Ex Parte Weidner et al

Patent Trial and Appeal Board

Aug 24, 2017

13816196 (P.T.A.B. Aug. 24, 2017)

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. 13/816,196 04/17/2013 Karl Weidner OSR-109 4256 25962 7590 SLATER MATSIL, LLP 17950 PRESTON RD, SUITE 1000 DALLAS, TX 75252-5793 EXAMINER GORDON, MATTHEW E ART UNIT PAPER NUMBER 2892 NOTIFICATION DATE DELIVERY MODE 08/28/2017 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): docketing @ slatermatsil. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KARL WEIDNER, JOHANN RAMCHEN, AXEL KALTENBACHER, WALTER WEGLEITER, BERND BARCHMANN, and GERTRUD KRAEUTER1 Appeal 2015-006837 Application 13/816,196 Technology Center 2800 Before CHUNG K. PAK, PETER F. KRATZ, and JENNIFER R. GUPTA, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2 rejecting claims 16 and 18-23. Claims 24-30, 32, and 33, the other claims pending in the above-identified application, were withdrawn from consideration by the Examiner pursuant to 37 C.F.R. 1 Appellants identify the real party in interest as “OSRAM Opto Semiconductors GmbH, headquartered in Regensberg, Germany.” Appeal Brief filed March 11, 2015 (“App. Br.”) 2. 2 Final Action entered September 18, 2014 (“Final Act.”) 2-5; and the Examiner’s Answer entered June 2, 2015 (“Ans.”) 2-5. Appeal 2015-006837 Application 13/816,196 § 1.142(b) as being drawn to a non-elected invention.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE The subject matter of the claims on appeal relates to “[a]n optoelectronic component having a protective layer[.]” Spec.412. Figure 1, which illustrates one embodiment of such optoelectronic component having a protective layer, is reproduced below: 20 Figure 1 shows an optoelectronic component, such as a LED component, that includes substrate 10, radiation-emitting semiconductor chip 40 (such as a LED chip) laterally enclosed by filler 70 optionally located inside housing 60, conversion layer 50, and protective layer 80 containing hydrophobic groups which are provided on the outer surface 80a of protective layer 80 during the application of protective layer 80 on 3 Non-Final Action entered May 21, 2014 (“Non-Final Act.”) 2; and Amendment entered August 21, 2014 (“Amend.”) 4-5. 4 Our reference to Appellants’ Specification is to Substitute Specification (clean copy) filed February 8, 2013 (“Spec.”). 2 Appeal 2015-006837 Application 13/816,196 semiconductor chip 40. Spec.^Hf 47^49. According to paragraph 10 of the Specification, [t]he arrangement of the protective layer “on” the semiconductor chip means that the protective layer is disposed on the side of the semiconductor chip facing away from the substrate. This arrangement can be produced directly on the semiconductor chip. However, the expression “on” also includes the arrangement of the protective layer on a further layer or layer sequence which for its part can be disposed on the side of the semiconductor chip facing away from the substrate. A further layer of this type can include, for example, a radiation-conversion layer. Protective layer 80 containing hydrophobic groups is “not wettable and therefore prevents contamination of the semiconductorchip 40 with filler material when the filler 70 is applied after application of the protective layer 80.” Spec. 149. The “[hjydrophobic groups can contain at least one perfluorinated carbon.” Spec. 114. “The hydrophobic groups can be contained in a chain-like molecule. For example, the material of the protective layer can comprise substituted or unsubstituted hydrocarbon chains, at one end of which a CF3 group is provided.” Id. The hydrophobic groups can be “at least partially folded into the inside of the protective layer by a brief thermal treatment, whereby the wettability of the surface increases.” Spec. 20 and 56. “The filler 70 can include a highly reflective material, for example a silicon which contains TiC>2 particles.” Spec. |49. “After the filler 70 has been applied, the protective layer 80 of Figure 1 . . . can alternatively also be released (not shown here).” Spec. 1 55. “Release can be effected, for example, by a plasma or by a chemical treatment, for example by means of a solvent.” Id. 3 Appeal 2015-006837 Application 13/816,196 Details of the appealed subject matter are recited in representative claim 16,5 which is reproduced below from the Claims Appendix of the Appeal Brief (with disputed limitations italicized): 16. An optoelectronic component, comprising: a substrate; a radiation-emitting semiconductor chip disposed on the substrate; a filler disposed on the substrate laterally surrounding the semiconductor chip; and a protective layer disposed completely or in partial regions on the semiconductor chip and having an outer surface facing away from the semiconductor chip, wherein the protective layer including at least one monolayer of a material; wherein the material comprises substituted or unsubstituted hydrocarbon chains, at one end of which a CF3 group is provided; wherein the outer surface of the protective layer facing away from the semiconductor chip has a hydrophobicity; and wherein the hydrophobicity is reducible by moving hydrophobic groups within the material. App. Br. 16, Claims Appendix. The Examiner maintains, and Appellants seek review of, the Examiner’s rejection of claims 16 and 18-23 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Hendrik (WO 2010/035206 A1 published April 1, 2010) and Kumon (US 2012/0164818 A1 published 5 Appellants only argue claim 16, the broadest claim on appeal. App. Br. 7- 14. Thus, we limit our discussion to claim 16 pursuant to 37 C.F.R. § 41.37(c)(l)(iv) (2013). Indeed, Appellants acknowledge that the remaining claims on appeal, namely claims 18-23, stand or fall with claim 16. App. Br. 7; see also 37 C.F.R. § 41.37(c)(l)(iv). 