Ex Parte Beeson et al

Patent Trials and Appeals Board

May 27, 2014

11389201 - (D) (P.T.A.B. May. 27, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/389,201 03/24/2006 Karl W. Beeson KB16 2223
7590 05/27/2014
William Propp, Esq.
Goldeneye, Inc.
Suite 233
9747 Businesspark Avenue
San Diego, CA 92131
EXAMINER
HSIEH, HSIN YI
ART UNIT PAPER NUMBER
2811
MAIL DATE DELIVERY MODE
05/27/2014 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 KARL W. BEESON, SCOTT M. ZIMMERMAN, and
WILLIAM R. LIVESAY

_________________

Appeal 2011-006414
Application 11/389,201
Technology Center 2800
_________________

Before RICHARD TORCZON, DEBORAH KATZ, and HUNG H. BUI,
Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL

App
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Appeal 2011-006414
Application 11/389,201

3
Figure 3B depicts light extracting elements (302) (Spec., ¶ 0092)
along with a first reflecting electrode (102), a second reflecting electrode
(306) and a multilayer semiconductor structure (104), which includes an
active region (110), a first doped semiconductor layer (108) and second
doped semiconductor layer (112) (id., ¶¶ 0088-0089).
Claim 1
Appellants’ claim 1, the only independent claim presented, recites:
A light emitting diode comprising:
a multi-layer semiconductor structure having a first doped
semiconductor layer, an active region and a second doped
semiconductor layer, said first doped semiconductor layer and
said second doped semiconductor layer having opposite n and p
conductivity types;
an array of light extracting elements on a first portion of said
first doped semiconductor layer extending at least partially into
said multi-layer semiconductor structure, said array of light
extracting elements transmitting externally incident light into
said multi-layer semiconductor structure or transmitting the
externally incident light from said multi-layer semiconductor
structure;
a first reflecting electrode on a second portion of said first
doped semiconductor layer, said second portion of said first
doped semiconductor layer being different from said first
portion of said first doped semiconductor layer, said first
reflecting electrode reflecting the externally incident light;
a second reflecting electrode on said second doped
semiconductor layer, said second reflecting electrode reflecting
the externally incident light transmitted through said multi-layer
semiconductor structure, wherein said second reflecting
electrode has a first transparent layer of said second reflecting
electrode and a reflecting metal layer of said second reflecting
electrode and wherein said first transparent layer of said second
reflecting electrode is between said reflecting metal layer of
said second reflecting electrode and said second doped
semiconductor layer;
Appeal 2011-006414
Application 11/389,201

4
wherein said active region emits internally generated light in
an emitting wavelength range when a voltage is applied
between said first reflecting electrode and said second reflecting
electrode; said internally generated light being either emitted
through said array of light extracting elements, reflected by said
first reflecting electrode or reflected by said second reflecting
electrode; and
wherein said multi-layer semiconductor structure has an
absorption coefficient less than 50 cm-1 in the emitting
wavelength range of the internally generated light and wherein
said light emitting diode reflects the externally incident light
with a reflectivity greater than 60 percent.

(App. Br. 20-21, Claims App’x.)
The Examiner rejected independent claim 1, as well as claims 6, 7,
9-11, 15, and 16, which depend on claim 1, under 35 U.S.C. § 103(a) as
being obvious over Yoshitake1, Slater2, and Schad3. (Ans. 4-9.) Appellants
do not argue for the separate patentability of the dependent claims.
Accordingly, we focus on the rejection of claim 1, as representative. See
37 C.F.R. § 41.37(c)(iv).
Yoshitake teaches a green-color light emission LED semiconductor,
which is depicted in cross-section in Figure 1 (Yoshitake, ¶ 0012),
reproduced below.

