DETAILED ACTION
Reissue
The present reissue application is directed to US 11,742,378 B2 (“378 Patent”). 378 Patent issued on August 29, 2023 with claims 1-12 from application 17/731,822 filed on April 28, 2022, which is a continuation of parent application 16/230,673 filed on December 21, 2018, and claims priority to EP 18164702 filed on March 28, 2018 and 62/611,999 filed on December 29, 2017.
This application was filed on August 28, 2025. Since this date is after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. Furthermore, the present application is being examined under the first inventor to file provisions of the AIA .
This application presents broadened claims, which are permitted because Applicant filed these claims and demonstrated an intent to broaden within two years of the issue date of 378 Patent.
The most recent amendment was filed on August 28, 2025. The status of the claims is:
Claims 1-12: Original
Claims 13-22: New
This is a first, non-final action.
References and Documents Cited in this Action
378 Patent (US 11,742,378 B2)
Haberern (US 2014/0070245 A1)
US 11,355,549 B2 (parent of 378 Patent)
Summary of Rejections and Objections in this Action
Claims 9-12 are rejected under 35 U.S.C. 112(b) as being indefinite.
Claims 13-22 are rejected under 35 U.S.C. 251 as being an impermissible recapture.
Claims 1-22 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251.
Claims 1-3, 6-8, 13-15, 17, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haberern.
Claims 1-5 and 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. US 11,355,549 B2.
Summary of the Claims
378 Patent is directed to a light emitting diode including a conductive via. Claim 13 is representative:
13. (New) A light emitting diode (LED) comprising:
an electrically conductive via in a first portion of an epitaxial layer, the electrically conductive via filling a contact hole formed in the first portion;
a p-type contact on a second portion of the epitaxial layer, the first portion and the second portion separated by an isolation region, the isolation region and the electrically conductive via separated by the first portion of the epitaxial layer; and
an n-type contact in the first portion of the epitaxial layer, the n-type contact directly coupled to the electrically conductive via.
Claims 1, 9, 13, and 19 are the independent claims. Claims 9 and 19 further recite an array comprising first and second LEDs.
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 9-12 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.
Claim 9 recites “on the n-type layer of the epitaxial layer” in line 10 of the claim.
There is insufficient antecedent basis for this limitation in the claim because claim does not recite “the epitaxial layer comprises an n-type layer, an active region, and a p-type layer” until line 13 in the claim. Claims 10-12 depend on claim 9 and are also indefinite for the same reason.
Claim Rejections - 35 USC § 251
Claims 13-22 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
This rejection is based on the following three-step test for recapture. See MPEP 1412.02. In the discussion below, “reissue claims” refers to pending claims of this reissue application; “patent claims” refers to claims issued in 378 Patent; and “original claims” refers to claims that were presented in the original application prior to surrender, wherein the “original application” includes the prosecution record of the application that issued as 378 Patent as well as the patent family’s entire prosecution history. See In re Youman, 679 F.3d 1335, 1346 n.4, 102 USPQ2d 1862, 1870 n.4 (Fed. Cir. 2012) and MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1316-17, 94 USPQ2d 1598 (Fed. Cir. 2010).
1) Was there broadening?
Yes, the reissue claims are broader than the patent claims. Patent claim 1, for example, recites “a transparent electrically conductive layer formed on the epitaxial layer and having a length extending in a second direction, the second direction substantially perpendicular to the first direction.” This limitation is not recited in new reissue claims 13-22.
2) Does any broadening aspect of the reissue claim relate to surrendered subject matter?
Yes, a broadening aspect of the reissue claims relates to surrendered subject matter. In 16/230,673, the parent application of 378 Patent, Applicant added “a transparent electrically conductive layer on the epitaxial layer having a length extending in a second direction, the second direction substantially perpendicular to the first direction” to all claims (see amendment filed on October 19, 2021 in 16/230,673). This limitation was added in order to overcome rejections over the prior art. For example, Applicant argued that the Tsai reference cited by the examiner “does not teach or suggest that the transparent electrically conductive layer has a length extending in a second direction substantially perpendicular to the first direction of the isolation region” (see page 10 of response filed on October 19, 2021 in 16/230,673). Therefore, the limitation is surrendered subject matter.
