Ex Parte Edmond

Board of Patent Appeals and Interferences

Jan 13, 2009

11037965 (B.P.A.I. Jan. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte John Adam Edmond
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Appeal 2008-6202
Application 11/037,965
Technology Center 2800
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Decided: January 13, 2009
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Before EDWARD C. KIMLIN, CATHERINE Q. TIMM,
and MARK NAGUMO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-42. Claim 1 is
illustrative:
1. A light emitting diode with advantageous output on a per unit
area basis, said diode comprising: an area of 100,000 square microns or less;
a forward voltage of less than 4.0 volts a radiant flux of at least 24 milliwatts
at 20 milliamps drive current; and a dominant wavelength between about
395 and 540 nanometers.

Appeal 2008-6202
Application 11/037,965

In addition to the admitted prior art found in Appellant’s
Specification, the Examiner relies upon the following references in the
rejection of the appealed claims (Ans. 3):
Slater, Jr. et al. US 2002/0123164 A1 Sep. 2002
Härle Proc. SPIE, Vol. 5187, pg 34-40 Jan. 2004
APA (admitted prior art) US Application 11/037,965 Filed 1/18/2005
Appellant’s claimed invention is directed to a light emitting diode
having the recited properties, e.g., an area of 100,000 square microns or less,
a forward voltage of less than 4.0 volts, etc. The diode comprises a
conductive silicon carbide substrate and respective p-type and n-type Group
III nitride layers on the silicon carbide substrate.
Appealed claims 13-21, 34, 36, 37, and 39-42 stand rejected under 35
U.S.C. § 102 (b) as being anticipated by Slater. In addition, the Examiner
has lodged the following rejections under 35 U.S.C. § 103(a):
(a) claims 1-8 and 10-12 over Slater in view of Härle,
(b) claims 22-33 over Slater in view of Härle and the APA, and
(c) claims 35 and 38 over Slater in view of the APA.
The Examiner has withdrawn the rejection of claims 1-42 under 35
U.S.C. § 112, first paragraph.
Appellant has not presented separate, substantive arguments for any
particular claim on appeal. Accordingly, the groups of claims separately
rejected by the Examiner stand or fall together.
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in complete agreement with the Examiner’s
reasoned analysis and application of the prior art, as well as his cogent and
thorough disposition of the arguments raised by Appellant. Accordingly, we
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Application 11/037,965

will adopt the Examiner’s reasoning as our own in sustaining the rejections
of record and we add the following for emphasis only.
We consider first the Examiner’s § 102 rejection over Slater. There is
no dispute that Slater, like Appellant, describes a light emitting diode
comprising a silicon carbide substrate and respective p-type and n-type
Group III nitride layers on the substrate that together with the substrate
define a die. Nor is there any dispute that Slater also describes ohmic
contacts in a vertical orientation with respect to the silicon carbide substrate
and said nitride layers. The dispute arises over the Examiner’s finding that,
since the structure of Slater’s diode substantially corresponds to the structure
of Appellant’s diode, Slater’s diode would inherently possess the properties
recited in the appealed claims. In particular, it is the Examiner’s position
that “Figure 3 of Slater is identical to Figure 4 of the present application, in
both structure and materials” (Ans. 5, second para.).
It is well settled that when a claimed product reasonably appears to be
substantially the same as a product disclosed by the prior art, the burden is
on the Applicant to prove that the prior art product does not necessarily or
inherently possess characteristics attributed to the claimed product. To place
this burden upon an Applicant is eminently fair and reasonable since the
USPTO is not able to test the properties of prior art products. See In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990), In re Best, 562 F.2d 1252, 1255
(CCPA 1977).
In the present case, Appellant has not proffered any objective
evidence which demonstrates that light emitting diodes within the scope of
the appealed claims possess properties and characteristics that are patentably
distinct from those exhibited by the light emitting diodes fairly described by
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Appeal 2008-6202
Application 11/037,965

