Ex Parte Tyagi et alDownload PDFPatent Trial and Appeal BoardMay 10, 201712908478 (P.T.A.B. May. 10, 2017) Copy Citation 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. 2 Appeal 2016-005335 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. 3 Appeal 2016-005335 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.). 4 Appeal 2016-005335 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, 5 Appeal 2016-005335 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 6 Appeal 2016-005335 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 7 Copy with citationCopy as parenthetical citation