DETAILED ACTION
This Action is responsive to the communication filed on 04/19/2024.
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 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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Applicants’ Drawings depict an insulating reflective structure 500 comprising a protective layer 50, a reflective layer 51, and a cap layer 52 as opposed to the insulating reflective structure comprising 500 comprising a compact layer 54, a protective layer 50, a reflective layer 51, and a cap layer 52 as claimed. Therefore, the insulating reflective structure comprising 500 comprising a compact layer 54, a protective layer 50, a reflective layer 51, and a cap layer 52 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitation: “the insulating reflective structure comprises a compact layer, a protective layer covering the compact layer, a reflective layer comprising a Distributed Bragg Reflector structure covering the protective layer, and a cap layer covering the reflective layer” (emphasis added). However, Applicant’s Specification, at page 8, lines 14-16, discloses that “the structure of the insulating reflective structure 500 is formed by sequentially stacking the protective layer 50, the reflective layer 51 and the cap layer 52” (emphasis added). Additionally, Applicant’s Specification, at page 2, lines 8-11, discloses that “an insulating reflective structure 500 comprising a protective layer 50 covering the mesa, a reflective layer 51 comprising a Distributed Bragg Reflector structure covering the protective layer 50, and a compact layer 54 covering the reflective layer 51” (annotations added). Applicants’ Specification does not disclose insulating reflective structure comprising all four of the following components: a compact layer, a protective layer, a reflective layer, and a cap layer as claimed.
Claims 2-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement due to the claims’ dependency to Claim 1.
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.
Claim 13 is rejected under 35 U.S.C. 112(b) 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 13, which depends from Claim 9 and Claim 1, recites the limitation "the sidewall of the first semiconductor layer" (emphasis added) in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
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.
Initially, and with respect to Claim 4, note that a “product-by-process” claim is directed to the product per se, no matter how actually made. See In re Thorpe, 227 USPQ 964 (CAFC, 1985) and the related case law cited therein which makes it clear that it is the final product per se which must be determined in a “product-by-process” claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product, whether claimed in “product-by-process” claims or not. As stated in Thorpe,
[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935).
Note that the applicants have the burden of proof in such cases, as the above case law makes clear.
Claims 1-2, 4-7, 9, 15, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Perzlmaier (US 2018/0198045).
Regarding claim 1, Perzlmaier (see, e.g., FIG. 5A, inverted) discloses a light-emitting device, comprising:
a semiconductor stack 2 comprising a first semiconductor layer 21, an active layer 23 and a second semiconductor layer 22 (Para 0083);
a first contact electrode 81 formed on the first semiconductor layer 21 (Para 0089);
a second contact electrode 82 formed on the second semiconductor layer 22 (Para 89); and
an insulating reflective structure 3, 9 (91, 92) (see also FIG. 2) comprising a first insulating reflective structure opening e.g., opening in 9 (91, 92) exposing 21 to expose the first contact electrode 81 and a second insulating reflective structure opening e.g., opening in 9 (91, 92) exposing 22 to expose the second contact electrode 82, wherein the insulating reflective structure 3, 9 (91, 92) comprises a compact layer 33, a protective layer 32 covering the compact layer 33, a reflective layer 31 comprising a Distributed Bragg Reflector structure covering the protective layer 32, and a cap layer 30 covering the reflective layer 31, and wherein an outer edge of the cap layer 30 is aligned with an outer edge of the reflective layer 31 (Para 0097-Para 0099).
Regarding claim 2, Perzlmaier (see, e.g., FIG. 5A, inverted) teaches the light-emitting device according to claim 1, wherein the compact layer 33 comprises silicon oxide, aluminum oxide, hafnium oxide, zirconium oxide, yttrium oxide, lanthanum oxide, tantalum oxide, silicon nitride, aluminum nitride, or silicon oxynitride (Para 0098).
Regarding claim 4, Perzlmaier (see, e.g., FIG. 5A, inverted) teaches the light-emitting device according to claim 1, wherein the compact layer 33 or the cap layer 30 is formed (Para 0098, Para 0095).
Examiner Note: The following limitation is a product-by process limitation: “the compact layer or the cap layer is formed by atomic layer deposition.” "[E]ven though product–by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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). In this case, whether or not the compact layer or the cap layer is formed by atomic layer deposition does not change the product, i.e., the compact layer or the cap layer being formed.
Regarding claim 5, Perzlmaier (see, e.g., FIG. 5A, inverted) teaches the light-emitting device according to claim 1, wherein the protective layer 32 comprises silicon oxide (Para 0093).
Regarding claim 6, Perzlmaier (see, e.g., FIG. 5A, inverted) teaches the light-emitting device according to claim 1, wherein the protective layer 32 comprises a thickness between 0.2 μm and 2 μm (between 200 nm and 2000 nm) (Para 0093).
Regarding claim 7, Perzlmaier (see, e.g., FIG. 5A, inverted) teaches the light-emitting device according to claim 1, wherein an outer edge of the protective layer 32 is aligned with the outer edge of the reflective layer 31.
Regarding claim 9, Perzlmaier (see, e.g., FIG. 5A, inverted) teaches the light-emitting device according to claim 1, further comprising a substrate 70 comprising a top surface e.g., top surface of 70, wherein the semiconductor stack 2 is formed on the top surface e.g., top surface of 70 of the substrate 70 (Para 0108).