4 Appeal 2015-006837 Application 13/816,196 June 28, 2012). Final Act. 2-5; Ans. 2-5; App. Br. 7-14; Reply Brief filed July 16, 2015 (“Reply Br.”) 1-5. DISCUSSION Upon consideration of the evidence relied upon by the Examiner and Appellants in light of each of Appellants’ contentions,6 we find no reversible error in the Examiner’s rejection of claims 16 and 18-23 under 35 U.S.C. § 103(a).7 Accordingly, we sustain the Examiner’s § 103(a) rejection of the above claims substantially for the reasons set forth in the Final Action and the Answer. We add the following primarily for emphasis and completeness. As evidence of obviousness of the subject matter recited in claims 16 and 18-23 under 35 U.S.C. § 103(a), the Examiner relies upon the combined disclosure of Hendrik and Kumon. Final Act. 2. The Examiner finds, and Appellants do not dispute, that Hendrik discloses an optoelectronic 6 Any new arguments raised in the Reply Brief, which could have been raised in the Appeal Brief, will not be considered. 37 C.F.R. § 41.37(c)(l)(iv) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (explaining that under the previous rules, which are similar to the current rules, “the reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not”). 7 To prevail in appeal to this Board, Appellants must adequately explain or identify reversible error in the Examiner’s §§ 112, 102(b), 103(a) rejections. See 37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011). 5 Appeal 2015-006837 Application 13/816,196 component (a LED component) comprising submount 3 (corresponding to the recited substrate), flip chip LED 2 (corresponding to the recited radiation-emitting semiconductor chip) disposed on submount 3 (the recited substrate), reflective coating layer 7 (corresponding to the recited filler) disposed on submount 3 (the recited substrate) and laterally surrounding flip chip LED 2 (the recited semiconductor chip), and phosphor body 4a (corresponding to the conversion layer disclosed at paragraph 48 of the Specification) disposed on flip Chip LED 2 (the recited semiconductor chip). Compare Final Act. 3, with App. Br. 7-14 and Reply Br. 1-5; see also Hendrick 9,11. 1-10, 10,11. 3-14, 11,11. 14-24, Figs. 1-6. The Examiner also finds, and Appellants do not dispute, that Hendrick teaches treating the top surface of the phosphor body with a dewetting layer consisting of a hydrophobic coating layer, for example, a hydrophobic siliane monolayer of a fluor silane, which corresponds to the recited protective layer comprising at least one monolayer of a material disposed completely or in partial regions “on” the semiconductor chip (flip chip LED 2) and having an outer surface facing away from the semiconductor chip (flip chip LED 2). Compare Final Act. 3, with App. Br. 7-14 and Reply Br. 1-5; see also Hendrick 21,11. 18-20. The Examiner acknowledges that Hendrick does not specifically mention that its hydrophobic coating layer can be a material comprising “substituted or unsubstituted hydrocarbon chains, at one end of which a CF3 group is provided” as required by claim 16. Final Act. 3. However, the Examiner finds, and Appellants do not dispute, that Kumon teaches that a water repellent film (hydrophobic layer) comprising substituted or unsubstituted hydrocarbon chains at one end of which is a CF3 was known in 6 Appeal 2015-006837 Application 13/816,196 the semiconductor art at the time of the invention. Compare Final Act. 3, with App. Br. 7-14 and Reply Br. 1-5. Appellants do not dispute the Examiner’s finding that the outer surface of the water repellant film taught by Kumon or the outer surface of the hydrophobic layer taught by Hendrick facing away from the semiconductor chip has a hydrophobicity. Compare Final Act. 3, with App. Br. 7-14 and Reply Br. 1-5. Rather, Appellants contend that one of ordinary skill in the art would not have been led to employ the hydrophobic (water repellant) film taught by Kumon as the hydrophobic layer of the optoelectronic component taught by Hendrick. App. Br. 7-12; Reply Br. 1- 4. In support of this contention, Appellants assert that Kumon does not give “the slightest hint” of selecting a subgroup of the hydrophobic compounds described at paragraphs 71 and 72 by Kumon, which is used during the cleaning of a wafer, to arrive at the hydrophobic (water repellant) layer encompassed by claim 16. See, e.g., App. Br. 10; Reply Br. 3. Appellants also assert that Kuman teaches away from the features of claim 16 because it teaches removing the water repellent film (hydrophobic layer). See, e.g., App. Br. 11; Reply Br. 2. In so asserting, Appellants fail to take into account the collective teachings of Hendrick and Kumon. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (“The test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). As indicated supra, Hendrick teaches a dewetting layer consisting of “a 7 Appeal 2015-006837 Application 13/816,196 hydrophobic coating layer, for example a hydrophobic silane monolayer of a fluor silane[.]” Hendrick 21,11. 