Ex Parte Freund

Patent Trial and Appeal Board

Apr 30, 2015

11609372 (P.T.A.B. Apr. 30, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/609,372 12/12/2006 Joseph Michael Freund Freund 98 1998
7590 04/30/2015
Ryan, Mason & Lewis, LLP
90 Forest Avenue
Locust Valley, NY 11560
EXAMINER
SAYADIAN, HRAYR
ART UNIT PAPER NUMBER
2814
MAIL DATE DELIVERY MODE
04/30/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH MICHAEL FREUND

Appeal 2012-010380
Application 11/609,3721
Technology Center 2800
____________

Before SALLY G. LANE, JOHN F. HORVATH, and KIMBERLY J.
McGRAW, Administrative Patent Judges.

McGRAW, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 8–11, and 13–24. App. Br. 6. Claims 3 and
12 are withdrawn. Ans. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellant, the real party-in-interest is LSI Corporation. App.
Br. 1.

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BACKGROUND
Appellant’s invention relates generally to gallium nitride (GaN) based
semiconductor devices. Spec. 1:10–11. Claims 1, 18, and 19 are
independent. Claim 1 is representative and is reproduced below:

1. A semiconductor device comprising:
an active layer;
a cladding layer; and
an electron blocking layer, the electron blocking layer at
least partially disposed in a region between the active layer and
the cladding layer and configured to form a potential barrier to
a flow of electrons from the active layer toward the cladding
layer;
wherein the electron blocking layer comprises two
elements from Group III of the periodic table and an element
from Group V of the periodic table, one of the two elements
from Group III of the periodic table with a concentration profile
having a first portion that gradually increases in concentration
in a direction away from the active layer toward the cladding
layer and having a second portion that gradually decreases in
concentration between the first portion and the cladding layer;
and
wherein the electron blocking layer is disposed between a
first sublayer of a waveguide layer and a second sublayer of the
waveguide layer, at least the first and second sublayers of the
waveguide layer having a same composition, and at least the
first and second sublayers of the waveguide layer being
disposed between the active layer and the cladding layer.
Appeal Br. 20, Claim App’x.

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THE REJECTIONS
Claims 1, 2, 8–11, and 13–23 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Domen (US 6,555,403 B1, issued Apr. 29, 2003),
Tanizawa (US 2007/0063207 A1, published Mar. 22, 2007), and MRS
Internet J. Nitride Semicond. Res. 4S1, G5.2 (1999), by “Muth.” Ans. 4.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Tanizawa, Muth, and Sakai (US 2003/0222266 A1, published Dec. 4, 2003).
Ans. 9.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Domen, Tanizawa, Muth, and Appellant’s Admitted Prior Art (Ans. 9)
as well as over Domen, Tanizawa, Muth, and Nagahama (US 6,172,382 B1,
published Jan. 9, 2001) (Ans. 10).

