NICHIA CORPORATIONDownload PDFPatent Trials and Appeals BoardMar 29, 20212021002344 (P.T.A.B. Mar. 29, 2021) Copy Citation 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. 15/414,021 01/24/2017 Shuji SHIOJI 119360.0264933 4212 23838 7590 03/29/2021 Hunton Andrews Kurth LLP/HAK 2200 Pennsylvania Avenue NW Washington, DC 20037 EXAMINER CAO, PHAT X ART UNIT PAPER NUMBER 2817 NOTIFICATION DATE DELIVERY MODE 03/29/2021 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): uuspto@hunton.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHUJI SHIOJI Appeal 2021-002344 Application 15/414,021 Technology Center 2800 Before LINDA M. GAUDETTE, JEFFREY R. SNAY, and DEBRA L. DENNETT, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 The Appellant2 appeals under 35 U.S.C. § 134(a), from the Examiner’s decision finally rejecting claims 28–37 under 35 U.S.C. § 103 as unpatentable over Shioji (US 2015/0179537 A1, published June 25, 2015), 1 The following documents are of record in this appeal: Specification filed Jan. 24, 2017 (“Spec.”); Final Office Action dated June 4, 2020 (“Final Act.”); Appeal Brief filed Oct. 30, 2020 (“Appeal Br.”); Examiner’s Answer dated Dec. 17, 2020 (“Ans.”); and Reply Brief filed Feb. 17, 2021 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Nichia Corporation. Appeal Br. 1. Appeal 2021-002344 Application 15/414,021 2 Lee (US 2011/0127549 A1, published June 2, 2011), and Suh (US 8,373,188 B2, issued Feb. 12, 2013). See Appeal Br. 4; Final Act. 2.3 We AFFIRM. CLAIMED SUBJECT MATTER The invention relates to a semiconductor element comprising a dielectric multilayered film containing an oxide. Title of the Invention, amended Dec. 7, 2018. Claim 28, reproduced below, is illustrative of the claimed subject matter: 28. A semiconductor element comprising, in order from top to bottom: a semiconductor layer; a light-transmissive substrate; a dielectric multilayered film formed by alternately laminating a first film including SiO2 as a major component and a second film including Nb2O5 as a major component; and a reflective layer containing Ag as a major component and containing a metal oxide that is Nb2O5, wherein the dielectric multilayered film is in contact with the reflective layer, and wherein a portion of the metal oxide distributed in a mesh form in the reflective layer and a portion of the Ag in the reflective layer are in contact with the dielectric multilayered film. Appeal Br. 9 (Claims Appendix). 3 We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2021-002344 Application 15/414,021 3 ISSUE The Examiner’s and the Appellant’s respective positions raise the following issue on appeal: Has the Appellant identified reversible error in the Examiner’s finding that Shioji discloses a reflective layer “wherein a portion of the metal oxide distributed in a mesh form in the reflective layer and a portion of the Ag in the reflective layer are in contact with the dielectric multilayered film” (claim 28)? See Appeal Br. 4. OPINION The Examiner found that Shioji Figures 3B and 3C disclose a reflective layer (30) containing metal oxide (35) “distributed in a mesh form” 4 as recited in claim 28. See Final Act. 2. The Appellant argues that Shioji’s depictions of nanoparticles 35 in metal layer 30 (Figures 3B, 3C, and 4A) and description of nanoparticles 35 as dispersed across the entire area of metal film 30 (¶ 30) is insufficient to support a finding that Shioji’s nanoparticles are “distributed in a mesh form” as recited in claim 28. Reply Br. 4. The Appellant contends that Shioji’s description of nanoparticles 35 as dispersed across the entire area of metal film 30 could also mean that nanoparticles 35 are discretely and separately distributed. Reply Br. 4. The 4 The Appellant argues that the claim 28 phrase “‘in the mesh form’ should be interpreted to mean, for example, a plurality of nuclei of the metal oxide are continuously distributed, or continuously connected.” Appeal Br. 5. Our Decision does not turn on whether the Appellant’s proposed interpretation is correct. We note, however, that like the Examiner, we are not persuaded that Specification paragraph 34 supports interpreting “in a mesh form” as meaning “continuously connected.” See Ans. 5–6. In addition, paragraph 34’s description of the metal oxide as “continuously distributed in a mesh form” suggests that “continuously distributed” does not have the same meaning as “in a mesh form.” Appeal 