Ex Parte Kisin et al

Patent Trial and Appeal Board

Dec 15, 2016

13014002 (P.T.A.B. Dec. 15, 2016)

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.
7682P025 9786
EXAMINER
HAGAN, SEAN P
ART UNIT PAPER NUMBER
2828
MAIL DATE DELIVERY MODE
13/014,002 01/26/2011 Mikhail V. Kisin
8791 7590 12/15/2016
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
12/15/2016 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 MIKHAIL V. KISIN and
HUSSEIN S. EL-GHOROURY
Appeal 2015-007414
Application 13/014,002
Technology Center 2800
Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MICHAEL G. McMANUS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 1—14. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a solid state light emitting device. Claim 1 is
illustrative:
1. A solid state light emitting device fabricated using
Ill-nitride alloy materials on either polar, semi-polar or
non-polar crystal orientation and comprising:
a substrate;
a P-cladding region;
an N-cladding region;
Appeal 2015-007414
Application 13/014,002
multiple layers forming an optical confinement region
between the P-cladding region and the N-cladding region, the
multiple layers being grouped into a P-doped waveguide layer,
an electron blocking layer, an active multiple quantum well
region, and an N-doped waveguide region, the active multiple
quantum well region being further comprised of multiple layers
to form multiple quantum wells and barrier layers, the
band-gaps associated with the N-doped waveguide region and
the barrier layers being realized through the incorporation of
indium and/or aluminum in said layers, the multiple quantum
well depth not being in excess of 100 me V for holes and
200 me V for electrons.
The References
Ubukata US 6,434,178 B1 Aug. 13,2002
Lee US 7,058,105 B2 June 6,2006
The Rejections
The claims stand rejected as follows: claims 1—14 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, claims 1—5, 13 and 14 under 35 U.S.C. § 103 over
Lee,1 and claims 6—12 under 35 U.S.C. § 103 over Lee in view of Ubukata.
OPINION
We reverse the rejection under 35 U.S.C. § 112, first paragraph,
written description requirement and affirm the rejections under
35 U.S.C. § 103.
1 The Examiner also relies upon Nagahama (US 2004/0051107 Al,
published Mar. 18, 2004) (Ans. 5). Because the Appellants respond to the
Examiner’s arguments regarding Nagahama (Reply Br. 3—6), we likewise
consider that reference.
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Application 13/014,002
Rejection under 35 U.S.C. § 112, first paragraph
To comply with the 35 U.S.C. § 112, first paragraph, written
description requirement, an applicant’s specification must “convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention.” Carnegie Mellon Univ. v.
Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991)).
The Examiner finds that the Appellants’ Specification fails to provide
adequate written descriptive support for “the multiple quantum well depth
not being in excess of 100 me V for holes and 200 me V for electrons” in
claim 1 because, in the Examiner’s view, the Specification indicates that
sufficient carrier confinement in excess of 100 meV for holes and 200 meV
for electrons is required for the device to be operable (Final Act.7; Ans. 3—
4).
The relevant disclosure in the Appellants’ Specification is “with
sufficient carrier confinement occurring when the MQW [multiple quantum
well] depth is in excess of 100 meV for holes and 200 meV for electrons, the
active region MQWs of our benchmark layouts C-l and M-l [Fig. 3] are
always non-uniformly populated” (Spec. 17:9-12). That disclosure does not
mean that the MQW depth must be in excess of 100 meV for holes and
200 meV for electrons for the device to be operable but, rather, means that if
the active region MQW depth is in excess of 100 meV for holes and
200 meV for electrons, the carrier confinement is sufficient that the carrier
population always is non-uniform. Hence, the Specification would have
conveyed with reasonable clarity to one of ordinary skill in the art that the
Appellants were in possession of a device wherein the desired carrier
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Application 13/014,002
population uniformity is achieved by the MQW depth being not in excess of
100 meV for holes and 200 meV for electrons (Spec. 7:13—16, 18:18—22).
Accordingly, we reverse the rejection under 35U.S.C. § 112, first
paragraph, written description requirement.
Rejections under 35 U.S.C. § 103
The Appellants argue the claims as a group (App. Br. 7—15). We
therefore limit our discussion to one claim, i.e., claim 1, which is the sole
independent claim. Claims 2—14 stand or fall with that claim. See
37 C.F.R. § 41.37(c)(l)(iv) (2012).
Nagahama discloses a nitride semiconductor light emitting device
comprising a multiple quantum well active layer having In- and Al-
containing well and barrier layers which compositionally are similar to those
of the Appellants (Nagahama, Tflf 1, 14, 16, 88; Spec. 10:10-15). First and
second barrier layers (2a, 2b) confine carriers into a well layer, and third and
fourth barrier layers (2c, 2d) disperse and confine carriers into each well
layer (| 157; Fig. 14A, 14B) such that “carriers are suitably dispersed,
injected and confined in each well layer in a plurality of well layers” (1159).
“Preferably, by adopting approximately the same composition, band gap
energy and thickness, the approximately uniform function are imparted [sic]
to internal barrier layers and, thus, carriers are suitably injected in respective
well layers” (1160). Nagahama’s carrier population, therefore, appears to
be uniform.
The Appellants indicate that carrier population uniformity requires a
multiple quantum well depth which is not in excess of 100 meV for holes
and 200 meV for electrons (Spec. 17:9-12). Because Nagahama’s carrier
population appears to be uniform, Nagahama’s device, like the Appellants’
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Application 13/014,002
device, appears to have a multiple quantum well depth which is not in excess
of 100 meV for holes and 200 meV for electrons.
The Appellants assert that Nagahama does not disclose a connection
between MQW carrier confinement and MQW carrier population uniformity
(Reply Br. 5).
The Appellants’ Specification states that “[t]he features of the active
region design which affect the carrier confinement also affect the MQW
population uniformity” (Spec. 18:6—7). Likewise, Nagahama’s MQW
carrier dispersion and confinement (|| 157, 159, 160) appear to affect MQW
carrier population uniformity.
The Appellants assert that “the generally accepted precise definition
of the term ‘disperse’ used by Nagahama’s [sic] is to ‘scatter’ or ‘distribute
widely’ while the generally accepted precise definition of the term ‘uniform’
used in our disclosure is the property of ‘not varying or changing’ or
‘conforming to a given standard’” (Reply Br. 6).
The Appellants provide no evidence that their Specification’s term
“uniform” can mean “conforming to a given standard”. The Appellants’
mere assertion to that effect cannot take the place of evidence. See In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). That meaning appears to apply
to something like a military uniform and, therefore, appears to be irrelevant.
As for the meaning “not varying or changing”, Nagahama’s
dispersion, injection and confinement of carriers in each quantum well layer
in a plurality of quantum well layers (1159) appears to provide a carrier
population which, in the same manner as the Appellants’ quantum well
carrier injection and confinement (Spec. 8:3—7, 18:6—7, 18:18—22, 20:23 —
21:4), does not vary or change among the quantum well layers.
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“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
The Appellants have not met that burden. Thus, we are not persuaded of
reversible error in the rejections under 35 U.S.C. § 103.
DECISION/ORDER
The rejection of claims 1—14 under 35 U.S.C. § 112, first paragraph,
written description requirement is reversed. The rejections under
35 U.S.C. § 103 of claims 1—5, 13 and 14 over Lee and claims 6-12 over Lee
in view of Ubukata are affirmed.
It is ordered that the Examiner’s decision 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
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