Ex Parte Samuelson et al

Patent Trial and Appeal Board

Jul 12, 2018

14664158 (P.T.A.B. Jul. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/664,158 03/20/2015
22208 7590 07/16/2018
The Marbury Law Group, PLLC
11800 SUNRISE VALLEY DRIVE
15THFLOOR
RESTON, VA 20191
FIRST NAMED INVENTOR
Lars Ivar Samuelson
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.
7742-126DIV 6080
EXAMINER
NADAV,ORI
ART UNIT PAPER NUMBER
2811
NOTIFICATION DATE DELIVERY MODE
07/16/2018 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):
ptonotices@marburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARS IV AR SAMUELSON, BO PEDERSEN, BJORN JONAS
OHLSSON, YOURII MARTYNOV, STEVEN L. KONSEK, and
PETER JESPER HANBERG
Appeal2017-004166
Application 14/664,158
Technology Center 2800
Before MARK NAGUMO, DONNA M. PRAISS, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
February 19, 2016 decision finally rejecting claims 1-3 and 5-10 ("Final
Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm-in-part.
1 The applicant under 3 7 C.F .R. § 1.46 and hence the Appellant, is the Real
Party in Interest, identified as QUNANO AB (Appeal Br. 2).
Appeal2017-004166
Application 14/664,158
CLAIMED SUBJECT MATTER
Appellants' disclosure is directed to a method of fabricating a
nanostructured light emitting diode (LED) device (Spec. 2 2). The
nanostructured LED device comprises an array of a plurality of individual
nanostructured LEDs with an electrically conductive, transparent indium tin
oxide (ITO) layer on the LEDs (Spec. 14). The device also has a continuous
reflector layer over the ITO layer, the reflector layer having a plurality of
concave portions so that each concave portion is associated with an
individual nanostructured LED (Spec. 13-14). Appellants state that the
transparent ITO material forms a better Ohmic contact to doped
semiconductor volume elements ( e.g., GaN volume elements) of nano wire
LEDs than conductive reflector materials (Appeal Br. 6). Therefore,
according to Appellants, the transparent indium tin oxide is located between
the nanowire LED volume elements and the conductive reflector layers to
achieve an improved Ohmic contact to the nanowire LEDs (id.).
Details of the claimed fabrication method are set forth in independent
claim 1, which is reproduced below from the Claims Appendix of the
Appeal Brief ( emphasis added):
1. A method of fabricating a nanostructured LED device
comprising a plurality of individual nanostructured LEDs,
comprising the steps of:
(a) defining growth positions on a substrate by lithography;
(b) growing semiconductor nano wires of a first conductivity
type from the substrate on the defined growth positions,
growing well active regions over the semiconductor
2 Substitute Specification, filed January 20, 2016.
2
Appeal2017-004166
Application 14/664,158
nanowires, and growing semiconductor volume elements of a
second conductivity type over the well active regions to form
the individual nanostructured LEDs on the defined growth
positions, each individual nanostructured LED having a p-i-n
junction;
( c) depositing an electrically conductive, transparent indium tin
oxide layer over the individual nanostructured LEDs; and
( d) depositing a continuous reflector layer having a plurality of
concave portions on the electrically conductive, transparent
indium tin oxide layer at least over a top of the individual
nanostructured LEDs, wherein each of the concave portions of
the continuous reflector layer is associated with an individual
nanostructured LED of the plurality of individual
nanostructured LEDs.
REJECTIONS
I. Claim 10 is rejected under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement.
II. Claims 1-3 and 5-10 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Okuyama 3 in view of Kim 4 as supported by Scifres. 5
3 Okuyama et al., US 2005/0145865 Al, published July 7, 2005.
4 Kim et al., US 2005/0184951 Al, published August 25, 2005.
5 Scifres, US 4,287,427, issued September 1, 1981.
3
Appeal2017-004166
Application 14/664,158
DISCUSSION
Rejection I. Appellants do not argue against Rejection I (Appeal Br.
14). 6 Accordingly, we summarily affirm this rejection.
Rejection II. The Examiner finds, and Appellants do not dispute, that
Okuyama teaches claimed steps (a) and (b) (Final Act. 3--4). With regards to
claimed step ( c ), the Examiner finds that Okuyama discloses depositing an
electrically conductive tri-layer 18 (made ofNi/(Ag or Pt)/ Au) over the
individual nanostructured LED's, this tri-layer including one layer made of
nickel, which is not an ITO material (Final Act. 4, citing Okuyama ,r 13 5
and FIG. 5B; Ans. 7):
Fig. 58 15(n) 19 13 14
i:=======!::::~~--=:::!:!:::==±=;:.::::i_ 12(n)
11
Okuyama's FIG. 5B shows a step in the process of making an embodiment
of Okuyama's device
The Examiner further finds that Okuyama teaches forming electrically
conductive, transparent layer 19 from an ITO material, and that ITO is well
known for use as an electrode material (Final Act. 4; Ans. 7; see also
Okuyama ,r 150). The Examiner states that it would have been obvious to
6 Appellants note that they submitted an amendment after the Final Rejection
to address this rejection, but the amendment was not entered. App. Br. 14;
Ans. 16.
4
Appeal2017-004166
Application 14/664,158
replace the nickel portion of tri-layer 18 in Okuyama's device with ITO "in
order to improve the conductivity characteristics of the device by using well
known and conventional electrically conductive, transparent material" (Final
Act. 4; Ans. 7). The Examiner further explains the reason to make the
required substitution of ITO for the nickel layer in component 18: using
ITO instead of nickel would improve the adhesion between the conductivity
Ag and/or Pt and Au layers and the semiconductor material, which would
have improved the overall conductivity characteristics of the device, even
though ITO is not as conductive as nickel (Ans. 10-11 ). In this regard, the
Examiner finds that it was well known in the art that ITO promotes good
adhesion to semiconductor materials (Ans. 12). However, the Examiner
does not provide specific evidence to support this finding. 7
Appellants argue that the Examiner has not identified an adequate
reason to replace one of the top reflector layers with a transparent material
(ITO) (Appeal Br. 7-8). Appellants contend that the top layer 18 is a
reflective layer because Okuyama's LED is designed to emit its light from
the bottom, through electrode 19 (which can be made of ITO) (Appeal Br.
8). Appellants argue that the Examiner has not identified an adequate reason
why a person of skill in the art would have sought to have included a
transparent material in a component which is a reflector which does not
transmit light (id.).
Although the Examiner asserts that the reason to make the necessary
substitution (i.e. ITO for nickel) is for improved adhesion, the Examiner has
not provided persuasive evidence that ITO provides improved adhesion
7 In the Answer, apparently for the first time, Official Notice is taken that the
adhesive properties of ITO were well known (Ans. 12-13).
5
Appeal2017-004166
Application 14/664,158
relative to nickel. The Official Notice taken by the Examiner pertains only
to the fact that ITO is adhesive, not that it is more adhesive than nickel,
which is used in Okuyama.
Accordingly, we agree with Appellants that the Examiner has not
provided an adequate reason why a person of skill in the art would have
substituted ITO in the nickel layer of a reflective coating in Okuyama's
device, necessitating a reversal of this rejection.
With regards to claimed step ( d), the Examiner provides two
alternative explanations of why this step would have been obvious in view
of the art. First, the Examiner finds that the Ag/Pt and Au sub layers of
Okuyama's layer 18 correspond to the claimed "continuous reflector layer
having a plurality of concave portions on the electrically conductive,
transparent [indium tin oxide] layer at least over a top of the individual
nanostructured LEDs" (Final Act. 4--5). Second, the Examiner finds that
this step would have been obvious in view ofOkuyama's FIG. 15 in
combination with the disclosure of Kim (Final Act. 5---6).
Appellants do not appear to have directly addressed the first
explanation of why claimed step ( d) would have been obvious ( that the
Ag/Pt and Au sublayers of Okuyama's layer 18 correspond to the claimed
"continuous reflector layer having a plurality of concave portions on the
electrically conductive, transparent indium tin oxide layer at least over a top
of the individual nano structured LEDs") and, therefore, on this record, have
not shown error in that finding. 8
8 We note that the Examiner has not provided a detailed explanation of how
Okuyama's individual layers 18 (as shown, for example, in FIGS. 5B, 12,
and 13) correspond to the claimed continuous reflector layer. Nor has
6
Appeal2017-004166
Application 14/664,158
In connection with the second explanation of why step ( d) would have
been obvious, Appellants argue, inter alia, that (a) Okuyama (which relates
to LED devices) and Kim ( which, according to Appellants, pertains to a
fluorescent lighting fixture) are non-analogous art and not, therefore,
properly combinable, and (b) Okuyama's component 22 is wire and not a
reflector as required by step ( d) of the claim ( Appeal Br. 10-12 ).
However, because Appellants did not address the Examiner's first
explanation of why step ( d) would have been obvious, the Examiner did not
address the arguments made by Appellants in connection with the second
explanation.
Accordingly, and in view of our determination that Appellants have
otherwise shown error in the rejection, we decline to address the specific
issue of whether Appellants have shown reversible error in the Examiner's
second explanation of why claimed step ( d) would have been obvious.
CONCLUSION
We AFFIRM the rejection of claim 10 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
We REVERSE the rejection of claims 1-3 and 5-10 under
35 U.S.C. § 103(a) as unpatentable over Okuyama in view of Kim as
supported by Scifres.
Appellant or the Examiner provided a construction for the term "continuous"
as used in "continuous reflector layer".
7
Appeal2017-004166
Application 14/664,158
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
8