2021-002344 Application 15/414,021 4 Appellant also argues that in Shioji Figure 4A, “the metal oxide nanoparticles 35 in the metal film 30 are discretely distributed like islands, and are NOT continuously distributed in a mesh form.” Appeal Br. 7. The Appellant notes that “[p]aragraph 0034 of the specification clearly indicates that an arrangement where the metal oxide is . . . ‘discretely distributed’ in the reflective layer is different from an arrangement where the metal oxide is ‘distributed in a mesh form.’” Id. at 5 (emphasis omitted). For the reasons explained in the Answer, see Ans. 3–8, and below, the Appellant has not identified reversible error in the Examiner’s finding that Shioji discloses a reflective layer as claimed. Application Figure 2 is reproduced below. Figure 2 is a schematic cross-sectional view showing an interface between dielectric multilayered film 8 and reflective layer 9. Spec. ¶ 12. “The reflective layer 9 is a silver alloy layer containing Ag as a major component and containing a metal oxide 40.” Id. ¶ 31. Metal oxide 40 and Ag coexist in pseudo transition layer A, formed at an interface between Appeal 2021-002344 Application 15/414,021 5 reflective layer 9 and dielectric multilayered film 8. Id. “The pseudo transition layer is not an actual layer and rather means a kind of layer produced by the presence of the metal oxide 40 and Ag at the interface.” Id. ¶ 32. In Figure 2, reference sign 40a denotes the metal oxide 40 dispersed in the reflective layer 9 in granular form and reference sign 40b denotes the metal oxide 40 distributed at the interface between the reflective layer 9 and the dielectric multilayered film 8. Here, the metal oxide 40b does not constitute a layer by itself and a part of Ag is in contact with dielectric multilayered film 8. Here, the metal oxide 40b may be continuously distributed in a mesh form as long as the part of the Ag is in contact with the dielectric multilayered film 8. Id. ¶ 34 (emphasis added). Shioji Figures 3B and 3C are reproduced below. Appeal 2021-002344 Application 15/414,021 6 Shioji Figures 3B and 3C “are schematic diagrams for explaining the bonding between a substrate [10] and a metal film [30] in . . . one embodiment.” Shioji ¶ 21. Shioji describes these figures as follows: As shown in FIG. 3B, the nanoparticles 35 diffused across the entire area of the metal film 30 tend to suppress the growth of crystals over the entire area of the metal film 30. On the other hand, as shown in FIG. 3C, the nanoparticles 35 existing more on the upper side of the metal film 30, that is, on the substrate 10 side can enhance the adhesion between the substrate 10 and the metal film 30 by efficiently using the nanoparticles 35. Id. ¶ 39 (emphasis added). The Specification similarly discloses that “[t]he presence of the metal oxide 40 in the reflective layer 9 causes the reflective layer 9 to exhibit a pinning effect, which suppresses crystal grains of Ag, the major component of the reflective layer 9, from growing.” Spec. ¶ 33. The Specification also describes pseudo transition layer A as increasing the adhesion between the reflective layer 9 and the dielectric multilayered film 8. Id. ¶ 31.5 Claim 28 recites that the reflective layer contains Ag as a major component. Similarly, Shioji identifies silver as a preferred principal component of metal film 30. Shioji ¶ 51. Shioji discloses that the nanoparticles are made of an oxide, id. ¶ 34, such as niobium oxide, id. ¶ 44, as recited in appealed claim 28. Additionally, there is substantial overlap between Shoji’s and the Specification’s listings of preferred metal oxides. Compare Shioji ¶ 44, with Spec. ¶ 35. 5 For at least the reason that Shoji describes the same advantages, see Shioji ¶ 39, we are not convinced that Specification paragraph 31 evidences unexpected results, see Reply Br. 3. Appeal 2021-002344 Application 15/414,021 7 The nanoparticle content of Shioji’s metal film and the metal oxide particle content of the Specification’s reflective layer 9 are substantially the same—more than 0% but preferably no more than 5%. Compare Shioji ¶ 45, with Spec. ¶ 36. Shioji and the Specification disclose that this particle content range enhances adhesion while maintaining high reflectivity. Shioji ¶ 45; Spec. ¶ 36. As indicated in the above comparisons between Shioji’s and the Specification’s disclosures, see supra 5–6, Shioji’s metal film and the Specification’s