Ex Parte Nakahara

Patent Trial and Appeal Board

Jun 23, 2014

11886918 (P.T.A.B. Jun. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte KEN NAKAHARA
__________

Appeal 2012-002181
Application 11/886,9181
Technology Center 2800
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
Ken Nakahara (“Appellant”) appeals under 35 U.S.C. § 134 from a
rejection of claims 1-4. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal is directed to a semiconductor light
emitting device comprising a MgxZn1-xO substrate having opposed front and
back surfaces, a semiconductor lamination portion formed on the front
surface of the substrate, and first and second electrodes. The first electrode

1 According to the Appellant, the real party in interest is Rohm Co., Ltd., of
Kyoto, Japan. Appeal Brief dated June 13, 2011 (“App. Br.”), at 2.
Appeal 2012-002181
Application 11/886,918

2

is provided on the semiconductor lamination portion, and the second
electrode is provided on the back surface of the substrate.
Claim 1 is representative of the subject matter on appeal and is
reproduced below from the Claims Appendix of the Appeal Brief.
1. A zinc oxide based compound semiconductor light
emitting device comprising
a substrate having opposed front and back surfaces
thereof,
a semiconductor lamination portion formed on the front
surface of the substrate by laminating ZnO based compound
semiconductor layers so as to form a light emitting layer
forming portion configured to emit light of a wavelength of 400
nm or less, and
first and second electrodes, the first electrode provided
on the semiconductor lamination portion, and the second
electrode provided on the back surface of the substrate,
wherein the substrate is made of MgxZn1-xO (0≤x≤0.5).
The claims stand rejected as follows: claims 1 and 2 under 35 U.S.C.
§ 103(a) as unpatentable over Ishizaki2 in view of Nakahara;3 and claims 3
and 4 under 35 U.S.C. § 103(a) as unpatentable over Ishizaki in view of
Nakahara and further in view of Sugimoto.4
B. DISCUSSION
Referring to Ishizaki Fig. 13, reproduced below, the Examiner finds
that Ishizaki discloses a semiconductor light emitting device comprising a
substrate (2)5 having opposed front and back surfaces, a semiconductor

2 US 2004/0235212 A1, published November 25, 2004.
3 US 2004/0164314 A1, published August 26, 2004.
4 US 2004/0165635 A1, published August 26, 2004.
5 The Appellant argues that in the embodiment illustrated in Ishizaki Fig. 13,
sapphire substrate 11, not n-type MgZnO layer 2, corresponds to the claimed
App
App

lami
and f
elect
in cl

subs
it is n
6 Exa
eal 2012-0
lication 11
nation por
irst (22) a
I
The Exa
rode (25)
aim 1. An
Nonethe

trate. App
ot necess
miner’s A
02181
/886,918
tion (3, 4,
nd second
shizaki Fi
an e
miner find
is provided
s. 5.
less, the E

. Br. 6-7.
ary to addr
nswer dat
5, 6) form
(25) electr
g. 13 depic
xemplary l
s Ishizaki
on the ba
xaminer fi

In view of
ess this ar
ed August
3
ed on the f
odes. An
ts a cross-
ight-emitt
does not d
ck surface
nds:

our reaso
gument.
22, 2011.
ront surfa
s. 4-5.6
sectional
ing device
isclose tha
of the sub

ns for reve

ce of the su

view of
.
t the seco
strate (2)

rsal, discu
bstrate,
nd
as recited

ssed infra

,
App
App

Ans.

