Ex Parte Cho et al

Patent Trial and Appeal Board

Aug 28, 2013

10898204 (P.T.A.B. Aug. 28, 2013)

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.
10/898,204 07/26/2004 Dong Hyun Cho 2336-313 4935
22429 7590 08/28/2013
LOWE HAUPTMAN & HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
EXAMINER
SEFER, AHMED N
ART UNIT PAPER NUMBER
2893
MAIL DATE DELIVERY MODE
08/28/2013 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 DONG HYUN CHO, MASAYOSHI KOIKE, YUJI IMAI MIN
HO KIM, BANG WON OH and HUN JOO HAHM
____________

Appeal 2011-000116
Application 10/898,204
Technology Center 2800
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM and
ANDREW J. DILLON, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000116
Application 10/898,204

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STATEMENT OF THE CASE
Appellants are appealing claims 2, 3, 5-9, 11-22 and 23. Appeal Brief
4. We have jurisdiction under 35 U.S.C. § 6(b) (2012).
We affirm-in-part.

Introduction
The invention is directed to nitride semiconductor light-emitting
device having a polycrystalline substrate wherein the polycrystalline
substrate has irregularities in a predetermined crystal face. Appeal Brief 6.

Illustrative Claim
3. A nitride semiconductor light-emitting device comprising:

a polycrystalline substrate made of AIN;

a buffer layer formed on the AIN substrate;

a plurality of dielectric patterns partially covering the buffer layer and
having a stripe or lattice structure;

a lateral epitaxially overgrown-nitride semiconductor layer which extends
between the dielectric patterns and is in direct contact with both the buffer
layer and the dielectric patterns;

a first conductive nitride semiconductor layer on the nitride semiconductor
layer;

an active layer on the first conductive nitride semiconductor layer;

and a second conductive nitride semiconductor layer formed on the active
layer,

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Application 10/898,204

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wherein the AIN polycrystalline substrate has an upper surface having
irregularities in a predetermined crystal face direction formed thereon.

Rejections on Appeal
Claims 2, 3, 5 and 7-9 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Fujimoto (Japan Patent Application Publication Number
JP409027636A; published January 28, 1997), Emerson (U.S. Patent
Application Publication Number 2003/0209705 A1; published November
13, 2003), and Uemoto (Japan Patent Application Publication Number
JP05036602A; published February 12, 1993). Answer 3-5.
Claim 6 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Fujimoto, Emerson, Uemoto, and Shibata (U.S. Patent
Number 6,841,808 B2; issued January 11, 2005). Answer 5.
Claim 23 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Fujimoto, Emerson, and Uemoto. Answer 5-6.

Issue
Do Fujimoto, Emerson and Uemoto, either alone or in combination,
teach or suggest a semiconductor device having a polycrystalline substrate
with irregularities formed in a certain crystal face direction?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We concur with the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
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forth by the Examiner in the Answer in response to Appellants’ Appeal
Brief. However, we highlight and address specific findings and arguments
for emphasis as follows.
Appellants submit that it would not in fact be obvious to
arrive at the claimed invention via this combination in that
neither of the references disclose nor suggest the claimed
irregularities having a certain crystal face formed on the
upper surface of an AIN polycrystalline AIN substrate to
grow a superior nitride single crystal thereon.

Appeal Brief 8.
Appellants submit that irregularities formed on a polycrystalline AlN
substrate have irregular shapes and sizes depending upon direction and grain
size. Id. However, Appellants contend that although Uemoto’s trenches
(11) might be irregularly formed on the upper surface (1a) Uemoto requires
the trenches to be covered, via crystal growth, with another layer of AlN and
therefore the buffer layer cannot be formed on the trenched upper surface of
AlN because it would interfere with the next layer of AlN. Id.

