Ex Parte Harle et al

Patent Trial and Appeal Board

Feb 27, 2015

11904203 (P.T.A.B. Feb. 27, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VOLKER HARLE, CHRISTINE HOSS, ALFRED LELL,
and UWE STRAUSS

Appeal 2013-003062
Application 11/904,203
1

Technology Center 2800
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
KIMBERLY J. McGRAW, Administrative Patent Judges.

McGRAW, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the decision
of the Primary Examiner finally rejecting claims 1–3, 5, 6, 9–17, 24, and 25.
Br. 4, 7, 10. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1
Appellants identify Osram Opto Semiconductors GmbH as the real
party in interest. App. Br. 2.
Appeal 2013-003062
Application 11/904,203

2
BACKGROUND
Appellants’ invention is directed to optoelectronic components, such
as a semiconductor laser device or an LED, and to methods of making such
components. Br. A-1, A-4 (Claims App’x); Spec. ¶ 3.
Claims 1 and 17 are the only independent claims on
appeal and are reproduced below.
1. A method for producing an optoelectronic
component, comprising
providing a semiconductor layer sequence having at least
one active region, wherein the at least one active region emits
electromagnetic radiation during operation; and
applying at least one layer on a first surface of the
semiconductor layer sequence by an ion assisted application
method, wherein
material applied by the ion assisted application method is
one of:
ionized and accelerated in an electric field towards the
semiconductor layer sequence and
accelerated by at least one of an ionized gas and an
ionized gas beam,
the first surface comprises a radiation exit area, and
applying the at least one layer on the first surface
includes applying a plurality of layer pairs, each of said layer
pairs including a first layer and a second layer.

17. An optoelectronic component, prepared by a
process
providing a semiconductor layer sequence having at least
one active region, wherein the at least one active region emits
electromagnetic radiation during operation; and applying at
least one layer on a first surface of the semiconductor layer
sequence by an ion assisted application method, wherein
material applied by the ion assisted application method is
one of:
ionized and accelerated in an electric field towards the
semiconductor layer sequence and
Appeal 2013-003062
Application 11/904,203

3
accelerated by at least one of an ionized gas and an
ionized gas beam, such that
the at least one layer has a peak-to-peak roughness of less
than approximately 4 nm,
the first surface comprises a radiation exit area, and
the applying the at least one layer on the first surface
includes applying a plurality of layer pairs, each of said layer
pairs including a first layer and a second layer.

REJECTIONS
R1. Claims 1–3, 5, 6, 9–13, and 16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ochiai (US 2007/0025231 A1, published Feb.
1, 2007) and Parriaux (US 6,680,799, issued Jan. 20, 2004). Ans. 4.
R2. Claims 17 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ochiai and Murakami (US 6,441,963 B2, issued Aug. 27,
2002). Ans. 10.
R3. Claims 14 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ochiai, Parriaux and Chakrabarti (US 5,802,091, issued
Sept. 1, 1998) as applied to claims 1 and 12. Ans. 14.
R4. Claim 15 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ochiai, Parriaux, and Den Baar (US 7,084,436 B2, issued
Aug. 1, 2006) as applied to claim 2. Ans. 15.
Appellants do not present separate arguments specifically directed to
the dependent claims under rejection. Br. 4–10. Therefore, the dependent
claims will stand or fall with their parent independent claims. 37
C.F.R.§ 41.37(c)(vii) (2011).

