Ex Parte McHugo

Board of Patent Appeals and Interferences

Apr 23, 2012

10892983 (B.P.A.I. Apr. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SCOTT A. MCHUGO
____________

Appeal 2010-002724
Application 10/892,983
Technology Center 2800
____________

Before SCOTT R. BOALICK, JOHN A. JEFFERY, and
STANLEY M. WEINBERG, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner‟s
rejection of claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellant‟s invention is a vertical cavity surface emitting laser
(VCSEL) device that uses a void or gap in a mirror stack to define a light
aperture and a thin protective layer to cover the gap. The protective layer
enables the device to pass various reliability and stress tests, including the
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“Wet High Temperature Operating Life” test. See generally Spec. ¶¶ 0003-
07; Fig. 2. Claim 1 is illustrative with key disputed limitations emphasized:
1. A device comprising:

a first mirror stack through which a hole extends, wherein a gap
extends from a sidewall of the hole into the first mirror stack;

a second mirror stack;

a cavity layer between the first mirror stack and the second mirror
stack; and

a protective layer that conforms to the sidewall of the hole, sealing an
end of the gap at the sidewall of the hole while leaving the hole open.

THE REJECTIONS
1. The Examiner rejected claims 1-4 and 8-10 under 35 U.S.C.
§ 103(a) as unpatentable over Kwak (US 6,917,640 B2; July 12, 2005 (filed
May 28, 2003)) and Zhu (US 6,589,805 B2; July 8, 2003). Ans. 4-5.
1

2. The Examiner rejected claims 6 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Kwak, Zhu, and Maegawa (US 2003/0042542 A1; Mar. 6,
2003). Ans. 5-6.
3. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Kwak, Zhu, and Comizzoli (US 5,851,849; Dec. 22,
1998). Ans. 6.

1
Throughout this opinion, we refer to (1) the Appeal Brief filed November
29, 2007; (2) the Examiner‟s Answer mailed April 8, 2009; and (3) the
Reply Brief filed June 8, 2009.
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THE OBVIOUSNESS REJECTION OVER KWAK AND ZHU
The Examiner finds that Kwak discloses every recited feature of
representative claim 1 including a “protective layer” (insulation film 160)
conforming to a sidewall of “hole” B, and sealing an end of a “gap” which
the Examiner equates to insulation regions 150 (also denoted “C” in Figure
4). Ans. 4-5, 7-17, 28. Although the Examiner acknowledges that Kwak‟s
gap is not “matter-less” (i.e., a void), the Examiner nonetheless cites Zhu for
this teaching in concluding that the claim would have been obvious. Id.
Appellant argues that the cited prior art does not teach or suggest (1) a
gap extending from a sidewall of a hole into a first mirror stack; (2) a
protective layer conforming to the hole‟s sidewall; and (3) sealing an end of
the gap at the hole‟s sidewall while leaving the hole open as claimed. App.
Br. 18-28, 36-40, 51; Reply Br. 1-27. According to Appellant, not only does
the cited prior art not recognize the problems solved by the claimed
invention, namely improving the device‟s moisture resistance in a high-
humidity environment, there is no reason to combine the references as the
Examiner proposes absent impermissible hindsight. Id. The issues before
us, then, are as follows:

ISSUES
1. Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Kwak and Zhu collectively would have taught or suggested (a) a
gap extending from a sidewall of a hole into a first mirror stack; (b) a
protective layer conforming to the hole‟s sidewall; and (c) sealing an end of
the gap at the hole‟s sidewall while leaving the hole open?
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2. Is the Examiner‟s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner‟s obviousness conclusion?

ANALYSIS
Based on the record before us, we find no error in the Examiner‟s
obviousness rejection of representative claim 1. First, we note that the
VCSEL device shown in Figure 2 of the present application is strikingly
similar to that of Kwak‟s Figure 4, including providing an insulative layer
160 conforming to a hole‟s
2
sidewall—a layer that is structurally similar to
the conforming protective layer 250 in Appellant‟s invention. Compare
Spec. ¶ 0014; Fig. 2 with Kwak, col. 5, ll. 55-59; col. 6, ll. 42-48; Figs. 4,
7d. These respective conforming layers are shown in Appellant‟s Figure 2
and Kwak‟s Figure 4 reproduced below:

2
Fig. 4‟s reference identifier “B.”
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Appellant’s Figure 2 and Kwak’s Figure 4 showing respective conforming
layers 250 and 160

