Anurag Tyagi et al.

Patent Trials and Appeals Board

Dec 23, 2020

2019006687 (P.T.A.B. Dec. 23, 2020)

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.
12/908,478 10/20/2010 Anurag Tyagi 30794.340-US-U1 3968
22462 7590 12/23/2020
GATES & COOPER LLP (General)
HOWARD HUGHES CENTER
6060 CENTER DRIVE
SUITE 830
LOS ANGELES, CA 90045
EXAMINER
FORDE, DELMA ROSA
ART UNIT PAPER NUMBER
2828
NOTIFICATION DATE DELIVERY MODE
12/23/2020 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):
docketing-us@gates-cooper.com
gates-cooper@blackhillsip.com
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 2019-006687
Application 12/908,478
Technology Center 2800
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 9, 11, 12, 14–17, 19, and 22–29.
We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as The Regents of the
University of California. Appeal Br. 1. There was a previous appeal, 2016-
005335, in which this Board affirmed the Examiner’s rejections of similar
subject matter. Id.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to semipolar III-nitride laser diodes. Claim 1,
reproduced below, is illustrative of the claimed subject matter (Appeal Br.
Claims Appendix 13; emphasis added to highlight key limitation in dispute):
1. An optoelectronic device, comprising:
a semipolar III-nitride based heterostructure device
comprising an (Al,In,Ga)N epitaxial structure grown on a
semipolar GaN substrate, wherein the (Al,In,Ga)N epitaxial
structure has GaN cladding layers and InGaN waveguide layers,
but no cladding layers comprised of Al, and the InGaN
waveguide layers have a thickness sufficient to provide
transverse mode optical confinement;
the semipolar III-nitride based heterostructure device
having a cavity with one or more etched facets that are not
limited by cavity length dimensions or crystallographic
orientation, wherein the cavity length dimensions and
crystallographic orientation are arbitrarily controlled by the
etched facets, thereby enabling control of electrical and optical
properties of the semipolar III-nitride based heterostructure
device.
Independent claim 11 is directed to a method of fabricating a device
as recited in claim 1. Appeal Br. Claims Appendix 14.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Scherer US 2008/0002749 A1 Jan. 3, 2008
Ohta US 2008/0285609 A1 Nov. 20, 2008
Yusuke Yoshizumi et al., “Continuous-wave operation of 520 nm green
lnGaN-based laser diodes on semi-polar {2021} GaN substrates,” Applied
Physics Express, vol. 2, no. 9 (2009).
REJECTIONS
Claims 1–5, 9, 11, 12, 14, 15, 19, 22–25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ohta and Scherer. Final Act. 2–8.
Claims 6, 7, 16, 17, and 26–29 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ohta, Scherer, and Yoshizumi. Final Act. 8–9.
OPINION
After considering the evidence presented in this Appeal and each of
Appellant’s arguments, we are not persuaded that Appellant identifies
reversible error. We review the appealed rejections for error based upon the
issues identified by Appellant and in light of the arguments and evidence
produced thereon. 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) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections.”). We sustain the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer.
We add the following primarily for emphasis.
It has been well settled that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
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claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant does not dispute the Examiner’s findings based on Ohta,
which is directed to an optoelectronic device as recited in claim 1 but for the
“etched facets” as recited therein. Final Act. 2–4. The Examiner relies upon
Scherer for its teaching of etching to form laser cavity facets. Final Act. 4.
Appellant’s main argument is that Scherer, which the Examiner finds
to disclose facets formed via etching,2 uses focused ion beam etching which
is a milling technique and only mentions reactive ion etching as a general
statement (Appeal Br. 8). Appellant also argues Scherer merely discloses
etching for infrared-emitting laser diodes, not green-emitting semipolar III-
nitride laser diodes, as in Ohta (Appeal Br. 8). These arguments are
insufficient to establish one of ordinary skill in the art would not have been
able to use the etching techniques of Scherer for the device of Ohta without
undue experimentation. While Appellant contends that substituting the
etched facets of Scherer for the cleaved facets of Ohta would defeat the
purpose of the cleaved facets of Ohta (Appeal Br. 8), they do not provide
adequate evidence or technical reasoning to support this assertion. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney’s arguments in a brief

2 Final Act. 4.
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cannot take the place of evidence).3 Appellant’s de facto argument that the
Examiner has failed to sufficiently explain how the applied prior art
rendered claim 1 obvious is not persuasive of error as Appellant fails to
consider the breadth of claim 1, the applied prior art as a whole, and the
inferences that one of ordinary skill would have made. Indeed, “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).
Notably, claim 1 encompasses a device with only one etched facet.
The Examiner finds that although Ohta does not disclose etching to form the
cleaved surfaces, 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 (e.g., Ans. 4; Scherer, ¶¶ 69,
109, 110). The Examiner further finds Scherer discloses benefits for the
precision etching techniques (id.). Specifically, Scherer discloses that both
FIBE (focused beam ion etching) and RIE (reactive ion etching) are
precision etching techniques for producing semiconductor lasers (i.e., laser
diodes) and such “precision etching techniques allow[] precise control over
the dimension, angle, and orientation of etched features, and offer[]
extremely smooth surfaces that reduce optical loss in the resulting device”

3 To the extent Appellant for the first time presents arguments focused on
Scherer’s Fig. 4A (Reply Br. 6), it is inappropriate for Appellant to discuss
for the first time in the Reply Brief matters that could have been raised in the
Appeal Brief. 37 CFR § 41.41(b)(2) (2013).

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(Scherer abstract and ¶¶ 3, 12, 89–90). Therefore, the disclosure of Scherer
provides sufficient reasons to modify Ohta in view of Scherer.
Furthermore, with regard to Appellant’s arguments regarding
undulations being undesirable in Ohta (Appeal Br. 8), 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 Ohta in view of Scherer constitutes reversible
error.
Appellants do not present any further arguments for independent
claim 11 or any of the claims dependent upon claims 1 or 11, even those
separately rejected, relying only upon the arguments for claim 1 (Appeal Br.
9–12).
Accordingly we sustain the Examiner’s § 103(a) rejections on appeal.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 9, 11,
12, 14, 15,
19, 22–25
103(a) Ohta, Scherer 1–5, 9, 11,
12, 14, 15,
19, 22–25

6, 7, 16, 17,
26–29
103(a) Ohta, Scherer,
Yoshizumi
6, 7, 16, 17,
26–29

Overall
Outcome
1–7, 9, 11,
12, 14–17,
19, 22–29

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