sapp
elect
cond
eal 2012-0
lication 11
In
Nakahar
of electr
crystal la
substrate
electrod
5.
Nakahar
hire substr
rodes are o
Nak
embodime
Nakahar
uctive sub
02181
/886,918
the same
a disclose
odes, inclu
yer (13) a
(15) can
e is provid
a Fig. 4, re
ate (17) an
n the sam
ahara Fig.
nt of a Ga
a Fig. 5, re
strate (19)
field of en
that a ligh
ding a firs
nd a secon
be alternat
ed on a ba
produced
d two me
e side of t
4 depicts
N system
produced
and two m
4
deavor, fig
t emitting
t electrode
d electrod
ively form
ck surface
below, illu
tal electrod
he substrat

a cross-sec
semicondu
below, illu
etal elect
ures 4 and
device inc
(18) prov
e (16) pro
ed so that
of the sub
strates a d
es (18, 16
e (17).
tional vie
ctor light
strates a d
rodes (11,
5 of
luding a p
ided on a
vided on a
the second
strate [15]
evice com
) wherein
w of a firs
emitting d
evice com
16) where
air

.
prising a
the metal

t
evice.
prising a
in the first
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meta
elect

Ans.

the s
eal 2012-0
lication 11
l electrode
rode (16)
Naka
embodime
The Exa
In
obvious
inventio
surface o
(11) laye
a manuf
5 (empha
The App
ubstrate [1
02181
/886,918
(11) is on
is on the o
hara Fig. 5
nt of a Ga
miner con
light of [N
to one of o
n was mad
f the subs
rs as taug
acturing p
sis added)
ellant argu
1 of Ishiz
one side
ther side o
depicts a
N system
cludes:
akahara F
rdinary sk
e to form
trate in pla
ht by Naka
rocess (pa
.
es that “re
aki] and re
5
of the subs
f the subst
cross-sect
semicondu
igs. 4 and
ill in the a
the second
ce of the Z
hara for th
ragraph 44
moving b
placing th
trate (19)
rate (19).
ional view
ctor light
5], it wou
rt at the ti
electrode
nO (12) a
e purpose
).
oth the bu
em with an
and the se
of a secon
emitting d
ld have be
me the
on a back
nd sapphi
of simplif
ffer layer
electrode
cond meta

d
evice.
en

re
ying
[12] and
on the
l
Appeal 2012-002181
Application 11/886,918

6

back side [of second crystal layer 2] to replace the ITO electrode 25 on the .
. . front side of second crystal layer 2 . . . would not have been obvious to
one skilled in the art” based on Nakahara Figs. 4 and 5. App. Br. 10.
The Appellant’s argument is supported by the record. In the
embodiment illustrated in Nakahara Fig. 5, Nakahara discloses that “the n
type GaN system semiconductor layer 15, the light emission layer 14, the p
type GaN system semiconductor layer 13, and etc. are laminated on a
conductive substrate 19,” such as SiC and ZnO. Nakahara ¶ 43 (emphasis
added).
Nakahara discloses that:
[L]aminating the n type GaN system semiconductor layer 15,
and etc. on the conductive substrate 19 makes unnecessary a
process for etching starting from the upper portion of the GaN
system semiconductor light emitting device and forming a
metal electrode connecting to the n type GaN system
semiconductor layer 15 [like the embodiment illustrated in
Nakahara Fig. 4]. For this reason, simplification of the
manufacturing process and improvement in reliability can be
attained.
Nakahara ¶ 44 (emphasis added).
The Examiner has failed to explain, in any detail, why Nakamura’s
teaching of laminating n type GaN system semiconductor layer 15, etc. on a
conductive substrate, such as SiC or ZnO, would have led one of ordinary
skill in the art to remove ZnO buffer layer 12 and sapphire substrate 11 in
Ishizaki and reposition second electrode 25 on the opposing face of n-type
MgZnO layer 2. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
Appeal 2012-002181
Application 11/886,918

7

rational underpinning to support the legal conclusion of obviousness”). For
this reason, the § 103(a) rejection of claims 1 and 2 is not sustained.
The Examiner does not rely on Sugimoto in a manner that remedies
the deficiency discussed above. Therefore, the § 103(a) rejection of claims 3
and 4 is not sustained.
C. DECISION
The decision of the Examiner is reversed.

REVERSED

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