EPISTAR CORPORATIONDownload PDFPatent Trials and Appeals BoardMay 15, 20202019004462 (P.T.A.B. May. 15, 2020) 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. 14/847,169 09/08/2015 Yu-Chen YANG P8418US00 7417 30671 7590 05/15/2020 DITTHAVONG & STEINER, P.C. Keth Ditthavong 44 Canal Center Plaza Suite 305 Alexandria, VA 22314 EXAMINER GAUTHIER, STEVEN B ART UNIT PAPER NUMBER 2893 NOTIFICATION DATE DELIVERY MODE 05/15/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docket@dcpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YU-CHEN YANG ____________ Appeal 2019-004462 Application 14/847,169 Technology Center 2800 ____________ Before N. WHITNEY WILSON, JEFFREY R. SNAY, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests our review under 35 U.S.C. § 134(a) of the Examiner’s decision to finally reject claims 8–13 and 21.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Epistar Corporation as the real party in interest. Appeal Brief filed October 23, 2018 (“Appeal Br.”) at 1. 2 Final Office Action entered July 25, 2018 (“Final Act.”) at 1. Appeal 2019-004462 Application 14/847,169 2 CLAIMED SUBJECT MATTER Appellant claims a light-emitting die. Appeal Br. 1–2. Claim 8, the sole pending independent claim, illustrates the subject matter on appeal, and reads as follows: 8. A light-emitting die, comprising: a transparent substrate; and a light-emitting stack formed on a surface of the transparent substrate, wherein the transparent substrate has a substrate surface area A (mil2) and a substrate thickness Tsub (μm) that satisfy the following relationship: Tsub ≥ 0.1048 x A + 115.82, wherein Tsub represents a numerical part of the substrate thickness by taking “μm” as unit of substrate thickness, and A represents a numerical part of the substrate surface area by taking “mil2” as unit of substrate surface area. Claims Appendix filed November 30, 2018, at 3 (emphasis added). REJECTIONS The Examiner maintains the following rejections in the Examiner’s Answer entered March 20, 2019 (“Ans.”): I. Claims 8, 9, 11–13, and 21 under 35 U.S.C. § 103 as unpatentable over Gee3 in view of Wierer,4 Slocum,5 and Yang;6 and 3 Gee et al., US 6,969,874 B1, issued November 29, 2005. 4 Wierer, Jr. et al., US 6,514,782 B1, issued February 4, 2003. 5 Amanda Slocum, A Technology Assessment of Light Emitting Diode (LED) Solid-State Lighting for General Illumination, Working Paper #05-04, U.S. Environmental Protection Agency (2005). 6 Hua Yang et al., The Effects of Sapphire Substrates Processes to the LED Efficiency, 6841 Proc. Of SPIE, 68410M (2007). Appeal 2019-004462 Application 14/847,169 3 II. Claim 10 under 35 U.S.C. § 103 as unpatentable over Gee in view of Wierer, Slocum, and Lin.7 FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions, we affirm the Examiner’s rejections of claims 8–13 and 21 under 35 U.S.C. § 103, for the reasons set forth in the Final Action, the Answer, and below. We review appealed rejections for reversible error based on the arguments and evidence Appellant provides for each issue Appellant identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). Appellant presents arguments directed to independent claim 8 only, and “does not separately argue the patentability of any dependent claim.” Appeal Br. 3. We, therefore, decide the present appeal based on independent claim 8 alone, and the remaining claims stand or fall with claim 8. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Gee discloses a light-emitting die comprising a transparent substrate and a light-emitting stack formed on a surface of the substrate. Final Act. 3 (citing Gee col. 3, ll. 47–55; Fig. 3). The Examiner finds that Gee discloses that the transparent substrate has a thickness of 100 7 Lin et al., US 2014/0124734 A1, published May 8, 2014. Appeal 2019-004462 Application 14/847,169 4 to 1000 µm, but “is silent as to the substrate surface area of the light- emitting die.” Final Act. 3 (citing Gee col. 4, ll. 19–20). The Examiner finds, however, and it is apparent, that “every transparent substrate for a light-emitting die has a non-zero substrate surface area.” Final Act. 3. The Examiner finds that Gee fails to explicitly disclose that the transparent substrate has a substrate thickness Tsub (μm) and a substrate surface area A (mil2) that satisfy the following relationship recited in claim 8: Tsub ≥ 0.1048 x A + 115.82. Id. The Examiner finds, however, that Wierer discloses a light-emitting die having a substrate surface area greater than 160,000 μm2 (about 248 mil2), and Slocum teaches that typical LEDs are about 0.25 mm2 (about 387 mil2), while modern high-brightness LEDs are up to 1 mm2 (about 1,550 mil2). Final Act. 4 (citing Slocum p. 24); see also Wierer col. 3, ll. 6–8. The Examiner determines that “it would have been an obvious matter of design choice” to one of ordinary skill in the art before the effective filing date of the present application to choose a substrate surface area of 248 mil2 as disclosed in Wierer, or a substrate surface area of 387 mil2 or 1,550 mil2 as disclosed in Slocum, for