ANALYSIS
Claims 1, 2, 8–11, and 13–23
Domen teaches an embodiment of a semiconductor device comprising
an active layer 616, a cladding layer 619, an optical guiding layer 618, and
an AlGaN electron blocking layer 626 adjoining the active layer. Ans. 5;
Domen, 53:30–56, Figs. 38A, 38B. The Examiner stated that this particular
embodiment of Domen does not explicitly disclose an electron blocking
layer disposed between a first and a second sublayer of a waveguide layer as
recited in claim 1. Ans. 5–6 (stating Domen’s eighteenth embodiment
“appears to fail to explicitly disclose the EBL 626 and the active layer 616
being separated by a first waveguide sublayer and the EBL 626 and the
cladding 619 being separated by a second waveguide sublayer, the first and
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second sub-layer having the same composition”). However, the Examiner
found that this limitation is satisfied by another embodiment which shows
electron blocking layer 418 in between waveguide layers 417 and 419. Ans.
6, citing Domen 44:52–47:27, 45:38–59, and Figs. 33A & 33B. Both layers
417 and 419 are made of GaN. Ans. 6, citing Domen 46:18–34.
Appellant argues that the Examiner erred in finding Domen teaches all
of the limitations of claim 1 alleging that (1) Domen’s layer 418 is a
cladding layer, not an electron blocking layer, (2) layer 417 is an optical
guiding layer, not a waveguide layer, and (3) layer 419 is an intermediate
layer, not a waveguide layer. App. Br. 7–10.
This argument is not persuasive. As the Examiner found, and
Appellant does not persuasively rebut, a layer can be both a cladding layer
(according to its location) and an electron blocking layer (according to its
function). See e.g., Ans. 14–15. Here, the Examiner found Domen teaches
that electrons are trapped in layer 419, between layers 418 and 420, thus
confirming that layer 418 is and functions as an electron blocking layer.
Ans. 15 citing Domen 46:18–39, 10:54–11:6. The Examiner further found
the very nature of the conduction bands at layers 418 and 420–i.e., being
higher than the conduction band of intermediate waveguide layer 419 as
shown in Figure 33B, making layers 418 and 420 barriers to electrons that
block/trap electrons—makes layers 418 and 420 electron blocking layers.
We agree with the Examiner, and note that the test of whether a reference
teaches or suggests a claim limitation is not whether the exact language of
the limitation is present in the reference. Rather, the relevant inquiry is
whether the limitation is taught or suggested by the prior art when the claim
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is given its broadest reasonable interpretation in light of the specification.
See, e.g., In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990) (interpretation
of references “is not an ‘ipsissimis verbis’ test”); Akzo N.V. v. U.S. Int’l
Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986).
Appellant also argues that layers 417 and 419 do not satisfy the “first
and second sublayers of the waveguide layer have a same composition”
limitation because layer 417 is undoped GaN while layer 419 is doped GaN
and contains impurities (e.g., magnesium) which are not present in layer
417. App. Br. 10, citing Domen 45:48–43, 45:53–59. As such, doped layer
419 contains an impurity that is not present in undoped layer 417, and thus
does not have the same composition as layer 417. App. Br. 11.
This argument is not persuasive. During prosecution, the PTO must
give claims their broadest reasonable construction consistent with the
specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007). Therefore, we look to the specification to see if it provides a
definition for claim terms, but otherwise apply a broad interpretation.” Id.
“[A]s applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” Id. Here, the broadest reasonable construction of layers having
the same composition encompasses layers that are made of the same
materials in the same stoichiometric ratios, such as GaN as taught by
Domen. The presence of dopants or trace impurities in such materials does
not change their composition. Appellant has not pointed to any disclosure in
the specification that requires a narrower interpretation.
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Therefore, we sustain the Examiner’s rejection of claim 1. As
Appellant has not provided separate arguments directed to 2, 8–11, and 13–
23, the rejection of these claims is also sustained.
Claim 19 and 20
Independent claim 19 and its dependent claim 20 include limitations
similar to claim 1, plus an additional limitation directed to “control circuitry
operative to control the recited semiconductor device.” App. Br. 12, 24.
Appellant argues that the Examiner erred by relying upon official notice that
“‘control circuitry’ is notoriously well known in the semiconductor laser art”
as the principle evidence upon which the rejection is based. App. Br. 12.
Appellant contends that “specific knowledge of the prior art must always be
supported by citation to some reference work recognized as a standard in the
pertinent art” and asserts that the Examiner must provide documentary
evidence or a declaration to support the rejection. Id. at 12–13.
We disagree. Official notice without documentary support may be
taken where the facts are asserted to be well-known, or to be common
knowledge in the art and capable of instant and unquestionable
demonstration as being well-known. The Examiner must provide specific
factual findings predicated on sound technical and scientific reasoning to
support the conclusion of common knowledge. See In re Soli, 317 F.2d 941,
946 (CCPA 1963).
Here, the Examiner found that an electrical power supply reads on the
control circuitry limitation of claim 19. Ans. 18. The Examiner further
found that an electrical power supply is necessary to operate an electrically
pumped laser, such as the laser in Domen. Ans. 18. The Examiner
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concluded that it would have been obvious to one of skill in the art, at the
time of the invention, that Domen includes an electrical power supply
(control circuitry) in order to operate. Id. This constitutes the requisite
factual findings predicated on sound technical and scientific reasoning to
support the Examiner’s conclusion of common knowledge at the time of the
invention.
To adequately traverse the Examiner’s finding, the Appellant must
specifically point out the supposed errors in the Examiner’s action, which
include stating why the noticed fact is not considered to be common
knowledge or well known in the art. See 37 CFR § 1.111(b). Appellant has
not done so. Notably, Appellant does not dispute that Domen requires a
power supply to operate, that a power supply satisfies the “control circuitry”
limitations of claim 19, or that one of skill in the art would have understood
that Domen requires a power supply to operate. As such, Appellant’s
argument is not persuasive and we sustain the Examiner’s rejection of claims
19 and 20.
Claim 7
Claim 7 requires the cladding layer comprise a stressed layer
