Ex Parte Eisert et al

Board of Patent Appeals and Interferences

May 15, 2012

11154292 (B.P.A.I. May. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOMINIK EISERT and UWE STRAUSS
___________

Appeal 2010-009283
Application 11/154,292
Technology Center 2800
____________

Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and
JENNIFER S. BISK, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 3-9, 11-14, 24, 27-30, 41, and 42.1 Claims 2, 25, and 31-40 have
been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We reverse
and enter a new ground of rejection pursuant to our authority under
37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Appellants’ invention relates to an electromagnetic radiation
generating semiconductor chip that includes a semiconductor layer sequence
suitable for generating electromagnetic radiation grown on a first main face
of a radioparent, electrically conductive growth substrate. A roughening that
acts as a diffuser for an electromagnetic radiation emitted into the growth
substrate is provided on a second main face of the growth substrate that
faces away from said semiconductor layer sequence. A layer or layer
sequence reflective of the electromagnetic radiation is applied to the
roughening. (Abstract.)
Claim 41 is exemplary, with disputed limitations in italics:
41. An electromagnetic radiation generating semiconductor
chip comprising:
a first set of layers including a radioparent, electrically
conductive growth substrate and a semiconductor layer sequence for
generating electromagnetic radiation grown on a first main face of the
growth substrate;
a radiation-diffusing structure provided on a main face of the
first set of layers, wherein the electromagnetic radiation emitted into
said growth substrate by said semiconductor layer sequence is
scattered by said radiation-diffusing structure; and

1 An oral hearing was held on May 1, 2012. The record includes a written
transcript of the oral hearing.
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a layer or layer sequence reflective to the electromagnetic
radiation applied to said radiation-diffusing structure.
Claims 1, 3, 4, 8, 9, 12, 13, 27-30, 41, and 42 stand rejected under 35
U.S.C. § 103(a) as being obvious over Krames (U.S. Patent No. 5,779,924;
July 14, 1998) and Schubert (U.S. Patent Application Publication No.
2003/0111667 A1; June 19, 2003).
Claims 5, 6, and 14 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Krames, Schubert, and Nitta (U.S. Patent No. 5,900,650;
May 4, 1999).
Claims 7 and 24 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Krames, Schubert, and Fujimoto (U.S. Patent No. 5,693,963;
Dec. 2, 1997).
Claim 11 stands rejected under 35 U.S.C. §103(a) as being obvious
over Krames, Schubert, and Thibeault (U.S. Patent No. 6,821,804 B2;
Nov. 23, 2004).

