Ex Parte Kuramoto

Patent Trial and Appeal Board

Aug 21, 2013

11773470 (P.T.A.B. Aug. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KYOSUKE KURAMOTO
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Appeal 2011-000201
Application 11/773,470
Technology Center 2800
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Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM and
ANDREW J. DILLON, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000201
Application 11/773,470

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STATEMENT OF THE CASE
Appellant is appealing claims 1-14 and 18-20. Appeal Brief 2. We
have jurisdiction under 35 U.S.C. § 6(b) (2012).
We reverse.

Introduction
The invention is directed to a semiconductor light emitting diode
having a substrate that is transmissive to the wavelengths of light produced
by the light emitting diode. Appeal Brief 2-3.

Illustrative Claim
1. A semiconductor light-emitting diode comprising:

an electrically conductive substrate that is transmissive to
light at wavelengths emitted by the light-emitting diode and that
has front and rear surfaces,

plurality of semiconductor layers, including a light-
emitting layer, on the front surface of said substrate;

a principal-surface electrode on said semiconductor
layers with said semiconductor layers sandwiched between said
substrate and said principal-surface electrode; and

a rear-surface electrode having an area and an opening,
on the rear surface of said substrate, wherein

said opening has a width L,

distance between said rear-surface electrode and
said light-emitting layer is t,

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Application 11/773,470

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L≤ 2 t, and

said rear-surface electrode covers no more than
40% of the rear surface of said substrate.

Rejections on Appeal
Claims 1-3, 7, 9, 12 and 18 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Hata (U.S. Patent Number 6,649,942 B2; issued
November 18, 2003), Tadatomo (U.S. Patent Number 6,734,515 B1; issued
May 11, 2004) and Tsuda (U.S. Patent Number 6,858,882 B2; issued
February 22, 2005). Answer 3-7.
Claims 4-6, 8, 10, 13 and 19 stand rejected under 35 U.S.C. §103(a)
as being unpatentable over Hata, Tadatomo and Tsuda. Answer 7-11.
Claims 11, 14 and 20 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Hata, Tadatomo and Tsuda. Answer 12-14.

Issue
Do Hata, Tadatomo and Tsuda, either alone or in combination, teach
or suggest a semiconductor light emitting diode having a substrate that is
transmissive to the wavelengths of light produced by the light emitting
diode?

ANALYSIS
Appellant argues the Examiner:
[M]ischaracterizes the very thin contact layer 9 of Hata as
a substrate. This mischaracterization is critical to the prior
art rejection which fails when the proper construction is
given to the contact layer 9 and substrate 1 of Hata. The
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Application 11/773,470

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Examiner's description is a mischaracterization because it
is contrary to the disclosure of Hata and the ordinary
understanding in the relevant art as to what constitutes a
“substrate.”

Appeal Brief 7.
Appellant concludes:
Layer 9 of Hata cannot be a substrate. The most
fundamental proof that the contact layer 9 of Hata is not a
substrate is Hata itself. Hata never describes the layer 9 or
any other layer of the embodiment of Figures 1 and 2, or
of other described embodiments of Hata, as a substrate. By
contrast, Hata always describes the element 1 and
corresponding element 21 of other embodiments as
substrates, following conventional practice in the relevant
art. See, for example, Hata at column 6, lines 13 and 14,
cited above, with respect to the substrate 1, and column
10, lines 3 and 4 describing the sapphire substrate 21 of
alternative embodiments.

Appeal Brief 7.
The Examiner finds in regard to Hata’s element 9 is, “[w]hat a
reference chooses to term a structure is at the discretion of the prior art
reference. As long as the structure possesses the claimed elements, the
reference necessarily teaches the elements of the claim. Different names
will not patentably distinguish inventions. MPEP 2173.05(a).” Answer 14.
Hata’s layer 9 could be employed as a substrate in spite of Hata’s
labeling of another element as a substrate because the layer is electrically
conductive and transmissive to the wavelengths of light emitted from Hata’s
device. See Hata’s column 6, lines 42-58. However, we find that an artisan
of ordinary skill in the art would not consider Hata’s layer 9 a substrate
based on the structural configuration of Hata’s device and what is commonly
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accepted as a substrate in the semiconductor art. Subsequently, we find the
Examiner employed impermissible hindsight to retrofit Hata’s device in
order for the claims to read on Hata’s invention. “It is impermissible to use
the claimed invention as an instruction manual or ‘template’ to piece
together the teachings of the prior art so that the claimed invention is
rendered obvious.” In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(quoting In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). For the reasons
stated above, we find Appellant’s arguments to be persuasive and we do not
sustain the Examiner’s obviousness rejection of independent claims 1, 4 and
11, as well as, dependent claims 2, 3, 5-10, 12-14 and 18-20.

DECISION
The Examiner’s 35 U.S.C. §103 rejections of claim 1-14 and 18-20
are reversed.

REVERSED

Vsh