Ex Parte Nishimura et al

Board of Patent Appeals and Interferences

Oct 19, 2009

10380861 (B.P.A.I. Oct. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SUSUMU NISHIMURA,
SHOJI HONDA, and KOJI UEYAMA
____________

Appeal 2008-006226
Application 10/380,861
Technology Center 2800
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Decided: October 19, 2009
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Before BRADLEY R. GARRIS, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-16. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appeal 2008-006226
Application 10/380,861

Statement of the Case
Appellants claim a light-receiving element 1 having a photodiode
functioning as a light-receiving region 4 and having a light-emitting element
mount electrode 10, wherein a strip-shaped high concentration impurity
layer 11 is formed substantially along peripheral edges of the light-emitting
element mount electrode 10 in such a way that, when viewed in a plan view,
there is either a partial or no overlap between the high concentration
impurity layer 11 and the light-emitting element mount electrode 10 (claims
1, 4; Figs. 1, 2).
Appellants also claim a photonic semiconductor device having a
photodiode functioning as a light-receiving region 4 in a top surface of a
semiconductor substrate 2, a light-emitting element mount electrode 10a
with a light-emitting element 18 mounted thereon, wherein a resistance of
the semiconductor substrate 2 is higher than an operating-state resistance of
the light-emitting element 18’, and, of two surface electrodes 181, 182
formed on the light-emitting element, the surface electrode that does not
make contact with the light-emitting element mount electrode 10a is kept at
an identical potential with a bottom surface electrode 12 of the
semiconductor substrate (claims 14, 15; Figs. 5, 6).
Representative claims 1 and 15 read as follows:
1. A light-receiving element having a photodiode formed in part
of a top surface of a semiconductor substrate so as to function as a light-
receiving region and having a light-emitting element mount electrode
formed on top of the semiconductor substrate where the light-receiving
region is not formed,

wherein a strip-shaped high concentration impurity layer is formed
below the top surface of the semiconductor substrate substantially along
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Application 10/380,861

peripheral edges of the light-emitting element mount electrode in such a way
that, when viewed in a plan view, there is either a partial or no overlap
between the high concentration impurity layer and the light-emitting element
mount electrode.

15. A photonic semiconductor device having an insulating layer formed
on top of a semiconductor substrate, having a photodiode formed in part of a
top surface of the semiconductor substrate so as to function as a light-
receiving region, having a through hole formed in the insulating layer where
the light-receiving region is not formed, having a light-emitting element
mount electrode formed so as to make direct contact with the semiconductor
substrate through the through hole, having a light-emitting element mounted
on the light-emitting element mount electrode, having the light-receiving
region of the light-receiving element [sic, the photodiode]1 formed parallel
to a direction in which the light-emitting element emits light, and having the
light-emitting element arranged in such a way that, when viewed in a plan
view, a light-emitting point thereof overlaps with at least part of the light-
receiving region,

wherein a resistance of the semiconductor substrate is higher than an
operating-state resistance of the light-emitting element, and, of two surface
electrodes formed on the light-emitting element, the surface electrode that
does not make contact with the light-emitting element mount electrode is
kept at an identical potential with a bottom surface electrode of the
semiconductor substrate.

The references set forth below are relied upon by the Examiner as
evidence of unpatentability:
Moriyama 6,414,388 B1 Jul. 02, 2002
Sone EP 0, 284,212 Sep. 9, 1988
The Examiner rejects claims 1-12 under 35 U.S.C. § 102(b) as being
unpatentable over Sone.

1 The claim 15 phrase “the light-receiving element” lacks strict antecedent
basis.
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Application 10/380,861

The Examiner also rejects claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Sone and correspondingly rejects claims 14-16 over Sone
in view of Moriyama.
Issues
(1) Have Appellants shown error in the Examiner’s finding that the
diffusion region 2a of the semiconductor laser shown in Figure 5 of Sone
satisfies the claim limitations “a strip-shaped high concentration impurity
layer” which is “substantially along peripheral edges of the light-emitting
element mount electrode” as required by independent claims 1, 4, 7, 9, and
14?
(2) Have Appellants shown error in the Examiner’s conclusion that it
would have been obvious to provide the device of Sone with the substrate
resistance and electrode potential features recited in the last clause of
independent claims 14 and 15?
Findings of Fact
Concerning Issue (1):
The Examiner finds that diffusion region 2a of the semiconductor
laser shown in Figure 5 of Sone constitutes a strip-shaped high concentration
impurity layer formed substantially along peripheral edges of electrode film
(i.e., a light-emitting element mount electrode) 8 (Ans. 3). As support for
this finding, the Examiner refers to Figure 5 only (id.) yet acknowledges that
“Sone does not show a plan view of figure 5” (Ans. 8). However, in the
absence of a plan view, the Examiner has no evidentiary basis to find that
diffusion region 2a of Figure 5 is “strip-shaped” and “substantially along
peripheral edges of the light-emitting element mount electrode” as required
by independent claims 1, 4, 7, 9, and 14.
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Concerning Issue (2):
With respect to the substrate resistance and electrode potential
limitations of independent claims 14 and 15, the Examiner makes the
findings set forth below:
Regarding claims 14 and 15, Sone teaches substantially
the entire claimed structure of claim 11 above including a
resistance of the semiconductor substrate is higher than an
operating-state resistance of the light-emitting element, and
the surface electrode that does not make contact with the
light-emitting element (the ground electrode underneath the
substrate) mount electrode is kept at an identical potential
with a bottom surface electrode of the semiconductor
substrate.

