Ex Parte Kuramoto et al

Board of Patent Appeals and Interferences

Sep 28, 2010

11521429 (B.P.A.I. Sep. 28, 2010)

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.
11/521,429 09/15/2006 Masaru Kuramoto SON-3611 1562
23353 7590 09/29/2010
RADER FISHMAN & GRAUER PLLC
LION BUILDING
1233 20TH STREET N.W., SUITE 501
WASHINGTON, DC 20036
EXAMINER
CARTER, MICHAEL W
ART UNIT PAPER NUMBER
2828
MAIL DATE DELIVERY MODE
09/29/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MASARU KURAMOTO and TAKEHARU ASANO
____________

Appeal 2009-013808
Application 11/521,429
Technology Center 2800
____________

Before MAHSHID D. SAADAT, THOMAS S. HAHN,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 or for filing a request for rehearing as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-013808
Application 11/521,429

2
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-27, which constitute all the claims pending in this application. An
oral hearing was conducted on this appeal on July 20, 2010. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to a laser diode, capable of producing
self-oscillation, which can be easily mounted in a circuit (Spec. 1-2). Claims
1 and 24, which are representative of the claims on appeal, read as follows:
1. A laser diode, comprising:
a semiconductor layer formed through laminating a first
conductive type layer, an active layer and a second conductive type
layer, the second conductive type layer including a striped current
confinement structure in a top portion thereof;
a plurality of electrodes being formed on the second conductive
type layer side of the semiconductor layer, and being electrically
connected to the second conductive type layer at predetermined
intervals; and
a connecting portion being disposed in the semiconductor layer
so as to be electrically isolated from the active layer, and electrically
connecting an electrode of the plurality of electrodes, except for at
least one, and the first conductive type layer to each other for self-
pulsation.
24. A laser diode comprising:
an active layer between a first conductive type layer and a
second conductive type layer; and
an electrode electrically connected to said first and said second
conductive type layers.

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Application 11/521,429

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The Examiner relies on the following prior art references:
Kang US 5,822,351 Oct. 13, 1998
Jiang US 6,185,240 B1 Feb. 6, 2001
Kitaoka US 2001/0053167 A1 Dec. 20, 2001
Johnson US 2003/0123512 A1 Jul. 3, 2003
Najda US 2005/0230722 A1 Oct. 20, 2005
(filed Apr. 3, 2003)
Miyachi US 7,079,563 B2 Jul. 18, 2006
(filed Dec. 24, 2003)
Ono US 7,199,398 B2 Apr. 3, 2007
(filed Nov. 20, 2003)
Claims 24-27 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Ono. 2
Claims 1-5, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ono and Jiang.
Claims 6, 8-10, 12, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ono, Jiang, and Najda.
Claims 7 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ono, Jiang, Najda, and Johnson.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ono, Jiang, Najda, and Kang.
Claims 17-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ono, Jiang, and Kitaoka.
Claims 20 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ono, Jiang, and Miyachi.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs (Appeal Brief filed December 19, 2008, and

2 The Final Rejections of the claims are repeated on pages 2-13 of the
Examiner’s Answer.
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Application 11/521,429

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Reply Brief filed May 14, 2009) and the Answer (mailed April 10, 2009) for
their respective details. Only those arguments actually made by Appellants
have been considered in this decision. Arguments that Appellants did not
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
1. Did the Examiner err in finding that Ono anticipates the
rejected claims by teaching “an electrode electrically connected to said first
and said second conductive type layers,” as recited in claim 24?
2. Did the Examiner err in combining the teachings of Ono and
Jiang to arrive at the claimed invention recited in claim 1?

FINDINGS OF FACT (FF)
Ono
1. The light emitting device shown in Figure 10 of Ono includes
the same layers shown in Figures 9A and 9B, such as an n-electrode 1, a
GaN substrate 2, an n type GaN layer 3, an n type AlGaN clad layer 4, an n
type GaN guide layer 5, an active layer 6 formed of a nitride semiconductor
containing mainly In and Ga, a saturable absorber 7 formed of a nitride
semiconductor containing mainly In and Ga, a p type AlGaN carrier block
layer 8, a p type GaN guide layer 9, a p type AlGaN clad layer 10, a p type
GaN contact layer 11, a first p-electrode 13, a second p-electrode 14, a
reflection film 17 made of a dielectric material, and a reflection film 18
made of aluminum (Al). (Col. 15, l. 52–col. 16, l. 2; col. 16, ll. 42-47.)
2. Figure 10 of Ono is reproduced below:
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Figure 10 shows a nitride semiconductor light emitting device.
3. Ono further teaches that the Al reflection film 18 is brought into
electrical contact with p type electrode 1 by solder. (Col. 16, ll. 48-50.)
Jiang
4. Figure 1 of Jiang is reproduced below:

Figure 1 depicts a vertical cavity surface emitting laser.
5. The semiconductor laser of Jiang includes stack 109, active area
111, and stack 119 which are etched to form trenches 131, 133, 135, and 137
defining various parts of the stack (col. 2, ll. 30-48) and exposing the contact
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areas 145, 157, 159, 161, 163, and 171 of the stacks for forming the
dielectric layer 121 (col. 3, ll. 3-7) and the conductive layers 123 and 125
(col. 3, ll. 35-42).
6. Jiang discloses that conductive portions 159, 161, 163, 164,
169, and 171 provide electrical contacts to various circuit components of the
laser (col. 3, l. 57–col. 4, l. 10).

