NICHIA CORPORATION

Patent Trials and Appeals Board

Mar 29, 2021

2021002344 (P.T.A.B. Mar. 29, 2021)

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.
15/414,021 01/24/2017 Shuji SHIOJI 119360.0264933 4212
23838 7590 03/29/2021
Hunton Andrews Kurth LLP/HAK
2200 Pennsylvania Avenue NW
Washington, DC 20037
EXAMINER
CAO, PHAT X
ART UNIT PAPER NUMBER
2817
NOTIFICATION DATE DELIVERY MODE
03/29/2021 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):
uuspto@hunton.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHUJI SHIOJI
Appeal 2021-002344
Application 15/414,021
Technology Center 2800
Before LINDA M. GAUDETTE, JEFFREY R. SNAY, and
DEBRA L. DENNETT, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a), from the
Examiner’s decision finally rejecting claims 28–37 under 35 U.S.C. § 103 as
unpatentable over Shioji (US 2015/0179537 A1, published June 25, 2015),

1 The following documents are of record in this appeal: Specification filed
Jan. 24, 2017 (“Spec.”); Final Office Action dated June 4, 2020 (“Final
Act.”); Appeal Brief filed Oct. 30, 2020 (“Appeal Br.”); Examiner’s Answer
dated Dec. 17, 2020 (“Ans.”); and Reply Brief filed Feb. 17, 2021 (“Reply
Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as Nichia Corporation. Appeal
Br. 1.
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Application 15/414,021

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Lee (US 2011/0127549 A1, published June 2, 2011), and Suh (US 8,373,188
B2, issued Feb. 12, 2013). See Appeal Br. 4; Final Act. 2.3
We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to a semiconductor element comprising a
dielectric multilayered film containing an oxide. Title of the Invention,
amended Dec. 7, 2018. Claim 28, reproduced below, is illustrative of the
claimed subject matter:
28. A semiconductor element comprising, in order from top
to bottom:
a semiconductor layer;
a light-transmissive substrate;
a dielectric multilayered film formed by alternately
laminating a first film including SiO2 as a major component and
a second film including Nb2O5 as a major component; and
a reflective layer containing Ag as a major component
and containing a metal oxide that is Nb2O5,
wherein the dielectric multilayered film is in contact with
the reflective layer, and
wherein a portion of the metal oxide distributed in a
mesh form in the reflective layer and a portion of the Ag in the
reflective layer are in contact with the dielectric multilayered
film.
Appeal Br. 9 (Claims Appendix).

3 We have jurisdiction under 35 U.S.C. § 6(b).

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Application 15/414,021

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ISSUE
The Examiner’s and the Appellant’s respective positions raise the
following issue on appeal: Has the Appellant identified reversible error in
the Examiner’s finding that Shioji discloses a reflective layer “wherein a
portion of the metal oxide distributed in a mesh form in the reflective layer
and a portion of the Ag in the reflective layer are in contact with the
dielectric multilayered film” (claim 28)? See Appeal Br. 4.
OPINION
The Examiner found that Shioji Figures 3B and 3C disclose a
reflective layer (30) containing metal oxide (35) “distributed in a mesh
form” 4 as recited in claim 28. See Final Act. 2. The Appellant argues that
Shioji’s depictions of nanoparticles 35 in metal layer 30 (Figures 3B, 3C,
and 4A) and description of nanoparticles 35 as dispersed across the entire
area of metal film 30 (¶ 30) is insufficient to support a finding that Shioji’s
nanoparticles are “distributed in a mesh form” as recited in claim 28. Reply
Br. 4. The Appellant contends that Shioji’s description of nanoparticles 35 as
dispersed across the entire area of metal film 30 could also mean that
nanoparticles 35 are discretely and separately distributed. Reply Br. 4. The

