Ex Parte Sato et al

Patent Trial and Appeal Board

May 31, 2013

10495865 (P.T.A.B. May. 31, 2013)

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.
10/495,865 10/15/2004 Yoshifumi Sato SON-2808 8027
7590 05/31/2013
Ronald P Kananen
Rader Fishman & Grauer
Suite 501
1233 20th Street NW
Washington, DC 20036
EXAMINER
GOLUB-MILLER, MARCIA A
ART UNIT PAPER NUMBER
2828
MAIL DATE DELIVERY MODE
05/31/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOSHIFUMI SATO and DAISUKE IMANISHI
____________

Appeal 2011-007513
Application 10/495,865
Technology Center 2800
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007513
Application 10/495,865
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 32-50. Claims 1-31 were cancelled during prosecution. We have
jurisdiction under 35 U.S.C. § 6(b). Appellants appeal therefrom under 35
U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
Appellants’ claimed invention is directed to a semiconductor laser
device and its manufacturing method. (Spec. 1). Independent claim 32,
reproduced below, is representative of the subject matter on appeal:
32. A semiconductor laser device comprising:

an active layer between a clad layer of a first conductive
type and a clad layer of a second conductive type;

an etching stop layer between said clad layer of the
second conductive type and another clad layer of the second
conductive type;

a protective layer between said another clad layer and a
contact layer, said contact layer being between said protective
layer and a p-side electrode,

wherein said p-side electrode is in direct contact with said
etching stop layer.

(Disputed limitation emphasized).

Appeal 2011-007513
Application 10/495,865
3
REJECTION
The Examiner rejected claims 32-50 under 35 U.S.C. § 103(a) as
being unpatentable over Applicants’ Admitted Prior Art (hereinafter AAPA),
and Ho (US 6,174,747 B1).

PRINCIPLES OF LAW
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Attorney “argument … cannot take the place of evidence.” In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974). See, e.g., In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997) (attorney arguments or conclusory
statements are insufficient to rebut a prima facie case).

ANALYSIS
We disagree with Appellants' contentions regarding the Examiner's
obviousness rejection of the claims. We adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2), the reasons set forth by the Examiner in the Answer in
response to arguments made in Appellants' Appeal Brief. (Ans. 6-11). We
highlight and address specific findings and arguments below.

CLAIM 32
Issue: Under § 103, did the Examiner err in finding the
cited references, either alone or in combination, would have
taught or suggested "wherein said p-side electrode is in direct
Appeal 2011-007513
Application 10/495,865
4
contact with said etching stop layer," within the meaning of
representative claim 32?
Appellants contend:
Specifically, the Examiner's Answer fails to identify any
objective evidence for showing that changing the doping
concentrations of the contact layer 509 and cladding layers 507
and 505 of AAPA would have been known in the art.
Likewise, the Examiner's Answer fails to identify any
objective evidence for showing that the removal of the current
blocking layer 510 of AAPA would have been known in the art.
(Reply Br. 6).
Appellants also contend “no reference has been cited by the
Examiner's Answer for showing the presence of the p-side electrode being in
direct contact with an etching stop layer.” (Reply Br. 13).
Appellants' contentions are not persuasive because the Examiner relies
on the combination of Ho and AAPA to teach or suggest the limitation at
issue. (Ans. 3, 7-8). Appellants consider the teachings of the references in
isolation. Thus, Appellants have not specifically rebutted the Examiner's
ultimate legal conclusion of obviousness which is based on the combined
teachings and suggestions of Ho and AAPA. (See Merck 800 F.2d at 1097;
Ans. 3, 7-8). The Examiner finds Ho teaches or suggests:
[Ho] col. 2 ln. 56-58 [] discloses making the top layers
[50,48,46] of the ridge structure with a progressively higher
concentration of carriers (holes). Such doping of the layers
forces the current to be confined to the area under the ridge,
thereby eliminating the need for a current blocking layer
(abstract of '747). Also, col. 2 ln. 3-7 of '747 disclose that
fabrication of the conventional laser device that includes a
current blocking layer is complex, consisting of 13 steps and
taking 2 days to accomplish. Eliminating the current blocking
layer [510] from the laser structure of the AAPA brings the p-
Appeal 2011-007513
Application 10/495,865
5
side electrode [511] in direct contact with the etching stop layer
[506].
(Ans. 7).
The Examiner concludes, and we agree:
[I]t would have been obvious for o]ne skilled in the art [to]
incorporate[] the teaching of '747 ([Ho] abstract, col. 2[,] ln. 56-
58) by changing the doping concentrations of the [AAPA]
contact layer 509 and cladding layers 507 and 505 and
eliminating the current blocking layer 510. One skilled in the
art would make the carrier concentration of the layer 509 higher
than the carrier concentration of the layer 507, and the carrier
concentration of the layer 507 higher than the carrier
concentration of the layer 505. These changes would force the
current to flow through the top of ridge structure only, thereby
eliminating the need for the current blocking layer 510 on the
sides of the ridge. When the current blocking layer 510 is not
formed, the p-side electrode 511 is in direct contact with the
etching stop layer 506.
(Ans. 7).
Appellants have failed to present substantive arguments and
supporting evidence rebutting the Examiner's underlying factual findings and
ultimate legal conclusion of obviousness. (Ans. 3, 7-8; Geisler, 116 F.3d at
1470). For these reasons, on this record, we are not persuaded of Examiner
error.