Gee’s light emitting die, depending on the amount of light to be produced and the amount of power to be consumed for a desired application. Final Act. 4. The Examiner determines that once such a substrate surface area is chosen, Gee “teaches a device having a substrate thickness within the scope of Applicant’s claimed relationship.” Id. Specifically, the Examiner determines that according to the relationship recited in claim 8, a substrate surface area of 248 mil2 corresponds to a substrate thickness greater than or equal to about 142 μm, a substrate surface area of 387 mil2 corresponds to a substrate thickness greater than or equal to Appeal 2019-004462 Application 14/847,169 5 about 156 μm, and a substrate surface area of 1,550 mil2 corresponds to a substrate thickness greater than or equal to about 278 μm, and each of these thickness is within the substrate thickness range of 100 to 1000 µm taught by Gee. Id. The Examiner further relies on Yang’s disclosure of a light-emitting diode comprising a conductive n-type later, an active layer, and a p-type layer (light-emitting stack) formed on the surface of a sapphire substrate (which is transparent). Yang p. 2. The Examiner finds that Yang discloses that increasing the thickness of the substrate up to a certain point improves the light extraction efficiency of the light-emitting diode, after which further increases in substrate thickness yield negligible gains in light extraction efficiency. Final Act. 4 (citing Yang Abst.; Fig. 2); see also Yang p. 3. In view of this disclosure in Yang, the Examiner determines that it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application “to form the substrate thickness into Applicant’s claimed relationship, in order to maximize light extraction efficiency, while simultaneously limiting cost.” Final Act. 4. Appellant argues that none of the applied prior art references, considered individually or in combination, disclose, or would have suggested, that the relationship between the thickness and surface area of a substrate for a light-emitting die is a result-effective variable that impacts the light-extraction efficiency of the light-emitting die. Appeal Br. 4–8. Appellant argues that the applied prior art references, therefore, would not have led one of ordinary skill in the art “to optimize the thickness of the substrate and its surface area motivated by a reasonable expectation of achieving any recognizable objective, let alone to optimize the light- Appeal 2019-004462 Application 14/847,169 6 extraction efficiency of the LED device.” Id. at 8. Appellant’s arguments, however, do not persuasively address the rejection as presented by the Examiner, and the arguments, therefore, do not identify reversible error in the Examiner’s rejection. Specifically, Appellant does not dispute the Examiner’s factual findings related to the disclosures of any of Gee, Wierer, Slocum, or Yang. Compare Final Act. 3–4, with Appeal Br. 4–8. Nor does Appellant dispute the Examiner’s determination that it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to design the substrate of Gee’s light emitting die to have a surface area as disclosed in Wierer or Slocum, which would result in Gee’s light emitting die having a substrate thickness that satisfies the relationship recited in claim 8, and is within the thickness range of 100 to 1000 µm as disclosed in Gee. Compare Final Act. 4, with Appeal Br. 4–8; see also PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (concept of inherency, when applied to obviousness, is present “when the limitation at issue is the ‘natural result’ of the combination of prior art elements”); In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (explaining that it has long been settled that in the context of obviousness, the “mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not distinguish a claim drawn to those things from the prior art.”). Because Appellant does not challenge the Examiner’s factual findings, reasoning, or legal determination of obviousness, Appellant’s arguments, including Appellant’s assertion that the applied prior art references do not disclose, and would not have suggested, that the relationship between the thickness and surface area of a substrate for a light- Appeal 2019-004462 Application 14/847,169 7 emitting die is a result-effective variable that impacts the light-extraction efficiency of the light-emitting die, do not identify reversible error in the Examiner’s rejection. Appellant argues that the Examiner ignores the “representations and objective evidence of non-obviousness” provided in Appellant’s Specification. Appeal Br. 8–9 (citing Spec. ¶¶ 19–24; Figs. 2–5). Appellant argues that the “Examiner never provides a cogent, factually supported reason to contradict Appellant’s position that the claimed relationship yields unexpected results.” Appeal Br. 9–10. Contrary to Appellant’s arguments, however, the Examiner addresses the relied-upon disclosures in Appellant’s Specification in the Final Action, and provides a reasoned explanation as to why the