Ex Parte Tyagi et al

Patent Trial and Appeal Board

May 10, 2017

12908478 (P.T.A.B. May. 10, 2017)

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.
30794.340-US-Ul 3968
EXAMINER
FORDE, DELMA ROSA
ART UNIT PAPER NUMBER
2828
MAIL DATE DELIVERY MODE
12/908,478 10/20/2010
22462 7590 05/10/2017
GATES & COOPER LLP (General)
HOWARD HUGHES CENTER
6701 CENTER DRIVE WEST, SUITE 1050
LOS ANGELES, CA 90045
Anurag Tyagi
05/10/2017 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 ANURAG TYAGI, ROBERT M. FARRELL,
CHIA-YEN HUANG, PO SHAN HSU, DANIEL A. HAEGER,
KATHRYN M. KELCHNER, HIROAKI OHTA,
SHUJI NAKAMURA, STEVEN P. DENBAARS, and
JAMES S. SPECK
Appeal 2016-005335
Application 12/908,478
Technology Center 2800
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1—9 and 11—25 under 35 U.S.C. § 103(a) as
obvious over the combination of Yoshizumi et al. (Yoshizumi et al.,
Continuous-Wave Operation of520 nm Green InGaN-Based Laser Diodes
on Semi-Polar {2021} GaN Substrates, Applied Physics Express, 092101-1—
1 The Real Party in Interest is stated to be The Regents of the University of
California. (App. Br. 1).
Appeal 2016-005335
Application 12/908,478
092101-3, 2009) (“Yoshizumi”) and Scherer et al. (US 2008/0002749 Al,
published Jan. 3, 2008) (“Scherer”). We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is representative of the claimed invention:
1. An optoelectronic device, comprising:
a semipolar Ill-nitride based heterostructure device
employing a cavity with one or more etched facets, which
provide an ability to arbitrarily control the cavity's orientation
and dimensions, wherein the etched facets are chemically-
assisted reactive ion etched (RIE) facets, and the device has a
threshold current density of no more than 23 kA/cm2 for the
etched facets when uncoated.
(Emphasis added).
Appellants present arguments that mainly focus on independent claim
1 (see App. Br., Reply Br. generally). Appellants separately argue
dependent claims 20 and 21 as a group and dependent claims 22 and 24 as
another group (App. Br. 13—14).
ANALYSIS
Claims 1—9, 11—19, 23, and 25
We have reviewed each of Appellants’ arguments for patentability.
Having done so, we determine that a preponderance of the evidence supports
the Examiner’s determination that the claimed subject matter of
representative claim 1 is unpatentable within the meaning of § 103. Thus,
we sustain the Examiner’s rejection for essentially those reasons expressed
in the Final Action and Answer, including the Examiner’s Response to
Argument section, and we add the following primarily for emphasis.
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Application 12/908,478
Appellants’ main argument is that Scherer, which the Examiner finds
to disclose facets formed via reactive ion etching,2 does not provide an
enabling disclosure for reactive ion etching (Appeal Br. 7—9; Reply Br. 2—6).
In view of this, Appellants further argue there would have been a lack of a
reasonable expectation of success and there would not have been a reason to
combine Yoshizumi and Scherer3 (Appeal Br. 10—12). These arguments do
not identify a reversible error in the Examiner’s rejection.
A reference is presumed to be enabling. In re Sasse, 629 F.2d 675,
681 (CCPA 1980) (it is applicant's burden to demonstrate non-enablement of
a reference); discussed further in In re Antor Media Corp., 689 F.3d 1282,
1288 (Fed. Cir. 2012) (“we now hold that a prior art printed publication cited
by an examiner is presumptively enabling”).
Here, Appellants argue Scherer merely names the technique of
reactive ion etching and discloses that technique for infrared-emitting laser
diodes, not green-emitting semipolar Ill-nitride laser diodes, as in
Yoshizumi (Appeal Br. 8—9). This argument is insufficient to establish one
2 Final Act. 4.
3 As discussed herein, Appellants’ arguments do not identify a reversible
error in the Examiner’s rejection. Furthermore, although the Examiner finds
Scherer discloses reactive ion etching, and therefore the process for
producing the facets recited in claim 1, we note the limitation “wherein the
etched facets are chemically-assisted reactive ion etched (RIE) facets” of
claim 1 is a product-by-process limitation. It has been well established that,
when a product recited in product-by-process format reasonably appears to
be the same as or obvious from a product of the prior art, the burden is on
applicant to show that the prior art product is in fact different from the
claimed product, even though the products may be made by different
processes. In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985). Appellants’
arguments do not appear to demonstrate that the product of Yoshizumi, even
if not modified by Scherer, is in fact different from the claimed product.
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Application 12/908,478
of ordinary skill in the art would not have been able to use the reactive ion
etching technique of Scherer for the device of Yoshizumi without undue
experimentation. While Appellants contend this art is unpredictable and the
amount of experimentation would have been great, they do not provide
evidence or technical reasoning to support this assertion. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (attorney’s arguments in a brief cannot take
the place of evidence). Therefore, Appellants have not met their burden of
demonstrating the disclosure of Scherer is non-enabling for reactive ion
etching.
In addition, Appellants assert that the infrared laser diodes of Scherer
would be less sensitive to surface roughness produced by the etching process
of Scherer than the semipolar Ill-nitride laser diodes of Yoshizumi, which
emit green light at longer wavelengths (id. at 9). To the extent Appellants
argue this to support their contention there would have been no reason to
