 5-7 are rejected under 35 U.S.C. 103 as being obvious over Oh et al (KR 20090022286 A) in view of Hagimoto et al (JP 2007042664A) and further in view of Ikeda et al. (WO 2005106976 A1) and Shinohara et al. (JP 200404794 A)
Regarding claim 5: Hagimoto teaches in page 8 (for example 100nm) about wherein said etch stop layer has a thickness of 30 nm to 150 nm.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 6: Hagimoto teaches in page 8 (for example 100nm) wherein said etch stop layer has a thickness of 50 nm to 100 nm.
Regarding claim 7: Oh in view of Hagimoto does not explicitly talk about wherein said etch stop layer is p-type doped and has a doping concentration not smaller than 1E19/cm-3
Shinohara teaches in Fig. 1 and para [0012] – [0013] that p-type dopant can be used in current spreading/diffusion layer 7 can be 1E17/cm-3 or 5E19/cm-3 to improve light extraction efficiency.
Thus, it would have been obvious to one of the ordinary skill in the art at the time the invention was made to have the feature as claimed with routine experiment and optimization since the density is critical in order to control light extraction efficiency according to the teaching of SHinohara ([0012]). In re Woodruff, 16 USPQ2d 1935, 1937 (Fed. Cir. 1990). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill of art) and In re Aller, 105 USPQ 233 (CCPA 1955) (selection of optimum ranges within prior art general conditions is obvious).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMED SHAMSUZZAMAN whose telephone number is (571)270-1839. The examiner can normally be reached Monday-Friday 7 am -4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fernando Toledo can be reached at 571-272-1867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mohammed Shamsuzzaman/Primary Examiner, Art Unit 2897
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