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 .
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The applicant fails to disclose any specific crystal orientation for the layers 220, 230, 240 of the microLED feature 250.
c
Claim 1 discloses “wherein the capping layer has a crystalline orientation and the microLED has a crystal orientation that is the same as the crystalline orientation of the capping layer.”
Paragraph [0067] discloses “[i]n some embodiments, when the capping layer 270 comprises aluminum nitride, the capping layer is substantially crystalline with a <100> orientation. In some embodiments, the capping layer 270 has the same orientation as the layers 220, 230, 240 of the microLED feature 250.”
The applicant fails to disclose any specific crystal orientation for the layers 220, 230, 240 of the microLED feature 250 (such as <100>, <110>,<111>, <211>, or <311> (The applicant fails to disclose any specific species within the genus.) The applicant has not shown an actual reduction to practice for different orientations such as <100>, <110>,<111>, <211>, or <311> (See MPEP 2163 I 3a ii “The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice (see i)(A) above)” and “A ‘representative number of species’ means that the species which are adequately described are representative of the entire genus.” ) In this case the applicant has not taught any species (i.e. specific crystal orientations for the layers 220, 230, 240 of the microLED feature 250 (such as <100>, <110>,<111>, <211>, or <311> )) in the originally filed specification.
Moreover the Federal Circuit has held:
As we explained in Ariad, the written description inquiry looks to "the four corners of the specification" to discern the extent to which the inventor(s) had possession of the invention as broadly claimed. Ariad, 598 F.3d at 1351 ; see also Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 , 1571 (Fed. Cir. 1997) ("It is the disclosures of the applications that count."). The knowledge of ordinary artisans may be used to inform what is actually in the specification, see Lockwood, 107 F.3d at 1571 , but not to teach limitations that are not in the specification, even if those limitations would be rendered obvious by the disclosure in the specification. Id. at 1571-72 .
Rivera v. Int'l Trade Comm'n, 857 F.3d 1315, 1322 (Fed. Cir. 2017)
In this case it might be obvious the capping layer 270 has the same orientation, such as <100>, <110>,<111>, <211>, or <311>, as the layers 220, 230, 240 of the microLED feature 250. But the original specification fails to disclose the capping layer 270 has the same orientation, such as <100>, <110>,<111>, <211>, or <311>.
The applicant fails to disclose the capping layer 270 comprises aluminum nitride, the capping layer is substantially crystalline with a <100> AND is the same as the crystalline orientation of the microLED
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The examiner notes that claim 1 would encompass claims 2, 6, 11, 12, 14 and 15. (see MPEP 2164.08).
Paragraph [0067] discloses “[i]n some embodiments, when the capping layer 270 comprises aluminum nitride, the capping layer is substantially crystalline with a <100> orientation. In some embodiments, the capping layer 270 has the same orientation as the layers 220, 230, 240 of the microLED feature 250.” (underline added) The examiner notes that these are described as “some embodiments” the examiner submits these are different embodiments. The specification does not disclose the “layers 220, 230, 240 of the microLED feature 250” as having an orientation of <100>.
The Federal Circuit has held “[t]he written description requirement is not met when… the specification provides at best disparate disclosures that an artisan might have been able to combine in order to make the claimed invention. Ariad Pharms., 598 F.3d at 1352“. Flash Control, LLC v. Intel Corp., No. 2020-2141, 2021 BL 262867, at *5, 2021 U.S.P.Q.2d 754 (Fed. Cir. July 14, 2021).
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 1-20 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.
The examiner notes that claim 1 would encompass claims 2, 6, 11, 12, 14 and 15. (see MPEP 2164.08).
Paragraph [0067] discloses “[i]n some embodiments, when the capping layer 270 comprises aluminum nitride, the capping layer is substantially crystalline with a <100> orientation. In some embodiments, the capping layer 270 has the same orientation as the layers 220, 230, 240 of the microLED feature 250.” The examiner notes that these are described as “some embodiments” the examiner submits these are different embodiments. The specification does not disclose the “layers 220, 230, 240 of the microLED feature 250” as having an orientation of <100>.
The examiner submits that the scope of claim 1 is unclear because as noted above the claims encompass different embodiments. MPEP 2173.03 discloses “A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure … may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971)”. MPEP 2173 discloses “A secondary purpose is to provide a clear measure of what the inventor or a joint inventor regards as the invention so that it can be determined whether the claimed invention meets all the criteria for patentability and whether the specification meets the criteria of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph with respect to the claimed invention”.
MPEP 2173.06 II discloses “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In reSteele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.” Therefore, the claims will not be addressed with respect to prior art at this time.
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 1-3, 6-7, 9-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-16 of U.S. Patent No. 12,040,427. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim the same invention.
Claim 1 of current application
Claims 9 and 12 of U.S. Patent No. 12,040,427
exposing a microLED feature having layer of etch residue comprising carbon and/or oxide contaminants to a cleaning environment to remove at least the carbon and/or oxide contaminants
Claim 9: exposing a microLED feature having a layer of etch residue to a wet clean environment to remove at least a portion of the layer of etch residue exposing the microLED feature having a layer of etch residue to a dry clean environment to remove a portion of the layer of etch residue
Claim 12: the layer of etch residue comprises carbon contaminants and oxide contaminants
Claims 9 and 15 of U.S. Patent No. 12,040,427
encapsulating the microLED feature with a capping layer, the microLED feature being substantially free of contaminants before encapsulating the microLED feature
Claim 9: encapsulating the microLED feature with a capping layer
Claim 15: the microLED feature being substantially free of contaminants before encapsulating the microLED feature
Claim 20 of U.S. Patent No. 12,040,427
the capping layer has a crystalline orientation and the microLED has a crystal orientation that is the same as the crystalline orientation of the capping layer.
the capping layer and the microLED feature are both crystalline with the same orientation
The examiner notes that claim 9 of U.S. Patent No. 12,040,427would be a part of claim 15 of U.S. Patent No. 12,040,427.
