Ex Parte LI et al

Patent Trial and Appeal Board

Feb 27, 2018

14514158 (P.T.A.B. Feb. 27, 2018)

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.
LUM-009 8371
EXAMINER
CARTER, MICHAEL W
ART UNIT PAPER NUMBER
2828
MAIL DATE DELIVERY MODE
14/514,158 10/14/2014 Ting Li
96758 7590
Law Office of Zheng Jin
P.O.Box 731450
San Jose, CA 95173
02/27/2018 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 TING LI and THOMAS YUAN
Appeal 2017-001234
Application 14/514,158
Technology Center 2800
Before TERRY J. OWENS, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—20 in the above-identified application.2 We
have authority pursuant to 35 U.S.C. § 6(b). We reverse.
1 Appellant is the Applicant, Luminus Devices, Inc., which according to the
Appeal Brief is the real party in interest. Appeal Brief 1, Jan. 29, 2016
[hereinafter Appeal Br.].
2 The appeal record includes Final Office Action, Oct. 22, 2015 [hereinafter
Final Action]; Appeal Br.; Examiner’s Answer, Aug. 9, 2016 [hereinafter
Answer]; Reply Brief, Oct. 18, 2016 [hereinafter Reply Br.].
Appeal 2017-001234
Application 14/514,158
BACKGROUND
Appellant’s invention relates to a light emitting diode structure
comprising two semiconductor structures bonded without any adhesive
using a layer of nanoparticles. See Appeal Br. 2—5. Independent claim 1,
which represents the subject matter in dispute, reads as follows:
1. A light emitting diode structure comprising:
a first III-V semiconductor structure comprising a first
light emitting layer disposed between a first n-type region and a
first p-type region;
a second III-V semiconductor structure comprising a
second light emitting layer disposed between a second n-type
region and a second p-type region;
a first contact formed on a top surface of the first III-V
semiconductor structure;
a second contact formed on a bottom surface of the
second III-V semiconductor structure; and
a layer of nanoparticles disposed between the first and
second III-V semiconductor structures, wherein the first and
second III-V semiconductor structures are wafer bonded
together using the layer of nanoparticles without any adhesive.
Appeal Br. 22 (emphasis of key limitation added). Method claim 7 and
apparatus claim 15, the only other independent claims, are directed to using
a layer of nanoparticles to bond two semiconductor structures and the
bonded structure, respectively. See id. at 23, 25.
The Examiner maintains the following rejections:
1. Claims 1, 2, 5, 7, 10, 11, 13, 15, 18, and 20 are rejected under
35 U.S.C. § 103 as being unpatentable over Heidbom3 in view of Barnes.4
See Final Action 2—7.
3 Heidbom et al., US 2009/0309120 A1 (published Dec. 17, 2009).
4 Bames et al., US 2010/0059776 Al (published Mar. 11, 2010).
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Appeal 2017-001234
Application 14/514,158
2. Claims 3 and 19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Heidbom in view of Barnes and Nishikawa.5 See id. at 7—
8.
3. Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable
over Heidbom in view of Bames, Nishikawa, and Sakizadeh.6 See id. at 8—
9.
4. Claims 6 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Heidbom in view of Bames and Kwak.7 See id. at 9-10.
5. Claims 8 and 9 are rejected under 35 U.S.C. § 103 as being
unpatentable over Heidbom in view of Bames and Sung.8 See id. at 10-12.
6. Claims 14 and 16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Heidbom in view of Bames and Srinivas.9 See id. at 12—
13.
7. Claim 17 is rejected under 35 U.S.C. § 103 as being
unpatentable over Heidbom in view of Bames and Sakizadeh. See id. at 13—
14.
DISCUSSION
The Examiner finds that Heidbom teaches all the limitations of claim
1, except it does not teach that “the bonding agent is a layer of nanoparticles
and the first and second III-V semiconductor stmctures are wafer bonded
together using the layer of nanoparticles without any adhesive.” Final
5 Nishikawa et al., US 2002/0048729 A1 (published Apr. 25, 2002).
6 Sakizadeh et al., US 2007/0072772 Al (published Mar. 29, 2007).
7 Kwak et al., US 2005/0087758 Al (published Apr. 28, 2005).
8 Sung et al., US 2005/0082556 Al (published Apr. 21, 2005).
9 Srinivas et al., US 2013/0000952 Al (published Jan. 3, 2013).
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Appeal 2017-001234
Application 14/514,158
Action 3. However, the Examiner finds that “Barnes teaches a bonding
agent used with a[n] LED light source is formed from a layer of
nanoparticles and bonding is performed using the layer of nanoparticles
without any adhesives.” Id. (citing Barnes | 6). The Examiner then
determines that substituting the nanoparticle bonding layer from Barnes into
the structure of Heidbom would be “a simple substitution for the bonding
agent of Heidbom as the substituted components and their functions were
known in the art and the substitution would have yielded predictable
results.” Id.
Appellant argues that Bames only teaches the use of a nanoparticle
bonding layer between a semiconductor layer and an “optical element,”
which is not a semiconductor stmcture as recited in claim 1. See Appeal Br.
7—9. According to Appellant, the optical element “is an optical extractor that
facilitates escape of light from inside the LED die.” Id. at 7 (citing Bames
1 6). In Bames, according to Appellant, the bonding layer is made from
nanoparticles “to provide a bonding layer that has a refractive index ‘closely
matched to that of the light emission surface of the LED die’ to maximize
light output.” Id. at 11 (citing Bames 145). Because the rationale for using
the bonding layer in Bames would not apply to bonding two semiconductor
stmctures as described in Heidbom, Appellant argues that “there would have
been no apparent reason to combine Heidbom and Bames in the way
claimed.” Id.
Appellant also argues that the nanoparticle bonding layer in Bames
would not have been a simple substitution for the adhesive layer in
Heidbom, because the method of forming the layer in Bames is a complex
process, and Bames’ teachings do not address Heidbom’s concern for
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Appeal 2017-001234
Application 14/514,158
improving charge carrier transfer between the two semiconductor structures.
See Reply Br. 6—7.
We agree with Appellant that the Examiner has not shown that a
person of ordinary skill in the art at the time of invention would have had
reason to substitute a nanoparticle bonding layer for the adhesive in
Heidbom. “[Ojbviousness concerns whether a skilled artisan not only could
have made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention.” Belden Inc. v.
Berk-TekLLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015).
The Examiner’s findings on this record are not sufficient to show by a
preponderance of the evidence that a skilled artisan would have been
motivated to use the nanoparticle layer in Barnes, used for forming a low
refractive index bond between an FED and an optical element, as a
replacement for the adhesive in Figure 4 of Heidbom, used for mechanically
and electrically connecting two semiconductor stmctures.
For the above reasons, we reverse the Examiner’s rejection of claim 1
under 35 U.S.C. § 103. Because the Examiner’s other rejections do not
remedy the above issue, we also reverse the rejections of claims 2—20.
DECISION
The Examiner’s decision is reversed.
REVERSED
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