reflective layer (1) contain the same materials, silver and Nb2O5, (2) contain metal oxide particles in the same amounts, and (3) provide the same advantages. Thus, the Examiner had a reasonable basis for finding that Shioji’s metal oxide particles are “distributed in a mesh form” as recited in claim 28. See Ans. 7–8 (“[A]ccording to paragraph [0034] of the Appellant’s specification, ‘discretely distributed’ . . . occur[s] when the amount of the metal oxides added to the reflective layer is small. In this case, there [is] no evidence[] to support that the amount of the metal oxides 35 added to the reflective layer 30 of Shioji is small. . . . Furthermore, . . . there are no differen[ces] between the distributions of the metal oxides 40 in Fig. 2 of the present invention and the metal oxides 35 in Figs. 3B–3C and 4A of Shioji.” (emphasis omitted)). “[W]hen the prior art evidence reasonably allows the PTO to conclude that a claimed feature is present in the prior art, the evidence ‘compels such a conclusion if the applicant produces no evidence or argument to rebut it.’” In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004) (quoting In re Spada, 911 F.2d 705, 708 n.3 (Fed. Cir. 1990)). Appeal 2021-002344 Application 15/414,021 8 In the Reply Brief, the Appellant argues that the Examiner misinterpreted a document submitted on September 4, 2020, as an attachment to an Examiner interview agenda. See Reply Br. 3–8. The Appellant does not appear to rely on the document as part of this appeal, and, at the time of submission, the Appellant also explicitly stated that the document was for discussion purposes only, and not for entry. Even if the Appellant did intend to rely on the document, we do not consider the document persuasive evidence of nonobviousness because the source of the document is unclear and the Appellant’s statements regarding the document are merely attorney argument. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (explaining that argument by counsel cannot take the place of evidence). In sum, having considered the Appellant’s arguments and evidence, we determine that a preponderance of the evidence favors the Examiner’s conclusion of obviousness as to claim 28. As the Appellant does not separately argue any dependent claims, we sustain the Examiner’s rejection of claims 28–37. Although we determine that the Appellant has not identified reversible error for the reasons expressed in the Answer and above, to advance prosecution, we note that the Appellant’s arguments also are not persuasive of reversible error because they are not commensurate in scope with the claim language. There is no antecedent basis for the claim 28 recitation “the metal oxide distributed in a mesh form in the reflective layer.” Claim 28 (emphasis added). The Specification uses the phrase “distributed in a mesh form” in describing metal oxide 40b, which is “the metal oxide 40 Appeal 2021-002344 Application 15/414,021 9 distributed at the interface between the reflective layer 9 and the dielectric multilayered film 8.” Spec. ¶ 34. In other words, as written, claim 28 does not require that the metal oxide is distributed in a mesh form throughout the entire reflective layer or even the entire pseudo transition layer. Rather, claim 28, at most, requires that part of the metal oxide in the pseudo transition layer is distributed in mesh from, and a portion of that part is in contact with the dielectric multilayered film 8. Thus, the language of claim 28’s final “wherein clause” reads on Shioji’s Figure 4B and its corresponding description: [T]he nanoparticles 35 in the metal film 30 can be dispersedly attached to the lower surface of the substrate 10. This is one example in which the nanoparticles 35 in the metal film 30 locally exist in the vicinity of the interface with the substrate 10. . . . [I]n order to dispersedly attach the nanoparticles 35 to the lower surface of the substrate 10, the film made of the raw material 35a is deposited in a thickness of less than 10 nm, preferably, less than 5 nm, so that the nanoparticles 35 can be formed dispersedly, that is, in the form of particles, and not in the form of film (layer) that covers the entire lower surface of the substrate. Shioji ¶ 41. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 28–37 103 Shioji, Lee, Suh 28–37 Appeal 2021-002344 Application 15/414,021 10 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation