Ex Parte Sakai et al

Patent Trial and Appeal Board

Sep 27, 2016

13584140 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/584,140 08/13/2012
58027 7590 09/29/2016
RC PARK & ASSOCIATES, PLC
1894 PRESTON WHITE DRIVE
RESTON, VA 20191
FIRST NAMED INVENTOR
Shiro SAKAI
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P2334USC1DlC2 3198
EXAMINER
JONES, ERIC W
ART UNIT PAPER NUMBER
2892
NOTIFICATION DATE DELIVERY MODE
09/29/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PATENT@PARK-LAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIRO SAKAI, JIN-PING AO, and Y ASUO ONO
Appeal2014-009198
Application 13/584,140
Technology Center 2800
Before ST. JOHN COURTENAY, III, JAMES R. HUGHES, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1-18, which constitute all the
claims pending in this application. Final Act. l; App. Br. 3. 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We refer to Appellants' Specification ("Spec."), filed Aug. 13, 2012
(claiming benefit of numerous applications including PCT /JP03/l 0922 filed
Aug. 28, 2003); Appeal Brief ("App. Br.") filed May 8, 2014; and Reply
Brief ("Reply Br.") filed Aug. 19, 2014. We also refer to the Examiner's
Answer ("Ans.") mailed June 19, 2014, and Final Office Action (Final
Rejection) ("Final Act.") mailed Sept. 23, 2013.
Appeal2014-009198
Application 13/584,140
Appellants' Invention
The invention concerns light emitting devices (apparatuses) or Light
Emitting Diodes (LEDs) in which a plurality of light emitting elements are
formed on a substrate. In one embodiment, the LED comprises GaN-based
semiconductor layers (one of which is formed on a substrate) with a light-
emitting layer disposed between the two GaN semiconductor layers, and
metal electrode layers arranged on the GaN semiconductor layers. Spec.
i-fi-1 3 and 7-19; Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A light-emitting diode, comprising:
a first first type GaN-based semiconductor layer;
a first second type GaN-based semiconductor layer;
a first light-emitting layer disposed between the first first
type GaN-based semiconductor layer and the first second type
GaN-based semiconductor layer;
a first metal electrode layer arranged on the first first type
GaN-based semiconductor layer;
a second metal electrode layer arranged on the first second
type GaN-based semiconductor layer;
a first vacuum-evaporated metal layer arranged on the first
metal electrode layer or the second metal electrode layer; and
a plating metal layer arranged on the first vacuum-
evaporated metal layer,
wherein the plating metal layer is deposited over the entire
surface of the first vacuum evaporated metal layer,
wherein the plating metal layer is thicker than the first
vacuum-evaporated metal layer, and
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Appeal2014-009198
Application 13/584,140
wherein the first first type GaN-based semiconductor layer
is arranged on a substrate.
App. Br. 12 (Claims Appendix).
Rejections on Appeal
1. The Examiner rejects claims 1-7, 13, 1 7, and 18 under 3 5
U.S.C. § 103(a) as being unpatentable over Tanabe (US 2002/0005521 Al,
pub. Jan. 17, 2002), Kojima (US 6,639,354 Bl, issued Oct. 28, 2003 (filed
July 21, 2000)), Nelson (US 5,159,296, issued Oct. 27, 1992), and Tam (US
4,857,481, issued Aug. 15, 1989).
2. The Examiner rejects claims 8-12 and 14--16 under 35 U.S.C.
§ 103(a) as being unpatentable over Tanabe, Kojima, Nelson, Tam, and
Lefebvre (US 2003/0179585 Al, pub. Sept. 25, 2003 (filed Mar. 22, 2002)).
ISSUE
Based upon our review of the record, Appellants' contentions, and the
Examiner's findings and conclusions, the issue before us follows:
Did the Examiner provide a proper rationale for combining Tanabe,
Kojima, Nelson, and Tam, and did the Examiner err in finding that Tanabe,
Kojima, Nelson, and Tam collectively would have taught or suggested the
limitations of Appellants' claim 1?
ANALYSIS
Appellants argue claims 1-18 as a group and do not separately argue
independent claims 1 and 17, or dependent claims 2-16 and 18. App. Br. 5-
10; Reply Br. 2--4. Accordingly, we select independent claim 1 as
representative of Appellants' arguments and grouping with respect to claims
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Application 13/584,140
1-18. 37 C.F.R. § 41.37(c)(l)(iv).
We adopt as our own ( 1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Final Act. 5-10),
and (2) the reasons set forth by the Examiner in the Examiner's Answer
(Ans. 2-8) in response to Appellants' Appeal Brief. We concur with the
findings and conclusions reached by the Examiner, and we provide the
following for emphasis.
Appellants contend that the Examiner (Final Office Action) fails to
establish a prima facie case of obviousness because one of ordinary skill in
the art would not have combined the teachings of combining Tanabe,
Kojima, Nelson, and Tam.2 App. Br. 5-10; Reply Br. 2--4. Specifically,
Appellants contend one would not have replaced Kojima's interconnections
(bonding wires) with the air bridge wires of Nelson and Tam. App. Br. 6-8.
We find Appellants' contentions unpersuasive of Examiner error. As
an initial matter, Appellants do not dispute the Examiner's findings with
respect to the individual references or the proposed combination of Tanabe,
Kojima, Nelson, and Tam. That is, Appellants do not dispute that the
proposed combination teaches the structure of the LED recited in claim 1.
Rather Appellants confine their arguments to the comb inability of the
references. See App. Br. 5-10.
Appellants misconstrue the Examiner's rejection and fail to appreciate
the teachings of the proposed combination as a whole. The Examiner cites
Tanabe as teaching a single LED and Kojima as teaching multiple LEDs
connected together (via bonding wires). Final Act. 6-8. "Kojima teaches it
2 Appellants also discuss an "Ezaki" reference, but that reference is not part
of the Examiner's rejection and is not before us in the instant appeal.
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Appeal2014-009198
Application 13/584,140
was known in the art to provide a plurality of LED devices on a common
interconnection substrate (Fig. 29) and to provide interconnections to
connect the LEDs to an integrated circuit." Final Act. 7-8. The Examiner
further cites Nelson and Tam as teaching interconnecting structure to
connect semiconductor devices, in particular air bridges, and that such
structure was known to reduce parasitic capacitance. Final Act. 8-9. The
Examiner also provides a rationale for combining the references - that it
would have been "obvious to one of ordinary skill in the art at the time of
the invention to have provided a plurality of LEDs in accordance with
Tanabe and to have interconnected them on a common substrate in order to
produce a display panel with many pixels" as taught by Tanabe and Kojima
(Final Act. 8) and that it would have been "obvious to one of ordinary skill
in the art at the time of the invention to have provided air bridges such as is
taught by Nelson and Tam for the conventional bonding wires of Kojima in
order to reduce parasitic capacitance in the device" (Final Act. 8).
Appellants focus on the Examiner's rationale (above) and delineate a
detailed but ultimately flawed and unpersuasive argument that one would
not have made the proposed combination because Kojima is more effective
at reducing parasitic capacitance. App. Br. 5-10; Reply Br. 2--4. Most
importantly, Appellants do not provide any persuasive evidence, in the form
of, e.g., declarations or documentary evidence in the record, to support this
bare attorney argument.
Appellants' arguments do not take into account what the combination
of Tanabe, Kojima, Nelson, and Tam would have suggested to one of
ordinary skill in the art -
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Appeal2014-009198
Application 13/584,140
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; ... Rather, the test is what the
combined teachings of the references would have suggested to
those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
We find that it would have been well with the skill of one skilled in
the art to combine such known techniques to interconnect semiconductor
devices (LEDs) as taught by Kojima's bonding wires and Nelson's and
Tam's air bridges with the structure (LED) taught by Tanabe. See KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill"
(citations omitted)). We are not persuaded that combining the respective
familiar elements of the cited references in the manner proffered by the
Examiner would have been "uniquely challenging or difficult for one of
ordinary skill in the art" at the time of Appellants' invention. Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418).
Thus, Appellants do not persuade us of error in the Examiner's
obviousness rejection of independent claim 1. Accordingly, we affirm the
Examiner's obviousness rejection of representative claim 1, independent
claim 17, and dependent claims 2-7, 13, and 18 dependent on claims 1 and
17 (respectively), not separately argued with particularity (supra).
With respect to the additional grounds of rejection rejecting dependent
claims 8-12 and 14--16, Appellants do not separately argue these claims or
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Application 13/584,140
corresponding rejections (supra). Thus, Appellants do not persuade us of
error in the Examiner's obviousness rejection of claims 8-12 and 14--16 and
we affirm the Examiner's obviousness rejections of claims 8-12 and 14--16
for the same reasons as claim 1 (supra).
CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
1-18 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejections of claims 1-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
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