Appeal 2013-003062
Application 11/904,203

4
ANALYSIS
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the above rejections for essentially those
reasons expressed in the Answer, including the Response to Argument
section with the following comments added for emphasis.
Claim 1
Appellants argue the Examiner erred in rejecting independent claim 1
because the cited art does not teach or suggest “applying at least one layer
on a first surface of the semiconductor layer sequence by an ion assisted
application method, wherein material applied by the ion assisted application
method is one of: ionized and accelerated in an electric field towards the
semiconductor layer sequence and accelerated by at least one of an ionized
gas and an ionized gas beam.” Br. 4–7. In particular, Appellants argue that
the Examiner erred in combining the teaching of Parriaux with Ochiai
because Parriaux is directed to an electrically isolating YAG crystal, not a
semiconductor layer sequence as taught by Ochiai and required by the
claims. Br. 4–7.
This argument is not persuasive as it fails to address the full scope of
the Examiner’s findings.
The Examiner found that Ochiai teaches nearly all of the limitations
of claim 1, but uses a different ion assisted application method than what is
recited in claim 1. Ans. 6, citing Ochiai ¶ 88. However, the Examiner found
that Parriaux satisfies this limitation as it teaches using ion plating, an ion
Appeal 2013-003062
Application 11/904,203

5
assisted application method, which results in ionized material being
accelerated in an electric field towards the material to be coated. Ans. 6
&18, citing Parriaux 9:60-66.
2
The Examiner further found that both Ochiai
and Parriaux use ion assisted application methods to produce equivalent
layer pair structures in laser devices. Ans. 18. The Examiner concluded that
it would have been obvious to one of ordinary skill in the art to use the ion
assisted/ion plating method of Parriaux in place of the particular ion assisted
application method taught in Ochiai to produce a layer pair structure for use
in a laser device. Ans. 6, 18. The Examiner found that such a substitution
simply requires the use of known technique to produce an equivalent
product. Ans. 6–7, 18.
Appellants have not provided persuasive argument that the
Examiner’s findings are in error. Appellants focus on the differences
between a YAG laser and a semiconductor laser without addressing the
Examiner’s findings that the methods used to form the layer pairs in the two
types of lasers are interchangeable to one of skill in the art. Br. 4–7. As
such, we sustain the Examiner’s rejection of independent 1.
Claims 2, 3, 5, 6, 9–16, and 24
As indicated above, Appellants have not separately argued the
patentability of claims 2, 3, 5, 6, 9–16, and 24, which depend directly or

2
The Examiner cites to Grosman US 5,078,847 for teaching that ion
plating results in ionized material being accelerated in an electric field
towards the material to be coated. Ans. 18, citing Grosman col. 1:33–47.
Appellants do not dispute that Parriaux teaches that ion plating results in
ionized material being accelerated in an electric filed towards the material to
be coated. We have not considered Grosman in assessing the rejection under
consideration.
Appeal 2013-003062
Application 11/904,203

6
indirectly upon claim 1. As such, we sustain the Examiner’s rejection of
these claims as well. See Br. 7.
Claims 17 and 25
Appellants assert the Examiner erred in rejecting independent claim
17 and dependent claim 25 as unpatentable over Ochiai and Murakami
because neither reference teaches applying at least one layer by an ion
assisted application method such that the at least one layer has a peak-to-
peak roughness of less than approximately 4nm. Br. 7–10. In particular,
Appellants argue that claim 17 requires the peak-to-peak roughness be
formed during the ion assisted application method while Murakami teaches
reducing the outermost layer after the layer is applied. Br. 9.
This argument is not persuasive as the claims are product-by-process
claims. Even though product-by-process claims are limited by and defined
by the process, determination of patentability is based on the product itself.
In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). If the product in the
product-by-process claim is the same as or obvious from the product of the
prior art, the claim is unpatentable even though the prior art product was
made by a different process. Id. The Examiner found, and Appellants have
not rebutted, that the layer of Murakami is the same as the layer recited in
claim 17.
Appellants also argue that Murakami merely teaches reducing the
roughness of the outermost layer while each of the layer pairs of Appellants
claim 17 have a peak to peak roughness of less than 4 nm. Br. 9. This
argument is not persuasive as the Examiner found, and Appellants have not
rebutted, that Murakami teaches the ion beam polishing can be completed
Appeal 2013-003062
Application 11/904,203

7
after the formation of each layer. Ans. 20, citing Murakami 14:18–38. We
therefore sustain the Examiner’s rejection of claims 17 and 25.
DECISION
The Examiner’s Decision rejecting claims 1–3, 5, 6, 9–17, 24–25
under 35 U.S.C. §103(a) 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).
AFFIRMED
sl