3) Were the reissue claims materially narrowed in other aspects such that recapture is avoided?
No, the reissue claims are not materially narrowed such that recapture is avoided. Reissue claims 12-22 lack the limitation entirely.
Claims 1-22 are also rejected as being based upon a defective reissue declaration under 35 U.S.C. 251. The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because it states that:
PNG
media_image1.png
126
650
media_image1.png
Greyscale
However, the error identified in this statement is not an error upon which reissue can be based because it would be an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See details above.
Claim Rejections - 35 USC § 102
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 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, 6-8, 13-15, 17, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haberern.
Regarding independent claim 1, Haberern discloses a light emitting diode (LED) (Figures 20, 21, and 24) comprising:
an electrically conductive via 388 in a first portion of an epitaxial layer (i.e., an epitaxial layer comprising p-type layer 358, n-type layer 360 and an active layer 362; Figure 20, paragraphs [0103] and [0117]), the electrically conductive via filling a contact hole formed in the first portion;
a p-type contact 382 on a second portion of the epitaxial layer (paragraph [0116]), the first portion and the second portion separated by an isolation region having a length extending in a first direction (i.e., an isolation region comprising protection layer 406 and the corresponding space 506, wherein the “first direction” of space 506 is the direction going into the page in Figures 20 and 21 and the up-down direction in Figure 24; paragraph [0123] and [0128]), the isolation region and the electrically conductive via separated by the first portion of the epitaxial layer (i.e., via 388 and protection layer 406/space 506 are not directly adjacent as shown in Figures 20 and 21);
an n-type contact 384 in the first portion of the epitaxial layer, the n-type contact directly coupled to the electrically conductive via (paragraph [0117]); and
a transparent electrically conductive layer formed on the epitaxial layer and having a length extending in a second direction, the second direction substantially perpendicular to the first direction (i.e., current spreading layer 364, which “is typically a transparent conductive oxide”, extends in a second direction that is the left-right direction in Figures 20 and 21; paragraph [0104], [0111], and [0116]).
PNG
media_image2.png
438
871
media_image2.png
Greyscale
Regarding claim 2, Haberern discloses that the epitaxial layer comprises: an n-type layer 360; an active region 362; and a p-type layer 358 (Figure 20, paragraphs [0103] and [0117]).
Regarding claim 3, Haberern discloses that the isolation region 406 and the electrically conductive via 388 extend through the p-type layer 358, the active region 362, and a portion of the n-type layer 360 (Figure 20, paragraphs [0103] and [0117]).
Regarding claim 6, Haberern discloses that the second portion comprises a pixel (i.e., this portion emits light; Figure 24; paragraphs [0091], [0096], and [0128]-[0129]).
Regarding claim 7, Haberern discloses an insulating lining 380 between the electrically conductive via 388 and a portion of the epitaxial layer (Figure 20; paragraph [0121]).
Regarding claim 8, Haberern discloses that the isolation region has a width that is less than the length of the isolation region (i.e., Figure 24 shows isolation region spaces 506 has a width that is less than the length, wherein width is left-right and length is up-down in Figure 24), and wherein the transparent electrically conductive layer 364 has a width that is less than the length of the transparent electrically conductive layer (Figure 20 shows layer 364 has a width that is less than the length, wherein width is up-down and length is left-right in Figure 20).
Regarding independent claim 13, Haberern discloses a light emitting diode (LED) (Figures 20, 21, and 24) comprising:
an electrically conductive via 388 in a first portion of an epitaxial layer (i.e., an epitaxial layer comprising p-type layer 358, n-type layer 360 and an active layer 362; Figure 20, paragraphs [0103] and [0117]), the electrically conductive via filling a contact hole formed in the first portion;
a p-type contact 382 on a second portion of the epitaxial layer (paragraph [0116]), the first portion and the second portion separated by an isolation region (i.e., an isolation region comprising protection layer 406 and the corresponding space 506; Figures 20 and 24), the isolation region and the electrically conductive via 388 separated by the first portion of the epitaxial layer (i.e., via 388 and protection layer 406/space 506 are not directly adjacent as shown in Figures 20 and 21); and
an n-type contact 384 in the first portion of the epitaxial layer, the n-type contact directly
coupled to the electrically conductive via 388 (paragraph [0117]).