PRINCIPLES OF LAW
1. Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citing Minn. Mining &
Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565
(Fed. Cir. 1992)). See also In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).
2. Obviousness
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006); In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

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Application 11/521,429

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ANALYSIS
Rejection over Ono
The Examiner reads the first and second conductive layers of claim 24
on the layers 4 and 10 shown in Figure 10 of Ono and asserts that Al layer
18 is the electrode connected to the first and second conductive layers via
intermediary conductive layers (Ans. 4). Appellants argue that Ono does not
anticipate claim 24 because the reference does not disclose that the p
electrode 14 is electrically connected to the n type AlGaN clad layer 4 and
the p type AlGaN clad layer 10, because the Al layer 18 is separated from
the stack by the dielectric layer 17 (App. Br. 10-11).
Upon reviewing the disclosure of Ono, we agree with the Examiner’s
finding (Ans. 13-14) that electrode 1 of Ono is in electrical contact with n
type AlGaN clad layer 4 through layers 2 and 3, while electrode 14 is in
electrical contact with p type AlGaN clad layer 10 via layer 11. See FF 1-2.
We further agree with the Examiner that electrode 14 is ultimately connected
to electrode 1 via the Al reflection layer 18 which is in contact with
electrode 14 on one side and is soldered to electrode 1 on the other side. See
FF 3.
In view of the above discussions, since all of the claimed limitations
are shown to be present in the disclosure of Ono, the Examiner’s 35 U.S.C.
§ 102(e) rejection of claim 24, as well as claims 25-27 which are not argued
separately, as anticipated by Ono is sustained.3

3 In the Reply Brief, Appellants have indicated their intention to cancel
claims 24-27 (Reply Br. 2). However, we included our analysis regarding
these claims because there is no indication on the record that an amendment
cancelling these claims has been entered by the Examiner.
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Rejections over Ono and Jiang
Appellants contend (App. Br. 17; Reply Br. 9-10) that Jiang does not
disclose conductive layers 123 and 125 being electrically connected to the
cladding region 117, a plurality of electrodes being electrically connected to
the second conductive type layer, or a connecting portion electrically
connecting an electrode of the plurality of electrodes and the first conductive
type layer to each other, as recited in claim 1. We remain unconvinced by
Appellants’ arguments and find that the Examiner reasonably relied on Ono
for disclosing the first and second conductive type layers and the electrodes
that electrically connect an electrode of the second conductive type layer
with the first conductive type layer and on Jiang for showing the connection
portions being disposed in the semiconductor layer. See Ans. 14-15. We
also agree with the Examiner (Ans. 15) that one of ordinary skill in the art
would modify Ono with the electrode arrangement of Jiang as an alternate
way to form the electrical connection to different conductive layers.
Jiang discloses a vertical cavity surface emitting laser having an active
area 111 formed between stacks 109 and 119 (FF 4-5). Jiang provides
electrical contacts to various layers through conductive electrodes formed on
inner surfaces of trenches that penetrate into each of the stacks and reach the
active area (FF 5-6). Therefore, we find the Examiner’s reliance on Jiang
for teaching one of the available configurations for forming the electrodes or
contacts to be reasonable. In fact, the teaching value of Jiang is the
electrode configuration that places all the contact on one side of the device,
instead of the arrangement of electrodes in Ono that are formed on both the
upper and lower surfaces of the laser diode. Therefore, we sustain the
35 U.S.C. § 103(a) rejection of claim 1.
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Application 11/521,429

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With respect claims 2-23, Appellants merely challenge the rejections
of these claims based on the teachings of Ono and Jiang and further assert
that the disclosures of Najda, Johnson, Kang, Kitaoka, and Miyachi fail to
teach or suggest the claimed electrodes that electrically connect an electrode
of the second conductive type layer with the first conductive type layer. See
App. Br. 11-17; Reply Br. 10-15. For the same reasons discussed above
with respect to claim 1, we find that the combination of Ono and Jiang with
Najda, Johnson, Kang, Kitaoka, or Miyachi would render obvious the
claimed subject matter of claims 2-23.

CONCLUSIONS
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown that the Examiner erred (1) in finding that Ono
anticipates the rejected claims by teaching “an electrode electrically
connected to said first and said second conductive type layers,” as recited in
claim 24; and (2) in combining the teachings of Ono and Jiang to arrive at
the claimed invention recited in claim 1.

ORDER
The decision of the Examiner rejecting claims 1-27 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(v) (2010).

AFFIRMED

Appeal 2009-013808
Application 11/521,429

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