Ex Parte Negley

Patent Trial and Appeal Board

Jun 10, 2016

12241665 (P.T.A.B. Jun. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/241,665 09/30/2008 Gerald H. Negley
65106 7590 06/14/2016
MYERS BIGEL & SIBLEY, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5308-232CT 7462
EXAMINER
CAMPBELL, SHAUN M
ART UNIT PAPER NUMBER
2829
NOTIFICATION DATE DELIVERY MODE
06/14/2016 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):
uspto@myersbigel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD H. NEGLEY
Appeal2014-006521
Application 12/241,665
Technology Center 2800
Before GEORGE C. BEST, N. WHITNEY WILSON, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1---6 of Application 12/241,665
under 35 U.S.C. § 103(a) as obvious. Final Act. (August 28, 2013).
Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6. We AFFIRM.
BACKGROUND
The '665 Application describes light-emitting diodes (LEDs) and
methods for manufacturing LEDs. Spec. 1. In particular, the Specification
1 Cree, Inc. is identified as the real party in interest. Appeal Br. 1.
Appeal2014-006521
Application 12/241,665
describes embodiments of LEDs that have a contact plug extending through
the substrate so that the anode and cathode connections are on opposite sides
of the chip, which may increase the number of devices they can be
manufactured on a wafer. Id. at 2-3.
Claim 1 is the '665 Application's sole independent claim on appeal.
It is reproduced below:
1. A method of forming a light-emitting device, [sic]
compnsmg:
forming an active region comprising an n-type layer and
a p-type layer on a first surface of a substrate having first and
second opposing surfaces;
forming a via in the substrate between the first and
second opposing surfaces without extending into the n-type
layer and the p-type layer, the via being formed in a portion of
the substrate that then-type layer and the p-type layer are
formed on;
forming a contact plug in the via such that the contact
plug extends from the first surface to the second surface of the
substrate vvithout extending on the first surface betvveen the
active region and the first surface;
forming a first electrical contact on the active region; and
forming a second electrical contact adjacent to the second
surface that is coupled to the active region by the contact plug;
wherein a center axis of the via that is substantially
perpendicular to the first and second surfaces of the substrate
and a center axis of the first electrical contact that is
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Appeal2014-006521
Application 12/241,665
substantially perpendicular to the first and second surfaces of
the substrate are offset with respect to each other.
Appeal Br. 8 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1 and 3 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hiroshi2 and Chuang. 3 Final
Act. 2--4.
2. Claims 2, 4, and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hiroshi, Chuang, and
Teraguchi. 4 Final Act. 4--5.
3. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Hiroshi, Chuang, and Rennie. 5 Final Act. 5---6.
DISCUSSION
Rejection 1. The Examiner rejected claims 1 and 3 as unpatentable
over the combination of Hiroshi and Chuang. Final Act. 2. Appellant
argues for reversal of the rejection of these claims based on the limitations of
independent claim 1. See Appeal Br. 4---6. We, therefore, limit our
discussion accordingly. 37 C.F.R. § 41.37(c)(l)(iv) (2014).
2 JP 8083929, published March 26, 1996. We cite the English-language
translation of Hiroshi that is of record in the '665 Application. See Hiroshi
Translation (mailed August 17, 2012).
3 US 2002/0017653 Al, published February 14, 2002.
4 US 6,201,265 Bl, issued March 13, 2001.
5 US 6,121,638, issued September 19, 2000.
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Appeal2014-006521
Application 12/241,665
Appellant contends that the combination of Hiroshi and Chuang
would destroy the intent and purpose of Chuang's design. Appeal Br. 6.
Based upon this contention, Appellant argues that the combination of
Hiroshi and Chuang is improper and cannot used as a prima facie case of
obviousness. Id. at 5-6. We are not persuaded by this argument.
The Examiner found that Hiroshi describes each of claim 1 's
limitations except for the requirement that a center axis of the via that is
substantially perpendicular to the first and second surfaces of the substrate is
offset with respect to a center axis of the first electrical contact that is
substantially perpendicular to the first and second surfaces of the substrate. 6
See Final Act. 2-3. The Examiner further found that Hiroshi does disclose
that its light-emitting device may include more than one via extending
through the substrate. Id. at 3 (citing Hiroshi i-f 25). The Examiner also
found that Chuang discloses a structure having two vias each of which is
substantially offset from the center axis of the first electrical contact. Id. at
3--4 (citing Chuang Fig. 4). Based upon these factual determinations the
Examiner concluded that the differences between the subject matter of claim
one taken as a whole and the combination of Hiroshi and Chuang would
have been obvious to a person having ordinary skill in the art at the time of
the invention.
6 We note that no more than one via can have its center axis in a non-offset
position with respect to the center axis of the first electrical contact. Thus,
an electrical device having more than one via must have a via with a center
axis that is offset from the first electrical contact's center axis. In view of
our disposition of this appeal, we need not consider whether Hiroshi's
description of an electrical device having more than one via, see i-f 25, would
be adequate to support a conclusion that the claimed subject matter is prima
facie obvious.
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Appeal2014-006521
Application 12/241,665
Appellant argues that Chuang describes a light-emitting device having
a plurality of vias, each of which is filled with gallium nitride and which has
a thin film of gallium nitride that extends between the first surface of the
substrate and the semiconductor stack that forms the LED. Appeal Br. 5-6.
Appellant also contends that Chuang further teaches that the gallium nitride
thin film on the first surface of the substrate is present to balance the stress
that is imposed by a corresponding gallium nitride thin film on the second
surface of the substrate. Id. at 6. Appellant argues that it would destroy
Chuang's intent and purpose or function to remove the thin film of gallium
nitride from the first surface of the substrate in order to arrive at the claimed
invention. Id. at 5-6.
Appellant's argument is not persuasive because it does not address the
reasons for the Examiner's reliance upon Chuang. As discussed above, the
Examiner relies upon Chuang as describing a light-emitting device in which
the center axis of a via is offset from the center axis of the first electrical
contact. See Final Act. 3--4. The Examiner does not rely upon Chuang as
describing the use of multiple vias in a light-emitting device. Id. Nor does
Appellant explain why a person having ordinary skill in the art would not
have created a light-emitting device with multiple vias, each of which has
the structure of the single via depicted in Hiroshi's Figures 1 and 3.
We, therefore, affirm the Examiner's rejection of claims 1 and 3 as
unpatentable over the combination of Hiroshi and Chuang.
Rejections 2 and 3. Appellant argues that the rejections of claims 2
and 4---6 should be reversed because each of these claims depends from
claim 1. See Appeal Br. 6-7. Because we have affirmed the rejection of
claim 1, we also affirm the rejections of claims 2 and 4---6.
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Appeal2014-006521
Application 12/241,665
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1---6
of the '665 Application.
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
6