Ex Parte Sakai et al

Patent Trial and Appeal Board

Mar 24, 2017

13890878 (P.T.A.B. Mar. 24, 2017)

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.
13/890,878 05/09/2013 Shiro SAKAI P2334USC1D1C2C1 3386
58027 7590 03/28/2017
H.C. PARK & ASSOCIATES, PLC
1894 PRESTON WHITE DRIVE
RESTON, VA 20191
EXAMINER
ZHU, SHENG-BAI
ART UNIT PAPER NUMBER
2892
NOTIFICATION DATE DELIVERY MODE
03/28/2017 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):
PATENT@PARK-LAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIRO SAKAI, JIN-PING AO, and YASUO ONO
Appeal 2016-000349
Application 13/890,878
Technology Center 2800
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—9 and 13. Claims 10—12 have been
canceled. Final Act. 1; App. Br. 3.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
1 We refer to Appellants’ Specification (“Spec.”) filed May 9, 2013
(claiming benefit of JP 2002-249957, filed August 29, 2002); Appeal Brief
(“App. Br.”) filed Apr. 24, 2015; and Reply Brief (“Reply Br.”) filed Oct. 5,
2015. We also refer to the Examiner’s Answer (“Ans.”) mailed Aug. 7,
2015, and Final Office Action (Final Rejection) (“Final Act.”) mailed Sept.
11,2014.
Appeal 2016-000349
Application 13/890,878
Appellants ’ Invention
The invention at issue on appeal concerns light-emitting devices
including a GaN (Galliun Nitride) based light-emitting element that is
monolithically formed on a substrate. The light-emitting element has a
recessed area with a portion of an electrode formed therein. Spec. 1:7—20;
4:14—7:3; Abstract.
Illustrative Claim
Independent claim 1, reproduced below, with the key disputed
limitations emphasized, further illustrates the invention:
1. A light-emitting device comprising:
a growth substrate;
a GaN-based light-emitting element monolithically
formed on the growth substrate;
an n-electrode and a p-electrode disposed on the GaN-
based light emitting element;
an electrode pad for a power supply, the electrode pad
being spaced apart from the light-emitting element and disposed
on the growth substrate; and
a wiring electrically connecting the electrode pad and the
light emitting element,
wherein the light-emitting element comprises a recessed
area, and at least a portion of the electrode pad is disposed in
the recessed area of the light-emitting element.
Rejection on Appeal
The Examiner rejects claims 1—9, and 13 under 35 U.S.C. § 103(a) as
being unpatentable over Kojima et al. (US 6,639,354 Bl, issued Oct. 28,
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Appeal 2016-000349
Application 13/890,878
2003 (filed July 21, 2000)) (“Kojima”) and Sakamoto et al. (US 6,489,637
Bl, issued Dec. 3, 2002 (filed Mar. 28, 2000)) (“Sakamoto”).
ISSUE
Based upon our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in finding that collectively Kojima and
Sakamoto would have taught or suggested “a GaN-based light-emitting
element monolithically formed on the growth substrate” having “a recessed
area” with “at least a portion of the electrode pad . . . disposed in the
recessed area of the light-emitting element” as recited in Appellants’ claim
1?
ANALYSIS
The Examiner rejects independent claim 1 in view of Kojima and
Sakamoto. See Final Act. 2—5; Ans. 2—7. Appellants contend that Kojima
and Sakamoto do not teach the disputed features of claim 1. App. Br. 4—7;
Reply Br. 4—6. Specifically, Appellants contend that “Kojima teaches [only]
square-shaped light emitting diodes 210, 220, and 230” (Reply Br. 4 (citing
Kojima Fig. 25)) and that “Sakamoto’s electrodes are separately formed
from the semiconductor layers comprising the light emitting diodes, and
thus, cannot reasonably be considered to teach, in combination with
Kojima’s teaching, monolithically formed GaN-based light-emitting
elements.” App. Br 7). Appellants further contend that it is Sakamoto’s
electrodes, not the light emitting diodes, that have a non-square shape —
“Sakamoto merely teaches that only the electrodes have other than a square
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Appeal 2016-000349
Application 13/890,878
shape, rather than the light emitting diodes themselves” Reply Br. 5 (citing
Sakamoto Fig. 10). Appellants also explain that the combination of Kojima
and Sakamoto fails to teach at least a portion of a power supply electrode
pad disposed in a “recessed area” of the monolithically formed GaN light-
emitting element. See App. Br. 7; Reply Br. 5.
We find a preponderance of the evidence supports Appellants’
contention that Kojima and Sakamoto do not teach the recited configuration
of a GaN-based light-emitting element monolithically formed on a substrate
having a recessed area and at least a portion of a power supply electrode pad
disposed in the recessed area of the light-emitting element. See Final Act.
2—5; Ans. 2—7. Indeed, the Examiner fails to sufficiently map or explain
what features of Sakamoto the Examiner relies upon to teach a light-emitting
element, rather than an electrode, having a recessed area, or alternately, a
monolithically formed light-emitting element having this feature. Id.
To the extent the Examiner finds Sakamoto describes diodes (element
10) and electrodes (elements 80, 82, and 83) formed on the same substrate,
which constitute monolithically formed light-emitting elements having
recessed areas therein (see Final Act. 4—5; Ans. 3—6 (citing Sakamoto Figs.
10-11)), we find we would have to engage in speculation to affirm the
Examiner on this record. “A rejection based on section 103 clearly must rest
on a factual basis . . . .” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
“The Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not. . . resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.” Id.
Applying this guidance here, we decline to engage in speculation
regarding what Sakamoto teaches, or on the Examiner’s intended mapping.
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Appeal 2016-000349
Application 13/890,878
We focus our analysis on interpreting the scope of the claims (under BRI)2
— and not on interpreting what the reference may teach, when the teachings
of the reference are unclear, and the Examiner’s mapping of the contested
claim terms to the corresponding features in the reference(s) is not well
defined. See App. Br. 7; Reply Br. 5.
Consequently, we are constrained by the record before us to find the
Examiner erred. Dependent claims 2—9 and 13 depend on claim 1.
Accordingly, we reverse the Examiner’s obviousness rejection of claims 1—9
and 13.
CONCLUSION
Appellants have shown that the Examiner erred in rejecting claims 1—
9 and 13 under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner’s rejection of claims 1—9 and 13.
REVERSED
2 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris, 111
F.3d 1048, 1054 (Fed. Cir. 1997).
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