superlattice. The Examiner found that although Domen does not explicitly
disclose a cladding layer comprising a stressed layer superlattice (SLS),
Appellant admitted that the prior art uses SLS claddings. Ans. 9 citing Spec.
Fig. 2, Spec. 1:21–2:5 and Sakai ¶ 30.
Appellant argues the Examiner erred in relying upon AAPA,
contending that Appellant’s description of its own work, even if labeled as
prior art, cannot constitute prior art unless it falls within one of the
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categories listed under 35 U.S.C. § 102. App. Br. 13, citing MPEP § 2129,
Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346 (Fed. Cir. 2003),
and Reading & Bates Construction Co. v. Baker Energy Resources Corp.,
748 F.2d 645, 650 (Fed. Cir. 1984). However, Appellant has not provided,
nor have we identified, anything to indicate that the admitted prior art
described in Appellant’s specification is the inventor’s own work. The cases
cited by Appellant stand for the proposition that an inventor’s own work
product “should not, without a statutory basis, be treated as prior art solely
because he admits knowledge of his own work. It is common sense that an
inventor, regardless of an admission, has knowledge of his own work.”
Riverwood, 324 F.3d at 1355, citing Reading, 748 F.2d 645. In contrast, “a
statement made by an applicant during prosecution identifying certain matter
not the work of the inventor as ‘prior art’ is an admission that the matter is
prior art.” Riverwood, 324 F.3d at 1354 (emphasis added); see also In re
Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975)(stating that “a statement by an
applicant . . . that certain matter is ‘prior art’ to him is an admission that that
matter is prior art for all purposes, whether or not a basis in § 102 can be
found for its use as prior art”). As Appellant has not demonstrated that the
AAPA is Appellant’s own work, this argument is not persuasive of
Examiner error.
In addition to finding that AAPA teaches a stressed layer superlattice,
the Examiner also found that an article by Asano et al (100-mW Kink-Free
Blue-Violet Laser Diodes With Low Aspect Ratio,” IEEE JQE, v. 39, No. 1,
pp. 135–140, hereinafter “Asano”) and Sakai (US 2003/0222266, published
December 4, 2003) teach a stressed layer superlattice. Ans. 9, 19, 20. As
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we agree with the Examiner that AAPA teaches the stressed layer
superlattice limitation of claim 7, we need not address Appellant’s
arguments regarding Asano or Sakai.
Appellant also argues that the Examiner “failed to proffer ‘any reason
to combine the known elements in the fashion claimed by the patent at
issue’” but rather “has merely proffered a conclusory statement.” App. Br.
14.
This argument is not persuasive. The Examiner found that it is known
in the art that SLS cladding is suitable for performing the cladding function.
Final Act. 8. The Examiner further found that it is known in the art that SLS
cladding is an equivalent to non- SLS cladding for performing the cladding
function. Final Act. 8. The Examiner concluded that it would have been
obvious to one of skill in the art to have used SLS cladding in the nitride
laser because of its art recognized suitability and because it is an art
recognized alternative to non-SLS cladding. Final Act. 8. The Examiner
has therefore proffered articulated reasoning with rational underpinning to
support the legal conclusion of obviousness. The selection of a known
material based upon its suitability for its intended use supports a prima face
case of obviousness. See e.g., Sinclair& Carroll Co. v. Interchemical Corp.,
325 U.S. 327, 335 (1945); see also In re Fout, 675 F.2d 297, 301 (CCPA
1982)(stating that an express suggestion to substitute one equivalent for
another need not be present to render such substitution obvious).
Claim 24
Dependent claim 24 requires that the first and second sublayers of the
waveguide layers are undoped. App. Br. 15. The Examiner rejected claim
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24 under § 103 over Domen, Tanizawa, Muth and either (1) Appellant’s
Admitted Prior Art (“AAPA”) or (2) Nagahama. The Examiner found that
both AAPA and Nagahama teach undoped waveguide layers. In particular,
the Examiner found that Appellant’s specification describes conventional
GaN based semiconductor prior art lasers as having undoped waveguide
layers (Ans. 10; Spec. 2:1) and that Nagahama teaches that doped and
undoped layers are art recognized equivalents as waveguiding layers (Ans.
11, citing Nagahama 22:44–63, 59:54–61).
Appellant first asserts that the Examiner erred in relying upon AAPA,
arguing Appellant’s admission that the prior art includes undoped waveguide
layers cannot constitute prior art unless it fall under one of the categories
listed in § 102. As noted above, this argument is not persuasive. An
applicant’s admission that certain matter is prior art, “is an admission that
that matter is prior art for all purposes, whether or not a basis in § 102 can be
found for its use as prior art.” Nomiya, 509 F.2d at 570–71 & n.5.
Appellant next asserts the Examiner’s statement that the art
recognized the suitability and/or equivalence of doped and undoped
waveguide layers is not a sufficient reason to modify the art to provide
undoped waveguide layers. App. Br. 15–17. This argument is not
persuasive. The Examiner found, and Appellant does not rebut, that
Nagahama teaches that doped and undoped layers are recognized equivalents
as waveguiding layers. As noted above, an express suggestion to substitute
one equivalent for another need not be present to render such substitution
obvious. See e.g., Fout, 675 F.2d at 301.
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Appellant also argues that Domen teaches away from providing an
undoped intermediate layer 419 because Domen “discusses the importance
of ensuring that intermediate layer 419 [of Figs. 33A and 33B] is doped.”
App. Br. 17. This argument is unpersuasive. A reference may be said to
teach away “when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see also Para-
Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1090 (Fed.
Cir. 1995) (to teach away, a reference must state that it “should not” or
“cannot” be used in combination with other features in the prior art). Here,
the cited provisions of Domen merely discuss certain advantages of p-
doping, but do not state that undoped layers should be avoided. Rather, the
Examiner found, and Appellant does not rebut, Domen expressly discusses
advantages of undoped layers, including improved crystal quality and
enhanced radiative recombination probability. Ans. 24. As such, we find
that Domen does not teach away from the claimed invention.
For the foregoing reasons, we sustain the Examiner’s rejection of
claim 24 as unpatentable under 35 U.S.C. § 103 over Domen, Tanizawa,
Muth and either Appellant’s Admitted Prior Art or Nagahama.

DECISION
The Examiner’s rejections of claims 1, 2, 8–11, and 13–24 are
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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