Ex Parte NegleyDownload PDFPatent Trial and Appeal BoardNov 15, 201311478873 (P.T.A.B. Nov. 15, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/478,873 06/30/2006 Gerald H. Negley 5308-233DV 6625 20792 7590 11/15/2013 MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH, NC 27627 EXAMINER HSIEH, HSIN YI ART UNIT PAPER NUMBER 2811 MAIL DATE DELIVERY MODE 11/15/2013 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 GERALD H. NEGLEY ________________ Appeal 2011-007175 Application 11/478,873 Technology Center 2800 ________________ Before TERRY J. OWENS, MARK NAGUMO, and DONNA M. PRAISS, Administrative Patent Judges. Opinion for the Board by OWENS, Administrative Patent Judge. Opinion dissenting in part by NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007175 Application 11/478,873 2 STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 5, 7, 10, 11, 47, and 50-54. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellant claims a light-emitting device. Claims 1 and 47 are illustrative: 1. A light-emitting device, comprising: a light emitting face comprising a Group III-V semiconductor material; and an antireflective layer on the light emitting face that has a graded index of refraction having values in a range associated with a first index of refraction at a first surface of the antireflective layer and associated with a second index of refraction corresponding to an index of refraction of a medium at a second surface of the antireflective layer; wherein the medium at the second surface is an encapsulant material. 47. A light-emitting device, comprising: a light extraction layer; and an antireflective layer on the light extraction layer that has a graded index of refraction having values in a range associated with a first index of refraction at a first surface of the antireflective layer and associated with a second index of refraction corresponding to an index of refraction of a medium at a second surface of the antireflective layer; wherein the medium at the second surface is an encapsulant material. The References Southwell US 4,583,822 Apr. 22, 1986 Schetzina US 5,351,255 Sep. 27, 1994 Yoshitake US 2002/0195609 A1 Dec. 26, 2002 Hsing Chen US 2004/0188696 A1 Sep. 30, 2004 Appeal 2011-007175 Application 11/478,873 3 The Rejections The claims stand rejected as follows: claims 1, 5, 7, 10, and 11 under 35 U.S.C. § 103 over Hsing Chen in view of Southwell and Yoshitake, claims 47, 50, 53, and 54 under 35 U.S.C. § 103 over Schetzina in view of Southwell and Yoshitake, claims 51 and 52 under 35 U.S.C. § 103 over Schetzina in view of Southwell, Yoshitake and Okazaki and claim 51 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement.1 OPINION The rejections under 35 U.S.C. § 103 are affirmed as to claims 1, 5, 7, 10, and 11 and reversed as to claims 47 and 50-54. The rejection of claim 51 under 35 U.S.C. § 112, first paragraph, written description requirement is affirmed. Rejection of claims 1, 5, 7, 10, and 11 under 35 U.S.C. § 103 The Appellant argues claims 1, 5, 7, 10, and 11 as a group (Br. 5-6). We therefore limit our discussion to one claim in that group, i.e., claim 1. 1 The rejection of claim 51 under 35 U.S.C. § 112, first paragraph, written description requirement (final rejection mailed Mar. 29, 2010, p. 2) is not included in the statement of the rejections in the Examiner’s Answer. However, in the Examiner’s Answer the Examiner states that “claim 51 has been rejected under 35 U.S.C. 112” (Ans. 8) and the Examiner responds to the Appellant’s arguments regarding the rejection of that claim under 35 U.S.C. § 112, first paragraph, written description requirement (Ans. 9- 10). Hence, the Examiner’s omission from the Examiner’s Answer of the rejection of claim 51 under 35 U.S.C. § 112, first paragraph, written description requirement appears to be inadvertent. Accordingly, we consider that rejection to be before us. Appeal 2011-007175 Application 11/478,873 4 Claims 5, 7, 10, and 11 stand or fall with that claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). Hsing Chen discloses two light emitting diode (LED) dice (324, Fig. 5; 524, Fig. 7) which correspond to the same LED die (24, Figs. 1A-1E) (¶¶ 0048, 0050). One of those LED dice (324) has thereon an encapsulant (360) that “provides good refractive index matching with the LED substrate 332, and is preferably also shaped to produce a selected lensing of the illumination output” (¶ 0048). The other of those LED dice (524) has thereon an optical film (560) that “can be an anti-reflection coating, a refractive index matching coating, a phosphor layer, or the like” (¶ 0050). Southwell discloses “an antireflective optical film which, when placed between an incident medium and a substrate, effects minimal reflectivity from the incident [medium/]substrate interface over a broad spectral band” (col. 1, ll. 64-67). The