The examiner notes that claims 9 and 15 fail to disclose the capping layer has a crystalline orientation and the microLED has a crystal orientation that is the same as the crystalline orientation of the capping layer.
The examiner notes that claim 20 of U.S. Patent No. 12,040,427 discloses the capping layer has a crystalline orientation and the microLED has a crystal orientation that is the same as the crystalline orientation of the capping layer.
The combination of claims 15 of U.S. Patent No. 12,040,427 and claim 20 of U.S. Patent No. 12,040,427 would disclose all of the claimed elements.
The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference.
One of ordinary skill in the art could have combined the elements as claimed by known methods (the encapsulation layer has the same orientation), and that in combination, each element merely performs the same function as it does separately.
One of ordinary skill in the art would have recognized that the results of the combination were predictable (the encapsulation layer would protect the microLED).
Regarding 2, Claim 9 of U.S. Patent No. 12,040,427 discloses the cleaning environment comprises a dry clean environment.
Regarding 3, Claim 14 of U.S. Patent No. 12,040,427 discloses the dry clean environment comprises an alkyl metal compound.
Regarding 6, Claim 9 of U.S. Patent No. 12,040,427 discloses the cleaning environment comprises a dry clean environment.
Regarding 7, Claim 13 of U.S. Patent No. 12,040,427 discloses the wet clean environment comprises one or more of a strong acid, an amine or an alcohol.
Regarding 9, Claim 9 of U.S. Patent No. 12,040,427 discloses the cleaning environment comprises a wet clean and a dry clean environment
Regarding 10, Claim 9 of U.S. Patent No. 12,040,427 discloses the microLED feature is exposed to the wet clean environment before exposure to the dry clean environment.
Regarding 11, Claim 9 of U.S. Patent No. 12,040,427 discloses the capping layer consists essentially of aluminum nitride.
Regarding 12, Claim 9 of U.S. Patent No. 12,040,427 discloses the capping layer is crystalline with a <100> orientation.
Regarding 13, Claim 16 of U.S. Patent No. 12,040,427 discloses the capping layer is hermetic and prevents oxidation of the microLED feature.
Regarding 14, Claim 9 of U.S. Patent No. 12,040,427 discloses the capping layer consists essentially of aluminum nitride.
Regarding 15, Claim 9 of U.S. Patent No. 12,040,427 discloses the capping layer is crystalline with a <100> orientation.
Regarding 16, Claim 16 of U.S. Patent No. 12,040,427 discloses the capping layer is hermetic and prevents oxidation of the microLED feature.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-16 of U.S. Patent No. 12,040,427 in view of claim 15 of U.S. Patent No. 11,342,481.
Claims 9-16 of U.S. Patent No. 12,040,427 render obvious claimed invention supra.
Claims 9-16 of U.S. Patent No. 12,040,427 fail to explicitly disclose the capping layer is formed by atomic layer deposition.
Claim 15 of U.S. Patent No. 11,342,481 the capping layer is formed by atomic layer deposition.
The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference.
One of ordinary skill in the art could have combined the elements as claimed by known methods (forming a layer by ALD), and that in combination, each element merely performs the same function as it does separately.
One of ordinary skill in the art would have recognized that the results of the combination were predictable (the encapsulation layer would protect the microLED).
Claims 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-16 of U.S. Patent No. 12,040,427 in view of claims 2-3 of U.S. Patent No. 11,342,481.
Claims 9-16 of U.S. Patent No. 12,040,427 render obvious claimed invention supra.
Claims 9-16 of U.S. Patent No. 12,040,427 fail to explicitly disclose etching a layered substrate to form the microLED feature having the layer of etch residue and the layered substrate is etched by a reactive ion etching (RIE) process.
Claim 2-3 of U.S. Patent No. 11,342,481 disclose etching a layered substrate to form the microLED feature having the layer of etch residue and the layered substrate is etched by a reactive ion etching (RIE) process.
The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference.
One of ordinary skill in the art could have combined the elements as claimed by known methods (etching with RIE), and that in combination, each element merely performs the same function as it does separately.
One of ordinary skill in the art would have recognized that the results of the combination were predictable (the etching would clean the substrate).
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-16 of U.S. Patent No. 12,040,427 in view of claims 12 of U.S. Patent No. 11,342,481.
Claims 9-16 of U.S. Patent No. 12,040,427 render obvious claimed invention supra.
Claims 9-16 of U.S. Patent No. 12,040,427 fail to explicitly disclose an exposed surface of the microLED feature is substantially free of contaminants and crystalline before encapsulating the microLED feature.
Claim 12 of U.S. Patent No. 11,342,481 disclose an exposed surface of the microLED feature is substantially free of contaminants and crystalline before encapsulating the microLED feature.
The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference.
One of ordinary skill in the art could have combined the elements as claimed by known methods (cleaning a substrate so that it is free of contaminants), and that in combination, each element merely performs the same function as it does separately.
One of ordinary skill in the art would have recognized that the results of the combination were predictable (the substrate would be cleaned).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY K SMITH whose telephone number is (571)272-1884. The examiner can normally be reached Monday-Friday, 10am-6pm.
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, Marlon Fletcher can be reached at 571-272-2063. 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.
/BRADLEY SMITH/Primary Examiner, Art Unit 2817
Prosecution Insights