INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Dec 24, 2020

2020000673 (P.T.A.B. Dec. 24, 2020)

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.
14/795,405 07/09/2015 Ning Li YOR920150556US1
(163-1007
1092
49267 7590 12/24/2020
Tutunjian & Bitetto, P.C.
401 Broadhollow Road
Suite 402
Melville, NY 11747
EXAMINER
VAN ROY, TOD THOMAS
ART UNIT PAPER NUMBER
2828
NOTIFICATION DATE DELIVERY MODE
12/24/2020 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):
docketing@tb-iplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NING LI and DEVENDRA K. SADANA
____________

Appeal 2020-000673
Application 14/795,405
Technology Center 2800
____________

Before JEFFREY R. SNAY, BRIAN D. RANGE, and
LILAN REN, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s final decision rejecting claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies International Business Machines Corporation as
the real party in interest. Appeal Br. 2.
Appeal 2020-000673
Application 14/795,405
2
BACKGROUND
The invention relates to nanolasers. Spec. ¶ 1. Nanolasers formed
from III-V materials such as GaAs on a silicon substrate exhibit a defect
density due to differences in the materials. Id. 4. The Specification
describes a nanolaser and fabrication method in which a laser region size is
determined based on a defect density to ensure the laser is substantially
defect free. Id. ¶¶ 6. 14. Claim 1 reads:
1. A nanolaser, comprising:
a silicon substrate;
at least one III-V layer formed on the silicon substrate
having a defect density due to differences between the III-V and
silicon materials; and
a laser device formed on or in the at least one III-V layer,
the laser device having a side length that is smaller than an
average distance between defects as determined based upon a
numerical value representing the defect density.
Appeal Br. 20 (Claims Appendix).
Claim 9 recites a nanolaser device similar to that of claim 1. Claim 17
recites a method for fabricating a nanolaser having a laser device size similar
to that of claim 1. Each remaining claim on appeal depends from claim 1, 9,
or 17.
REJECTION
Claims 1–20 stand rejected under 35 U.S.C. § 103 as unpatentable
over Koike2 and Yanashima.3

2 US 2001/0002048 A1, published May 31, 2001.
3 US 2010/0317136 A1, published December 16, 2010.
Appeal 2020-000673
Application 14/795,405
3
OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
Each independent claim on appeal includes a recitation regarding a
laser device having a side length that is “smaller than an average distance
between defects.” The Examiner’s rejection as applied to each independent
claim is premised on a finding that Yanashima teaches forming a laser
device having a recited side length smaller than an average distance between
defects in a III-V layer. Final Act. 4 (citing Yanashima ¶ 253, Fig. 33).
Particularly, referring to Yanashima’s Figure 33, the Examiner states “the
side length of the laser device is smaller than the average distance between
defects (as measured from 1 region ‘B’ to the next region ‘B’).” Ans. 8.
Appellant contends “the distance between regions B [in Yanashima] is
a very different measure from ‘an average distance between defects’ as
recited.” Appeal Br. 13. Rather, according to Appellant, Yanashima teaches
forming regions A having low dislocation density and regions B having
Appeal 2020-000673
Application 14/795,405
4
relatively higher dislocation density. Id. at 11. “The locations of regions B
are selected to accommodate a laser stripe 3 of a required size.” Id. (citing
Yanashima ¶ 45). Appellant argues Yanashima’s selected distance between
regions B has “nothing to do with ‘an average distance between defects as
determined based upon a numerical value representing the defect density’ as
recited in claim 1.” Id. at 12.
Appellant’s argument is persuasive of reversible error. There is no
dispute Yanashima’s layer includes both low defect density regions and high
defect density regions. As Appellant correctly observes, Yanashima
provides a GaN substrate comprising a region A having a low average
dislocation density and multiple regions B having higher average dislocation
densities. See Yanashima ¶ 252. “The regions B are periodically arranged
in the region A in a hexagonal lattice shape.” Id. Thus, the distance
between Yanashima’s regions B merely corresponds to a selected distance
between relatively high dislocation density regions within a relatively low
dislocation density region. See Yanashima Fig. 1A, ¶ 253 (“The
arrangement period of the regions B (for example, the interval between the
centers of the most adjacent regions B) is for example 400 µm.”). The
relied-upon teachings in Yanashima do not support the finding that the
distance between Yanashima’s regions B would have corresponded to an
“average distance between defects” in the III-V layer, as recited in claim 1.
The Examiner does not address the average distance between defects in
Yanashima’s III-V layer, including both low defect density regions A and
high defect density regions B. Accordingly, we are persuaded the Examiner
does not identify evidence to show Yanashima discloses the recited laser
device side length smaller than an average distance between defects.
Appeal 2020-000673
Application 14/795,405
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For the foregoing reasons, we are persuaded the Examiner does not
identify evidence sufficient to support the determination of obviousness.
The rejection of claims 1–20 is not sustained.
CONCLUSION
The Examiner’s decision rejecting claims 1–20 is reversed.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 103 Koike, Yanashima 1–20

REVERSED