Slater. However, Appellant advances the argument that “the LED in Figure
4 of the present invention has a mirror layer 54 between the active layer 53
and in ohmic contact 55 . . . [w]hereas Figure 3 of Slater discloses a reflector
layer 240 between an active layer 130 and a p-type layer 140” (App. Br. 8,
last para. to 9, first para.). Appellant concludes, therefore, that “the LED
depicted in Figure 4 of the present application does not correspond to the
packaged LED as depicted in Figure 3 of Slater” (App. Br. 9, first para.).
Appellant submits that “[t]hose of ordinary skill in the art know that
changing the position of a mirror and a reflection layer in a diode or an LED
lamp can result in varying its optical properties and characteristics” (id.).
Based on this asserted lack of correspondence between the claimed and
Slater structures, Appellant maintains that the diode of Slater does not
inherently possess the claimed properties.
Appellant’s argument is not persuasive because it has been effectively
rebutted by the Examiner’s finding that reflector layer 240 of Slater is only
an optional feature of the referenced light emitting diode. As explained by
the Examiner, Slater’s diode sans reflective layer 240 is the embodiment
relied upon in support of the reasonable conclusion that Slater describes a
light emitting diode possessing the claimed properties. Appellant has not
refuted this argument of the Examiner, nor the Examiner’s rationale that
“even if reflector 240 were left in Slater, the structure would still be active
layer 170 (incl. 240) / mirror layer 150 / ohmic contact 220, which is
identical to the active layer 53 / mirror layer 54 / ohmic contact 55 structure
of the present invention” (Ans. 15, first para.). The Examiner notes that
reflector 240 of Slater is another Group III nitride layer.
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Appeal 2008-6202
Application 11/037,965

Turning to the § 103 rejection of claims 1-8 and 10-12 over Slater in
view of Härle, the Examiner acknowledges that Slater does not expressly
describe the recited area for the diode. However, as pointed out by the
Examiner, Härle discloses a chip size of 84,100 square microns as having
improved flight extraction when compared to larger-sized chips.
Accordingly, we find no error in the Examiner’s legal conclusion that it
would have been obvious for one of ordinary skill in the art to size the chip
of Slater in accordance with the Härle disclosure to achieve an improvement
in light extraction.
Appellant maintains that a larger chip still produces more total radiant
flux than a smaller chip and that “Härle neither teaches nor suggests that
shrinking a diode will cause it to produce more light” (App. Br. 10, second
to last para.). However, notwithstanding the fact that a larger chip produces
more light than a smaller chip, the Examiner’s “rationale for obviousness
relied upon is ‘improved light extraction’ and not the total radiant flux”
(Ans. 16, second to last para.). Härle evidences that it was known in the art
to size light emitting diodes in accordance with the claimed dimensions for
improving light extraction.
Appellant submits that “the present invention is significant (and thus
unexpected) because to date, reducing the size of the Group III nitride device
has tended to increase its forward voltage and reduce its radiant flux” (App.
Br. 12, second para.). Appellant asserts that “Figure 7 has ample data to
indicate improved properties as claimed in the present application” (id.).
However, Appellant has not set forth the requisite analysis of the
Specification data to establish that the results would be considered truly
unexpected by one of ordinary skill in the art. In re Merck & Co., Inc., 800
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Appeal 2008-6202
Application 11/037,965

F.2d. 1091, 1099 (Fed. Cir. 1986); In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972). Indeed, Appellant has failed to offer any substantive analysis
of the Specification data which would support the assertion of unexpected
results. Manifestly, it is not within the province of this Board to
independently ferret out data from the record and interpret it in a light most
favorable to the Applicant. It is by now axiomatic that the burden of
establishing unexpected results rests on the party asserting them.
Appellant’s arguments in the Brief pertaining to unexpected results are no
substitute for objective evidence supporting the same. In re Pearson, 494
F.2d. 1399, 1405 (CCPA 1974).
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.

No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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