(Ans. 6).
The Examiner does not point to any structures in Sone Figure 5, or to
any related teachings in Sone, that support these findings. Moreover, the
Examiner’s arguments appear to be internally inconsistent. The Examiner’s
electrode potential finding conflicts with the Examiner’s subsequent
acknowledgement that “Sone fails to explicitly state that the formation of
two surface electrodes [sic, that two surface electrodes] formed [sic, are
formed] on the light-emitting element” (Ans. 6). That is, because Sone’s
light-emitting element concededly lacks the two surface electrodes required
by claims 14 and 15, Sone could not possibly disclose the claimed electrode
potential limitation as found by the Examiner. Similarly, the Examiner’s
substrate resistance finding conflicts with the Examiner’s conclusion that “it
would have been obvious to one of ordinary skill in the art at the time the
invention was made to adjust the resistance of the semiconductor substrate
of Sone’s device in order to improve the light input and output efficiency”
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(Ans. 7). That is, such an obviousness conclusion would be unnecessary if
Sone indeed teaches the claimed substrate resistance limitation as found by
the Examiner.

Principles of Law
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr, 367 F.3d 1359, 1364 (Fed. Cir. 2004), quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990).2
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently”. In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).
Analysis and Conclusions of Law
Concerning the § 102 rejection, Appellants argue that
Sone, at Fig. 5, discloses a diffusion layer 2a that is formed
substantially under the electrode 8, and does not teach or
suggest a strip shaped high concentration impurity layer that

2 The Examiner enunciates and applies an incorrect and broader standard,
namely, that, “[d]uring examination, the claims must be interpreted as
broadly as their terms reasonably allow” (Ans. 7).
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Application 10/380,861

is formed substantially along the peripheral edges of the
electrode, as recited in claims 1, 4, 7 and 9

(App. Br. 9). Appellants also make this argument with respect to the § 103
rejection of independent claim 14 (App. Br. 13).
We agree that Figure 5 of Sone fails to expressly or inherently
disclose the claim limitations argued by Appellants above. As previously
explained in the Findings of Fact section, Sone fails to depict a plan view of
Figure 5, and therefore it is impossible to know whether diffusion region 2a
is “strip-shaped” and is formed “substantially along peripheral edges of the
light-emitting element mount electrode” as required by independent claims
1, 4, 7, 9, and 14.
As for the § 103 rejection of independent claim 15 (as well as
independent claim 14), Appellants present the following argument:
The Examiner has failed to identify where Sone
discloses or suggests a resistance of the semiconductor
substrate that is higher than an operating-state resistance of
the light-emitting element, and, of two surface electrodes
formed on the light-emitting element, the surface electrode
that does not make contact with the light-emitting element
mount electrode is kept at an identical potential with a
bottom surface electrode of the semiconductor substrate.

(App. Br. 13).3
This argument is persuasive. The Examiner’s findings concerning
this rejection are unsupported and conflicted as noted in the Findings of Fact
section above. It follows that the Examiner has failed to provide articulated

3 Significantly, the Examiner’s Answer contains no reasonably specific
response to this argument.
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Application 10/380,861

reasoning with some rational underpinning to support the legal conclusion
that the claim limitations under review would have been obvious.
For the above-discussed reasons:
Appellants have shown error in the Examiner’s finding that the
diffusion region 2a of the semiconductor laser shown in Figure 5 of Sone
satisfies the claim limitations “a strip-shaped high concentration impurity
layer” which is “substantially along peripheral edges of the light-emitting
element mount electrode” as required by independent claims 1, 4, 7, 9, and
14; and
Appellants have shown error in the Examiner’s conclusion that it
would have been obvious to provide the device of Sone with the substrate
resistance and electrode potential features recited in the last clause of
independent claims 14 and 15.
By showing error in the Examiner’s rejections of the independent
claims on appeal, Appellants likewise have shown error in the Examiner’s
rejections of the dependent claims. Accordingly, we will not sustain the
§ 102 rejection of claims 1-12 over Sone, the § 103 rejection of claim 13
over Sone, or the § 103 rejection of claims 14-16 over Sone in view of
Moriyama.
Order
The decision of the Examiner is reversed.

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