18-20. Although Hendrick exemplifies a hydrophobic silane monolayer of a fluor silane, it is not limited to using such exemplified hydrophobic coating layer. Id. Hendrick teaches that such broadly described hydrophobic coating layer, which may be in the form of a solid, a liquid or a gel, may be used on its optoelectronic component. Hendrick 21,11. 26. Although Hendrick does not specifically mention the broadly recited hydrophobic material as including a material comprising “substituted or unsubstituted hydrocarbon chains, at one end of which a CF3 group is provided” as required by claim 16, the Examiner finds, and Appellants do not dispute, that Kumon teaches that a water repellent film (hydrophobic material) comprising substituted or unsubstituted hydrocarbon chains at one end of which is a CF3 was known in the semiconductor art at the time of the invention. Compare Final Act. 3, with App. Br. 7-14 and Reply Br. 1-5. The Examiner also finds, and Appellants do not dispute, that “[o]ut of the approximately one hundred chemical compounds for use as water-repellants [(hydrophobic materials) in the semiconductor art] listed in [paragraph] [0076] of Kumon, roughly one third of the compounds include a CF3 end group.” Compare Ans. 3, with App. Br. 7-14 and Reply Br. 1-5. The fact that Kumon teaches using this hydrophobic material during the cleaning of a semiconductor material and removing such hydrophobic material after the cleaning the semiconductor does not negate Hendrick’s teaching of using a hydrophobic material, inclusive of those disclosed in Kuman, on the top surface of the phosphor body of its optoelectronic component. Kumon, like 8 Appeal 2015-006837 Application 13/816,196 Hendrick, teaches using its hydrophobic materials as a dewetting (water- repellant) layer in the field of the semiconductor art as indicated supra. Given the above circumstances, we concur with the Examiner that the collective teachings of Hendrick and Kuman would have led one of ordinary skill in the art to employ a hydrophobic material, such as Kuman’s water repellent film (hydrophobic material) comprising substituted or unsubstituted hydrocarbon chain having CF3 at one end, to form the hydrophobic layer of the optoelectronic component taught by Hendrick, with a reasonable expectation of successfully providing a dewetting or water- repellant surface. See, e.g., Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ‘813 patent discloses a multitude of effective combinations does not render any particular formulation less obvious.”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was “huge, but it undeniably include [d] at least some of the compounds recited in appellant's generic claims and . . . [was] of a class of chemicals to be used for the same purpose as appellant's additives”). Appellants also contend that the Examiner has not shown that the hydrophobic material taught by Kumon is capable of providing the recited function, namely the limitation “the hydrophobicity is reducible by moving hydrophobic group within the material” recited in claim 16 (emphasis added). App. Br. 12-14; Reply Br. 4. We do not agree. According to the Specification, the hydrophobicity of a material comprising substituted or unsubstituted hydrocarbon chains having a CF3 hydrophobic group at one end is capable of being reduced (“hydrophobicity is reducible”) as required by claim 16. Spec. ^fl[ 14, 20 and 56 and Fig. 3. 9 Appeal 2015-006837 Application 13/816,196 The Examiner finds, and Appellants do not dispute, that Kumon discloses using a material comprising substituted or unsubstituted hydrocarbon chains having a CF3 hydrophobic group at one end as a water-repellant film (hydrophobic layer). Compare Final Act. 3, with App. Br. 7-14 and Reply Br. 1-5; see also Kumon 176. Moreover, Kumon’s material, like Appellants’ material, can be released or removed from a semiconductor component. Compare Kumon ||107-112, with Spec. 1 55. Thus, it is reasonable for the Examiner to conclude that the hydrophobicity of Kumon’s hydrophobic material is also capable of being reduced by at least partially folding or moving its hydrophobic groups within the material upon subjecting Kumon’s hydrophobic material to a brief thermal treatment. See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing.”); see also In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly discusses the [limitation], [applicants’] application itself instruct that [the limitation] is not an additional requirement imposed by the claims on the [claimed invention], but rather a property necessarily present in [the claimed invention]”) Accordingly, we find no reversible error in the Examiner’s determination that a preponderance of the evidence leans heavily in favor of the obviousness of the subject matter recited in claims 16 and 18-23 within the meaning of 35 U.S.C. § 103(a). 10 Appeal 2015-006837 Application 13/816,196 DECISION Upon consideration of the record, and for the reasons given, it is ORDERED that the decision of the Examiner to reject claims 16 and 18-23 under 35 U.S.C. § 103(a) is AFFIRMED; and FURTHER ORDERED that 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). AFFIRMED 11