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 .
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.
Response to Arguments
Applicant has amended claim 1 to recite “an end portion of the barrier metal is on the flat portion of the insulating film that is on the upper portion of the pad metal, and the barrier metal is spaced apart from the side portion of the pad metal”.
Applicant has included or rewritten other recitations as part of the amendment. However, applicants’ arguments focus on these newly included recitations and the Office’s response will address applicants’ arguments with respect to these recitations.
Applicant's arguments filed 08/12/2026 have been fully considered but they are not persuasive. On pages 7-9 of the response, applicant contends that Sugimoto does not disclose “an end portion of the barrier metal is on the flat portion of the insulating film that is on the upper portion of the pad metal” because Sugimoto “describes covering part of the sides of the p-electrode 20 with the insulating protective film 201, while the first thin film 31 extends along those sides”. It appears that applicant is attempting to claim the features shown in Fig. 1 where portion 3-1 of layer 3 has each end on top of element 2 and does not extend over the sides of element 2. However, applicant does not claim that the “end of the barrier metal is on the flat portion of the insulating film” or that “an end portion of the barrier metal is on the flat portion of the insulating film but does not cover a side portion of the insulating film”. Applicant merely claims “an end portion of the barrier metal is on the flat portion of the insulating film that is on the upper portion of the pad metal”. “An end portion” must be interpreted to be broader than “an end” and includes some portion of the layer that is not at the end. Sugimoto clearly shows this in Fig. 5 as is annotated below.
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The Office notes that even if applicant claims “an end of the barrier metal is on the flat portion of the insulating film that is on the upper portion of the pad metal and does not extend over a side portion of the pad metal” Sugimoto still clearly discloses this in Fig. 3.
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Finally, the Office notes that claim 1 also requires “an upper portion of the pad metal and a side portion of the pad metal are covered with the insulating film and the barrier metal”. Accordingly, applicants’ arguments cannot be persuasive, because their claim also requires the barrier metal to extend along a side portion of the pad metal.
On page 9, applicant further contends “Sugimoto does not describe that the first thin film layer 31 (alleged barrier metal) is spaced apart from the side portion of the pad metal”. This is clearly incorrect with regards to both Figs. 3 and 5. In both Figs. 3 and 5, the barrier metal (31) is spaced apart from the side portion of the pad metal (20) at least by the thickness of the insulating layer (201).
Accordingly, the rejection is maintained.
Applicant’s amendments have introduced new issues under 35 U.S.C. 112. Those issues are addressed below.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-3, 5, 7, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sugimoto (JP2000114664), hereafter Sugimoto.
Regarding claim 1, Sugimoto discloses a semiconductor laser (Title) comprising a substrate (Fig. 3 element 1 or Fig. 5 element 50; [0067]), a first cladding layer of a first conductivity type (Figs. 3 or 5 element 7; [0068]), an active layer (Figs. 3 or 5 element 9; [0044]), a second cladding layer of a second conductivity type (Figs. 3 or 5 element 12; [0047]); a bonding metal (Figs. 3 or 5 element 32); a pad metal (Figs. 3 or 5 element 20; [0055]), an insulating film (Figs. 3 and 5 element 201; [0056]); and a barrier metal (Figs. 3 and 5 element 31; [0057]), wherein an upper portion of the pad metal and a side portion of the pad metal (Figs. 3 and 5 element 20) are covered with the insulating film opposite to a side closer to the substrate and a side portion of the pad metal are covered with the insulating film (Figs. 3 and 5 element 201; [0056]) and the barrier metal (Figs. 3 and 5 element 31; [0057]), the upper portion of the pad metal is on a first side of the pad metal opposite to the second side of the pad metal (Figs 3 and 5 element 20), the second side of the pad metal is closer to the substrate than the first side of the pad metal (Figs. 3 and 5 element 20), the barrier metal (Figs. 3 and 5 element 31) and the bonding metal (Figs. 3 and 5 element 32; [0057]) are disposed in an order of the barrier metal and the bonding metal on the pad metal on the first side of the pad metal (Figs. 3 and 5 element 20, 31, and 32), the insulating film covers an entirety of the side portion of the pad metal (Figs. 3 and 5 element 201 covers the entire side of element 20), the insulating film includes a flat portion on the upper portion of the pad metal (Figs 3 and 5 element 201 extends to an upper portion of element 20), an end portion of the barrier metal is on the flat portion of the insulating film that is on the upper portion of the pad metal (Figs. 3 and 5 as annotated below), and the barrier metal is spaced apart from the side portion of the pad metal (Figs. 3 and 5 element 31 is spaced from the side of element 20 by at least element 201).