[I]n accordance with the Uemoto teachings the claimed
buffer layer would have to be formed on the second AIN
layer which buries the surface la in which the trenches
(irregularities) are formed. Under these conditions, the
upper surface of the AIN could not meet the claimed
requirements even if the surface morphology was
“remarkably excellent.” Indeed, the very assertion of the
end result of the Uemoto is “remarkably excellent” renders
it difficult, if not impossible to ignore the fact that a
second layer of AIN must be provided to cover the
trenched surface. That is to say, if the covering, non-
trenched layer is not provided on the trenched AIN
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surface, then an essential feature of the Uemoto reference
would be ignored.
Id. at 8-9.
We do not find Appellants’ arguments to be persuasive. Uemoto
discloses in its Constitution, “In crystal whose main component is SiC of
hexagonal or rhombohedral crystal, a (0001) face substrate 1a is used. After
the trenches 11 are formed on the substrate 1a, the same crystal as the
substrate 1a is grown.” Accordingly, Uemoto forms the trenches (or the
irregularities) on the surface of the substrate and it is this teaching the
Examiner relies upon. See Answer 4. Any additional layers added onto
Uemoto’s substrate do not affect the relevance of Uemoto’s disclosure of a
substrate having surface irregularities.
Appellants further argue another shortcoming of the combination of
Fujimoto, Emerson, and Uemoto, in light of the teachings of Uemoto, is
[T]he buffer layer of GaN in Fujimoto could not be
formed on an upper surface of an AIN substrate having
irregularities, in that another AIN layer is required to be
formed over the irregularities and would, unless the
second AIN layer were in some obscure way to be the
claimed buffer layer, prevent the claimed arrangement
from being realized.

Appeal Brief 10.
We do not find Appellants’ argument to be persuasive for the reasons
stated above. Uemoto was relied upon for its teaching in association with
forming irregularities on the surface of a substrate (Answer 4) and therefore
we find Uemto’s teachings are not compromised by additional layers that
might or may not be formed on the substrate. Therefore we sustain the
Examiner’s rejection of independent claim 3.
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Appellants also argue the Uemoto reference does not disclose a
substrate comprising of (GaIn)AlN as required in claim 2. Appeal Brief 10.
“The translation of the Uemoto reference relied upon is either incorrect or
has been misinterpreted. Paragraph [0014] does not disclose the use of GaIn,
it discloses ‘AIN, GaN’ as being especially suitable materials.” Id.
The Examiner asserts Appellants’ argument is not persuasive because:
Applicant discloses that the A1N substrate may comprise
Ga and/or In, resulting in (GaIn)A1N (page 9, line 15-17
of Applicant's specification). The resulting (GaIn)A1N can
be interpreted as having a stoichiometric parameter range
(e.g. (Ga1-yIny)xAl1-xN) which would yield GaA1N (at x=0;
y=0). Therefore, based on the machine translation Uemoto
at least teaches GaA1N which is [sic] meets the
requirement of claim 2.

Answer 8.
We do not agree with the Examiner’s assertion. We find the
Examiner’s manipulation of the stoichiometric parameter range to be
impermissible hindsight. “It is impermissible to use the claimed invention
as an instruction manual or ‘template’ to piece together the teachings of the
prior art so that the claimed invention is rendered obvious.” In re Fritch, 972
F.2d 1260, 1266 (Fed. Cir. 1992) (quoting In re Gorman, 933 F.2d 982, 987
(Fed. Cir. 1991)). We find Appellants’ argument to be persuasive.
Therefore we do not sustain the Examiner’s rejection of claim 2.
Appellants argue that claim 6 is allowable because:
It is submitted that the position that it would have been
obvious to one skilled in the art at the time the invention
was made to incorporate buffer layer having an upper
surface having irregularities so as to improve crystallinity
of a compound semiconductor layer as taught by Shibata is
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possible only with a full working knowledge of the
claimed subject matter. That is to say, all of the rejections
are contaminated with the shortcoming that they are based
on what is not disclosed in a reference and that this
absence or gap, which could only be perceived given a
working knowledge of the claims, can be filled with the
teachings of another.

Appeal Brief 11.
The Examiner has provided motivation for modifying the combination
of the references incorporating the teachings of Shibata. See Answer 5.
Further, Appellants argue the short comings of Fujimoto and Emerson
without addressing the combination as a whole and that would include
Uemoto. See Appeal Brief 11. Therefore we do not find Appellants’
arguments to be persuasive and we sustain the Examiner’s rejection of
claim 6.
Appellants argue claim 23 is allowable because the requirement that
the patterns are directly on the surface of the irregular AlN substrate “is
dashed if the teachings of Uemoto are taken into full consideration.” Appeal
Brief 11. We do not find Appellants arguments to be persuasive because we
did not find that possible additional layers formed on the Uemoto’s substrate
diminishes Uemoto’s teachings when combined with the other references.
Therefore we sustain the Examiner’s rejection of claim 23. We also sustain
the Examiner’s rejection of claims 5, 7-9, and 11-22 not separately argued.

DECISION
The Examiner’s 35 U.S.C. §103 rejection of claim 2 is reversed.
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The Examiner’s 35 U.S.C. §103 rejections of claims 3, 5-9, 11-22 and
23 are sustained.
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). See 37
C.F.R. § 41.50(f).

AFFIRMED-IN-PART

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