Ex Parte Sia et al

Board of Patent Appeals and Interferences

Aug 16, 2010

11180939 (B.P.A.I. Aug. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHIN HIAN SIA, SOO KIANG HO, THIAM SIEW GARY TAY,
LEONARD IAN KHENG TAN, SOO HIONG LEE, and
SOON AUN ANDY POH
____________

Appeal No. 2009-009051
Application 11/180,939
Technology Center 1700
____________

Before CHUNG K. PAK, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009051
Application 11/180,939

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 5, 7, 9, and 11, which are all of the claims pending in
the above-identified application.2 We have jurisdiction under 35 U.S.C. §§ 6
and 134.
STATEMENT OF THE CASE
The subject matter on appeal is directed to a light emitting diode
with at least two light emitting zones with a defect propagation confinement
mechanism to “prevents defects in either the first light emitting zone or the
second light emitting zone from propagating to the other light emitting zone”
(Spec. 4). The defect propagation confinement mechanism is disposed
between the two light emitting zones or “forms at least a portion of the
boundary of the first light emitting zone 120 and a portion of the boundary
of the second light emitting zone 130” (Spec. 7, ll. 21-22 and Spec. 8, ll. 3-5
and 13-18). The light emitting zone “includes a p-n junction that generates
light when a voltage is applied across the p-n junction” (Spec. 7, ll. 4-6).
The defect propagation confinement mechanism is illustrated in Figures 4
and 6 as a “layer with first type of impurities (e.g., epitaxial n-type layer)”
located between p-n junctions. (See Figs. 4 and 6 together with Spec. 9-10.)
Details of the appealed subject matter are recited in claim 1
reproduced from the Claims Appendix to the Appeal Brief as shown below:
1. A method of manufacturing a light emitting diode
with at least two light emitting zones comprising:
forming a first light emitting zone;

2 See page 4 of the Appeal Brief (“App Br.”) filed July 31, 2008, and page 4
of Reply Brief (“Reply Br.”) filed November 7, 2008.
Appeal 2009-009051
Application 11/180,939

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forming a second light emitting zone; and
forming a defect propagation confinement mechanism
between the first light emitting zone and the second light
emitting zone, the defect propagation confinement mechanism
comprising a region doped with at least one of an n-type
impurity and a p-type impurity and thereby configured to
prevent a defect in one of the first light emitting zone and
the second light emitting zone from propagating through the
defect propagation confinement mechanism to the other light
emitting zone.
As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following sole reference3:
Kravitz 3,821,616 Jun. 28, 1974

Appellants seek review of the Examiner’s rejection of claims 1, 5, 7,
9, and 11 under 35 U.S.C. § 102(b) as anticipated by Kravitz.
ISSUE AND CONCLUSION
The dispositive question is: Has the Examiner erred in finding that
Kravitz describes a p- and/or n-type doped region necessarily corresponding
to the claimed defect propagation confinement mechanism within the
meaning of 35 U.S.C. § 102(b)? On this record, we answer this question in
the negative.
ANALYSES, FACTUAL FINDINGS, AND PRINCIPLES OF LAW
Appellants do not dispute that Kravitz forms at least two light
emitting zones (App. Br. 18-35). Nor do Appellants dispute that Kravitz
teaches forming or epitaxially growing “P- and N-type doped regions
disposed between light emitting zones” (Reply Br. 27). Rather, Appellants

3 See page 2 of the Answer (“Ans.”) dated October 22, 2008.
Appeal 2009-009051
Application 11/180,939

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contend that Kravitz does not teach the claimed defect propagation
confinement mechanism (App. Br. 18-35). We do not agree.
As our reviewing court stated in In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997):
A patent applicant is free to recite features of an apparatus
either structurally or functionally. See In re Swinehart, 439
F.2d 210 (CCPA 1971) (“[T]here is nothing intrinsically wrong
with [defining something by what it does rather than what it is]
in drafting patent claims.”). Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk. As our
predecessor court stated in Swinehart, 439 F.2d at 213:

where the Patent Office has reason to believe that a
functional limitation asserted to be critical for
establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the
prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to
be in the prior art does not possess the
characteristic relied on.

Although Kravitz does not mention that its p- and/or n-type doped region
disposed between light emitting zones functions as a defect propagation
confinement mechanism, its p- and/or n-type doped region, like Appellants’
defect propagation confinement mechanism recited in claims 1 and 7,
comprises “a region doped with at least one of an n-type impurity and a p-
type impurity” and is disposed between two light emitting zones. These
features are also the only configuration mentioned in the Specification.
Thus, the Examiner has reason to believe that Kravitz’s p- and/or n-type
doped region disposed between light emitting zones imparts the claimed
function, i.e., “to prevent a defect in one of the first light emitting zone and
Appeal 2009-009051
Application 11/180,939

5
the second light emitting zone from propagating…to the other light emitting
zone” recited in claims 1 and 7. Swinehart, 439 F.2d at 212-13 (“[T]he mere
recitation of a newly discovered function or property, inherently possessed
by things in the prior art, does not cause a claim drawn to those things to
distinguish over the prior art.”); See also In re Best, 562 F.2d 1252, 1255
(CCPA 1977):
Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed
product…Whether the rejection is based on “inherency” under
35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C.
§ 103, jointly or alternatively, the burden of proof is the same,
and its fairness is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art
products. [Footnotes and citations omitted.]

The burden is, therefore, on Applicants to prove that Kravitz’s p- and/or n-
type doped region disposed between light emitting zones does not
necessarily possess the claimed functional characteristic. However, on this
record, Appellants have not carried that burden.
It follows that Appellants have not identified reversible error in the
Examiner’s finding that Kravitz necessarily describes a p- and/or n-type
doped region corresponding to the claimed defect propagation confinement
mechanism within the meaning of 35 U.S.C. § 102(b).
Appeal 2009-009051
Application 11/180,939

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ORDER
For the reasons set forth in the Answer and above, the decision of the
Examiner 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)(v).

AFFIRMED

kmm

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AVAGO TECHNOLOGIES LIMITED
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