Appellant‟s Figure 2 also shows a gap 212 that extends from a hole‟s
3

sidewall into mirror stack 210 that is sealed by the protective layer 250.
Spec. ¶ 0014. This structure differs, however, from Kwak‟s Figure 4 in that
Kwak‟s insulative film 160 overlays insulation regions 150 (also denoted
“C” in Figure 4) that surround oxidation aperture “D.” Kwak, col. 5, ll. 3-
11, 54-60; Fig. 4.
The Examiner maps Kwak‟s insulation regions to the recited “gap”
(Ans. 4, 12-13)—a mapping that Appellant disputes. Reply Br. 24.
Although we agree with Appellant to the extent that the insulation itself in
these regions is not a gap under its plain meaning, namely “a separation in
space,”
4
nothing in the claim precludes the recited gap from including
insulative material within the gap, particularly in light of the preamble‟s
open-ended “comprising” language which does not exclude the presence of

3
Fig. 3B‟s element 270. Spec. ¶ 0023.
4
MERRIAM WEBSTER‟S COLLEGIATE DICTIONARY 480 (10th ed. 1993).
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additional unrecited elements.
5
We reach this conclusion noting that not
only does the region between Kwak‟s upper reflector layer 140 and active
layer 120 that includes the insulation regions 150 and oxidation aperture
constitute a “gap” under the term‟s broadest reasonable interpretation,
Kwak‟s insulation regions in Figure 4 surround,, extend from, and are
radially coextensive withthe oxidation aperture as shown in the enlarged
detail view of Kwak‟s Figure 4 below:

Enlarged detail view of Kwak’s Figure 4 showing oxidation aperture
and surrounding insulation regions

This coextensive structure 150 at least suggests that the insulative
regions essentially fill the gap that includes the oxidation aperture at the
aperture‟s circular periphery. See Kwak, col. 5, ll. 3-11. We therefore see
no error in the Examiner‟s position at least to the extent that the insulative
regions are associated with a gap, namely the region including the
corresponding oxidation aperture.
6
And as shown in Kwak‟s Figure 4, this
gap and associated insulative regions extend from a hole‟s sidewall into a
first mirror stack as claimed.

5
“„Comprising‟ is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.” Genentech, Inc. v. Chiron
Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (citation omitted).
6
See Ans. 15 (referring to Kwak‟s “material gap” and “solid gap”).
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We also find no error in the Examiner‟s reliance on Zhu merely to
show that forming a gap as a “void” was known in the art in light of Zhu‟s
circumferential cavity 128, and that forming such a gap in Kwak would have
been obvious. Ans. 5, 12, 15. See also Zhu, col. 4, ll. 40-42, 57-59; Fig. 1
(describing sealed subsurface circumferential cavity 128). Appellant‟s
arguments regarding Zhu do not squarely address the limited purpose for
which Zhu was cited (see App. Br. 24-28, 36-40, 51; Reply Br. 1-27), and,
accordingly, do not persuade us of error in the Examiner‟s articulated basis
for combining the references which has some rational underpinning to
justify the Examiner‟s obviousness conclusion.
To the extent that Appellant may be implying that removing at least
some of the material forming insulation regions in Kwak to form voids in the
associated gap, as the Examiner proposes, would render Kwak inoperable or
otherwise unsuitable for its intended purpose, we conclude that there has not
been convincing evidence presented on this record to support such an
argument. Nor will we engage in this inquiry here in the first instance on
appeal. We do note, however, that the insulation regions essentially define
the shape of the oxidation aperture which, in turn, determines the shape of
light emission. See Kwak, col. 1, ll. 21-23; col. 2, ll. 33-36; Fig. 2c. On this
record, we see no error in the Examiner‟s conclusion that it would have been
obvious to remove at least some of the insulation material and yet still define
an aperture for light emission.
Nor are we persuaded of error in the Examiner‟s mapping Kwak‟s
insulation film 160 to the recited protective layer for the reasons indicated
by the Examiner. Ans. 4, 12-17. First, Appellant provides no persuasive
evidence on this record proving that Kwak‟s silicon dioxide film 160 would
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be incapable of functioning as a protective layer as claimed. We reach this
conclusion noting, as does the Examiner (Ans. 14-16), that protection from
humidity is not recited in claim 1. Appellant‟s arguments in that regard
(App. Br. 38-40; Reply Br. 25-26) are therefore not commensurate with the
scope of the claim.
But even if a humidity-protection layer were recited in claim 1 (which
it is not) and silicon dioxide was incapable of functioning as such a layer as
Appellant asserts (a finding that has not been made on this record in any
event), that alone is hardly persuasive of error. As the Examiner correctly
indicates, silicon dioxide is not the only suitable material for the insulation
film in view of Kwak‟s permissive and open-ended language in this regard.
See Ans. 16 (citing Kwak, col. 5, ll. 54-59).
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 2-4 and 8-10 not separately argued with
particularity.