Regarding claim 15, Perzlmaier (see, e.g., FIG. 5A, inverted) teaches the light-emitting device according to claim 1, further comprising a first electrode pad 41 covering the first insulating reflective structure opening e.g., opening in 9 (91, 92) exposing 21 and a second electrode pad 42 covering the second insulating reflective structure opening e.g., opening in 9 (91, 92) exposing 22 (Para 0087, Para 0101, Para 0111).
Regarding claim 19, Perzlmaier (see, e.g., FIG. 5A, inverted) teaches the light-emitting device according to claim 1, wherein the protective layer 32 (e.g., silicon oxide) and the cap layer 30 (e.g., aluminum) comprise different materials (Para 0093, Para 0095).
Regarding claim 20, Perzlmaier (see, e.g., FIG. 5A, inverted) teaches the light-emitting device according to claim 1, wherein an interface of the compact layer 33 contacting a sidewall of the semiconductor stack 2 comprises a metal element and oxygen (e.g., ZnO) (Para 0098).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Perzlmaier (US 2018/0198045), in view of Yoon (US 2019/0237626).
Regarding claim 3, although Perzlmaier shows substantial features of the claimed invention, Perzlmaier fails to expressly teach the light-emitting device according to claim 1, wherein the cap comprises metal oxide, nitride, oxide or oxynitride.
Yoon (see, e.g., FIG. 3 – FIG. 5), on the other hand, teaches a cap 150 comprises metal oxide, nitride, oxide or oxynitride for the purpose of utilizing a material layer that further enhances external light extraction efficiency (Para 0037, Para 0043).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the cap layer of Perzlmaier to be a cap layer comprising a metal oxide, nitride, oxide or oxynitride as described by Yoon for the purpose of utilizing a material layer that further enhances external light extraction efficiency (Para 0037, Para 0043).
Claims 11, 12, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Perzlmaier (US 2018/0198045).
Regarding claim 11, Perzlmaier (see, e.g., FIG. 5A, inverted) teaches the light-emitting device according to claim 9, wherein the first semiconductor layer 21 comprises a sidewall e.g., outer sidewall surface of 21 connected to the top surface e.g., top surface of 70 of the substrate 70.
Although Perzlmaier shows substantial features of the claimed invention, Perzlmaier fails to specify that an angle between the sidewall of the first semiconductor layer and the top surface of the substrate is between 70 degrees and 110 degrees. Perzlmaier, on the other hand, does teach that the angle between the sidewall e.g., outer sidewall surface of 21 of the first semiconductor layer 21 and the top surface of the substrate 70 is an obtuse angle. However, differences in angles will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such difference is critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).
Since the applicant has not established the criticality (see next paragraph) of the angle between the sidewall of the first semiconductor layer and the top surface of the substrate being between 70 degrees and 110 degrees, it would have been obvious to one of ordinary skill in the art to modify the angle between the sidewall of the first semiconductor layer and the top surface of the substrate to be between 70 degrees and 110 degrees in the device of Perzlmaier through routine experimentation.
CRITICALITY
The specification contains no disclosure of either the critical nature of the claimed angle between the sidewall of the first semiconductor layer and the top surface of the substrate or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 12, Perzlmaier (see, e.g., FIG. 5A, inverted) teaches the light-emitting device according to claim 9, wherein the first semiconductor layer 21 comprises a sidewall e.g., inner sidewall surface of 21 connected to the top surface e.g., top surface of 70 of the substrate 70.
Although Perzlmaier shows substantial features of the claimed invention, Perzlmaier fails to specify that an angle between the sidewall of the first semiconductor layer and the top surface of the substrate is between 10 degrees and 50 degrees. Perzlmaier, on the other hand, does teach that the angle between the sidewall e.g., inner sidewall surface of 21 of the first semiconductor layer 21 and the top surface of the substrate 70 is an acute angle. However, differences in angles will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such difference is critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).
Since the applicant has not established the criticality (see next paragraph) of the angle between the sidewall of the first semiconductor layer and the top surface of the substrate being between 10 degrees and 50 degrees, it would have been obvious to one of ordinary skill in the art to modify the angle between the sidewall of the first semiconductor layer and the top surface of the substrate to be between 10 degrees and 50 degrees in the device of Perzlmaier through routine experimentation.
CRITICALITY
The specification contains no disclosure of either the critical nature of the claimed angle between the sidewall of the first semiconductor layer and the top surface of the substrate or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 18, although Perzlmaier shows substantial features of the claimed invention, Perzlmaier fails to specify that light-emitting device according to claim 1, wherein the compact layer comprises a thickness between 400 Å and 2000 Å. Perzlmaier, on the other hand, does teach that the compact layer 33 comprises a thickness. However, differences in thicknesses will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such difference is critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).
Since the applicant has not established the criticality (see next paragraph) of the thickness of the compact layer, it would have been obvious to one of ordinary skill in the art to modify the thickness of the compact layer in the device of Perzlmaier through routine experimentation.
CRITICALITY
The specification contains no disclosure of either the critical nature of the claimed compact layer thickness or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Allowable Subject Matter
Claims 8, 10, 14, and 16-17 would be allowable if Claim 1 is rewritten to overcome the rejection under 35 U.S.C. 112(a) set forth in this Office Action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTONIO CRITE whose telephone number is (571) 270-5267. The examiner can normally be reached Monday - Friday, 10:00 am - 6:30 pm.
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, Kretelia Graham can be reached at (571) 272-5055. 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.
/ANTONIO B CRITE/Primary Examiner, Art Unit 2817
Prosecution Insights