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Regarding claim 2, Sugimoto further discloses the insulating film further covers a part of the upper portion of the pad metal (Figs. 3 and 5 element 201 covers a top portion of element 20), and the barrier metal covers a second part of the upper portion of the pad metal (Figs. 3 and 5 element 31 covers a top portion of element 20 between elements 201).
Regarding claim 3, Sugimoto further discloses the insulating film further covers a first part of the upper portion (Figs. 3 and 5 element 201 covers a top 20), the barrier metal covers a second part of the upper portion of the pad metal (Fig. 5 element 31 covers a top portion of element 20), and a part of the insulating film that covers the first part of the upper portion of the pad metal and a part of the barrier metal covering the part of the upper portion of the pad metal are formed in order of the part of the insulating film and the part of the barrier metal from a side of the pad metal (Figs. 3 and 5 elements 201 and 31 are formed in order from element 20).
Regarding claim 5, Sugimoto further discloses the insulating film further covers a first part of the upper portion (Figs. 3 and 5 element 201 is formed on the top and sides of element 20), the barrier metal covers a second part of the upper portion of the pad metal (Figs. 3 and 5 element 31 is formed on top of element 20), and an end portion of the insulating film that covers the first part of the upper portion of the pad metal is in contact with the end portion of the barrier metal that covers the second part of the upper portion of the pad metal (See annotated Figs. 3 and 5 below).
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Regarding claim 7, Sugimoto further discloses a first guide layer between the first cladding layer and the active layer (Fig. 5 element 8; [0043]), and a second guide layer between the second cladding layer and the active layer (Fig. 5 element 11; [0046]).
Regarding claim 11, Sugimoto further discloses the barrier metal has a laminated structure including at least two layers ([0069] discloses a Ti and Pt layer), and at least one layer of the at least two layers of the barrier metal is a Ti layer ([0069]).
Regarding claim 12, Sugimoto further discloses the semiconductor laser is a nitride semiconductor laser (Title).
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.
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 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Sugimoto in view of Tanaka et al. (US20120213242A1), hereafter Tanaka.
Regarding claim 8, Sugimoto further discloses a contact layer (Fig. 5 element 13; [0048]). Sugimoto does not explicitly disclose a second electrode are disposed in order from the side closer to the substrate between the second cladding layer and the pad metal. However, Tanaka discloses a second electrode are disposed in order from the side closer to the substrate between the second cladding layer and the pad metal (Fig. 6 element 21 is between element 12 and element 6). An advantage is to provide the desired light confinement while having a low contact resistance ([0042]). Accordingly, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Sugimoto with a second electrode are disposed in order from the side closer to the substrate between the second cladding layer and the pad metal as disclosed by Tanaka in order to provide the desired light confinement while having a low contact resistance.
Regarding claim 9, Tanaka further discloses the second electrode is a transparent conductive film ([0042]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Sugimoto in view of Fukai et al. (US20040240503A1), hereafter Fukai.
Regarding claim 10, Sugimoto does not explicitly disclose the insulating film has a laminated structure including at least two layers, and at least one layer of the at least two layers of the insulating film is a SiN layer. However, Fukai discloses the insulating film has a laminated structure including at least two layers, and at least one layer of the at least two layers of the insulating film is a SiN layer ([0150]). An advantage, as is known in the art, is to achieve the desired electrical and optical properties of the composite insulating film. Accordingly, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Sugimoto with disclose the insulating film has a laminated structure including at least two layers, and at least one layer of the at least two layers of the insulating film is a SiN layer as disclosed by Fukai in order to achieve the desired electrical and optical properties of the composite insulating film and 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached Notice of References Cited. See, e.g., 20180287338A1 Fig. 4 disclosing a transparent first electrode (14), insulating layer (15), and a multilayer electrode ([0070]); US20100059790A1 Fig. 15; US20040161010A1 Fig. 2; US20060093004A1 Fig. 13; US7285858B2 Fig. 10 disclosing a first electrode (36), a barrier electrode (71), and insulation layer (103), and another electrode (101).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA KING whose telephone number is (571)270-1441. The examiner can normally be reached Monday to Friday 10am-5pm MT.
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, Min Sun Harvey can be reached at (571) 272-1835. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Joshua King/Primary Examiner, Art Unit 2828 10/07/2026
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