combine Yoshizumi and Scherer, we note “the test for combining references
is not what the individual references themselves suggest but rather what the
combination of disclosures taken as a whole would suggest to one of
ordinary skill in the art.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971).
Yoshizumi discloses a green-emitting InGaN-based laser diode
including cavities and mirror facets formed by cleaving (Yoshizumi 092101-
1). The Examiner finds that although Yoshizumi does not disclose reactive
ion etching, Scherer discloses etching techniques, such as chemically-
assisted reactive ion etching, that are not limited to certain types of devices
and are beneficial to laser diodes in general (Ans. 3). The Examiner further
finds Scherer discloses benefits for the precision etching techniques (id.).
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Application 12/908,478
Specifically, Scherer discloses reactive ion etching is a precision etching
technique for producing semiconductor lasers (i.e., laser diodes) and such
“precision etching techniques allows [sic] precise control over the
dimension, angle, and orientation, of etched features, and offers extremely
smooth surfaces that reduce optical loss in the resulting device” (Scherer
abstract and 3, 12, 89—90). Therefore, the disclosure of Scherer provides
a reason to modify Yoshizumi in view of Scherer.
With regard to Appellants’ arguments regarding surface roughness
and differences between Yoshizumi and Scherer, Scherer discloses its
process produces “extremely smooth surfaces” (Scherer abstract) and results
in lasers with “low surface roughness” (Scherer || 3, 72). Moreover,
Scherer discloses that although the semiconductor lasers of its embodiments
have an emission wavelength in the range of 800—1650 nm, Scherer’s
technique is not limited to semiconductor lasers of “any specific light
emission wavelength” (Scherer | 64). In addition, Scherer discusses the use
of GaN materials, such as InGaN (Scherer || 57, 80). Therefore,
Appellants’ arguments are not persuasive to demonstrate that the Examiner’s
articulated reason to modify Yoshizumi in view of Scherer constitutes
reversible error.
Appellants further assert Yoshizumi and Scherer do not disclose a
laser diode having the “threshold current density of no more than 23 kA/cm2
for the etched facets when uncoated,” as recited in claim 1 (Apeal Br. 9).
Specifically, Appellants argue that although the Examiner finds Yoshizumi
discloses a threshold current density of 7.9 kA/cm2, this value is for the
cleaved facets of Yoshizumi, not facets formed by chemically-assisted
reactive ion etching (Id.). The Examiner responds by finding Yoshizumi,
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Application 12/908,478
when modified in view of Scherer, would provide a threshold current density
of no more than 23 kA/cm2, citing the current density disclosed by
Yoshizumi (Ans. 6—7). Appellants do not direct us to a reversible error in
the Examiner’s finding.
Thus, a preponderance of the evidence supports the Examiner’s
determination that claim 1 would have been obvious over the combination of
Yoshizumi in view of Scherer. Accordingly, we affirm the Examiner’s
rejection of claim 1. Appellants do not argue independent claim 11 or
dependent claims 2—9, 12—19, 23, or 25 separately from claim 1 (Appeal Br.
7-13, 14).
Claims 20 and 21
Claims 20 and 21 respectively depend from independent claims 11
and 1 and further recite “wherein the semipolar Ill-nitride based
heterostructure device has no cladding layers containing AlGaN.”
Appellants assert Yoshizumi discloses AlGaN-cladding-free LDs but
discloses they were insufficient to confine light in longer wavelength regions
(Appeal Br. 13). In view of this, Yoshizumi discloses the use of InAlGaN
cladding but Appellants argue InAlGaN includes AlGaN and therefore does
not disclose the cladding layers of claims 20 and 21 {Id.).
Appellants’ arguments are unpersuasive. Although Yoshizumi
discloses AlGaN-cladding-free LDs, such as a GaN-cladding layer, were
insufficient to confine light in longer wavelength regions, Yoshizumi
discloses InAlGaN as an alternative cladding material (Yoshizumi 092101-
1-0921101-2). Thus, Yoshizumi contrasts AlGaN and InAlGaN as separate,
distinct materials. Appellants’ argument that InAlGaN contains aluminum,
gallium, and nitrogen is not sufficient to demonstrate that InAlGaN is the
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Application 12/908,478
same material as AlGaN and Yoshizumi does not disclose a device with no
cladding layers containing AlGaN, as recited in claims 20 and 21.
For these reasons, a preponderance of the evidence supports the
Examiner’s obviousness determination for claims 20 and 21.
Claims 22 and 24
Claims 22 and 24 respectively depend from independent claims 1 and
11 and further recite, among other things, waveguide layers that “each have
a thickness of at least 50 nanometers.” Appellants contend Yoshizumi does
not disclose a waveguide layer having the thickness recited in claims 22 and
24 (Appeal Br. 14).
Appellants’ arguments are unpersuasive because they are not directed
to the Examiner’s rejection. The Examiner finds Yoshizumi does not
disclose waveguide layers having the thickness recited in claims 22 and 24
but concludes it would have been obvious to use waveguide layers with such
a thickness as a matter of discovering the optimum or workable ranges for
the thickness of a waveguide via routine experimentation (Final Act. 7—9).
In view of the above, a preponderance of the evidence supports the
Examiner’s obviousness determination for claims 22 and 24.
DECISION
The Examiner’s § 103 rejection of claims 1—9 and 11—25 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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