THE OBVIOUSNESS REJECTION OVER KWAK, ZHU, AND MAEGAWA
We likewise sustain the Examiner‟s obviousness rejection of claims 6
and 7 over Kwak, Zhu, and Maegawa for the reasons indicated by the
Examiner. Ans. 5-6, 17-22. Appellant reiterates similar arguments made in
connection with claim 1 and adds that Maegawa fails to cure those purported
deficiencies. App. Br. 29-31, 41-45; Reply Br. 29-36. We are not persuaded
by these arguments, however, for the reasons previously discussed and those
indicated by the Examiner. Nor does Appellant persuasively rebut the
Examiner‟s finding that Maegawa‟s oxidation process forms a layer of SiON
from a layer of SiN. Ans. 18-19.
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We are therefore not persuaded that the Examiner erred in rejecting
claims 6 and 7.

THE OBVIOUSNESS REJECTION OVER KWAK, ZHU, AND COMIZZOLI
Regarding claim 5, the Examiner finds that Kwak and Zhu do not
disclose that the first dielectric protective layer‟s thickness is less than about
6000 Å, but cites Comizzoli as teaching this feature in concluding that the
claim would have been obvious. Ans. 6, 22-28. The Examiner reaches this
conclusion noting optimizing the dielectric layer‟s thickness by routine
experimentation would have been obvious in view of (1) Comizzoli‟s
teaching that protection layer thickness is a critical parameter, and (2)
Comizzoli‟s forming a passivation layer less than about 0.6 microns. Ans.
25-26, 28.
Appellant reiterates similar arguments made in connection with claim
1 and adds that Comizzoli fails to cure those purported deficiencies. App.
Br. 46-50; Reply Br. 36-43. The issue before us, then, is as follows:

ISSUE
1. Under § 103, has the Examiner erred in rejecting claim 5 by
finding that Kwak, Zhu, and Comizzoli collectively would have taught or
suggested the first dielectric protective layer‟s thickness is less than about
6000 Å?
2. Is the Examiner‟s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner‟s obviousness conclusion?

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ANALYSIS
We sustain the Examiner‟s obviousness rejection of claim 5 over
Kwak, Zhu, and Comizzoli for the reasons indicated by the Examiner. Ans.
6, 22-28. We add that Appellant‟s argument regarding the lack of result-
effective variables (App. Br. 48; Reply Br. 38) is unavailing. Leaving aside
the fact that this argument is somewhat contradictory in that it alleges that
the exemplary VCSEL result-effective variables “are not known to be result
effective” (id.) (emphases added), it does not squarely address the
Examiner‟s position which is based on optimizing the dielectric layer‟s
thickness in light of Comizzoli (Ans. 25-26, 28)—a thickness that is likewise
disclosed in at least claim 13 of that reference.
7
Ans. 25-26, 28 (citing
Comizzoli‟s claim 13).
We also find the Examiner‟s reason to combine the teachings of
Kwak, Zhu, and Comizzoli (Ans. 6, 26, 28) is supported by articulated
reasoning with some rational underpinning to justify the Examiner‟s
obviousness conclusion, at the least to the extent that ordinarily skilled
artisans would recognize that varying the thickness of a dielectric layer
would likewise affect its ability to protect underlying structures. Thicker
layers would predictably yield more protection than thinner ones—a
common-sense principle readily apparent to ordinarily skilled artisans.
8
But
skilled artisans would also understand that minimizing layer thickness

7
Comizzoli‟s claim 13 recites that the passivating coating has a thickness in
the range 0.1 to 0.6 μm (i.e., 1000 to 6000 Å). Comizzoli, col. 10, ll. 7-8.
8
See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (“Rigid
preventative rules that deny factfinders recourse to common sense . . . are
neither necessary under our case law nor consistent with it.”).
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would, among other things, reduce manufacturing costs by requiring less
material for the dielectric layer.
Given these fundamental engineering principles, we see no reason
why reducing layer thickness to less than 6000 Å as claimed, yet
maintaining at least some protective layer qualities merely optimizes result-
effective variables as the Examiner suggests—namely thickness and
protection. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980); see also In
re Aller, 220 F.2d 454, 456 (CCPA 1955). Such an engineering tradeoff is
well within the level of ordinarily skilled artisans.
We are therefore not persuaded that the Examiner erred in rejecting
claim 5.

CONCLUSION
The Examiner did not err in rejecting claims 1-10 under § 103.

ORDER
The Examiner‟s decision rejecting claims 1-10 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)(1)(iv).

AFFIRMED

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