4 The Appellant argues that the claim 28 phrase “‘in the mesh form’ should
be interpreted to mean, for example, a plurality of nuclei of the metal oxide
are continuously distributed, or continuously connected.” Appeal Br. 5. Our
Decision does not turn on whether the Appellant’s proposed interpretation is
correct. We note, however, that like the Examiner, we are not persuaded that
Specification paragraph 34 supports interpreting “in a mesh form” as
meaning “continuously connected.” See Ans. 5–6. In addition, paragraph
34’s description of the metal oxide as “continuously distributed in a mesh
form” suggests that “continuously distributed” does not have the same
meaning as “in a mesh form.”
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Appellant also argues that in Shioji Figure 4A, “the metal oxide
nanoparticles 35 in the metal film 30 are discretely distributed like islands,
and are NOT continuously distributed in a mesh form.” Appeal Br. 7. The
Appellant notes that “[p]aragraph 0034 of the specification clearly indicates
that an arrangement where the metal oxide is . . . ‘discretely distributed’ in
the reflective layer is different from an arrangement where the metal oxide is
‘distributed in a mesh form.’” Id. at 5 (emphasis omitted).
For the reasons explained in the Answer, see Ans. 3–8, and below, the
Appellant has not identified reversible error in the Examiner’s finding that
Shioji discloses a reflective layer as claimed.
Application Figure 2 is reproduced below.

Figure 2 is a schematic cross-sectional view showing an interface
between dielectric multilayered film 8 and reflective layer 9. Spec. ¶ 12.
“The reflective layer 9 is a silver alloy layer containing Ag as a major
component and containing a metal oxide 40.” Id. ¶ 31. Metal oxide 40 and
Ag coexist in pseudo transition layer A, formed at an interface between
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reflective layer 9 and dielectric multilayered film 8. Id. “The pseudo
transition layer is not an actual layer and rather means a kind of layer
produced by the presence of the metal oxide 40 and Ag at the interface.” Id.
¶ 32. In Figure 2,
reference sign 40a denotes the metal oxide 40 dispersed in the
reflective layer 9 in granular form and reference sign 40b
denotes the metal oxide 40 distributed at the interface between
the reflective layer 9 and the dielectric multilayered film 8.
Here, the metal oxide 40b does not constitute a layer by itself
and a part of Ag is in contact with dielectric multilayered film
8. Here, the metal oxide 40b may be continuously distributed in
a mesh form as long as the part of the Ag is in contact with the
dielectric multilayered film 8.
Id. ¶ 34 (emphasis added).
Shioji Figures 3B and 3C are reproduced below.

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Shioji Figures 3B and 3C “are schematic diagrams for explaining the
bonding between a substrate [10] and a metal film [30] in . . . one
embodiment.” Shioji ¶ 21. Shioji describes these figures as follows:
As shown in FIG. 3B, the nanoparticles 35 diffused across the
entire area of the metal film 30 tend to suppress the growth of
crystals over the entire area of the metal film 30. On the other
hand, as shown in FIG. 3C, the nanoparticles 35 existing more
on the upper side of the metal film 30, that is, on the substrate
10 side can enhance the adhesion between the substrate 10 and
the metal film 30 by efficiently using the nanoparticles 35.
Id. ¶ 39 (emphasis added). The Specification similarly discloses that “[t]he
presence of the metal oxide 40 in the reflective layer 9 causes the reflective
layer 9 to exhibit a pinning effect, which suppresses crystal grains of Ag, the
major component of the reflective layer 9, from growing.” Spec. ¶ 33. The
Specification also describes pseudo transition layer A as increasing the
adhesion between the reflective layer 9 and the dielectric multilayered film
8. Id. ¶ 31.5
Claim 28 recites that the reflective layer contains Ag as a major
component. Similarly, Shioji identifies silver as a preferred principal
component of metal film 30. Shioji ¶ 51. Shioji discloses that the
nanoparticles are made of an oxide, id. ¶ 34, such as niobium oxide, id. ¶ 44,
as recited in appealed claim 28. Additionally, there is substantial overlap
between Shoji’s and the Specification’s listings of preferred metal oxides.
Compare Shioji ¶ 44, with Spec. ¶ 35.