film has a refractive index profile having an initial refractive index as close as possible to the refractive index of the incident medium and a final refractive index substantially equal to the refractive index of the substrate (col. 1, l. 67 – col. 2, l. 4). “If the incident medium is not air, the initial refractive index should be made substantially equal to the refractive index of the medium” (col. 2, ll. 4-6). Yoshitake discloses that in a light-emitting device having a semiconductor multilayer structure with a refractive index of about 3.5 and a transparent resin plastic encapsulant with an index of refraction of about 1.5, there is a large refractive index difference between them such that the critical angle associated with total reflection of light traveling from the Appeal 2011-007175 Application 11/478,873 5 semiconductor multilayer structure to the transparent resin is small (¶ 0079). That critical angle can be made large and the light output efficiency can be increased, Yoshitake teaches, by interposing between the semiconductor multilayer structure and the encapsulant an antireflection film whose refractive index (1.5 to 3.5) is between their refractive indicies. See id. The Appellant argues that “adding an encapsulant to Hsing Chen’s structure of FIG. 7 may, in fact, degrade light output efficiency as the optical coating 560 may have a refractive index that is selected based on the refractive index of the LED die 524 and/or the atmosphere” (Br. 6). “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Hsing Chen’s disclosure that the optical film (560) can be an antireflection coating or a refractive index matching coating (¶ 0050), Southwell’s disclosure that an antireflective optical film having a refractive index profile such that one side of the film has a refractive index matching as closely as possible that of the incident medium and the other side of the film has a refractive index matching as closely as possible that of the substrate minimizes reflectivity from the incident medium/substrate interface over a broad spectral band (col. 1, l. 64 – col. 2, l. 7), and Yoshitake’s disclosure that an antireflection film having an index of refraction between that of a semiconductor multilayer structure and a transparent resin plastic encapsulant increases the light output efficiency (¶ 0079) would have led one of ordinary skill in the art, through no more Appeal 2011-007175 Application 11/478,873 6 than ordinary creativity, to place between Hsing Chen’s LED die (324) and encapsulant (360) Hsing Chen’s optical film (560) modified to have a refractive index profile as taught by Southwell to minimize reflectivity from the encapsulant/LED die interface and, as indicated by Yoshitake, increase the light output efficiency. Thus, we are not persuaded of reversible error in the rejection of claims 1, 5, 7, 10, and 11 under 35 U.S.C. § 103. Rejection of claims 47 and 50-54 under 35 U.S.C. § 103 Schetzina discloses a light emitting diode (120) comprising an antireflective coating (111) on a transparent ohmic electrode (102) (col. 20, ll. 9-21; Fig. 27) and teaches that “[a]lternatively, the LED 120 can be packaged as a lamp, in which case the epoxy-based material of the lamp serves as both a focusing lens and an antireflecting coating having index of refraction of 1.5-1.6” (col. 20, ll. 21-24). The Appellant argues that “according to the suggested teachings of Schetzina the encapsulant would be used to replace the antireflective coating, not envelop it” (Br. 7). The Examiner argues (Ans. 11-12): It is possible to combine two functions into a single layer but the performance will be compromised. To improve the performance, typically a two-layer structure is used with each layer optimized by its individual function: i.e. encapsulation and anti-reflection. In this competitive market, the performance is always one of the most important factors in winning the market. Thus, recent technologies are increasing the complexity in improving the performance. Thus it would have been obvious to one of ordinary skill in the art to have both an Appeal 2011-007175 Application 11/478,873 7 antireflective layer and an encapsulant layer [so] that the performance can be improved. The Examiner provides no evidence in support of that argument. The Examiner’s mere speculation is not a sufficient basis for a prima facie case of obviousness. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967); In re Sporck, 301 F.2d 686, 690 (CCPA 1962). Accordingly, we reverse the rejection of claims 47 and 50-54 under 35 U.S.C. § 103. Rejection of claim 51 under 35 U.S.C. § 112, first paragraph For an applicant to comply with the 35 U.S.C. § 112, first paragraph, written description requirement, the applicant’s specification must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Carnegie Mellon University v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008), quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The Appellant’s claim 51, which depends from claim 47, requires that “the light extraction layer comprises platinum, nickel and/or titanium/gold.” The Appellant’s original Specification states that “[t]he light-emitting device 700 further comprises a light extraction layer 725 that is disposed on the p-type layer 720 and may comprise a thin, at least partially transparent, ohmic contact, such as platinum” (Spec. 11:29-32). Thus, the original Specification does not appear to show possession of a light extraction layer comprising nickel and/or titanium/gold. Appeal 2011-007175 Application 11/478,873 8 The Appellant points out that the Appellant’s original Specification incorporates by reference US 5,767,581 (Spec. 3:3-4) which discloses a p-type light-transmitting ohmic electrode (15) that “may be formed of any suitable metallic material” (col. 5, ll. 43-44) wherein the metallic material “may comprise one or more metals selected from gold, nickel, platinum, aluminum, tin, indium, chromium, and titanium” (col. 5, ll. 45-47), preferably “at least two metals selected from chromium, nickel, gold, titanium and platinum” (col. 5, ll. 47-49) and particularly preferably gold and nickel (col. 5, ll. 49-50) (Br. 3-4). The Appellant argues that “U. S. Patent No. 5,767,581 describes the p-electrode as a light-transmitting ohmic electrode. Therefore, the p-electrode described in U. S. Patent No. 5,767,581 functions as a light extraction layer” (Br. 4). The Appellant has not established that the Appellant’s original Specification would have indicated to one of ordinary skill in the art that the p-type light-transmitting ohmic electrode (15) in the ‘581 patent corresponds to the Appellant’s light extraction layer (725) disposed on a p-type layer (720) (Spec. 11:29-31; Fig. 7). Thus, the Appellant has not shown reversible error in the Examiner’s determination that the Appellant’s original disclosure fails to provide written descriptive support for the subject matter recited in claim 51. We therefore affirm the rejection of claim 51 under 35 U.S.C. § 112, first paragraph, written description requirement. DECISION/ORDER The rejection of claims 1, 5, 7, 10, and 11 under 35 U.S.C. § 103 over Hsing Chen in view of Southwell and Yoshitake is affirmed. The rejections Appeal 2011-007175 Application 11/478,873 9 under 35 U.S.C. § 103 of claims 47, 50, 53, and 54 over Schetzina in view of Southwell and Yoshitake and claims 51 and 52 over Schetzina in view of Southwell, Yoshitake and Okazaki are reversed. The rejection of claim 51 under 35 U.S.C. § 112, first paragraph, written description requirement is affirmed. It is ordered that the Examiner’s decision is affirmed-in-part. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART sld Appeal 2011-007175 Application 11/478,873 1 NAGUMO, Administrative Patent Judge, dissenting-in-part and concurring- in-part. I respectfully dissent from the reversal of the obviousness rejections of claim 47 and its dependent claims. In my view, the evidence found by the Examiner establishes both the suggestion or motivation and the reasonable expectation of success necessary to underpin the legal conclusion of obviousness. The prior art shows that it was known to provide graded-index layers to reduce the amount of internal reflection at boundaries between materials having significantly different refractive indexes. Schetzina’s “alternative teaching” of using the epoxy layer as both a lens and an antireflection layer would not have distracted the person having ordinary skill in the art from the mismatch between the high-index of the light extraction layer (n ≥ 2.62) and the epoxy layer (n = 1.6). Yoshitake provides the teaching that such a refractive index mismatch can be ameliorated by interposing an AR film with an intermediate refractive index. Southwell provides the teaching that such a film is advantageously graded. In my judgment, the routineer would not have read the alternative suggested by Schetzina as an exclusive alternative. On the present record, I would affirm these rejections. I concur in the rejection for lack of written description. I write separately to emphasize the absence of a clear indication in the record that the particular species, especially the titanium/gold, which appears to be an alloy, rather than “titanium or gold,” as well as the combinations indicated 2 Based on the two layer high-low stack of ZnS (n = 2.6) and MgF2 (n = 1.35) disclosed as an antireflection layer (Schetzina col. 20, ll. 15-21), the extraction layer, at least in some instances, has an index higher than 2.6. Appeal 2011-007175 Application 11/478,873 2 by the “and/or” conjunction, were communicated as embodiments of Appellant’s discovery. mn Copy with citationCopy as parenthetical citation