ANALYSIS
We are persuaded by Appellants’ arguments (App. Br. 5-8; see also
Reply Br. 1-5) that the combination of Krames and Schubert does not render
obvious independent claim 41, which includes the disputed limitation “a
radiation-diffusing structure . . . wherein the electromagnetic radiation
emitted into said growth substrate by said semiconductor layer sequence is
scattered by said radiation-diffusing structure.”
The Examiner found that the textured back surface 8 of Krames
corresponds to the limitation “a radiation-diffusing structure.” (Ans. 4.) In
particular, the Examiner found that Figure 3 of Krames illustrates that an
incident light ray “is scattered into many different angles/directions (the
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transmitted and reflected rays), so the incoming beam is diffused into
multiple smaller beams” and “[t]he fact that they are diffused into discrete
diffraction bands does not make it not diffusing, as diffusing is merely to
break up into multiple beams.” (Ans. 12 (emphasis in original).)
Under the broadest reasonable interpretation consistent with the
Specification, we do not agree with the Examiner that Krames teaches the
limitation of “a radiation-diffusing structure . . . wherein the electromagnetic
radiation emitted into said growth substrate by said semiconductor layer
sequence is scattered by said radiation-diffusing structure” (emphasis
added). Appellants’ Specification explains that:
With regard to the scattering factor, the distribution of
energy into the different angles depends on the kind of
roughened surface. For strong scattering media like paper or
ceramic materials, the scattered light has a Lambertian
characteristics [sic]. For surfaces with weaker scattering, the
distribution of scattered light is centered about the angle of
specular reflectance.
(Spec. 10:27-30.) Thus, in the context of Appellants’ Specification, we
interpret the claim term “scattered” as random or isotropic light reflection
over a range of angles in substantially all radial directions. However,
Krames teaches that periodic texture along an interface is selected such that
“with wave-number K=2π/Δ along the plane of incidence, [the periodic
texture] imparts momentum to the incident ray and couples energy into the
epoxy via transmitted modes t1, t2, and t3” and “[e]nergy is also transmitted
into reflected modes r1, r2, . . . .” (Col. 4, ll. 7-12 (ellipsis in original).) In
other words, Krames teaches that the periodic texture along the interface
diffracts light in specified patterns or arrangements, rather than scatters light
isotropically.
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Thus, we do not agree with the Examiner that the combination of
Krames and Schubert renders obvious independent claim 41, which includes
the limitation “a radiation-diffusing structure . . . wherein the
electromagnetic radiation emitted into said growth substrate by said
semiconductor layer sequence is scattered by said radiation-diffusing
structure” (emphasis added).
Accordingly, we do not sustain the rejection of independent claim 41
under 35 U.S.C. § 103(a). Claims 1, 3, 4, 8, 9, 12, 13, 27-30, and 42 depend
from independent claim 41. We do not sustain the rejection of claims 1, 3,
4, 8, 9, 12, 13, 27-30, and 42 under 35 U.S.C. § 103(a) for the same reasons
discussed with respect to independent claim 41.
Dependent claims 5, 6, and 14 depend from independent claim 41.
Nitta was cited by the Examiner for teaching the additional features of
claims 5, 6, and 14. (Ans. 7-8.) However, the Examiner’s application of
Nitta does not cure the above noted deficiencies of Krames.
Dependent claims 7 and 24 depend from independent claim 41.
Fujimoto was cited by the Examiner for teaching the additional features of
claims 7 and 24. (Ans. 9-10.) However, the Examiner’s application of
Fujimoto does not cure the above noted deficiencies of Krames.
Dependent claim 11 depends from independent claim 41. Thibeault
was cited by the Examiner for teaching the additional features of claim 11.
(Ans. 10-11.) However, the Examiner’s application of Thibeault does not
cure the above noted deficiencies of Krames.

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NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We enter the following new ground of rejection: claim 41 is rejected
under 35 U.S.C. § 102(e) as being anticipated by Senda (U.S. Patent
No. 6,956,245 B2; issued Oct. 18, 2005 (filed May 30, 2003)).
Senda describes all the features of independent claim 41. In
particular, the light-emitting element 10 of Senda, including p-type layer 15,
layer 14, n-type layer 13, buffer layer 12, and substrate 11 (col. 4, l. 64 to
col. 5, l. 10; col. 5, ll. 13-22; Fig. 1; see also col. 6, ll. 33-38; Fig. 3),
corresponds to the claimed “a first set of layers.” The reflecting surface 4 of
Senda (col. 6, ll. 37-38; Fig. 3; see also col. 4, ll. 22-29) corresponds to the
claimed “a radiation-diffusing structure.” The silver paste 26 of Senda
(col. 6, ll. 48-50; Fig. 4; see also col. 4, ll. 48-57) corresponds to the claimed
“a layer or layer sequence reflective to the electromagnetic radiation.”
Pursuant to our authority under 37 C.F.R. § 41.50(b), then, we reject
independent claim 41 as anticipated by Senda under 35 U.S.C. § 102(e).
Because the Board of Patent Appeals and Interferences is a review
body, rather than a place of initial examination, our cursory search of the
prior art should not be interpreted as indicating that Senda is the only
relevant, or most closely related, prior art. For example, we have not
searched Class 257, subclass 95 (INCOHERENT LIGHT EMITTER
STRUCTURE .WITH HETEROJUNCTION ..WITH CONTOURED EXTERNAL
SURFACE (E.G., DOME SHAPE TO FACILITATE LIGHT EMISSION)). Furthermore,
we have not reviewed dependent claims 1, 3-9, 11-14, 24, 27-30, and 42 to
the extent necessary to determine whether any of these claims are also
unpatentable. We leave it to the Examiner to determine the appropriateness
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of any further rejections of dependent claims 1, 3-9, 11-14, 24, 27-30, and
42 under 35 U.S.C. §§ 102 and 103.
37 C.F.R. § 41.50(b) provides that a “new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under 37 C.F.R. § 41.52 by the Board upon the same
record. . . .

DECISION
The Examiner’s decision to reject claims 1, 3-9, 11-14, 24, 27-30, 41,
and 42 is reversed.
We reject claim 41 under 35 U.S.C. § 102(e) as anticipated by Senda.

REVERSED
37 C.F.R. § 41.50(b)

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