5 For at least the reason that Shoji describes the same advantages, see Shioji
¶ 39, we are not convinced that Specification paragraph 31 evidences
unexpected results, see Reply Br. 3.
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The nanoparticle content of Shioji’s metal film and the metal oxide
particle content of the Specification’s reflective layer 9 are substantially the
same—more than 0% but preferably no more than 5%. Compare Shioji ¶ 45,
with Spec. ¶ 36. Shioji and the Specification disclose that this particle
content range enhances adhesion while maintaining high reflectivity. Shioji
¶ 45; Spec. ¶ 36.
As indicated in the above comparisons between Shioji’s and the
Specification’s disclosures, see supra 5–6, Shioji’s metal film and the
Specification’s reflective layer (1) contain the same materials, silver and
Nb2O5, (2) contain metal oxide particles in the same amounts, and (3)
provide the same advantages. Thus, the Examiner had a reasonable basis for
finding that Shioji’s metal oxide particles are “distributed in a mesh form” as
recited in claim 28. See Ans. 7–8 (“[A]ccording to paragraph [0034] of the
Appellant’s specification, ‘discretely distributed’ . . . occur[s] when the
amount of the metal oxides added to the reflective layer is small. In this
case, there [is] no evidence[] to support that the amount of the metal oxides
35 added to the reflective layer 30 of Shioji is small. . . . Furthermore, . . .
there are no differen[ces] between the distributions of the metal oxides 40 in
Fig. 2 of the present invention and the metal oxides 35 in Figs. 3B–3C and
4A of Shioji.” (emphasis omitted)).
“[W]hen the prior art evidence reasonably allows the PTO to conclude
that a claimed feature is present in the prior art, the evidence ‘compels such
a conclusion if the applicant produces no evidence or argument to rebut it.’”
In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004) (quoting In re Spada, 911
F.2d 705, 708 n.3 (Fed. Cir. 1990)).
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In the Reply Brief, the Appellant argues that the Examiner
misinterpreted a document submitted on September 4, 2020, as an
attachment to an Examiner interview agenda. See Reply Br. 3–8. The
Appellant does not appear to rely on the document as part of this appeal,
and, at the time of submission, the Appellant also explicitly stated that the
document was for discussion purposes only, and not for entry. Even if the
Appellant did intend to rely on the document, we do not consider the
document persuasive evidence of nonobviousness because the source of the
document is unclear and the Appellant’s statements regarding the document
are merely attorney argument. See In re Geisler, 116 F.3d 1465, 1471 (Fed.
Cir. 1997) (explaining that argument by counsel cannot take the place of
evidence).
In sum, having considered the Appellant’s arguments and evidence,
we determine that a preponderance of the evidence favors the Examiner’s
conclusion of obviousness as to claim 28. As the Appellant does not
separately argue any dependent claims, we sustain the Examiner’s rejection
of claims 28–37.
Although we determine that the Appellant has not identified reversible
error for the reasons expressed in the Answer and above, to advance
prosecution, we note that the Appellant’s arguments also are not persuasive
of reversible error because they are not commensurate in scope with the
claim language. There is no antecedent basis for the claim 28 recitation “the
metal oxide distributed in a mesh form in the reflective layer.” Claim 28
(emphasis added). The Specification uses the phrase “distributed in a mesh
form” in describing metal oxide 40b, which is “the metal oxide 40
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distributed at the interface between the reflective layer 9 and the dielectric
multilayered film 8.” Spec. ¶ 34. In other words, as written, claim 28 does
not require that the metal oxide is distributed in a mesh form throughout the
entire reflective layer or even the entire pseudo transition layer. Rather,
claim 28, at most, requires that part of the metal oxide in the pseudo
transition layer is distributed in mesh from, and a portion of that part is in
contact with the dielectric multilayered film 8. Thus, the language of claim
28’s final “wherein clause” reads on Shioji’s Figure 4B and its
corresponding description:
[T]he nanoparticles 35 in the metal film 30 can be dispersedly
attached to the lower surface of the substrate 10. This is one
example in which the nanoparticles 35 in the metal film 30
locally exist in the vicinity of the interface with the substrate
10. . . . [I]n order to dispersedly attach the nanoparticles 35 to
the lower surface of the substrate 10, the film made of the raw
material 35a is deposited in a thickness of less than 10 nm,
preferably, less than 5 nm, so that the nanoparticles 35 can be
formed dispersedly, that is, in the form of particles, and not in
the form of film (layer) that covers the entire lower surface of
the substrate.
Shioji ¶ 41.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
28–37 103 Shioji, Lee, Suh 28–37

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TIME PERIOD FOR RESPONSE
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