CLAIM 35
Appellants contend Ho would not have taught or suggested “a stripe
width of said ridge is 10 µm or more,” as recited in claim 35. (Reply
Br. 17).

Appeal 2011-007513
Application 10/495,865
6
The Examiner finds:
a teaching in the [Ho] reference suggest[s] that under specific
doping conditions, which were incorporated into the primary
reference in the rejection of claims 32, 49 and 50, the
dimensions of the ridge waveguide do not affect the current
flow and therefore can be made in any desirable width.
(Ans. 9, emphasis added; see also Ho, col. 4, ll. 9-10).
“Where a claimed range overlaps with a range disclosed in the prior
art, there is a presumption of obviousness.” Ormco Corp. v. Align
Technology, Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006) (citations omitted).
The overlap need not be substantial to trigger the presumption. In re
Geisler, 116 F.3d at 1469.
We conclude that claim 25’s stripe width range of “10 µm or more”
overlaps Ho's disclosed range. Ho teaches “the flow of current is restricted
within the region of the ridge waveguide no matter what the width of the
ridge waveguide is.” (Ho, col. 4, ll. 9-10). Thus, because of the overlap in
range, we agree with the Examiner’s legal conclusion that claim 35 is
obvious in view of Ho, when combined with AAPA. See Ormco, 463 F.3d at
1311.
Appellants contend that “[a]n exception to the ‘optimization’" rule is
where the parameter optimized was not recognized in the prior art as one
that would affect the results. Ex parte Whalen, 89 USPQ2d 1078, 1083 (Bd.
Pat. App. & Int. 2008).” (Reply Br. 17). Appellants appear to further
contend that because the claimed stripe width was not recognized as
affecting the results, that it is not obvious to optimize the stripe width. (Id.).
Appeal 2011-007513
Application 10/495,865
7
Appellants’ contentions are not persuasive because the Examiner does not
rely on optimizing the strip width to achieve a result. (Ans. 9). For these
reasons, on this record, we are not persuaded of Examiner error.

CLAIM 46
Issue: Under § 103, did the Examiner err in finding the
cited references, either alone or in combination, would have
taught or suggested “said another clad layer is made of p-
AlInP,” within the meaning of claim 46?
Appellants contend “AAPA does not disclose . . . another clad layer
being made of p-AlInP.” (Reply Br. 18; 20-21). Appellants contend that
Ho “fails to disclose, teach, or suggest the presence of another clad layer”
(Id.).
Appellants' contentions are not persuasive because Appellants
consider the teachings of the references separately. (See In re Merck & Co.,
Inc., 800 F.2d at 1097). The Examiner concludes it would have been
obvious to change the composition of APPA’s “another clad layer” to “p-
AlInP” as taught or suggested by Ho's p-AlInP clad layer. (Ans. 6). The
Examiner concludes this selection of a known suitable material is an obvious
design choice. (Id.). We find such substitution of one familiar element for
another known element would have yielded a predictable result.1 Moreover,
Appellants do not present substantive arguments and supporting evidence

1 “[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), citing United States v.
Adams, 383 U. S. 39, 50-51 (1966).
Appeal 2011-007513
Application 10/495,865
8
rebutting the Examiner's underlying findings of fact and ultimate conclusion
of obviousness. (Ans. 6). For these reasons, on this record, we are not
persuaded of Examiner error.

CLAIM 49
Issue: Under § 103, did the Examiner err in finding the
cited references, either alone or in combination, would have
taught or suggested “a carrier concentration of said contact
layer is higher than a carrier concentration of said another clad
layer,” within the meaning of claim 49?
The Examiner finds:
the primary reference [AAPA] already discloses first and
second p-type clad layers 507 and 505. Furthermore, col. 2 lines
56-58 of [Ho] provides a teaching of making the top layers [50,
48, 46] of the ridge structure with a progressively higher
concentration of carriers (holes). [Ho] teaches a semiconductor
laser device wherein a carrier concentration of the contact layer
[50] is higher than a carrier concentration of the clad layer [46].
Therefore, the teaching of [Ho] is applicable to the second clad
layer as well.
(Ans. 10).
Appellants contend “the Examiner's Answer fails to show how and
why the skilled artisan would have considered the impurity concentrations of
first and second p-type clad layers 507 and 505 of AAPA to have been one
in the same.” (Reply Br. 21).
Appellants' contentions are not persuasive. The Examiner concluded
it would have been obvious to one skilled in the art to make the
“concentration of said contact layer [] higher than a carrier concentration of
said another clad layer” because Ho teaches making the upper layers (e.g.,
contact layer) a higher carrier concentration than the lower layers, such as
Appeal 2011-007513
Application 10/495,865
9
another clad layer. (Ans. 10). Moreover, Appellants do not present
substantive arguments and supporting evidence rebutting the Examiner's
supporting findings of fact and ultimate conclusion of obviousness. For
these reasons, on this record, we are not persuaded of Examiner error.

CLAIM 50
Appellants argue claim 50 is patentable for the reasons argued for
parent claim 32. (Ans. 23). However, we are not persuaded of Examiner
error regarding the rejection of claim 50 for the same reasons given above
regarding claim 32.

DECISION
The Examiner’s decision rejecting claims 32-50 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)(iv).

ORDER
AFFIRMED

pgc