Regarding claim 14, Haberern discloses that the epitaxial layer comprises: an n-type layer 360; an active region 362; and a p-type layer 358 (Figure 20, paragraphs [0103] and [0117]).
Regarding claim 15, Haberern discloses that the isolation region 406 and the electrically conductive via 388 extend through the p-type layer 358, the active region 362, and a portion of the n-type layer 360 (Figure 20, paragraphs [0103] and [0117]).
Regarding claim 17, Haberern discloses that the second portion comprises a pixel (i.e., this portion emits light; Figure 24; paragraphs [0091], [0096], and [0128]-[0129])..
Regarding claim 18, Haberern discloses an insulating lining 380 between the electrically conductive via 388 and a portion of the epitaxial layer (Figure 20; paragraph [0121]).
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 1-5 and 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. US 11,355,549 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding independent reissue claims 1 and 13, method claim 1 of US 11,355,549 B2 recites “forming” the elements recited in independent reissue claims 1 and 13, including an electrically conductive via, a p-type contact, an isolation region, an n-type contact, and a transparent electrically conductive layer. Given claim 1 of US 11,355,549 B2, it would have been obvious to create reissue claims 1 and 13 as they are the resulting device formed by the method.
Dependent reissue claims 2-5 and 14-16 recite limitations corresponding to limitations recited in claims 2-5 of US 11,355,549 B2 and are also rejected on the ground of nonstatutory double patenting for the same reason as the independent claims.
Allowable Subject Matter
Claims 4, 5, and 16 may contain allowable subject matter if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and if Applicant overcomes the rejections under 35 U.S.C. 251 and double patenting set forth in above in this action.
Claims 9-12 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and if Applicant overcomes the rejections under 35 U.S.C. 251 and double patenting set forth in above in this action.
Claims 19-22 would be allowable if Applicant overcomes the rejections under 35 U.S.C. 251 and double patenting set forth in above in this action.
The prior art does not specifically disclose or fairly suggest a light emitting diode or light emitting diode array including the combination of all of the elements, steps, and limitations recited in claims 4, 5, 9-12, 16, and 19-22 (including all of the limitations of any respective parent claims), particularly including:
a transparent electrically conductive layer on the n-type layer (e.g., claim 4); or
a p-type contact directly on the p-type layer (e.g., claims 5 and 16); or
a light emitting diode (LED) array comprising: a first LED comprising an electrically conductive via that fills a contact hole formed in a first portion of an epitaxial layer, and a p-type contact on a second portion of the epitaxial layer, the first portion and the second portion separated by an isolation region, the isolation region and the electrically conductive via separated by the first portion of the epitaxial layer; an n-type contact in the first portion of the epitaxial layer, the n-type contact directly coupled to the electrically conductive via; and a second LED comprising the epitaxial layer, wherein the epitaxial layer comprises an n-type layer, an active region, and a p-type layer, wherein the isolation region and the electrically conductive via extend through the p-type layer, the active region, and a portion of the n-type layer, and wherein the first LED is separated from the second LED by a separation region (e.g., claims 9-12 and 19-22).
Conclusion
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which this reissue application is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
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 https://www.uspto.gov/patents/laws/interview-practice.
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.
Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to Examiner Christina Leung at telephone number (571) 272-3023; the Examiner’s supervisor, SPE Patricia Engle at (571) 272-6660; or the Central Reexamination Unit at (571) 272-7705.
/CHRISTINA Y. LEUNG/Primary Examiner, Art Unit 3991
Conferees: /DEANDRA M HUGHES/ /Patricia L Engle/Reexamination Specialist, Art Unit 3992 SPRS, Art Unit 3991
