Ex Parte Negley

Patent Trial and Appeal Board

Nov 15, 2013

11478873 (P.T.A.B. Nov. 15, 2013)

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

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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
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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.
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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
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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
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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
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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.
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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
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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

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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.
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by the “and/or” conjunction, were communicated as embodiments of
Appellant’s discovery.

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