1 Yoshitake, Patent Application Publication No. 2003/0132445 A1, published
July 17, 2003.
2 Slater, Patent Application Publication No. 2002/0123164 A1, published
September 5, 2002.
3 Schad, “Absorption in InGaN-on-sapphire LED-structures: Comparison
between Photocurrent Measurement Method (PMM) and Photothermal
Deflection Spectroscopy (PDS),” Proceedings of SPIE Vol. 5366, 109-117,
published June 21, 2004.
App
App

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06414
/389,201
shitake de
) between
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externally
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. (Ans. 7-
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7) that allo
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at the “lig
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or with a n
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Examiner
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of 37-54 c
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Appellant
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, and (22)
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m-1
e is not
s’ claimed
,

Appeal 2011-006414
Application 11/389,201

6
light emitting diode, because the surface is two layers away from the
semiconductor layer. (App. Br. 13.)
We agree with the Examiner that claim 1 does not limit the array of
light extracting elements to being formed directly on the first doped layer
and does not preclude the existence of intervening layers between the first
doped layer and the array of light extracting elements. (Ans. 13.) Though
Appellants’ Specification provides that “[t]he first reflecting electrode 102
has a first, inner or lower surface 130, deposited or fabricated on the first
surface 128 of the first doped semiconductor layer 108 . . .” (Spec.,
¶ 0046 (emphasis added)), Appellants’ claims do not include the limiting
language “deposited” or “fabricated” to describe the arrangement of the
reflecting electrode and the first doped semiconductor layer.
Instead, we interpret the term “on” broadly, without importing limitations
from the specification that do not appear in the claim. See In re Prater, 415
F.2d 1393, 1396 (CCPA 1969) (“We are not persuaded by any sound reason
why, at any time before the patent is granted, an applicant should have
limitations of the specification read into a claim where no express statement
of the limitation is included in the claim.”); see AFG Indus., Inc. v. Cardinal
IG Co., 239 F.3d 1239, 1250-51 (Fed. Cir. 2001) (“formed on” does not
require “formed directly on” in a multi-layer coating). Appellants do not
direct us to a clear definition in the written description or to comparable
evidence to persuade us that one of skill in the art would have interpreted the
claim term “on” to exclude the arrangement of Yoshitake’s layer 17, which
is on top of semiconductor layer 14.
Appellants also argue that Yoshitake does not discuss reflection or
transmission of externally incident light or show such light in the figures it
Appeal 2011-006414
Application 11/389,201

7
provides, and that, therefore, a reflecting electrode is not taught by
Yoshitake. (App. Br. 13-14.)
We are not persuaded by Appellants’ arguments. The Examiner finds
that because light is emitted from layer 17, it is also must be transmitted
externally, (Ans. 14, citing Yoshitake at paragraph 37, which discusses light
“emitted” from the surface of layer 17; see also Yoshitake, ¶ 0034.)
Appellants do not argue or direct us to evidence showing that external light
cannot be transmitted through layer 17 of Yoshitake. Thus, the Examiner’s
finding that layer 17 inherently externally transmits light is supported on the
record even if Yoshitake does not expressly show the light rays in its figures.
See MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1366 (Fed. Cir.
1999) (“Where . . . the result is a necessary consequence of what was
deliberately intended, it is of no import that the article's authors did not
appreciate the results.”).
We are also not persuaded by Appellants’ arguments that Yoshitake
does not teach reflection of externally incident light because aluminum is not
inherently reflecting. (App. Br. 13-14.) We note, first, that Appellants do
not direct us to evidence in support of this argument. “Argument of counsel
cannot take the place of evidence lacking in the record.” Meitzner v.
Mindick, 549 F.2d 775, 782 (CCPA 1977). In addition, we note that
dependent claim 9 limits the claimed reflecting metal layer of the second
reflecting electrode to aluminum or silver, with no other limitations on the
type of aluminum. (See App. Br. 22.) Accordingly, if Appellants now argue
that aluminum is non-reflecting, claim 9 is not operative for part of its scope.
Furthermore, Yoshitake teaches that electrodes 21 and 22 are made of
gold with either zinc or germanium (Yoshitake, ¶ [0035]), which the
Appeal 2011-006414
Application 11/389,201

8
Examiner finds to be reflective metals. (Ans. 5 and 14.) In light of
Appellants’ Specification, which reports that gold is reflective, albeit
“relatively poorly,” in the order of 35% in the blue region of the optical
spectrum (Spec., ¶ [0022]), we are not persuaded that a person having
ordinary skill in the art would consider the electrodes of Yoshitake to be not
reflective. Because Appellants’ claim 1 requires a reflectivity of greater
than 60 percent for the entire LED, but does not specify a minimum degree
of reflectivity for the separate electrodes, we are persuaded that electrodes
21 and 22 of Yoshitake teach the claimed reflective electrodes.
Appellants also argue that “[t]he Office Action is implying gallium
nitride properties from Schad to a gallium arsenide semiconductor structure
of Yoshitake.” (App. Br. 15.) This argument does not address the
Examiner’s rejection. The Examiner does not rely on Schad to imply
anything about the properties of the semiconductor structure of Yoshitake.
Instead, the Examiner relies on Schad to show that those of skill in the art
would have considered it obvious to modify the semiconductor of Yoshitake
by using an InGaN material diode to generate light in order to achieve an
absorption coefficient of less than 50 cm-1. (Ans. 8 and 14-15.)
None of Appellants’ arguments persuade us that the Examiner erred in
rejecting claim 1, or claims 6, 7-11, and 15-16, under 35 U.S.C. § 103(a)
over the combination of Yoshitake, Slater, and Schad.
Appeal 2011-006414
Application 11/389,201

9
Claims 2-5 and 12
We note that Appellants put forth similar arguments against the
rejection of claims 2-5 and 12 over Yoshitake, Slater, Schad, and Stokes4.
(App. Br. 15-17; see Ans. 9-10.) Because, as explained above, the
combination of Yoshitake, Slater, and Schad teach an LED with layers that
reflect externally incident light, elements that extract light, and diode
materials within the recited range of absorption coefficient, we are not
persuaded that the Examiner erred.
Claim 8
The Examiner also rejected claim 8 under 35 U.S.C. § 103(a) as being
obvious over Yoshitake, Slater, Schad, Horng5 and Ho.6 (Ans. 10-11.)
Claim 8 recites an LED with a transparent layer of porous conductive oxide.
(App. Br. 22.) Appellants argue that the prior art must teach an LED with a
first transparent layer separate from a second reflecting electrode but that
Horng does not teach a separate transparent dielectric material layer. (App.
Br. 17.) We do not agree with Appellants that their claims require the
transparent layer to be separate from the reflecting electrode. Instead, claim
1 recites a second reflecting electrode “ha[ving] a first transparent layer of
said second reflecting electrode . . . .” (App. Br. 20.) Accordingly, the
broadest reasonable interpretation of the claim 1 is that the transparent layer
can be part of the second reflecting electrode.

4 Stokes, Patent Application Publication No. 2005/0087884, published April
28, 2005.
5 Horng, US Publication No. 2003/0085851 A1, published May 8, 2003.
6 Ho, “Low Dielectric Constant Materials for IC Applications,” 13-14,
Springer, published 2003.
Appeal 2011-006414
Application 11/389,201

10
Appellants also argue that Ho does not teach that porous materials are
suitable as dielectric layers in the claimed invention. (App. Br. 18.)
Because Horng teaches that low dielectric materials are suitable (Horng,
¶ [0031]) and Ho teaches that such materials can be made by fabricating
porous materials (Ho, p. 14), Appellants have not persuaded us that the
Examiner erred. (See Ans. 11.)
Claims 13 and 14
The Examiner also rejected claims 13 and 14 under 35 U.S.C.
§ 103(a) as being obvious over Yoshitake, Slater, Schad, and Rooman7.
(Ans. 11-12.) Appellants argue that the metal grid of Rooman would not fit
on the jagged light pickup surface of Yoshitake, but would block the light
emission from the surface of Yoshitake. (App. Br. 19.) The Examiner cited
Rooman to show that those of skill in the art would have considered the
claimed arrangement of layers and plurality of contacts obvious from the
teachings of the prior art. (Ans. 12.) “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference . . . . Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellants have not argued or directed us to persuasive evidence that even if
the exact grid of Rooman would not fit with the exact surface of Yoshitake,
those of skill in the art would not have considered it obvious to modify the
arrangement and contacts of the LED of Yoshitake in light of Rooman.

7 Rooman, “Wafer-bonded thin-film surface-roughened light emitting
diodes,” Proceedings of SPIE Vol. 4996, 40-45, published July 2003.
Appeal 2011-006414
Application 11/389,201

11
In summary, Appellants have not persuaded us that the Examiner
erred in rejecting any of Appellants’ claims.

CONCLUSION
Upon consideration of the record and for the reasons given, the
rejections of Appellants’ claims 1-16 are sustained.
Therefore, we affirm the decision of the Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED
cam