disclosures are insufficient to demonstrate unexpected results, which Appellant does not challenge. Compare Final Act. 9, with Appeal Br. 3–10. More specifically, the Examiner determines that the cited disclosures of Appellant’s Specification “do[] not actually show any unexpected results,” but merely disclose that when substrate thickness is increased to the saturated thickness, the light extraction efficiency of a light-emitting die reaches its maximum for all substrate surface areas, and increasing the substrate thickness beyond the saturated thickness does not further increase the light extraction efficiency. Final Act. 8–9. The Examiner determines that this effect is illustrated in Appellant’s Figure 4, which shows “no change in the light extraction for any area.” Final Act. 9. The Examiner determines that this showing in the Specification does not “provide an unexpected improvement to the device as required (MPEP 2145).” Id. Furthermore, the Examiner provides objective evidence—explicit Appeal 2019-004462 Application 14/847,169 8 disclosures in Yang—as to why the relationship recited in claim 8 yields results that would have been expected by one of ordinary skill in the art, which Appellant does not challenge. Compare Final Act. 8–9 with Appeal Br. 3–11. As discussed above, the Examiner finds that Yang discloses that increasing the thickness of a transparent substrate in a light-emitting diode up to a certain point improves the light extraction efficiency of the light- emitting diode, after which further increases in substrate thickness yield negligible gains in light extraction efficiency. Final Act. 4 (citing Yang Abst.; Fig. 2); see also Yang p. 3. Yang also discloses that increasing the surface roughness of a transparent substrate for a light-emitting diode increases the external quantum efficiency of the light-emitting diode, and as the Examiner finds, increasing the surface roughness of the substrate increases its surface area. Yang pp. 4–5; Fig. 6; Final Act. 9. The Examiner finds that this disclosure in Yang would have suggested a relationship between substrate surface area and light extraction efficiency. Final Act. 9. The Examiner finds that Yang’s disclosure that increasing the thickness of a substrate improves light extraction efficiency would have led one of ordinary skill in the art to determine the thickness of a substrate having a particular area that would maximize light extraction efficiency, leading to identification of a substrate thickness satisfying the relationship recited in claim 8. The Examiner determines that identifying such thickness, therefore, would be the expected result of following the suggestions stemming from Yang’s disclosures. Final Act. 8–9. Appellant does not dispute this determination. Appeal Br. 4–11. We further point out that the burden of analyzing and explaining Specification disclosures to establish unexpected results rests with Appeal 2019-004462 Application 14/847,169 9 Appellant. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing unexpected results rests on he who asserts them”). To meet this burden, Appellant must provide objective evidence demonstrating that the claimed subject matter imparts results that would have been unexpected by one of ordinary skill in the art before the effective filing date of the present application relative to the closest prior art, Yang. On this appeal record, Appellant does not meet this burden because Appellant does not direct us to any persuasive evidence or averment evincing that the relied-upon disclosures provided in the Specification actually would have been unexpected by one of ordinary skill in the art before the effective filing date of the present application in view of Yang’s disclosure that that increasing the thickness of a transparent substrate in a light-emitting diode point improves the light-emitting diode’s light extraction efficiency, and increasing the surface roughness of the transparent substrate (substrate surface area) also increases the light-emitting diode’s external quantum efficiency. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (“Geisler made no such assertion [that results were unexpected] in his application. Nor did Geisler submit any such statement through other evidentiary submissions, such as an affidavit or declaration under Rule 132 . . . . Instead, the only reference to unexpected results was a statement by Geisler’s counsel . . . that Geisler’s results were ‘surprising.’”). Therefore, considering the totality of the evidence relied-upon in this appeal, a preponderance of the evidence weighs in favor of the Examiner’s conclusion of obviousness. We, accordingly, sustain the Examiner’s rejections of claims 8–13 and 21 under 35 U.S.C. § 103. Appeal 2019-004462 Application 14/847,169 10 CONCLUSION Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8, 9, 11–13, 21 103 Gee, Wierer, Slocum, Yang 8, 9, 11–13, 21 10 103 Gee, Wierer, Slocum, Lin 10 Overall Outcome 8–13, 21 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 Copy with citationCopy as parenthetical citation